DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ Request for Continued Examination (RCE), Amendments and Remarks, filed 7 August 2026, in the matter of Application N° 18/484,074. Said documents have been entered on the record. The Examiner further acknowledges the following:
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 7 August 2026 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 7 has been canceled and its limitations amended into independent claim 1.
No other amendments have been made and no claims have been added.
No new matter has been added.
Thus, claims 1-3 and 8-15 now represent all claims currently under consideration.
Information Disclosure Statement
One new Information Disclosure Statement (IDS) filed 7 August 2026 is acknowledged and has been considered.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 7 May 2026 since the art that was previously cited continues to read on the previously recited limitations.
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 8-15 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). [emphasis added to reflect canceled claim]
Presently, 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, and
wherein there is a cumulative sulfur odor of 0 to 2.
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 amended limitations of claim 1 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.
Response to Arguments
Applicants’ arguments with regard to the rejection of claims 1-3 and 8-15 under 35 USC 103(a) as being unpatentable over the combined teachings of Hertenstein et al. and Woo et al. have been fully considered but they are not persuasive.
Applicants traverse the rejection on the grounds that the Examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning.
However, so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicants also revisit the assertion that the Examiner’s reason to combine Hertenstein with Woo is improper because “it relies on an improper motivation to combine disparate references from non-analogous fields to address different problems, and fails to appreciate the unexpected results achieved by the claimed invention.”
Applicants first allege that neither Hertenstein nor Woo disclose the amended limitation pertaining to the cumulative sulfur odor, previously rejected in claim 7 (now canceled).
It is argued that the specific quantitative measure of performance, directly tied to the specific context of malodor actives in a selenium sulfide-based hair care composition, is not taught or suggested by either Hertenstein or Woo, individually or in combination.
The Examiner disagrees and maintains the rejection for the reasons of record. Therein, as acknowledged by Applicants, the limitation has been met (e.g., Tables 4 and 5) by Hertenstein, individually.
Applicants’ remarks directed to Woo on this issue are not persuasive, notably as Woo was not relied upon to remediate any teaching with respect to former claim 7.
Applicants’ argument revisits the assertion that Hertenstein and Woo are non-analogous teachings and that motivation is lacking for combining said teachings to arrive at the instantly claimed invention. It is argued that the Examiner’s acknowledgment that Hertenstein and Woo accomplish the same result using different delivery vehicles “highlights a fundamental difference in the field of endeavor and the problem being addressed.” It is also alleged that “the Examiner’s argument that ‘the reduction of malodor is accomplished’ in both [references] is too high level of generality and does not provide a specific motivation for this particular combination, especially when faced with the problem of inherent sulfur malodor from selenium sulfide in hair care product.”
The Examiner disagrees.
Regarding the remark that the Examiner’s position is “too high level of generality,” the Examiner directs Applicants to MPEP §2141.01(a)(III) which provides several examples of analogy in the chemical arts. Therein, the first example states that “Ex parte Bland, 3 USPQ2d 1103 (Bd. Pat App. & Inter. 1986) (Claims were drawn to a particulate composition useful as a preservative for an animal foodstuff (or a method of inhibiting fungus growth in an animal foodstuff therewith) comprising verxite having absorbed thereon propionic acid. All references were concerned with absorbing biologically active materials on carriers, and therefore the teachings in each of the various references would have been pertinent to the problems in the other references and the invention at hand.).”
Based on this example, the Examiner submits that the teachings of both Hertenstein and Woo are directed to the same endeavor of eliminating malodor.
The Examiner’s rejection acknowledges the respective deficiencies of the delivery vehicles. However, as stated above:
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.
Thus, the Examiner submits that motivation to combine is derived from a more substantive level of reasoning.
Applicants secondarily assert that Woo is non-analogous on the premise that it is directed to ‘absorbent articles’ for mitigating malodor from human waste, while the instant invention and Hertenstein (‘473) are both directed to ‘hair care compositions.’
The Examiner disagrees that the references are non-analogous and maintains the rejection for the reasons already of record.
