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 1 (claims 1-14) in the reply filed on 21 November 2025 is acknowledged. The traversal is on the ground(s) that the methods of Group II and manufacturing claims of Group III are directly dependent on the composition of Group I (reply, pg. 6). With regard to the method of use, this is not persuasive because the composition can be used in the materially different method of use of quality assurance testing. With regard to the method of making, the method may be used to make the materially different product of a solid product having no water.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 21 November 2025.
Applicant's election with traverse of:
A) One or more miscellaneous ingredients-preservative in the reply filed on 21 November 2025 is acknowledged. The traversal is on the ground(s) that there is no search burden (reply, pg. 7). This is not found persuasive because a search burden is present because the species have acquired a separate status in the art in view of their different classification.
No claims are withdrawn as a result of this species election. Applicant timely traversed the election requirement in the reply filed on 21 November 2025.
Claim Status
Applicant’s claim amendments and arguments in the response filed 21 November 2025 are acknowledged.
Claims 1-20 are pending.
Claims 1, 4, 9, 12, 14 & 16-19 are amended.
Claims 15-20 withdrawn.
Claims 1-14 are under consideration.
Examination is to the extent of the following species
A) One or more miscellaneous ingredients-preservative.
Drawings
The drawings were received on 14 December 2023. These drawings are accepted.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 14 December 2023, 25 June 2024 and 15 October 2024 have been fully considered by the examiner. A signed and initialed copy of each IDS is included with the instant Office Action.
Objections/Rejections
Claim Objections
Claims 5, 6, 10 & 13 are objected to because of the following informalities:
Claims 5 & 6 are not written in parallel to claim 1, from which they depend. Claim 1 recites for claim 1 b), “a combination thereof” in line 2 of the claims while claims 5 & 6 recite “a mixture thereof”.
Applicant may wish to consider whether claim 5 & 6 amendments to recite “combination thereof” would obviate the rejection.
Claim 10 (d) contains the misspelled word “hydroxypropyl guar hydroxypropyltirmonium” (emphasis added).
Applicant may wish to consider if a claim amendment to recite “hydroxypropyltrimonium” would obviate the objection.
Claim 13 is not written in parallel to claim 10, from which it depends. Claim 10 recites for claim 1 b), “a combination thereof” while claim 13 recites “a mixture thereof” in line 2.
Appropriate correction is required.
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.
The factual inquiries 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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being obvious over Maher (US 2022/0401344).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
*Claim Analysis: The examiner notes that the instant specification defines the term "about," as meaning within +/- 5% of the indicated number.
** Claim Analysis: Claims 4 & 12 recites "wherein (a) and (b) are individually combined with each other to form a mixture in which (b) is dissolved in (a); and the mixture is subsequently combined with additional components of the composition” which is a product-by-process recitation. M.P.E.P. § 2113-PRODUCT BY PROCESS CLAIMS states: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
M.P.E.P. § 2113 further states: "Once a product appearing to be substantially identical is found and a 35 U.S.C. 102 /103 rejection made, the burden shifts to the Applicants to shown an unobvious difference.” “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).”
