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 .
Priority
Claims 1-20 claim priority to provisional application 63/342,638, with an effective filing date of 5/17/2022. There is no enabling disclosure or adequate written description for the limitations of claim 20 provided in the priority document, therefore claims 1-19 are examined with an effective filing date of 5/17/2022 and claim 20 is examined with an effective filing date of 5/17/2023.
Status of the Claims
Claims 1-18 and 20 are pending and under current examination. Claim 19 is cancelled.
Claim Objections
Claims 2 and 17 are objected to because of the following informalities:
Claim 2 lists safflower oil twice in the grouping-once on line 3 and once on line 5.
Claim 17 recites “…applying the hair conditioner composition of claim 1 to the air”. The instant specification recites a method of using a conditioner composition comprising a step of applying to the hair an effective amount of the conditioning compositions for conditioning the hair (page 18, line 19). The limitation “to the air” recited in claim 17 is therefore clearly a typographical error and should be amended to read “to the hair”.
Appropriate correction is required.
Withdrawn Claim Rejections
All rejections pertaining to claim 19 are moot because the claim is cancelled in the amendments to the claims filed 12/10/2025.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites the limitation "the mixture of (b), (c), and (d)" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive. The amendments to the claims filed 12/10/2025 fail to address the indefiniteness concerns outlines in the rejection above.
Claim Rejections - 35 USC § 103
Applicant’s amendments to the claims filed 12/10/2025 have necessitated the new grounds of rejection.
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.
Claims 1-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao (U.S. Patent Application No. 2020/0146955, publication date: 5/14/2020, of record), in view of Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004, of record) and Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record), as evidenced by PubChem (Diheptyl Succinate, available 8/8/2005, of record).
Applicant’s Invention
Applicant’s claim 1 is drawn to a hair conditioner composition comprising:(a) a L-basal lamellar gel network; (b) from about 0.01 wt.% to about 5 wt.% of a dicarboxylic acid amine salt; (c) from about 0.01 wt.% to about 5 wt.% of a diester; (d) from about 0.01 wt.% to about 5 wt.% of a glycerin ester copolymer; wherein the composition has a shear stress from about 40 Pa to about 800 Pa @ 950 1/s.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Zhao teaches a hair conditioner comprising a lamellar gel network [0037]. The hair conditioner may also contain a silicone as an oil for hair conditioning [0068]. The sheer stress of the gel network composition can be greater than 50Pa and less than 200Pa when measured at 950 s^-1 [0021]. The composition may include other additional components, which may be selected by the artisan according to the desired characteristics of the final product and which are suitable for rendering the composition more cosmetically or aesthetically acceptable or to provide them with additional usage benefits [0113].
Regarding claim 2, Zhao teaches that the conditioner composition can contain from about 0.5-8% by weight one or more oils for conditioning the hair [0064]. The oils may be chosen from castor oil, soybean oil, derivatized soybean oils such as maleated soy bean oil, safflower oil, cotton seed oil, corn oil, walnut oil, peanut oil, olive oil, cod liver oil, almond oil, avocado oil, palm oil and sesame oil, vegetable oils, sunflower seed oil, and vegetable oil derivatives; coconut oil and derivatized coconut oil, cottonseed oil and derivatized cottonseed oil, jojoba oil, and cocoa butter [0092].
Regarding claim 3, Zhao teaches that the gel network comprises a fatty alcohol, a cationic surfactant, and water or other suitable solvents [0037]. The conditioner composition can contain from about 1 to 10% by weight cationic surfactant [0046] and about 1 to 10% high melting point fatty compound [0057].
Regarding claims 4-16, Zhao teaches the relevant limitations of claim 1 as described above.
Regarding claim 17, Zhao teaches that the hair conditioning composition may be used in a method of treating hair comprising spreading the composition across all or a portion of the user’s hair [0145].
Regarding claim 18, Zhao teaches that the conditioner composition can have a liquid phase viscosity from about 5 cp to about 10,000 cp [0023].
Regarding claim 20, Zhao teaches that the particle size of the oils for hair conditioning may be from about 5nm to about 250nm [0064].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1, 5, 6, 7, and 8, Zhao does not teach the inclusion of a dicarboxylic acid amine salt, diester, or glycerin ester copolymer. However, this deficiency is cured by Zofchak and Burgo.
Zofchak teaches a hair conditioning formulation that comprises 0.1 to about 5% by weight of fatty dimethylamine salt (col. 3 line 66). The fatty dimethylamine salts embraced by Zofchak increase the slip and lubricity of hair and are effective at repairing split ends (col. 1 line 63 and col. 4 lines 30-35). Burgo teaches silicone replacements for personal care formulations, such as conditioners, that comprise a mixture of at least one polymeric ester and at least one non-polymeric ester (col. 4 lines 11-14 and 35-37). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33).
