DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ response to the Requirement for Restriction, filed 10 November 2025, in the matter of Application N° 18/484,074. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 4-6 have been canceled. No claims have been added.
Claim 1 has been amended to narrow the list of malodor reduction materials in part (a) of the composition. Part (b) of the composition has been amended to recite selenium sulfide instead of “sulfur or mixtures thereof”.
No new matter has been added.
Applicants’ election of Group I (claims 1-3 and 7-13), with traverse, is acknowledged. Also acknowledged are Applicants’ species elections for the malodor reduction material, scalp active material, and end-use product. The species elections are also made with traverse.
The Examiner, having reconsidered the previous action, as well as having further considered the parent application, withdraws the restriction and species elections.
Thus, claims 1-3 and 7-15 are presented and represent all claims currently under consideration.
Information Disclosure Statement
Five new Information Disclosure Statements (IDS) filed 2 November 2023, 6 December 2023, 9 February 2024, 19 April 2024, and 5 July 2024 are acknowledged and have been considered.
Claim Objections
Claim 14 is objected to because the last line of the claim refers to “Claims 1”. The reference should be to “claim 1,” in the singular. Appropriate correction is required.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
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.
Claims 2, 3, and 7-13 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.
Each of claims 2, 3, and 7-13 begin with “A” instead of “The”. As such, there is insufficient antecedent basis for each of the dependent claims.
Claim 3 is additionally rendered indefinite since it is unclear what units of vapor pressure are being claimed.
The limitations of claim 15 are rendered indefinite in the second to last line of the claim. Therein, the claim states in the final two lines: “…provide said hair with a level of malodor reduction material at least 0.0001 mg of malodor reduction material.” [emphasis added to reflect the language at issue] The claim appears to be missing language (e.g., comprising). Herein, for the purposes of consideration on the merits, the Examiner will broadly and reasonably interpret the missing term to be ‘comprising’.
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 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 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.
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. Applicants are advised of the obligation under 37 CFR 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 1-3 and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hertenstein et al. (USPN 10,610,473 B2; IDS reference) in view of Woo et al. (US Pre-Grant Publication Nº 2011/0152804 A1).
As amended, the limitations of instant claim 1 are directed to a hair care composition comprising: (a) about 0.1-2% of a perfume with one or more malodor reduction materials having a wt% from about 0.0001% to about 2 wt% of one or more malodor reduction materials selected from the group consisting of decanal, undec-10-enal, 6-cyclopentyldiene-hexanal, 2,6,10-trimethylundec-9-enal, 3-(3,3-dimethyl-12-dihydroinden-5-yl)propanal, 4-dodecenal, dec-4-enal, and mixtures thereof;
(b) about 0.01-10% of a scalp active material that is selenium sulfide; and
(c) from about 0.1-40% of a surfactant.
Hertenstein discloses a hair care composition comprising, based on total compositional weight:
(a) a sum total of from about 0.0001-2% of a malodor reduction material;
(b) from about 0.01-10% of a scalp active material wherein the scalp active material is selenium sulfide; and
(c) from about 0.1-40% of an anionic surfactant (see e.g., claim 1).
The practiced compositions additionally disclose that the sum total of the malodor reduction material will range more narrowly (e.g., 0.01% to about 0.5%) (see e.g., claims 2 and 3), thereby overlapping with and reading on instant claims 9 and 10.
Claim 4 discloses that the composition will comprise one or more malodor reduction materials.
Claims 5 and 6 disclose the method recited by instant claims 14 and 15.
The disclosed “hair care composition” is further defined by the reference as embodying shampoos, conditioners, and leave-on treatments (see e.g., col. 2, lines 10-11), thereby reading on instant claims 11-13.
The limitations of claim 7 recite the property that the composition possesses a cumulative sulfur odor ranging from 0-2. Tables 4 and 5 (see col. 22-23) of the reference disclose evaluation of selenium sulfide-based shampoo compositions that are rated on a scale of 0-3, but show results ranging from 0-2, thereby meeting the limitations of the claim.
The limitations recited by claim 2 states that the composition will possess the following properties: (i) a malodor reduction value or “MORV” of greater than three (>3) and calculated partition coefficient (C log P) value of greater than three (>3).
Instant claim 3 repeats these limitations and adds that the composition also has a vapor pressure value of greater than 0.005 (VP > 0.005).
Hertenstein again discloses these exact values and ranges for these exact parameters, which are intended to encompass the practiced compositions (see col. 31, line 10 to col. 32, line 12).