With regard to claims 1a), 1b), 4, 5, 6, 10 a), 10 b), 12 & 13, Maher in Example 5B teaches a hair straightening composition comprising 1% citric acid and 4.3% beta-cyclodextrin [0126]. With regard to claims 1 b) & 10 b), the combined amount of citric acid and beta-cyclodextrin is 5.3%. With regard to claims 1 c), 1 e) & 10 e), Maher in Example 5B teaches inclusion of 5% pentylene glycol (i.e. water soluble solvent) and 89.2 % water [0126]. With regard to claims 2 & 10, Maher teaches the pH of their composition is from “about 3.5 to about 5.5, including all ranges and subranges therebetween.” [0074]. With regard to claims 3 & 11, more broadly, Maher teaches a “particular weight ratio of cyclodextrin : acid ranging from about… 4:1 to about 1:4, from about 3:1 to about 1:3, from about 2.5:1 to about 1:2.5, or from about 2:1 to about 1:2, including all ranges and subranges thereof” (i.e. from about 1:4 to about 4:1…about 1:2 to about 2:1; [0071]). With regard to claims 3 & 11, Maher in Figure 11 teaches the amount of citric acid is linked to the change in curl for each swatch with the least amount of reversion over time linked to higher amounts of citric acid with 5% as the highest examined concentration (sheet 15; Example 4-[0121]). With regard to claims 3 & 11, Maher in Figure 1-Example 1 Examples 1A-1C links increasing concentrations of beta-cyclodextrin to stiffer films [0117]. With regard to claims 3 & 11, it would have been obvious to one of ordinary skill in the art before the effective filing date to have selected any appropriate ratio of citric acid to beta-cyclodextrin from about 1:4 to about 4:1 as taught by Maher through routine experimentation to arrive at the claimed combination in order to optimize the resulting product for straightness, straightness retention and film stiffness. It is obvious to optimize within prior art conditions or through routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). With regard to claim 10 c), Maher teaches pentylene glycol to be at least one additional solvent for inclusion in the composition with the composition comprising “from about 1% to about 4%...from about 2% to about 5%, by weight, relative to the total weight of the composition, including all ranges and subranges thereof” ([0059] & [0060]). With regard to claim 10 c), it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Maher’s Example 4D composition by modifying the amount of pentylene glycol to be from about 1% to about 4% by weight as taught by Maher because pentylene glycol is a solvent and solvents are suitably used in an amount of about 1% to about 4% by weight in the composition as taught by Maher. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to alter the dissolution properties of composition. With regard to claims 1 d) & 10 d), Maher in Example 4D teaches inclusion of 0.5% carrageenan [0121]. More broadly, with regard to claims 1 d), 7 & 10 d), Maher teaches hydroxypropyl guar hydroxypropyltrimonium chloride and carrageenan are film forming polysaccharides and hydroxypropyl guar hydroxypropyltrimonium chloride is also cationic polysaccharide (which as evidenced by the instant specification on page 24, is a suitable cationic guar derivative and is not defined as a film-forming polymer; Maher-[0047] –[0048]). It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Maher’s Example 4D composition by substituting the carrageenan with hydroxypropyl guar hydroxypropyltrimonium chloride [yielding a composition comprising 0.5% hydroxypropyl guar hydroxypropyltrimonium chloride which is free of film forming polymer] because Maher teaches carrageenan and hydroxypropyl guar hydroxypropyltrimonium chloride to be equivalent film-forming polymers but hydroxypropyl guar hydroxypropyltrimonium chloride has the added benefit of being a cationic polymer. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to increase the substantiative properties of the composition through use of hydroxypropyl guar hydroxypropyltrimonium chloride which is a cationic polymer. With regard to claims 8, 9, 10 f), & 14, Maher teaches inclusion of additional components which include preservatives in an amount of about 0.1% to about 10% ([0072] & [0073]). It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Maher’s Example 4D composition by adding preservatives in an amount of about 0.1% to about 10% by weight of the composition because Maher teaches inclusion of preservatives in this amount as an additional component. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to increase the shelf-life of the product through inclusion of a preservative.
With regard to the recited amounts of citric acid, one or more cyclodextrins, one or more water soluble solvent, cationic guar derivative, water, preservatives/miscellaneous ingredient and hydroxypropyl guar hydroxypropyltrimonium chloride; the combined amount of citric acid and cyclodextrin, the weight ratio of citric acid to one or more cyclodextrins; and the pH of the composition; Maher teaches these parameters with values which overlap or fall within the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 4 & 12 are rejected under 35 U.S.C. 103 as being unpatentable over Maher as applied to claims 1-14 above, and further in view of Cho-Cho (WO 2022/232666 Published 11/03/2022), Sola Parera (US 2021/0337850; Published: 11/04/2021) and Le Bras (FR 3017292; Published: 08/14/2015).
*All references refer to the English language translation.
Claim Analysis: As above.
The teachings of Maher are described above. In brief, Maher is directed to a hair straightening composition comprising citric acid, beta-cyclodextrin, pentylene glycol/water soluble solvent, cationic guar derivative/hydroxypropyl guar hydroxypropyltrimonium chloride, preservative and water. Maher teaches inclusion of viscosity modifiers in the compositions of the their invention [0007].