Regarding claim 1, Zhao does not teach a ratio of dicarboxylic acid amine salt to diester or glycerin ester copolymer or a ratio of diester to glycerin ester copolymer.
Regarding claim 4, Zhao does not teach the d-spacing of the lamellar gel network.
Regarding claims 5 and 6, Zhao does not teach the inclusion of a dicarboxylic acid amine salt. However, this deficiency is cured by Zofchak.
Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004) teaches a hair conditioning formulation that comprises from 0.1 to about 5% by weight of fatty dimethylamine salt (col. 3 line 66). The fatty dimethylamine salts include lauryldimethylamine dimer dilinoleate, behenamidopropyldimethylamine dimer dilinoleate, and linoleamidopropyldimethylamine dimer dilinoleate (col. 4 lines 1-12). U.S. Patent No. 4,548,810, incorporated by reference in the disclosure of Zofchak (col. 4 lines 14-15), teaches that the fatty dimethyl amine salts are a reaction product of a fatty acid and amine (col. 3 line 61 of the ‘810 patent).
Regarding claims 7 and 8, Zhao does not teach the inclusion of a diester. However, this deficiency is Burgo.
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Burgo teaches silicone replacements for personal care formulations, such as conditioners, that comprise a mixture of at least one polymeric ester and at least one non-polymeric ester (col. 4 lines 11-14 and 35-37). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). PubChem teaches that diheptyl succinate has a structure:
in which the R7 of the instant claim is a C2 straight chain saturated hydrocarbon group and R8 and R9 of the instant claim are C7 straight chain saturated hydrocarbon groups.
Regarding claim 9, Zhao does not teach a viscosity of the diester. However, this deficiency is cured by Burgo.
Burgo teaches that the non-polymeric ester diheptyl succinate has a viscosity of 8.6 cSt at 25oC and 5.8 cSt at 40oC (col. 8 Table 1).
Regarding claims 10-13, Zhao does not teach the inclusion of a glycerin ester copolymer. However, this deficiency is cured by Burgo.
Burgo teaches silicone replacements for personal care formulations, such as conditioners, that comprise a mixture of at least one polymeric ester and at least one non-polymeric ester (col. 4 lines 11-14 and 35-37). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The first dicarboxylic acid may be chosen from succinic acid, glutaric acid, and sebacic acid (col. 5 lines 47-53) and the monofunctional dicarboxylic acids may be chosen from caproic acid, heptanoic acid, caprylic acid, decanoic acid, and dodecanoic acid (col. 5 lines 54-60). With regards to the “polyfunctional” and “monocarboxylic acid” limitations of instant claims 10, 12 and 13, the prior art teaches the same acids as claimed and therefore, the polyfunctional and “monocarboxylic acid” properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Regarding claims 14-16, Zhao does not teach the inclusion of a glycerin ester copolymer. However, this deficiency is cured by Burgo.
Burgo teaches silicone replacements for personal care formulations, such as conditioners, that comprise a mixture of at least one polymeric ester and at least one non-polymeric ester (col. 4 lines 11-14 and 35-37). The polymeric ester may be a reaction product of glycerol, octanoic acid (caprylic acid), and sebacic acid (col. 8 Table 2.1) with a viscosity between 2525-6200 cP (col. 9 Table 2.2). The hydroxyl value of the glycerol, caprylic acid, and sebacic acid reaction product is from 45.4-85.3 m KOH/g (col. 9 Table 2.2).
Regarding claim 20, Zhao does not teach a particle size for a mixture of dicarboxylic acid amine salts, diester, and glycerol ester copolymer in the conditioning composition.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
With regard to the diester and glycerin ester copolymer limitations of claims 1 and 7-15, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (silicone oils and non-polymeric ester and polymeric ester mixture for the purpose of conditioning hair). See MPEP 2144.06-II.
With regard to the dicarboxylic acid amine salt limitation of claims 1, 5 and 6, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional hair conditioning ingredients used in hair conditioning compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the weight percentage of diester and glycerin ester copolymer as specified in claim 1, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Burgo teaches that the silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The ratio of polymeric to non-polymeric ester in the silicone replacement may be adjusted to achieve a specific viscosity (col. 6 line 46). The Applicants' specification provides no evidence that the selected weight percentage range in claim 1 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to synergistic effect of the non-polymeric and polymeric esters in the hair conditioning composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of the individual components of the silicone replacement composition. One of ordinary skill in the art would have been motivated to change the weight percentage of polymeric and non-polymeric esters as this could be expected to be advantageous for adjusting the desired viscosity of the composition.
