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 .
Election/Restrictions
Applicant's election with traverse of Group II, claims 31-40 in the reply filed on 11/17/2025 is acknowledged. The traversal is on the ground(s) that there is no serious burden of examination directed towards a single inventive concept. This is not found persuasive because as outlined by the election/restriction requirement the method of cleansing hair and the method of conditioning hair both have unique functions (cleaning vs conditioning) thus providing a burden a search as they’re directed towards unique inventions. Applicant has failed to outline how the two groups share a single inventive concept in light of the restriction requirement, therefore the argument is not found persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/08/2023, 01/17/2024, 04/05/2024, 07/25/2024, 10/21/2024, 11/22/2024, 02/04/2025, and 03/19/2025 are being considered by the examiner. A few of the foreign patents documents do not have any English translations and these are not considered by the examiner. A few foreign patent documents and non-patent literature documents only have English translations of the abstract and/or the claims and/or overview. The documents without English translations are not considered by the examiner and the documents with English translations of the abstract and/or claims and/or overview only, only the abstracts and/or claims and/or overview have been considered. Please see annotated IDS forms.
Claim Objections
Claim 33 is objected to because of the following informalities – duplicated repeat: “lauric acid and tridecylic acid”. Appropriate correction is required.
Claim Interpretation
Claim 31 recites the limitation of “B. optionally rinsing the hair” which utilizes the term “optionally” which Examiner broadly interprets to mean anything follow “optionally” is not a limitation of the claim.
Claims 34-36 and 40 utilize the relative term "about". The term “about” is defined by the claims, the specification define the term “about” to be +/- 5% of the indicated number. Therefore, the term “about” in claims 34-36 and 40 will be broadly interpreted by the examiner to mean +/- 5%.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 32 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 32 recites “(a) one or more amino acids, amino sulfonic acids, or salts thereof chosen from…..salts thereof, or mixtures of two or more thereof” which is first unclear whether the (a) one or more amino acid, amino sulfonic acid or salt thereof is the same as component a) from claim 31 from which it depends upon or an additional amino acid added. Further, the wording of claim 32 renders the claim indefinite as it is unclear how many amino acids, amino sulfonic acids, or salts thereof are required. For instance, is the requirement “one or more” or is it the “mixtures of two or more” thus rendering the claim indefinite.
For the purpose of moving prosecution forward, examiner broadly interprets the claim to require a single amino acid, amino sulfonic acid, or salt thereof selected from the listed grouping.
Claim 33 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 33 recites “(b) one or more non-polymeric monocarboxylic acids, dicarboxylic acids, tricarboxylic acids, or salts thereof chosen from…..salts thereof, or mixtures of two or more thereof” which is first unclear whether the (b) one or more non-polymeric monocarboxylic acids, dicarboxylic acids, tricarboxylic acids, or salts thereof is the same as component b) from claim 31 from which it depends upon or an additional acid added. Further, the wording of claim 33 renders the claim indefinite as it is unclear how many one or more non-polymeric monocarboxylic acids, dicarboxylic acids, tricarboxylic acids, or salts thereof are required. For instance, is the requirement “one or more” or is it the “mixtures of two or more” thus rendering the claim indefinite.
For the purpose of moving prosecution forward, examiner broadly interprets the claim to require a single one or more non-polymeric monocarboxylic acids, dicarboxylic acids, tricarboxylic acids, or salts thereof selected from the listed grouping.
Claim 39 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 39 use the term “and/or” which is unclear as to whether the claim requires all of the listed components (i.e. taurine and a salt thereof) or just one of the components individually or a combination of the components thereby rendering the claims indefinite.
Therefore, the claim 39 will be broadly interpreted by the examiner to mean the claims require just one of the components individually (i.e. taurine).
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.
Claim(s) 31-39 are rejected under 35 U.S.C. 103 as being unpatentable over Giret et al. (CN1116858A, published 02/14/1996, English translation by Google, hereafter Giret).
