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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-3 and 5-8), drawn to a cosmetic composition, in the reply filed on March 26th, 2026 is acknowledged. Claims 4 and 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
The requirement is deemed proper and therefore made FINAL.
Applicant’s election without traverse of Group 1 species C, claim 8, in the reply filed on March 26th, 2026 is acknowledged. Claims withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant’s added new claims 21-23.
Claims 1-3, 5, 8, and 21-23 are pending and were examined on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) filed on March 20th, 2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because US patent document 1 is listed with a typographical error in its number; the number should be 20180185268. Regarding non-patent literature document 1, text is cut off on the right-hand margin of page 2 of 3. Non-patent literature document 2 is missing from the file wrappers of the instant application and its parent (17173400). Regarding non-patent literature document 7 (the International Search Report for PCT/IB2021/051129), text is cut off from the bottom of this document. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
The examiner retrieved a copy of the International Search Report for PCT/IB2021/051129, included it in the file wrapper, and cited it on the PTO-892 form.
The information disclosure statement (IDS) submitted on July 11th, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) filed December 8th, 2025 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because U.S. Patent Document 1 is listed with a typographical error in its number. Its number should be listed as 20080286390. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
The information disclosure statement (IDS) submitted on March 26th, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Specification
The use of the terms Kate McLeod, Lush, SMA, Lanette, Biochemica, Lipex, SP, Kristal, and Cargill, each of which is a trade name or a mark used in commerce, has been noted in this application. Each term should be accompanied by the generic terminology; furthermore, each term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The examiner interprets the phrases “personal care composition” (dependent claim 2) and “personal care cosmetic composition” (dependent claim 5) as reciting the “cosmetic composition” recited in independent claim 1. The examiner interprets claim 1, line 4, as reciting an oil (5-15%). The examiner interprets “white cocoa butter” (claim 21) as cocoa butter, as broadly understood in the art, without evidence to the contrary.
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.
The term “about” in claim 1 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The percentages of a solid butter, semi-solid butter, and fatty alcohol recited in claim 1 are rendered indefinite by the term "about".
The term “5-15” in claim 1 is a relative term which renders the claim indefinite. The term “5-15” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The quantity of the oil component of the composition claimed in claim 1 is rendered indefinite by the use of the term "5-15" without an appropriate unit, such as a percentage unit.
The term “white” in claim 21 is a relative term which renders the claim indefinite. The term “white” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The scope of cocoa butters that meet the limitations of claim 21 is rendered indefinite by the use of the term "white". It is unclear whether "white cocoa butter" refers to cocoa butter as broadly understood in the art, or if the limitation "white" implies that the claimed cocoa butter is materially distinct from cocoa butter as broadly understood in the art.
Claims 2 and 5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation "personal care composition" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "personal care cosmetic composition" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-3, 5, 8, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over the Solid Conditioner Boho Bar by the Bonbon Group (Mintel Record ID 6926125, published October 2019; non patent literature document 9 on the IDS received on March 20th, 2024), abbreviated "Bonbon".
Claim 1 recites “A cosmetic composition comprising: about 52% to about 65% of a solid butter; about 3% to about 20% of a semi-solid butter; an oil (5-15); and about 10% to about 30% of a fatty alcohol”. Claim 2 recites “The cosmetic composition of claim 1, wherein the personal care composition is solid at room temperature”. Claim 3 recites “The cosmetic composition of claim 1, further comprising at least one additional component selected from the group consisting of natural actives, binders, colorants, extracts, fillers, fragrances, opacifiers, and mixtures thereof”. Claim 5 recites “The cosmetic composition of claim 1, wherein the semi-solid butter is provided in a lesser weight percent of the personal care cosmetic composition than the solid butter”. Claim 8 recites “The cosmetic composition of claim 1, wherein the fatty alcohol is selected from the group consisting of the fatty alcohols listed in the table below: (see the table recited in instant claim 8, which includes, but is not limited to, cetyl and stearyl alcohols). Claim 21 recites “The cosmetic composition of claim 1, wherein the solid butter is a white cocoa butter”. Claim 22 recites “The cosmetic composition of claim 1, wherein the semi-solid butter is a shea butter”.
Bonbon recites a solid hair conditioner comprising, but not limited to, the following ingredients: cetyl alcohol, cetearyl alcohol, fragrance, jojoba seed oil, cocoa seed butter, and shea butter (pages 1 and 2 of 4; instant claims 1-3, 8, 21, and 22). Cocoa seed butter is broadly understood in the art as having a white appearance. Cetearyl alcohol is broadly understood in the art as a mixture of cetyl and stearyl alcohols. Cocoa seed butter maps to a solid butter (instant specification paragraph [0032]; instant claims 1 and 21), shea butter to a semi solid butter (instant specification paragraph [0031]; instant claims 1 and 22), and cetyl alcohol and each component of cetearyl alcohol to a fatty alcohol (instant specification paragraphs [0025]-[0027]; instant claim 1). Bonbon also recites the cosmetic utility of the conditioner: “a nourishing and caring conditioner to give soft, nurtured hair” (page 1 of 4; instant claims 1-3, 5, and 8).
As of record above, Bonbon recites a solid cosmetic composition. A solid butter has an inherent solid consistency. Therefore, one of skill in the art would have a reasonable expectation of success at making a solid cosmetic composition, as recited by Bonbon, with a solid butter comprising greater than 50% of the composition (instant claim 1), and therefore at a greater weight percent than the semi-solid butter (instant claim 5).