Furthermore, the ratios of dicarboxylic acid amine salt, diester, and glycerol are clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratios in order to best achieve the desired results as such would provide hair conditioning effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, dicarboxylic acid amine salts, diesters, and glycerol ester copolymers provide all provide a hair conditioning effect. The Examiner considers it prima facie obvious to optimize the ratios of hair conditioning agents present in a hair conditioning composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that that the amounts of dicarboxylic acid amine salts, diester, and glycerol ester copolymer present would have a direct effect on the hair conditioning properties of composition and therefore be an optimizable variable.
Regarding claim 4, Zhao does not disclose the d-spacing properties of the lamellar gel network as recited in claim 4. However, the lamellar gel network as claimed is not structurally distinguishable from the disclosure of Zhao and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Regarding the particle size of the mixture of dicarboxylic acid amine salt, diester, and glycerol ester copolymer as specified in claim 20, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Zhao teaches that the conditioning oils suspending in a lamellar gel network may have a particle size from about 5nm to about 250nm [0064]. The Applicants' specification provides no evidence that the selected particle size range of the conditioning agents in claim 20 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the conditioning effects rendered by dicarboxylic acid amine salts, diesters, and glycerol ester copolymers , it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the particle size of the conditioning agents suspended in the lamellar gel network. One of ordinary skill in the art would have been motivated to change the particle size as this could be expected to be advantageous for altering the hair conditioning effects of the composition.
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
On page 8, Applicant argues that there is no teaching or suggestion in Zhao, Zofchak, or Burgo to take a conditioning composition having a lamellar gel network and a silicone conditioning agent and modify that composition by replacing the silicone or to adjust the weight percentage of the individual components. This is not found persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Burgo teaches a silicone replacement for personal care formulations the comprise at least one polymeric ester and at least one polymeric ester (col. 4 lines 11-14 and 35-37) and Zofchak teaches that fatty dimethylamine salt may be included in a hair conditioning formulation to increase the slip and lubricity of hair and are effective at repairing split ends (col. 1 line 63 and col. 4 lines 30-35). As described in the rejection statement above, it would have been prima facie obvious to substitute the equivalents of silicone oils and the combination of non-polymeric ester and polymeric esters and to combine conventional hair conditioning ingredients to form a hair conditioning composition. With regard to the weight percentages of the components present in the composition, due to synergistic effect of the non-polymeric and polymeric esters in the hair conditioning composition and the hair conditioning effect of each component present in the composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of the individual components of the silicone replacement composition. Therefore, the argument is not persuasive and the rejection is maintained.
On page 8, Applicant argues that the office action relied on impermissible hindsight. This is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
On page 8, Applicant argues that there is no teaching of a conditioning composition having a particle size of the mixture of (b), (c), and (d) when suspended in the L-basal lamellar gel network and no reason to expect that combining the teachings of the asserted references would result in the claimed particle size. This is not found persuasive. As described in the rejection statement above, Zhao teaches that the particle size of the oils for hair conditioning may be from about 5nm to about 250nm [0064]. The particle size taught by Zhao is not restricted to the particle size of silicone. The artisan of ordinary skill in the art of filing would have understood that a silicone replacement with similar conditioning effects such as the mixture of (b), (c), and (d) may also have a particle size with the range taught by Zhao. Therefore, the argument is not persuasive and the rejection is maintained.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,464,724 in view of Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004, of record) and Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘724 patent embrace a hair conditioner composition comprising a gel network comprising 1 to 10 wt. % of a cationic surfactant, 1 to 10 wt. % of a fatty alcohol, and water. The composition comprises a liquid phase viscosity from about 5 cp to about 10,000 cP and a shear stress of greater than 50 and less than 200 Pa. The claims of the ‘724 patent also embrace a method of conditioning hair using the hair conditioner composition.
The claims of the ‘724 patent do not embrace a dicarboxylic acid amine salt, diester, glycerin ester copolymer, or a natural oil or wax. The claims of the ‘724 patent also do not embrace the d-spacing of the lamellar gel network, viscosity of the diester or the glycerin ester copolymer, hydroxyl value of the glycerin ester copolymer, or a particle size of the mixture of conditioning oil dispersed in the lamellar gel network. However, these deficiencies are cured by Zofchak and Burgo.
Zofchak teaches a hair conditioning formulation that comprises 0.1 to about 5% by weight of fatty dimethylamine salt (col. 3 line 66). The fatty dimethylamine salts embraced by Zofchak increase the slip and lubricity of hair and are effective at repairing split ends (col. 1 line 63 and col. 4 lines 30-35). The fatty dimethylamine salts include lauryldimethylamine dimer dilinoleate, behenamidopropyldimethylamine dimer dilinoleate, and linoleamidopropyldimethylamine dimer dilinoleate (col. 4 lines 1-12). U.S. Patent No. 4,548,810, incorporated by reference in the disclosure of Zofchak (col. 4 lines 14-15), teaches that the fatty dimethyl amine salts are a reaction product of a fatty acid and amine (col. 3 line 61 of the ‘810 patent).
