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 .
Examiner's Note
Applicant is reminded that claim amendments must comply with 37 CFR 1.121(c) (see also MPEP 714 c). In the interest of compact prosecution, the amended claims have been accepted, but the Examiner notes the following: cancelled claims 11 and 19 should be listed by only the claim number and status identifier without presenting the text of the claim.
Applicant is advised that any future amendments that are not in compliance with 37 CFR 1.121 will result in the mailing of a notice of non-compliant amendment.
Withdrawn Objections/Rejections
The objections to the specification are withdrawn in view of the amendments to the specification.
The objections to claims 6, 8, 12, 15, and 16 are withdrawn in view of the claim amendments.
The rejections of claims 11 and 19 are withdrawn in view of the cancellation of the claims.
The rejections of claims 5-7, 10, 18, and 20 under 35 U.S.C. § 112(b) are withdrawn in view of the claim amendments.
The rejections of claims 5, 10, and 18 under 35 U.S.C. § 112(d) are withdrawn in view of the claim amendments.
The previous rejections of claims 1-3, 5-10, and 12-18 under 35 U.S.C. § 103 are withdrawn in view of the claim amendments.
Claim Status
Applicants' amendments and arguments filed on 07/29/2026 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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claims 11 and 19 are cancelled.
Claims 4 and 21-30 are withdrawn.
Claims 1-3, 5-10, 12-18, and 20 are under current examination.
Information Disclosure Statement
The information disclosure statements filed 07/29/2026 and 08/31/2026 have been considered by the Examiner.
New Rejections Necessitated by Claim Amendments
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 1-3, 5-6, 8-10, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Savaides et al. (US 2017/0360679 A1, published December 21, 2017; included on IDS submitted 07/26/2024), hereafter “Savaides”, in view of Jegou et al. (FR 2957789 A1, published September 30th, 2011; of record), hereafter “Jegou” and Kroger Lyons et al. (US 2016/0143834 A1; published May 26, 2016; included on IDS submitted 07/26/2024), hereafter “Kroger Lyons”.
Regarding instant claims 1 and 12, Savaides teaches a hair care system comprising a composition comprising a chitosan, an aldehyde-bearing compound, and an organic acid that increases volume to the hair (hair being a fiber) (see entire document, particularly Abstract, claims 25 and 54, and paragraphs [0010] and [0023]). The benefits of the composition may be further enhanced by coupling it with an anionic formulation applied at the same time; anionic materials include dehydroxanthan gum (paragraphs [0044]-[0047]).
Regarding instant claims 8 and 16, Savaides teaches that the aldehyde-bearing compound is selected from vanillin and p-vanillin, o-vanillin, or ethylvanillin (claims 28-29, paragraph [0027]).
Regarding instant claims 9 and 17, Savaides teaches the preferred organic acid is acetic acid, and other acids that may be used include formic acid, glycolic acid, lactic acid, ascorbic acid, pyruvic acid, salicylic acid, citric acid, adipic acid, succinic acid, malic acid, tartaric acid, fumaric acid, glyoxilic acid and combinations thereof (paragraph [0028], claim 30).
Regarding instant claims 10 and 18, Savaides teaches that the composition comprises chitosan in an amount of about 0.05% to about 5% w/w or about 1.5% to about 4% w/w (paragraph [0030], including Table A), overlapping the claimed ranges. Per MPEP 2144.05 I., “In the case where the claimed ranges "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)”.
Savaides does not teach that hair/fiber volumizing system comprises a primer composition comprising an effective amount of the elected dendrimer or hyperbranched compound of the polylysine poly-L-lysine in a cosmetically acceptable aqueous carrier (instant claims 1-3, 12, 14, and 15) in an amount of about 0.005 to about 5% by weight (instant claims 5 and 13) that is a shampoo comprising about 5 to about 30% by weight of active surfactant (instant claim 6).
