DETAILED ACTION
Status of Claims
The amendments, and arguments, filed July 08, 2025, are acknowledged and have been fully considered. Claims 18-26 and 28-34 are pending and currently under consideration. Claims 18-26 and 28-33 have been amended; new claim 34 has been added; and claim 27 has been cancelled. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Final
Modified Claim Rejections
The rejection of claims 18-33 under 35 U.S.C. § 103 over MABILLE (US 2014/0308227 A1) A1, in view of JAGUAR C-162 (Jaguar C-162 Product Data Sheet E 90002010 for Hydroxypropyl Guar Hydroxypropyl Trimonium Chloride, Rhodia (September 2011); hereinafter, “Jaguar C-162”) (at par. 3-12 of the 01/08/2025 Office action), is maintained in modified form, in light of applicant’s 07/08/2025 amendments, which cancel claim 27, and add new claim 34.
New Claim Rejections – 35 U.S.C. § 112 – Indefiniteness – Necessitated by Amendments
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.
Claims 18-26 and 28-34 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 pre-AIA , that applicant regards as the invention.
Claim 18 is drawn to:
18. ([...]) A personal care composition comprising at least one cationic polygalactomannan having non-ionic hydroxyalkyl substituents and having a Brookfield RVT viscosity at 25°C and 20 rpm of greater than 700 mPa.s, at a concentration of 1 pbw in water.
wherein the recitation, “having a Brookfield RVT viscosity at 25°C and 20 rpm of greater than 700 mPa.s, at a concentration of 1 pbw in water,” is indefinite because it is unclear whether the viscosity range at a particular concentration refers to the “at least one cationic polygalactomannan having non-ionic hydroxyalkyl substituents,” or the open composition thereof that is open to further unrecited components. In this regard, it is noted that the Board has held: “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. §112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (expanded panel). Subsequent claims 19-26 and 28-34 depend on claim 1, and are thus, indefinite as well.
Further clarification is required.
Modified Claim Rejections – 35 U.S.C. § 103 – Necessitated by Amendments
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. § 103(a) 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 C.F.R. § 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.
Claims 18-26 and 28-34 are rejected under 35 U.S.C. § 103 as being unpatentable over MABILLE (US 2014/0308227 A1, Publ. Oct. 16, 2014; hereinafter, “Mabille”; of record), in view of JAGUAR C-162 (Jaguar C-162 Product Data Sheet E 90002010 for Hydroxypropyl Guar Hydroxypropyl Trimonium Chloride, Rhodia (September 2011); hereinafter, “Jaguar C-162”).
Mabille is directed to:
PROCESS OF TREATING DAMAGED HAIR
ABSTRACT
The current invention relates to a process for hair treatment comprising the step of applying onto hair composition comprising a cationic polymer and an oil, wherein the hair comprises damaged hair and optionally virgin hair, and the cationic polymer is a double modified cationic guar comprising cationic modifying groups, preferably comprising a group of formula –N+Me3, and non ionic modifying groups being C3-C22 alkyl or hydroxyalkyl groups.
Mabille, title & abstract. In this regard, Mabille teaches an exemplary shampoo composition containing 0.3% of “Hydroxypropyl Guar Hydroxypropyltrimonium Chloride” or “Jaguar ® C162 Rhodia”:
Example 1
Compositions
[0181] Shampoo compositions detailed on Table 1 are prepared (the amounts are the amounts in wt% "as is" as opposed to amounts as active matter).
[0182] Examples 1.2 and 1.3 are comparative examples.
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(Mabille, par. [0181]-[0182], Ex. 1.1 & Table 1).
Regarding independent claim 18 and the requirements:
18. ([...]) A personal care composition comprising at least one cationic polygalactomannan having non-ionic hydroxyalkyl substituents and having a Brookfield RVT viscosity at 25°C and 20 rpm of greater than 700 mPa.s, at a concentration of 1 pbw in water.
