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 .
Claim Interpretation
The term “compound of amino acid type” appearing in 15 is interpreted according to applicant’s definition for the term as shown on pg.11 (lines 33-36) of present specification.
Claim Objections
Claim 15 is objected to because of the following informalities: on line 6, applicant need to change “acids” to --- acid ---. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: on line 1, applicant need to change “compound(s)” to --- the at least one compound ---. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: (i) on line 1, applicant need to change “hydroxylated” to --- at least one hydroxylated ---. (ii) on line 2, applicant need to change “acids” to --- acid ---. Appropriate correction is required.
Claim 23 is objected to because of the following informalities: on line 2, applicant need to change “silicone(s)” to --- the at least one silicone ---. Appropriate correction is required.
Claim 25 is objected to because of the following informalities: on line 2, applicant need to change “cationic surfactant(s)” to --- the at least one cationic surfactant ---. Appropriate correction is required.
Claim 26 is objected to because of the following informalities: on line 2, applicant need to change “cationic polymer(s)” to --- the at least one cationic polymer ---. Appropriate correction is required.
Claim 28 is objected to because of the following informalities: on line 2, applicant need to change “nonionic polysaccharide(s)” to --- the at least one nonionic polysaccharide ---. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: on lien 2, applicant need to change “nonionic surfactant(s)” to --- the at least one nonionic surfactant ---. Appropriate correction is required.
Claim 31 is objected to because of the following informalities: on line 2, applicant need to change “non-silicone fatty substance(s)” to --- the at least one non-silicone fatty substance ---. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-34 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In Claim 15, applicant recite that the composition B comprises at least one hydroxylated (poly)carboxylic acid comprising from 2 to 8 carbon atoms (or salts thereof). However, it is unclear to the Examiner how any hydroxylated (poly)carboxylic acid can have only 2 carbon atoms because it is the Examiner’s understanding that the simplest form of a hydroxylated (poly)carboxylic acid would the structure: HOOC-CH(OH)-COOH, and such compound already has 3 carbon atoms. Appropriate correction and/or clarification is necessary.
Claims 15-34 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In Claim 15, applicant recite the following:
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The way it is written is confusing and unclear. To overcome instant 112(b) rejection, applicant need to change claim 15 to state
--- (ii) applying to the hair composition B comprising:
-at least compound of amino acid type; and
- at least one hydroxylated (poly)carboxylic acid comprising from 2 to 8 carbon atoms, or salts thereof, or mixtures thereof; and ---.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 15-34 are rejected under 35 U.S.C. 103 as being unpatentable over Rughani et al (US 2018/0280269 A1).
Rughani teaches ([0075]-[0090]) a method of treating hair comprising: (A) cleansing the hair with one or more shampoos comprising one or more surfactants; (B) conditioning the hair with one or more conditioners comprising (i) at least 0.5 wt.% of at least one amino acid or an amino sulfonic acid, and/or a salt thereof (ii) optionally, at least 0.5 wt.% of at least one non-polymeric mono, di or tricarboxylic acid, and/or a salt thereof, (iii) one or more surfactants; and (iv) water; and (C) applying one or more hair-treatment compositions to the hair wherein the one or more hair-treatment compositions optionally comprise one or more surfactant. In Example 1, Rughani gives several examples of its shampoos, all of which contain anionic surfactant and/or amphoteric surfactants. Thus, Rughani teaches instant composition A and instant step (i) of claim 15.
With respect to instant composition B, in Example 4-2, Rughani teaches (see the Table in [0395]) Rinse-Off Conditioner D, which contains 3 wt.% taurine (instant amino acid type compound according to applicant’s definition in present specification), 1 wt.% citric acid (instant hydroxylated polycarboxylic acid of claims 15, 19 and 20) Thus, Rughani teaches instant composition B and instant step (ii) of claim 15.
With respect to instant composition C, Rughani teaches ([0130]) that the hair-treatment composition (that is used in its step (C) shown above) may contain cationic surfactants. Thus, it would be obvious to one skilled in the art to include cationic surfactants in Rughani’s hair-treatment composition. Thus, Rughani renders obvious instant composition C and instant step (iii) of claim 15.
Thus, Rughani renders obvious instant claims 15, 19 and 20.
With respect to instant claims 16-18, Rughani’s 3 wt.% of taurine (used in its Example 4-2 (Conditioner D)) does not teach instant formula (I). However, Rughani teaches (see claim 12) the equivalence of taurine and amino acids, such as glycine, lysine, methionine or proline. Thus, it would be obvious to use 3 wt.% of glycine, lysine, methionine or proline (instead of 3 wt.% of taurine) with a reasonable expectation of success. Thus, Rughani renders obvious instant claims 16-18.