Burgo teaches silicone replacements for personal care formulations, such as conditioners, that comprise a mixture of at least one polymeric ester and at least one non-polymeric ester (col. 4 lines 11-14 and 35-37). The composition may contain olive oil (col. 7 line 11). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The first dicarboxylic acid may be chosen from succinic acid, glutaric acid, and sebacic acid (col. 5 lines 47-53) and the monofunctional dicarboxylic acids may be chosen from caproic acid, heptanoic acid, caprylic acid, decanoic acid, and dodecanoic acid (col. 5 lines 54-60). With regards to the “polyfunctional” and “monocarboxylic acid” limitations of instant claims 10, 12 and 13, the prior art teaches the same acids as claimed and therefore, the polyfunctional and “monocarboxylic acid” properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Burgo also teaches that the non-polymeric ester diheptyl succinate has a viscosity of 8.6 cSt at 25oC and 5.8 cSt at 40oC (col. 8 Table 1). The polymeric ester may be a reaction product of glycerol, octanoic acid (caprylic acid), and sebacic acid (col. 8 Table 2.1) with a viscosity between 2525-6200 cP (col. 9 Table 2.2). The hydroxyl value of the glycerol, caprylic acid, and sebacic acid reaction product is from 45.4-85.3 m KOH/g (col. 9 Table 2.2).
With regard to the diester, glycerin ester copolymer, and natural oil limitations the instant claims, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (silicone oils and non-polymeric ester and polymeric ester mixture for the purpose of conditioning hair). See MPEP 2144.06-II.
With regard to the dicarboxylic acid amine salt limitation of the instant claims, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional hair conditioning ingredients used in hair conditioning compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the weight percentage of diester and glycerin ester copolymer, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Burgo teaches that the silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The ratio of polymeric to non-polymeric ester in the silicone replacement may be adjusted to achieve a specific viscosity (col. 6 line 46). The Applicants' specification provides no evidence that the selected weight percentage range in claim 1 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to synergistic effect of the non-polymeric and polymeric esters in the hair conditioning composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of the individual components of the silicone replacement composition. One of ordinary skill in the art would have been motivated to change the weight percentage of polymeric and non-polymeric esters as this could be expected to be advantageous for adjusting the desired viscosity of the composition.
The claims of the ‘724 patent do not disclose the d-spacing properties of the lamellar gel network as recited in the instant claim 4. However, the lamellar gel network as claimed is not structurally distinguishable from the claims of the ‘724 patent and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
The ratios of dicarboxylic acid amine salt, diester, and glycerol are clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratios in order to best achieve the desired results as such would provide hair conditioning effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, dicarboxylic acid amine salts, diesters, and glycerol ester copolymers provide all provide a hair conditioning effect. The Examiner considers it prima facie obvious to optimize the ratios of hair conditioning agents present in a hair conditioning composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that that the amounts of dicarboxylic acid amine salts, diester, and glycerol ester copolymer present would have a direct effect on the hair conditioning properties of composition and therefore be an optimizable variable.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable 1-16 of U.S. Patent No. 11,464,724 in view of Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004, of record) and Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record), as applied to claims 1-18 above, and further in view of Deckner (Prospector Knowledge Center, publication year: 2016, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘724 patent embrace the relevant limitations as described above. The claims of the ‘724 patent do not embrace a particle size of the conditioning components suspended in the lamellar gel network. However, this deficiency is cured by Deckner. Deckner teaches that using a high shear to reduce the particle size in a lamellar gel network can help to swell fatty alcohols longer than C18 to 20 in the formation of lamellar gel network (pg. 2).
The particle size of conditioning agents suspending in the lamellar gel network is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal particle size in order to best achieve the desired results as such would provide advantageous effect on fatty alcohol swelling. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Deckner teaches that reducing the particle size can help to swell long fatty alcohols in a lamellar gel network . The Examiner considers it prima facie obvious to optimize the particle size, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the particle size would have a direct effect on the swellability of a lamellar gel network with long fatty alcohols and therefore be an optimizable variable.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,957,773 in view of Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004, of record) and Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record). , and further in view of Deckner (Prospector Knowledge Center, publication year: 2016, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘773 patent embrace a hair conditioner composition comprising a gel network comprising 2.5-6.7 wt.% of behenamidopropyl dimethylamine, 3-8 wt. % of a fatty alcohol, and an aqueous carrier. The composition has a sheer stress of about 75Pa to about 575 Pa. The claims of the ‘773 patent also embrace a d-spacing of less than 32nm.
