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 .
Claim Status
Applicant’s claim amendments and arguments in the response filed 08 January 2026 are acknowledged.
Claims 1-20 are pending.
Claims 19 & 20 withdrawn.
Claims 1-18 are under consideration.
Elected Species:
A) One or more nonionic surfactants, if present- trideceth-5, trideceth-10, trideceth-6; glyceryl oleate, glyceryl linoleate, and safflower glucoside;
B) One or more amino-functionalized silicones- amodimethicone;
C) Water soluble solvent- present and glycerine, butylene glycol, caprylyl glycol, and isopropyl alcohol; -and-
D) What the composition further comprises- 1) one or more non-silicone based fatty compounds which are cetyl esters and helianthus annus (sunflower) seed oil; 2) one or more cationic conditioning polymers are hydroxypropyltrimonium hydrolyzed wheat protein; and 3) one or more miscellaneous ingredients which are styrax benzoin gum, boron nitride; xylose, acetic acid, benzoic acid; iris Florentina root extract, fragrance, phenoxyethanol, sodium citrate; BHT, sodium hydroxide, and tocopherol
Withdrawn Objections/Rejections
The objection to claims 12 & 18 for reciting both informal term and formal terms is withdrawn due to amendments to the claims.
The rejection of claim 18 under 35 U.S.C. 112(b) is withdrawn due to the amendment which provides antecedent basis.
The rejection of claims 1-10 & 17 under 35 U.S.C. 103 over Ansher-Jackson (WO 91/16878; Published: 1991) in view of Muller; claims 7 & 11-14 over Ansher-Jackson, Muller and Silva; claims 15 & 16 over Ansher-Jackson, Muller, Silva as and Hydroxypropyltrimonium Hydrolyzed Wheat Protein; and claim 18 over Ansher-Jackson, Muller, Silva, and Hydroxypropyltrimonium Hydrolyzed Wheat Protein is withdrawn due to claim 1 and 18 amendments which increase the lower limit of the fatty alcohols.
Maintained Rejections
Claim Rejections - 35 USC § 103
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.
Claims 1-10 & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ansher-Jackson (WO 91/16878; Published: 1991) in view of Muller (US 2004/0033984; Published: 02/19/2004) and Verboom (US 2003/0191035; Published: 10/09/2003).
*The Examiner notes the instant specification defines the term about as “meaning within +/- 5% of the indicated number”.
** The optional one or more nonionic surfactants and optional water-soluble solvents are interpreted as being present based upon Applicant’s species election.
***Claim Analysis: Claim 4 recites "the citric acid of (a) and the cyclodextrin of (b) of the composition are individually combined with each other to form a mixture in which the cyclodextrin is dissolved in the citric acid; and subsequently the mixture is combined with additional components of the hair treatment composition to form the hair treatment composition" which is a product-by-process recitation. M.P.E.P. § 2113-PRODUCT BY PROCESS CLAIMS states: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
M.P.E.P. § 2113 further states: "Once a product appearing to be substantially identical is found and a 35 U.S.C. 102 /103 rejection made, the burden shifts to the Applicants to shown an unobvious difference.” “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).”
**** Claim 7 is examined to extent of the fatty acid esters of polyethylene glycol which is one of two elected species which are members recited by the Markush group. The species election has not been withdrawn.
***** Claim 17-miscellaneous ingredients are examined to the extent of fragrance as the species of styrax benzoin gum, boron nitride, xylose, acetic acid, benzoic acid, iris Florentina root extract, fragrance, phenoxyethanol, sodium citrate; BHT, sodium hydroxide, and tocopherol are not recited by the claims. The species election has not been withdrawn.
