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 .
Status of Claims
Receipt of Remarks/Amendments filed on 01/26/2026 is acknowledged. Claims 1-2, 4-9, 11-17, and 20 are amended. Claims 1-20 are currently pending and are examined on the merits herein.
Priority
The instant application filed 06/28/2023, claims no priority.
Withdrawn Objections/Rejections
Claims 1-2 and 16-17 were objected to because of informalities. Applicant’s amendments to the claims have overcome the objections and the objections are withdrawn.
Claims 6, 16, and 20 were rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s amendments to the claims have overcome the rejections and the rejections are withdrawn.
The following rejections are maintained with the new reasoning being necessitated by amendment:
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami, K., et al. (US 20220062133 A1, 03/03/2022, IDS dated 06/28/2023), hereinafter Kawakami as evidenced by National Center for Biotechnology Information (2025). PubChem Compound Summary for CID 62238, Cetearyl alcohol. Retrieved August 21, 2025 (on record), hereinafter NCBI.
Kawakami discloses hair treatment compositions, kits thereof, and methods of use (abstract). The hair treatment kit includes a hair treatment composition of the invention and a shampoo (¶ [0024]; claim 18), separately contained (¶ [0212]). The methods for treating hair include applying a hair treatment composition of the invention and optionally, rinsing the hair to remove at least a portion of the hair treatment composition (¶ [0025]-[0034]; claim 19). The method provides frizz control to the hair; and/or improves hair manageability; and/or conditions the hair; and/or provides color tone preservation; and/or protects the hair from damage (claim 20). Example 1 teaches two exemplary hair treatment compositions (table 3):
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As can be seen from table 3 above, the example compositions of Kawakami comprise cetearyl alcohol at 12 wt. %. Cetearyl alcohol comprises a mixture of cetyl and stearyl alcohol which contain 16 and 18 carbons respectively (NCBI). Thus, cetearyl alcohol reads on the one or more fatty alcohols of claims 1-3 and 16-17. Examples A and B further comprise cetrimonium chloride and behentrimonium chloride at a total amount of 3.7 wt. %, which reads on the one or more mono-alkyl cationic surfactants of claims 1, 4, and 16-17, and the amount of claims 1 and 17. The 1.1 wt. % of dicetyldimonium chloride reads on the one or more di-alkyl cationic surfactants as recited in claims 1, 5, and 16-17, and the amount of claims 1 and 17. The 2.5 wt. % of candelilla wax and cetyl esters reads on the one or more fatty compounds other than the fatty alcohols of (a) and its amount, specifically a fatty ester wax in an amount of at least 1 wt. %, as defined in claims 1, 7, and 16. The cetyl esters specifically read on the wax of claim 17. The 3.4 wt. % of dimethicone reads on the one or more silicone oils of claims 1, 8, 10, and 16-17, and amount of claims 1, 8, 10, and 16. The amodimethicone and bis-cetearyl amodimethicone at a total amount of 1.9 wt. % reads on the one or more amino-functionalized silicones and amount of claims 1, 9-10, and 16-17. By the Examiner’s calculations, the compositions of Ex. A and Ex. B comprises ~64 wt. % water which reads on the amount recited in claims 1 and 16. The (b):(c) ratio (i.e., mono-alkyl surfactants to di-alkyl surfactants) is 3.4:1, which falls within the range of claims 6 and 16-17. The example compositions further comprise 5 wt. % glycerin and 1.1 wt. % isopropyl alcohol which read on the water-soluble solvents and amount of claims 11 and 16-17. The 0.5 wt. % of hydroxypropyl guar reads on one or more thickening agent and its amount as recited in claims 12-13 and 16-17. The example compositions further comprise nonionic and/or amphoteric surfactants at amounts less than 5%, which read on the additional surfactants and amount of claims 14 and 16-17. The example compositions further comprise miscellaneous ingredients such as preservatives, chelating agents, antioxidants, fragrances, pH adjusters, and salts, thereby reading on the miscellaneous ingredients of claims 15 and 16-17. The composition of example A comprises less than 5 wt. % total of these miscellaneous ingredients, reading on the amount recited in claims 16-17.