Although the weight percentages of solid butter, semi-solid butter, oil, and a fatty alcohol (instant claims 1 and 5) are not explicitly recited by Bonbon; they are obvious to one of skill in the art over routine optimization. One of skill in the art could have weighed different ingredients before combining them, and adjusted the weights of different ingredients to make a solid composition, as recited Bonbon, of record above. One of skill in the art could also vary the weight percentages of these ingredients among test compositions and select a composition based on the observation of physical changes in the hair, skin, or other bodily material to which the compositing is applied (Bonbon, page 1 of 4). Therefore, the weight percentages solid butter, semi-solid butter, oil, and a fatty alcohol recited in instant claims 1 and 5 are obvious to one of skill in the art over routine optimization.
Bonbon is relied upon for the reasons discussed above. If not expressly taught thereby, based upon the overall beneficial teachings provided by the references with respect to providing the solid consistency and utility for conditioning hair, the adjustments of particular conventional working conditions (e.g., the selection from among known components and determining one or more suitable ranges (amounts, proportions, ratios thereof) in which to provide the solid hair conditioner), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the
skilled artisan.
From the teachings of Bonbon, the invention as a whole, drawn to a solid cosmetic composition as described in Claims 1, 2, and 5 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing Applicants’ composition with the composition of the prior art, the burden is on applicant to show
a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claims 1-3, 5, 8, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over the Solid Conditioner Boho Bar by the Bonbon Group (Mintel Record ID 6926125, published October 2019; non patent literature document 9 on the IDS received on March 20th, 2024), abbreviated "Bonbon" as applied to claims 1-3, 5, 8, and 21-22 above, and further in view of Burgo (US 20100330004 A1).
The teachings of the claims and the cited reference(s) are of record above.
Claim 23 recites “The cosmetic composition of claim 1, wherein the oil is a sunflower oil”.
Bonbon recites a hair conditioner composition. Although Bonbon does not explicitly recite a composition comprising sunflower oil, Burgo recites hair conditioner compositions comprising sunflower seed oil (Example 7, Tables B and G). Oils such as sunflower oil are easily to spread over solid materials because they are in liquid phase; they are also hydrophobic (instant specification [0028]). These properties make oils useful for spreading over hair and providing a hydrophobic barrier that traps moisture in the hair. Therefore, it would be obvious to one of skill in the art to substitute the jojoba oil recited by Bonbon with the sunflower oil recited by Burgo as the oil in the conditioner composition, with the predictable result of a hair conditioner composition that helps hair retain moisture.
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 1-3, 5, 8, and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 11969489 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following similarities.
For both the instant and reference claims cited in the analysis below, claim 1 is independent and the other claims are dependent from claim 1.
Instant claims 1 and 21-23, and reference claim 1, each recite a cosmetic composition comprising a solid butter, a semi-solid butter, an oil, and a fatty alcohol in overlapping percentage ranges for each component, if applicable; percentages are not applicable to an oil in this analysis, because no oil percentage is recited in the reference claim 1.
Instant claim 2 and reference claim 2 both recite the cosmetic composition of claim 1, wherein the personal care composition is solid at room temperature.
Instant claim 3 and reference claim 3 both recite a cosmetic composition of claim 1, further comprising at least one additional component selected from the group consisting of natural actives, binders, colorants, extracts, fillers, fragrances, opacifiers, and mixtures thereof.
Instant claim 5 and reference claim 1 both recite a cosmetic composition wherein the semi-solid butter is provided in a lesser weight percent of the personal care cosmetic composition than the solid butter.
Instant claim 8 and reference claim 1 both recite a cosmetic composition wherein the fatty alcohol is selected from the group consisting of tert-Butyl alcohol, tert-Amyl alcohol, 3-Methyl-3-pentanol, 1-Heptanol (ethanthic alcohol), 1-Octanol (capryl alcohol), Pelargoic alcohol (1-nonanol), 1-Decanol (decyl alcohol, capric alcohol), Undecyl alcohol (1-undecanol, decanol, Hendecanol), Lauryl alcohol (dodecanol, 1-dodecanol), Tridecyl alcohol (1-tridecanol, tridecanol, isotridecanol), Myristyl alcohol (1-tetradecanol), Pentadecyl alcohol (1-pentadecanol, pentadecanol), Cetyl alcohol (1-hexadecanol), Palmitoleyl alcohol (6-9-hexadecen-1-ol), Heptadecyl alcohol (1-n-heptadecanol, heptadecanol), Stearyl alcohol (1-octadecanol) Oleyl alcohol (1-octadecenol), Nonadecyl alcohol (1-nonadecanol), Arachidyl alcohol (1-eicosanol), Heneicosyl alcohol (1-heneicosanol), Behenyl alcohol (1-docosanol), Erucyl alcohol (cis-13-docosen-1-ol), Lignoceryl alcohol (1-tetracosanol), Ceryl alcohol (1-hexacosanol), 1-Heptacosanol Montanyl alcohol, cluytyl alcohol, 1-octacosanol, 1-Nonacosanol, Myricyl alcohol, melissyl alcohol, 1-triacontanol, 1-Dotriacontanol (Lacceryl alcohol), Geddyl alcohol (1-tetratriacontanol) (see the tables in instant claim 8 and reference claim 1).
The claims of the pending application and the issued patent are of overlapping scope and not patently distinct.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert F Spaine whose telephone number is (571)272-9099. The examiner can normally be reached 8:00 AM - 4:00 PM United States Eastern Time, Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at (571) 272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/
Supervisory Patent Examiner, Art Unit 1655
Prosecution Insights