With regard to claim 1(a), Ansher-Jackson teaches clean conditioning compositions for hair which comprise citric acid as a chelating agent which serves as a rheological aid “present at a level of from about 0.05% to about 1.0%” or as a pH modifying optional component to generally be used “at a level of from aobut [sic] 0.001% to aobut [sic] 10% of the conditioner composition preferably from about 0.01% to about 5%” (pg. 21, ll. 11-15; pg. 34, ll. 4-15). With regard to claim 1 ( c), Ansher-Jackson teaches inclusion of cationic surfactants as “ useful”, that cationic surfactants are “a portion of the water-insoluble surfactant component and these materials also provide conditioning benefits” with “[u]p to about 2.5%, preferably from about 0.5% to about 2.0%, of the conditioner composition comprises a quaternary ammonium compound water-insoluble surfactant material” (pg. 30, ll. 1-5). With regard to claim 6, Ansher-Jackson teaches behenyl trimethyl ammonium chloride as a preferred quaternary ammonium salt useful for the invention (pg. 31, ll. 1-15). With regard to claims 1 (d) & 7, Ansher-Jackson teaches inclusion of nonionic surfactants as a water insoluble surfactant for the vehicle base and teaches condensation products of aliphatic alcohols having about 8 to about 20 carbon atom with ethylene oxide (i.e. alkoxylated fatty alcohols) and in Example II teaches inclusion of ceteareth-20 in an amount of 0.35% (i.e. 0.35% of a nonionic surfactant which is a polyethylene glycol ester of cetearyl alcohol; pg. 10, ll. 15-20; pg. 14, ll. 1-6; pg. 37, ll. 5-25). With regard to claims 1 ( e), 8, 9 & 10, Ansher-Jackson teaches “from greater than 1% to 2%, by weight of the hair conditioning composition, of a fatty alcohol, preferably cetyl alcohol, stearyl alcohol, or a mixture thereof” (Ansher-Jackson’s claim 1). With regard to claims 1 (f), 9 & 10, Ansher-Jackson teaches the composition comprises amodimethicone as an other useful silicone material under silicone conditioning agents with silicone conditioning agents present in an amount from 0.1 to 18% by weight of the hair conditioning composition (pg. 21, ll.33-end; pg. 22, ll. 5-10; pg. 24, ll. 20-35; Ansher-Jackson’s claim 1). With regard to claims 1 (g) & 1 (h), Ansher-Jackson teaches the composition comprises from about 65% to about 98.8%, by weight of the hair conditioning composition, of a compatible solvent which comprises water or a water-lower alkanol mixture (pg. 6, ll. 10-15). With regard to claim 17, Ansher-Jackson teaches the Example 1 hair conditioning composition comprises 0.25% fragrance (i.e. miscellaneous ingredient). Ansher-Jackson inclusion of pearlescent aids as an optional component (pg. 34, ll. 5-10).
Ansher-Jackson does not teach inclusion of a cyclodextrin or derivative, the pH of the composition is about 3 to about 6, or the amount of fatty alcohol.
With regard to claims 1 (b) & 2, Muller teaches a composition which may be a conditioning composition which may be used to condition a keratinous materials that comprises cyclodextrin (abstract; title; [0018]). With regard to claim 1 (b), “[t]he inventor has discovered that the use of at least one agent chosen from cyclodextrins and the derivatives thereof may make it possible to pearl and/or enhance pearling of compositions, for example, cosmetic compositions, comprising at least one surfactant” [0015]. Muller teaches the “cyclodextrins and the derivatives thereof may be present in an amount ranging, for example, from 0.2% to 30% by weight, further, for example, from 1 % to 15% by weight, and still further, for example, from 1.5% to 10% by weight, of the total weight of the composition [0028]. With regard to claim 2, Muller teaches rinse out conditioners A-D which have a pH range from 3.3-3.7 [0250]. With regard to claim 5, Muller teaches α-cyclodextrin, β-cyclodextrin, gamma-cyclodextrin and methyl-beta-cyclodextrin as suitable for their invention ([0024]-[0027]).
In the same field of invention of hair care conditioning compositions comprising citric acid, with regard to claim 1 ( e), Verboom teaches hair conditioners which use fatty alcohols as a thickener in an amount from about 0.5 to about 11% [0026].
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Ansher-Jackson’s hair conditioner by adding from 1 % to α-cyclodextrin, β-cyclodextrin, gamma-cyclodextrin or methyl-beta-cyclodextrin to the composition [yielding a combined total amount of citric acid to cyclodextrin of 2, and weight ratio of citric acid to cyclodextrin weight ratio of 1:1 when citric acid is present in an amount of 1% and cyclodextrin is present in an amount of 1% as recited by claim 3] and adjusting the pH to be 3.3-3.7 and the amount of fatty alcohol to be 0.5 to 11% as suggested by the combined teachings of Muller and Verboom because Ansher-Jackson, Muller and Verboom are both directed to hair conditioning compositions and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a pearlescent effect to the composition and thicken the composition while providing the hair conditioning composition at a pH as art recognized as suitable for conditioners.