Jegou teaches hair care compositions comprising cationic polymers (see entire document, particularly abstract, and claims 1 and 12 ), in particular poly-L(lysine) (claim 2). Cationic polymers are known to provide hold or styling to the hair, but do not generally show hair-shaping effect in “rinsed” compositions; the compositions of Jegou provide a good styling effect maintained in a high humidity environment while retaining feel, softness, volume, and detangling in a dry or humid environment (pg. 8, paragraph 2-pg. 9, paragraph 6). The composition preferably comprises 0.5 to 20% by weight of cationic polymer, in particular 1 to 10% by weight, or even 2 to 5% by weight, relative to the total weight of the composition (pg. 15, paragraph 3). The cationic polymers are neutralized to be water-soluble or water-dispersible, and the composition may include a hydrophilic medium comprising water (pg. 15, paragraphs 3-5). Hair care compositions are preferably shampoos (pg. 19, paragraph 1). The composition may advantageously include at least one surfactant which is generally present in an amount between 0.01% and 50% by weight, even more preferably between 0.5% and 30%, relative to the total weight of the composition (pg. 18, paragraph 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the hair volumizing treatment system of Savaides with the poly-L-lysine shampoo composition of Jegou. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success to in order to include a hair care composition that retains properties of the composition such as volume, softness, and feel while providing good styling effects in a variety of humidities. There is a reasonable expectation of success as Savaides teaches that the chitosan-containing compositions are applied to shampooed hair (see Examples, particularly at paragraphs [0067]-[0072]) and that a chitosan polymer formed on hair fibers is capable of adhering to the hair via reaction with peptide terminals in amino acids such as lysine (paragraph [0038]).
Further, the compositions of both Savaides and Jegou are taught to be hair care compositions that provide volume and maintain style in hair (see particularly Savaides, paragraphs [0010] and [0074], and Jegou, pg. 9, paragraph 5). Per MPEP 2144.06, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).”
Savaides does not teach that the chitosan complex composition comprises about 0.1 to about 3% by weight of the dehydroxanthan gum (instant claims 1 and 12).
Kroger Lyons teaches a hair care composition for providing improved root lift including at least 0.1% by weight dehydroxanthan gum, particularly about 0.3% to about 1% or about 0.7% to about 1% (see entire document, particularly Abstract, claims 1-5, and paragraphs [0004]-[0005] and [0017]). Kroger Lyons teaches that hair with a full, thick, voluminous appearance is very desirable, and compositions that lift the roots of the hair create a fuller and thicker appearance (paragraphs [0002]-[0003]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to adjust the amount of dehydroxanthan gum in the hair volume treatment system of Savaides with the amounts suggested by Kroger Lyons, overlapping the instant claims. One of ordinary skill in the art would have been motivated to do so in order to provide an amount of dehydroxanthan gum that is known to contribute to root lift and a full, thick, voluminous appearance in hair care compositions. There is a reasonable expectation of success as Savaides contemplates the use of anionic materials including dehydroxanthan gum (paragraphs [0044]-[0047]) in hair care systems that provide increased volume and root lift (paragraphs [0010] and [0130]). Further, per MPEP 2144.05 I., “In the case where the claimed ranges "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)”.
The limitations of instant claim 1, “wherein upon application and rinsing of the primer composition followed by application of the chitosan complex composition a composition is formed that provides increased volume to the hair” and of instant claim 12, “wherein upon application of the primer and the chitosan complex a composition is formed that provides increased volume to the fiber” are directed to a future intended use of the hair volumizing system and do not structurally limit the claimed system. Given that Savaides in view of Jegou and Kroger Lyons teaches and renders obvious the structural components of the hair volumizing treatment system, absent evidence to the contrary, increased volume to hair/fiber will occur following the recited use of the compositions. Further, as noted above, the compositions of both Savaides and Jegou are taught to provide volume to hair, and Kroger Lyons suggests inclusion of dehydroxanthan gum to achieve root lift and a full, thick, voluminous hair appearance, and thus one of ordinary skill would expect the combination to be capable of performing the recited intended use.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Savaides in view of Jegou and Kroger Lyons as applied to claims 1-3, 5-6, 8-10, and 12-18 above, and further in view of Derks et al. (US 2011/0165107 A1, published July 7, 2011; included on IDS submitted 07/26/2024), hereafter, “Derks”.
The teachings of the modified Savaides are set forth above.
Savaides in view of Jegou and Kroger Lyons does not teach that the surfactant composition comprises a surfactant selected from the group consisting of lauryl glucoside, caprylyl/capryl glucoside, cocoamidopropyl betaine, sodium lauroyl methyl isethionate, sodium methyl 2-sulfolaurate, sodium methyl cocoyl taurate, and combinations thereof (instant claim 7).
