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 .
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 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.
Restriction Requirement
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-9 and 12-15, drawn to a composition comprising (i) 0.01 to 10 wt % of a branched cationic conditioning surfactant of Structure 1; (ii) 0.1 to 10 wt % of a linear fatty material; (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.
Group II, claim 10, drawn to a method of increasing deposition of a particulate benefit agent to bleached hair. the particulate benefit agent being selected from conditioning actives, wherein the conditioning actives are silicone emulsions. the method comprising the steps of applying to hair a composition as defined in claim 1, and rinsing the hair with water, compared with a similar composition that does not comprise a branched cationic conditioning surfactant in accordance with having Structure 1.
As set for the in Rule 13.1 of the Patent Cooperation Treaty (PCT), “the international application shall relate to one invention only or to a group of inventions so linked as to from a single general inventive concept.” Moreover, as stated in PCT Rule 13.2, “where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features." Furthermore, Rule 13.2 defines “special technical features” as “those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.”
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The special technical feature of Group I is a composition comprising a branched cationic conditioning surfactant of Structure 1, a linear fatty material, clay, and a benefit agent comprising silicone emulsion conditioning actives. This composition is not novel in view of Barfoot (WO 2020/126660 A1), in further view of Barbuzzi (US 6,689,347).
Barfoot teaches a hair conditioning composition (Title) 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; and
(iv) 0.01 to 5 wt %, at 100 % active, of a branched cationic co-surfactant of structure 3, shown below:
PNG
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183
248
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’
wherein:
R5 and R6 comprise linear alkyl chains, saturated or unsaturated, with
carbon-carbon chain lengths of from C4 to C20;
R7 comprises an alkyl chain having a carbon-carbon chain length of from C1 to C18, preferably C1 to C4; most preferably from C1 to C2;
R8 comprises a proton or an alkyl chain having a carbon-carbon chain length of from C1 to C18, preferably C1 to C4; most preferably from C1 to C2;
X is an organic or inorganic anion;
m has a range of from 0 to 10, preferably selected from 0 and 1; and
p has a range of from 1 to 6, preferably selected from 1 and 2 (pg 4: 1-15).
Regarding the claim 1 element of “the molar ratio of branched cationic surfactants to linear fatty material”,: the teachings of Barfoot of 0.01 to 10 wt% of a linear, cationic conditioning surfactant and 0.1 to 10 wt% of a linear fatty material overlaps the claimed range. This teaching also reads on claim 8.
Barfoot fails to teach the presence of a clay in the composition.
Barbuzzi teaches the missing element of Barfoot.
Barbuzzi teaches the inclusion of a certain level of functionalized clay material in hair care formulations provides substantial styling benefits, in particular with regards to imparting body attributes to the hair (col 2: 4-27). Barbuzzi teaches a “particularly preferred clay for use with the present invention is trimethyl siloxyl-coated bentonite (col 7: 11-12), reading on claim 2. Barbuzzi teaches the amount of clay most preferably present in the hair care composition is from 0.1 to 3 wt % of the total composition (col 7: 19-24), within the range recited in claim 1.
The skilled artisan would have expected success in adding Barbuzzi's functionalized bentonite clay particles to the hair care composition of Barfoot because Barbuzzi teaches addition of the siloxy-coated bentonite clay to hair care formulations provides substantial styling benefits, in particular with regards to imparting body attributes to the hair.
As such, Group I does not share a special technical feature with the instant claims of Group II. Therefore, the claims are not so linked within the meaning of PCT Rule 13.2 so as to form a single inventive concept, and unity between Group I and Group II is broken.
Inventorship
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Rejoinder
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Telephonic Election
During a telephone conversation with attorney Nina Horan on April 2, 2026, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9 and 12-15. Affirmation of this election must be made by applicant in replying to this Office action. Claim 10 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Status
Claim 11 is canceled.
Claims 12-15 are newly added.
Claims 1-10 and 12-15 are pending.
Claim 10 is withdrawn.
Claims 1-9 and 12-15 are examined on the merits in this prosecution.
CLAIM REJECTIONS
Obviousness Rejection
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1) Claims 1-9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Barfoot (WO 2020/126660 A1, cited in IDS dated 7/1/2024), in view of Barbuzzi (US 6,689,347).
