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 .
Election/Restrictions
Applicant’s election without traverse of Group I, drawn to a hair volumizing treatment system, a fiber volumizing system, and a composition for use in volumizing a fiber, in the reply filed on 04/29/2026 is acknowledged. Applicant’s further election without traverse of poly-L-lysine as the species of dendrimer or hyperbranched compound in the reply filed on 04/29/2026 is acknowledged.
Claims 21-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim 4 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on 04/29/2026.
Claims 1-3 and 5-20 are under current examination.
Priority
This application is a CON of PCT/US2022/052804, filed 12/14/2022, which claims priority to US PRO 63/289,450, filed 12/14/2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/26/2024, 10/10/2025, and 04/29/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
The information disclosure statement filed 03/18/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. The provided copy of NPL Citation No. 1 (ANONYMOUS; “HAIR CARE/Conditioning Polymer Differentiation”) is not legible, and thus was not considered. The remainder of the IDS filed 03/18/2026 was considered by the Examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code at paragraph [00175] and paragraph [00179]. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claim 6 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “the primer” in line 1 should recite “the primer composition”.
Claim 8 and 16 are objected to because of the following informalities: it is suggested that the Markush language “selected from the group consisting of vanillin, p-vanillin, o-vanillin, or ethylvanillin” should read “selected from the group consisting of vanillin, p-vanillin, o-vanillin, and ethylvanillin”. See MPEP 2117 I.
Claim 12 is objected to because of the following informalities: for consistency in the claim language, it is suggested that “the primer” in line 6 should recite “the primer composition” and “the chitosan complex” in line 6 should recite “the chitosan complex composition”.
Claim 15 is objected to because of the following informalities: it is suggested that the word “or” following “poly-L-lysine,” should be omitted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 5-7, 10-11, and 18-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 5 recites “the dendrimer or hyperbranched compound comprises about 0.005 to about 5% by weight of the primer composition”; claim 1, from which claim 5 depends, recites a primer composition comprising an effective amount of a dendrimer or hyperbranched compound. It is unclear how the dendrimer or hyperbranched compound of claim 5 can comprise the primer composition, particularly as it is part of the composition. For purposes of examination and applying prior art, the Examiner interprets that the claim recites “the primer composition comprises about 0.005 to about 5% by weight of the dendrimer or hyperbranched compound”.
Claim 6 recites “the primer is a shampoo that further comprises about 5 to about 30% by weight of active surfactant in a surfactant composition”. It is unclear if the claim requires that the active surfactant is about 5 to about 30% by weight relative to the total weight of the primer composition or relative to weight of the surfactant composition. For purposes of examination and applying prior art, the Examiner interprets that the active surfactant is present at about 5 to about 30% by weight relative to the total weight of the primer composition.
Claim 7 is rejected under 35 U.S.C. 112(b) by virtue of its dependency on claim 6 and failure to cure the deficiency noted above.
Claim 10 recites “the chitosan comprises about 0.3 to about 3% by weight of the chitosan complex composition”; claim 1, from which claim 10 depends, recites a chitosan complex composition comprising chitosan. It is unclear how the chitosan of claim 10 can comprise the chitosan complex composition, particularly as it is part of the composition. For purposes of examination and applying prior art, the Examiner interprets that the claim recites “the chitosan complex composition comprises about 0.3 to about 3% by weight of the chitosan”.
Claim 11 recites “the dehydroxanthan gum comprises about 0.1 to about 3% by weight of the chitosan complex composition”; claim 1, from which claim 11 depends, recites a chitosan complex composition comprising dehydroxanthan gum. It is unclear how the dehydroxanthan gum of claim 11 can comprise the chitosan complex composition, particularly as it is part of the composition. For purposes of examination and applying prior art, the Examiner interprets that the claim recites “the chitosan complex composition comprises about 0.1 to about 3% by weight of the dehydroxanthan gum”.
