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 .
DETAILED ACTION
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 15 Oct 2025 has been entered.
Claims 1-4, 6-14, and 16-18 remain pending in the application.
Claims 1-3 and 9 are amended.
Claims 5 and 15 are cancelled.
Claims 17 and 18 are new.
Claims 2 and 3 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. The claims require a combination of antidandruff agents where the elected species of antidandruff agent is piroctone olamine.
Claims 1, 4, 6-14 and 16-18 are under consideration to the extent of the elected species, i.e., that the cationic surfactant is behentrimonium chloride, the fatty alcohol is a combination of cetyl alcohol and stearyl alcohol (i.e. cetearyl alcohol), and the antidandruff agent is piroctone olamine.
Objections Withdrawn
Objections to the Specification
The specification objections set forth in the Non-Final Office Action mailed 25 Jul 2025 are hereby withdrawn in light of applicant’s amendments of the specification.
Objections to the Claims
The claim objections set forth in the Non-Final Office Action mailed 25 Jul 2025 are hereby withdrawn in light of applicant’s amendments of the claims.
Rejections Withdrawn
Rejections Pursuant to 35 USC § 101
The rejection of claims 1, 4-14 and 16 pursuant to 35 U.S.C. 101 set forth in the Non-Final Office Action mailed 25 Jul 2025 are hereby withdrawn in light of applicant’s amendment of the claims.
Rejections Maintained
Claim Rejections - 35 USC § 103
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.
Claims 1, 4, 6-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. (WO 2018/145941, published 16 Aug 2018) in view of Reiko et al. (JP2001261530A, published 26 Sep 2001, listed on IDS filed 06/28/2023).
Cao teaches a hair conditioning composition comprising a cationic surfactant, selective antidandruff agent and octyldodecanol (abstract, page 3 lines 17-24). Cao teaches that the cationic surfactant may be behentrimonium chloride from 0.01 to 5% by weight of the composition (page 6 lines 27-31). Cao teaches that the antidandruff agent may be piroctone olamine from 0.01 to 5% by weight (page 6 line 33-page 7 line 6). Cao teaches that the octyldodecanol may be from 0.01 to 5.0% by weight (page 7 lines 8-11). Cao teaches that the compositions may further comprise a fatty alcohol comprising from 8 to 22 carbon atoms such as cetyl alcohol, stearyl alcohol and mixtures thereof (page 7 lines 21-30) which may be present in a range from 0.3 to 6% by weight (page 7 lines 32-35). Thus, Cao renders obvious the species and the amounts of cationic surfactant, fatty alcohol, antidandruff agent and octyldodecanol in claims 1, 4-10, 14, 17 and 18. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Cao teaches that the weight ratio of cationic surfactant to fatty alcohol is from 1:2 to 1:5 (page 7 line 34– page 8 line 2), rendering obvious claim 11 and the ratio of claim 17. Cao teaches that the composition as substantially silicone free (abstract) and as preferably having less than 0.1% silicone by weight (page 3 lines 23-25), rendering obvious the absence of silicone as in claims 12, 13 and 16. Cao teaches that the invention minimizes agglomeration of particles which results in less grittiness and more transparency (page 7 lines 13-15) and provides an example with %transmittance ranging from 3.0-10.4% across 400nm-700 nm (Table 2 page 10). The ”more transparency” and range of %transmittance values taught by Cao render obvious a “translucent” composition as recited in the instant claims. Cao teaches that the compositions may be rinse off or wash-off compositions (page 4 lines 23 and 29).
Cao does not teach the inclusion of glycerin as in claim 1. This deficiency is made up for in the teachings of Reiko.
