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 02/06/2026 is acknowledged. Claims 1, 9, 11, 14-15, and 17-19 are amended and claims 2, 10, and 16 are canceled. Claims 21-23 are new. Claims 1, 3-9, 11-15, 17-23 are currently pending and are examined on the merits herein.
Noncompliant Amendment
Claim 1 previously recited “wherein the composition is essentially free from propylene glycol”. Amended claim 1 now recites “wherein the composition is essentially free from propylene glycol glycols having from 2 to 10 carbon atoms, and glycerin”. The recitation of “glycols having from 2 to 10 carbon atoms, and glycerin” is new, however, it has not been underlined as is required by 37 CFR 1.121(c).
Priority
The instant application was filed 06/28/2023 and claims no foreign priority.
Withdrawn Rejections
Claims 19-20 were rejected under 35 U.S.C. 112(a) for scope of enablement. Applicant’s amendment to claim 19 has overcome the rejection and the rejection is withdrawn.
Claims 1-5, 7-9, 12-14, and 19-20 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ingwersen. Applicant’s amendments to claim 1 have overcome the rejection and the rejection is withdrawn.
Claims 2, 10, and 16 were rejected under 35 U.S.C. 103. Applicant’s cancelation of these claims has rendered the rejections moot and the rejections of these claims is withdrawn.
Claims 1-14 and 19-20 were provisionally rejected on the ground of nonstatutory double patenting over copending Application No. 18/343,397. Applicant’s amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
The following objections/rejections are new as necessitated by amendment:
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “propylene glycol glycols having from 2 to 10 carbon atoms, and glycerin”. Examiner believes that this contains a typographical error and there should be a comma between propylene glycol and glycols having 2 to 10 carbon atoms. Appropriate correction is required.
Claim 23 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 21. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112(a) - New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
1. Claims 21 and 23 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 21 and 23 have been added as part of the amendment filed on 11/13/2025. However, the instant specification does not provide support for the concentration range recited in claims 21 and 23. While the instant specification discloses C6-C16 alkanes and linear and branched hydrocarbons as nonlimiting examples of oils, the instant specification and claims, as originally filed, do not disclose a specific amount of these alkanes and hydrocarbons which would lead one to the instantly recited range of “less than 5 wt.%”. If Applicant believes this rejection is in error, applicant must disclose where in the specification support for the entire scope of the new claims can be found. As a result, claims 21 and 23 represent new matter.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 4 recites wherein the composition is essentially free from glycols having 2 to 10 carbons and optionally free from glycerin. However, parent claim 1 recites wherein the composition is essentially free from glycols having from 2 to 10 carbon atoms and glycerin. The repetition of this limitation in claim 4 fails to further limit claim 1 which already define the composition as free form C2-C10 glycols and glycerin. Furthermore, claim 4 recites that glycerin is “optionally” absent while parent claim 1 makes it necessarily absent. As such, claim 4 has a broader scope than claim 1.
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, 3-9, 11-15, 17-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Ingwersen, J., et al. (WO 2023280485 A1, ip.com translation and original used, 01/12/2023, IDS dated 06/14/2024), hereinafter Ingwersen, in view of Lee, H., et al. (FR 3124949 A1, translation from ip.com, 01/12/2023, IDS dated 06/14/2025), hereinafter Lee.
Ingwersen teaches a hair care product for caring for hair, which contains specific amounts of C2-C6 monohydroxy alcohols, C8-C20 alkanes, C8-C24 alcohols and cationic surfactants, and which transforms into a cream, a lotion or a gel when coming into contact with water (abstract).
The hair treatment composition comprises (based on the total weight of the hair treatment composition): a) 20 to 40% by weight of at least one C2-C6 monohydroxy alcohol which supports the dissolution or solubilization of water-insoluble components in the hair treatment agents according to the invention, so that a transparent composition can be provided. The compositions are stable and do not require any additional stabilization, as is necessary with conventional, emulsion-based products (p. 5, final 2 paragraphs). To prevent unwanted cloudiness during storage of the composition and/or so that the intended transformation into a cream, a lotion or a gel only takes place on contact with water, it is advantageous if the hair treatment agents according to the invention are essentially free of added water. Particularly, no free water is added to the hair treatment agents (p. 11, paragraphs 6-7). As such, the hair treatment compositions of Ingwersen read on an essentially anhydrous hair treatment composition as recited in claims 1, 15, and 22.