Mabille clearly teaches an exemplary shampoo composition (Mabille, par. [0181]-[0182], Ex. 1.1), whereby it is noted that “Hydroxypropyl Guar Hydroxypropyltrimonium Chloride” or “Jaguar ® C162 Rhodia” is
“at least one cationic polygalactomannan having non-ionic hydroxyalkyl substituents and the cationic polygalactomannan having a Brookfield RVT viscosity at 25°C and 20 rpm of greater than 700 mPa.s, at a concentration of 1 pbw in water” of claim 18, and
the “cationic polygalactomannan having non-ionic hydroxyalkyl substituents” of claims 19-26:
19. ([...]) The personal care composition according to claim 18, wherein the Brookfield RVT viscosity at 25°C and 20 rpm is between 700 and 1,200 mPa.s, at a concentration of 1 pbw in water.
20. ([...]) The personal care composition according to claim 18, wherein the Brookfield RVT viscosity at 25°C and 20 rpm is between 700 and 950 mPa.s, at a concentration of 1 pbw in water.
21. ([...]) The personal care composition according to claim 18, wherein the Brookfield RVT viscosity at 25°C and 20 rpm is between 750 and 950 mPa.s, at a concentration of 1 pbw in water.
22. ([...]) The personal care composition according to claim 18, wherein the Brookfield RVT viscosity at 25°C and 20 rpm is between 750 and 900 mPa.s, at a concentration of 1 pbw in water.
23. ([...]) The personal care composition according to claim 18, wherein the Brookfield RVT viscosity at 25°C and 20 rpm is between 750 and 850 mPa.s, at a concentration of 1 pbw in water.
24. ([...]) The personal care composition according to claim 18, wherein said polygalactomannan is guar.
25. ([...]) The personal care composition according to claim 18, wherein the cationic polygalactomannan is a cationic guar having hydroxypropyl substituents.
26. ([...]) The personal care composition according to claim 18, wherein the cationic polygalactomannan is a hydroxypropyl guar hydroxypropyltrimonium chloride.
To the extent that Mabile DOES NOT EXPRESSLY TEACH the viscosity requirements of claims 18-26, Jaguar C-162 discloses hydroxypropyl guar hydroxypropyl trimonium chloride with a “Viscosity at 25° C (mPa.s) (1% sol., Brookfield RVT, 20 rpm, spindle 2, after equilibaration at 25°C for 1h)” of “300 -1000.” Jaguar C-162, p. 1, Table. In this regard, it is noted that MPEP § 2144.05 (I), states, “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).”
Thus, the prior art renders claims 18-26 obvious.
Regarding claim 28 and the requirements:
28. ([...]) The personal care composition according to claim 18, wherein the personal care composition is a hair care composition.
Mabille teaches an exemplary shampoo composition containing 0.3% of “Hydroxypropyl Guar Hydroxypropyltrimonium Chloride” or “Jaguar ® C162 Rhodia” (Mabille, par. [0181]-[0182], Ex. 1.1 & Table 1), which is a “hair care composition” of claim 28.
Thus, the prior art renders claim 28 obvious.
Regarding claims 29-30, and the requirements:
29. ([...]) The personal care composition according to claim 18, wherein the personal care composition is a leave-on composition.
30. ([...]) The personal care composition according to claim 18, wherein the personal care composition is a rinse-off composition.
Mabille teaches “conditioners compositions” containing “surfactant” that may be “rinsed out or not rinsed out”:
[0081] For conditioners compositions, rinsed out or not rinsed out, the surfactant is preferably absent or present in an amount of lower than 5% by weight, and it might preferably be a cationic surfactant.