Derks teaches a volumizing shampoo preparation comprising a hyperbranched polyesteramide, an anionic surfactant, and an additional amount of an amphoteric or zwitterionic co-surfactant (see entire document, particularly abstract and claims 1-2 and 11). The amphoteric or zwitterionic co-surfactant is taught to be cocamidopropyl betaine (claim 12, Examples 4-6 and 8-10), and Derks further exemplifies a composition comprising lauryl glucoside (Example 9, paragraph [0095]). The compositions of Derks are taught to confer volume to the hair and improve the styling attributes (paragraphs [0003]-[0004]); shampoo preparations comprising amphoteric or zwitterionic surfactants in an amount from 0.5 to about 8 wt.%, such as cocamidopropyl betaine, are in particular suitable for increasing the volume of hair (paragraph [0040]). The compositions can further include cationic polymers (paragraph [0047]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the surfactants in the shampoo composition of Jegou in the hair volumizing system of the modified Savaides with the surfactant mixture comprising cocamidopropyl betaine suggested by Derks. One of ordinary skill in the art would have been motivated to do so in order to provide a surfactant system that contributes to increased volume and improved styling attributes in shampoos comprising cationic polymers, as suggested by Derks. There is a reasonable expectation of success as Jegou teaches shampoo hair care compositions comprising cationic polymers which retain properties such as volume, softness, and feel while providing good styling effects in a variety of humidities, and may advantageously comprise anionic, amphoteric, non-ionic, and cationic surfactants or mixtures thereof (pg. 18, paragraph 2).
Rejection Maintained, Slightly Modified to Address Claim Amendments
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Savaides et al. (US 2017/0360679 A1, published December 21, 2017; included on IDS submitted 07/26/2024), hereafter “Savaides”, in view of Kroger Lyons et al. (US 2016/0143834 A1; published May 26, 2016; included on IDS submitted 07/26/2024), hereafter “Kroger Lyons” and Tokura et al. (WO 2006/067987 A1, published June 29, 2006; of record), hereafter “Tokura”.
Savaides teaches a hair care system comprising a composition comprising a chitosan, an aldehyde-bearing compound, and an organic acid that increases volume to the hair (hair being a fiber) (see entire document, particularly Abstract, claims 25 and 54, and paragraphs [0010] and [0023]). The benefits of the composition may be further enhanced by coupling it with an anionic formulation applied at the same time; anionic materials include dehydroxanthan gum (paragraphs [0044]-[0047]). The aldehyde-bearing compound is taught to be vanillin (claim 28, Examples beginning at paragraph [0057]).The preferred organic acid is acetic acid (paragraph [0028], claim 30, Examples beginning at paragraph [0057]). Savaides exemplifies dissolution by mixing components in acetic acid (paragraph [0058]), suggesting the preparation of a homogenous dispersion.
Savaides teaches that the composition comprises chitosan in an amount of about 0.05% to about 5% w/w (paragraph [0030], including Table A), overlapping the claimed ranges. Per MPEP 2144.05 I., “In the case where the claimed ranges "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)”.
Savaides does not teach that the chitosan complex composition comprises about 0.25 to about 2.0% by weight of the dehydroxanthan gum.
Kroger Lyons teaches a hair care composition for providing improved root lift including at least 0.1% by weight dehydroxanthan gum, particularly about 0.3% to about 1% or about 0.7% to about 1% (see entire document, particularly Abstract, claims 1-5, and paragraphs [0004]-[0005] and [0017]). Kroger Lyons teaches that hair with a full, thick, voluminous appearance is very desirable, and compositions that lift the roots of the hair create a fuller and thicker appearance (paragraphs [0002]-[0003]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to adjust the amount of dehydroxanthan gum in the system of Savaides with the amounts suggested by Kroger Lyons, overlapping the range of the instant claim. One of ordinary skill in the art would have been motivated to do so in order to provide an amount of dehydroxanthan gum that is known to contribute to root lift and a full, thick, voluminous appearance in hair care compositions. There is a reasonable expectation of success as Savaides contemplates the use of anionic materials including dehydroxanthan gum (paragraphs [0044]-[0047]) in hair care systems that provide increased volume and root lift (paragraphs [0010] and [0130]). Further, per MPEP 2144.05 I., “In the case where the claimed ranges "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)”.
Savaides does not teach that the acetic acid is glacial acetic acid.
Tokura teaches that chitosan is known for use as a cosmetic or hair styling agent (paragraph [0004]), and that glacial acetic acid can be used to dissolve chitosan (paragraph [0017]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the glacial acetic acid taught by Tokura for the acetic acid of Savaides. Simple substitution of one type of acetic acid for another, both known in the art for use in dissolving chitosan, is within the purview of the skilled artisan and would yield predictable results (see MPEP 2143 B).
