DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed 07/13/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 - Obviousness
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.
Claim(s) 1-4, 7-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable Hirano et al (US 2005/0095217 A1).
Hirano taught hair cosmetic compositions [title] formulated as hair conditioners [0034], with water [see Tables 8-9]. The compositions comprised cationic surfactants, as the whole of surfactants contained therein, in amounts of 0.1 to 20 %. The surfactant was included to stabilize the hair cosmetic compositions, in order to improve its feel in use, and to control its viscosity [claim 4, ¶s 0015 and 0023]. For the purposes of preventing split ends and broken hair, one or more of ceramides (in amounts from 0.01 to 5 wt. %), which are commonly employed as hair protecting ingredients, was included in the hair cosmetic compositions [0024, 0026]. Anionic surfactants were not required ingredients [see ¶s 0015, 0021].
Claim 1 is rendered prima facie obvious over the teachings of Hirano, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., hair conditioner, cationic surfactant, ceramide, water) were known in the prior art (e.g., Hirano), and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results (e.g., a hair conditioner) to one of ordinary skill in the art. MPEP 2143.A.
The instant claim 1 recites cationic surfactants, from about 0.1 % to about 15 %; benefit agents, from about 0.0001 % to about 3 %; less than 3 % anionic surfactants.
The instant claim 2 recites ceramides, from about 0.0005 % to about 3 %.
The instant claim 14 recites cationic surfactants, from about 1 % to about 10 %; ceramides, from about 0.0001 % to about 3 %; less than 3 % anionic surfactants.
The instant claim 19 recites a total amount of about 0.1 % to about 15 % cationic surfactant; benefit agent, from about 0.0001 % to about 3 % and less than about 1 % anionic surfactant.
Hirano taught cationic surfactants, at 0.1 to 20 %; ceramides from 0.01 to 5 %. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. MPEP 2144.05 A.
Claims 3 and 15 are rendered prima facie obvious because Hirano taught Ceramide 3 (aka Ceramide NP) [0026].
Claim 4 is rendered prima facie obvious because Hirano taught antidandruff agents [0030].
Claims 7-11 and 17 are rendered prima facie obvious because Hirano taught linoleic acid, at 0.1 to 20 wt. % [0008-0009]; and, cholesterol [0030].
Claims 12 and 18 are rendered prima facie obvious because Hirano taught diamide compounds in combination with higher alcohols or fatty acids provide a superb feel in use such as moisturized feel and silkiness [0007] (e.g., reads on moisturizing agent).
Claim 13 is rendered prima facie obvious because Hirano taught, to further improve the feel in use, the hair cosmetic composition additionally contained one or more silicone derivatives or cationic polymers, commonly employed as ingredients for improving feeling to the touch [0027] (e.g., reads on hair conditioning agent).
Claims 19 and 20 are rendered prima facie obvious because Hirano taught hair cosmetic compositions [0006], for the protection and/or repair of hair, and capable of giving an excellent feel in use. Rinsing the hair with running water was taught [0038].
Response to Arguments
Applicant's arguments filed 07/13/2026 have been fully considered but they are not persuasive.
Applicant did not traverse the rejection, in view of Hirano.
Claims 5-6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano et al (US 2005/0095217 A1) and further in view of Cao et al (US 2023/0363996 A1).
The 35 U.S.C. 103 rejection over Hirano, was previously described.
Hiraono taught antidandruff agents, generally, as previously discussed; however, Hirano was silent the antidandruff agent, as recited in claims 5-6 and 16.
Cao taught a hair care composition [title] formulated as a hair conditioner [claim 11], and comprising piroctone olamine, as an antidandruff agent [0026-0027], in amounts of 0.01 to 10 wt. % [claim 4].
Since Hirano generally taught antidandruff agents, it would have been prima facie obvious to one of ordinary skill in the art to include said ingredients within Hirano’s teachings at amounts of 0.01 to 10 wt. %. The ordinarily skilled artisan would have been so motivated, because at the said amounts, antidandruff agents are effective, as taught by Cao [0026-0027, claims 4 and 11].
The instant claim 5 recites an antidandruff active agent in amounts of from 0.01 % to about 10 %.
Cao taught antidandruff agents present in amounts from 0.01 to 10 %. A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
Applicant did not traverse the rejection, in view of Cao.
Nonstatutory Double Patenting
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/731,070, in view of Hirano et al (US 2005/0095217 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims require a cationic surfactant, which are not required of the copending claims.
Hirano taught hair cosmetic compositions formulated as hair conditioners [0031]. The composition comprised cationic surfactants, in amounts of 0.1 to 20 %, to stabilize the hair cosmetic composition, in order to improve its feel in use and to control its viscosity.
It would have been prima facie obvious to one of ordinary skill in the art to include cationic surfactants within the copending claims, as taught by Hirano. The ordinarily skilled artisan would have been motivated to improve the feel in use, and to control the viscosity, of the hair conditioner, as taught by Hirano.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/731,057, in view of Hirano et al (US 2005/0095217 A1).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/731,048, in view of Hirano et al (US 2005/0095217 A1).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/731,045, in view of Hirano et al (US 2005/0095217 A1).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/731,010, in view of Hirano et al (US 2005/0095217 A1).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/680,920, in view of Hirano et al (US 2005/0095217 A1).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/680, 901, in view of Hirano et al (US 2005/0095217 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims require a cationic surfactant and a ceramide, which are not required of the copending claims.
Hirano taught hair cosmetic compositions formulated as hair conditioners. The composition comprised cationic surfactants, in amounts of 0.1 to 20 %, to stabilize the hair cosmetic composition, in order to improve its feel in use and to control its viscosity. For the purpose of preventing split ends and broken hair, one or more of ceramides (in amounts from 0.01 to 5 wt. %), which are commonly employed as hair protecting ingredients, was included in the hair cosmetic composition.
It would have been prima facie obvious to one of ordinary skill in the art to include cationic surfactants and ceramides, within the copending claims, as taught by Hirano. The ordinarily skilled artisan would have been motivated to improve the feel in use, and to control the viscosity, of the hair conditioner, as taught by Hirano. Additionally, the skilled artisan would have been motivated to prevent split ends and broken hair, as taught by Hirano.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 07/13/2026 have been fully considered but they are not persuasive.
Applicant will consider the propriety of filing a Terminal Disclaimer at the time of the indication of allowable subject matter.
The Examiner responds that allowable subject matter has not been identified in the present application. A Terminal Disclaimer is necessary to obviate the NSDP rejection. Please comply.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
/CELESTE A RONEY/Primary Examiner, Art Unit 1612
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