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 3/27/2026.
Election/Restrictions
Claims 37-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/1/2025.
Response to Arguments
All of Applicant’s arguments filed 3/27/2026 have been fully considered.
The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
The arguments in the response filed 3/27/2026 will be addressed below to the extent they apply to the current rejections.
Double Patenting Rejections
The reply filed on 3/27/2026 is not fully responsive to the prior Office Action because of the following omission(s) or matter(s): Applicant has not adequately replied to the Provisional Obviousness Type Double Patenting Rejection. A request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02).
Regarding applicants request to hold the ODP rejection in abeyance, it is noted that when the provisional obviousness type double patenting rejection is not the only rejection in the examined application, the rejection will continue to be made until the rejection is overcome as stated in MPEP 804 [R-5], I B, that "the "provisional" double patenting rejection should continue to be made by the examiner in each application as long as there are conflicting claims in more than one application unless that "provisional" double patenting rejection is the only rejection remaining in at least one of the applications." As noted above, the provisional obviousness double patenting rejection is not the only rejection remaining in this examined application.
As such the rejection is maintained.
112 Rejections
The amendments to the claimed were sufficient to overcome the 112 rejections presented in the office action mailed 10/28/2025.
103 Rejections
Applicant’s arguments regarding the claimed as newly amended are not persuasive in view of the new rejections presented below.
Applicant argues that Gawtrey’s comparative example 3 which uses stearyl alcohol is a composition is which the solid fatty alcohol was not maintained in a solubilized, non-crystalline state demonstrating that Gawtrey does not teach or suggest solubilization.
This is not persuasive as the Applicant is referring to a comparative examples that is not relied upon by the Examiner in the rejections below.
Applicant remarks that JP’532 and Mathonneau do not cure the deficiencies of Gawtrey and JP’532.
This is not persuasive for the reasons discussed above.
New Claim Objections
Claim 30 is objected to because of the following informalities: Claim 30 contains a typo, it seems “2” was accidentally left in when amending the claims. Please delete. Appropriate correction is required.
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) 20-23, 25, 27, 29-32 and 35-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gawtrey (US 2010/0269844), Gromley (US 5,853,700), CN109846736 and Bonda (US 6,113,931), as evidenced by Unicare Ingredients (2026). CN’736, Bonda and Unicare Ingredients are newly cited.
Gawtrey discloses hair cosmetic compositions packaged in an aerosol device comprising at least one anionic fixing polymer, at least one polyol, at least one liquid fatty alcohol, at least one C1-C4 monoalcohol and at least one propellant gas, comprising a water content of less than 10% by weight (Abs and Gawtrey – claim 1).
Regarding claims 22-23 and 25 : Gawtrey teaches the composition to comprise 0.01-10% of at least one liquid fatty alcohol such isostearyl alcohol, isocetyl alcohol and 2-octyldodecanol [0065-0066].
Regarding claim 20a, 27 and the claimed solid fatty alcohol, Gawtrey teaches that additional additives such as solid fatty alcohols can be added to the composition, as such their inclusion is prima facie obvious, this would result in a composition comprising amounts of fatty alcohols (solid and liquid) that overlap with the claimed “at least 5% and “5-25%””
Regarding claims 20b and 29-30: Gawtrey teaches the inclusion of 0.01-50% of a lower C1-C4 monoalcohol such as ethanol [0069-0070], this overlaps with the claimed ranges.
Regarding claim 35: Gawtrey teaches the inclusion of at least one polyol in amounts ranging from 10-55%, this is sufficiently close to the claimed “less than 10%” that a prima facie case of obviousness exists. MPEP 2144.05: "Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.)."
In the alternative, Examples 1-3 of Gawtrey discloses composition comprising two polyols, wherein one of those polyols is used in amounts of 6%, which reads on “at least one polyol in a total amount of less than 10%.”
Regarding claim 36: Gawtrey teaches the composition to be anhydrous [0068].
Regarding claims 20c and 31-32: Gawtrey teaches the presence of a propellant gas in amounts ranging from 10-50%, which overlaps with the claimed ranges. Suitable propellant gases include those which are soluble or insoluble in the composition and exemplifies dimethyl ether [0071-0072].
However, Gawtrey does not specify the propellant gases are compressed gases such as those recited by instant claims 20 and 31.
Gormley teaches aerosol hair compositions comprising about 10-60% of a propellant (abs) and up to 70% of a lower alcohol solvent (Gromley – claim 1). Gromley teaches that suitable propellants for use include dimethyl ether and others present as liquid gases, but could also be compressed gases such as nitrogen, air and carbon dioxide (col. 5, lines 35-45).
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 Gawtrey with those of Gromley. One of skill in the art would have been motivated to select a compressed gas propellant as taught by Gromley, such as nitrogen, air or carbon dioxide, for use as the propellent in Gawtrey as its prima facie obvious to a person of ordinary skill in the art to pursue the known options within the technical grasp of a skilled artisan. One of skill in the art would have a reasons expectation of success as Gromley teaches dimethyl ether and the above compressed gases to be functionally equivalent for use in aerosol hair composition and its prima facie obvious to substitute one art recognized equivalent for another.
However, the above references do not teach the solid fatty alcohols to be solubilized in the composition.
CN’736 teaches transparent liquid hair conditioner comprising ethanol, fatty alcohols and low amounts of water 0.3-10% (Abs).