Example 5 of Ingwersen discloses a hair treatment composition comprising the following components and parts by weight: ethanol (25-30); isododecane (20-30); myristyl alcohol (10-20); stearamidopropyl dimethylamine (1-5); PPG-3 benzyl ether myristate (1-10); dimethicone (2-20); and further excipients and additives if necessary (ad 100). The ethanol reads on the monoalcohol of claims 1, 7, 15, and 22. The myristyl alcohol reads on the fatty alcohol of claims 1, 8-9, 15, 17, and 22. While Ingwersen teaches 10-20 parts by weight of myristyl alcohol, the end point of 10 parts by weight falls within the instantly claimed range of a fatty alcohols as recited in claim 1 (i.e., about 2-15 wt. %). As such, the prior art discloses the claimed range with “sufficient specificity” allowing one of ordinary skill in the art to readily envisage the claimed invention from the composition of Ingwersen. See MPEP 2131.03. Ethanol, which reads on instantly claimed (a), is present in an amount greater than myristyl alcohol (b), which reads on claim 1. Any ratio (i.e., ethanol to myristyl alcohol) derived from the ranges provided by Ingwersen gives a ratio within the range of claims 3, 15, and 22. The 1-5 parts by weight of stearamidopropyl dimethylamine reads on the cationic surfactant of claims 1, 13, 14-15, 18, and 22, and its amount as defined in claims 1, 15, and 22. The composition does not contain water, glycerin, propylene glycol, or any other glycols having 2 to 10 carbon atoms as defined in claims 1, 4, 15, and 22. Ingwersen teaches its composition to be transparent (claim 13), as recited in instant claims 12, 15, and 22.
Ingwersen teaches a cosmetic method for the care of hair, characterized in that the hair treatment composition is applied to the -- preferably wet -- hair and massaged in, with water contact forming a cream, a lotion or a gel which is rinsed out with water after an exposure time of up to 10 minutes (claim 15). Such a method reads on the method of instant claims 19-20.
Regarding the fatty compounds, Ingwersen teaches several fatty compounds used as hair conditioning active ingredients in the composition. Hair-conditioning active ingredients include C8-C20 alkanes (p. 6, para. 4), ester oils, and silicone oils (p. 8, para. 14-16). Example 5 specifically comprises isododecane, PPG-3 benzyl ether myristate, and dimethicone. Together, these fatty compounds, which serve as hair-conditioning actives, total to between 23 and 60 parts by weight.
The teachings of Ingwersen differ from that of the instantly claimed invention in that Ingwersen does not explicitly teach the amount of the monoalcohol as recited in claims 1, 6, 15, and 22, nor does Ingwersen explicitly teach the specific fatty compounds and their amount, as defined in claims 1, 11, 15, and 22.
Lee teaches hair compositions comprising a polyol, fatty compounds, a monoalcohol, and a cationic surfactant (abstract). The hair composition is substantially anhydrous and transparent (p. 8, paragraphs 11-12). The fatty compounds may include a fatty alcohol, a fatty ester, a fatty ether, a fatty acid, etc. (p. 10, paragraph 2). Specifically, Lee teaches propylene glycol dicaprylate/dicaprate and cetyl alcohol as a fatty compound in the example compositions (tables 1-5).
Regarding the amount of monoalcohol in claims 1, 6, 15, and 22, Ingwersen teaches that the C2-C6 monohydroxy alcohols support the dissolution or solubilization of water-insoluble components in the hair treatment agents according to the invention, so that preferably transparent compositions can be provided. These are stable and do not require any additional stabilization, as is necessary with conventional, emulsion-based products (p. 5, last paragraph). While the 25-30 parts of ethanol taught in example 5 of Ingwersen does not overlap the instantly claimed ranges of claims 1, 6, 15, and 22, it is well within the abilities of an ordinary artisan to optimize the amount of monoalcohol (i.e., ethanol) in the composition depending on the desired solubilization and stability needed in the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges of claims 1, 6, 15, and 22, 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). Furthermore, solubility and stability, which both depend on the monoalcohol as taught by Ingwersen, are considered result effective parameters. The optimization of a result effective parameter is considered within the skill of the artisan. See, In re Boesch and Slaney (CCPA) 204 USPQ 215. This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B).
