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 . Claims included in prosecution are claims 1 and 8-23.
Previous Rejections
Applicants' arguments, filed 7/21/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
1. Claims 1 and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 18/549,858 in view of Elsen-Wahrer et al. (US 2017/0189314, Jul. 6, 2017) (hereinafter Elsen-Wahrer).
The pending claims differ from the copending claims insofar as reciting at least one compound containing at least one hydroxyl function.
However, Elsen-Wahrer discloses treatment compositions and processes related thereto for treating keratinous substrates, in particular for hair-care comprising a polycarbodiimide and carboxysilicone polymer (Abstract). The composition may include other suitable ingredients for hair treatment or hair repair. For example, known solvents and/or additives may be utilized in addition to the polycarbodiimide and carboxysilicone polymers to provide additional benefits to the composition (¶ [0047]). Suitable solvents for treatment of keratinous fibers. include organic solvents (¶ [0115]). Suitable organic solvents include ethanol (i.e., compound containing at least one hydroxyl function) (¶ [0117]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated ethanol into the pending claims since it is a known and effective additive for use in hair care compositions comprising polycarbodiimide as taught by Elsen-Wahrer.
This is a provisional nonstatutory double patenting rejection.
2. Claims 1 and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25, 28-32, 34, 35, 38-40, and 42-45 of copending Application No. 17/778,353 in view of Elsen-Wahrer et al. (US 2017/0189314, Jul. 6, 2017) (hereinafter Elsen-Wahrer).
The pending claims differ from the copending claims insofar as reciting at least one compound containing at least one hydroxyl function and at least one associative polymer.
However, Elsen-Wahrer discloses treatment compositions and processes related thereto for treating keratinous substrates, in particular for hair-care comprising a polycarbodiimide and carboxysilicone polymer (Abstract). The composition may include other suitable ingredients for hair treatment or hair repair. For example, known solvents and/or additives may be utilized in addition to the polycarbodiimide and carboxysilicone polymers to provide additional benefits to the composition (¶ [0047]). Suitable solvents for treatment of keratinous fibers. include organic solvents (¶ [0115]). Suitable organic solvents include ethanol (i.e., compound containing at least one hydroxyl function) (¶ [0117]). Suitable additives include polymeric rheology modifiers (¶ [0130]). Suitable polymeric rheology modifiers include anionic polymers, for example associative polymers (¶ [0189]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated an associative polymer and ethanol into the pending claims since they are known and effective solvents/additives for use in hair care compositions comprising polycarbodiimide as taught by Elsen-Wahrer.
This is a provisional nonstatutory double patenting rejection.
3. Claims 1 and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-22 of copending Application No. 18/549,692 in view of Elsen-Wahrer et al. (US 2017/0189314, Jul. 6, 2017) (hereinafter Elsen-Wahrer).
The pending claims differ from the copending claims insofar as reciting at least one compound containing at least one hydroxyl function.
However, Elsen-Wahrer discloses treatment compositions and processes related thereto for treating keratinous substrates, in particular for hair-care comprising a polycarbodiimide and carboxysilicone polymer (Abstract). The composition may include other suitable ingredients for hair treatment or hair repair. For example, known solvents and/or additives may be utilized in addition to the polycarbodiimide and carboxysilicone polymers to provide additional benefits to the composition (¶ [0047]). Suitable solvents for treatment of keratinous fibers. include organic solvents (¶ [0115]). Suitable organic solvents include ethanol (i.e., compound containing at least one hydroxyl function) (¶ [0117]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated ethanol into the pending claims since it is a known and effective additive for use in hair care compositions comprising polycarbodiimide as taught by Elsen-Wahrer.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Regarding the rejection of claims 1 and 8-23 on the grounds of non-statutory double patenting, Applicants‘ arguments and the amendment have been fully considered and deemed unpersuasive for the reasons that follow.
Applicants have not submitted arguments or documentation (i.e. terminal disclaimer) in response to the double patenting rejection(s). Applicant requested that the double patenting rejection(s) recited above be held in abeyance until otherwise allowable subject matter is identified. Therefore, the previous rejection of non-statutory double patenting is maintained.
Conclusion
Claims 1 and 8-23 are rejected.
Claims 2-7 and 24-28 are withdrawn.
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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