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 .
Response to Amendments
Status of claims
The amendment, filed on 8/13/2026, is acknowledged.
Claim 4 is amended.
Claim 16 is withdrawn.
Claims 1-15 and 17-18 are pending and under consideration in the instant Office Action, to the extent of the elected species:
The fatty alcohol is cetyl alcohol
The cationic surfactant is behenyl trimethylammonium methosulfate
The acid is citric acid
Rejections Withdrawn
The rejection of claim 4 made under 35 U.S.C. 112 as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention is withdrawn.
Maintained Rejections
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 1-11, 15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (US20200146955A1, published 5/14/2020).
Zhao teaches a hair conditioner composition that contains a fatty alcohol and a cationic surfactant which “can be a leave-on treatment or it can be rinsed” (paragraph [0145]). This composition comprises a fatty alcohol from about 1 wt. % to about 10 wt. % (paragraph [0057]), and may be cetyl alcohol (paragraph [0059]). The composition further comprises a cationic surfactant in an amount ranging from about 1 wt. % to about 10 wt. % (paragraph [0046]). Zhao teaches a cationic surfactant as part of the composition, including but not limited to behenyl trimethylammonium chloride, as well as various other surfactants that are chloride salts (paragraph [0047]). However, Zhao teaches “the conditioner composition can contain other cationic surfactants… such as behenyl trimethyl ammonium methosulfate” (which is also known as behentrimonium methosulfate) (paragraph [0049]) and is demonstrated in examples A and B as reported by Zhao. It is also important to note that Zhao recites the preferable addition of an acid such as citric acid to the composition when using mono-alkyl amine cationic surfactants, as well as the importance of the acid as a pH adjuster (paragraph [0051] and [0114]). The composition disclosed by Zhao further comprises about 60 wt. % to about 90 wt. % water (paragraph [0111]), which qualifies as an aqueous base as in the instant case. In light of the weight percentages recited by Zhao, the ratio of fatty alcohol (i.e. cetyl alcohol) to cationic surfactant (i.e. behenyl trimethyl ammonium methosulfate) would be between 10:1 and 1:10, which overlaps with the instant claims. Zhao’s composition also has the shear stress property of greater than 50 but less than 200 Pa (paragraph [0044]), overlapping with instant claim 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. 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).
Further, it should be noted that the composition as claimed by Zhao also does not include any anionic surfactant, as evidenced by a lack of any mention of anionic surfactant (See AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (“[A] reference need not state a feature’s absence in order to disclose a negative limitation.”)).
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference... has no place in... a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). The only difference between Zhao and the instant claims is that Zhao does not teach the specific combination of components as claimed in a single embodiment, or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Zhao, but ‘such ‘picking and choosing within several variable does not necessarily give rise to anticipation. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP 2141(1). Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within Zhao's disclosure, to arrive at compositions such as that being sought.
Given the teachings of Zhao, claims 1-11, 15, and 17-18 are rejected in light of prior art. Zhao teaches a leave-on conditioner treatment, as claimed in instant claim 18, comprising a fatty alcohol (i.e. cetyl alcohol) and a cationic surfactant (i.e. behenyl trimethyl ammonium methosulfate) in conjunction with an aqueous base (i.e. water) that is free of any anionic surfactant, as in the instant claims including claim 1. Further, the weight percentages as taught by Zhao can overlap with the ratios in the instant claims. For example, the fatty alcohol may be present in 2 wt. %, and the cationic surfactant may be present in 5 wt. %, which is a ratio of 1:2.5 as in instant claims 1 and 2, and further aligning with instant claim 3. A large percentage of the composition as in the instant claims is an aqueous carrier in at least about 50%. Zhao teaches the addition of water as described above, and these ranges overlap (see MPEP 2144.05, in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)). The use of cetyl alcohol as the fatty acid by Zhao reads on instant claims 6-8, as cetyl alcohol has inherent identity as a C12 to C30 saturated fatty alcohol as in claim 6, and is explicitly named in claims 7 and 8. The inclusion of the cationic surfactant behenyl trimethyl ammonium methosulfate, otherwise known as behentrimonium methosulfate (a quaternary amine chemical), by Zhao reads on instant claim 9 and 15. The weight percentages of both the fatty alcohol and cationic surfactant as claimed by Zhao also overlap with instant claims 10 and 11 (see MPEP 2144.05). Instant claim 17 is also taught by Zhao, as citric acid is important to include with the cationic surfactant and as a pH adjuster as described above. In light of Zhao, claims 1-11, 15, and 17-18 are rejected.