With regard to the recited amounts of citric acid, cyclodextrin or derivative, combined total amount of citric acid and the cyclodextrin, cationic surfactants, nonionic surfactants, fatty alcohols, amino-functionalized silicones, water, fragrance/miscellaneous ingredients; the pH of the composition; and the weight ratio of the citric acid to the cyclodextrin; the combined teachings of Ansher-Jackson and Muller suggest these parameters with values which overlap or fall within the recited ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 7 & 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ansher-Jackson , Muller and Verboom as applied to claims 1-10 & 17 above, and further in view of Silva (WO 2018/023180; Published: 02/08/2018).
*The Examiner notes the instant specification defines the term about as “meaning within +/- 5% of the indicated number”.
** The optional one or more nonionic surfactants and optional water-soluble solvents are interpreted as being present based upon Applicant’s species election.
***Claim 4 Analysis: As above
**** Claim 7 is examined to extent of fatty acid esters of polyethylene glycol and alkylpolyglucosides as the instant claims do not recite trideceth-5, trideceth-10, trideceth-6; glyceryl oleate, glyceryl linoleate, and safflower glucoside. The species election has not been withdrawn.
*****Claim 17: as above.
******Claim 12: Claim 12-one or more water soluble solvents are examined to the extent of glycerin, C2-C6 alcohols, polyols, isopropyl alcohol, and butylene glycol because caprylyl glycol is not recited by the instant claim listing. The species election has not been withdrawn.
The teachings of Ansher-Jackson, Muller and Verboom are described above. The combined teachings of Ansher-Jackson, Muller and Verboom suggest a hair conditioner comprising citric acid and cyclodextrin. Ansher-Jackson teaches inclusion of solvent.
Ansher-Jackson does not teach the amount of the water soluble solvents, that they are selected from “glycerin…glycols, or mixtures thereof”; or inclusion of one or more non-silicone based fatty compound.
In the same field of invention, Silva teaches a hair cosmetic which in an embodiment may be a rinse-off conditioner composition (pg. 9, ll. 5-15). With regard to claims 11 & 12, Silva teaches “in some embodiments” inclusion of “preferably from about 1 % to about 10%, by weight” of an organic solvent which include glycerin; C2-C8 alcohols which may be ethanol, isopropyl alcohols, and benzyl alcohol; and polyols including butylene glycol (pg. 24, ll. 1-10; pg. 25, ll. 15-25; pg. 26, ll. 1-5). With regard to claims 13 & 14, Silva teaches inclusion of cetyl esters and helianthus annuus (Sunflower) seed wax as waxes which are solid lipids to be employed in an amount of “about 0.1 %, 0.25%, 0.5%, 0. 75%, 0.8%, 0.9%, 1 %, 1.25%, 1.5%, 1.75%, 2%, 2.25%, 2.5%, 2.75%, 3%, 3.25%, 3.5%, 3.75%, 4%, 4.25%, 4.5%, 4.75%, 5%, 5.25%, 5.5%, 5. 75%, 6%, 6.5%, 7%, 7.5%, 8%, 8.5%, 9%, 9.5%, and 10%” (i.e. solid oils; pg. 27, ll. 20-30; pg. 28, ll. 5-10 & pg. 28, ll. 20-25). With regard to claim 14, Silva in their shampoo embodiments, F-J, teach inclusion of cetyl esters in an amount of 2% (pg. 52). With regard to claim 7, Silva in their shampoo embodiments, F-I, teach inclusion of decyl glucoside (i.e. alkylpolyglucoside) in an amount of 2.25-16.98% (pg. 52). Silva teaches “[i]t was also surprisingly and unexpectedly discovered that when the composition of the invention additionally contained one or more of waxes, … or alkylpolyglucosides, the composition remained stable, and has increased foaming qualities while providing greater conditioning and manageability benefits to hair (pg. 9,ll. 20-25).
Here at least rationale (A) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair conditioner suggested by the combined teachings of Ansher-Jackson, Muller and Verboom by adding 2-10% of cetyl esters and helianthus annuus (Sunflower) seed wax, about 1 % to about 10%, by weight” of an organic solvent which may be any one of glycerin; C2-C8 alcohols including ethanol, isopropyl alcohol, and benzyl alcohol; and polyols including butylene glycol; and decyl glucoside (i.e. an alkylpolyglucoside) as suggested by Silva because Ansher-Jackson, Muller, Verboom and Silva are all directed to hair conditioners and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide dissolution capabilities to the formulation and stability, greater conditioning and manageability benefits to hair as taught Silva.