Maher does not teach the citric acid and cyclodextrin are individually combined to form a mixture and the mixture is added to the combined additional components.
In the same field of invention of providing frizz and volume control to the hair, Cho-Cho teaches in C4 an admixture of water, beta-cyclodextrin and citric acid as a solution and it had the second best frizz control of hair (abstract; Table 1-2, pg. 22; [0089] & [0095]).
In the related field of citric acid and cyclodextrin, Sola Parera teaches citric acid and cyclodextrin are natural deep eutectic solvents which when used in combination form eutectic system [0099]. The ordinary skilled artisan at the time of the invention recognized that cyclodextrin is of vegetable origin and is a polysaccharide and is sugar-based.
In the related field of cosmetic formulations, Le Bras teaches a cosmetic base formulation comprising a eutectic solvent composed of natural or vegetable molecules (title; abstract). Le teaches the eutectic solvent is made from at least one element which may be a simple carbohydrate and an organic acid, which may be citric acid, (pg. 3). Le Bras teaches “the eutectic solvent may also comprise a small amount of water. The small amount of water is a quantity of water sufficient to reduce the viscosity of the cosmetic formulation base” (pg. 3).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Maher’s composition by admixing Maher’s citric acid and beta-cyclodextrin such that they dissolve into a eutectic solvent system and add them to the remaining reagents as suggested by the combined teachings of Cho-Cho, Sola Parera, and Le Bras because Maher is directed to a hair straightener and mixtures of cyclodextrin and citric acid produce good frizz and volume reduction in hair. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a hair straightener which reduces frizz. With regard to the solution of cyclodextrin and citric acid being absent of water, Sola Parera, and Le Bras teach mixtures of cyclodextrin and citric acid are eutectic solvents in which water is not required for such systems used to only to impact the viscosity of solvent system. The ordinary skilled artisan would have been motivated to do so, in order to provide a thicker hair straightening formulation.
Claims 1-4 & 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kadir (WO 2019/200027; Published: 10/17/2019).
Claim Analysis: As above.
Kadir teaches a composition for modifying hair which is present in the technology for straightening, smoothing, conditioning and repairing hair fibers by coating the hair with the disclosed composition followed by contacting the coated hair fibers with a heating appliance to modify the hair (abstract). With regard to claims 1 a) & 4, Kadir teaches an exemplary cream formulation in Example 2 which comprises a pH modifier in an amount of 0.02-5% in which the pH modifier/adjuster may be citric acid ([00220] & [00265]). With regard to claims 1 b) & 4, Kadir teaches an exemplary cream formulation in Example 2 which comprises other components including chelating agents which may be cyclodextrins in an amount 0.001 wt. % to 3 wt. % ([00186], [00187] & [00265]). Kadir teaches chelating agents can be employed to stabilize the composition against the deleterious effects of metal ions [00186]. It would have been prima facie before the effective filing date to have modified Kadir’s Example 2 cream by adding cyclodextrin stabilizer in an amount 0.001 wt. % to 3 wt. % as taught by Kadir in order to stabilize the composition against the deleterious effects of metal ions. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to stabilize the formulation. With regard to claims 1 b), the combined total amount of (a) and (b) is about 0.021-8% [Math: 0.02 + 0.001 = 0.021; 5 + 3 = 8]. With regard to claims 1 c), Kadir teaches an exemplary cream formulation in Example 2 which comprises 0.2-30% of an organic solvent which may be ethanol, propanol, isopropanol (i.e. water soluble solvents; [0069] & [00265]). With regard to claim 1 d), Kadir teaches an exemplary cream formulation in Example 2 which comprises other components including cationic polymers which may be guar hydroxypropyltrimonium chloride in an amount of about 0.01 to about 10 wt.% to an enhance the delivery of conditioning agents and/or provide auxiliary conditioning benefits to the hair ([00118], [00124], [00125] & [00265]). It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Kadir’s Example 2 cream by adding guar
hydroxypropyltrimonium chloride in an amount of about 0.01 to about 10 wt.% as suggested by Kadir’s teachings in order to provide conditioning to the hair. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to further condition hair. With regard to claim 1 e), Kadir teaches an exemplary cream formulation in Example 2 which comprises water q.s. to 100%. With regard to claims 2, Kadir teaches the pH of the composition is at least 2.5 and the pH is up to 4.0 [00218]. With regard to claim 3, the weight ratio of (a) to (b) is including 5,000: 1 to 0.006:1 including 1.67:1. With regard to claim 7, Kadir teaches an exemplary cream formulation in Example 2 which does not contain/require film forming polymers [00265]. With regard to claims 8 & 9, Kadir teaches an exemplary cream formulation in Example 2 which comprises 0.01-1 preservatives [00265].