The claims of the ‘773 patent do not embrace specific viscosity of the mixture, a dicarboxylic acid amine salt, diester, glycerin ester copolymer, or a natural oil or wax. The claims of the ‘773 patent also do not embrace viscosity of the diester or the glycerin ester copolymer, or a hydroxyl value of the glycerin ester copolymer. The claims of the ‘724 patent also do not embrace a method of conditioning hair. However, these deficiencies are cured by Zofchak and Burgo.
Zofchak teaches a hair conditioning formulation that comprises 0.1 to about 5% by weight of fatty dimethylamine salt (col. 3 line 66). The fatty dimethylamine salts embraced by Zofchak increase the slip and lubricity of hair and are effective at repairing split ends (col. 1 line 63 and col. 4 lines 30-35). The fatty dimethylamine salts include lauryldimethylamine dimer dilinoleate, behenamidopropyldimethylamine dimer dilinoleate, and linoleamidopropyldimethylamine dimer dilinoleate (col. 4 lines 1-12). U.S. Patent No. 4,548,810, incorporated by reference in the disclosure of Zofchak (col. 4 lines 14-15), teaches that the fatty dimethyl amine salts are a reaction product of a fatty acid and amine (col. 3 line 61 of the ‘810 patent).
Burgo teaches silicone replacements for personal care formulations, such as conditioners, that comprise a mixture of at least one polymeric ester and at least one non-polymeric ester (col. 4 lines 11-14 and 35-37). The composition may contain olive oil (col. 7 line 11). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The first dicarboxylic acid may be chosen from succinic acid, glutaric acid, and sebacic acid (col. 5 lines 47-53) and the monofunctional dicarboxylic acids may be chosen from caproic acid, heptanoic acid, caprylic acid, decanoic acid, and dodecanoic acid (col. 5 lines 54-60). With regards to the “polyfunctional” and “monocarboxylic acid” limitations of instant claims 10, 12 and 13, the prior art teaches the same acids as claimed and therefore, the polyfunctional and “monocarboxylic acid” properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Burgo also teaches that the non-polymeric ester diheptyl succinate has a viscosity of 8.6 cSt at 25oC and 5.8 cSt at 40oC (col. 8 Table 1). The polymeric ester may be a reaction product of glycerol, octanoic acid (caprylic acid), and sebacic acid (col. 8 Table 2.1) with a viscosity between 2525-6200 cP (col. 9 Table 2.2). The hydroxyl value of the glycerol, caprylic acid, and sebacic acid reaction product is from 45.4-85.3 m KOH/g (col. 9 Table 2.2).
With regard to the diester, glycerin ester copolymer, and natural oil limitations the instant claims, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (silicone oils and non-polymeric ester and polymeric ester mixture for the purpose of conditioning hair). See MPEP 2144.06-II.
With regard to the dicarboxylic acid amine salt limitation of the instant claims, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional hair conditioning ingredients used in hair conditioning compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the weight percentage of diester and glycerin ester copolymer, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Burgo teaches that the silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The ratio of polymeric to non-polymeric ester in the silicone replacement may be adjusted to achieve a specific viscosity (col. 6 line 46). The Applicants' specification provides no evidence that the selected weight percentage range in claim 1 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to synergistic effect of the non-polymeric and polymeric esters in the hair conditioning composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of the individual components of the silicone replacement composition. One of ordinary skill in the art would have been motivated to change the weight percentage of polymeric and non-polymeric esters as this could be expected to be advantageous for adjusting the desired viscosity of the composition.
The ratios of dicarboxylic acid amine salt, diester, and glycerol are clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratios in order to best achieve the desired results as such would provide hair conditioning effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, dicarboxylic acid amine salts, diesters, and glycerol ester copolymers provide all provide a hair conditioning effect. The Examiner considers it prima facie obvious to optimize the ratios of hair conditioning agents present in a hair conditioning composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that that the amounts of dicarboxylic acid amine salts, diester, and glycerol ester copolymer present would have a direct effect on the hair conditioning properties of composition and therefore be an optimizable variable.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,957,773 in view of Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004, of record) and Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record), as applied to claims 1-18 above, and further in view of Zhao (U.S. Patent Application No. 2020/0146955, publication date: 5/14/2020, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘773 patent embrace the relevant limitations as described above. The claims of the ‘773 patent do not embrace a particle size of the mixture of conditioning oil dispersed in the lamellar gel network. However, this deficiency is cured by Zhao. Zhao teaches a hair conditioning composition comprising a lamellar gel network in which the particle size of the oils for hair conditioning may be from about 5nm to about 250nm [0064].