The teachings of Kawakami differ from that of the instantly claimed invention in that Kawakami does not explicitly teach an amount of the fatty alcohol or its ratio to components (b) and (c) within the ranges of claims 1 and 16-17, nor does Kawakami explicitly teach an amount of the ammonium halides within the ranges of claim 16, and an amount of dimethicone and water within the ranges of claim 17.
Regarding the amount of the one or more fatty alcohols, the example compositions of Kawakami comprise 12 wt. % of cetearyl alcohol as discussed above. While 12% does not fall within the instantly claimed ranges (i.e., 2-8% in claim 1, 3-8% in claims 16-17), it is well within the abilities of an ordinary artisan to optimize the amount of fatty alcohol in the composition depending on the desired consistency and feel of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges of fatty alcohol through no more than routine experimentation. 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). Upon optimizing the amount of fatty alcohol within the instantly claimed range, to be for example 8 wt. %, the ratio of (a):((b)+(c)) would be approximately 1.7:1, which falls within the instantly claimed range of claims 1 and 16. Thus, the optimization of the fatty alcohol amount will also lead to the optimization of the instantly claimed ratio, which as discussed above, is easily optimized by one of ordinary skill in the art depending on the desired consistency and feel of the final product.
Regarding the amount of the mono-alkyl and di-alkyl ammonium halides as recited in claim 16, Kawakami teaches cetrimonium chloride and behentrimonium chloride (i.e., mono-alkyl) at a total amount of 3.7 wt. %, which is very close to the instantly claimed range of 2-3 wt. %. Kawakami also teaches 1.1 wt. % of dicetyldimonium chloride (i.e., di-alkyl), which is very close to the instantly claimed range of 0.1-1 wt. %. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05. Additionally, while these amounts do not fall within the instantly claimed ranges of claim 16 it is well within the abilities of an ordinary artisan to optimize the amount of ammonium halide surfactants in the composition depending on the desired consistency and feel of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges through no more than routine experimentation. 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).
Regarding the amount of dimethicone in claim 17, the 3.4 wt. % of dimethicone in the example compositions reads on component (e). While 3.4% does not fall within the instantly claimed range of claim 17 (i.e., 1-3 wt. %), it is very close. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05. Additionally, although 3.4% does not fall within the instantly claimed range (i.e., 1-3%) it is well within the abilities of an ordinary artisan to optimize the amount of dimethicone in the composition depending on the desired consistency and feel of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of dimethicone through no more than routine experimentation. 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). Additionally, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05.
Regarding the amount of water in claim 17, the example compositions of Kawakami contain ~64 wt. % water. While 64% does not fall within the instantly claimed range (i.e., 70-85%) it is well within the abilities of an ordinary artisan to optimize the amount of water in the composition depending on the desired consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of water through no more than routine experimentation. 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).
Regarding claim 18, Kawakami teaches kits as discussed above. Such a kit comprises a shampoo and a hair treatment composition, which reads on the composition of instant claim 1 as established above. The shampoo and hair treatment composition are separately contained.
Regarding claims 19-20, Kawakami teaches a method of applying a hair treatment composition to the hair and optionally rinsing. The hair treatment composition of Kawakami reads on the composition of instant claim 1 as established above. Kawakami also teaches several of the improvements recited in instant claim 20. However, such a teaching is not required since these properties are considered inherent to the method and composition made obvious by the prior art which are identical to the instantly claimed invention.
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.
1. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 30 and 36-37 of copending Application No. 17,007,490 (reference application). The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims due to prima facie considerations.
Copending claims 1 and 37 recites a hair treatment composition comprising:(a) about 2 to about 6 wt.% of two or more cationic surfactants comprising:(i) about 0.5 to about 5 wt.% of dicetyldimonium chloride (i.e., a di-alkyl cationic surfactant), and(ii) about 0.5 to about 5.5 wt.% of behentrimonium chloride (i.e., a mono-alkyl cationic surfactant);(b) about 0.1 to about 4 wt.% of one or more thickening agents selected from polysaccharides;(c) about 10 wt.% or more of one or more fatty alcohols;(d) about 1 to about 6.5 wt.% of a mixture of silicones, the mixture of silicones consisting of bis-cetearyl amodimethicone (i.e., an amino-functionalized silicone oil), dimethicone (i.e., a silicone oil), and amodimethicone;(e) about 50 to about 78 wt.% of water; and(f) about 1 wt.% to about 10 wt.% of one or more polyols; wherein all weight percentages are based on the total weight of the hair treatment composition. The hair treatment composition further comprises one or more fatty compounds selected from fatty esters and waxes (copending claims 30 and 36). The only difference between the instantly claimed invention and the invention of the copending claims is the amounts of each component. However, the ranges of the copending claims overlap with those of the instant invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Regarding the amount of the fatty ester wax, one of ordinary skill in the art could have arrived at the instantly claimed range of at least 1% through no more than routine experimentation. 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).
