DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the reply filed 4/16/2026.
Election/Restrictions
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/9/2025.
Response to Arguments
All of Applicant’s arguments filed 4/16/2026 have been fully considered.
In view of the amendments to the claims, the rejection over JP’642 and Brand has been withdrawn and is replaced with Barnabas, Brand and JP’642. The Examiner will address the comments as they apply to the rejection below.
Applicant argues that JP’642 teaches away from using branched dextran.
This is not persuasive, while JP’642 may not want to use branched dextran the rejection below is not based on using branched dextrans in the formulation of JP’642. As discussed below, Barnabas specifically teaches that branched dextrans can be used, thus their use is prima facie obvious.
Applicant remarks that Brand’s main focus is on galactomannans and dextran is only mentioned once.
This is not persuasive as Brand is prior art for all it teaches and preferred embodiments do not teach away from non-preferred embodiments.
New Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnabas (WO 00/24856), Brand (US 2010/0093584), JP2000159642 and Pawar (2008).
Barnabas teaches fabric care compositions comprising an effective amount of fabric care polysaccharides (Abs).
Regarding claim 1: Barnabas teaches a preferred polysaccharides to be dextran and derivatives thereof (pg. 4), these can be those wherein the 1,6-linked backbones are with or without branching and preferably have a weight average Mw ranging from 10,000-150,000 (pg. 9), thus the use of a branched dextran is prima facie obvious.
Barnabas teaches that the preferred carrier of the composition is water, reading on dermatologically acceptable vehicle (pg. 120).
However, Barnabas does not teach the dextran polymer to have a combination of quaternary ammonium groups of formula IIa and IIIa and does not teach the quaternary ammonium side groups to be bound to be pendant oxygen.
Brand discloses cleansing compositions for use in personal care formulations and household care compositions comprising non-cellulosic cationically modified polysaccharides and anionic surfactants as essential ingredients. The cationically modified polysaccharides can impart great conditioning benefits to the substrate such as textile fabrics (Abs and [0018]).
Brand teaches the non-cellulosic cationically modified polysaccharides can be a dextran with a Mw ranging from 200,000-1,000,000 in which cationic modifications comprise a mixture of at least two quaternary ammonium groups having a different combination of alkyl substituents which are covalently attached to the polysaccharide backbone via an ether, ester or urethane linkage [0012, 0020, 0030, 0032]. The first quaternary ammonium groups has an alkyl chain of 1 carbon (i.e. methyl), while the 2nd group preferably has 12, 18 or 22 carbons [0023-0025]. Examples 6-7 and 9-11 of Brand use a combination of hydroxypropyldimethyldodecylammonium (C12) and hydroxypropyltrimethylammonium (C1). Brand teaches the cationically modified polysaccharides provide conditioning and deposition benefits which are greater than the conditioning benefits of the same polymers which carry only one type of quaternary ammonium groups ([0013-0019] and working examples). Brand teaches the each cationic substituent on the polysaccharide to have a cationic degree of substitution of 0.0001- about 3 [0020]., which overlaps with the claimed range of 0.01-0.03.
JP’642 cleansing formulations [0001] comprising linear cationic polymer derived from dextran of formula (1):
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213
694
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wherein R represents a hydrogen atom, a hydroxy lower alkyl group, or chemical formula (2) as shown below:
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151
293
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wherein R1 represents a hydrogen atom or a lower alkyl group and R2, R3, and R4 represent a lower alkyl group; at least one R is a quaternary nitrogen-containing group represented by Formula (2), and n is a positive number of 20 – 30,000 [0012-0014].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Barnabas with those of Brand and JP’642. One of skill in the art would have been motivated to formulate the dextran of Barnabas to comprise at least two quaternary ammonium groups, with different alkyl substitutions, one trimethyl and one dimethyldodecylammonium (reading on formula IIIa and IIa wherein R4 is C12 alkyl group, R2 is methyl, R3 is methyl and R5 is H), with the degree of cationic substitutions as taught by Brand, as Brand teaches that the use of 2 distinct quaternary ammonium groups results in greater conditioning benefits than those that comprise only one group. One of skill in the art would have also been motivated to attached those quaternary ammonium groups to pendant oxygens on the backbone of the dextran using a divalent linking groups as taught by JP’642 as this is shown to be a suitable way to substitute the dextran and its prima facie obvious to pursue the known options within the technical grasp of a skilled artisan. One of skill in the art would have a reasonable expectation of success as both Barnabas, JP’642 and Brand teach compositions which provide cleansing and conditioning comprising modified dextran.