Regarding claim 20-21: CN’736 teaches that suitable fatty alcohols for use include myristal, cetyl and cetyl stearyl alcohols (i.e. solid fatty alcohols). CN’736 teaches the transparent compositions to be made by dissolving the ingredients (including the fatty alcohol) and stirring till uniform to obtain a transparent liquid.
Bonda teaches clear cosmetic formulations and teaches that transparent formulations are desirable because consumers liken transparency to purity and the cosmetics have esthetic appeal (col. 1, lines 33-40).
As evidenced by Unicare Ingredients, cetyl alcohol is soluble in both ether and ethanol.
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 Gawtrey with those of CN’736 and Bonda. One of skill in the art would have been motivated to use a solid fatty alcohol such as cetyl alcohol in the composition of Gawtrey as CN’736 teaches that these fatty alcohols are suitable for use in hair composition comprising ethanol and low amounts of water. One of skill in the art would have also been motivated to formulate the composition of Gawtrey to be transparent by ensuring the components present in the composition (i.e. solid fatty alcohols) are solubilized/dissolved (i.e. not precipitated or crystalized) in the composition as transparent compositions are taught to be desirable because consumers liken transparency to purity and the cosmetics have esthetic appeal. One of skill in the art would have a reasonable expectation of success as both Gawtry and CN’736 teaches hair compositions comprising fatty alcohols and Gawtrey teaches the composition to have high amounts of ethanol and dimethyl ether which are known in the art to solubilize cetyl alcohol.
Claim(s) 20-23, 24, 25, 26, 27, 29-32 and 35-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gawtrey (US 2010/0269844), Gromley (US 5,853,700), CN109846736 and Bonda (US 6,113,931), as evidenced by Unicare Ingredients (2026), as applied to claims 20-23, 25, 27, 29-32 and 35-36 above, and further in view of JPH107532. JP’532 is cited on the 11/6/2024 IDS. The Examiner is providing a copy of the machine translation relied upon in the rejection below.
As discussed above, the above references makes obvious the limitations of claims 20-23, 25, 27, 29-32 and 35-36 above, however, they do not teach the amounts in which the solid fatty alcohols are present.
JP’532 teaches a hair conditioning composition [0001]. The composition comprises 0.1-8% of a higher alcohol that is solid at room temperature and 0.1-5% of a higher alcohol that is liquid at room temperature [0005]. JP’532 teaches that by using this combination of high alcohols (liquid and solid), it is possible to obtain an excellent and long-lasting conditioning effect [0006].
Regarding claim 21: JP’532 teaches the solid high alcohols to preferably be cetyl alcohol, stearyl alcohol and ceteostearyl alcohol to be preferred [0006].
Regarding claim 24: JP’532 teaches the solid high alcohols to be used in amounts of 0.1-8% [0005].
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 Gawtrey with those of JP’532. One of skill in the art would have been motivated to use a combination of solid and liquid fatty alcohols, in the amounts taught by JP’532, as JP’532 teaches that this combination provides excellent and long-lasting conditioning effect. One of skill in the art would have a reasonable expectation of success as Gawtrey teaches that solid fatty alcohols can be added to the composition and teaches suitable hair care compositions to be those the condition the fibers [0025].
Regarding claim 26: The prior art makes obvious to use of 0.1-8% of solid fatty alcohols and 0.1-5% of liquid fatty alcohols (i.e. 0.2-13 total fatty alcohol), resulting in a weight ratio of solid fatty alcohol to total fatty alcohol of .0077-40: 1 which overlaps with the claimed ranges and overlapping ranges are prima facie obvious absent factual evidence to the contrary.
Claim(s) 20-17, 29-32, 33-34 and 35-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gawtrey (US 2010/0269844), Gromley (US 5,853,700), CN109846736, Bonda (US 6,113,931) and JPH107532, as evidenced by Unicare Ingredients (2026), as applied to claims 20-27, 29-32 and 35-36 above, and further in view of Mathonneau (US 2017/0348200).
As discussed above, the above references makes obvious the limitations of claims 20-27, 29-32 and 35-36 above, however, they do not teach the inclusion of a liquid fatty substance other than the liquid fatty alcohol as recited by instant claims 33-34.
Gawtrey teaches that additives such as soluble or insoluble conditioning agents can be added [0073].
Mathonneau discloses anhydrous cosmetic compositions for treating keratin fibers, such as hair, and teaches that one or more conditioning agents such as liquid fatty substances can be added. These include liquid hydrocarbons which are C6-C16 alkanes [0654] and can be added in amounts ranging from 0.1-30% [0657].
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 Mathonneau. One of skill in the art would have been motivated to add 0.1-30% of a conditioning agent such as liquid C6-C16 alkane hydrocarbons to the composition of Gawtrey. One of skill in the art would have a reasonable expectation of success as Gawtrey teaches that conditioning agents can be effectively added and Mathonneau teaches that liquid C6-C16 alkane are known in the art to be used as conditioning agents for hair care compositions and it’s prima facie obvious for a skilled artisan to pursue the known options within his or her technical grasp.
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.
Claims 20-27 and 29-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20-36 of copending Application No. 18/267714 in view of Gormley (US 5,853,700). US’ 714 discloses composition comprising liquid fatty alcohol, solubilized solid fatty alcohols, monoalcohols, polyols and liquid fatty substances that are the same as those in the instant application and are present in overlapping amounts and ratios as required by the instant claims. However, US714 does not teach the use of compressed gases, but instead teaches liquified gas such as dimethyl ether.
The teachings of Gromley are discussed above and the instant claims are obvious for the same reasons as set forth above.
This is a provisional nonstatutory double patenting rejection.
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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