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 1-11 and 15-18 in the reply filed on 06/25/2026 is acknowledged.
Claims 12 and 14 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/25/2026.
The claims are examined in view of the following species election:
N,N,N-Trimethyl-2-((2-octyldodecyl)oxy)-2-oxoethan-1-aminium methanesulfonate as the cationic conditioning surfactant.
Status of the Claims
Claim 13 has been cancelled. New claim 19 has been added.
Claims 1, 6-10, 12 and 24-29 are pending and currently under examination.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been received and placed in the file.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Initialed and dated copies of Applicants’ information disclosure statements (IDS) filed on 09/20/2024, 04/18/2025, 05/07/2026, and 07/14/2026 are attached to the instant Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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.
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.
Claims 1-2, 4-11 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Barfoot et al. (WO2020126660A1, Published 06/05/2020; cited in the IDS filed 09/20/2024) in view of Banks et al. (US20050232892A1, Published 10/20/2005).
The claims are examined in view of the following species election:
N,N,N-Trimethyl-2-((2-octyldodecyl)oxy)-2-oxoethan-1-aminium methanesulfonate as the cationic conditioning surfactant.
Applicant’s Invention
The claims are drawn to a composition comprising:(i) 0.01 to 10 wt % of a branched cationic conditioning surfactant having structure 1:
PNG
media_image1.png
173
266
media_image1.png
Greyscale
wherein: R1 and R2 comprise linear alkyl chains, saturated or unsaturated, with carbon-carbon chain lengths of from C4 to C20; R3 comprises an alkyl chain having a carbon-carbon chain length of from C1 to C4; R4 comprises a proton or an alkyl chain having a carbon-carbon chain length of from C1 to C4; and n has a range of from 0 to10; m has a range of from 1 to 6; Xe is an organic or inorganic anion; (ii) 0.1 to 10 wt % of a linear fatty material comprising linear carbon-carbon chains, selected from a fatty alcohol, an alkoxylated fatty alcohol, a fatty acid and mixtures thereof; (iii) 0.01 to 5 wt % of a modified clay; and(iv) a particulate benefit agent selected from conditioning actives; wherein the molar ratio of branched cationic surfactants (i) to linear fatty material (ii) is in the range of from 1:20 to 1:1.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1, 11, and 15-17 Barfoot teaches a composition comprising: (i) 0.01 to 10 wt % of a linear, cationic conditioning surfactant; (ii) 0.1 to 10 wt % of a linear fatty material; (iii) a particulate benefit agent selected from conditioning actives, scalp actives, encapsulated fragrance, emulsified fragrance, and mixtures thereof; (iv) 0.01 to 5 wt %, at 100 % active, of a branched cationic co-surfactant, selected from structure 1 , structure 2, structure 3 and mixtures thereof
PNG
media_image2.png
127
614
media_image2.png
Greyscale
wherein: • R1, R2, R5 and R6 comprise linear alkyl chains, saturated or unsaturated, with carbon- carbon chain lengths of from C4 to C20, preferably from C6 to C18; • R3 and R4 comprise linear or branched alkyl chains, saturated or unsaturated, with carbon-carbon chain lengths of from C6 to C22 ; preferably from C6 to C12 • n and m have a range of from 0 to 10, preferably selected from 0 and 1 ; • p has a range of from 1 to 6, preferably selected from 1 and 2; • R7 comprises an alkyl chain having a carbon-carbon chain length of from C1 to C4, preferably C1 to C2; • R8 comprises a proton or an alkyl chain having a carbon-carbon chain length of from C1 to C4, preferably C1 to C2; and • X is an organic or inorganic anion; wherein the molar ratios of branched cationic co-surfactants (iv) to linear cationic surfactants (i) are in the range of from 1:20 to 1 : 1 (claim 1). Barfoot also teaches in example 3 the composition in accordance with the invention, wherein the composition comprises cetearyl alcohol (i.e., linear fatty material), N,N,N-Trimethyl-2-((2-octyldodecyl)oxy)-2-oxoethan-1-aminium methanesulfonate (i.e., branched cationic surfactant), and Xiameter MEM-7134 (i.e., particulate benefit agent) (page 20, table).
