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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 13-20 and 24-30 in the reply filed on November 14, 2025 is acknowledged. As for the species election, applicant has elected guar hydroxypropyltrimonium chloride. Claims 13-20, 24 and 27-30 read on the elected species and have been examined on the merits.
The traversal is on the ground(s) that no specific issues that would impose serious burden have been indicated by the Office. In response, the listed explanation for search burden are not “options” but applicable reasons. In this case, any biologically acceptable composition comprising the at least one non-cellulosic polysaccharide derivative of the present claims in a carrier would meet the limitation of the product claims in Group II, and prior art consideration of such product would require searching different art and classes, which would not be required in consideration of the method claims. Furthermore, there may be at least a subject matter eligibility issue under 35 USC 101 in examination of the product claims, as the non-cellulosic polysaccharide derivative of the product claims may read on naturally occurring polymers; such issues may only arise in the method claims.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 13-20, 24, 27-30 are rejected under 35 U.S.C. 103 as obvious over Schroeder et al. (US 20160279049 A1, published on September 29, 2016) (“Schroeder” hereunder) in view of Pabalan et al. (US 20150183979 A1, published on July 2, 2015) (“Pabalan” hereunder). Cottrell et al. (US 20010051143 A1, published December 13, 2001) (“Cottrell” hereunder).
Schroeder teaches a method of reducing hair breakage, the method comprising washing fragile hair that is susceptible to split ends with a shampoo comprising guar hydroxypropyltrimonium chloride, having an average molecular weight between 100K-2,000K daltons, preferably between 200k-1,600k daltons, and the cationic charge density of at least 0.4 mEq/g and more preferably at least 0.6 mEq/g.
Schroeder fails to specifically disclose guar hydroxypropyltrimonium chloride having cationic degree of substitution DScat of at least 0.15.
Pabalan teaches that guar hydroxypropyltrimonium having the cationic charge density of at least 0.6 mEq/g would have the degree of substitution greater than 0.1-0.13 or 0.17, 0.25, etc. See Table 1. The reference teaches that it is well known that DScat also represents the cationic charge density and increases with the increase of the charge density. See Pabalan,
Cottrell discloses a method of treating damaged keratin substances comprising treating the substances with a composition comprising a cationic guar gum which contains a cationic group selected from the group consisting of amino, ammonium imino, sulfonium or phosphonium groups and the cationic content is represented by a degree of substitution (DS) of from about 0.25 to 1.0, and preferably from about 0.25 to 0.6. See abstract; paragraph [0008]. The term “degree of substitution” or DS indicates the average number of sites per sugar unit (galactose or mannose) on which there are substituent units. See [0009]. The reference teaches that such high DS polygalactomannan derivatives are useful in cosmetic composition for treatment of hair, skin and nails where they provide good compatibility and substantivity without excessive build up, good clarity and good wet comb performance on hair. See [0015]. Example II particularly discloses a transparent cosmetic shampoo containing hydroxypropyl trimethyl ammonium cationic group (DS of 0.32). The sample shampoo was applied to a damaged blonde hair tress and the resistance in force to pull the comb through the hair was measured. See [0033]. Regarding claim 20, the cosmetic shampoo composition contains 0.50 pbw of hydroxypropyl trimethyl ammonium.
Given the teachings of the Schroeder that guar hydroxypropyltrimonium chloride having an average molecular weight between 200K-1600K daltons and the cationic charge density of at least 0.6 mEq/g are useful in treating hair breakage and split ends, one of ordinary skill in the art before the effective filing date of the present application would have been obviously motivated to look to prior art such as Cottrell for specific guar derivatives that would be useful for such use. Since Cottrell teaches that guar hydroxypropyltrimonium chloride having high DS, specifically 0.25-1.0, are useful in treating damaged hair and provide good compatibility and substantivity without excessive build up, the skilled artisan would have been motivated to use the guar derivative having high DS to protect the hair with split-ends which is prone to breakage. Since Pabalan teaches that guar hydroxypropyltrimonium having the cationic charge density of at least 0.6 mEq/g would include those with degree of substitution of 0.25, etc, the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and repairing split ended hair by treating the hair with the guar derivatives having such high DS.
Regarding claims 19, 29 and 30, Schroeder teaches and suggests using guar hydroxypropyltrimonium chloride having an average molecular weight between 200K-1600K daltons to treat the hair prone to break and cause split-ends.
Regarding claims 27 and 28, the reference teaches that guar hydroxypropyltrimonium chloride with DS value of 0.32 and 0.46 produced good clarity, wet comb improvement. See Example III.
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 13-20, 24 and 27-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11779533 B2.
The present claim 1 is directed to a method for mending split ends of hair comprising contacting the hair with split ends with a composition comprising at least one non-cellulosic polysaccharide derivative comprising at least one cationic group, wherein said non-cellulosic polysaccharide derivative has a cationic degree of substitution DScat greater than 0.15.
The reference claim 1 is directed to a method for mending split ends of hair comprising contacting the hair with split ends with a composition consisting of:
from 0.01 to 2 parts by weight of guar derivative selected form the group consisting of Guar Hydroxypropyl trimonium chloride having a molecular weight of about 2,000,000 g/mol and having cationic degree of substitution of about 0.2 and Guar Hydroxypropyl trimonium chloride having a molecular weight below 1,000,000 g/mol and having a cationic degree of substitution between 0.2 and 0.3; (2) ethanol; (3) glycerin; (4) panthenol; (5) preservative and (6) water.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a method for mending split ends of hair comprising contacting the hair with split ends with a composition containing Guar Hydroxypropyl trimonium chloride which has cationic degree of substitution of greater than 0.15 and overlapping limitations.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mabille (US 20140308227 A1, published on October 16, 2014) teaches a method of repairing damaged hair, the method comprising applying to the hair a composition comprising a double modified guar (hydroxypropyl guar hydroxypropyltrimonium chloride) having the degree of substitution by group a), the cationic hydroxypropyltrimonium group, is in the range of 0.01 – 0.6, preferably between 0.05 -0.2. See [0027]. Mabille defines the term “damaged hair” to include hair with ‘double ends’ which is split ends and hair with rough scales and prone to chip and break caused by chemical treatments, environment factors and mechanical pressure. See [0165-0172]. Note that claims 13-20, 24 and 27-30 would have been rejected under 35 U.S.C. 103 over Mabille had there been no species election requirement.
Tsivkin (US 6258348 B1) teaches a method of mending split ends of hair comprising contacting the hair with split ends with a composition comprising guar hydroxypropyltrimonium in the amount of about 0.05 – about 5 %.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617