With regard to the recited amounts of one or more water soluble solvents/glycerin/C2-C8/ethanol/isopropyl alcohol/benzyl alcohol/polyols/butylene glycol; one or more non-silicone-based fatty compounds/cetyl esters and helianthus annuus (Sunflower) seed wax/oil, the combined teachings of Ansher-Jackson, Muller, Verboom and Silva suggest this parameter with values which overlap or fall within the recited ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 15 & 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ansher-Jackson, Muller, Verboom and Silva as applied to claims 1-14 & 17 above, and further in view of Hydroxypropyltrimonium Hydrolyzed Wheat Protein (https://web.archive.org/web/20210920072512/https://cosmeticanalysis.com/web/20210920072512/https://cosmeticanalysis.com/t/cosmetic-ingredients/hydroxypropyltrimonium-hydrolyzed-wheat-protein; Published: 09/20/2021).
*The Examiner notes the instant specification defines the term about as “meaning within +/- 5% of the indicated number”.
** The optional one or more nonionic surfactants and optional water-soluble solvents are interpreted as being present based upon Applicant’s species election.
***Claim 4 Analysis: As above
**** Claim 7 is examined to extent of fatty acid esters of polyethylene as the instant claims do not recite trideceth-5, trideceth-10, trideceth-6; glyceryl oleate, glyceryl linoleate, and safflower glucoside. The species election has not been withdrawn.
*****Claim 17: As above.
******Claim 12: As above.
The combined teachings of Ansher-Jackson, Muller, Verboom and Silva are described above. In brief, the combined teachings of Ansher-Jackson, Muller, Verboom and Silva suggest a hair conditioner comprising cyclodextrin and citric acid. With regard to claims 15 & 16, Silva teaches a comparative hair conditioner comprising hydroxypropyltrimonium hydrolyzed wheat protein in an amount of 0.01 %.
Neither Ansher-Jackson, Muller, Verboom nor Silva teach a motivation/rationale for inclusion of hydroxypropyltrimonium hydrolyzed wheat protein in a hair conditioner.
Hydroxypropyltrimonium Hydrolyzed Wheat Protein teaches hydroxypropyltrimonium hydrolyzed wheat protein functions as an anti-static and hair conditioning reagent (pg. 1).
Here, at least rationale (A) may be employed in which it would have been prima facie obvious to add 0.01% hydroxypropyltrimonium hydrolyzed wheat protein to the hair conditioner suggested by the combined teachings of Ansher-Jackson, Muller, Verboom and Silva as suggested by Silva and Hydroxypropyltrimonium Hydrolyzed Wheat Protein because Ansher-Jackson, Muller, Verboom, Silva and Hydroxypropyltrimonium Hydrolyzed Wheat Protein are drawn to the field of the hair conditioning and hydrolyzed wheat protein provides conditioning and anti-static benefits. The ordinary skilled artisan would have been motivated to do, with an expectation of success, in order to provide antistatic and conditioning benefits to hair by using hydroxypropyltrimonium hydrolyzed wheat protein in an amount suitable for doing so.
With regard to the recited amount of one or more cationic conditioning polymers/ hydroxypropyltrimonium hydrolyzed wheat protein, the combined teachings of Ansher-Jackson, Muller, Verboom, Silva and Hydroxypropyltrimonium Hydrolyzed Wheat Protein suggest this parameter with values which overlap or fall within the recited ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ansher-Jackson (WO 91/16871; Published: 1991) in view of Muller (US 2004/0033984; Published: 02/19/2004), Verboom (US 2003/0191035; Published: 10/09/2003), Silva (WO 2018/023180; Published: 02/08/2018), Hydroxypropyltrimonium Hydrolyzed Wheat Protein (https://web.archive.org/web/20210920072512/https://cosmeticanalysis.com/web/20210920072512/https://cosmeticanalysis.com/t/cosmetic-ingredients/hydroxypropyltrimonium-hydrolyzed-wheat-protein; Published: 09/20/2021).
*The Examiner notes the instant specification defines the term about as “meaning within +/- 5% of the indicated number”.
** The optional one or more cationic conditioning polymers and optional one or more miscellaneous ingredients are interpreted as being present based upon Applicant’s species election.
*** Claim 18 recites " the citric acid, salt thereof, or combination thereof of (a) and the cyclodextrin or derivatives thereof of (b) have been individually combined with each other to form a composition in which the cyclodextrin or derivative thereof of (b) is dissolved in the citric acid, salt thereof, or combination thereof of (a) before subsequently being combined with additional components of the hair-treatment composition" which is a product-by-process recitation. M.P.E.P. § 2113-PRODUCT BY PROCESS CLAIMS states: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
M.P.E.P. § 2113 further states: "Once a product appearing to be substantially identical is found and a 35 U.S.C. 102 /103 rejection made, the burden shifts to the Applicants to shown an unobvious difference.” “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).”