Claims 1-4, 6-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Naiberk et al. (US20210401719A1, published 12/30/2021).
Naiberk teaches a hair styling composition for improving the moisture content and visual appearance of hair curls, as a conditioner may do as well. This composition comprises a) hydrogenated starch hydrolysate b) polyol c) plant or vegetable based oil d) a cationic surfactant e) emulsifiers (chosen from a glyceryl ester, a fatty alcohol, and mixture thereof) and f) water (paragraph [0008]). Further, Naiberk teaches the benefit of a cationic surfactant and a fatty alcohol as it maintains hair moisture in the correct ratio (paragraph [0049]).
While Naiberk’s composition includes other ingredients, it can comprise a fatty alcohol in as little as 0 wt% up to 10 wt% (paragraph [0008]) as well as a cationic surfactant in about 0.1 wt% to about 7 wt% (paragraph [0008]). Naiberk further teaches that the fatty alcohol may be cetyl alcohol (paragraph [0024]) and the cationic surfactant may be behentrimonium methosulfate (paragraph [0118]). The composition also comprises water in about 50 wt% to about 95 wt% (paragraph [0202]). The composition is also free of anionic surfactant, as evidenced by the exclusion of any mention of anionic surfactant (See AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (“[A] reference need not state a feature’s absence in order to disclose a negative limitation.”)). Based on the weight percentages of the fatty alcohol and cationic surfactant, the ratio of fatty alcohol to cationic surfactant may be as little as 0:7 up to 100:1, which overlaps with the instant claims. It would be prima facie obvious to experiment with cationic surfactant and fatty alcohol in ratios between what was previously stated to optimize for hair moisture as a benefit of the composition. This is done via a lamellar gel network as a result of combining the cationic surfactant and fatty alcohol.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference... has no place in... a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). The only difference between Naiberk and the instant claims is that Naiberk does not teach the specific combination of components as claimed in a single embodiment, or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Naiberk, but ‘such ‘picking and choosing within several variable does not necessarily give rise to anticipation. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP 2141(1). Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within Naiberk's disclosure, to arrive at compositions such as that being sought.
Therefore, claims 1-3 are rejected in light of Naiberk.
The composition as claimed by Naiberk also reads on claim 4 regarding the amount of water. Therefore, claim 4 is also rejected.
As cetyl alcohol is named as a fatty alcohol that may comprise the composition, claims 6-8 are rejected as cetyl alcohol is inherently a C12 to C30 saturated fatty alcohol, and is explicitly named and elected in instant claims 7 and 8. As behentrimonium methosulfate is named as a cationic surfactant comprising the composition by Naiberk, claim 9 is also rejected. The previously described weight percentage of the cationic surfactant (i.e. behentrimonium methosulfate) overlaps with instant claim 10, and the previously described weight percentage of fatty alcohol (i.e. cetyl alcohol) overlaps with instant claim 11. Therefore, claims 10-11 are rejected.
Of note is the lack of any mention of propellants, silicone, or other conditioning agents. The exclusion of these ingredients from the reference reads on claims 12-14 which state the composition is free of propellant, silicone, and conditioning agents. Further, Naiberk explicitly teaches the lack of silicone and discloses that the ”composition may be free or essentially free of silicones” (paragraph [0268]), reading on claim 13 in particular. Therefore, claims 12-14 are also rejected (See AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (“[A] reference need not state a feature’s absence in order to disclose a negative limitation.”).
As the cationic surfactant may be behentrimonium methosulfate, which is inherently a quaternary amine, claim 15 is rejected.
Naiberk also teaches that the composition may include a pH adjuster to modify the overall pH, and names citric acid as a suitable acid to decrease the overall pH (paragraph [0199]). This reads on the instant claims, and therefore, claim 17 is rejected.
Naiberk also notes that the hair composition described may be in any suitable physical form, which includes conditioners (paragraph [0094]). Further, the composition may be used as a leave-on product (paragraph [0204]). Therefore, claim 18 is rejected.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Naiberk (US20210401719A1, published 12/30/2021) as applied to claims 1-4, 6-15, and 17-18 above, and further in view of Rheology Testing of Hair Conditioners (accessed as was June 4, 2017; https://www.rheologylab.com/articles/cosmetic-personal-care/rheology-testing-conditioners/).