The above references do not teach the dextran to have 90-98mol% of glucose units connect by α-D-1,6 linkages, 2-10% of glucose structural units connected by α-1,3-linkages and less than 0.1% of β-1,4-linkages.
Barnabas teaches the dextran to comprise α-1,6 glucoside bonds.
Pawar teaches Dextran is the name of a large class of a-D-glucans with anhydro-D-glucopyranose units, α-1,6-linkages are predominant features of dextrans. Dextrans are composed of 95% a-1,6-glucopyranosidic linkages and 5% 1,3- linkages. Pawar teaches that Dextrans obtained from different sources possess different structures and properties, i.e. degree of branching, relative quantity of particular type of glycosidic links, molecular weight, solubility, optical activity and physiological action.
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the above references with those of Pawar. As Barnabas does not specify the mol% of 1,6-glucoside linkages, one of skill in the art would have been motivated to use dextran which is commonly known, in particular which are those containing 95% α-1,6-glucopyranosidic linkages and 5% 1,3- linkages as those containing 1,3-linkages are the attachment point of side chains. One of skill in the art would have also been motivated to determine the source of dextran best for use via optimization as the source used is known to affect the structure and properties of the dextran. One of skill in the art would have a reasonable expectation of success as both Pawar and Barnabas discuss dextrans having α-1,6-glucose linkages and Pawar teaches specific structure of Dextran known to be used.
Regarding the claimed “formulation for the care of damaged hair” this is a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. As discussed above the prior art makes obvious a formulation comprising the claimed dextran, dermatologically acceptable vehicle and silicone. Further, Barnabas teaches that when silicones are present they are preferably neither irritating nor toxic, or otherwise harmful when applied to fabric or when they come in contact with human skin (pg. 20), thus it would be prima facie obvious to formulate the composition of Barnabas to only comprise ingredients which are neither irritating nor toxic to the skin, or otherwise harmful. As the composition of Barnabas is capable of being applied to the skin and comprises the claimed structure, the composition is expected to be capable of being used to care for damaged hair, absent factual evidence to the contrary.
The above references do not specifically teach that the dextran polymer as the claimed Kjeldahl nitrogen content, however, because the prior art makes obvious dextran polymers that encompass those of the present invention, one of skill in the art would have a reasonable expectation that the dextran polymer made obvious above would possess the claimed Kjeldahl nitrogen content.
Regarding claimed conditioning shampoo: Barnabas teaches that the fabric care composition can be used in the wash cycle and be formulated as a detergent composition (pg. 44) and the dextran modified with quaternary ammonium groups is taught to improve conditioning as such the composition made obvious above provide both detergent and conditioning properties and reads on shampoo.
Regarding the claimed hair cleansing surfactant: Barnabas teaches that the formulation can comprise anionic surfactants such as alkyl alkoxylated sulfate surfactants for the formula RO(A)mSO3M, wherein R is a C10-24 alkyl or hydroxyalkyl group, A is an ethoxy/propoxy, m is between 0.5-6, and M can be sodium (pg. 44). Brand also teaches cleansing composition and teaches that suitable anionic surfactants include alkyl and alkyl ether sulfates in amounts ranging from 0.01-50% (Abs and [0033-0034]). Table 8 exemplified the use of SLES (sodium laureth sulfate), which are known cleansing surfactants. It would have been prima facie obvious to use as a cleansing surfactant SLES in the formulation of Barnabas as Barnabas teaches that anionic surfactants of formula RO(A)mSO3M can be effectively used and SLES is a surfactant that falls within this formula. Brand teaches that the surfactant can be used in hair products (table 8).