Claim 18 recites “the chitosan comprises about 0.2 to about 3% by weight of the chitosan complex composition”; claim 12, from which claim 18 depends, recites a chitosan complex composition comprising chitosan. It is unclear how the chitosan of claim 18 can comprise the chitosan complex composition, particularly as it is part of the composition. For purposes of examination and applying prior art, the Examiner interprets that the claim recites “the chitosan complex composition comprises about 0.2 to about 3% by weight of the chitosan”.
Claim 19 recites “the dehydroxanthan gum comprises about 0.1 to about 3% by weight of the chitosan complex composition”; claim 12, from which claim 19 depends, recites a chitosan complex composition comprising dehydroxanthan gum. It is unclear how the dehydroxanthan gum of claim 11 can comprise the chitosan complex composition, particularly as it is part of the composition. For purposes of examination and applying prior art, the Examiner interprets that the claim recites “the chitosan complex composition comprises about 0.1 to about 3% by weight of the dehydroxanthan gum”.
Claim 20 recites “the chitosan comprising about 0.5 to about 1.0% by weight of the composition” and “the dehydroxanthan gum comprising about 0.25 to about 2.0% by weight of the composition”; the claim previously recites a composition comprising chitosan and dehydroxanthan gum. It is unclear how the chitosan and dehydroxanthan gum can comprise the composition, particularly as they are part of the composition. For purposes of examination and applying prior art, the Examiner interprets that the claim recites “the composition comprises about 0.5 to about 1% by weight of the chitosan and about 0.25 to about 2% by weight of the dehydroxanthan gum”.
Claim 20 further recites that “the composition is free of brittle precipitates”. The instant specification does not define “brittle”, and one of ordinary skill in the art would not be reasonably apprised of what properties a precipitate must possess to be considered “brittle”.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5, 10-11, and 18-19 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites “the dendrimer or hyperbranched compound comprises about 0.005 to about 5% by weight of the primer composition”; claim 10 recites “the chitosan comprises about 0.3 to about 3% by weight of the chitosan complex composition”; claim 11 recites “the dehydroxanthan gum comprises about 0.1 to about 3% by weight of the chitosan complex composition”.
Claim 1, from which claims 5, 10, and 11 depend, recites a primer composition comprising an effective amount of a dendrimer or hyperbranched compound and a chitosan complex composition comprising chitosan and dehydroxanthan gum. As the dendrimer or hyperbranched compound, chitosan, and dehydroxanthan gum are then recited in claims 5, 10, and 11 to comprise the respective compositions, the subject matter of claims 5, 10, and 11, fails to limit the subject matter of claim 1.
Claim 18 recites “the chitosan comprises about 0.2 to about 3% by weight of the chitosan complex composition”; claim 19 recites “the dehydroxanthan gum comprises about 0.1 to about 3% by weight of the chitosan complex composition”.
Claim 12, from which claims 18 and 19 depends, recites a chitosan complex composition comprising chitosan and dehydroxanthan gum. As the chitosan and dehydroxanthan gum are then recited in claims 18 and 19 to comprise the chitosan complex composition, the subject matter of claims 18 and 19 fails to limit the subject matter of claim 12.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
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, 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), hereafter “Jegou”.
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).”
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 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 thus one of ordinary skill would expect them 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 as applied to claims 1-6, 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 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).
Claims 11 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Savaides in view of Jegou as applied to claims 1-6, 8-10, and 12-18 above, and further 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”.
The teachings of the modified Savaides are set forth above.
Savaides in view of Jegou does not teach that the chitosan complex composition comprises about 0.1 to about 3% by weight of the dehydroxanthan gum (instant claims 11 and 19).
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 the modified 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)”.
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), 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]), interpreted as homogenous and free of brittle precipitates; Savaides further exemplifies that films formed from these compositions have good flex/bending strength (paragraph [0061]).
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).
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 and 5-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-20 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 (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 provide 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.
Conclusion
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611
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