Giret teaches a cleaning composition that has good lathering, mildness, rinsability and conditioning (title and abstract; according to the claim limitations of the instant claim 1). Giret teaches the composition is applicable in conditioning the hair (page 3, paragraph 2; according to the claim limitations of the instant claim 31). Giret teaches the conditioning to hair and more specifically teaches washing and rinsing with the product (page 4, paragraph 4; according to the claim limitations of the instant claim 31). Giret claims a personal cleansing composition comprising (a) about 5 to 50% by weight of one or more surfactants selected from anionic, nonionic, amphoteric, zwitterionic and cationic surfactants and mixtures thereof; (d) about 1.5 to 10% by weight of citric acid or water-soluble citrates or mixtures thereof; and (e) water (claim 1 and abstract; according to the claim limitations of the instant claims 31, 33-35, and 39). Claim 3 of Giret claims the citric acid or its water-soluble salt is present in an amount of about 2-8% by weight, preferably about 2.5-6% by weight (according to the claim limitations of the instant claims 31, 33, 35, and 39). Claim 4 of Giret claims the anionic surfactant is elected from the group which contains methyl acyl taurine Salts (taurates)(an amino sulfonic acid)(according to the claim limitations of the instant claims 31-32, and 39). Furthermore, claim 5 of Giret claims the composition comprising a mixture of anionic surfactant and amphoteric surfactant in a respective content of about 1 to 15%, preferably about 2 to 13% (weight) (according to the claim limitations of the instant claims 31 and 34). Claim 18 of Giret claims the composition further comprising about 0.01 to 5%, preferably about 0.04 to 2%, more preferably 0.05 to 1% by weight of cationic or nonionic polymerized skin or hair conditioning agents selected from the group consisting of: cationic and nonionic polysaccharides; cationic and nonionic homopolymers and copolymers derived from acrylic acid and/or methacrylic acid; cationic and nonionic cellulose resins; dimethyldiallyl chloride cationic copolymers of diallylammonium and acrylic acid; cationic homopolymers of dimethyldiallylammonium chloride; cationic polyalkyleneimines and cationic ethoxylated polyalkyleneimines; quaternized silicones , and mixtures thereof (according to the claim limitations of the instant claims 36 and 37). Giret teaches the pH of the composition is preferably about 4-8 or more preferably about 4.5-6.5 (page 7, paragraph 8; according to the claim limitations of the instant claim 38).
Giret does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Giret with a reasonable expectation of success to obtain the method of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[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. A.G. 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 v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the method of the instant claims with predictable results.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Giret et al. (CN1116858A, published 02/14/1996, English translation by Google, hereafter Giret) in view of Bentley et al. (WO2016113316A1, published 07/21/2016, hereafter Bentley)
As outlined above, Giret teaches washing and rinsing hair with a composition comprising at least 0.5% of an amino sulfonic acid, at least 0.5% citric acid, a cationic surfactant, and water.
Although Giret teaches washing and rinsing hair with a condition composition comprising citric acid, taurine, a cationic surfactant, and water, it does not teach the composition is left of the hair for a period of time, specifically from about 5 seconds to about 10 minutes as in instant claim 40.
