DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/11/2026 has been entered.
Status of Claims
Amendment filed on 05/11/2026 is acknowledged.
Claims 1 and 10 are amended. Claim 11 is new.
Claims 1-11 are pending and being examined on the merits herein.
Priority
This instant application 18546310, filed on 08/14/2023, is a 371 of PCT/US2022028924 filed on 05/12/2022, which claims domestic benefit to U.S. application 63/193,786, filed on 05/25/2021.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 recites “at least 13% higher than ...”, and applicant points to Table 5 in specification for support. However, Table 5 presents Si deposition (mol%) from Examples F1 (using polymer from S1, instant spec., Table 3) and Example F2 (using polymer from S2, instant spec., Table 3) onto virgin brown (VB) values are 20 and 17 vs. Comparative Example CF1 (VB) value 15, which differs maximum as 5%; Example F1 and F2 onto bleached (B) values are 14 and 9 vs. CF1 (B) value 1, which differs 13% and 8%. Moreover, instant specification Examples F1 and F2 vs. CF1 results are based upon the combination of specific concentrations wt% of the specific ingredients including sodium lauryl ether sulfate, polymer S1 or S2, EDTA, cocamide MEA, cocamidopropyl betaine, phenoxyethanol and methlisothiazolinone, dimethiconol and TEA-dodecyl-benzenesulfonate, PEG-150 pentaerythrityl tetraseearate, and sodium hydroxide or citric acid in instant specification Table 3. There is no evidence or support from description that under all circumstances with the general ingredients as recited in instant claim would be able to achieve such “at least ... higher” of the claimed enhanced deposition of silicone as instantly claimed. Therefore, the claim scope of at least 13% higher does not have support from the specification.
Claim 11 recites “the deposition aid polymer provides a deposition of ... silicone onto virgin brown mammalian hair that is at least 17 mol% or ... onto bleached mammalian hair that is at least 9 mol%” without conditions. In other words, the claim scope is set to the composition comprising the named ingredients with any amounts, the deposition of silicone would be able to achieve to such level. Applicant points to support in specification Table 5 and claim 10 and the Examples. As discussed above in claim 10, the instant specification Example F1 and F2 show results F1 and F2 onto virgin brown (VB) as 20 and 17 mol%, and onto bleached (B) values as 14 and 9 mol%, based upon the combination of specific concentrations wt% of the specific ingredients including sodium lauryl ether sulfate, polymer S1 or S2, EDTA, cocamide MEA, cocamidopropyl betaine, phenoxyethanol and methlisothiazolinone, dimethiconol and TEA-dodecyl-benzenesulfonate, PEG-150 pentaerythrityl tetraseearate, and sodium hydroxide or citric acid in instant specification of Table 3. There is no evidence or support from description that under all circumstances with the general ingredients as recited in instant claim would be able to achieve such “at least ...mol%” of the claimed deposition of silicone range as instantly claimed.
If applicant believes these rejections are in error, applicant must disclose where in the specification support for the entire scope of the amendment(s) and/or new claims can be found. As a result, claims 10 and 11 represent new matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites “at least 17 mol%” and “at least 9 mol%” without defining the calculation basis of the mol%. It is unclear whether the mol% is based upon total ingredients mol amounts, the dextran polymer mol amount, or silicone mol amount.
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 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. Applicant is 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 1-2 and 4-11 are rejected under 35 U.S.C. 103) as being unpatentable over Umezawa et al. (JP2000159642, 06/13/2000, IDS of 08/14/2023; translated tables in record of 10/21/2025; Machine translation relied upon below; attached copy with paragraph #, in record of 10/21/2025), in view of Paullin et al. (US20180237816, 08/23/2018).
