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 .
Status
Applicant’s response dated 22 April 2026 to the previous Office action dated 11 February 2026 is acknowledged. Pursuant to amendments therein, claims 1-22 are pending in the application.
The drawing objections made in the previous Office action are withdrawn in view of applicant’s amendments canceling such drawing.
The rejections under 35 U.S.C. 112 made in the previous Office action are withdrawn in view of applicant’s claim amendments, with the exception of the rejection of claim 7 which is maintained as set forth below.
New rejections under 35 U.S.C. 112 of claims 2 and 22 are made herein in view of applicant’s claim amendments.
The rejection under 35 U.S.C. 101 of claim 22 made in the previous Office action is withdrawn in view of applicant’s claim amendments, but a new (modified) rejection under 35 U.S.C. 101 of claim 22 is made herein in view of applicant’s claim amendments.
The rejections under 35 U.S.C. 101/112 of claim 23 made in the previous Office action are withdrawn in view of applicant’s claim amendments cancelling claim 23.
The rejections under 35 U.S.C. 103 made in the previous Office action are withdrawn in view of applicant’s claim amendments, but new rejections under 35 U.S.C. 103 are made herein in view of applicant’s claim amendments.
Response to Arguments
Applicant's arguments filed 22 April 2026 regarding the rejection of claim 22 under 35 U.S.C. 101 have been fully considered but they are not persuasive, in that claim 22 encompasses a human organism because it is directed to a conditioner composition on hair (i.e., directed to a combination of conditioner and hair, as opposed to for example water-reduced conditioner composition used according to the method of claim 21) applied according to claim 21, which according to the broadest reasonable interpretation includes hair naturally remaining as part of a human body since the claim language does not indicate that the hair is isolated or removed from a body, and also given that hair conditioning is typically performed on human hair naturally remaining as part of a human body, and claims encompassing a human organism are patent ineligible under 35 U.S.C. 101 per Section 33(a) of the America Invents Act.
Applicant’s arguments, see remarks page 11, filed 22 April 2026, with respect to obviousness have been fully considered and are persuasive. Therefore, the obviousness rejections have been withdrawn. However, upon further consideration in view of applicant’s claim amendments, a new ground(s) of rejection is made in view of the teachings of Liang (US 2021/0059915 A1; published 04 March 2021) as set forth below.
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 7 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.
Regarding claim 7, the term "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 fails to include all the limitations of claim 1 upon which it depends in that it allows for one or more monoalcohols having from 1 to 7 carbon atoms whereas claim 1 excludes any such monoalcohol.
Claim 22 fails to include all the limitations of claim 21 upon which it depends in that it requires only the “applying” step of claim 21 but not the massaging and/or rubbing step of claim 21, nor the rinsing step of claim 21.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 22 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 22 encompasses a human organism because it is directed to a conditioner composition on hair (i.e., directed to both conditioner and hair, as opposed to for example water-reduced conditioner composition used according to the method of claim 21) applied according to claim 21, which according to the broadest reasonable interpretation may include hair naturally remaining as part of a human body since the claim language does not indicate that the hair is isolated or removed from a body, and also given that hair conditioning is typically performed on human hair naturally remaining as part of a human body.
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.
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.
Claim(s) 1-12, 14, 16-20, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liang (US 2021/0059915 A1; published 04 March 2021).
Regarding claim 1, Liang discloses cosmetic compositions including about 20-84.5 wt% glycols, about 15-50 wt% trihydric alcohols, about 0.1-5 wt% cationic surfactants, and about 0.1-10 wt% fatty alcohols (paragraphs [0031]-[0038]) wherein the composition may have less than 6 wt% water (paragraph [0040]) wherein the composition may be free of monoalcohols having from 1 to 8 carbons (paragraph [0041]) wherein the composition may include conditioner (paragraphs [0115]-[0116]).