Regarding the particle size of the mixture of dicarboxylic acid amine salt, diester, and glycerol ester copolymer as specified in the instant claim 20, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Zhao teaches that the conditioning oils suspending in a lamellar gel network may have a particle size from about 5nm to about 250nm [0064]. The Applicants' specification provides no evidence that the selected particle size range of the conditioning agents in claim 20 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the conditioning effects rendered by dicarboxylic acid amine salts, diesters, and glycerol ester copolymers, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the particle size of the conditioning agents suspended in the lamellar gel network. One of ordinary skill in the art would have been motivated to change the particle size as this could be expected to be advantageous for altering the hair conditioning effects of the composition.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,896,693 in view of Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004, of record) and Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘693 patent embrace a hair conditioner composition comprising an aqueous carrier, about 0.1-10 wt. % of a cationic surfactant, and about 1.5-15 wt. % of a high melting point fatty compound. The composition contains a gel network. The conditioner composition has a shear stress oof about 50-500 Pa.
The claims of the ‘693 patent do not embrace a dicarboxylic acid amine salt, diester, glycerin ester copolymer, or a natural oil or wax. The claims of the ‘693 patent also do not embrace the d-spacing of the lamellar gel network, viscosity of the diester or the glycerin ester copolymer, hydroxyl value of the glycerin ester copolymer, or a method of conditioning hair. However, these deficiencies are cured by Zofchak and Burgo.
Zofchak teaches a hair conditioning formulation that comprises 0.1 to about 5% by weight of fatty dimethylamine salt (col. 3 line 66). The fatty dimethylamine salts embraced by Zofchak increase the slip and lubricity of hair and are effective at repairing split ends (col. 1 line 63 and col. 4 lines 30-35). The fatty dimethylamine salts include lauryldimethylamine dimer dilinoleate, behenamidopropyldimethylamine dimer dilinoleate, and linoleamidopropyldimethylamine dimer dilinoleate (col. 4 lines 1-12). U.S. Patent No. 4,548,810, incorporated by reference in the disclosure of Zofchak (col. 4 lines 14-15), teaches that the fatty dimethyl amine salts are a reaction product of a fatty acid and amine (col. 3 line 61 of the ‘810 patent).
Burgo teaches silicone replacements for personal care formulations, such as conditioners, that comprise a mixture of at least one polymeric ester and at least one non-polymeric ester (col. 4 lines 11-14 and 35-37). The composition may contain olive oil (col. 7 line 11). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The first dicarboxylic acid may be chosen from succinic acid, glutaric acid, and sebacic acid (col. 5 lines 47-53) and the monofunctional dicarboxylic acids may be chosen from caproic acid, heptanoic acid, caprylic acid, decanoic acid, and dodecanoic acid (col. 5 lines 54-60). With regards to the “polyfunctional” and “monocarboxylic acid” limitations of instant claims 10, 12 and 13, the prior art teaches the same acids as claimed and therefore, the polyfunctional and “monocarboxylic acid” properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Burgo also teaches that the non-polymeric ester diheptyl succinate has a viscosity of 8.6 cSt at 25oC and 5.8 cSt at 40oC (col. 8 Table 1). The polymeric ester may be a reaction product of glycerol, octanoic acid (caprylic acid), and sebacic acid (col. 8 Table 2.1) with a viscosity between 2525-6200 cP (col. 9 Table 2.2). The hydroxyl value of the glycerol, caprylic acid, and sebacic acid reaction product is from 45.4-85.3 m KOH/g (col. 9 Table 2.2).
With regard to the diester, glycerin ester copolymer, and natural oil limitations the instant claims, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (silicone oils and non-polymeric ester and polymeric ester mixture for the purpose of conditioning hair). See MPEP 2144.06-II.
With regard to the dicarboxylic acid amine salt limitation of the instant claims, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional hair conditioning ingredients used in hair conditioning compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the weight percentage of diester and glycerin ester copolymer, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Burgo teaches that the silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The ratio of polymeric to non-polymeric ester in the silicone replacement may be adjusted to achieve a specific viscosity (col. 6 line 46). The Applicants' specification provides no evidence that the selected weight percentage range in claim 1 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to synergistic effect of the non-polymeric and polymeric esters in the hair conditioning composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of the individual components of the silicone replacement composition. One of ordinary skill in the art would have been motivated to change the weight percentage of polymeric and non-polymeric esters as this could be expected to be advantageous for adjusting the desired viscosity of the composition.