**** Claim 18 (d) is examined to extent of fatty acid esters of polyethylene as the instant claims do not recite trideceth-5, trideceth-10, trideceth-6; glyceryl oleate, glyceryl linoleate, and safflower glucoside. The species election has not been withdrawn.
*****Claim 18 (g): one or more water soluble solvents are examined to the extent of glycerin, C2-C6 alcohols, polyols, isopropyl alcohol, and butylene glycol because caprylyl glycol is not recited by the instant claim. The species election has not been withdrawn..
******Claim 18(k): Miscellaneous ingredients are examined to the extent of fragrance as the species of styrax benzoin gum, boron nitride, xylose, acetic acid, benzoic acid, iris Florentina root extract, fragrance, phenoxyethanol, sodium citrate; BHT, sodium hydroxide, and tocopherol are not recited by the claims. The species election has not been withdrawn.
With regard to claim 18(a), Ansher-Jackson teaches clean conditioning compositions for hair which comprise citric acid as a chelating agent which serves as a rheological aid “present at a level of from about 0.05% to about 1.0%” or as a pH modifying optional component to generally be used “at a level of from aobut [sic] 0.001% to aobut [sic] 10% of the conditioner composition preferably from about 0.01% to about 5%” (pg. 21, ll. 11-15; pg. 34, ll. 4-15). With regard to claim 18 ( c), Ansher-Jackson teaches inclusion of cationic surfactants as “ useful”, that cationic surfactants are “a portion of the water-insoluble surfactant component and these materials also provide conditioning benefits” with “[u]p to about 2.5%, preferably from about 0.5% to about 2.0%, of the conditioner composition comprises a quaternary ammonium compound water-insoluble surfactant material” (pg. 30, ll. 1-5). With regard to claim 18 (d), Ansher-Jackson teaches inclusion of nonionic surfactants as a water insoluble surfactant for the vehicle base and teaches condensation products of aliphatic alcohols having about 8 to about 20 carbon atom with ethylene oxide (i.e. alkoxylated fatty alcohols) and in Example II teaches inclusion of ceteareth-20 in an amount of 0.35% (i.e. 0.35% of a nonionic surfactant which is a polyethylene glycol ester of cetearyl alcohol; pg. 10, ll. 15-20; pg. 14, ll. 1-6; pg. 37, ll. 5-25). With regard to claim 18 ( e), Ansher-Jackson teaches “from greater than 1% to 2%, by weight of the hair conditioning composition, of a fatty alcohol, preferably cetyl alcohol, stearyl alcohol, or a mixture thereof” (Ansher-Jackson’s claim 1). With regard to claim 18 (f), Ansher-Jackson teaches the composition comprises amodimethicone as an other useful silicone material under silicone conditioning agents with silicone conditioning agents present in an amount from 0.1 to 18% by weight of the hair conditioning composition (pg. 21, ll.33-end; pg. 22, ll. 5-10; pg. 24, ll. 20-35; Ansher-Jackson’s claim 1). With regard to claim 18 (h), Ansher-Jackson teaches the composition comprises from about 65% to about 98.8%, by weight of the hair conditioning composition, of a compatible solvent which comprises water or a water-lower alkanol mixture (pg. 6, ll. 10-15). With regard to claim 18(k), Ansher-Jackson teaches the Example 1 hair conditioning composition comprises 0.25% fragrance (i.e. miscellaneous ingredient). Ansher-Jackson inclusion of pearlescent aids as an optional component (pg. 34, ll. 5-10).
Ansher-Jackson does not teach inclusion of a cyclodextrin or derivative; water soluble solvents or their amounts; the amount of fatty alcohol; one or more non-silicone based fatty compound; and one or more cationic conditioning polymers.
With regard to claim 18 (b), the teachings of Muller are described above. With regard to claim 18 (b), Muller teaches a composition which may be a conditioning composition which may be used to condition a keratinous materials that comprises cyclodextrin (abstract; title; [0018]). With regard to claim 18 (b), “[t]he inventor has discovered that the use of at least one agent chosen from cyclodextrins and the derivatives thereof may make it possible to pearl and/or enhance pearling of compositions, for example, cosmetic compositions, comprising at least one surfactant” [0015]. Muller teaches the “cyclodextrins and the derivatives thereof may be present in an amount ranging, for example, from 0.2% to 30% by weight, further, for example, from 1 % to 15% by weight, and still further, for example, from 1.5% to 10% by weight, of the total weight of the composition [0028].