Regarding claim 4, Barfoot teaches the particulate benefit agent is selected from conditioning actives, wherein the conditioning actives are silicone emulsions (page 10, line 9).
Regarding claim 5, Barfoot teaches the compositions of the invention can contain emulsified droplets of a silicone conditioning agent, which is preferably not hydrophobically modified, selected from dimethicone, dimethiconol, amodimethicone and mixtures thereof (page 13, lines 2-3).
Regarding claim 6, Barfoot teaches the compositions of the invention can contain emulsified droplets of a silicone conditioning agent, which is preferably not hydrophobically modified (page 12, lines 29-30).
Regarding claims 7-8, Barfoot teaches the total amount of silicone (i.e., particulate benefit agent) is preferably from 0.1 wt % to 10 wt % of the total composition more preferably from 0.1 wt % to 5 wt % (page 14, lines 12-13).
Regarding claim 9, Barfoot teaches most preferably, X- comprises an anion selected from a halide, a methanesulfonate group and an ethanesulphonate group (page 16, line 11).
Regarding claim 18, Barfoot teaches preferred silicone emulsions do not comprise a hydrophobic modification, preferably the silicone emulsion is not a myristyloxyl modified silicone (page 10, lines 21-22).
Regarding claim 19, Barfoot teaches examples of suitable materials conforming to structure 3 are N,N,N-trimethyl-2-((2- octyldodecyl)oxy)-2-oxoethan-1-aminium methanesulphonate (page 17, lines 1-2).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Barfoot does not teach 0.01 to 5 wt% of a modified clay; wherein the modified clay is modified with modifiers selected from cationic surfactants, modified celluloses and modified guars. However this deficiency is cured by Banks et al.
In the analogous art of hair conditioning compositions, Banks teaches a hair conditioning composition with a pH of 8 or less comprises:(a) 0.01% to 10% by weight of one or more cationic surfactants; (b) 0.01% to 10% by weight of one or more fatty alcohols having from 18 to 22 carbon atoms; (c) 0.001% to 5% by weight of a hydrophobically modified clay (abstract). Banks also teaches the present invention is based on the surprising finding that a hydrophobically modified clay can provide hair conditioning benefits in certain hair conditioning compositions. Hair conditioning benefits that can be provided by the compositions of the invention can be imparted to wet and/or dry hair and include one or more of smoothness, shine, ease of combing, style retention, hold, volume, coated feel, bounce, lift, clean feeling, hold, reduced flyaway, reduced dryness, coated feel, fineness, moisturized and powdery but clean. These one or more properties can be improved compared to otherwise identical compositions that do not contain the hydrophobically modified clay (paragraph [0020]). Banks further teaches a particularly preferred material is bentonite (i.e., clay) modified with Quaternium-18 (paragraph [0063]), wherein Quaternium-18 is a cationic surfactant (paragraph [0087]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add 0.01 to 5 wt% of a modified clay in Barfoot’s conditioner composition. The artisan of ordinary skill would have been motivated to add a modified clay in Barfoot’s conditioner composition because Banks teaches that a hydrophobically modified clay can provide hair conditioning benefits in certain hair conditioning compositions. Hair conditioning benefits that can be provided by the compositions of the invention can be imparted to wet and/or dry hair and include one or more of smoothness, shine, ease of combing, style retention, hold, volume, coated feel, bounce, lift, clean feeling, hold, reduced flyaway, reduced dryness, coated feel, fineness, moisturized and powdery but clean. These one or more properties can be improved compared to otherwise identical compositions that do not contain the hydrophobically modified clay (paragraph [0020]). The skilled artisan would have had reasonable expectation of success because Barfoot teaches a hair conditioning composition comprising: (i) 0.01 to 10 wt % of a linear, cationic conditioning surfactant; (ii) 0.1 to 10 wt % of a linear fatty material; (iii) a particulate benefit agent selected from conditioning actives; (iv) 0.01 to 5 wt %, at 100 % active, of a branched cationic co-surfactant (claim 1) and Banks teaches a hair conditioning composition comprising: (a) 0.01% to 10% by weight of one or more cationic surfactants;
(b) 0.01% to 10% by weight of one or more fatty alcohols having from 8 to 22 carbon atoms;
(c) 0.001% to 5% by weight of a hydrophobically modified clay; and (d) water; which further comprises one or more hair fibre modifying agents that are capable of reducing the stiffness of a hair fibre, wherein the hair fibre modifying agent can be selected from a silicone oil (i.e., particulate benefit agent)(claims 1-3).
