DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant's election with traverse of Group I, claims 1-6 and 11-12, and the species glycerin in the reply filed on 13 May 2026, is acknowledged. The traversal is on the grounds that:
the shared technical feature is special (para. 1 of pg. 2 of the remarks);
the defined Groups I and II are drawn to a product and a process of use of said product and therefore have unity of invention (para. 2 of pg. 2 of the remarks);
the European Patent Office and International Searching Authority did not find a lack of unity (para. 3-4 of pg. 2 of the remarks);
MPEP § 1893.03(d) states that reasoning must be provided why each group of inventions lacks unity with the others and the Requirement for Restriction/Election mailed on 19 March 2026, did not provide proper reasons;
the previous Office Action did not indicate whether the inventions of Groups I and II were classified in different classes or subclasses; and
the search and examination of all claims would not be a serious burden on the Examiner.
This is not found persuasive because:
the shared technical feature is not special in view of the teachings of Rossi et al. (WIPO International Patent Publication No. WO 2019/095072 A1), see previous Office Action and rejection under 35 U.S.C. § 103 below;
Applicant’s interpretation of 37 C.F.R. § 1.475(b) regarding a product and a process of use of said product has omitted the requirement in 37 C.F.R. § 1.475(a) that the shared technical feature be special. The shared technical feature is not special (vide supra);
the findings and decisions of the European Patent Office and International Searching Authority do not have bearing on the findings of the USPTO, particularly in view of the different laws and rules governing the separate offices;
this is incorrect, see discussion of Rossi et al. on pg. 4-5 of the Requirement for Restriction/Election mailed on 19 March 2026;
this is not a requirement for restriction/election in national stage applications, but for domestic applications filed under 35 U.S.C. 111(a). See MPEP § 808.02;
this is not a requirement for restriction/election in national stage applications, but for domestic applications filed under 35 U.S.C. 111(a). See MPEP § 808.02.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-6 and 9-12 are pending in the instant Office Action.
Claims 9-10 are 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. Applicant timely traversed the restriction requirement in the reply filed on 13 May 2026.
Claims 1-6 and 11-12 are under consideration in the instant Office Action, to the extent of the elected at least one further cosmetically acceptable ingredient glycerin.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent European Patent Application No. EP 22180873.6, filed on 24 June 2022, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 December 2024 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Objection to Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The title of the instant application is “A Composition Comprising Polymers”. The title should be brief but technically accurate and descriptive and should contain fewer than 500 characters. The title does not reflect the main inventive concept of Applicant’s invention and the major components of the invention. The title is generic and can be applicable to any compositions that comprise polymers. The Examiner advises Applicant to consider including major components of the composition, primary purpose of the invention, and/or the general steps taken to achieve the claimed invention in the title to precisely reflect the inventive concept. Inasmuch as the words "new", "improved", "improvement of", and "improvement in" are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. Similarly, the articles "a," "an," and "the" should not be included as the first words of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.
Claim Objections
Claims 1-2 and 11-12 are objected to because of the following informalities:
Claims 1 and 2 recite “shown in Fig. 3” in lines 11 and 5, respectively, and claims 11 and 12 recite “shown in Fig. 4” in lines 2 and 2-3, respectively. “Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.’ Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993).” See MPEP § 2173.05(s).
Claims 1 and 2 recite “at least two of components konjac gum, tara gum, and algin”. Clarity would be improved if the claims were amended to recite “at least two components selected from konjac gum, tara gum, and algin”.
Appropriate correction is required.
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.
Claims 1-6 and 11-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-2 and 11-12 recite “these components” in line 10 of claim 1, line 4 of claim 2, line 2 of claim 11, and line 2 of claim 12. There is insufficient antecedent basis for this limitation in the claims because claims 1 and 2, from which claims 11 and 12 respectively depend, recite “at least two of components…”. It is unclear if the limitation regarding “these components” is referring to two of the three components, and if so which two, or all three of the components, rendering the claims indefinite. In addition, claim 1 recites water and at least one further cosmetically acceptable ingredient in addition to two components selected from konjac gum, tara gum, and algin, and it is unclear if the limitation regarding “these components” includes the water and at least one further cosmetically acceptable ingredient. Claims 3-6 depend from claim 1, incorporate all of its limitations, and do not resolve the issue of indefiniteness, therefore claims 3-6 are also rejected as being indefinite.
Claims 1-2 and 11-12 recite the weight ratio of components to be within a hatched area of Fig. 3 or Fig. 4, respectively. Fig. 3 and 4 do not distinctly claim the weight ratio of species due to the lack of numbers, labels, gridlines, or other defining characteristics. Further, the instant specification does not clarify the figures, as para. [0074] states that each vertex indicates 100% of a given component, which is not a ratio, and that “the edges of the triangles…are linearly scaled” but does not provide a scale or labels to assess points that are not on one of the three vertices. Para. [0080-0088] provide three-dimensional coordinates to form polygons that approximate the hatched area, but do not provide specific ratios to distinctly claim the metes and bounds of the claimed invention. Finally, the instant spec. does not specify which, if any, of the examples mixtures no. 203-221 are “widest”, “preferred”, or “more preferred” (para. [0071], [0075-0077], and [0080-0088]). For the purpose of examination, the mixtures no. 203-221 disclosed in para. [0069] are considered to be within the recited weight ratio.
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.