With respect to instant claims 21 and 22, Rughani’s Example 4-2 (Conditioner D) contains 0.1 wt.% of thickener(s) which can be chosen from acrylates copolymer, hydroxyethyl cellulose or hydroxypropyl guar. Thus, it would be obvious to one skilled in the art to use 0.1 wt.% of acrylate copolymer (as a thickener) in Rughani’s Example 4-2 (Conditioner D) with a reasonable expectation of success. The acrylate copolymer is a nonionic polymer (instant associative polymer of claims 21 and 22). Thus, Rughani renders obvious instant claims 21 and 22.
With respect to instant claims 23 and 24, Rughani’s Example 4-2 (Conditioner D) contains 1.7 wt.% amodimethicone (instant amino silicone of claim 24). Thus, Rughani renders obvious instant claims 23 and 24.
With respect to instant claim 25, Rughani’s Example 4-2 (Conditioner D) contains 1.3 wt.% of a cationic surfactant(s). Thus, Rughani renders obvious instant claim 25.
With respect to instant claims 26 and 27, Rughani’s Example 4-2 (Conditioner D) does not contain a cationic polymer. However, Rughani teaches (see claim 4 and [0132]-[0133]) that its hair treatment composition (such as a conditioner) may include a cationic polymer, such as polyquaternium-10 or cationic guar derivatives, in the amount of about 0.1 to about 15 wt.% based on the total weight of the composition. It would be obvious to one skilled in the art to include 0.1-15 wt.% of a cationic polymer, such as polyquaternium-10 or cationic guar derivative (both of which are instant cationic polysaccharides of claim 27) in Rughani’s Example 4-2 (Conditioner D) with a reasonable expectation of success. The range 0.1-15 wt.% for the amount of the cationic polymer overlaps with instant range 0.01-10 wt.% for the amount of the cationic polymer, thus rendering instant range prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, Rughani renders obvious instant claims 26 and 27.
With respect to instant claims 28 and 29, Rughani’s Example 4-2 (Conditioner D) contains 0.1 wt.% of thickener(s) which can be chosen from acrylates copolymer, hydroxyethyl cellulose or hydroxypropyl guar. It would be obvious to one skilled in the art to use 0.1 wt.% of hydroxypropyl guar (as a thickener) in Rughani’s Example 4-2 (Conditioner D) with a reasonable expectation of success. The hydroxypropyl guar is a nonionic polysaccharide which is a galactomannan. Thus, Rughani renders obvious instant claims 28 and 29.
With respect to instant claim 30, Rughani’s Example 4-2 (Conditioner D) contains optional ingredients, such as nonionic surfactants, in the amount of 1.2 wt.%. It would be obvious to one skilled in the art to include a nonionic surfactant in the amount of 1.2 wt.% with a reasonable expectation of success. Thus, Rughani renders obvious instant claim 30.
With respect to instant claim 31, Rughani’s Example 4-2 (Conditioner D) contains fatty compound, which is mineral oil or cetearyl alcohol (both of which teach instant non-silicone fatty substances) in the amount of 6.2 wt.%. Thus, Rughani renders obvious instant claim 31.
With respect to instant claim 32, Rughani teaches (see claim 2 and [0031]) that its hair treatment composition (such as shampoo) can be left on the hair for about 30 seconds to about 20 minutes. Such range overlaps with instant range from 1 minute to 15 minutes, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Rughani renders obvious instant claim 32.
With respect to instant claim 33, Rughani teaches ([0025]) that in a standard shampooing and conditioning treatment, the hair is cleansed with a shampoo, which is rinsed from the hair, after which a conditioner is applied to the hair. It would be obvious to one skilled in the art to rinse off the shampoo (with water) before applying the conditioner. Thus, Rughani renders obvious instant claim 33.
With respect to instant claim 34, Rughani teaches ([0032]) that a hair treatment composition may be allowed to remain on the hair while a subsequent hair treatment composition is applied to the hair. That is, one or more hair treatment compositions may be layered (or mixed) on the hair and together allowed to remain on the hair for a period of time. Thus, according to Rughani’s such teaching, it would be obvious to one skilled in the art not to rinse-off Rughani’s conditioner (such as Example 4-2 (Conditioner D)) before applying the hair treatment composition in Rughani’s step (C) with a reasonable expectation of success. Thus, Rughani renders obvious instant claim 34.
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 15, 16, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 36 of copending Application No. 18/870,013 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reason:
Claim 36 of App.’013 teaches the following:
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Thus, claim 36 of App.’013 renders obvious instant claims 15, 16, 18 and 19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
July 11, 2026
Prosecution Insights