With regards to the limitation wherein the molar ratio of branched cationic surfactants (i) to linear fatty material (ii) is in the range of from 1:20 to 1:1 and 1:10 to 1:1, it would have been obvious to optimize the molar ratio of branched cationic surfactants (i) to linear fatty material (ii) in Barfoot’s hair conditioning composition. Barfoot teaches a hair conditioning composition comprising (ii) 0.1 to 10 wt % of a linear fatty material; and (iv) 0.01 to 5 wt %, at 100 % active, of a branched cationic co-surfactant (claim 1). Therefore, it would have been obvious to optimize the molar ratio of branched cationic surfactants (i) to linear fatty material (ii) in Barfoot’s hair conditioning composition because Barfoot teaches amounts of the linear fatty material as well as the branched cationic surfactant, which one of ordinary skill in the art can use as a starting point using routine experimentation for desired results. Where the
general conditions of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ
233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled
workers would as a matter of course, if they do not immediately obtain desired results, make
certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Barfoot et al. (WO2020126660A1, Published 06/05/2020; cited in the IDS filed 09/20/2024) in view of Banks et al. (US20050232892A1, Published 10/20/2005) as applied to claims 1-2, 4-11 and 15-19 above, further in view of Kawai et al (JP2002179533A, Published 06/26/2002).
Applicant’s Invention
Barfoot and Banks render obvious all the limitations of instant claim 1. Applicants claim 3 further adds the limitation wherein the modified clay is modified with modifiers selected from cetyl pyridinium chloride, cetyltrimethylammonium chloride, stearyltrimethylammonium chloride, Hydroxy Ethyl cellulose, and guar hydroxypropyltrimonium chloride polymers.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 3, Banks teaches a hair conditioning composition with a pH of 8 or less comprises:(a) 0.01% to 10% by weight of one or more cationic surfactants; (b) 0.01% to 10% by weight of one or more fatty alcohols having from 18 to 22 carbon atoms; (c) 0.001% to 5% by weight of a hydrophobically modified clay (abstract). Banks also teaches the present invention is based on the surprising finding that a hydrophobically modified clay can provide hair conditioning benefits in certain hair conditioning compositions. Hair conditioning benefits that can be provided by the compositions of the invention can be imparted to wet and/or dry hair and include one or more of smoothness, shine, ease of combing, style retention, hold, volume, coated feel, bounce, lift, clean feeling, hold, reduced flyaway, reduced dryness, coated feel, fineness, moisturized and powdery but clean. These one or more properties can be improved compared to otherwise identical compositions that do not contain the hydrophobically modified clay (paragraph [0020]). Banks further teaches a particularly preferred material is bentonite (i.e., clay) modified with Quaternium-18 (paragraph [0063]), wherein Quaternium-18 is a cationic surfactant (paragraph [0087]). Banks continues to teach that the composition may also include viscosity enhancers (paragraph [0132]) and viscosity modifiers (paragraph [0140]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Barfoot and Banks do not teach wherein the modified clay is modified with modifiers selected from cetyl pyridinium chloride, cetyltrimethylammonium chloride, stearyltrimethylammonium chloride, Hydroxy Ethyl cellulose, and guar hydroxypropyltrimonium chloride polymers. However this deficiency is cured by Kawai.