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 1-6 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Rossie et al. (WIPO International Patent Publication No. WO 2019/095072 A1, published on 23 May 2019, provided by Applicant in the IDS filed on 11 December 2024, hereafter referred to as Rossi) in view of Dhyllon (U.S. Patent No. 10,258,553 B1, published on 16 April 2019).
Rossi teaches a composition that enhances hair growth in a subject following topical application (Abstract). The composition is taught to be suitable for topical application, which is interpreted as being equivalent to a skin care composition as recited in instant claim 5, and to be capable of improving the quality of hair, which is interpreted as being equivalent to being suitable for styling hair as recited in instant claim 4 (para. [0014] and [0058-0061]). The composition is recited as comprising water (para. [00110]) and at least one hydrophilic gelling agent (claim 23). In some embodiments, the gelling agent may be alginic acid, which is equivalent to algin, konjac gum, tara gum, and/or the polyol glycerol, which is equivalent to the elected species glycerin (para. [0099] and [00104] and claim 24). When used as a gelling agent, Rossi teaches that konjac gum should be present from 0.5-0.7% w/w and tara gum should be present from 0.1-1.0% w/w, which sums to 0.6-1.7% w/w total and falls within the 0.2-5.0% range recited in instant claim 3. Further, the range of ratios of konjac gum to tara gum may be 0.5-7 and example mixtures no. 203, 210, and 219 from instant spec. para. [0069] disclose ratios of konjac gum to tara gum of 3, 1, and 0.33, respectively, in the absence of algin. As stated above, for the purpose of examination, the mixtures no. 203-221 disclosed in para. [0069] are considered to be within the recited weight ratio. Therefore, the quantities of konjac gum and tara gum taught by Rossi are considered to overlap with the ratios recited in Fig. 3 and 4 of instant claims 1-2 and 11-12.
Rossi does not teach the quantity of glycerol or water in their invention. These deficiencies are offset by the teachings of Dhyllon.
Dhyllon teaches a hair strengthening conditioner formulation that strengthens and improves hair following application (Abstract). The invention of Dhyllon is taught to be easy to formulate, to reduce manufacturing costs, and to have improved performance compared to other hair compositions (col. 2, lines 23-40). The composition is taught to be water-based and comprise, among other ingredients, glycerin (col. 2, lines 48-51). The composition is additionally taught to be suitable for application to both the hair and skin (col. 3, lines 47-50). In their Example Formulations 1-6, Dhyllon teaches each composition to comprise glycerin in an amount ranging from 0.7-1.3% w/w or 1.5% w/w and water being the balance to 100% w/w, such as 71.25% w/w in Formulations 2, 4, and 6.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the weight ranges taught by Rossi and Dhyllon and the weight ratio of konjac gum to tara gum taught by Rossi. In each instance, the taught ranges either significantly overlap with or fall within the ranges recited in the instant claims, rendering them prima facie obvious.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to formulate the invention of Rossi with glycerin in an amount of 0.7-1.3% w/w or 1.5% w/w and water the balance to 100% w/w in view of the teachings of Dhyllon because the application of a known technique in a similar product yields predictable results. Rossi teaches a cosmetic composition that may be applied to the skin and hair which comprises water, konjac gum, tara gum, and glycerin. The total weight of konjac gum and tara gum fall within the range recited in instant claim 3 and the ratio between the species falls within the range as interpreted above. In view of the teachings of Dhyllon, a person of ordinary skill would be motivated to use glycerin in an amount of 7-1.3% w/w or 1.5% w/w because Rossi teaches the inclusion of glycerin but does not teach a quantity. Dhyllon teaches their quantities to be suitable for cosmetic compositions applied to the hair and skin and an ordinary artisan would recognize the applicability in the invention of Rossi, as well as be motivated to use the teachings to provide missing information needed to complete their invention. In addition, one of ordinary skill would be motivated to use water in a balance to 100% w/w because Rossi similarly teaches the inclusion of water but does not teach a quantity. Dhyllon teaches water to be suitable to use in a balance to 100% w/w, such as 71.25% w/w, in cosmetic compositions applied to the hair and skin and an ordinary artisan would recognize the applicability in the invention of Rossi, as well as be motivated to use the teachings to provide missing information needed to complete their invention. Each of the quantities taught above are lower than 99% w/w, also rendering the relevant limitation in instant claim 1 obvious. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-6 and 11-12 in view of the teachings of Rossi and Dhyllon.
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 1-6 and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 11-12 of copending Application No. 18/725,398 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/725,398 recites a cosmetic composition comprising at least two of the species konjac gum, xanthan gum, and algin, water, and at least one additional cosmetically acceptable ingredient different from the species recited above, wherein the relative amount of each component is <99% w/w and the weight ratio of the components are within a hatched area of a figure not included in the claims (claim 1 and 11-12). Application ‘398 additionally recites a raw material composition comprising at least two of the species konjac gum, xanthan gum, and algin, wherein the relative amount of each component is <99% w/w and the weight ratio of the components are within a hatched area of a figure not included in the claims (claim 2). The total weight of the at least two species selected from konjac gum, xanthan gum, and algin is recited to be 0.2-5.0% w/w and the weight of the at least one further cosmetically acceptable ingredient is recited to be 0.1-40% w/w, with the balance to 100% w/w being water (claim 3). The composition is recited as being a hair styling or skin care composition and in some embodiments, the cosmetically acceptable ingredient is glycerin (claims 4-6).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean J. Steinke, Ph.D., whose telephone number is (571) 272-3396. The examiner can normally be reached Mon. - Fri., 09:00 - 17:00 ET.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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