Regarding the fatty compounds of claims 1, 11, 15, and 22, it would have been obvious to combine the compositions of Ingwersen and Lee before the effective filing date of the claimed invention by using the propylene glycol dicaprylate/dicaprate of Lee as a fatty compound in the composition of Ingwersen to yield the instantly claimed invention. Propylene glycol dicaprylate/dicaprate is a known and effective fatty compound in anhydrous hair compositions as taught by Lee. Thus, it would have been obvious to replace the fatty compounds of Ingwersen (i.e., isododecane, PPG-3 benzyl ether myristate, and/or dimethicone) with the propylene glycol dicaprylate/dicaprate of Lee since this entails no more than a simple substitution of one known element (i.e., fatty compound with hair conditioning effect) for another to obtain predictable results. See MPEP 2143. It would have been further obvious to use propylene glycol dicaprylate/dicaprate as a fatty compound in combination with the fatty alcohol (i.e., myristyl alcohol) of Ingwersen since Lee teaches compositions comprising both propylene glycol dicaprylate/dicaprate and a fatty alcohol. Such a modification would provide the combined composition with a fatty compound that reads on those defined by claim 1, 11, 15, and 22.
Regarding the amount of propylene glycol dicaprylate/dicaprate to incorporate in the composition of Ingwersen, it is well within the abilities of an ordinary artisan to optimize the amount of propylene glycol dicaprylate/dicaprate in the composition depending on the desired conditioning effect of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges of claims 1, 15, and 22, 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, Ingwersen teaches a total amount of hair-conditioning fatty compounds to be 23 to 60 parts by weight. If one of ordinary skill were to substitute out the hair-conditioning fatty compounds of Ingwersen for the propylene glycol dicaprylate/dicaprate of Lee, as suggested above, it would have resulted in 23 to 60 parts by weight of propylene glycol dicaprylate/dicaprate. Such a range overlaps with the range of instant claims 1 and 15. 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.
One of ordinary skill in the art would have had a reasonable expectation of success in incorporating propylene glycol dicaprylate/dicaprate as a fatty compound in the hair care composition of Ingwersen since Lee teaches it to be used in a similar hair care composition which is also anhydrous, transparent, and comprises a fatty alcohol.
Regarding the composition’s properties as recited in claims 5, 15, and 22, because the composition made obvious by the prior art is identical to the composition of claims 1, 15, and 22, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Furthermore, it is discussed above that the compositions of Ingwersen are solubilized, stable, not emulsion-based, and transform into a cream, lotion or gel upon contact with water.
Claims 1, 3-9, 11-15, and 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ingwersen and Lee as applied to claims 1, 3-9, 11-15, 17-20, and 22 above, and further in view of Facchini, G. (WO 2020183362 A1, 09/07/2020, PTO-892), hereinafter Facchini.
The combined teaching of Ingwersen and Lee are discussed above.
The combined composition of Ingwersen and Lee differs from that of the instantly claimed invention in that it does not explicitly comprise less than about 5 wt.% of C6-C16 alkanes and linear or branched hydrocarbons as recited in claims 21 and 23.
Facchini discloses an anhydrous and biodegradable composition comprising natural vitamin E and an anhydrous lipophilic carrier component V. The composition is suitable for soothing purposes of the skin, hydrating, anti-aging and emollient of the skin and/or of the hair (abstract). The anhydrous composition preferably comprises (by weight) 80-91% of anhydrous and lipophilic carrier component V. Component V is preferably chosen from alkyl esters obtained through reaction between C8-C22 saturated or monounsaturated fatty acids with alcohols of formula R-OH; and ethers of formula R’-O-R’”, where R’ and R” are chosen from C4-C26, preferably C8-C22, linear or branched saturated or unsaturated alkyl radicals (p. 4-5, lines 7-5). Additionally, it is desired that the composition has a natural index ranging from 0.7 to 1, wherein “natural index” refers to the ecological profile of the composition (p. 9, lines 15-22). Therefore, the composition has essentially no hydrocarbons in free form in the class of alkanes (p. 10, lines 3-5).