For claims 1, 2, 4 and 7, Umezawa discloses a shampooing composition (corresponding to shampoo formulation in instant claim 2) forming a stable emulsion dispersion system including component (A) a silicone derivative (e.g., dimethylpolysiloxane) and (B) a modified polymer compound having a-1, 6’ glycoside bond represented by formula (1) (shown below), including, e.g., a cationic dextran (derivative) (Abstract; Solution). Silicone derivatives are used in hair cosmetics as an oil reservoir component which gives smoothness; however, it cannot form a stable emulsion dispersion system easily [0002]. Umezawa notes that a silicone derivative paired with a linear cationic high molecular weight compound having the chemical formula (1) as shown below, range from Mw ~3300 Daltons to 4,950,000 Daltons (overlapping with molecular weight 1,000 to 3,000,000 Daltons in instant claim 1), can exert a synergistic effect, making it possible to emulsify and disperse the silicone derivative very stably for a satisfactory emulsification dispersion system (e.g., [0003];[0005]) (corresponding to the deposition aid polymer enhancing silicone in instant claim 10):
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wherein R represents a hydrogen atom, a hydroxy lower alkyl group (e.g., Claim 1), and chemical formula (2) as shown below:
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wherein R1 represents a hydrogen atom or a lower alkyl group and R2, R3, and R4 represent a lower alkyl group; at least one R is a quaternary nitrogen-containing group represented by Formula (2), and n is a positive number of 20 – 30,000 (e.g., Claim 1; [0007]).
Therefore, the modified polymer in Umezawa corresponds to dextran base polymer functionalized with quaternary ammonium group bound to a pendent oxygen on the dextran base polymer as in instant claim 1, wherein X correlates to divalent alkyl groups substituted with a hydroxy group, shown as CH2CH(OR1)CH2- in formula (2) above (as evidenced by instant specification, Pg. 11, bottom), R2 as lower alkyl groups, e.g., C1-4 alkyl, same as that in instant claim 1(i), and R3 as lower alkyl group overlapping with C1-16 alkyl as recited in instant claim 1(i); and hydrophobic substituents of formula (III) bound to a pendent oxygen on the dextran base polymer, wherein Z can be O atom, a is 0 or 1, and R5 as a lower alkyl group with substituents such as formula (2) above.
Umezawa exemplifies that the shampoo composition comprises: 10.0 sodium polyoxyethylene alkyl sulfate; 2.0 coconut oil fatty acid amidopropyl betaine; 1.0 lauryl dimethyl amine oxide; 2.0 malt oil fatty acid diethanolamide; 2.0 dimethylpolysiloxane with a viscosity of 10,000 cs; 0.5 O-[2-hydroxy-3(trimethylammonio) propyl]-dextran chloride (corresponding to both R2 and R3 as methyl group of instant claim 4) wherein the raw material dextran has a molecular weight of approximately 100,000 and a nitrogen content of approximately 1.7%; 0.7 piroctone olamine; 0.7 sodium benzoate (as preservative); citric acid monohydrate to pH 6.0; pigment in trace amounts; 0.4 spices; and purified water up to 100 (Example 6, Table 2, in record of 10/21/2025). In other exemplary embodiments the raw material dextran has a molecular weight of approximately 10,000 or approximately 1 million (Table 2) (overlapping with MW of 1,000 to 3,000,000 Daltons in instant claim 1). It is noted that while the left side of translated Table 2 reads, “Composition (heavy weapons %)”, the same characters on the left side of translated Table 1 read, “Composition (weight %)”. Therefore, the amounts disclosed in Table 2 are interpreted as weight % of the total composition.
Regarding the claimed dermatologically acceptable vehicle recited in instant claim 1, Umezawa exemplifies using water in the shampoo composition (Example 6, Table 2) which reads on the claimed vehicle, as evidenced by the instant specification which states that preferably the dermatologically acceptable vehicle comprises water [0016].
Regarding the claimed dermatologically acceptable silicone recited in instant claim 1, the dimethylpolysiloxane in the shampoo composition (Example 6, Table 2) of Umezawa represents the claimed silicone.
Regarding the claimed dermatologically acceptable hair cleaning surfactant in claim 1, the coconut oil fatty acid amidopropyl betaine (same as cocamidopropyl betaine) in the shampoo composition of Example 6, representing the instantly claimed hair cleaning surfactant species in instant claim 7.