In the same field of invention of hair care conditioning compositions comprising citric acid, with regard to claim 1 ( e), Verboom teaches hair conditioners which use fatty alcohols as a thickener in an amount from about 0.5 to about 11% [0026].
With regard to claim 18 (g), the teachings of Silva are described above. In brief, Silva teaches a hair cosmetic which in an embodiment may be a rinse-off conditioner composition (pg. 9, ll. 5-15). With regard to claim 18 (g), Silva teaches “in some embodiments” inclusion of “preferably from about 1 % to about 10%, by weight” of an organic solvent which include glycerin; C2-C8 alcohols which may be ethanol, isopropyl alcohols, and benzyl alcohol; and polyols including butylene glycol (pg. 24, ll. 1-10; pg. 25, ll. 15-25; pg. 26, ll. 1-5). With regard to claim 18 (i), the teachings of Silva are described above. Silva teaches a hair cosmetic which in an embodiment may be a rinse-off conditioner composition (pg. 9, ll. 5-15). Silva teaches inclusion of cetyl esters and helianthus annuus (Sunflower) seed wax as waxes which are solid lipids to be employed in an amount of “about 0.1 %, 0.25%, 0.5%, 0. 75%, 0.8%, 0.9%, 1 %, 1 .25%, 1.5%, 1. 75%, 2%, 2.25%, 2.5%, 2.75%, 3%, 3.25%, 3.5%, 3.75%, 4%, 4.25%, 4.5%, 4.75%, 5%, 5.25%, 5.5%, 5. 75%, 6%, 6.5%, 7%, 7.5%, 8%, 8.5%, 9%, 9.5%, and 10%” (i.e. solid oils; pg. 27, ll. 20-30; pg. 28, ll. 5-10 & pg. 28, ll. 20-25). With regard to claim 18 (i), Silva in their shampoo embodiments, F-J, teach inclusion of cetyl esters in an amount of 2% (pg. 52). Silva teaches “[i]t was also surprisingly and unexpectedly discovered that when the composition of the invention additionally contained one or more of waxes, …, the composition remained stable, and has increased foaming qualities while providing greater conditioning and manageability benefits to hair (pg. 9,ll. 20-25). With regard to claim 18 (j), the Silva teaches a comparative hair conditioner comprising hydroxypropyltrimonium hydrolyzed wheat protein in an amount of 0.01 % (pg. 55).
With regard to claim 18 (j), the teachings Hydroxypropyltrimonium Hydrolyzed Wheat Protein are described above. Hydroxypropyltrimonium Hydrolyzed Wheat Protein teaches hydroxypropyltrimonium hydrolyzed wheat protein functions as an anti-static and hair conditioning reagent (pg. 1).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Ansher-Jackson’s hair conditioner by adding from 1 % to 15 cyclodextrin or to the composition [yielding a combined total amount of citric acid to cyclodextrin of 2] as suggested by Muller; adjusting the amount of fatty alcohols to be between about 0.5 to about 11% as suggested by Verboom, adding about 1 % to about 10%, by weight” of an organic solvent which may be anyone of glycerin; C2-C8 alcohols including ethanol, isopropyl alcohol, and benzyl alcohol; and polyols including butylene glycol as suggested by Silva; adding 2-10% of cetyl esters and helianthus annuus (Sunflower) seed wax as suggested by Silva; and adding 0.01 % hydroxypropyltrimonium hydrolyzed wheat protein as suggested by the combined teachings of Silva and Hydroxypropyltrimonium Hydrolyzed Wheat Protein because Ansher-Jackson, Muller, Verboom, Silva and Hydroxypropyltrimonium Hydrolyzed Wheat Protein are directed to hair conditioning and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide dissolution capabilities and stability to the formulation and provide a hair conditioner with pearlescence and thickness, greater conditioning, manageability and antistatic benefits to hair as suggested by the combined teachings of Muller, Verboom, Silva and Hydroxypropyltrimonium Hydrolyzed Wheat Protein in a hair conditioner.
