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 .
Priority
This application is a National Stage entry of PCT/EP2022/083809, filed 11/30/2022, and claims foreign priority to EP21215030.4, filed 12/16/2021.
Information Disclosure Statement
The IDS’s filed on 7/2/2026, 5/7/2026, 4/3/2025, 9/20/2024, 7/1/2024 have been considered. See the attached PTO 1449 form.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-3, 5-11, 15-18) and N,N,N-Trimethyl-2-((2-octyldodecyl)oxy)-2-oxoethan-1-aminium methanesulfonate as the species represented by Structure 1 and Guar hydroxypropyltrimonium chloride as the species of cationic structurant, in the reply filed on 7/22/2026 is acknowledged.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Claim Status
Receipt of Remarks filed on 7/22/2026 is acknowledged. Claims 1-3, 5-12, 15-18 are currently pending. Claim 12 has been withdrawn. Accordingly, claims 1-3, 5-11, 15-18 are currently under examination.
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 18 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.
Claim 18 recites the limitation "The composition of claim 4". There is insufficient antecedent basis for this limitation in the claim because claim 4 has been cancelled. Thus, it is unclear the claim from which claim 18 depends from. For the purpose of examination, the examiner interprets claim 18 depends from claim 1.
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, 5-11, 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Barfoot (WO2020126660A1)(cited in IDS) in view of Giles (US8530399B2)(cited in IDS).
Barfoot throughout the reference teaches hair conditioning composition for improved deposition.
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_image1.png
127
614
media_image1.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 fatty alcohol such as 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).
Barfoot teaches the particulate benefit agent is selected from conditioning actives, wherein the conditioning actives are silicone emulsions (page 10, line 9).
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).
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).
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).
Barfoot teaches most preferably, X- comprises an anion selected from a halide, a methanesulfonate group and an ethanesulphonate group (page 16, line 11).
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).
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).
Barfoot does not teach the composition further comprises 0.1 to 5 wt% of a cationic structurant wherein the cationic strucurant is guar hydroxypropyl trimmonium chloride. However, Giles cures this deficiency.
Giles also teaches conditioning shampoo compositions. Giles teaches cationic polymers enhance the delivery of conditioning agent and thereby improve the conditioning benefits obtained. Giles teaches especially preferred cationic polymer include guar hydroxypropyl trimonium chloride. Giles in Table 1, Example 1 of the reference discloses guar hydroxypropyl trimonium chloride in the amount of 0.20 wt%. Giles also teaches the total amount of cationic polymer in the composition is preferably from 0.05% to 2% and more preferably from 0.1 to 0.5% by weight of the composition. (see e.g. Col. 7-8; Table 1; Claims; Abstract; Entire document).
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add 0.1 to 5 wt% of guar hydroxypropyl trimmonium chloride in Barfoot’s conditioner composition. The artisan of ordinary skill would have been motivated to add guar hydroxypropyl trimmonium chloride in Barfoot’s conditioner composition because Giles also teaches conditioning shampoo compositions wherein Giles teaches cationic polymers enhance the delivery of conditioning agent and thereby improve the conditioning benefits obtained. Giles teaches especially preferred cationic polymer include guar hydroxypropyl trimonium chloride and discloses guar hydroxypropyl trimonium chloride in the amount of 0.20 wt%. Both Barfoot and Giles are directed to hair conditioning compositions and Giles discloses improved conditioning benefits with the addition of guar hydroxypropyl trimmonium chloride. Therefore, it would have been obvious to one skilled in the art to further add guar hydroxypropyl trimmonium chloride in the composition of Barfoot.
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).
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, 5-11, 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/716,012.
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘012 claims a composition comprising 0.01 to 10 wt% of a branched cationic conditioning surfactant of structure 1 which is the same as the claimed branched cationic conditioning surfactant. The composition comprises 0.1 to 10 wt% of a linear fatty material including a fatty alcohol. The composition comprises 0.01 to 5 wt% of a modified clay and a particulate benefit agent. Molar ratio of branched cationic surfactant to linear fatty material is in the range of 1:20 to 1:1. The modified clay comprises guar hydroxypropyltrimonium chloride polymer. The conditioning actives are silicone emulsions and include dimethicone. Silicone emulsions do not comprise a hydrophobic modification. Benefit agent is present in amount of from 0.25 to 1.5 wt%. X- comprises an anion which include methanesulfonate group. The silicone emulsion are not a myristyloxyl modified silicone. The branched cationic conditioning surfactant is N,N,N-Trimethyl-2-((2-octyldodecyl)oxy)-2-oxoethan-1-aminium methanesulfonate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 5-11, 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-15 of copending Application No. 18/716,833 in view of Giles (US8530399B2)(cited in IDS).