With regard to the recited amount of citric acid, cyclodextrin, water soluble solvents, cationic guar derivatives, water and miscellaneous ingredients/preservatives; pH of the composition; and weight ratio of citric acid/(a) to cyclodextrin/(b); Kadir teaches these parameters with values which overlap or fall within the recited ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kadir as applied to claims 1-4 & 7-9 above, and further in view of Laga (US 2022/0362130; Published: 11/17/2022).
Claim Analysis: As above.
The teachings of Kadir are described above. In brief, Kadir teaches a composition for straightening and smoothing hair comprising citric acid and cyclodextrin. The ordinary skilled artisan at the time of filing knew that citric acid was an organic acid.
Kadir does not teach the species of cyclodextrin used in the straightening/smoothing composition.
In the same field of invention of “elongation of curls” (i.e. straightening and smoothing hair, Laga teaches a composition which may comprise an organic acid [0096]. Laga teaches at least one cyclodextrin as a required reagent for the composition and in a “further embodiment, the cyclodextrin is only β-cyclodextrin, and no other cyclodextrins or derivatives thereof are present in the composition” [0035].
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Kadir’s hair straightening composition by substituting Kadir’s generically taught cyclodextrin with β-cyclodextrin as suggested by Laga because Kadir and Laga are both drawn to hair straightening compositions and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use a reagent art recognized as suitable for straightening hair in a straightening composition.
Claims 10, 11 & 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kadir as applied to claims 1-4 & 7-9 above, and further in view of Kadir (US 2016/0296449; Published: 10/13/2016; hereinafter Kadir ‘2016) and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride (https://www.chinaguargum.com/hydroxypropyl-guar-hydroxypropyltrimonium-chloride.html; Published: 2021).
Claim Analysis: As above.
The teachings of Kadir are described above. In brief, Kadir teaches a hair straightening/smoothing composition comprising preservatives, citric acid, cyclodextrin and a cationic guar derivative which may be guar hydroxypropyltrimonium chloride in an amount of 0.5% of the composition.
Kadir does not teach that the cationic guar derivative is hydroxypropyl guar hydroxypropryltrimonium chloride.
In the same field of invention of straightening hair, Kadir’ 2016 teaches a semi permanent hair straightening composition comprising cyclodextrin as a chelating agent and citric acid as the straightening agent (title; abstract; [0064], [0188]). Kadir ‘2016 teaches guar hydroxypropyltrimonium chloride and hydroxypropyl guar hydroxypropyltrimonium chloride to be a conditioning agent to provide a substantive conditioning effect (Kadir ‘2016’s-claim 52; [0113] & [0150]).
Hydroxypropyl Guar Hydroxypropyltrimonium Chloride teaches hydroxypropyl guar hydroxypropyltrimonium chloride has exceptional conditioning properties at lower usage levels and smooths hair (pg. 3).
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Kadir’s hair straightening composition by substituting Kadir’s guar hydroxypropyltrimonium chloride with hydroxypropyl guar hydroxypropyltrimonium chloride [yielding a composition comprising 0.5% hydroxypropyl guar hydroxypropyltrimonium chloride] as suggested by the combined teachings of Kadir’ 2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride because guar hydroxpropyltrimonium chloride and hydroxypropyl guar hydroxypropyltrimonium chloride are both conditioning polymers used in hair straighteners but hydroxypropyl guar hydroxypropyltrimonium chloride has the added benefits of smoothing hair and providing excellent conditioning at low levels as taught by Kadir’ 2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to further smooth the straightened hair through use of hydroxypropyl guar hydroxypropyltrimonium chloride.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kadir, Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride as applied to claims 1-4, 7-11 & 14 above, and further in view of Cho-Cho (WO 2022/232666 Published 11/03/2022), Sola Parera (US 2021/0337850; Published: 11/04/2021) and Le Bras (FR 3017292; Published: 08/14/2015).