Reiko teaches a transparent hair rinse agent with excellent rinsing effects such as transparency, suppleness, smoothness, good combability of hair and good temperature stability ([0001]). Reiko teaches that glycerin is a component usually used in hair rinse agents ([0014]). Reiko teaches that the use of glycerin can further improves the rinsing effect on hair ([0012]). Reiko teaches that the blending amount of glycerin is in the range of 0.1 to 20% by weight and that when less than 0.1% by weight is used that the rinsing effect on hair and the temperature stability are insufficient and that when more than 20% by weight is used that the application to hair becomes heavy and the usability becomes poor and the texture of the hair after drying becomes too heavy, resulting in poor quality ([0013]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have included glycerin from 0.1 to 20% by weight in the hair conditioning compositions of Cao. Rinse off hair compositions with improved transparency are taught by Cao and glycerin is a component usually used in hair rinse agents and suitable amounts are from 0.1 to 20% by weight, as taught by Reiko. Glycerin is used in transparent rinse agents and improves the rinsing effect on hair and when less than 0.1% is used the rinsing effect on hair and temperature stability are insufficient and when more than 20% by weight is used the hair becomes heavy with poor usability and texture, as taught by Reiko. Thus, it would have been obvious to have included glycerin in the composition of Cao in an amount from 0.1 to 20% by weight as it is a commonly used ingredient and provides hair rinsing benefits to compositions. One would have a reasonable expectation of success as Cao teaches rinse off and wash off compositions with improved transparency and glycerin is known to improve rinsing properties and to be suitable for transparent compositions, as taught by Reiko. The inclusion of glycerin thus merely represents the use of a known prior art element for its intended purpose of improving rinsing ability in transparent hair compositions.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Response to Arguments
Applicant's arguments filed 15 Oct 2025 have been fully considered but they are not persuasive. Applicant states the presently claimed hair care composition unexpectedly improves the transparency of the hair care composition and the sensory experience. The applicant points to tables 1-3 of the instant specification for examples of the unexpected performance without further comment. The applicant argues that there is nothing in the references that would have allowed one to predict that the claimed particle would improve deposition and stability of an anti-dandruff agent(page 7 of remarks).
The examiner is not persuaded by the applicant’s argument. The examiner notes that a prima facie case of obviousness has be established over the claimed composition as detailed in the rejection above and the limited evidence pointed to by the applicant is insufficient to overcome the strong showing of obviousness in this case to select a cationic surfactant of behentrimonium chloride, glycerin, a fatty alcohol and piroctone olamine as part of a hair composition as is obvious from Cao and Reiko. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“[W]e hold that even if Pfizer showed that amlodipine besylate exhibits unexpectedly superior results, this secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”).
The examiner has considered the data presented in Tables 1-3 but does not find it persuasive as to unexpected results. Table 1 shows examples with transmittance values ranging from 0.13-0.165 in comparison to alternative compositions with transmittance ranging from 0.068 to 0.109. Table 3 compares a composition with cetearyl alcohol at 3% (outside the claimed range) and a transmittance of 0.116 to one at 2% (within the claimed range) with a transmittance of 0.181. These results appear to be a small difference in transmittance and the applicant has not shown the results are “unexpected” to an unobvious extent, and that the results are of a significant, practical advantage (see MPEP 716.02, 716.02(a) and 716.02(b)). Further, as noted in the rejection, transmittance values are shown in the teaching of Cao ranging from 3.0-10.4% (page 10 Table 2) and thus there is a general expectation in the art of achieving transmittance values similar to those shown by the applicant. The applicant has not explained the significance of the data in the instant specification to establish unexpectedness of why the small difference in transmittance is unexpected. Further, the results should demonstrate a difference in kind, rather than degree. See In re Huang, 100 F.3d 135, 139 (Fed.Cir.1996) (holding that claimed ranges must “produce a new and unexpected result which is different in kind and not merely in degree from results of the prior art”). The Court explained that a “32—43% increase in stress-rupture life, however, does not represent a ‘difference in kind’ that is required to show unexpected results.” Harris, 409 F.3d at 1344. Achieving translucent compositions is known in the art and it is not clear why the transmittance values seen in the results of the instant specification are to be understood as unexpected.
Table 2 compares a composition with 20% glycerin (within the claimed range) and 50% glycerin (outside the claimed range) and purports an improved sensorial experience. First, the examiner notes that a single data point at 20% and a point at 50% is not sufficient to establish unexpected results across the claimed range of 15-30%. Additionally, the examine notes that there is known in the art that the user experience depends on the amount of the components present in the composition. Specifcially, glycerin is used in transparent rinse agents and improves the rinsing effect on hair and when less than 0.1% is used the rinsing effect on hair and temperature stability are insufficient and when more than 20% by weight is used the hair becomes heavy with poor usability and texture, as taught by Reiko. Thus, it is known that changing the glycerin percentage will change the effect on the hair and the results presented are not seen as unexpected but rather as expected.
Conclusion
No claims are allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/E.C.M./Examiner, Art Unit 1619 /ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600