Kawai teaches this cosmetic for eyebrow is characterized in that the cosmetic for eyebrow comprises a fiber, 10-70 mass % based on the overall weight of the cosmetic for eyebrow of a liquid oil (abstract). Kawai also teaches examples of the gelling agent include organically modified clay minerals modified with stearyltrimethylammonium chloride (paragraph [0036]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add a modified clay modified by stearyltrimethylammonium chloride in Barfoot’s conditioning composition. The artisan of ordinary skill would have been motivated to add a modified clay modified by stearyltrimethylammonium chloride in Barfoot’s conditioner composition because Kawai teaches gelling agents include organically modified clay minerals modified with stearyltrimethylammonium chloride (paragraph [0036]), therefore this modified clay would provide gelling to Barfoot’s composition. The skilled artisan would have had reasonable expectation of success because Barfoot teaches a hair conditioning composition comprising: (i) 0.01 to 10 wt % of a linear, cationic conditioning surfactant; (ii) 0.1 to 10 wt % of a linear fatty material; (iii) a particulate benefit agent selected from conditioning actives; (iv) 0.01 to 5 wt %, at 100 % active, of a branched cationic co-surfactant (claim 1), Banks teaches a hair conditioning composition comprising: (c) 0.001% to 5% by weight of a hydrophobically modified clay, and Kawai teaches cosmetic for eyebrows wherein gelling agents include organically modified clay minerals modified with stearyltrimethylammonium chloride. Therefore, Kawai’s modified clay used for eyebrows (i.e., hair) can be used in Barfoot’s composition for hair for it’s gelling properties.
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 1-11, and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-11 and 14-19 of copending Application No. 18/718,682 in view of Kawai et al (JP2002179533A, Published 06/26/2002).
Inter alia, the ‘682 application embraces A composition comprising: (i) 0.01 to 10 wt % of a branched cationic conditioning surfactant having structure 1,
PNG
media_image1.png
173
266
media_image1.png
Greyscale
Structure 1 wherein: R1 and R2 comprise linear alkyl chains, saturated or unsaturated, with carbon-carbon chain lengths of from C4 to C20; R3 comprises an alkyl chain having a carbon-carbon chain length of from C1 to C4; R4 comprises a proton or an alkyl chain having a carbon-carbon chain length of from C1 to C4; and "n has a range of from 0 to10; m has a range of from 1 to 6; and X- is an organic or inorganic anion; (ii) 0.1 to 10 wt % of a linear fatty material alcohol comprising linear carbon-carbon chains; (iii) 0.1 to 5 wt % of a nonionic structurant; (iv) a particulate benefit agent selected from conditioning actives, wherein the conditioning actives are silicone emulsions; and (v) from 0.01to2 wt% of a clay, wherein the molar ratio of branched cationic conditioning surfactants (i) to linear fatty material (ii) is in the range of from 1:20 to 1:1; and the composition does not include a linear cationic surfactant. The ‘682 application also embraces wherein the clay is a bentonite clay; wherein the silicone emulsions are selected from emulsions of dimethicone, dimethiconol, amodimethicone and mixtures thereof; wherein the silicone emulsions do not comprise a hydrophobic modification; wherein the particulate benefit agent is present in an amount of from 0.1 wt % to 10 wt % of the total composition; wherein the particulate benefit agent is present in an amount of from 0.25 to 1.5 wt %; wherein X- comprises an anion