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 3/17/2026.
Election/Restriction
During a telephone conversation with R. James Balls on 9/19/2025 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 Claims 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Mr. Balls affirmed the election in the response filed 3/17/2026.
Response to Arguments
All of Applicant’s arguments filed 3/17/2026 have been fully considered. In view of the claims as newly amended, new rejections are presented. Arguments directed to the claims as amended in view of Lee are moot. As the new reference relied upon below is similar to Lee the examiner will address Applicant comments with respect to Lee and Kim as applied to the rejection below.
103 Rejections
In summary, Applicant remarks the problems of Kim are not pertinent to the problem of Linares since Linares is directed to compositions to condition hair and Kim is directed to a personal cleansing solvent.
This is not persuasive. As discussed below, Linares teaches hair conditioning composition, but also teaches rinse off formulations and teaches these to include shampoo (i.e. cleansing composition) and body washes, thus it would be obvious to add a cleansing component to the hair conditioner.
Double Patenting Rejections
In view of the amendments to the claim requiring 20-85% polyol, the DP rejection over US 18/343397 is withdrawn.
Applicant argues that US’769 requires direct dyes, etc. which is not required by the instant claims and does not comprise a fatty acid as required by the instant claims.
This is not persuasive. With respect the US’769 containing polar fatty compounds, this is not persuasive as the instant claims recite comprising language which permits the inclusion of additional ingredients and US’769 teaches emollients such as propylene glycol fatty acid esters being added, this reads of fatty acids.
New 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.
Claim(s) 1-10 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linares (US 2019/0358136), Sommer (US 2019/0151231) and KR20120136699. Linares and Sommer are newly cited.
Linares teaches hair care compositions (reading on cosmetics) which are substantially anhydrous and optically clear (Abs). The composition can be formulated as shampoos, body washes, etc. indicating they are suitable for skin [0010 and 0041].
Regarding claims 1(b) and 8: Linares teaches the inclusion of cationic surfactant, such as quaternary ammonium compounds like cetrimonium chloride, in amounts 0.005-15% [0035].
Regarding claims 1(c), 1(d) and 9-10: Linares teaches the inclusion of fatty alcohols, these include fatty alcohols, fatty alcohol derivatives, fatty acid derivatives and mixture. Suitable fatty alcohols include cetyl alcohol and suitable fatty acid esters include cetyl palmitate, these can be used in amounts ranging from about 10-40% [0034]. It would have been prima facie obvious to use about 10-40% of a mixture of fatty alcohols including pure fatty alcohols, such as cetyl alcohol, along with the taught fatty acid ester (reading on fatty acid) as mixture are taught to be suitable for use, this results in a weight ratio of fatty alcohols and fatty esters that overlaps with the claimed ranges.
Regarding claims 1(e), 1(f), 7 and 14: Linares teaches the composition to comprise 40-70% of an anhydrous alcohol, these include monoalcohols such as ethanol and polyols including 1,2-propanediol (i.e. propylene glycol with two hydroxyl groups), thus the selection of either is prima facie obvious as they are both taught to be suitable for use. However, Sommer teaches topical compositions (abs) and teaches that ethanol in topical compositions can cause dryness and/or peeling of the skin, particularly in patients with sensitive skin [0330], as such it would have been prima facie obvious to formulate the composition of Linares to be ethanol free and instead use propylene glycol to formulate a composition that is better suitable for a wider variety of subject, including those with sensitive skin.
Regarding claim 1(f): Linares teaches the composition to be substantially anhydrous which means the composition may include up to 5% water, even more preferably 0% [0039]. As discussed above, Linares and Sommers make obvious the use of propylene glycol and the formulation of ethanol-free compositions.
Regarding claims 2-3: Linares teaches the compositions to initially be liquid compositions and teaches that during use water is added to the composition and a thick and rich cream (i.e. an emulsion) is formed via mechanical manipulation, this suggested that the initial liquid formulation is in a non-emulsified form. Linares also teaches the composition to be transparent and optically clear which means that the particles in the composition are reduced to a size where they are not observable via visual means, which reads on solubilized.
Regarding claims 15-16: Linares teaches the inclusion of 0.01-2.5% of vitamins, reading on miscellaneous ingredient.
However, Linares does not teach the composition to comprise the claimed compound of formula I.
Regarding claims 1(a) and 4-6: 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 (wherein R1 and R2 are methyl) [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 Linares with 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 Linares 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 Linares and KR’699 teach cosmetic composition for application to hair and Linares teaches that that the hair conditioner composition can be formulated as shampoos and body cleaners [0010 and 0017] thus it would be obvious to add a cleansing component to the hair conditioner.
Claim(s) 1-10, 11-13, 14-16 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linares (US 2019/0358136), Sommer (US 2019/0151231) and KR20120136699, as applied to claims 1-14 and 14-16 above, and further in view of Lee (US 2020/0206111).
As discussed above, the prior art makes obvious the limitations of claims 1-10 and 14-16 and regarding claim 17, Linares makes obvious a composition comprising the claimed ingredients 17(a), 17(c), 17(e) and 17(f), however, they do not teach the inclusion a non-linear fatty acid as required by instant claims 11-13, 17(d) and 18 and do not teach the cationic surfactant to be an amidoamine as required by 17(b).
Lee discloses a hair care and conditioning composition (reading on cosmetic) which is substantially anhydrous and comprises propylene glycol, cationic surfactant(s) and fatty compound(s). Lee teaches the compositions to be solubilized and non-emulsified (Abs) and transparent [0007].
Regarding claims 1(d), 11-13, 17(d) and 18: Lee teaches the inclusion of one or more thickening agents. Suitable agents include C8-24 hydroxyl substituted aliphatic acid and C8-24 conjugated aliphatic acid such as linoleic acid, oleic acid, etc. [0077], these can be used in amounts ranging from 0.01-20% [0079] and these are included to increase the viscosity of the composition [0066].
Regarding claim 17(b): Lee teaches that suitable cationic surfactants preferably quaternary ammonium compounds, such as cetrimonium chloride, and amidoamines, such as arachidamidoethyidimethylamine, stearamidopropyldimethylamine, etc.
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 teachings of the above reference with those of Lee. One of skill in the art would have been motivated to add .001-20% of a thickening agent such as linoleic acid as these are taught to be used to increase the viscosity of the composition. One of skill in the art would have also been motivated to use as a cationic surfactant an amidoamine such as those taught by Lee in the composition of Linares as Lee teaches cationic quaternary ammonium compound such as cetrimonium chloride to be functionally equivalent to amidoames such as stearamidopropyldimethylamine and Linares teaches that cationic surfactants such as cetrimonium chloride are suitable for use and its prima facie obvious to substitute one art recognized surfactant for another. One of skill in the art would have a reasonable expectation of success as Linares teaches that conventional cosmetic ingredients can be added and Lee teaches that thickening agents are known to be used in hair conditioning compositions.
Maintained 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 1-10 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18456047 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose cosmetic compositions which are transparent, solubilized and non-emulsified comprising fatty acids, isopropylidene glycol, cationic surfactants, fatty alcohols, polyols, water, monoalcohols and miscellaneous ingredients which are the same or overlapping. All these ingredients are present in overlapping amounts.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of US Patent 12,268,769.
Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose cosmetic compositions which are transparent, solubilized and non-emulsified comprising fatty acids, isopropylidene glycol, cationic surfactants, fatty alcohols, polyols, water, monoalcohols and miscellaneous ingredients which are the same or overlapping. All these ingredients are present in overlapping amounts.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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