(Mabille, par. [0081]), which encompasses a “leave-on composition” of claim 29, and a “rinse-off composition” of claim 30. However, to the extent that Mabille DOES NOT EXPRESSLY TEACH a specific exemplary embodiment thereof, either “leave-on composition” or “rinse-off composition,” such a composition would be obvious per Mabille’s broader disclosure. In this regard, it is noted that a reference is analyzed using its broadest teachings. MPEP § 2123 [R-5] states: “[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. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to rearrange Mabille’s exemplary shampoo composition containing 0.3% of “Hydroxypropyl Guar Hydroxypropyltrimonium Chloride” (Mabille, par. [0181]-[0182], Ex. 1.1) as “conditioners compositions” containing “surfactant” that may be “rinsed out or not rinsed out” (Mabille, par. [0081]).
Thus, Mabille renders claims 29-30 obvious.
Regarding claims 31-33 and the requirements:
31. ([...]) The personal care composition according to claim 18 comprising from 0.01 to 10 pbw of the cationic polygalactomannan having non-ionic hydroxyalkyl substituents relative to the total weight of the composition.
32. ([...]) The personal care composition according to claim 18 comprising from 0.05 to 5 pbw of the cationic polygalactomannan having non-ionic hydroxyalkyl substituents relative to the total weight of the composition.
33. ([...]) The personal care composition according to claim 18 comprising from 0.1 to 2 pbw of the cationic polygalactomannan having non-ionic hydroxyalkyl substituents relative to the total weight of the composition.
Mabille teaches an exemplary shampoo composition containing 0.3% of “Hydroxypropyl Guar Hydroxypropyltrimonium Chloride” (Mabille, par. [0181]-[0182], Ex. 1.1 & Table 1). See MPEP § 2144.05 (I) regarding the obviousness of prior art overlapping claimed numerical ranges.
Thus, the prior art renders claims 31-33 obvious.
Regarding claim 34, it is noted that the requirements
34. (New) The personal care composition according to claim 18, wherein the personal care composition is a hair care composition to mend split ends.
are recitations of intended use. In this regard, it is noted that a recitation of intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claim. See MPEP § 2103 (I)(C). Since Mabille teaches a composition meeting the structural requirements of claim 18, as dicussed above, it reasonably follows that Mabille’s exemplary shampoo composition comprising “Hydroxypropyl Guar Hydroxypropyltrimonium Chloride” or “Jaguar ® C162 Rhodia” (Mabille, par. [0181]-[0182], Ex. 1.1) would be suitable for mending split ends.
Thus, the prior art renders claim 34 obvious.
Response to Arguments
Applicants’ arguments filed on July 08, 2025 have been fully considered (hereinafter, “Remarks”), but they are not persuasive.
Applicant argues:
To begin, as noted in Applicant's last response, the examples in Applicant’s specification demonstrate that compositions comprising at least one cationic polygalactomannan having non-ionic hydroxyalkyl substituents and the claimed viscosity provide unexpectedly better performance. See, e.g., Applicant's specification, paras. [0069] - [0072]. In particular, as discussed in Applicant's specification, "[i]t has been found unexpectedly that cationic polygalactomannan containing non-ionic hydroxyalkyl substituents as described previously, and having a specific viscosity, make it possible to achieve substantial split ends mending." Id. As also discussed in Applicant's specification, “it has been found that a hair care composition including a cationic polygalactomannan containing non-ionic hydroxyalkyl substituents and having a Brookfield RVT viscosity at 25° C. and 20 rpm greater than 700 mPa·s, at a concentration of 1 pbw in water ... makes it possible to achieve improved split ends mending, relative to an otherwise identical hair care composition lacking a cationic polygalactomannan containing non-ionic hydroxyalkyl substituents.” Id. In short, the cationic polygalactomannans having the claimed viscosity provide unexpectedly better properties versus other polygalactomannans having different viscosities.[Remarks, p. 6, par. 1, cont. on p. 7]
