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 .
Detailed Action
Restriction/Election
Applicant’s election without traverse of group I, claims 1-10 in the reply filed on 04/20/26 is acknowledged. Applicant’s election of the following species is also acknowledged. Species 1) a specific fatty amine: Stearamidopropyl dimethylamine Claim 1-3 read thereon Species 2) a specific fatty substance with a melting point above 25°C: Cetyl esters Claim 4-5 and 7-8 read thereon Species 3) a specific fatty substance with a melting point below or equal 25 °C: Isopropyl myristate.
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/election, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/20/26.
Claim Rejections - 35 USC § 112, indefiniteness
The following is a quotation of 35 U.S.C. 112(b):
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.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 and 12 are 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 pre-AIA the applicant regards as the invention.
Claims 1 and 4-5 recite the limitation “including” which appears to be a preferred embodiment, therefore, the claims 1 and 4-5 are indefinite. Claims 2-4, 6-10 and 12 recite “preferably”, “ more preferentially”, “in particular”, “such as” or “better still” which makes the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 12 provides for the use of a composition for conditioning keratin fibres, in particular human keratin fibres such as the hair but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. V. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35
U.S.C. 102 that form the basis for the rejections under this section made in this
Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rubin et al. (US PG Pub. 2017/0354585 A1).
Rubin et al. discloses (see tables 2-4 and claim 13) a cosmetic composition comprising (i) one or more fatty amines containing at least one C₈ -C₃₀ hydrocarbon- based chain (stearamidopropyl dimethylamine), at 1 to 10% in table 3-4 (ii) at least 6% by weight, relative to the total weight of the composition, of one or more fatty substances with a melting point above 25°C, different from the fatty amines (i) (cetearyl alcohol), and (iii) one or more fatty substances with a melting point below or equal to 25°C, different from the fatty amines (i) (C13-C15 alkane, squalene), the composition comprising one or more fatty substances with a melting point above 25°C (ii) chosen from esters of a linear or branched, saturated carboxylic acid including at least 10 carbon atoms and of a linear or branched, saturated monoalcohol, including at least 10 carbon atoms (cetyl palmitate, Shea butter cetyl esters), see tables 2-4 and claim 13. Use of isopropyl myristate is taught in [0016], reads on subsection iii of claim 1. The ratio between subsection i and ii is 1 as shown in tables 3-4. Claim 12 is drawn to use of a composition, and the body of the claim recites a structurally complete invention. Furthermore, the intended use does not appear to result in a structural difference between the claimed invention and the prior art. (The composition will be capable of being used for conditioning keratin fibres). As such, this use is not considered to further limit the claim and only states an intended use. See MPEP 2111.02(11).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Rubin et al. (US PG Pub. 2017/0354585 A1).
Rubin et al. discloses (see tables 2-4 and claim 13) a cosmetic composition comprising (i) one or more fatty amines containing at least one C₈ -C₃₀ hydrocarbon- based chain (stearamidopropyl dimethylamine), at 1 to 10% in table 3-4 (ii) at least 6% by weight, relative to the total weight of the composition, of one or more fatty substances with a melting point above 25°C, different from the fatty amines (i) (cetearyl alcohol), and (iii) one or more fatty substances with a melting point below or equal to 25°C, different from the fatty amines (i) (C13-C15 alkane, squalene), the composition comprising one or more fatty substances with a melting point above 25°C (ii) chosen from esters of a linear or branched, saturated carboxylic acid including at least 10 carbon atoms and of a linear or branched, saturated monoalcohol, including at least 10 carbon atoms (cetyl palmitate, Shea butter cetyl esters), see tables 2-4 and claim 13. Use of isopropyl myristate is taught in [0016], reads on subsection iii of claim 1. The ratio between subsection i and ii is 1 as shown in tables 3-4. Since the art teaches the generic amounts of the components in tables 2-4, it would have been obvious to one of ordinary skill to have manipulated the amounts of the components by performing experimental manipulations for optimum cosmetic properties.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SNIGDHA MAEWALL whose telephone number is (571)272-6197. The examiner can normally be reached Monday thru Friday; 8:30 AM to 5PM.
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/SNIGDHA MAEWALL/Primary Examiner, Art Unit 1612
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