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 .
The response and claim amendment filed on April 30, 2026 have been received and fully considered.
The previous claim rejection made under 35 U.S.C 103 over Schroeder et al. (US 20160279049 A1) in view of Pabalan et al. (US 20150183979 A1) and Cottrell et al. (US 20010051143 A1), as indicated in the Office action dated December 30, 2025, has been modified to address the amended claim 1 and the new claim, claim 31.
The previous obviousness-type double patenting rejection made over the claims of the U.S. Pat. No. 11779533 B2, has been maintained and modified to address the new claim, claim 31.
The Request under 37 CFR 1.46 (c)(1) filed on May 1, 2026 has been received, and the name of the applicant has been corrected to updated to Specialty Operations France.
New: Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 27 and 28 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 27 and 28 depend on claim 13, which limits the upper bound of the cationic degree of substitution of DScat to be equal to 0.30. Claims 27 and 28 improperly extend such limit to “about 0.30”, which include values greater than 0.30.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 and 27-31 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) and Cottrell et al. (US 20010051143 A1, published December 13, 2001) (“Cottrell” hereunder).
The amended claim 13 is directed to a method for mending split ends of hair comprising: contacting the hair with split ends with a composition comprising a split end mending agent consisting essentially of 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 and less than or equal to 0.30.
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 [0009]. 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 the new limitation “a split end mending agent consisting essentially of”, Cottrell plainly discloses 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.
Regarding the new limitation to limit the cationic degree of substitution DScat to greater than 0.15 and less than or equal to 0.30, it is well settled in patent law that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See 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). In this case, since the disclose range of 0.25-1.0 overlaps with the claimed range of 0.15-0.3, the presently claimed is prima facie obvious.
With respect to the disclosed DScat value of 0.32 in Example II, it is also well settled in patent law that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In this case, since the disclosed value of 0.32 is so close to the upper limit of the claimed limitation, 0.3, the two compositions are expected to have the same or similar hair damage repair properties.
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. As indicated above, a prima facie case of obviousness exists when claimed ranges "overlap or lie inside ranges disclosed by the prior art”. In this case, since the disclose range of 0.32-0.46 overlaps with the presently claimed range between “about 0.17 and about 0.30”, the two compositions are expected to have the same or similar hair damage repair properties.
Regarding claim 31, Although Schroeder does not specifically disclose the claimed range of the charge density of the non-cellulosic polysaccharide derivative useful in treating hair breakage, the reference does teach and suggest that the guar derivatives having cationic charge density of at least 0.6 mEq/g is useful in treating hair breakage. The presently claimed range is prima facie obvious as it overlaps with the disclosed range of at least 0.6 mEq/g.
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 27-31 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.
Regarding claim 31, the guar derivatives of the reference claim are defined to have a charge density from about 0.95 to about 2.00 mEq/g. See ‘533, col. 6, lines 9-13.
Response to Arguments
Applicant's arguments filed on April 30, 2026 have been fully considered but they are not persuasive.
Applicant argues that one of ordinary skill in the art would have had no motivation to look to the cited references to arrive at the present invention. The examiner respectfully points out that it is well settled in patent law that the expectation of some advantage is the strongest rationale for combining references. See MPEP 2144, II. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.") In this case, as prior art references provide teachings and guidance that hair guar hydroxypropyltrimonium chloride having specific intrinsic properties lead to treatment of damaged hair, combining the teachings of the references to use the guar compound which is most effective as a hair treatment agent would have been prima facie obvious.
Applicant also argues that Pabalan fails to explicitly disclose that cationic substitution increases with increasing charge densities in all cases. However, the reference specifically indicates that the degree of substitution is directly related to the cationic charge density, as it represents the average number of cationic substituent groups attached to each monomeric unit of the polymer. It follows that the increasing the DS will result in a higher charge density, provided the molecular weight of the substituents remain constant. See Pabalan, [0127-0139].
Applicant points to Example 2 of Cottrell which employs guar hydroxypropyltrimonium hydroxide having a DS of 0.26 and shown to have a poor wet comb performance. While Example 2 is not found in the reference, the examiner assumes that applicant meant Example III, Table 1, which disclose sample formulation D comprising guar hydroxypropyltrimonium hydroxide having DS value of 0.26. The examiner respectfully points out that it is well settled in patent law that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." See In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). In this case, the fact that formulation D is described as inferior does not necessarily indicate that using the guar hydroxypropyltrimonium in Sample D in a hair treatment composition is novel, unobvious or surprising, as the composition still provides some improvement in wet comb and maintaining color intensity. Nonetheless, the present claims are rejected over Example II, which contains the cationic guar having DS value of 0.32 (Sample A), for the above reasons as discussed in the rejections made under 35 U.S.C. 103.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: WO 2013011122 A1 teaches the non-cellulosic polysaccharide derivative in a hair treatment composition has a charge density after the acidic methanol extraction from about 1 .0 to about 2 mEq/g, for example from about 1.1 to about 1 .8 mEq/g, and for example from 1.2 to 1.5 mEq/g.
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 GINA JUSTICE whose telephone number is (571)272-8605. The examiner can normally be reached M-F 9:00 AM - 5 PM.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
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