The sole deficiency present in the teachings of Hertenstein resides with the disclosed malodor reduction materials. Therein, the species that are disclosed expressly read on those that have been amended out of instant claim 1.
Woo is considered to remedy this deficiency in its disclosure of an absorbent malodor article which comprises a malodor control composition having at least one volatile aldehyde (see e.g., Abstract). Paragraphs [0010] and [0011] further define “malodor” and “neutralization” as cumulatively defining the reduction of unpleasant odors.
Here, the Examiner acknowledges that Woo is deficient with respect to the practiced compositions being directed to articles that are used to mitigate odors through direct application to the body surface (see e.g., ¶[0015]) are not applied as shampoos, conditioners, or leave-on treatments for hair.
Despite this deficiency, the Examiner notes that the volatile aldehydes that are used in the practiced invention are, like those used by Hertenstein, relied upon to for their ability to convey a certain level of malodor mitigation and possess a vapor pressure that is greater than 0.005. Claims 1-4 and 6 disclose that the volatile aldehyde of the malodor control formulation will be selected from such aldehydes as: adoxal (2,6,10-trimethyl-9-undecenal), decyl aldehyde (decanal), trans-4-decenal (dec-4-enal), undecyl aldehyde (undec-10-enal) and mixtures thereof. The vapor pressure of the volatile aldehyde(s) used will range from 0.001-15 torr (0.001-15 mm Hg) (see e.g., claims 2-3).
Furthermore, regarding the recited C log P values of the practiced volatile aldehydes, ¶[0030] categorizes the aldehydes into four groups based on their boiling point temperature with respect to 250ºC and their ClogP values with respect to 3.0. The paragraph defines groups 2 and 4 as those aldehydes that have C log P values in excess of 3.0. Paragraph [0031] further defines the practiced composition in terms of representation from the four groups indicating that group 2 may optionally represent 0-10% of volatile aldehydes used, but group 4 will represent 35-60% of the aldehydes used. In view of the disclosed aldehydes in the claims, the Examiner submits that a person of ordinary skill in the art would reasonably expect that aldehydes such as decanal, undec-10-enal, dec-4-enal, adoxal, and mixtures thereof to also have a C log P of greater than three as instantly claimed.
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the instantly claimed composition and arriving at the recited method of treatment. Therein, Hertenstein discloses each and every aspect of the instantly claimed invention with the exception of defining the recited malodor reduction materials as instantly claimed. Woo, while directed to a more diverse platform of resulting products, does disclose products and articles that are topically applied to the skin of a user. Those products also comprise a composition that works to mitigate malodor that composition comprises the instantly claimed aldehyde compounds. The reference additionally teaches that those aldehydes possess such properties as vapor pressure and C log P values that meet the instantly claimed property limitations.
The Examiner recognizes that the products of Hertenstein and Woo are, on their face distinct. In spite of this difference, the Examiner submits that both references are nested within the same field of endeavor, thereby meeting the requirements to recognized as analogous prior art. See MPEP §2141.01(a)(I). In the instant case, the Examiner notes that Woo is reasonably pertinent to the problem faced by Hertenstein and the inventor, even if it is not perfectly within the same field of endeavor as the claimed invention.
Thus, the Examiner submits that the ordinarily skilled artisan would have had a reasonable expectation of achieving the claimed composition and method through the substitution of the malodor reduction materials of Hertenstein with the volatile aldehydes of the malodor control composition of Woo. MPEP §2144.06(II) states that “[i]n order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on Applicants’ disclosure or the mere fact that the components at issue are functional or mechanical equivalents.” The Examiner submits that the foregoing disclosure provided by Woo establishes, not only functional equivalence as odor control materials, but also in terms of the properties associated with the compounds. The latter aligns with Applicants’ property definitions for the elected compounds.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Nonstatutory 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 1-3 and 7-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of Hertenstein et al. (USPN 11,819,474 B2; herein designated as “H1”) in view of Hertenstein et al. (USPN 10,610,473 B2; IDS reference; herein designated as “H2”).
The limitations of instant claim 1 recite:
A hair care composition comprising, based on total composition weight,
a) a sum total of from about 0.1% to about 2% of a perfume with one or more malodor reduction materials having a wt% from about 0.0001% to about 2% of one or more of said malodor reduction materials wherein the malodor reduction material is selected from the group consisting of decanal , undec-10-enal, 6-cyclopentylidene-hexanal, 2,6,10-trimethylundec-9-enal, 3-(3,3-dimethyl-12-dihydroinden-5-yl)propanal, 4-dodecenal, and dec-4-enal and mixtures thereof;
b) from about 0.01% to about 10% of a scalp active material selected from the group consisting of selenium sulfide; and
c) from about 0.1% to about 40% of a surfactant.