Bentley teaches a rinse off hair treatment composition comprising a hair conditioning agent (abstract and claim 1). Bentley teaches the composition may be a conditioner, specifically conditioners with cationic surfactants (page 14, lines 10-12). Bentley teaches the method of use of the hair treatment composition comprising the following steps: applying to hair, leaving on hair for 0 to 10 minutes, and rinsing off with water (page 23, lines 27-34).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a method of washing and rinsing hair with a composition comprising at least 0.5% of an amino sulfonic acid, at least 0.5% citric acid, a cationic surfactant, and water as outlined by Giret with the ready for improvement with the known technique of leaving the conditioner of the hair for 0 to 10 minutes as outlined by Bentley. Adding the forementioned step to the method of conditioning hair as claimed by instant claim 40 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
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 31-37 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 12-15, 18, 22, 24, 27, and 30 of copending Application No. 15/941,965 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
15/941,965 claims a method of treating hair comprising: (B) conditioning the hair with a conditioner comprising: (a) from 0.5-5 wt.% of at least one amino acid or amino sulfonic acid, and/or a salt thereof;(b) from 0.5-5 wt.% of at least one non-polymeric mono, di, or tricarboxylic acid, and/or a salt thereof;(c) at least one cationic conditioning surfactant; and(d) water (claim 10; according to the claim limitations of the instant claims 31 and 34-36). Furthermore, claim 10 of 15/941,965 claims the hair is rinsed after the conditioner of (B) is applied to the hair (according to the claim limitations of the instant claim 31). 15/941,965 claims the at least one amino acid or sulfonic acid and/or salt thereof of the conditioner of (B) is chosen from aspartic acid, cysteine, glycine, lysine, methionine, proline, tyrosine, phenylalanine, carnitine, taurine, betaine, a salt thereof, and a mixture of two or more thereof (claim 12; according to the claim limitations of the instant claims 32 and 39). Furthermore, claim 13 of 15/941,965 claims the at least one amino acid or sulfonic acid, and/or a salt thereof in the conditioner of (B), is taurine, and/or a salt thereof (according to the claim limitations of the instant claims 32 and 39). Claim 14 of 15/941,965 claims the at least one non- polymeric mono, di, or tricarboxylic acid, and/or a salt thereof in the conditioner of (B) is chosen from maleic acid, citric acid, isocitric acid, aconitic acid, propane-1,2,3-tricarboxylic acid, trimesic acid, salts thereof, and mixtures of two or more thereof (according to the claim limitations of the instant claims 31, 33, and 39). Claim 15 of 15/941,965 claims he non-polymeric mono, di, or tricarboxylic acid, and/or a salt in the conditioner of (B) is chosen from citric acid, oxalic acid, malonic acid, malic acid, glutaric acid, citraconic acid, succinic acid, adipic acid, tartaric acid, fumaric acid, maleic acid, sebacic acid, azelaic acid, dodecanedioic acid, phthalic acid, isophthalic acid, terephthalic acid, 2,6- naphthalene dicarboxylic acid, salts thereof, or mixtures of two or more thereof (according to the claim limitations of the instant claims 31, 33, and 39). Claim 18 of 15/941,965 claims a method for treating hair comprising (B) conditioning the hair with a conditioner comprising:- from 0.5-3 wt.% of taurine, and/or a salt thereof;- from 0.5-5 wt.% of citric acid, and/or a salt thereof;- at least one cationic conditioning surfactant; and greater than 50 wt.% water (according to the claim limitations of the instant claims 31-35 and 39). Claim 22 of 15/941,965 claims the conditioner of (B) comprises taurine or a salt thereof in an amount ranging from about 1 wt.% to about 3 wt.%, relative to the total weight of the conditioner composition (according to the claim limitations of the instant claims 31-32, 34, and 39). Claims 24 and 27 of 15/941,965 claims the conditioner of (B) further comprise at least one additional component chosen from cationic polymers, silicones, or fatty compounds (according to the claim limitations of the instant claim 37). Claim 30 of 15/941,965 claims the (B) conditioning the hair with a rinse-off conditioner comprising:(a) from 0.5-3 wt.% of taurine and/or a salt thereof;(b) from 0.5-3 wt.% of one non-polymeric mono, di, or tricarboxylic acid, and/or a salt thereof;(c) at least one cationic conditioning surfactant; and(d) water; and conditioning the hair with the conditioner of (B), and wherein the hair is rinsed after the conditioner of (B) is applied to the hair (according to the claim limitations of the instant claims 31-32, 34-36, and 39). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./Examiner, Art Unit 1611