Regarding the limitation that the composition is free of precipitates, as set forth above, the teachings of Savaides in view of Kroger Lyons and Tokura render obvious the identities and amounts of the components in the claimed composition. Per MPEP 2112.01 II., “A chemical composition and its properties are inseparable”, and absent evidence to the contrary, the property of being free of precipitates will follow from its structure.
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, 5-10, 12-18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-10, 12-18, and 20 of copending Application No. 18/741,918 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Both the instant claims and those of copending Application No. 18/741,918 recite the same structural limitations of systems comprising the same primer compositions comprising an effective amount of a dendrimer or hyperbranched compound, particularly poly-L-lysine, and a chitosan complex composition comprising chitosan, dehydroxanthan gum, an aldehyde-bearing compound, and an organic acid present in the same amounts. Both sets of claims further recite a composition comprising the same structural limitations of a homogenous dispersion of chitosan, dehydroxanthan gum, vanillin, and glacial acetic acid which is free of precipitates (compare claims 20).
The claims of copending Application No. 18/741,918 recite a color retention system that provides color retention to hair/a fiber upon application; the instant claims recite a hair/fiber volumizing system that provides increased volume to the hair/fiber upon application. However, as the claim sets recite structurally identical systems, the systems will have the same effects upon application to hair/fiber and the system of copending Application No. 18/741,918 is capable of acting as a hair/fiber volumizing system. See MPEP 2112.01, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.”
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 07/29/2026 have been fully considered.
Regarding the claim rejections under 35 U.S.C. 103, Applicant argues that the combination of Savaides, Jegou, and Kroger Lyons fails to teach or suggest each and every limitation of instant claims 1 and 12. Particularly, Applicant argues that Savaides’s hair care system includes two separate compositions, the first comprising a chitosan, an aldehyde-bearing compound, and an organic acid; and a second composition that is an anionic formulation comprising an anionic material and a carrier, and these compositions are applied separately to the hair to form a complex coacervate. Applicant further argues that dehydroxanthan gum is only mentioned in Savaides a single time in a long list of polyanionic materials, and that there is no motivation to use a polyanionic material in the same composition as the chitosan/aldehyde-bearing compound/organic acid of Savaides. Applicant argues that Savaides exemplifies the anionic material sodium polystyrene sulfonate applied to hair followed by application of a separate chitosan/vanillin/acetic acid composition; Example 1 of the instant Application shows that when sodium polystyrene sulfonate was added into a chitosan/vanillin/acetic acid mixture, it formed a precipitate and there was visible phase separation, whereas use of dehydroxanthan gum in place of sodium polystyrene sulfonate produced a cloudy homogeneous solution. Thus, Savaides does not provide a reasonable expectation of successfully including a polyanionic material such as dehydroxanthan gum directly into the chitosan/aldehyde/acid composition and still result in a usable chitosan complex composition. Applicant further argues that Jegou and Kroger Lyons fail to provide the missing teaching or suggestion, and although Kroger Lyons teaches a hair care composition comprising at least 0.1 % by weight dehydroxanthan gum, it fails to teach or suggest use of about 0.1 to about 3% by weight dehydroxanthan gum in a chitosan complex composition that further comprises chitosan, an aldehyde-bearing compound, and an organic acid.
These arguments are unpersuasive. The Examiner first notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, Kroger Lyons provides motivation to the skilled artisan to modify Savaides to include the claimed amount of dehydroxanthan gum in order to provide root lift and create a fuller and thicker appearance of hair, particularly as Savaides contemplates the use of anionic materials including dehydroxanthan gum in hair care systems that provide increased volume and root lift.
While the Examiner recognizes that Savaides teaches that chitosan and anionic formulations are stored separately, Savaides teaches that the compositions can be applied at the same time, for example, using a dispenser with two nozzles (paragraphs [0044] and [0054]), which results in the combination of the components into a single composition. One would reasonably expect that combining the anionic material with the film forming chitosan formulation would result in a successful composition that achieves the benefit of each formulation individually. Further, while it is possible that certain polyanionic components taught by Savaides may result in precipitation and separation of the composition, one of ordinary skill in the art would be motivated by the teachings of Kroger Lyons to specifically select dehydroxanthan gum from those contemplated by Savaides to achieve its root lifting and volumizing benefits, as discussed above.