For claim 6 of –(OCH2CH2)- group numbers per sodium lauryl ether surfactant molecule, Umezawa teaches that as a standard sample, polyoxyethylene-lauryl-ether sodium sulfate is with polyoxyethylene p=3 (e.g., [0026]), and in Example 6, 10% polyoxyethylene alkyl sulfate (p=3) is seen in Table 2, indicating oxyethylene –(OCH2CH2)- polymerization number is p=3.
For claim 8, Umezawa states that optional components include surfactants such as anionic surfactants, amphoteric surfactants, cationic surfactants, and nonionic surfactants, thickeners, preservatives (e.g., germicide, antioxidant, antiseptic, etc.), and pH adjusters, among others, which can be blended as necessary (e.g. [0021]) and in Example 6, sodium benzoate is known as germicide preservative. These components correspond to instant claim 8 but fall short on chelating agent.
For claim 9, Umezawa indicates that amount 0.5 to 1% by weight of the range, 0.1 to 2% can be especially desirable of the cationic dextran polymer in the composition (e.g., [0020]), falling within amount range 0.03 to 2 wt% in instant claim 9.
For claims 10 and 11, Umezawa teaches that silicone derivatives are used in hair cosmetics as an oil reservoir component which gives smoothness; however, it cannot form a stable emulsion dispersion system easily [0002]. Umezawa specifies that a silicone derivative paired with the specific dextran polymer as discussed above can exert a synergistic effect, making it possible to emulsify and disperse the silicone derivative very stably for a satisfactory emulsification dispersion system (e.g., [0003];[0005]), indicating that the silicone deposition on hair would be successful in the stable emulsion dispersion system, corresponding to silicone deposition being enhanced by the dextran polymer as instantly claimed. Umezawa specifies that when applied formulation examples 1-10 onto hair and comparative examples 1-3 during a test method, the application of exemplary formulations with cationic polymer compound resulted in very good dispersion stability and gave a very good finish feel after washing the hair when compared to a standard sample [0024-0028], indicating the invented hair composition forms stable emulsification and dispersed system, and also gives excellent feel after shampoo the hair [0022].
Umezawa teaches R can be lower alkyl group as hydrophobic substituent of -OR in formula I, however, Umezawa does not teach R can be linear or branched C12-18 alkyl group, as recited as R5 in formula III of instant claim 1(ii). Umezawa teaches R2, R3, and R4 each represents a lower alkyl group and fails to indicate that R3 can be linear C8 group as recited in instant claim 5. Umezawa does not teach the composition further comprising a chelating agent as recited in instant claim 8 in addition to preservative and thickener. Umezawa teaches nitrogen content but fails to teach it is measured by Kjeldahl corrected for ash and volatiles method as recited in instant claim 3. Umezawa does not teach a method using the composition comprising the deposition aid dextran polymer functionalized with hydrophobic alkyl group as linear or branched C12-18, and the resulted silicone deposition is at least 13% higher than the result from a dextran polymer without the hydrophobic substituent as recited in instant claim 10.
Paullin directs to compositions comprising dextran ether compounds and methods of their preparation and use as viscosity modifiers in hair care product (e.g., shampoo, hair conditioner, cream rinse, hair dye, hair coloring product, hair shine product, hair serum, etc. [0184]) and household products and others (e.g., Abstract; Field of Invention; [0016]; [0184]).
Paullin teaches dextran compounds with carbon positions 1, 3 and 6 of the glucose monomer of dextran involved in respective glucoside linkages with three adjacent glucose monomers, likewise applying to glucose linked at positions 1, 2 and 6, positions 1, 4 and 6 [0038], and a dextran ether compound, dextran ether, or dextran ether derivative [0054] comprising the substructure –CM-O-C-, where "-CM-" represents a carbon atom of a monosaccharide monomeric unit of a dextran ether compound (where such carbon atom was bonded to a hydroxyl group [-OH] in the dextran precursor of the ether), and where "-C-" is a carbon atom of an organic group [0055]. The organic group refers to a chain of one or more carbons that (i) has a formula -CnH2n+1, i.e., an alkyl group, which can be completely saturated) [0056] (corresponding to formula (III) wherein a is 0 and overlapping with carbon numbers with each R5 as linear or branched C12-18 alkyl group as recited in instant claim 1 (ii)); dextran ether compounds can contain two or more different types of organic groups including such as alkyl group (e.g., [0142]) and a positively charged substituted ammonium group (e.g., [0143], [0145]) such as a quaternary ammonium dextran ether compound (e.g., [0149]), which would result in the dextran polymer functionalized with the recited groups in instant claim 1.
