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 .
This office action is in response to the reply filed 11/10/2025.
Election/Restriction
During a telephone conversation with R. James Balls on 7/7/2025 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-19. Affirmation of this election must be made by applicant in replying to this Office action. Claim 20 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The election was affirmed in the response filed 11/10/2025.
Response to Arguments
The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
The arguments in the response filed 11/10/2025 will be addressed below to the extent they apply to the current rejections.
Applicant argues Kim does not teach the inclusion of high amounts of oily compound and in fact criticizes them.
This is not persuasive as the rejection below is not based on adding high amounts of oily compounds into the formulation of Kim, but is based on modifying Pinzon to add the claimed compound. While Pinzon teaches high amounts of oil compounds, Kim teaches that the cleansing agent can be used in compositions having oils and there is no evidence showing the compound of Kim would not work in the formulation of Pinzon.
New Claim Objections
Claims 6 and 16 are objected to because of the following informalities: The claims list “propylene glycol dicaprylate” twice. Appropriate correction is required.
New Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the limitation "the fatty compounds" in. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination the claim will be interpreted as reciting “the polar fatty compound…”
New 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.
Claim(s) 1-4 and 6-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pinzon (US 2002/0120036) and KR20120136699. Pinzon is newly cited.
Pinzon teaches compositions comprising a structuring polymer, an oil-soluble polymer and a fatty alcohol (Abs). The compositions can be anhydrous, formulated to comprises less than 5% water [0080], which reads on essentially anhydrous. The composition can be formulated as hair conditioner or shampoo (Pinzon – claim 282 and [0011]).
Regarding claims 1(b), 6, 15(b) and 16: Pinzon teaches the formulation to further comprise a polar oil [0022] as the liquid fatty phase [0063]. The liquid phase can comprise 50-100% of the oil and suitable polar oils include synthetic oils or esters such as isononyl isononanoate, isopropyl myristate, 2-ethylhexyl palmitate [0065 and 0070]. The liquid fatty phase can be present in amounts ranging from 5-99%, preferably 20-70% of the composition [0076]. This results in amounts of polar ester oils in amounts that overlap with the claimed ranges, 10-99%.
Regarding claims 1(c), 7-8, 15(c) and 17: Pinzon teaches that the composition can comprises 0.1-15% of a fatty alcohol such as cetyl, stearyl, myristal or behenyl alcohol [0091].
Regarding claims 1(d), 10-11, 15(d) and 18: Pinzon teaches that an oil-soluble cationic surfactant can be added these include fatty amines includes salts of fatty amines [0100]. Suitable salts of fatty amines includes stearamidopropyl dimethylamine citrate [0106]. As Pinzon teaches “fatty amines includes salts of fatty amines” it would have been prima facie obvious to use the salt form stearamidopropyl dimethylamine citrate or simply use stearamidopropyl dimethylamine citrate. The cationic surfactants can be used in amounts ranging from 0.1-10% [0111].
Claim 1 requires the composition to be essentially free from ethanol and propylene glycol. Pinzon does not teach the inclusion of ethanol or propylene glycol, as such it would be obvious to formulate the composition to be free of these ingredients as they are not taught by Pinzon to be necessary.
Regarding claim 9 and 15: Pinzon teaches that the composition can be formulated to be substantially clear or transparent [0011-0012].
Claims 12-13 and 15 requires the composition to be free of monoalcohols and glycols, Pinzon does not teach the inclusion of monoalcohols and glycols as claimed, as such it would be obvious to formulate the composition to be free of these ingredients as they are not taught by Pinzon to be necessary.
Pinzon does not teach a specific embodiment having all the claimed elements.
That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. AG. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is... a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of various disclosed ingredients polar ester oils described above, stearamidopropyl dimethylamine, fatty alcohol, etc. from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Pinzon does not teach the composition to comprise the claimed compound of formula I.
Regarding claims 1(a), 2-4 and 15(a): KR’699 discloses a solvent for cleaning skin and hair [0001]. The cleansing solvent has excellent cleansing power while being safe and not irritating to the skin (pg. 6). The solvent can exhibit superior drying rate and superior hair styling agent cleaning ability and also ensures good hair condition after cleaning (pg. 8-pg. 9). A suitable solvent is 1,2-isopropylidene glycerol [0040]. The composition comprising the solvent comprises less than 90% water (pg. 9) and can comprise other ingredients such as 1-50% anionic surfactant (pg. 11), as such the solvent can be calculated to be present in amounts of at least 9-90%.
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Pinzon with those of KR’699. One of skill in the art would have been motivated to add 9-90% of 1,2-isopropylidene glycerol to the composition of Pinzon as KR’699 teaches this solvent to be have superior cleansing ability, good at removing oil-based contaminants and ensure good hair condition after cleaning. One of skill in the art would have a reasonable expectation of success as both Pinzon and KR’699 teach cosmetic composition for application to hair and Pinzon teaches the formulation of shampoos.
Regarding claims 14 and 19: Pinzon teaches the composition to be formulated in non-emulsified forms, such as anhydrous gels [0012], and teaches the composition to comprise polymers and cationic surfactants which are soluble in oils, as such at least part of the composition of Pinzon is considered to be solubilized as required by the instant claim. While Pinzon is silent to “until contacted with water… lamellar phase in situ,” the prior art makes obvious the claimed structural limitations as such the composition claimed and the composition of the prior art are expected to have the same properties absent evidence to the contrary.
Conclusion
No claims are allowable.
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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613