Regarding the ratio of (a):((b)+(c)) as instantly claimed, one of ordinary skill in the art could have adjusted the amount of the respective components through no more than routine experimentation depending on the desired consistency and feel of the final product. "[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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 19 of copending Application No. 18,051,124 (reference application) in view of Kawakami. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims Kawakami.
Copending claim 1 recites a hair treatment composition comprising: (a) about 1 to about 15 wt.% of one or more fatty alcohols; (b) one or more liquid alkane oils (i.e. fatty compounds other than fatty alcohols); about 1 to about 10 wt.% of a combination of cationic surfactants comprising:(c)(i) one or more mono-alkyl cationic surfactants; and(c)(ii) one or more di-alkyl cationic surfactants; wherein the one or more mono-alkyl cationic surfactants of (c)(i) and the one or more di-alkyl cationic surfactants of (c)(ii) are in a weight ratio of about 10:1 to about 1:1 ((c)(i):(c)(ii));(d) about 1 to about 10 wt.% of a combination of silicone oils comprising:(d)(i) one or more non-volatile dimethicone oils; and(d)(ii) one or more non-piperidinyl amino silicone oils; and(e) water; wherein all weight percentages are based on a total weight of the hair treatment composition. Copending claim 19 recites a method for treating hair comprising applying the hair treatment composition of claim 1 to the hair. Regarding the amounts of each component, the copending ranges overlap with instantly claimed amounts. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. The copending claims differ from the instant claims in that they do not recite wherein at least one of the one or more fatty compounds is a fatty ester wax in an amount of at least 1 wt. %. Kawakami teaches a hair treatment composition comprising 2.5 wt. % of candelilla wax and cetyl esters. It would have been obvious to incorporate 2.5% of candelilla wax and cetyl esters (i.e., fatty ester waxes) into the composition of the copending claims since the combination of prior art elements according to known methods to yield predictable results is considered prima facie obvious and both Kawakami and the copending claims are drawn to a hair treatment composition.
Regarding the ratio of (a):((b)+(c)) as instantly claimed, one of ordinary skill in the art could have adjusted the amount of the respective components through no more than routine experimentation depending on the desired consistency and feel of the final product. "[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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 11, 13, and 16-17 of copending Application No. 18,146,193 (reference application) in view of Kawakami. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims Kawakami.
Copending claim 1 recites a hair treatment composition comprising: (a) about 1 to about 10 wt.% of a combination of citric acid and one or more salts of citric acid; (b) one or more surfactants; and (c) water; wherein weight percentages are based on the total weight of the composition. The surfactant is a cationic surfactant selected from cetrimonium chloride (i.e., a mono-alkyl cationic surfactant), […], dicetyldimonium chloride (i.e., a di-alkyl cationic surfactant), […], and mixtures thereof (copending claims 2-3). The composition further comprises: (d) about 1 to about 15 wt.% of the one or more fatty alcohols; and (e) about 1 to about 10 wt.%, of the one or more fatty compounds other than fatty alcohols (copending claims 4-5). The one or more fatty compounds other than fatty alcohols are chosen from oils, waxes, etc. (copending claim 6). The composition further comprises: (h) one or more conditioning agents chosen from silicones such as dimethicone, dimethiconol, cyclomethicone, polysilicone-11, phenyl trimethicone (i.e., silicone oils), amodimethicone, bis-cetearyl amodimethicone (i.e., amino-functionalized silicones), and mixtures thereof (copending claims 11 and 13). Conditioning agents such as silicones may be present from about 0.1 to about 10 wt. % (copending claim 16). Copending claim 17 recites a method for treating hair comprising applying the hair treatment composition to the hair. Regarding the amounts of each component, the copending ranges overlap with instantly claimed amounts. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. The copending claims differ from the instant claims in that they do not recite wherein at least one of the one or more fatty compounds is specifically a fatty ester wax in an amount of at least 1 wt. %. Kawakami teaches a hair treatment composition comprising 2.5 wt. % of candelilla wax and cetyl esters. It would have been obvious to incorporate 2.5% of candelilla wax and cetyl esters (i.e., fatty ester waxes) into the composition of the copending claims since the combination of prior art elements according to known methods to yield predictable results is considered prima facie obvious and both Kawakami and the copending claims are drawn to a hair treatment composition.