The claims of the ‘693 patent do not disclose the d-spacing properties of the lamellar gel network as recited in the instant claim 4. However, the lamellar gel network as claimed is not structurally distinguishable from the claims of the ‘693 patent and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
The ratios of dicarboxylic acid amine salt, diester, and glycerol are clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratios in order to best achieve the desired results as such would provide hair conditioning effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, dicarboxylic acid amine salts, diesters, and glycerol ester copolymers provide all provide a hair conditioning effect. The Examiner considers it prima facie obvious to optimize the ratios of hair conditioning agents present in a hair conditioning composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that that the amounts of dicarboxylic acid amine salts, diester, and glycerol ester copolymer present would have a direct effect on the hair conditioning properties of composition and therefore be an optimizable variable.
Regarding the method of conditioning hair using the composition embraced by the claims of the ‘693 patent, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. Because the hair conditioning composition embraced by the ‘693 is substantially identical to that of the instant claims, therefore the method of conditioning hair is inherent. See MPEP 2112.01 (I).
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,896,693 in view of Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004, of record) and Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record), as applied to claims 1-18 above, and further in view of Zhao (U.S. Patent Application No. 2020/0146955, publication date: 5/14/2020, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘693 patent embrace the relevant limitations as described above. The claims of the ‘693 patent do not embrace a particle size of the mixture of conditioning oil dispersed in the lamellar gel network. However, this deficiency is cured by Zhao. Zhao teaches a hair conditioning composition comprising a lamellar gel network in which the particle size of the oils for hair conditioning may be from about 5nm to about 250nm [0064].
Regarding the particle size of the mixture of dicarboxylic acid amine salt, diester, and glycerol ester copolymer as specified in the instant claim 20, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Zhao teaches that the conditioning oils suspending in a lamellar gel network may have a particle size from about 5nm to about 250nm [0064]. The Applicants' specification provides no evidence that the selected particle size range of the conditioning agents in claim 20 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the conditioning effects rendered by dicarboxylic acid amine salts, diesters, and glycerol ester copolymers, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the particle size of the conditioning agents suspended in the lamellar gel network. One of ordinary skill in the art would have been motivated to change the particle size as this could be expected to be advantageous for altering the hair conditioning effects of the composition.
Claims 1-18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/039,128 in view of Zofchak (U.S. Patent No. 6,723,310, issue date: 4/20/2004, of record), Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record), and Zhao (U.S. Patent Application No. 2020/0146955, publication date: 5/14/2020, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims.
Inter alia, the claims of the ‘128 application embrace a hair care composition comprising a gel matrix comprising a cationic surfactant, a high melting point fatty compound, and an aqueous carrier. The composition may also contain about 30 wt. % of a triglyceride oil selected from safflower seed oil, avocado oil, almond oil, olive oil, tea seed oil, chullu seed oil, peanut oil, and marula oil. The fatty alcohol is present at a level of from about 0.1-20 wt. % and the cationic surfactant is present from 0.1-10 wt.%.
The claims of the ‘128 application do not embrace a dicarboxylic acid amine salt, diester, glycerin ester copolymer, or a shear stress of the composition. The claims of the ‘693 patent also do not embrace the d-spacing of the lamellar gel network, viscosity of the diester or the glycerin ester copolymer, hydroxyl value of the glycerin ester copolymer, a particle size of the mixture of conditioning oil dispersed in the lamellar gel network, or a method of conditioning hair. However, these deficiencies are cured by Zofchak, Burgo, and Zhao.
Zhao teaches a hair conditioner comprising a lamellar gel network [0037]. The hair conditioner may also contain a silicone as an oil for hair conditioning [0068]. The sheer stress of the gel network composition can be greater than 50Pa and less than 200Pa when measured at 950 s^-1 [0021]. The composition may include other additional components, which may be selected by the artisan according to the desired characteristics of the final product and which are suitable for rendering the composition more cosmetically or aesthetically acceptable or to provide them with additional usage benefits [0113].
Zofchak teaches a hair conditioning formulation that comprises 0.1 to about 5% by weight of fatty dimethylamine salt (col. 3 line 66). The fatty dimethylamine salts embraced by Zofchak increase the slip and lubricity of hair and are effective at repairing split ends (col. 1 line 63 and col. 4 lines 30-35). The fatty dimethylamine salts include lauryldimethylamine dimer dilinoleate, behenamidopropyldimethylamine dimer dilinoleate, and linoleamidopropyldimethylamine dimer dilinoleate (col. 4 lines 1-12). U.S. Patent No. 4,548,810, incorporated by reference in the disclosure of Zofchak (col. 4 lines 14-15), teaches that the fatty dimethyl amine salts are a reaction product of a fatty acid and amine (col. 3 line 61 of the ‘810 patent).
