DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 17 August 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 1-4, 6, 8-10, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Murray et al. (US Patent Application Publication 2013/0095056) in view of Momentive (“Silsoft Q/Silsoft Q PMF,” 2016, pages 1-8).
Murray et al. discloses personal care compositions comprising an aqueous conditioning gel network (abstract). The gel network has a fatty material and a cationic surfactant in addition to water (id.). The fatty material is preferably a fatty alcohol (paragraph [63]). These ingredients and their use to make a gel network reads upon elements (b-d) of independent instant claim 1.
Murray et al. further suggests including silicones in the hair care composition (paragraph [104]), and such silicones include dimethicone (paragraph [111]), which is the elected species of silicone. The silicone is taught by Murray et al. to have a particle size of preferably from 0.5 to 2.5 microns (paragraph [116]). This range does not read upon the size range recited by independent instant claim 1, but it does overlap. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05. Thus, this silicone reads upon instantly recited element (a)(ii).
Murray et al. does not suggest the inclusion of the polyquaternium silicone emulsion (element (a)(i) of instant claim 1), such as the elected species of silicone with one or more quaternary ammonium groups, at least one polyalkylene oxide structural unit, and at least one terminal ester group. Murray et al. suggests the inclusion of other ingredients to enhance performance (paragraph [166]), but not this type of ingredient.
The instant specification discusses the elected species of silicone with one or more quaternary ammonium groups (page 16, lines 23-25 & table 1). The instant specification states that a particularly suitable such product is the product having the commercial name “Momentive Waro® Y20875, Silsoft Q® (emulsion).” Thus, a product with the name Silsoft Q is taken to read upon this instantly claimed element. It is also noted that the trade name “Waro® Y20875” appears to not be disclosed in the prior art, as the only search results ion the CAS registry database and via Google are publications in the instant patent family (see search transcripts). Thus, the second name “Silsoft® Q” is taken to be exemplary of the elected species.
Momentive discloses a product sold under the trade name Silsoft Q, and teaches that is useful in hair care compositions in order to provide superior conditioning during wet combing, and increased volume (page 1).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have used the conditioning silicone sold under the trade name Silsoft Q in the hair care composition disclosed by Murray et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Additionally, doing so would provide superior conditioning during wet combing, and increased volume
Instant claim 1 also recites limitation (a)(iii) to the relative amount of the silicone with one or more quaternary ammonium groups to the silicone oil. Murray et al. suggests the silicone is present in from 0.1 to 10 wt% of the hair care composition (paragraph [119]). Murray et al. also suggests the additional ingredients to add to enhance performance can be present in up to 5 wt% (paragraph [166]). Thus, the relative amounts suggested provide for a range of relative amounts which overlap the instantly recited range. Thus, independent instant claim 1 and dependent instant claims 10 and 12 are rendered prima facie obvious.
Instant claims 2-4, 8-9, and 16 further limit the silicone with one or more quaternary ammonium groups, and are read upon by the elected species taught by Momentive. Instant claim 6 further limits the silicone oil, and the taught species of oil by Murray et al. reads upon this limitation.
Instant claims 13-15 further limit the amounts of elements (b-d). Murray et al. teaches that the cationic surfactant is present in from 0.01 to 10 wt% (paragraph [55]), the fatty material which is preferably a fatty alcohol is present in from 0.01 to 10 wt% (paragraph [66]), and the water is present in from 30 to 95 wt% (paragraph [123]). These amounts overlap the instantly recited amounts.
Response to Arguments
The Applicant argues the rejection is not proper. The Applicant argues that the claims as amended require a weight ratio, and this limitation is not taught by the prior art. The Applicant also argues that there are unexpected results presented in the instant specification (examples 1-3), which would overcome an obviousness rejection.
The Examiner acknowledges the arguments presented, but does not consider them persuasive. With respect to the limitation added to instant claim 1, this is addressed by the rejection rationale. Instant claim 1 also recites limitation (a)(iii) to the relative amount of the silicone with one or more quaternary ammonium groups to the silicone oil. Murray et al. suggests the silicone is present in from 0.1 to 10 wt% of the hair care composition (paragraph [119]). Murray et al. also suggests the additional ingredients to add to enhance performance can be present in up to 5 wt% (paragraph [166]). Thus, the relative amounts suggested provide for a range of relative amounts which overlap the instantly recited range. Thus, independent instant claim 1 and dependent instant claims 10 and 12 are rendered prima facie obvious.
As for the unexpected results, the Examiner acknowledges the evidence presented. This evidence does show a difference between the inventive examples (1-3) and comparative examples (4-6).
However, once unexpectedness has been established, the probative value of the evidence as compared to the invention as claimed must be determined, i.e., claims must be “commensurate in scope” with the showing. See MPEP 716.02(d). In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range or whether or not there is adequate basis for reasonably concluding that the number and variety of species included by the claims would behave in the same manner as those tested. And the evidence does not support the full scope of the claims. Only one species of polyquaternium silicone and one species of silicone oil were evaluated, and there is no evidence to support the unexpected results would be present in other species within the scope of the instant claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brian Gulledge/Primary Examiner, Art Unit 1699
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