As such, it would have been prima facie obvious to one of ordinary skill in the art when replacing the fatty compounds of Ingwersen with the propylene glycol dicaprylate/dicaprate of Lee, as discussed above, to completely replace or minimize the amount of hydrocarbons/alkanes in the combined composition as reasonably suggested by Facchini. One of ordinary skill in the art would have been motivated to minimize the amount of alkanes (i.e., isododecane) in the combined composition in order to increase the natural index of the final composition thereby improving ecological impact and increasing consumer appeal. It would have been prima facie obvious to reduce the amount of isododecane to less than 5%, if not 0%, since a composition comprising essentially no alkanes improves the natural index of the composition as taught by Facchini. As such, one of ordinary skill in the art would have arrived at a final composition comprising high amounts of a lipophilic carrier (i.e., fatty compounds) with a good natural index, such as the propylene glycol dicaprylate/dicaprate of Lee which reads on the fatty alkyl esters taught by Facchini, and low amounts of free hydrocarbons and alkanes as taught by Facchini, such as the isododecane of Ingwersen. Ingwersen teaches a total amount of hair-conditioning fatty compounds to be 23 to 60 parts by weight and Facchini teaches 80-91% of a lipophilic carrier such as fatty alkyl esters, both of which overlap with the instantly claimed ranges of the fatty compound. As discussed above, when the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since Facchini teaches an anhydrous composition suitable for soothing, hydrating, anti-aging and emollient of the hair, similar to the combined composition of Ingwersen and Lee.
Response to Arguments
Applicant’s arguments, see page 9, filed 11/13/2025, with respect to the rejections under 35 USC 112(a), 102(a)(1), and 103 in view of Ingwersen alone, and double patenting, have been fully considered and are persuasive. These rejections have been withdrawn.
Applicant's arguments filed 11/13/2025, with respect to the rejection under 35 USC 103 in view of Ingwersen and Lee, have been fully considered but they are not persuasive:
(1) Applicants argue that the 103 rejection over Ingwersen and Lee should be withdrawn because neither reference accounts for the claimed amount of fatty compounds. According to Applicant, Ingwersen nor Lee disclose or suggest the required amounts of the claimed fatty compounds (p. 10 of Remarks).
However, as discussed in the rejections above, Ingwersen and Lee make obvious the substitution of the fatty compounds of Ingwersen (i.e., isododecane, PPG-3 benzyl ether myristate, and/or dimethicone) with the propylene glycol dicaprylate/dicaprate of Lee. Ingwersen teaches a total amount of hair-conditioning fatty compounds to be 23 to 60 parts by weight. Such a range overlaps with the range of instant claims 1 and 15. 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. Additionally, one of ordinary skill in the art would have arrived at the instantly claimed ranges of claims 1, 15, and 22, 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). Lastly, the newly applied reference, Facchini, discloses an anhydrous composition comprising 80-91% of a lipophilic carrier such as fatty alkyl esters, which overlaps with the instantly claimed ranges of a fatty compound. It would have also been prima facie obvious to incorporate a fatty alkyl ester at such an amount and to reduce the content of other fatty compounds with poor natural indexes like the alkane and silicone oils of Ingwersen since such a modification decreases a products ecological footprint and increases consumer appeal, as discussed above.
(2) Applicant further argues that the 103 rejection over Ingwersen and Lee should be withdrawn in view of comparative data in the specification which provides unexpected results over the art (p. 10 or Remarks). Applicant specifically cites Example 1 in the specification which describes inventive composition A and comparative composition B, which is identical to the inventive composition of Lee (p. 10-12 of Remarks).
In response to Applicant’s argument of unexpected results, an affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). In this case, Applicant has not provided a comparison to the closest prior art to sufficiently show unexpected results. Specifically, Applicant has provided a comparative example identical to Lee, but the closest prior art, as discussed above, is Ingwersen, which does not comprise any underivatized propylene glycol.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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