With regard to the recited amounts of citric acid, cyclodextrin; one or more cationic surfactants; one or more nonionic surfactants or emulsifiers; one or more fatty alcohols; one or more water soluble solvents/glycerin/C2-C8/ethanol/isopropyl alcohol/benzyl alcohol/polyols/butylene glycol; water; one or more non-silicone-based fatty compounds/cetyl esters and helianthus annuus (Sunflower) seed wax/oil; one or more cationic conditioning polymers; and one or more miscellaneous ingredients/fragrance, the combined teachings of Ansher-Jackson, Muller, Verboom, Silva and Hydroxypropyltrimonium Hydrolyzed Wheat Protein suggest this parameter with values which overlap or fall within the recited ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
In the traverse of the rejection of the claims, Applicant argues Ansher-Jackson does not teach the amount of fatty alcohol and teaches away from amount of fatty alcohol beyond 2.0% by weight (reply, pg. 8-9 & 13).
This is not persuasive. Ansher-Jackson in the discussion of fatty alcohols tending to make the hair feel dirty or greasy is with regard to the prior art. Ansher-Jackson encourages the user towards higher amounts of fatty alcohol by teaching “It has now surprisingly been found that when fatty alcohol materials are delivered out of the present vehicle base of the conditioner compositions of the present invention, these negative conditioning effects are lessened. Hence, the result is that these materials can be used at higher levels than previously thought to provide enhanced hair conditioning without the usual drawbacks of coated, dirty hair feel.” (pg. 32). Ansher-Jackson does not teach an amount for where their invention fails. This is important because Ansher-Jackson promotes ” it has now surprisingly been found that fatty alcohols can be delivered out of the present compositions at levels higher than was previously thought without the usual dirty hair feel drawbacks associated with such materials” (pg. 33). Ansher-Jackson distinguishes their invention with regard to the amount of alcohol from that of the prior art by teaching “the use of such compositions on hair will leave hair feeling and looking cleaner and less coated than traditional fatty alcohol-based conditioner compositions” (pg. 33). Given that fatty alcohols are known to be used in conditioners as thickeners in amounts of up to 11% by Verboom, the ordinary skilled artisan would be motivated to try this increased amount of fatty alcohols to thicken their composition.
Applicant argues the combination of the citric acid, cyclodextrin, surfactant system, and amino-functionalized silicone that provide the unexpected results in that composition A had improved fiber alignment, reduced frizz and greater smoothness (reply, pg. 12).
This is not persuasive. Compositions A-C are vastly different with regard to the reagents and amounts and do not permit a fair comparison. Composition A contains the greatest amount of polyhydric alcohols (3.4% vs. 0.7% vs. 1%) and these are known humectants. Compositions B and C are both missing hydroxypropyltrimonium hydrolyzed wheat protein which is known to provide conditioning. Composition B does not share the same nonionic surfactant system as Composition A and this nonionic surfactant system is missing from Composition C. It would be expected that the compositions perform differently because they are vastly different and variables/reagents that should have been held constant were not maintained.
Next the Composition A is not commensurate the scope of the claims. It is one composition and uses singular species and amount for reagents (a)-(h). The claims are generic to the cationic surfactant, nonionic surfactant, fatty alcohols, amino-functionalized silicones, and water soluble solvents. "[O]bjective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 11, 16 & 18 of copending Application No. 18/355,480 (hereinafter the ‘480; claims filed: 07/20/2023) in view of Muller (US 2004/0033984; Published: 02/19/2004), Ansher-Jackson (WO 91/16871; Published: 1991), Silva (WO 2018/023180; Published: 02/08/2018), and Hydroxypropyltrimonium Hydrolyzed Wheat Protein (https://web.archive.org/web/20210920072512/https://cosmeticanalysis.com/web/20210920072512/https://cosmeticanalysis.com/t/cosmetic-ingredients/hydroxypropyltrimonium-hydrolyzed-wheat-protein; Published: 09/20/2021).
