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.
DETAILED ACTION
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 1-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Mr. Balls affirmed the election above in the reply filed 11/10/2025.
Response to Arguments
All of Applicant’s arguments filed 11/10/2025 have been fully considered.
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
In view of the amendment to claim 4, the 112(b) rejection is withdrawn.
In summary, on page 8, Applicant argues that Kim and Liang have fundamentally different problems and their objectives are not complimentary but rather in opposite direction.
This is not persuasive, while Liang aims to enhance deposition of certain compounds onto the hair and Kim aims to cleans, Liang teaches that the hair conditioner composition can be mixed with shampoo (i.e. cleaning composition) prior to application to the hair [0231], thus Liang itself contemplates a composition which conditions but also cleans, thus adding a cleaning agent to the composition of Liang is obvious with a reasonable expectation of success in creating a hair conditioning composition that also cleans.
Applicant’s discussion of the experimental data in the specification on pages 9-10, is not persuasive. It is noted that the data presented is not commensurate in scope with the instant claims, a single data point (specific concentrations, specific blend of fatty alcohols, specific cationic surfactant, etc.) has been provided but the claims are directed to a much larger genus and there is insufficient data to establish a trend that all species claimed would have similar effects. Applicant remarks that that the inventive composition provided less residue and flaking compared to those treated with composition J. KR’699 teaches isopropylidene glycerol to be an effective cleansing agents, as such, upon its use a reduction in residue and in turn flakes would be expected, this it’s unclear what about the results obtained are unexpected. Applicant has no explained what would have been expected to a person of skill in the art.
In view of the Amendments to claims 10 and 17, Applicant’s arguments against these claims are persuasive and new rejections are presented below to address the claims as newly amended.
Applicant’s argument with respect to claims 21-22 are moot as the examiner is not rejecting these claims under Liang. Applicant are directed to the new rejection presented below which addresses these new limitations.
Applicant’s argument with respect to the Linter and George rejection are moot as this rejection is withdrawn in view of the amendments to the claims.
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.
Claims 21-22 are 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 21 recites “essentially free from fatty , comprising… of the fatty acids.” The claimed “the fatty acids” lacks proper antecedent basis as claim 21 does not define what fatty substance the composition is essentially free of. For purposes of examination, claim 21 will be examined as reciting “essentially free from fatty acids, comprising… of the fatty acids.”
Both claims 21 and 22 recite “essentially free of fatty acids,” the originally filed specification discusses fatty compounds to include fatty acids, fatty acid derivatives, esters of fatty acids, propylene glycol ester of fatty acid, etc.” Without a definition in the specification of what is meant by “fatty acid” it’s unclear if the claim is intending to exclude only free fatty acids or anything derived from a fatty acid, thus rendering the metes and bounds of the claim indefinite. For purpose of examination as the specification lists fatty acids, fatty acid derivatives, esters of fatty acids, propylene glycol ester of fatty acid, etc., as separate embodiments, the claim will be interpreted as only excluding free fatty acids.
Maintained/Modified 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.
Claim(s) 1-7, 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liang (US 2021/0369579) and KR20120136699.
Regarding claims 1(b), 1(c) and 1(d): Liang discloses hair treatment compositions comprising 0.1-10% of cationic surfactants such as amidoamine surfactants [0046], 0.1-20% of a fatty alcohol and 50% or more of water (Abs).
Regarding claims 5-6: Laing teaches suitable fatty alcohol to include those having carbon chain of 12 or more carbons and include stearyl alcohol [0071].
Regarding claim 9: Liang teaches a suitable cationic surfactant to include stearamidopropyl dimethylamine [0046].
Regarding claim 16: Liang teaches that the composition can be formulated to be free or essentially free of silicone [0238].
However, Liang does not teach the composition to comprise the claimed compound of formula I.
Regarding claims 1(a) and 2-4: 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 Liang either 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 Liang as KR’699 teaches this solvent to be have superior cleansing ability and ensure good hair condition after cleaning. One of skill in the art would have a reasonable expectation of success as both Liang and KR’699 teach cosmetic compositions for application to hair and Liang teaches that that the hair conditioner composition can be mixed with shampoo (i.e. cleaning composition) prior to application to the hair [0231], thus it would be obvious to add a cleansing component to the hair conditioner.
Regarding claim 7: The above references make obvious 9-90% of (a) and 0.2-30% (b+c), this results in a ratio of 9-90 : 0.2-30, which overlaps with the claimed range.
New Claim Rejections - 35 USC § 103
Claim(s) 1-7, 9-11, 13-17 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou (US 5,198,209) and KR20120136699. Zhou is newly cited.
Zhou teaches a conditioning shampoo for hair comprising anionic surfactants, 0.1-5% of a water soluble cationic surfactant, 0.1-8% of a silicone and 0.5-5% of a nonionic surfactant (Abs).
Regarding claim 1(b), 5-6 and 17(b): Zhou teaches that additional ingredients can be included and these include thickening agents, such as cetearyl alcohol selected from a finite number of options. These can be added in amounts ranging from 0.05-5% (col. 7, lines 15-40).
Regarding claim 1(c), 9 and 17(c) :Zhou teaches that the water soluble cationic surfactant can be present in amounts ranging from 0.1-5% (col. 4, lines 33-40) and include dimethylaminopropyl stearamide (also known as stearamidopropyl dimethylamine) (col. 5, lines 1-6).
Regarding claims 1(d) and 17(d): Zhou teaches the composition to comprise 50-80% water (col. 7, lines 1-3).
Regarding claim 10: Zhou teaches the final composition to have a pH ranging from about 4-7 (col. 5, lines 40-45).
Regarding claim 11 and 17: Zhou teaches the composition to comprise an insoluble and dispersed silicone (Abs), this reads on “composition is a dispersion”.
Regarding claim 13: Zhou teaches that thickeners and viscosity modifiers such as cocamide MEA and lauramide DEA (i.e. fatty acid derivatives) can be added (col. 7, lines 15-20).
Regarding claims 14-15: Zhou teaches that ethyl alcohol (also known as ethanol, a water soluble solvent) can be effectively added (col. 7, lines 20-25).
Regarding claim 16: The instant specification defined essentially free to mean less than about 5% of the claimed component. Zhou teaches the inclusion of a silicone preferably in amounts of from 1-4%, which reads on a composition being essentially free of silicone.
Regarding claims 21-22: The instant specification defines “essentially free” to mean less than about 5% of the claimed component. Zhou does not teach including fatty acids into the composition and does not teach these to be critical, as such it would have been prima facie obvious to formulate the composition to be free of fatty acids.
However, Zhou does not teach the composition to comprise the claimed compound of formula I.
Regarding claims 1(a), 2-4 and 17(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 Zhou either 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 Zhou as KR’699 teaches this solvent to be have superior cleansing ability and ensure good hair condition after cleaning. One of skill in the art would have a reasonable expectation of success as both Zhou and KR’699 teach cosmetic compositions for cleansing hair such as shampoos and Zhou teaches that ingredients that are known in the art can be added.
Regarding claims 7 and 17: The above references make obvious 9-90% of (a) and .15-10% (b+c), this results in a ratio of 9-90 : 0.15-10 (0.9-600:1), which overlaps with the claimed range.
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