That DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the reply filed 1/8/2026.
Election/Restriction
During a telephone conversation with R. James Balls on 7/16/2025 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The Election was affirmed by R. James Ball in the reply filed 1/8/2026.
Response to Arguments
All of Applicant’s arguments filed 1/8/2026 have been fully considered.
112(b) Rejections
In view of the amendments to the claims, the 112(b) issues noted in the office action mailed 9/8/2025 have been resolved, as such the rejection is withdrawn.
103 Rejections
Applicant argues that Kadir does not recognize the claimed ratio of ingredients (a) and (b) and argues that the claimed range possesses unpredictable and surprising results and thus cannot be obvious over the prior art. Applicant also noted that the range of ratios of Kadir is broader than in Atofina.
Applicant’s arguments are not persuasive as the data presented is not sufficient to establish an unpredictable and surprising with respect to the claimed ratio as the data presented fails to compare the instant invention with the closest prior art. As explained in the office action Kadir makes obvious a composition comprising both (a) and (b), as such the comparing a composition comprising (a)+(b) with a composition lacking (b) is not a proper side-by-side comparison. There is no evidence that the properties achieved are a result of the claimed ratio or are simply due to the presence of ingredient (b) which is taught to be a conditioning agent and the inclusion of a conditioning agent is expected to result in composition with enhanced smoothness, as evidenced by US20140044664, amodimethicones have been found to provide significant conditioning properties to damaged hair, restore shine and smoothness and correct for fly away hair (i.e. improved fiber alignment) [0002]. Furthermore, the data presented in not commensurate in scope with the instant claims. A single very specific composition was tested and a single data point is not sufficient to exemplify a trend on the exemplified data. Applicant reliance on Atofina is not persuasive as Atofina was directed to anticipation and the instant claims are rejected over obviousness and overlapping ranges are prima facie obvious absent evidence to the contrary.
Double Patenting Rejections
Applicant argues that the DP rejection over 18224119 is not proper per MPEP 804.01.
This is not persuasive as the 35 USC 121 provision is limited to DIV of the instant application filed as a direct result of the restriction requirement.
With regards to the ODP rejection(s), as Applicant has not addressed the merits of the rejection(s), the double patenting rejection(s) is/are maintained for the reasons of record.
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) 1-18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kadir (WO2015/069823), as evidenced by Leroy (EP0626166). Leroy is newly cited
Kadir discloses a composition and process for straightening hair (Abs). The technology related to a thermally-activated composition comprising at least one hair straightening agent (a) and at least one hair straightening adjuvant (b) and a carrier [0004].
Regarding claim 2: Kadir teaches that the pH of the composition should range from 1.5-9.5 [0170].
Regarding claim 1(a), 3-4, 18(a) and 21(a): Kadir teaches the hair straightening agent to be present in amounts ranging from 10-40wt% [0020], suitable agents include propylene carbonate, ethylene carbonate and mixture thereof, as these have low toxicity and do not form byproducts during the heating stage [0045, 0047 and 0048].
Regarding 1(b), 5-6, 18(b) and 21(b): Kadir teaches the inclusion of a volatile and non-volatile silicone conditioning agent, suitable agents include amino functional polydimethysiloxane, specifically amodimethicones [0120]. The silicone conditioning agents are taught to be used in amounts ranging from 0.01-20%, preferably 0.1-10wt% [0129].
Regarding the weight ratio of cyclic carbonate (a) and aminofunctionalized silicone/amodimethicone (b) and instant claim 7: The prior art makes obvious the use of 10-40% (a) and 0.1-10% (b), which results in a weight ratio of (a) : (b) of 4-400:1 which overlaps with the claimed ranges and overlapping ranges are prima facie obvious absent evidence of unexpected results.
Kadir teaches that rheology modifiers can be included, these increase the overall viscosity of the composition to provide a composition that adheres well to hair [0158].