Paullin also points out that the organic group linking to the pendent oxygen on dextran base polymer can refer to positively charged organic group including substituted ammonium groups [0058-0059], with representing structure (I) as shown below, wherein R2, R3 and R4 in structure each independently represent a hydrogen atom or an alkyl, aryl, cycloalkyl, aralkyl, or alkaryl group [0061]. Paullin notes that an alkyl group can be a methyl, ethyl, propyl, butyl, pentyl, hexyl, heptyl, octyl, nonyl, or decyl group, for example, and where two or three of R2 , R3 and R4 are an alkyl group, they can be the same or different alkyl groups (e.g., [0145]) (corresponding to R2 and R3 groups in instant claim 5).
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Paullin teaches that the composition can comprise antimicrobial agents (as known also function as preservatives) (e.g., [0229]), thickener [0220], chelating agent [0202] (corresponding to instant claim 8), and suitable surfactant such as sodium lauryl sulfate [0231].
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate hydrophobic substituent group with guidance on carbon numbers based on teaching of Paullin into the composition taught by Umezawa to arrive at current invention. Because Umezawa already contains the dextran polymer used for enhancement of silicone stabilization and emulsification when applied onto hair in hair formulations, which constitutes hydrophilic positively charged quaternary ammonium substituent together with hydrophobic substituent as low alkyl group, it would provide artisans motivation to test longer alkyl chains as Paullin presents suitable alkyl chain formula CnH2n+1. Moreover, Paullin states that any dextran ether compound can be achieved based upon the taught substituents for the target composition and it would be convenient for artisans in the field to make the modifications based on Paullin to obtain the product, especially it would be also advantageous since Umezawa specifies that the dextran based polymer can enhance silicone deposition in the composition when applying to hair. These render obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, nitrogen content, -(OCH2CH2)- group per molecule, and dextran based polymer amount in the composition overlap with those taught in prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 10 and 11 further, the claims are interpreted as process of using the composition, and the enhancement of silicone deposition is a result or property of the composition that has been taught by prior art as established above. MPEP 2112.02. II states “ The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957). However, when the claim recites using an old composition or structure and the "use" is directed to a result or property of that composition or structure, then the claim is anticipated . In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978)”; and "While the references do not show a specific recognition of that result, its discovery by appellants is tantamount only to finding a property in the old composition." 363 F.2d at 934, 150 USPQ at 628 (emphasis in original)). For this instance, because prior art already teaches using the composition for hair treatment and thus the process of using is already taught by prior art; further, prior art teaches the instant shampoo composition being used for enhancement of silicone stability and emulsifying in hair formulations, the result of silicone deposition enhancement would necessarily present in prior art.
Claim 3 is rejected under 35 U.S.C. 103) as being unpatentable over Umezawa et al. (JP2000159642, 06/13/2000, IDS of 08/14/2023; translated tables in record of 10/21/2025; Machine translation relied upon below; attached copy with paragraph #, in record of 10/21/2025), in view of Paullin et al. (US20180237816, 08/23/2018) as applied to claims 1-2 and 4-11 above, further in view of Jachowicz (IFSCC, Cosmetic raw material analysis and quality, 2004, in record of 10/21/2025).