*All references refer to the English language translation.
Claim Analysis: As above.
The teachings of Kadir, Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride are described above. In brief, the combined teachings of Kadir, Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride suggest a hair straightening composition comprising citric acid, cyclodextrin and hydroxypropyl guar hydroxypropyltrimonium chloride.
Neither Kadir, Kadir ‘2016 nor Hydroxypropyl Guar Hydroxypropyltrimonium Chloride the citric acid and cyclodextrin are individually combined to form a mixture and the mixture is added to the combined additional components.
The teachings of Cho-Cho are described above.
The teachings of Sola Parera are described above.
The teachings of Le Bras are described above.
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Kadir, Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride by admixing the citric acid and beta-cyclodextrin such that they dissolve into a eutectic solvent system and add them to the remaining reagents as suggested by the combined teachings of Cho-Cho, Sola Parera, and Le Bras because Kadir and Kadir ‘2016 are directed to a hair straighteners and mixtures of cyclodextrin and citric acid produce good frizz and volume reduction in hair. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a hair straightener which reduces frizz. With regard to the solution of cyclodextrin and citric acid being absent of water, Sola Parera, and Le Bras teach mixtures of cyclodextrin and citric acid are eutectic solvents in which water is not required for such systems and is used to only to impact the viscosity of solvent system. The ordinary skilled artisan would have been motivated to do so, in order to provide a thicker hair straightening formulation.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kadir, Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride as applied to claims 1-4, 7-11 & 14 above, and further in view of Laga (US 2022/0362130; Published: 11/17/2022).
Claim Analysis: As above.
The teachings of Kadir, Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride are described above. In brief, the combined teachings of Kadir, Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride suggest a hair straightening composition comprising citric acid, cyclodextrin and hydroxypropyl guar hydroxypropyltrimonium chloride.
Neither Kadir, Kadir ‘2016 nor Hydroxypropyl Guar Hydroxypropyltrimonium Chloride teach the cyclodextrin is β-cyclodextrin.
The teachings of Laga are described above.
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified hair straightening composition suggested by the combined teachings of Kadir, Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride by substituting Kadir’s generically taught cyclodextrin with β-cyclodextrin as suggested by Laga because Kadir and Laga are both drawn to hair straightening compositions and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use a reagent art recognized as suitable for straightening hair in a hair straightening composition.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/539,954 (hereinafter the ‘954; claims filed 12/14/2023). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and the ‘954 recite a hair shaping composition comprising citric acid; one or more cyclodextrins, which may be beta-cyclodextrin; one or more water soluble solvents; one or more cationic guar derivatives, which may be hydroxypropyl guar hydroxypropyltrimonium chloride; miscellaneous ingredients, including a preservative; and water in amounts with values that overlap or fall within the ranges claimed by the instant application. The instant application and the ‘954 recite the pH of the application may be about 3 to about 6 and the weight and molar ratios of citric acid (a) and cyclodextrin (b) recited by the ‘954 are the same as those recited by the instant application. The product by process steps of individually combining citric acid (a) and cyclodextrin (b) to dissolve (b) and then subsequently combining with additional components in the composition is recited by the instant application and the ‘954. Both the ‘954 and the instant application recite the composition is free of film forming polymers. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have looked to the claims of the ‘954 to formulate the recited hair composition. The ordinary skilled artisan would have been motivated to do so in order to provide a hair styling composition.