As discussed in the rejection above, the Examiner cites MPEP §2141.01(a)(I) which states that “[i]n order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention.” More critically, the passage states that:
“[a] reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that ‘same field of endeavor’ and ‘reasonably pertinent’ are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art.” [emphases added]
In the instant case, the Examiner maintains that both prongs apply, albeit the latter prong is the stronger argument. With respect to the first prong, the Examiner advances that the compositions practiced by both references are disclosed as being applied to the human body as malodor-reducing compositions, whether this is accomplished using a composition that remains in residence, either as a hair care composition or an absorbing article. Either way, the reduction of malodor is accomplished.
More importantly, the references are reasonably pertinent to the problem faced by the inventor which, again, is the reduction of sulfur-based malodors, particularly with respect to the human body.
Applicants’ also assert that “a person of ordinary skill in the art concerned with hair care compositions would not typically consult patents related to absorbent articles for formulating hair care products, as the problems, environmental conditions, and desired performance characteristics are vastly different.”
Here again, the Examiner acknowledges that the skilled artisan may not turn to such teachings as Woo on the basis of the overall resulting product as the references disclose distinct end products. However, a skilled artisan in the cosmetic arts would recognize that the ingredients at issue in both references are relied upon and used to achieve the same endeavor: the reduction of body-originating malodor. Such is considered to provide a reasonable expectation of at least achieving the same desired performance characteristic of reducing odor.
Applicants next assert that while Woo discloses some of the instantly recited aldehydes, it does not teach or suggest the concept of “sulfur malodor reduction value (MORV)”, which is a key property for malodor reduction materials in the context of the instantly claimed invention.
The Examiner, again, disagrees for two reasons.
First, looking to Applicants’ instant specification, the cumulative sulfur odor score limitation appears to be a property that is tethered to and definitive of the instantly recited aldehyde compounds discussed therein (see e.g., Spec., Table 10, pp. 35-36 and pg. 36, lines 2-6). As such, consistent with MPEP §2111.01(IV), §2112.01(I) and (II), and §2173.05(g), the Examiner submits that where Applicants’ defining aldehyde compounds are disclosed in the prior art, the recited cumulative sulfur odor score limitation of claim 7, will also be considered met.
Secondly, despite not disclosing the cumulative sulfur odor score as claimed, Woo does speak to the ability of the practiced aldehydes’ ability to neutralize sulfur odor. Paragraph [0042] teaches:
The malodor control composition of the present invention may include an effective amount of an acid catalyst to neutralize sulfur-based malodors. It has been found that certain mild acids have an impact on aldehyde reactivity with thiols in the liquid and vapor phase. It has been found that the reaction between thiol and aldehyde is a catalytic reaction that follows the mechanism of hemiacetal and acetal formation path. When the present malodor control composition contains an acid catalyst and contacts a sulfur-based malodor, the volatile aldehyde reacts with thiol. This reaction may form a thiol acetal compound, thus, neutralizing the sulfur-based odor. Without an acid catalyst, only hemi-thiol acetal is formed.
What the skilled artisan will understand from this passage is that the practiced volatile aldehydes neutralize sulfur-based malodors on their own, and that the presence of an acid simply catalyzes the thiol-acetal forming reaction. Thus, while Woo does not delineate the reduction of sulfur numerically as is instantly claimed, it most certainly teaches and suggests the concept of sulfur malodor reduction.
As such, Applicants’ referred to results demonstrated in the instant specification are not considered to be unexpected.
Applicants’ arguments, for the above reasons, are found unpersuasive. Said rejection is therefore maintained.
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 8-15 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”). [emphasis added to reflect canceled claim]
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;
wherein there is a cumulative sulfur odor of 0 to 2.
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 8-13 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.
Response to Arguments
Applicants’ filed response to the rejection of claims 1-3 and 8-15 on the grounds of nonstatutory double patenting over the combined patented teachings of Hertenstein et al. has been fully considered, but is not persuasive.
A request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP §714.02 and 37 CFR 1.111(b)). Thus, the double patenting rejection of record has been maintained as no action regarding these rejections has been taken by Applicants at this time.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615
Prosecution Insights