Umezawa and Paullin combined teaching teaches shampoo formulation comprising water (dermatologically acceptable vehicle), coconut oil fatty acid amidopropyl betaine (dermatologically acceptable hair cleaning surfactant), dimethylpolysiloxane (dermatologically acceptable silicone), O-[2-hydroxy-3(trimethylammonio) propyl]-dextran chloride having a molecular weight of approximately 100,000 and a nitrogen content of approximately 1.7%, and purified water (dermatologically acceptable vehicle), and the dextran polymer can be modified to contain quaternary ammonium groups as instantly claimed along with hydrophobic substituents such as alkyl group with formula CnH2n+1, which can result in C12-18 carbon numbers as discussed and applied to claims 1-2 and 4-11 above, and incorporated herein.
For claim 3, Umezawa teaches that the nitrogen content 0.2 to 4%, 0.5 to 3.5 % by weight for the dextran based polymer is suitable, and it is preferable to adjust the substitution ration of the nitrogen content group of formula (2) in a compound so that it may become this range (e.g., [0017]), in addition to O-[2-hydroxy-3(trimethyl-ammonio) propyl]-dextran chloride in Example 6 with nitrogen content of 1.7%. The amount ranges overlap with nitrogen content range 0.5 to 4.0 % in instant claim 3.
Umezawa and Paullin combined does not teach the nitrogen content is measured by Kjeldahl method.
Jachowicz teaches that both the Kjeldahl and Dumas methods are used to determine the nitrogen content in cosmetic raw materials (Title and Page 16, Section 2.1.1.3), corresponding to instant claim 3. The Kjeldahl method is specifically intended for the determination of the nitrogen content in nitrogen-containing polymers and is highly efficient at converting organic nitrogen into NH4+ in difficult to digest materials, whereas the Dumas method utilizes combustion to convert all nitrogen samples, which would include inorganic nitrogen fractions (Page 16, Section 2.1.1.3).
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate Kjeldahl method for nitrogen content measurement. Since Umezawa already teaches nitrogen content range, it would have motivated artisans in the field to follow Jachowicz teaching to use the Kjeldahi method, especially because Jachowicz teaches that the Kjeldahl method to determine the nitrogen content is intended for use with nitrogen-containing polymers in cosmetic raw materials and is highly efficient, an artisan in the field would be motivated to implement the method for reasonable expectations of success for the dextran polymer taught by Umezawa and Paullin. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The nitrogen content range overlap with those taught by prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Terminal Disclaimer/Nonstatutory Double Patenting
Terminal disclaimer, filed and approved on 01/13/2026, is in record for App. No. 17/795127, No. 17/798213, No. 18/260055, No. 18/263980, No. 17/794365, No. 18/847697, No. 18/264080, No. 18/261515, No. 17/276336, No. 17/796029, No. 18/728475, No. 17/802562, and No. 18/847701.
Response to Arguments
Applicant’s remarks/arguments filed on 05/11/2026 have been fully considered.
Applicant asserts that prior art Umezawa or Paullin, does not disclose, explicitly mention, or exemplify using hydrophobic substituent having 12 to 18 carbon atoms; Paullin indicates a variety of organic groups for substitution on dextran while alkyl being one of these; Paullin exemplifies C1-C10 alkyl groups and never defines n in CnH2n+1, which generally would be understood as shorter alkyl groups.
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what
the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686
F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012). For this instance, Umezawa combined with Paullin sets the ground of 103 rejections as shown above in this office action.
Paullin explicitly teaches alkyl group can be the organic substituent group on the dextran, and exemplifies C1-C10 alkyl group as hydrophobic substituent. The teaching is not limited to examples. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Paullin does not define n in CnH2n+1, however, as known in the field of art, it encompasses the claimed carbon range. There is no teaching or suggestion that the alkyl group is limited to shorter alkyl groups as applicant alleges. Moreover, as discussed in office action, Paullin states that any dextran ether compound can be achieved based upon the taught substituents for the target composition and it would be convenient for artisans in the field to make the modifications based on Paullin to obtain the product, especially it would be also advantageous since Umezawa specifies that the dextran based polymer can enhance silicone deposition in the composition when applying to hair. Furthermore, because combined prior art teaches the formulation, the beneficial technical effect resulted from the formulation is the property or intended use of the formulation, and therefore, it would necessarily present in prior art, or capable of being achieved by prior art.