The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/355,442 (hereinafter the ‘442; claims filed 7/20/2023) in view of Kadir (US 2016/0296449; Published: 10/13/2016; hereinafter Kadir ‘2016) and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride (https://www.chinaguargum.com/hydroxypropyl-guar-hydroxypropyltrimonium-chloride.html; Published: 2021). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and the ‘442 recite a hair shaping composition comprising citric acid; one or more cyclodextrins, which may be beta-cyclodextrin; one or more water soluble solvents; one or more cationic polymer which may be guar hydroxypropyltrimonium chloride, miscellaneous ingredients, including a preservative; and water in amounts with values that overlap or fall within the ranges claimed by the instant application. The instant application and the ‘442 recite the pH of the application may be about 3 to about 6 and the weight and molar ratios of citric acid (a) and cyclodextrin (b) recited by the ‘442 are the same as those recited by the instant application. The product by process steps of individually combining citric acid (a) and cyclodextrin (b) to dissolve (b) and then subsequently combining with additional components in the composition is recited by the instant application and the ‘442. Both the ‘442 does not require film forming polymers and therefore is reasonably interpreted as being free of film forming polymers. The ‘442 does not recite inclusion of hydroxypropyl guar hydroxypropyltrimonium chloride. The teachings of Kadir ‘2016 and Hydroxypropyl Guar Hydroxypropyltrimonium Chloride are described above. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair treatment composition recited by the claims of the ‘442 and substituted the guar hydroxypropyl trimonium chloride with hydroxypropyl guar hydroxypropyltrimonium chloride because these are both cationic guar polymers used in hair straightening compositions as taught by Kadir ‘216 but hydroxypropyl guar hydroxypropyltrimonium chloride provides the added benefits of smoothening hair taught by Hydroxypropyl Guar Hydroxypropyltrimonium Chloride. The ordinary skilled artisan would have been motivated to do so in order to provide a hair treatment composition which smooths and straighten hair.
The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,257,331 (hereinafter the ‘331; Published: 03/25/2025) in view of Laga (US 2022/0362130; Published: 11/17/2022), Kadir (US 2016/0296449; Published: 10/13/2016; hereinafter Kadir ‘2016), Hydroxypropyl Guar Hydroxypropyltrimonium Chloride (https://www.chinaguargum.com/hydroxypropyl-guar-hydroxypropyltrimonium-chloride.html; Published: 2021), Cho-Cho (WO 2022/232666 Published 11/03/2022), Sola Parera (US 2021/0337850; Published: 11/04/2021) and Le Bras (FR 3017292; Published: 08/14/2015). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘331 and the instant application both recite a hair composition comprising citric acid and a cyclodextrin in amounts, and molar ratios that are overlap or fall within the claimed ranges. The ’331 recites inclusion of a polyols including propylene glycol which are art recognized water-soluble solvents in amounts which overlap with the recited range of the instant application. The ‘331 recites inclusion of water in overlapping amounts as the instant specification. The ‘331 does not require inclusion of film forming polymers. The ‘331 recites inclusion of a cationic guar. The ‘331 does not recite the species of cyclodextrin, the amount of cationic guar or that the cationic guar derivative is hydroxypropyl guar hydroxypropyltrimonium chloride. The ‘331 does not recite individually combining citric acid/(a) with cyclodextrin/(b). The teachings of Laga are described above. In brief, Laga teaches beta-cyclodextrin is a cyclodextrin which is applied to hair in hair compositions. The teachings of Hydroxypropyl Guar Hydroxypropyltrimonium Chloride are described above. In brief, Hydroxypropyl Guar Hydroxypropyltrimonium Chloride teaches hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic guar derivative used in an amount of 0.1-0.3% in formulations (pg. 2 & 3). The teachings of Cho-Cho, Sola Parera and Le Bras are described above. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair composition recited by the ‘331 by substituting the ‘331’s generically recited cationic guar with hydroxypropyl guar hydroxypropyltrimonium chloride in an amount of 0.1-0.3% as taught by Hydroxypropyl Guar Hydroxypropyltrimonium Chloride because hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic guar derivative used in hair compositions to provide conditioning and smoothing to hair. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide conditioning and smoothness to hair. With regard to the cyclodextrin, it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair composition of the ‘331 by substituting the generically taught cyclodextrin with beta-cyclodextrin as taught by Laga because the composition recited by the ‘331 is a hair composition and beta-cyclodextrin is a species of cyclodextrin used in hair compositions. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a hair composition using a species of cyclodextrin art recognized as suitable for use in hair compositions. It would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified the hair composition of the ‘311 by admixing the citric acid and beta-cyclodextrin such that they dissolve into a eutectic solvent system and add them to the remaining reagents as suggested by the combined teachings of Cho-Cho, Sola Parera, and Le Bras because the ‘331 are directed to a hair compositions and mixtures of cyclodextrin and citric acid produce good frizz and volume reduction in hair. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a hair composition which reduces frizz. With regard to the solution of cyclodextrin and citric acid being absent of water, Sola Parera, and Le Bras teach mixtures of cyclodextrin and citric acid are eutectic solvents in which water is not required for such systems and is used to only to impact the viscosity of solvent system. The ordinary skilled artisan would have been motivated to do so, in order to provide a thicker hair composition.