Further regarding claim 1, although Liang does not include a specific example including all such elements as discussed above, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make a cosmetic composition including about 20-84.5 wt% glycols and about 15-50 wt% trihydric alcohols (i.e., at least about 35 wt% glycol and trihydric alcohol polyols), about 0.1-5 wt% cationic surfactants, about 0.1-10 wt% fatty alcohols, less than 6 wt% water (i.e., a water-reduced composition), and conditioner (i.e., a conditioner composition) that is free of monoalcohols having from 1 to 8 carbons, with a reasonable expectation of success. Such range of at least about 35 wt% polyols overlaps the claimed range of about 50-95 wt%, such range of about 0.1-5 wt% cationic surfactants overlaps the claimed range of about 1-3 wt%, such range of about 0.1-10 wt% fatty alcohols overlaps the claimed range of about 0.5-10, and such range of less than 6 wt% water overlaps the claimed range of about 3-10 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 2, Liang discloses that the composition may be free of monoalcohols having from 1 to 8 carbons (i.e., 0 wt%) (paragraph [0041]) as discussed above, which is within the claimed range of 0-1 wt%.
Regarding claim 3, Liang discloses that the composition includes about 15-50 wt% trihydric alcohols and about 20-84.5 wt% glycols as discussed above, which overlap the claimed ranges of about 10-65 wt% and about 25-75 wt% respectively, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 4, Liang discloses that the composition includes about 15-50 wt% trihydric alcohols and about 20-84.5 wt% glycols as discussed above, resulting in a weight percentage ratio of trihydric alcohol to dihydric alcohol of about 15:84.5 to about 50:20, or about 0.18:1 to about 2.5:1, which overlaps the claimed range of about 0.4:1 to about 2.3:1, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 5, Liang discloses that the composition includes about 0.1-5 wt% cationic surfactants and about 0.1-10 wt% fatty alcohols as discussed above, resulting in a weight percentage ratio of cationic surfactant to fatty alcohol of about 0.1:10 to about 5:0.1, or about 0.01:1 to about 50:1, which overlaps the claimed range of about 0.1:1 to about 2:1, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 6, Liang discloses that the cosmetic composition is a gel (i.e., forms a gel network) (Example 1 Table 1).
Regarding claim 7, Liang discloses that the trihydric alcohol can be glycerin (paragraph [0016]) and the glycol can be ethylene glycol (abstract), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above with glycerin trihydric alcohol and ethylene glycol dihydric alcohol, with a reasonable expectation of success.
Regarding claim 8, Liang discloses that the trihydric alcohol can be glycerin (paragraph [0016]) and the glycol can be 1,3-propanediol (abstract) wherein the cosmetic composition includes about 15-50 wt% of one or more trihydric alcohols and about 20-84.5 wt% of one or more glycols (paragraphs [0031]-[0038]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above with about 15-50 wt% glycerin trihydric alcohol and about 20-84.5 wt% 1,3-propanediol dihydric alcohol, with a reasonable expectation of success, which overlap the claimed ranges of about 10-65 wt% and about 25-75 wt% respectively, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 9, Liang discloses that the cationic surfactant can be cetrimonium chloride, and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above with cetrimonium chloride (i.e., a C19 mono fatty alkyl tri methyl ammonium compound) as the cationic surfactant therein, with a reasonable expectation of success.
Regarding claim 10, Liang discloses that the fatty alcohol can be lauryl alcohol (paragraph [0070]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above with lauryl alcohol (i.e., a C12 alkyl mono alcohol) as the fatty alcohol therein, with a reasonable expectation of success.
Regarding claim 11, Liang discloses that the composition may include a polyol ester nonionic surfactant (paragraphs [0081], [0084]) such as vegetable oil (paragraph [0108]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above with vegetable oil therein, with a reasonable expectation of success.
Regarding claim 12, Liang discloses that the composition may include about 0.1 to about 3 wt% of a polyol ester nonionic surfactant (paragraphs [0081], [0084]) such as vegetable oil (paragraph [0108]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above with about 0.1-3 wt% vegetable oil therein, with a reasonable expectation of success, which overlaps the claimed range of about 0.1-2 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 14, Liang does not disclose alkoxylated surfactants as required surfactants in the composition thereof, and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above without alkoxylated surfactants therein, with a reasonable expectation of success.