Applicant further argues that a system comprising the combination of claimed primer composition containing polylysine and claimed chitosan complex composition provides synergistic hair/fiber volumizing effects not taught or suggested in the combination of cited art. Applicant cites particularly to Example 7, Table 4, and Fig. 6 of the instant application confirming that the combination of the primer composition and the chitosan complex composition was more effective at retaining volume over 10 washes with stripping shampoo as compared to the individual components alone. Applicant argues that synergistic results were observed with the initial combination of shampoo 2BD5 (comprising polylysine) plus the chitosan serum 4 where the volume resulting from the combination on virgin hair (11.7 cm) was greater than the additive effect on volume produced by the serum and shampoo separately (5.5+5.3=10.8 for D5) and that the synergistic effect remained after 10 washes of the virgin hair, i.e., the combination produced volume of 10.4 cm after 10 washes whereas the serum and shampoo separately only add to 10.1 cm (5.3+4.8). Applicant argues that, from the teachings of the prior art, one having ordinary skill in the art would not reasonably expect a rinsed shampoo primer to deposit sufficient dendrimer/polylysine to enhance and retain a later-applied chitosan complex over multiple stripping shampoos.
The arguments regarding unexpected results are unpersuasive. Per MPEP 716.02(d), unexpected results must be commensurate in scope with the claims which the evidence is offered to support. Here, independent claims 1 and 12 recite a hair and fiber volumizing system comprising a primer composition comprising any dendrimer or hyperbranched compound in any amount, and a chitosan complex composition comprising chitosan in any amount, any aldehyde-bearing compound in any amount, and any organic acid in any amount. The evidence relied on exemplifies only one narrow embodiment of a chitosan complex composition (Table 3, chitosan at 0.8 wt.%, vanillin at 0.2 wt.%, and glacial acetic acid at 0.7 wt.%) and one specific polylysine-containing composition (paragraph [00158]). The results of Table 4 seem to demonstrate that the same volume effects are not observed even within the five dendrimer/hyperbranched compounds tested. The evidence of record does not provide evidence of unexpected results or synergy commensurate in scope with the breadth of the instant claims, and one of ordinary skill in the art would not be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value to the full scope of the claims.
Further, per MPEP 716.02 (b), the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319”. The Examiner notes that there is no evidence of any synergistic effect in bleached hair samples, which calls into question the practical significance of the results. Further, the data provided in the instant application has not been shown to be statistically significant as no statistical analysis or information provided regarding, for example, standard deviation is provided. Further, the compositions of Savaides and Jegou are both taught to provide volume and maintain style in hair, and Kroger Lyons suggests inclusion of dehydroxanthan gum to achieve root lift and a full, thick, voluminous hair appearance, and one of ordinary skill in the art would reasonably expect a composition such as that instantly claimed to have a volumizing effect.
Regarding independent claim 20, Applicant argues that the combination of the cited prior art
fails to teach or suggest a composition comprising a homogeneous dispersion of chitosan, dehydroxanthan gum, vanillin, and glacial acetic acid where the composition is free of precipitates. As shown in Example 1 of the specification, a composition containing water, chitosan, vanillin, glacial acetic acid, and dehydroxanthan gum resulted in a cloudy, homogeneous solution whereas a composition that used of sodium polystyrene sulfonate as a complexing agent instead of dehydroxanthan gum formed a precipitate and there was visible phase separation of the composition. Therefore, not all chitosan complexing agents allow for the preparation of a homogeneous dispersion when combined with chitosan, vanillin, and glacial acetic acid. Applicant argues that Savaides does not teach a mixture including dehydroxanthan gum, and there would have been no reasonable expectation that if dehydroxanthan gum was included in the mixture described in paragraph [0058] of Savaides that it would have resulted in a homogeneous dispersion. Kroger Lyons and Tokura also fail to provide this expectation.
These arguments are unpersuasive. Savaides teaches that chitosan and vanillin can be dissolved in an acetic acid solution (paragraph [0058]), suggesting the preparation of a homogenous dispersion, and Kroger Lyons provides motivation to include dehydroxanthan gum in the claimed amounts, rendering its inclusion obvious. Per MPEP 2112.01 II., “A chemical composition and its properties are inseparable”, and, as the prior art renders obvious the identities and amount of the components in the claimed composition, the property of being free of precipitates will follow from its structure, absent evidence to the contrary.
Regarding the provisional non-statutory double patenting rejections over the claims of co-pending Application No. 18/741,918, Applicant requests that the double patenting rejection be held in abeyance.
In response, the Examiner notes that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejections of record have been maintained as no action regarding these rejections has been taken by Applicant at this time.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDITH M KAMM whose telephone number is (703)756-4575. The examiner can normally be reached M-F 8:00 am-4:30 pm EST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611