This is further supported by the examples and comparative examples in Applicant's specification. In particular, Example 1 includes an embodiment (i.e., "Formulation of the Invention") and a comparative embodiment (i.e., "Comparative Formulation"). As shown in para. [0100], the difference between the working example and the comparative example is with respect to the viscosity of the cationic polygalactomannan. That is, the working example has a viscosity between 750 and 850 mPa.s, while the comparative example has a viscosity lower than 700 mPa.s. And as shown in paras. [0116]-[0117], the resulting formulation that includes the cationic polygalactomannans having a viscosity between 750 and 850 mPa.s provided significantly better split end mending. As summarized in para. [0122], "[t]hese examples illustrate that the specific cationic polygalactomannan containing non-ionic hydroxyalkyl substituents according to the invention, namely cationic polygalactomannan containing non-ionic hydroxyalkyl substituents having a Brookfield RVT viscosity at 25° C. and 20 rpm comprised between 700 and 1,200 mPa·s ... , at a concentration of 1 pbw in water, is highly effective in mending split ends."[Remarks, p. 7, par. 1]
Example 2 also supports that the working example performs significantly better than a benchmark formulation (i.e., TRESemme Split Remedy Split Ends). See paras. [0123] - [0129]. Examples were also provided for curl retention and durability of the hair repair effect. See paras. [0130] - [0170]. Accordingly, as explained in Applicant's specification and demonstrated in the examples provided, compositions comprising the claimed cationic polygalactomannan provide unexpectedly better performance.[Remarks, p. 7, par. 2]
Remarks, p. 6, par. 1, cont. on p. 7 to p. 7, par. 2.
In response: The instant claims are not commensurate in scope with the alleged unexpected results. According to MPEP § 716.02, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In this regard, the inventive formulation in Ex. 1 of the instant published application, US 2024/0122839 A1, at par. [0100] describe:
(i) a particular amount of the instant “cationic polygalactomannan,” i.e., 0.5 wt.%, and a “Brookfield RVT viscosity at 25° C. and 20 rpm comprised between 750 and 850 mPa.s, at a concentration of 1 pbw in water,” (whereas independent claim 1 recites no amount, and apparently a “Brookfield RVT viscosity at 25°C and 20 rpm of greater than 700 mPa.s, at a concentration of 1 pbw in water”), and
(ii) particular additional constituents in specific amounts, namely, 10 wt.% water, 1 wt.% glycerin, 0.5 Wt.% panthenol, less than 0.5 wt.% preservative, and q.s. water;
and similarly for Ex. 2 at par. [0124] of the instant published application. Independent claim 18 should be amended to include (i) and (ii) in order for the instant claims to be commensurate in scope with the results in the specification.
Applicant also argues:
Turning now to the instant rejection, the Examiner has maintained Mabille et al. as the main reference, but now also cites the Jaguar C-162 document as a secondary reference. 3 In particular, the Examiner - having acknowledged that Mabille et al. does not teach the currently claimed viscosities - has now turned to the Jaguar C-162 document as supposedly remedying the deficiencies of Mabille et al. See, e.g., the Office Action, p. 5. Yet, this is not the case.[Remarks, p. 8, par. 1]
As outlined above and in Applicant's specification, cationic polygalactomannans having the claimed viscosity provide unexpectedly better properties versus other polygalactomannans having different viscosities. This is supported by the examples in Applicant's specification, as discussed above. Nothing in Mabille et al. discloses or teaches that personal care compositions having the currently claimed cationic polygalactomannans - with the claimed viscosities - provide unexpectedly better properties, especially for mending split ends, versus other polygalactomannans having different viscosities.[Remarks, p. 8, par. 2]