Regarding claim 16, Liang discloses the cosmetic compositions including about 20-84.5 wt% glycols and about 15-50 wt% trihydric alcohols (paragraphs [0031]-[0038]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above including about 20-84.5 wt% glycols and about 15-50 wt% trihydric alcohols (i.e., at least about 35 wt% polyols), with a reasonable expectation of success, which overlaps the claimed range of about 60-95 wt% polyols, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 17, Liang discloses cosmetic compositions including about 0.1-5 wt% cationic surfactants (paragraphs [0031]-[0038]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition including about 0.1-5 wt% cationic surfactant, with a reasonable expectation of success, which overlaps the claimed range of about 1-2 wt% cationic surfactant, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 18, Liang discloses cosmetic compositions including about 0.1-10 wt% fatty alcohols (paragraphs [0031]-[0038]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition including about 0.1-10 wt% fatty alcohols, with a reasonable expectation of success, which overlaps the claimed range of about 1-10 wt% fatty alcohols, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 19, Liang discloses cosmetic compositions including about 0.1-10 wt% of one or more fatty alcohols (paragraphs [0031]-[0038]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition including about 0.1-10 wt% of one or more fatty alcohols, with a reasonable expectation of success, which overlaps the claimed ranges of about 2-6 wt% of two or more fatty alcohols, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 20, Liang discloses that the cosmetic composition may have less than 6 wt% water (paragraph [0040]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to make the cosmetic composition of Liang as discussed above with less than 6 wt% water, with a reasonable expectation of success, which overlaps the claimed range of about 4-10 wt% water, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 22, Liang discloses that the composition is applied to hair (paragraph [0117]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Liang as discussed above and to apply the cosmetic composition of Liang as discussed above to hair, with a reasonable expectation of success. It is noted that claim 22 requires that the composition be applied to hair according to the method of claim 21 but does not require the other steps of claim 21 of massaging/rubbing and rinsing.
Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liang as applied to claims 1-12, 14, 16-20, and 22 above, and further in view of Schulze et al. (WO 2006/000258 A1; published 05 January 2006; of record; citations herein to English machine translation made 06 February 2026; of record).
Liang is relied upon as discussed above.
Liang does not disclose an anti-dandruff agent as in claim 13.
Regarding claim 13, Schulze et al. discloses hair conditioners (title; abstract) wherein combination preparations have been developed to reduce the expense of the usual multi-stage process (page 2 third to last paragraph) wherein preparations additionally contain active substances (page 2 second to last paragraph) wherein anti-dandruff agents such as climbazole can be included as active ingredients (pages 25-26).
Further regarding claim 13, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Liang and Schulze et al. by adding the climbazole of Schulze et al. to the hair conditioning composition of Liang as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to reduce the expense of the usual multi-stage process by making the hair conditioning composition a multi-stage composition that combines conditioner and anti-dandruff active substance as suggested by Schulze et al.
Liang does not disclose a direct dye as in claim 15.
Regarding claim 15, Schulze et al. discloses hair conditioners (title; abstract) wherein combination preparations have been developed to reduce the expense of the usual multi-stage process (page 2 third to last paragraph) wherein preparations additionally contain active substances (page 2 second to last paragraph) wherein direct dyes such as azo dyes can be included (page 26 third to last paragraph).
Further regarding claim 15, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Liang and Schulze et al. by adding the azo dye direct dye of Schulze et al. to the hair conditioning composition of Liang as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to reduce the expense of the usual multi-stage process by making the hair conditioning composition a multi-stage composition that combines conditioner and direct dye for hair as suggested by Schulze et al.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liang as applied to claims 1-12, 14, 16-20, and 22 above, and further in view of Lee et al. (US 2020/0206111 A1; published 02 July 2020; of record).
Liang is relied upon as discussed above, and Liang discloses that the composition is applied to hair as in regular shampooing and/or conditioning (paragraph [0117]).
Liang does not disclose all steps as in claim 21.
Lee et al. discloses hair care and conditioning compositions (title) wherein the compositions are applied to wet or damp hair and massaged into hair to ensure uniform coverage then rinsed with water (paragraph [0014]) wherein the composition can be massaged into hair for about 10 seconds (paragraph [0172]), which corresponds to the claimed method of conditioning hair comprising applying either an undiluted portion or a water diluted portion of a water-reduced conditioner composition of claim 1 to the hair, massaging and/or rubbing the portion throughout the hair either as an undiluted portion or as a portion diluted with water for at least about 10 seconds, and thereafter rinsing the hair with a portion of water. It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Liang and Lee et al. by applying the conditioning composition of Liang as discussed above to wet or damp hair and massage it into the hair for about 10 seconds to ensure uniform coverage and then to rinse the hair with water as suggested by Lee et al., with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to use/apply the conditioner composition of Liang to hair according to a known method of using/applying conditioner to hair as suggested by Lee et al., given that Liang suggests applying the conditioner composition to hair as in regular conditioning.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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