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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/26/2026 has been entered.
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 1-17 and 20 are pending and under current examination. Claims 18 and 19 are cancelled.
Withdrawn Claim Objections and Rejections
All objections pertaining to claims 2 and 17 are withdrawn in view of the amendments to the claims filed 5/26/2026.
All rejections pertaining to claim 18 are moot because the claim is cancelled in the amendments to the claims filed 5/26/2026.
All rejections under 35 U.S.C 112(b) are withdrawn in view of the amendments to the claims filed 5/26/2026.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendments to the claims filed 5/26/2026 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 1-17 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 Carson (U.S. Patent Application No. 2010/0150851, publication year: 2010) 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).
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 one or more oils, such as silicone 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].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1, 5, 6-8, and 10-16, Zhao does not teach the inclusion of a dicarboxylic acid amine salt, diester, or glycerin ester copolymer. However, this deficiency is cured by Carson and Burgo.
Carson teaches a hair conditioner formulation having improved hair detangling when compared to commonly used hair conditioner quaternary surfactants. This is accomplished through the use of Necon DLD or a related compound in combination with a cationic quaternary amine surfactant [0008]. Necon DLD is a combination of dimer linoleic acid with lauryldimethylamine [0004]. Necon DLD combined with a cationic quaternary amine conditioner enhances deposition and improves wet combing [0036].
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). 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). 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). Using the silicone replacements, one can formulate personal care formulations, including skin and hair products, that contain natural ingredients, are substantially free of silicone, and are perceived by human end users as having the same or similar aesthetic, tactile and/or skinfeel properties of conventional silicone containing formulations (col. 4 lines 22-28). As a matter of formulation convenience, it may be desirable to use an identified ratio of polymeric polymer to non-polymeric polymer in the silicone replacement that is adjusted so that the silicone replacement has a specific viscosity (col. 6 lines 42-46). PubChem teaches that diheptyl succinate has a
PNG
media_image1.png
200
400
media_image1.png
Greyscale
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.
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 claim 1, Zhao does not teach a ratio of dicarboxylic acid amine salt to diester or glycerin ester copolymer, a ratio of diester to glycerin ester copolymer, or a viscosity of the mixture of dicarboxylic acid amine salt, diester, and glycerin ester copolymer.
Regarding claim 4, Zhao does not teach the d-spacing of the lamellar gel network.
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).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1 and 7-16, it would have been prima facie obvious to one of ordinary skill in the art of filing to utilize the silicone replacement of Burgo in place of the silicone oil of Zhao. One would have understood in view of Burgo that the combination of a non-polymeric ester such as diheptyl succinate and a polymeric ester used in place of silicone in a personal care formulation produces the same or similar aesthetic, tactile and/or skinfeel properties of conventional silicone containing formulations (col. 4 lines 22-28). It would have been obvious to one of ordinary skill in the art to substitute one known element (the silicone oil of Zhao) for another (the silicone replacement of Burgo), and the results of the substitution would have been predictable (the same or similar aesthetic, tactile and/or skinfeel properties of conventional silicone containing formulations). The artisan of ordinary skill in the art would have had reasonable expectation of success because Burgo teaches that the silicone replacement may be utilized in conditioners. See MPEP 2143 (I)(B).
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.
Furthermore, the viscosity of the mixture of dicarboxylic acid amine salt, diester, and glycerin ester copolymer 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 viscosity in order to best achieve the desired results as such would provide advantageous formulation 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, Brough teaches that the ratio of diester to glycerin ester copolymer has a direct effect on the viscosity of a composition. The Examiner considers it prima facie obvious to optimize the viscosity of the mixture of dicarboxylic acid amine salt, diester, and glycerin ester copolymer, and therefore the viscosity of the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the that the ratio of diester to glycerin ester copolymer has a direct effect on the viscosity of a composition and therefore be is 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.
Claims 20 is 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 Carson (U.S. Patent Application No. 2010/0150851, publication year: 2010) and Burgo (U.S. Patent No. 9,610,237, issue date: 4/4/2017, of record), as applied to claims 1-17 above, and further in view of Hutton (U.S. Patent Application No. 2018/0098923, publication year: 2018), as evidenced by PubChem (Diheptyl Succinate, available 8/8/2005, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
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)
Zhao does not teach a particle size of components (b), (c), and (d) suspending in the lamellar gel network. However, this deficiency is cured by Hutton.
Hutton teaches that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The particle size of the components dispersed in the lamellar gel phase 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 swelling of the gel network phase in water. 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, Hutton teaches that that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176]. The Examiner considers it prima facie obvious to optimize the particle size of components suspending in a lamellar gel network, 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 swelling of the lamellar gel network and therefore be an optimizable variable.
Response to Arguments
Applicant's arguments filed 5/26/202 have been fully considered but they are not persuasive.
On page 8, Applicant argues that none of the asserted references teach or suggest a conditioning composition having all of the required components of the present claim or that the viscosity of the dicarboxylic acid amine sale, diester, and glycerin ester copolymer mixture is less than 5000 cps @ 950 1/s. This is not found persuasive for the reasons described in the obviousness rejection above.