Regarding claim 2: Barnabas teaches the essential ingredient to be the fabric care polysaccharides and teaches that optional ingredients, including oils can be added, but as these are optional it’s obvious to formulate the composition to be free of oils, reading on less than 0.01%.
Regarding claim 3: Barnabas teaches that silicones can be added and when present are used in amounts of about 0.1-5%, which overlaps with the claimed ranges, furthermore, a silicone is optional for use and not required, so it’s obvious to formulate the composition to be free of silicones.
Regarding claim 8: Barnabas teaches that the composition can optionally comprise additional ingredients such as colorants (pg. 129).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-2 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-9 of copending Application No. 18/263980 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach hair conditioner formulations, such as conditioning shampoos comprising cleansing surfactants, dermatologically acceptable vehicles and branched chain dextrans. Both Applicants teach dextrans having overlapping molecular weight wherein both comprise the same quaternary ammonium groups bounds to the dextran and overlapping cationic degrees of substitution for the C12 alkyl group. Both teach overlapping Kjeldahl nitrogens contents and the inclusion of addition ingredients such as preservatives. Copending ‘980 does not teach the inclusion of oils, such as they are consider to be oil free, which reads on the “less than 0.001%” as recited by instant claim 2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,396,939 in view of Brand (US 2010/0093584). US’939 teaches a skin cleansing formulation comprising cleansing surfactant such as SLES, less than 0.0001% of a silicone and a dermatologically acceptable vehicle. US’939 teaches a branched chain dextran which comprises quaternary ammonium groups bound to a pendent oxygen on the dextran polymer, these groups overlap with the claimed formula II and IIIa. The dextran of US’939 has an overlapping Kjeldahl nitrogen contents. US’939 teaches the inclusion of a fragrance oil (instant claim 8).
While US’939 teaches that quaternary ammonium groups can be used which implies more than 1, US’939 does not teach using a lower alkyl groups such as methyl and a higher alkyl group such as dodecyl.
Brand teaches the non-cellulosic cationically modified polysaccharides can be a dextran with a Mw ranging from 200,000-1,000,000 in which cationic modifications comprise a mixture of at least two quaternary ammonium groups having a different combination of alkyl substituents which are covalently attached to the polysaccharide backbone via an ether, ester or urethane linkage [0012, 0020, 0030, 0032]. The first quaternary ammonium groups has an alkyl chain of 1 carbon, while the 2nd group preferably has 12, 18 or 22 carbons [0023-0025]. Examples 6-7 and 9-11 of Brand use a combination of hydroxypropyldimethyldodecylammonium (C12) and hydroxypropyltrimethylammonium (C1). Brand teaches the cationically modified polysaccharides provide conditioning and deposition benefits which are greater than the conditioning benefits of the same polymers which carry only one type of quaternary ammonium groups ([0013-0019] and working examples). Brand teaches the each cationic substituent on the polysaccharide to have a cationic degree of substitution of 0.0001- about 3 [0020]., which overlaps with the claimed range of 0.01-0.03.
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of US’939 with those of Brand. One of skill in the art would have been motivated to formulate the dextran of US’939 to comprise at least two quaternary ammonium groups with different alkyl substitutions, one trimethyl and one dimethyldodecylammonium (reading on formula IIIa and IIa wherein R4 is C12 alkyl group, R2 is methyl, R3 is methyl and R5 is H), with the degree of cationic substitutions as taught by Brand, as Brand teaches that the use of 2 distinct quaternary ammonium groups results in greater conditioning benefits than those that comprise only one group.
While US’939 teaches a skin care composition and the instant claims are directed to hair care formulations, these are recitations of intended use. The composition of US’939 makes obvious the claimed structure and would be capable of being used as a hair conditioner formulations.
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
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