Naiberk does not teach the shear stress of hair conditioners as at least 100 Pa as in claim 5. However, this deficiency is made up for by the teachings of Rheology Testing of Hair Conditioners.
Rheology Testing of Hair Conditioners teaches the relationship between viscosity, shear stress, and perceived luxuriousness of hair care conditioners. The relationship between shear stress and quality of conditioner was explored in the reference. Conditioner A was evaluated as “a ‘luxury’ prestige conditioner with a creamy texture and silky ‘glide’” while Conditioner B was evaluated as “a cheaper brand with a thin, watery texture and perceived poor coating ability” (paragraph 2). The shear stress was evaluated and it was determined that “Conditioner A yields at a significantly higher stresses (around 250 Pa) than Conditioner B (around 50 Pa)” and that the “low yield stress contributes to the impression of thinness and low quality for Conditioner B” (paragraph 6).
It would be prima facie obvious to one in the art to achieve higher shear stress similar to Conditioner A in order to achieve a luxurious and thick conditioner feel. As Conditioner A exhibits a shear stress of around 250 Pa, it would be obvious to replicate this quality of higher shear stress in the direction of 250 in a hair care treatment such as one in the instant case. Therefore, claim 5 is rejected in light of Naiberk, further in view of Rheology Testing of Hair Conditioners.
Response to Arguments
The Applicant’s arguments, filed on 8/13/2026, have been fully considered but are not persuasive.
Applicant argues that the references cited in the rejection under 35 U.S.C. 103 do not suggest the specific ratio of alcohol to surfactant, and that the instant claims are patentable due to unexpected results achieved by the composition claimed. Applicant argues that the prior art does not suggest a ratio of fatty alcohol to cationic surfactant of at least 1:2. Further, applicant argues that the inventive concept, which lies in a higher amount of cationic surfactant compared to a lower amount of fatty alcohol, is not suggested by Zhao or Naiberk. Applicant argues that this technical problem and its solution is not taught by the references. In all, Applicant argues that the technical problem and solution is unique to the instant application, stemming from unexpected results of the ratio as claimed.
Applicant’s argument has been fully considered but is not found persuasive. Zhao does teach a range of ratios of fatty alcohol to cationic surfactant that is inclusive of the claimed ratio of at least 1:2 (par. [0046] and [0057]). As described supra, Zhao teaches 1 wt. % to 10 wt. % of fatty alcohol and 1 wt. % to 10 wt. % cationic surfactant. The ratio is therefore 10:1 to 1:10, as described supra. 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).
Regarding the technical problem and solution, the rationale behind selecting a specific ratio of 1:2 fatty alcohol to cationic surfactant is not relevant to the patentability of the invention. As described in MPEP 2144(IV), “it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant,” In re Kahn 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Further, the comparisons made between the instant invention and the prior art are not encompassing of the prior art entirely. Applicant has not compared to the closest prior art. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979) (see MPEP 716.02(e)). In the instant case, as shown in Zhao Table 1 Comp. Ex. B, comparative examples exist wherein the ratio of fatty alcohol to cationic surfactant is closer to the instantly claimed range of 1:2, wherein the ratio of the example is 1:1.25. A composition of this identity is more closely aligned with the instant composition. Applicant’s Table 1 only compares examples wherein the ratio of fatty alcohol to cationic surfactant is 1:0.8, 1:0.2, or 1:0.6. Therefore, Applicant has not used comparative examples that more closely align with the instant invention.
Further, the claims are much broader than the tested compositions, both in terms of ingredients and amounts thereof. For example, the claims are drawn to “a fatty alcohol” which was elected to be cetyl alcohol. However, all examples in the instant specification Table 1 comprise more than just cetyl alcohol as the fatty alcohol; stearyl alcohol is also present. It is unclear if the same effect would be seen for all concentrations and structures within the scope of the claims; for example, where the only fatty alcohol is cetyl alcohol as elected. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Finally, the broadness of the claim is exemplified by the lack of upper limit of the ratio of alcohol to surfactant. The claim could reasonably be determined to cover a ratio of even 1:100 fatty alcohol to cationic surfactant. While the prior art does not teach 1:2 specifically, the range of ratios encompasses that claimed ratio, and is more specific than the instantly claimed ratio. The argument that the range as taught by Zhao is too broad is therefore deemed not persuasive, as the instant claims do not have an upper boundary and is therefore even broader than the range as disclosed by Zhao.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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