Burgo teaches silicone replacements for personal care formulations, such as conditioners, that comprise a mixture of at least one polymeric ester and at least one non-polymeric ester (col. 4 lines 11-14 and 35-37). The composition may contain olive oil (col. 7 line 11). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The non-polymeric ester is a reaction product of at least one second dicarboxylic acid and at least one second monofunctional alcohol (col. 5 lines 6-8), such as diheptyl succinate (col. 7, line 64 Example 1). The polymeric ester is an esterification reaction product of at least one first dicarboxylic acid, at least one first monofunctional alcohol or monofunctional carboxylic acid and glycerin and/or a derivative thereof (col. 4 lines 57-63). The first dicarboxylic acid may be chosen from succinic acid, glutaric acid, and sebacic acid (col. 5 lines 47-53) and the monofunctional dicarboxylic acids may be chosen from caproic acid, heptanoic acid, caprylic acid, decanoic acid, and dodecanoic acid (col. 5 lines 54-60). With regards to the “polyfunctional” and “monocarboxylic acid” limitations of instant claims 10, 12 and 13, the prior art teaches the same acids as claimed and therefore, the polyfunctional and “monocarboxylic acid” properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Burgo also teaches that the non-polymeric ester diheptyl succinate has a viscosity of 8.6 cSt at 25oC and 5.8 cSt at 40oC (col. 8 Table 1). The polymeric ester may be a reaction product of glycerol, octanoic acid (caprylic acid), and sebacic acid (col. 8 Table 2.1) with a viscosity between 2525-6200 cP (col. 9 Table 2.2). The hydroxyl value of the glycerol, caprylic acid, and sebacic acid reaction product is from 45.4-85.3 m KOH/g (col. 9 Table 2.2).
With regard to the diester, glycerin ester copolymer, and natural oil limitations the instant claims, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (silicone oils and non-polymeric ester and polymeric ester mixture for the purpose of conditioning hair). See MPEP 2144.06-II.
Regarding the shear stress of the composition embraced by the ‘128 application as, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Zhao that the shear stress of the gel network composition can be greater than 50 and less than 200 Pa, which results in a foam with consumer preferred density and compliance [0021]. The Applicants' specification provides no evidence that the selected shear stress in the instant claim 1 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the direct effect of shear stress on the foaming density properties of the formulation, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the shear stress of the composition embraced by the claims of the ‘128 application. One of ordinary skill in the art would have been motivated to change the shear stress as this could be expected to be advantageous for the consumer desired formulation properties of the composition.
With regard to the dicarboxylic acid amine salt limitation of the instant claims, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional hair conditioning ingredients used in hair conditioning compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the weight percentage of diester and glycerin ester copolymer, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Burgo teaches that the silicone replacement may be present in the personal care formulation in an amount of about 1-95% by weight (col. 7 line 34) and polymeric and non-polymeric esters may be present in the silicone replacement in any ratio desired, so long as the performance characteristics are achieved or retained (col. 6 lines 31-33). The ratio of polymeric to non-polymeric ester in the silicone replacement may be adjusted to achieve a specific viscosity (col. 6 line 46). The Applicants' specification provides no evidence that the selected weight percentage range in claim 1 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to synergistic effect of the non-polymeric and polymeric esters in the hair conditioning composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of the individual components of the silicone replacement composition. One of ordinary skill in the art would have been motivated to change the weight percentage of polymeric and non-polymeric esters as this could be expected to be advantageous for adjusting the desired viscosity of the composition.
The claims of the ‘128 application do not disclose the d-spacing properties of the lamellar gel network as recited in the instant claim 4. However, the lamellar gel network as claimed is not structurally distinguishable from the claims of the ‘128 application and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
The ratios of dicarboxylic acid amine salt, diester, and glycerol are clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal ratios in order to best achieve the desired results as such would provide hair conditioning effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, dicarboxylic acid amine salts, diesters, and glycerol ester copolymers provide all provide a hair conditioning effect. The Examiner considers it prima facie obvious to optimize the ratios of hair conditioning agents present in a hair conditioning composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that that the amounts of dicarboxylic acid amine salts, diester, and glycerol ester copolymer present would have a direct effect on the hair conditioning properties of composition and therefore be an optimizable variable.
Regarding the particle size of the mixture of dicarboxylic acid amine salt, diester, and glycerol ester copolymer as specified in claim 20, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Zhao teaches that the conditioning oils suspending in a lamellar gel network may have a particle size from about 5nm to about 250nm [0064]. The Applicants' specification provides no evidence that the selected particle size range of the conditioning agents in claim 20 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the conditioning effects rendered by dicarboxylic acid amine salts, diesters, and glycerol ester copolymers , it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the particle size of the conditioning agents suspended in the lamellar gel network. One of ordinary skill in the art would have been motivated to change the particle size as this could be expected to be advantageous for altering the hair conditioning effects of the composition.
This is a provisional nonstatutory double patenting rejection because the co-pending claims have not in fact been patented.
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 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.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614