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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 11/21/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claims 1-3, 7-10, 12-13, 15-22 are pending, claims 1-3, 7-10 and 15-22 are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/21/2025 is being considered by the examiner.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 7-9, 15-17 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (WO2020214854).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Johnson et al. teaches hair care composition (abstract). The hair care composition is a hair shampoo in one embodiment (page 3, last paragraph). The composition incudes carrier such as O/W emulsion (page 7). The composition comprising silicone conditioner such as dimethicone and dimethiconol (page 122). In some embodiment, the hair composition comprises cationic conditioning agent including polymer (page 125-126). The composition optionally comprises UV filter including butyl methoxydibenzoylmethane and ethylhexyl methoxycinnamate and combination thereof at an amount of 0.001% to about 20% by weight (page 135, last three paragraph). The composition comprises color agent such as hinokitiol (page 140, last paragraph) at about 0.001% to about 6% by weight (page 142, 2nd paragraph). The composition comprises anti-dandruff agent (page 142, 4th paragraph). The composition comprises surfactant such as sodium lauryl ether sulphate (page 168, 1st paragraph). The shampoo composition comprises guars or HP guars (page 171). The hair conditioner may include cationic polymer guar derivative (page 192). The composition prevents dandruff generation (page 99, 1st paragraph)
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Johnson et al. teaching is not specific enough for anticipation
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claims 1-3 and 19-21, Johnson et al. teaches a shampoo composition in the form of O/W emulsion (carrier) comprising hinokitiol at about 0.001% to about 6% by weight, butyl methoxydibenzoylmethane and ethylhexyl methoxycinnamate (each at an amount of 0.001% to about 20% by weight, as long as the total of two is not more than 20%). When ethylhexyl methoxycinnamate is 2%, butyl methoxydibenzoylmethane is 1% and hinokitiol is 0.5%, the ratio of butyl methoxydibenzoylmethane to hinokitiol is 2:1, the ratio of ethylhexyl methoxycinnamate to hinokitiol is 4:1, the ratio of ethylhexyl methoxycinnamate to butyl methoxydibenzoylmethane is 2:1.
Regarding claims 7, 15 and 22, Johnson et al. teaches sodium lauryl ether sulphate.
Regarding claims 8 and 16-17, Johnson et al. teaches dimethicone.
Regarding claim 9, Johnson et al. teaches polymeric cationic conditioning agent.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. 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, especially in the absence of evidence to the contrary.
Claims 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (WO2020214854), as applied for the above 103 rejection for claim -3, 7-9, 15-17 and 19-22, further in view of Li et al. (US20170224607).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Johnson et al. teaching has already been discussed in the above 103 rejection and is incorporated herein by reference.
Li et al. teaches shampoo composition comprising cationic conditioner polymer such as Guar hydroxypropyltrimonium chloride (page 2, [000038-0040]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Johnson et al. is that Johnson et al. do not expressly teach cation guar. This deficiency in Johnson et al. is cured by the teachings of Li et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Johnson et al., as suggested by Li et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to use cation guar such as Guar hydroxypropyltrimonium chloride as cationic conditioner because Guar hydroxypropyltrimonium chloride is a suitable cationic conditioning agent in shampoo. MPEP 2144.07. Under guidance from Johnson et al. teaching cationic conditioning agent, Li et al. teaching shampoo composition comprising cationic conditioner polymer such as Guar hydroxypropyltrimonium chloride, it is obvious for one of ordinary skill in the art to use cation guar such as Guar hydroxypropyltrimonium chloride as cationic conditioner and produce instant claimed invention with reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. 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, especially in the absence of evidence to the contrary.
Response to Argument:
Applicants argued about unexpected results by simply mention Tables 3, 5, 7 and 9 from specification.
In response to this argument: this is not persuasive. Applicant’s arguments are not sufficient to overcome the 103 rejection at least for the following reasons. Firstly, applicants failed to meet their burden to explain and establish why the results from specification are unexpected and significant. MPEP 716.02(b), "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Secondly, applicant’s results are not commensurate in scope with the claims because the examples in specification only has single percentage and required many other ingredients at certain percentage, and claimed invention has much broad scope. MPEP 716.02(d), Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Thus, the 103 rejection is still proper.
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 1-3, 7-10 and 15-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16-21 of copending Application No. 18716671 in view of Johnson et al. (WO2020214854). The reference application teaches a hair care composition comprising hinokitiol and cation guar, in view of Johnson et al. teaching shampoo composition comprising hinokitiol, combination of butyl methoxydibenzoylmethane and ethylhexyl methoxycinnamate (each at an amount of 0.001% to about 20% by weight, as long as the total of two is not more than 20%), as well as dimethicone, it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Response to argument:
Applicants would evaluate when allowable subject matter is identified.
In response to this argument: this is not persuasive. Since no TD is filed, the double patenting rejection is maintained for record.
Conclusion
No claim is 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 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 JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613