Applicant asserts that Paullin [0216] does not support for using higher alkyls because this paragraph discusses a distinct surfactancy boosting polymer having hydrophilic and hydrophobic properties, and it would in no way suggest any benefit from higher alkyls on the dextran viscosity modifier.
This argument has found persuasive. The recitation has been taken out of the office action.
Applicant asserts that nothing in references discloses or suggests the improvement of enhanced silicon deposition as in instant claims 10 and 11.
As presented in office action above, claims 10 and 11 contain new matter. Further, prior art teaches silicone deposition enhancement by applying the dextran polymer. Moreover, claims 10 and 11 are interpreted as process of using the known composition which has been taught by prior art, the silicone deposition enhancement as the result of the process of using, would necessarily present in prior art. The most relevant paragraphs are copied below for reference:
For claims 10 and 11, Umezawa teaches that silicone derivatives are used in hair cosmetics as an oil reservoir component which gives smoothness; however, it cannot form a stable emulsion dispersion system easily [0002]. Umezawa specifies that a silicone derivative paired with the specific dextran polymer as discussed above can exert a synergistic effect, making it possible to emulsify and disperse the silicone derivative very stably for a satisfactory emulsification dispersion system (e.g., [0003];[0005]), indicating that the silicone deposition on hair would be successful in the stable emulsion dispersion system, corresponding to silicone deposition being enhanced by the dextran polymer as instantly claimed. Umezawa specifies that when applied formulation examples 1-10 onto hair and comparative examples 1-3 during a test method, the application of exemplary formulations with cationic polymer compound resulted in very good dispersion stability and gave a very good finish feel after washing the hair when compared to a standard sample [0024-0028], indicating the invented hair composition forms stable emulsification and dispersed system, and also gives excellent feel after shampoo the hair [0022].
Regarding claims 10 and 11 further, the claims are interpreted as process of using the composition, and the enhancement of silicone deposition is a result or property of the composition that has been taught by prior art as established above. MPEP 2112.02. II states “ The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957). However, when the claim recites using an old composition or structure and the "use" is directed to a result or property of that composition or structure, then the claim is anticipated . In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978)”; and "While the references do not show a specific recognition of that result, its discovery by appellants is tantamount only to finding a property in the old composition." 363 F.2d at 934, 150 USPQ at 628 (emphasis in original)). For this instance, because prior art already teaches using the composition for hair treatment and thus the process of using is already taught by prior art; further, prior art teaches the instant shampoo composition being used for enhancement of silicone stability and emulsifying in hair formulations, the result of silicone deposition enhancement would necessarily present in prior art.
Applicant asserts that prior art does not provide motivation for a skilled worker to modify the alkyls to C12-18 for the beneficial technical effect as present applicants discovered.
Prior art teaches the formulation including the dextran polymer with the claimed substituents as presented above in this office action, and the beneficial technical effect would obviously be the outcome of applying the known formulation. The most relevant paragraph is copied below regarding the motivation:
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate hydrophobic substituent group with guidance on carbon numbers based on teaching of Paullin into the composition taught by Umezawa to arrive at current invention. Because Umezawa already contains the dextran polymer used for enhancement of silicone stabilization and emulsification when applied onto hair in hair formulations, which constitutes hydrophilic positively charged quaternary ammonium substituent together with hydrophobic substituent as low alkyl group, it would provide artisans motivation to test longer alkyl chains as Paullin presents suitable alkyl chain formula CnH2n+1. Moreover, Paullin states that any dextran ether compound can be achieved based upon the taught substituents for the target composition and it would be convenient for artisans in the field to make the modifications based on Paullin to obtain the product, especially it would be also advantageous since Umezawa specifies that the dextran based polymer can enhance silicone deposition in the composition when applying to hair. These render obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Please refer to the entire office action as a complete response to the remarks/arguments.
Conclusion
Claims 1-11 are rejected.
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/DX.Z./Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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