The Jaguar C-162 document does not remedy this lack of teaching or disclosure in Mabille et al. In fact, the Jaguar C-162 document discloses that the viscosity can be as low as 300 mPa.s. However, as explained above and as shown in Applicant's specification, when the viscosity of the cationic polygalactomannan having non-ionic hydroxyalkyl substituents is below 700 mPa.s, the performance properties were significantly worse - and especially worse with respect to split end mending. Notably, the viscosity range disclosed in the Jaguar C-162 document also includes the viscosity of the Comparative Formulation in Applicant's specification. That is, the Jaguar C-162 document does not disclose nor distinguish between the viscosity currently claimed versus those that are not claimed and, in fact, are demonstrated to show worse properties. In short, the Jaguar C-162 document does not disclose or teach the claimed cationic polygalactomannans having the claimed viscosities, nor would it lead one of ordinary skill in the art to arrive at the claimed compositions having the claimed cationic polygalactomannans with the claimed viscosities. This is even more apparent when considering that the currently claimed compositions demonstrate superior split end mending properties. Simply put, the Jaguar C-162 document would not lead one of ordinary skill in the art to arrive at the claimed compositions having the claimed cationic polygalactomannans with the claimed viscosities alone or in combination with Mabille et al.[Remarks, p. 8, par. 3, cont. on p. 9]
As for the Examiner's reliance on In re Wertheim and MPEP 2144.05 (I) in the Office Action, see, e.g., p. 5, Applicant respectfully traverses the Examiner's argument and conclusion based on the same. To begin, the recited passage from the MPEP, which cites In re Wertheim, relates to a prima facie case of obviousness - not an absolute finding of obviousness. In fact, MPEP 2144.05 (Ill) teaches how a prima facie case of obviousness can be rebutted. Notably, the manual also teaches the even if a prima facie case of obviousness is established, examiners need to consider all rebuttal arguments and evidence presented by applicants. See, e.g., MPEP 2145. This includes evidence of unexpected properties and unexpected results. Id. And such evidence and arguments can be present in the specification. Id. So, in short, even if a prima facie case of obviousness is established, nevertheless, it can be rebutted.[Remarks, p. 9, par. 1]
Putting this in context of the current rejection, to the extent that the Examiner's position is that the Jaguar C-162 document may disclose a viscosity range that, at best, may potentially overlap with the currently claimed viscosity range, nevertheless as outlined above, any such prima facie obviousness argument by the Examiner can be rebutted. Furthermore, for all the reasons outlined above, including those outlined in Applicant's prior response and based on Applicant's specification, Applicant respectfully believes that any such prima facie showing has been rebutted. In particular, nothing in Mabille et al. nor in the Jaguar C-162 document would lead one of ordinary skill in the art to the claimed compositions having the claimed cationic polygalactomannans with the claimed viscosities. This is especially so since, as outlined above, the claimed compositions demonstrate superior split end mending properties. Rather, and to the contrary, the Jaguar C-162 document discloses viscosity ranges that also overlap with the Comparative Formulation in Applicant's specification.[Remarks, p. 10, par. 1]
Remarks, p. 8, par. 1 to p. 10, par. 1.
In response: Mabille clearly teaches an exemplary shampoo composition (Mabille, par. [0181]-[0182], Ex. 1.1), whereby it is noted that “Hydroxypropyl Guar Hydroxypropyltrimonium Chloride” or “Jaguar ® C162 Rhodia” is “at least one cationic polygalactomannan having non-ionic hydroxyalkyl substituents and the cationic polygalactomannan having a Brookfield RVT viscosity at 25°C and 20 rpm of greater than 700 mPa.s, at a concentration of 1 pbw in water” of claim 18. To the extent that Mabile DOES NOT EXPRESSLY TEACH the viscosity requirements of claims 18-26, Jaguar C-162 discloses hydroxypropyl guar hydroxypropyl trimonium chloride with a “Viscosity at 25° C (mPa.s) (1% sol., Brookfield RVT, 20 rpm, spindle 2, after equilibaration at 25°C for 1h)” of “300 -1000.” Jaguar C-162, p. 1, Table. In this regard, it is noted that MPEP § 2144.05 (I), states, “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).” Since the claims are not commensurate in scope to the results in the instant specification, the obviousness rejection of record is maintained.
Summary/Conclusion
Claims 18-26 and 28-34 are rejected. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611