selected from a halide, a methanesulfonate group and an ethanesulphonate group; wherein the molar ratio of branched cationic conditioning surfactants (i) to linear fatty material (ii) is in the range of from 1:10 to 1:1; wherein the branched cationic conditioning surfactant is present in an amount of from 0.01 to 5 wt %. The ‘682 application further embraces wherein, in structure 1, R3 comprises an alkyl chain having a carbon-carbon chain length of C1 to C2; wherein, in structure 1, R4 comprises a proton or an alkyl chain having a carbon-carbon chain length of from C1 to C2; wherein, in structure 1, m is 1 or 2; wherein the composition comprises from 0.02 to 1.5 wt % of the clay; wherein the composition comprises from 0.05 to 1 wt % of the clay; wherein the silicone emulsions are not a myristyloxyl modified silicone. The examiner points out that the ‘682 application’s structure 1 reads to ,N,N-Trimethyl-2-((2-octyldodecyl)oxy)-2-oxoethan-1-aminium methanesulfonate. The ‘682 application does not embrace wherein the modified clay is modified with modifiers selected from cationic surfactants, modified celluloses and modified guars; and wherein the modified clay is modified with modifiers selected from cetyl pyridinium chloride, cetyltrimethylammonium chloride, stearyltrimethylammonium chloride, Hydroxy Ethyl Cellulose, and guar hydroxypropyltrimonium chloride polymers. However these deficiencies are taught by Kawai et al. Kawai teaches this cosmetic for eyebrow is characterized in that the cosmetic for eyebrow comprises a fiber, 10-70 mass % based on the overall weight of the cosmetic for eyebrow of a liquid oil (abstract). Kawai also teaches examples of the gelling agent include organically modified clay minerals modified with stearyltrimethylammonium chloride (paragraph [0036]). It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add a modified clay modified by stearyltrimethylammonium chloride in ‘682’s conditioning composition. The artisan of ordinary skill would have been motivated to add a modified clay modified by stearyltrimethylammonium chloride in ‘682’s conditioner composition because Kawai teaches gelling agents include organically modified clay minerals modified with stearyltrimethylammonium chloride (paragraph [0036]), therefore this modified clay would provide gelling to ‘682’s composition. The skilled artisan would have had reasonable expectation of success because the ‘682 application teaches a hair conditioning composition comprising (i) 0.01 to 10 wt % of a branched cationic conditioning surfactant; (ii) 0.1 to 10 wt % of a linear fatty material alcohol comprising linear carbon-carbon chains; (iii) 0.1 to 5 wt % of a nonionic structurant; (iv) a particulate benefit agent selected from conditioning actives, wherein the conditioning actives are silicone emulsions; and (v) from 0.01to2 wt% of a clay, wherein the molar ratio of branched cationic conditioning surfactants (i) to linear fatty material (ii) is in the range of from 1:20 to 1:1; and the composition does not include a linear cationic surfactant, and Kawai teaches cosmetic for eyebrows wherein gelling agents include organically modified clay minerals modified with stearyltrimethylammonium chloride. Therefore, Kawai’s modified clay used for eyebrows (i.e., hair) can be used in 682’s composition for hair for its gelling properties.
This is a provisional nonstatutory double patenting rejection.
Claims 1-11 and 15-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, and 12-15 of copending Application No. 18/716,833 in view of Kawai et al (JP2002179533A, Published 06/26/2002).