‘833 claims a composition comprising 0.01 to 10 wt% of a branched cationic conditioning surfactant of structure 1 which is the same as the claimed branched cationic conditioning surfactant. The composition comprises 0.1 to 10 wt% of a linear fatty material including a fatty alcohol. The composition comprises 0.01 to 10 wt% of a clay and a particulate benefit agent selected from conditioning actives. Molar ratio of branched cationic surfactant to linear fatty material is in the range of 1:20 to 1:1. The conditioning actives are silicone emulsions and include dimethicone. Silicone emulsions do not comprise a hydrophobic modification. Benefit agent is present in amount of from 0.1 to 10 wt%. X- comprises an anion which include methanesulfonate group. The silicone emulsion are not a myristyloxyl modified silicone.
‘833 does not teach the composition further comprises 0.1 to 5 wt% of a cationic structurant wherein the cationic strucurant is guar hydroxypropyl trimmonium chloride. However, Giles cures this deficiency.
The teachings of Giles discussed above are incorporated herein.
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add 0.1 to 5 wt% of guar hydroxypropyl trimmonium chloride in ‘833 composition. The artisan of ordinary skill would have been motivated to add guar hydroxypropyl trimmonium chloride in ‘833 composition because Giles also teaches conditioning shampoo compositions wherein Giles teaches cationic polymers enhance the delivery of conditioning agent and thereby improve the conditioning benefits obtained. Giles teaches especially preferred cationic polymer include guar hydroxypropyl trimonium chloride and discloses guar hydroxypropyl trimonium chloride in the amount of 0.20 wt%. Both ‘833 and Giles are directed to compositions comprising conditioning agent and Giles discloses improved conditioning benefits with the addition of guar hydroxypropyl trimmonium chloride. Therefore, it would have been obvious to one skilled in the art to further add guar hydroxypropyl trimmonium chloride in the composition of ‘833.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-11, 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-19 of copending Application No. 18/718,682 in view of Giles (US8530399B2)(cited in IDS).
‘682 claims a composition comprising 0.01 to 10 wt% of a branched cationic conditioning surfactant of structure 1 which is the same as the claimed branched cationic conditioning surfactant. The composition comprises 0.1 to 10 wt% of a linear fatty material including a fatty alcohol. The composition comprises 0.1 to 5 wt% of a nonionic structurant and a particulate benefit agent selected from conditioning actives. The composition also comprises 0.01 to 2 wt% of a clay. Molar ratio of branched cationic surfactant to linear fatty material is in the range of 1:20 to 1:1. The conditioning actives are silicone emulsions and include dimethicone. Silicone emulsions do not comprise a hydrophobic modification. Benefit agent is present in amount of from 0.1 to 10 wt%. X- comprises an anion which include methanesulfonate group. The silicone emulsion are not a myristyloxyl modified silicone.
‘682 does not teach the composition further comprises 0.1 to 5 wt% of a cationic structurant wherein the cationic strucurant is guar hydroxypropyl trimmonium chloride. However, Giles cures this deficiency.
The teachings of Giles discussed above are incorporated herein.
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add 0.1 to 5 wt% of guar hydroxypropyl trimmonium chloride in ‘682 composition. The artisan of ordinary skill would have been motivated to add guar hydroxypropyl trimmonium chloride in ‘682 composition because Giles also teaches conditioning shampoo compositions wherein Giles teaches cationic polymers enhance the delivery of conditioning agent and thereby improve the conditioning benefits obtained. Giles teaches especially preferred cationic polymer include guar hydroxypropyl trimonium chloride and discloses guar hydroxypropyl trimonium chloride in the amount of 0.20 wt%. Both ‘682 and Giles are directed to compositions comprising conditioning agent and Giles discloses improved conditioning benefits with the addition of guar hydroxypropyl trimmonium chloride. Therefore, it would have been obvious to one skilled in the art to further add guar hydroxypropyl trimmonium chloride in the composition of ‘682.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI SAEED whose telephone number is (571)272-2371. The examiner can normally be reached M-F 8-5 EST.
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 X LIU can be reached at 5712725539. 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.
/ALI S SAEED/Examiner, Art Unit 1616
Prosecution Insights