The instant claims and the ‘480 application both recite a hair conditioning composition which comprise citric acid and cyclodextrin in overlapping amounts. The ‘480 recites the combined total amount of citric acid and cyclodextrin is about 2 to about 8 % which overlaps with the recited range. The ‘480 recites inclusion of one or more cationic surfactant; one or more nonionic surfactant; one or more fatty alcohols; one or more amino-functionalized silicones in amounts which overlap with the recited range. The ‘480 and the instant claims both recite inclusion of one or more water-soluble solvents. The weight ratio of the citric acid to cyclodextrin is 1:1 when the 1% citric acid and 1% cyclodextrin are selected. The ‘480 does not teach the pH of the composition, the species of cyclodextrin, the species of cationic and nonionic surfactants, the species of fatty alcohols, that the amino-functionalized silicone is selected from amodimethicone, the species and amount of the water-soluble solvents, the species and the amount of the non-silicone based fatty compounds, and the species and the amount of cationic conditioning polymers. With regard to the species of cyclodextrin and pH of the composition, the teachings of Muller are described above. In brief, Muller teaches a hair conditioner having a pH range of 3.3-3.7 comprising cyclodextrins which may be α-cyclodextrin, β-cyclodextrin, gamma-cyclodextrin or methyl-beta-cyclodextrin. With regard to the cationic and nonionic surfactants, fatty alcohols, and the species of amino-functionalized silicones, the teachings of Ansher-Jackson are described above. Ansher-Jackson teaches a hair conditioning comprising behentrimonium chloride, ceteareth-20, cetyl alcohol, stearyl alcohol, and amodimethicone. With regard to the water-soluble solvent, the teachings of Silva are described above. In brief, Silva teaches a hair conditioner comprising of about 1 % to about 10%, by weight” of an organic solvent which may be any one of glycerin; C2-C8 alcohols including ethanol, isopropyl alcohol, and benzyl alcohol; and polyols including butylene glycol. With regard to the non-silicone based fatty compounds, Silva teaches inclusion of “about 0.1 %” to “10%” solid lipids which may be cetyl esters and helianthus annuus (Sunflower) seed wax as waxes to provide greater conditioning and manageability benefits to hair. With regard to the one or more cationic polymers, Silva teaches a hair conditioning composition comprising 0.01 % hydroxypropyltrimonium hydrolyzed wheat protein and Hydroxypropyltrimonium Hydrolyzed Wheat Protein teaches hydroxypropyltrimonium hydrolyzed wheat protein has antistatic and conditioning properties. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the conditioning composition of the ’480 application by adjusting the pH of the composition to be 3.3-3.7, selecting any one of α-cyclodextrin, β-cyclodextrin, gamma-cyclodextrin or methyl-beta-cyclodextrin as the cyclodextrin, selecting behenyltrimonium chloride as the cationic surfactant, selecting Ceteareth-20 as the nonionic surfactant, selecting cetyl and stearyl alcohols as the fatty alcohols, selecting amodimethicone as the amino-functionalized silicone, any one of glycerin; C2-C8 alcohols including ethanol, isopropyl alcohol, and benzyl alcohol, and polyols including butylene glycol as the water-soluble solvent in an amount of 1 % to about 10%, by weight, adding about 0.1 % to 10% solid lipids which are cetyl esters and helianthus annuus (Sunflower) seed wax, and adding 0.01 % hydroxypropyltrimonium hydrolyzed wheat protein as suggested by the combined teachings of Muller, Ansher-Jackson, Silva, and Hydroxypropyltrimonium Hydrolyzed Wheat Protein because the ‘480, Muller, Ansher-Jackson, Silva, and Hydroxypropyltrimonium Hydrolyzed Wheat Protein are directed to hair conditioning compositions and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so in order to provide a stable formulation which provides conditioning, antistatic properties and manageability to hair.
With regard to the recited amounts of citric acid, cyclodextrin; one or more cationic surfactants; one or more nonionic surfactants or emulsifiers; one or more fatty alcohols; one or more amino-functionalized silicones/amodimethicone, one or more water soluble solvents/glycerin/C2-C8/ethanol/isopropyl alcohol/benzyl alcohol/polyols/butylene glycol; water; one or more non-silicone-based fatty compounds/cetyl esters and helianthus annuus (Sunflower) seed wax/oil; one or more cationic conditioning polymers; and one or more miscellaneous ingredients/fragrance; pH range; total combined amount of citric acid and cyclodextrin; and weight ratio of citric acid to cyclodextrin, the combined teachings of Muller, Ansher-Jackson, Silva and Hydroxypropyltrimonium Hydrolyzed Wheat Protein suggest this parameter with values which overlap or fall within the recited ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to the claims 4 & 18 product by process limitation, M.P.E.P. § 2113-PRODUCT BY PROCESS CLAIMS states: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). M.P.E.P. § 2113 further states: "Once a product appearing to be substantially identical is found and a 35 U.S.C. 102 /103 rejection made, the burden shifts to the Applicants to shown an unobvious difference.” “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).”
The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant argues the double patenting rejection is improper because a restriction requirement indicated the methods of treating hair to be patentably distinct from compositions (i.e. the present case; reply, pg. 13).
This is not persuasive. Application No. 18/355,480 and the instant application do not share a continuity chain and Application No. 18/355,480 was not filed in response to the restriction requirement of the instant application.
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 LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619