Regarding claims 1(c), 8-9, 18(c) and 21(c): Kadir teaches suitable rheology modifiers to include polysaccharides such as guar gum, hydroxypropyl celluloses, xanthan, etc. [0168], thus the inclusion of any of these agents is prima facie obvious and yielding no more than would be expected from such an arrangement. These can be used alone or in combination in amounts ranging from 0.1-10% [0169].
Regarding claims 1(d), 10-12, 18(d) and 21(d): Kadir teaches suitable rheology modifiers to include HASE polymers such as PEG-150/decyl alcohol/SMDI copolymer [0165], thus the inclusion of any of these agents is prima facie obvious and yielding no more than would be expected from such an arrangement. These can be used alone or in combination in amounts ranging from 0.1-10% [0169].
Regarding claims 1(e), 13, 18(e) and 21(e): Kadir teaches that non-ionic surfactants can be added to the composition, these include sorbitan fatty acid esters (reading on sorbitan esters), etc. [0093]. These can be used in amounts ranging from 0.001-20wt% [0096].
Regarding claims 1(f), 14, 18(f) and 21(f): Kadir teaches that emollient such as mineral oil, vegetable oil, shea butter, fatty alcohol esters, etc., can be added in amounts ranging from 1-15wt% [0109-0112].
Regarding claims 1(g), 15, 18(g) and 21(g): Kadir teaches that humectants such as glycerin, propylene glycol, polyethylene glycol, etc. can be added in amounts ranging from 0.01-20wt% [0106-0107].
Regarding claims 1(h), 16, 18(h) and 21(h): Kadir teaches that water can be used as a suitable carrier/excipient and exemplifies the use of water 70% (table 1) and 53.78% (table 8), thus teaching ranges which overlap with those claimed. Kadir further teaches that the choice and amount of each excipient will vary with the purpose and character of the end product and can be readily determined by a skilled artisan [0067], thus it would have been obvious to optimize the amounts of water present in the composition.
Regarding claims 17, 18(i) and 21(i): Kadir teaches the inclusion of preservatives in amounts ranging from 0.01-3%[0178], reading on miscellaneous ingredient.
Kadir does not teach a specific embodiment having all the claimed elements.
That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. AG. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is... a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of various disclosed ingredients including propylene carbonate, amodimethicone, polysaccharides, nonionic associative thickeners, nonionic surfactants, non-silicone based fatty compounds, water soluble solvents, water and miscellaneous ingredients, as discussed above, for inclusion hair treatment composition from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Instant claim 21: Regarding the consisting of language in claim 21, Kadir makes obvious a composition comprising component (a)-(i) as claimed, however, Kadir also comprises as a required component a guanidine moiety containing adjuvant compound (Abs and Kadir – claim 1). Kadir teaches this ingredient to be used in a weight ratio of 1.5-1 to about 10:1 (cyclic carbonate : guanidine compound) and teaches the combined amount of these agents to be about 20-35% [0026-0027], thus the cyclic carbonate can be calculated to be used in amounts ranging from 12-31.81% and the guanidine compound in amounts of 1.81-14%. This results in a weight ratio of cyclic carbonate and amino-functionalized silicone of 1.2-318.1:1.
Table 1 exemplifies using guanidine carbonate, as evidenced by Leroy (claim – 16), guanidine carbonate is a pH adjusting agent, which falls within ingredient (i).
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 1-2 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-15 of copending Application No. 18/224119 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because US’119 teaches a leave on finishing composition having a pH ranging from 2-6 comprising a cyclic carbonate, amino-functionalized silicone, polysaccharide, nonionic associative thickener, nonionic surfactant and water in the same amounts as the hair treatment composition of the instant claims. US’119 also provide amounts of (a) and (b) which provide a ratio that overlaps with the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9, 13, 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/355516 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach hair treatment compositions having a pH of about 3-6 comprising about cyclic carbonates in particular propylene carbonate, polysaccharide thickening agents such as guar gum, water, water soluble solvents such as glycerin, an amino-functionalized silicone such as amodimethicone, non-ionic surfactants such as sorbitan esters, miscellaneous ingredients. All these ingredients are present in overlapping amounts. US’119 also provide amounts of (a) and (b) which provide a ratio that overlaps with the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613