Inter alia, the ‘833 application embraces A composition comprising:(i) 0.01 to 10 wt % of a branched cationic conditioning surfactant having structure 1,
PNG
media_image3.png
167
258
media_image3.png
Greyscale
Structure 1 wherein: R1 and R2 comprise linear alkyl chains, saturated or unsaturated, with carbon-carbon chain lengths of from C4 to C20; R3 comprises an alkyl chain having a carbon-carbon chain length of from C1 to C4, R4 comprises a proton or an alkyl chain having a carbon-carbon chain length of from C1 to C4; and n has a range of from 0 to 10; and m has a range of from 1 to 6; (ii) 0.1 to 10 wt % of a linear fatty material comprising linear carbon-carbon chains, selected from a fatty alcohol, an alkoxylated fatty alcohol, a fatty acid and mixtures thereof; (iii) 0.1 to 10 wt % of a clay; and (iv) a particulate benefit agent selected from conditioning actives, wherein the conditioning actives are silicone emulsions; wherein the molar ratio of branched cationic surfactants (i) to linear fatty material (ii) is in the range of from 1:20 to 1:1. The ‘833 application also embraces wherein the silicone emulsions are selected from emulsions of dimethicone, dimethiconol, amodimethicone and mixtures thereof, wherein the silicone emulsions do not comprise a hydrophobic modification; wherein the particulate benefit agent is present in an amount of from 0.1 wt % to 10 wt % of the total composition; wherein the particulate benefit agent is present in an amount of from 0.25 to 1.5 wt %; wherein X comprises an anion selected from a halide, a methanesulfonate group and an ethanesulphonate group; wherein the molar ratio of branched cationic surfactants (i) to linear fatty material (ii) is in the range of from 1:10 to 1:1; wherein the branched cationic conditioning surfactant is present in an amount of from 0.01 to 5 wt %. The ‘833 application further embraces wherein, in structure 1, R3 comprises an alkyl chain having a carbon-carbon chain length of C1 to C2; wherein, in structure 1, R4 comprises a proton or an alkyl chain having a carbon-carbon chain length of from C1 to C2; wherein, in structure 1, m is 1 or 2; and wherein the silicone emulsions are not a myristyloxyl modified silicone. The examiner points out that the ‘833 application’s structure 1 reads to ,N,N-Trimethyl-2-((2-octyldodecyl)oxy)-2-oxoethan-1-aminium methanesulfonate. The ‘833 application does not embrace wherein the modified clay is modified with modifiers selected from cationic surfactants, modified celluloses and modified guars; and wherein the modified clay is modified with modifiers selected from cetyl pyridinium chloride, cetyltrimethylammonium chloride, stearyltrimethylammonium chloride, Hydroxy Ethyl Cellulose, and guar hydroxypropyltrimonium chloride polymers. However these deficiencies are taught by Kawai et al. Kawai teaches this cosmetic for eyebrow is characterized in that the cosmetic for eyebrow comprises a fiber, 10-70 mass % based on the overall weight of the cosmetic for eyebrow of a liquid oil (abstract). Kawai also teaches examples of the gelling agent include organically modified clay minerals modified with stearyltrimethylammonium chloride (paragraph [0036]). It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add a modified clay modified by stearyltrimethylammonium chloride in ‘833’s conditioning composition. The artisan of ordinary skill would have been motivated to add a modified clay modified by stearyltrimethylammonium chloride in ‘833’s conditioner composition because Kawai teaches gelling agents include organically modified clay minerals modified with stearyltrimethylammonium chloride (paragraph [0036]), therefore this modified clay would provide gelling to ‘833’s composition. The skilled artisan would have had reasonable expectation of success because the ‘833’s application teaches a hair conditioning composition comprising (i) 0.01 to 10 wt % of a branched cationic conditioning surfactant; (ii) 0.1 to 10 wt % of a linear fatty material alcohol comprising linear carbon-carbon chains; (iii) 0.1 to 5 wt % of a nonionic structurant; (iv) a particulate benefit agent selected from conditioning actives, wherein the conditioning actives are silicone emulsions; and (v) from 0.01 to 2 wt% of a clay, wherein the molar ratio of branched cationic conditioning surfactants (i) to linear fatty material (ii) is in the range of from 1:20 to 1:1; and the composition does not include a linear cationic surfactant, and Kawai teaches cosmetic for eyebrows wherein gelling agents include organically modified clay minerals modified with stearyltrimethylammonium chloride. Therefore, Kawai’s modified clay used for eyebrows (i.e., hair) can be used in ‘833’s composition for hair for its gelling properties.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
Prosecution Insights