Regarding the ratio of (a):((b)+(c)) as instantly claimed, one of ordinary skill in the art could have adjusted the amount of the respective components through no more than routine experimentation depending on the desired consistency and feel of the final product. "[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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 8, 17, and 19 of copending Application No. 18,067,076 (reference application) in view of Kawakami. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims Kawakami.
Copending claim 1 recites a hair treatment composition comprising: (a) about 1 to about 10 wt.% of one or more polyether-modified polysiloxanes (i.e., silicone oils); (b) about 2 to about 20 wt.% of one or more glycols,(c) about 1 to about 12 wt.% of one or more cationic conditioning agents; (d) about 1 to about 15 wt.% of one or more fatty alcohols; (e) water; and (g) one or more alkyl betaines; wherein the weight percentages are based on a total weight of the composition. The one or more cationic conditioning agents are selected from cationic surfactants such as cetrimonium chloride (i.e., a mono-alkyl cationic surfactant), […], dicetyldimonium chloride (i.e., a di-alkyl cationic surfactant), […], and mixtures thereof (copending claims 5 and 8). The composition further comprises: (h) one or more amino-functionalized silicone oils (copending claim 17). Copending claim 19 recites a method for treating hair comprising applying the composition of claim 1 to the hair. Regarding the amounts of each component, the copending ranges overlap with instantly claimed amounts. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. The copending claims differ from the instant claims in that they do not recite an additional fatty compound, specifically a fatty ester wax in an amount of at least 1 wt. %. Kawakami teaches a hair treatment composition comprising 2.5 wt. % of candelilla wax and cetyl esters. It would have been obvious to incorporate 2.5% of candelilla wax and cetyl esters (i.e., fatty ester waxes) into the composition of the copending claims since the combination of prior art elements according to known methods to yield predictable results is considered prima facie obvious and both Kawakami and the copending claims are drawn to a hair treatment composition.
Regarding the ratio of (a):((b)+(c)) as instantly claimed, one of ordinary skill in the art could have adjusted the amount of the respective components through no more than routine experimentation depending on the desired consistency and feel of the final product. "[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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 01/26/2026 have been fully considered but they are not persuasive:
Applicant argues that the rejection under 35 USC 103 should be withdrawn because Kawakami fails to account for the claimed amount of fatty alcohols and their weight ratio to the total amount of components (b) and (c) (i.e., (a):((b)+(c))). Applicant also references data from the specification which allegedly distinguishes the instant invention over the prior art. Specifically, Applicant points to inventive example A and comparative example H. Between the two examples the only difference is the amount of fatty alcohol, with comparative example H having an amount which reads on the closest prior art (Kawakami). Applicant asserts that comparative composition H performs worse than inventive example A with respect to dry smoothness and lightness, concluding that the instantly claimed amount of fatty alcohol results in a surprising and unexpected improvement.
In response to the amount of the fatty alcohol and its weight ratio, such parameters would have been easily optimizable by one of ordinary skill in the art depending on the desired consistency and feel of the final product, as discussed in the prior art rejections above. "[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).
In response to applicant’s argument of unexpected results, the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP 716.02(a). In the instant case, the data presented does not demonstrate a significant improvement between the comparative and inventive examples. For instance, comparative example H actually performs better than the inventive example in terms of wet smoothness. Wet combing, dry combing, and anti-frizz properties are the same between the two, and dry smoothness and lightness are only “slightly inferior” to the inventive example. The term “slightly inferior” does not appear to constitute a significant difference between the inventive and comparative example. Given that there are no numerical measurements, the examiner cannot conclude the true difference between the inventive example and comparative example H.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616