Claim 1 of H1 discloses:
A hair care composition comprising, based on total composition weight,
a) a sum total of from about 0.1% to about 2% of a perfume from about 0.00001% to about 2% of malodor reduction materials where in the malodor materials are mixtures of decanal and undec-10-enal and 6-cyclopentylidene-Hexanal and 2,6,10-Trimethylundec-9-enal and 3-(3,3-dimethyl-12-dihydroinden-5-yl)propanal and 4-Dodecenal and Dec-4-enal
b) from about 0.01% to about 10% of sulfur;
c) from about 0.1% to about 40% of a surfactant.
The perceived distinction between the instant and disclosed compositions is the use of sulfur instead of selenium sulfide, as instantly claimed.
However, the composition practiced by H2 (see e.g., claim 1) discloses the following:
A hair care composition comprising, based on total composition weight,
a) a sum total of from about 0.0001% to about 2% of a malodor reduction material consisting of alpha,alpha,6,6-tetramethyl bicyclo[3.1.1]hept-2-ene-propanal, 2′-isopropyl-1,7,7-trimethylspiro[bicyclo[2.2.1]heptane-2,4′-[1,3]dioxane, 1′,1′,5′,5′-tetramethylhexahydro-2′H,5′H-spiro[[1,3]dioxolane-2,8′-[2,4a]methanonaphthalene] K, SPIRO[FURAN-2(3H),5′-(4,7-METHANO-5H-INDENE], DECAHYDRO, (3R,3aR,6S,7S,8aS)-6-methoxy-3,6,8,8-tetramethyloctahydro-1H-3a,7-methanoazulene, Ethyl (1R,2R,3R,4R)-3-isopropylbicyclo[2.2.1]hept-5-ene-2-carboxylate, (3aR,5aR,9aR,9bR)-3a,6,6,9a-tetramethyldodecahydronaphtho[2,1-b]furan, alpha,alpha,6,6-tetramethyl bicyclo[3.1.1]hept-2-ene-propanal, 4,5-epoxy-4,11,11-trimethyl-8-methylenebicyclo(7.2.0)undecane, and 2′-isopropyl-1,7,7-trimethylspiro[bicyclo[2.2.1]heptane-2,4′-[1,3]dioxane;
b) from about 0.01% to about 10% of a scalp active material wherein the scalp active material is selenium sulfide;
c) from about 0.1% to about 40%, of an anionic surfactant.
More pointedly, H2 defines the scalp active material as being selected from the group consisting of selenium sulfide, sulfur, and mixtures thereof (see e.g., col. 1, line 62 to col. 2, line 3).
Thus, in view of the combined teachings of H1 and H2, the Examiner submits that the sulfur disclosure of component b) of H1 is an obvious variant to instantly claimed selenium sulfide scalp active material. Were the teachings of H1 available as prior art, the Examiner further submits that they would raise to the level of at least a prima facie showing of obviousness.
The remaining independent claims 2, 3, and 7-13 are directly read on by dependent claims 2-10 of H1.
Independent claim 14 is also read on by independent claim 11 of the H1 patent. There again, the only perceived distinction between the two claims is the aforementioned use of selenium sulfide as claimed, instead of sulfur, as disclosed. However, the obviousness of this variation is discussed above. The methods are also obvious variants of one another on this basis.
Lastly, the limitations of instant claim 15 recite that the “situs is a head of hair and said contacting step comprises contacting said head of hair with a sufficient amount of a hair care composition to provide said hair with a level of malodor reduction material [comprising] at least 0.0001 mg of malodor reduction material.”
Herein, the broadest reasonable interpretation of the claim is that the method is accomplished by applying at least 0.0001 mg (or 100 ng) of the malodor reduction material.
Though the method disclosed by claim 11 of H1 does not reflect this specific limitation, claims 5 and 6 of H2 do and therefore are considered to render the instantly claimed method prima facie obvious were the teachings of H1 available as art.
Regarding the foregoing rejection, the Examiner additionally acknowledges that the H1 reference (aka the ‘474 patent) was granted from the allowance of parent application 17/541,547 from which the instant application is currently of record as being a DIVISIONAL application.
The Examiner submits that this designation is incorrect, notably in view of the withdrawal of the restriction requirement in the Notice of Allowance, mailed 10 July 2023, in the parent application.
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615