The pending claims are therefore an obvious variant of the conflicting, patented claims.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 65-69, 72, 74-81, 85 & 86, of copending Application No. 17/733,920 (hereinafter the ‘920; Filed-01/08/2025) in view of Hutchins (US Patent No. 5,916,548; Issued: 06/29/1999). The ‘920 recites a composition comprising citric acid; cyclodextrins, which may be beta-cyclodextrin; polyol/water-soluble solvents, miscellaneous ingredients, which may be fillers; and water in amounts which fall within or overlap with the recited amounts. The pH and water and molar ratios of citric acid/(a) to cyclodextrin/(b) of the ‘920 overlap with that recited by the instant application. The ‘920 does not require inclusion of film forming polymers. The ‘920 does not teach a thickening agent which is a cationic guar derivative which is hydroxypropyl guar hydroxypropyltrimonium chloride. In the same field of invention of hair compositions, Hutchins teaches hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic guar is a cationic polymer and thickener (col. 24, ll. 60-65). It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair composition recited by the ‘920 by adding a thickening agent which is hydroxypropyl guar hydroxypropyltrimonium chloride as taught by Hutchins because hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic thickening agent used in hair compositions. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the composition with a thickening agent art recognized as suitable for hair compositions as taught by Hutchins. The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20, of copending Application No. 18/355,526 (hereinafter the ‘526; Filed-07/20/2023) in view of Kadir (WO 2019/200027; Published: 10/17/2019), Hutchins (US Patent No. 5,916,548; Issued: 06/29/1999) and Laga (US 2022/0362130; Published: 11/17/2022). The ‘526 recites a composition comprising citric acid; cyclodextrin; polyol/water-soluble solvents, miscellaneous ingredients, which may be thickening agents and polar oils/emollients (miscellaneous ingredient); and water. The combined amount of citric acid/(a) and cyclodextrin/(b) overlap with amount recited by the instant specification and it would be obvious to select 3% citric acid and 3% cyclodextrin as a place to start optimization. The ‘526 does not require inclusion of film forming polymers. The ‘526 does not recite the pH of the composition, the amount of water, amount of miscellaneous ingredients, a thickening agent which is a cationic guar derivative which is hydroxypropyl guar hydroxypropyltrimonium chloride or the species of cyclodextrin. The teachings of Kadir are described above with respect to the amount of water and miscellaneous ingredients, and pH of the composition. In the same field of invention of hair compositions, Hutchins teaches hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic guar is a cationic polymer and thickener (col. 24, ll. 60-65). The teachings of Laga are described above with the regard to the species of cyclodextrin. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair composition recited by the ‘526 by substituting the generically recited cyclodextrin with beta-cyclodextrin as taught by Laga, adding a thickening agent which is hydroxypropyl guar hydroxypropyltrimonium chloride as taught by Hutchins, and adjusting the amount of water, miscellaneous ingredients and pH to those taught by Kadir because the ‘526, Laga, and Kadir are all drawn to compositions applied to hair and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the composition with a thickening agent art recognized as suitable for hair compositions as taught by Hutchins and use a species of cyclodextrin art recognized as suitable for hair compositions as taught by Laga. The ordinary skilled artisan would be motivated to adjust the pH and amounts of water and miscellaneous ingredients to those taught by Kadir to match the parameters art recognized as suitable for hair compositions. The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 35-49, of copending Application No. 18/231,735 (hereinafter the ‘735; Filed-08/08/2023) in view of Hutchins (US Patent No. 5,916,548; Issued: 06/29/1999). The ‘735 recites a method of using hair compositions comprising citric acid; cyclodextrins, which may be beta-cyclodextrin; a polysaccharide gum, which may be guar gum, and polyol/water-soluble solvents in amounts which fall within or overlap with the recited amounts. The pH and molar ratio of citric acid/(a) to cyclodextrin/(b) of the ‘735 overlap with that recited by the instant application. The ‘735 does not require inclusion of film forming polymers. The ‘735 does not teach the polysaccharide thickening agent is a cationic guar derivative which is hydroxypropyl guar hydroxypropyltrimonium chloride or inclusion of miscellaneous ingredients. In the same field of invention of hair compositions, Hutchins teaches hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic guar is a cationic polymer and thickener (col. 24, ll. 60-65). Hutchins in their hair styling rinse teaches inclusion of perfume/fragrance in an amount of 0.33% of the hair composition. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair composition recited by the ‘735 by substituting the generically recited polysaccharide thickening agent with hydroxypropyl guar hydroxypropyltrimonium chloride and adding 0.33% perfume/fragrance as taught by Hutchins because hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic thickening agent used in hair compositions and fragrance is also used in hair compositions. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the composition with a thickening agent art recognized as suitable for hair compositions and lend a pleasing smell to the composition as taught by Hutchins. The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 35-49, of copending Application No. 18/231,729 (hereinafter the ‘729; Filed-08/08/2023) in view of Hutchins (US Patent No. 5,916,548; Issued: 06/29/1999). Both the instant claims and the ‘729 are drawn hair compositions comprising a citric acid; cyclodextrins, which may be beta-cyclodextrin; and water soluble solvents, which may be glycerin; in amounts which fall within or overlap with the recited amounts. The pH and molar ratio of citric acid/(a) to cyclodextrin/(b) of the ‘729 overlap with that recited by the instant application. The ‘729 comprises one or more polysaccharide thickening agents in an amount of “about 0.05 to about 5 wt.%”. The ‘729 does not require inclusion of film forming polymers. The ‘729 does not teach the polysaccharide thickening agent is a cationic guar derivative which is hydroxypropyl guar hydroxypropyltrimonium chloride or inclusion of miscellaneous ingredients. In the same field of invention of hair compositions, Hutchins teaches hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic guar which serves as a cationic polymer and thickener (col. 24, ll. 60-65). Hutchins in their hair styling rinse teaches inclusion of perfume/fragrance in an amount of 0.33% of the hair composition. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair composition recited by the ‘729 by substituting the generically recited polysaccharide thickening agent with hydroxypropyl guar hydroxypropyltrimonium chloride and adding 0.33% perfume/fragrance as taught by Hutchins because hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic thickening agent used in hair compositions and fragrance is also used in hair compositions. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the composition with a thickening agent art recognized as suitable for hair compositions and lend a pleasing smell to the composition as taught by Hutchins. The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-16, 21 & 22 of copending Application No. 18/355,516 (hereinafter the ‘516; Filed-10/14/2025) in view of Hutchins (US Patent No. 5,916,548; Issued: 06/29/1999). Both the instant claims and the ‘516 are drawn hair compositions comprising citric acid; cyclodextrins, which may be beta-cyclodextrin; and water soluble solvents, which may be glycerin; in amounts which fall within or overlap with the recited amounts. The pH and weight ratio of citric acid/(a) to cyclodextrin/(b) of the ‘516 overlaps with that recited by the instant application. The ‘516 comprises miscellaneous ingredients which may be “preservatives…composition colorants, or a mixture thereof”. The ‘516 comprises one or more polysaccharide thickening agents in an amount of “about 0.1 to about 8 wt.%”. The ‘516 does not require inclusion of film forming polymers. The ‘516 does not teach the polysaccharide thickening agent is a cationic guar derivative which is hydroxypropyl guar hydroxypropyltrimonium chloride. In the same field of invention of hair compositions, Hutchins teaches hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic guar is a cationic polymer and thickener (col. 24, ll. 60-65). It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair composition recited by the ‘516 by substituting the generically recited polysaccharide thickening agent with hydroxypropyl guar hydroxypropyltrimonium chloride as taught by Hutchins because hydroxypropyl guar hydroxypropyltrimonium chloride is a cationic thickening agent used in hair compositions. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the composition with a thickening agent art recognized as suitable for hair compositions as taught by Hutchins. The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/LORI K MATTISON/Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619