Barfoot teaches a hair conditioning composition (Title) 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; and
(iv) 0.01 to 5 wt %, at 100 % active, of a branched cationic co-surfactant of structure 3, shown below:
PNG
media_image1.png
183
248
media_image1.png
Greyscale
’
wherein:
R5 and R6 comprise linear alkyl chains, saturated or unsaturated, with
carbon-carbon chain lengths of from C4 to C20;
R7 comprises an alkyl chain having a carbon-carbon chain length of from C1 to C18, preferably C1 to C4; most preferably from C1 to C2;
R8 comprises a proton or an alkyl chain having a carbon-carbon chain length of from C1 to C18, preferably C1 to C4; most preferably from C1 to C2;
X is an organic or inorganic anion;
m has a range of from 0 to 10, preferably selected from 0 and 1; and
p has a range of from 1 to 6, preferably selected from 1 and 2 (pg 4: 1-15).
It is noted that the amounts of a linear fatty material and the branched cationic co-surfactant taught by Barfoot overlaps the respective claimed ranges and because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
Regarding the claim 1 element of “the molar ratio of branched cationic surfactants to linear fatty material”,: the teachings of Barfoot of 0.01 to 10 wt% of a linear, cationic conditioning surfactant and 0.1 to 10 wt% of a linear fatty material overlaps the claimed range. This teaching also reads on claim 8.
For claims 3, 4, and 15, Barfoot teaches particulate benefit agents such as a silicone emulsion (pg 10: 11-25):
preferred conditioning actives are silicone emulsions. Preferred silicone emulsions do not comprise a hydrophobic modification, preferably the silicone emulsion is not a myristyloxyl modified silicone, most preferably not a myristyloxyl modified silicone or a cetyloxyl modified silicone. Most preferably, the silicone emulsions
for use in the compositions of the invention are selected from emulsions of dimethicone, dimethiconol, amodimethicone and mixtures thereof
Regarding claims 5 and 6, Barfoot teaches “The total amount of silicone is preferably from 0.1 wt% to 10 wt% of the total composition more preferably from 0.1 wt% to 5 wt%, most preferably 0.25 wt% to 3 wt % is a suitable level.” See pg 14: 12-14).
For claim 7, Barfoot teaches “X is selected from a halide, methanesulfphonate, and ethanesulphonate.” See pg 16: 11-13).
For claim 9, Barfoot teaches 0.01 to 5 wt % of a branched cationic co-surfactant (citation above), the claimed range.
For claim 12, Barfoot teaches the R2 of instant Structure 1, corresponding to R7 of Barfoot, comprises an alkyl chain having a carbon-carbon chain length of, most preferably, from C1 to C2 (citation above).
For claim 13, Barfoot teaches the R4 of instant Structure 1, corresponding to R8 of Barfoot, comprises a proton or an alkyl chain having a carbon-carbon chain length of, most preferably, from C1 to C2 (citation above).
For claim 14, Barfoot teaches m, corresponding to “p” of Barfoot, has a range of, preferably, 1 or 2 (pg 4: 1-15).
Barfoot fails to teach the presence of a clay in the composition.
Barbuzzi teaches the missing element of Barfoot.
Barbuzzi teaches the inclusion of a certain level of functionalized clay material in hair care formulations provides substantial styling benefits, in particular with regards to imparting body attributes to the hair (col 2: 4-27). Barbuzzi teaches a “particularly preferred clay for use with the present invention is trimethyl siloxyl-coated bentonite (col 7: 11-12), reading on claim 2. Barbuzzi teaches the amount of clay most preferably present in the hair care composition is from 0.1 to 3 wt % of the total composition (col 7: 19-24), within the range recited in claim 1.
The skilled artisan would have expected success in adding Barbuzzi's functionalized bentonite clay particles to the hair care composition of Barfoot because Barbuzzi teaches addition of the siloxy-coated bentonite clay to hair care formulations provides substantial styling benefits, in particular with regards to imparting body attributes to the hair.
Nonstatutory Double Patenting Rejection
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
1) Claims 1-10 and 12-15 are rejected under the judicially created doctrine of nonstatutory double patenting as being unpatentable over claims 1-11 and 14-19 of copending Application No. 18/718,682 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as both sets of claims recite a composition comprising a branched cationic conditioning surfactant, a linear fatty material, a clay and a particulate benefit. The instant claims differ from the copending claims insofar as the instant claims recite a clay material in claim 1 and the reference application recites the clay material in dependent claim 4.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
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