On page 8, Applicant argues that there is not teaching or suggestion to modify the asserted references in the fashion presently claimed. 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). Please also refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. In the instant case, as described in the obviousness rejection above, one of ordinary skill in the art would have recognized in view of Burgo that a diester and glycerin ester copolymer may be utilized in place of the silicone oil of Zhao and in view of Carson that that dicarboxylic acid amine salt may be combined with the hair conditioning composition of Zhao to form a hair conditioning composition. As described in the obviousness rejection above, Brough teaches that the ratio of diester to glycerin ester copolymer has a direct effect on the viscosity of a composition. The Examiner considers it prima facie obvious to optimize the viscosity of the mixture of dicarboxylic acid amine salt, diester, and glycerin ester copolymer, and therefore the viscosity of the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the that the ratio of diester to glycerin ester copolymer has a direct effect on the viscosity of a composition and therefore be is optimizable variable.
On page 9, Applicant argues that the broad motivation of combining equivalents lacks a specific teaching or suggestion to combine the claimed components (b), (c), and (d) in the recited specific ratios to achieve the claimed functional characteristic. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2144.06 (1) which states: “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be useful for the very same purpose”. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings above, 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. With regards to the Applicant arguments against the broad motivation of substituting equivalents, the obviousness rejection above no longer relies on this rationale.
On page 9, Applicant argues that the viscosity of the inventive mixtures of components (b), (c), and (d) constitutes unexpected results. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results amounts to a viscosity of less than 5000 cps @ 950 1/s when the active mixture of components (b), (c), and (d) are combined within the claimed ratios. A decreased viscosity when components (b), (c), and (d) are combined within the claimed ratios would be an unexpected result.
Differences are of both practical and statistical significance: The evidence of unexpected results amounts to a decreased viscosity when the active mixture of components (b), (c), and (d) are combined within the claimed ratios. The differences are of practical and statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The amended claim 1 is directed to a hair conditioner composition comprising any dicarboxylic acid amine salt, any diester, and any glycerin ester copolymer. In order to be in commensurate scope with the claims, the evidence of unexpected results must demonstrate the desired viscosity characteristics for any dicarboxylic acid amine salt, any diester, and any glycerin ester copolymer within the recited weight ratios. However, the evidence of unexpected results is limited to a single species of dicarboxylic acid amine salt and two species of diester. Furthermore, the difference in viscosities of examples 30 and 31 suggest that different species of diester have different effects on the viscosity of the mixture. Therefore, the evidence of unexpected results is not in commensurate scope with the claims.
Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
On page 10, Applicant argues that there is no teaching 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. In response, please refer to MPEP 2141.03(I) regarding the factors to consider when determining level of ordinary skill: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. As described in the obviousness rejection above, the particle size of components suspending in a lamellar gel network is a result effective parameter that one of ordinary skill in the art would routinely optimize. 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 1-17 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 the 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 1-17 above, and further in view of Hutton (U.S. Patent Application No. 2018/0098923, publication year: 2018).
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 Hutton. Hutton teaches that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176].
The particle size of the components dispersed in the lamellar gel phase 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 swelling of the gel network phase in water. 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, Hutton teaches that that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176]. The Examiner considers it prima facie obvious to optimize the particle size of components suspending in a lamellar gel network, 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 swelling of the lamellar gel network and therefore be an optimizable variable.
Claims 1-17 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).
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 1-17 above, and further in view of Hutton (U.S. Patent Application No. 2018/0098923, publication year: 2018).
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 Hutton. Hutton teaches that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176].
The particle size of the components dispersed in the lamellar gel phase 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 swelling of the gel network phase in water. 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, Hutton teaches that that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176]. The Examiner considers it prima facie obvious to optimize the particle size of components suspending in a lamellar gel network, 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 swelling of the lamellar gel network and therefore be an optimizable variable.
Claims 1-17 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 1-17 above, and further in view of Hutton (U.S. Patent Application No. 2018/0098923, publication year: 2018).
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 Hutton. Hutton teaches that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176].
The particle size of the components dispersed in the lamellar gel phase 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 swelling of the gel network phase in water. 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, Hutton teaches that that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176]. The Examiner considers it prima facie obvious to optimize the particle size of components suspending in a lamellar gel network, 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 swelling of the lamellar gel network and therefore be an optimizable variable.
Claims 1-17 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, 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.
This is a provisional nonstatutory double patenting rejection because the co-pending claims have not in fact been patented.
Claim 20 is 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), as applied to claims 1-17 above, and further in view of Hutton (U.S. Patent Application No. 2018/0098923, publication year: 2018).
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 ‘128 application embrace the relevant limitations as described above. The claims of the ‘128 application do not embrace a particle size of the mixture of conditioning oil dispersed in the lamellar gel network. However, this deficiency is cured by Hutton. Hutton teaches that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176].
The particle size of the components dispersed in the lamellar gel phase 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 swelling of the gel network phase in water. 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, Hutton teaches that that a reduced size of particles dispersed in a gel network phase results in an increase in the surface area of the gel network phase, which allows the gel network surfactant and the water to swell the gel network phase [0176]. The Examiner considers it prima facie obvious to optimize the particle size of components suspending in a lamellar gel network, 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 swelling of the lamellar gel network and therefore be an optimizable variable.
This is a provisional nonstatutory double patenting rejection because the co-pending claims have not in fact been patented.
Response to Arguments
Applicants’ request for the double patenting rejection of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejection will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejection.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
Prosecution Insights