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/Restriction
Inventor’s elections, with traverse, are acknowledged. However, upon further consideration and in the interest of furthering prosecution, the election/restriction requirements are withdrawn. All claimed subject matter will be examined.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in France on 4/17/2024. It is noted, however, that applicant has not filed a certified copy of the FR2403981 application as required by 37 CFR 1.55. (The examiner notes that there is a communication of record on 9/17/2025 stating that electronic retrieval of the priority document failed.)
Claim Objections
Claims 53, 69 and 72 are objected to because of the following informalities: the claims contain multiple periods (a., b., c., etc.). Claims must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. MPEP 608.01(m).
Appropriate correction is required.
The examiner notes that claims 66 and 68 are identical. Claim 68 is, therefore, objected to as a duplicate claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 53-55, 58-63, 67 and 72 are rejected under 35 U.S.C. 103 as being unpatentable over US 10,251,821 B2.
Inventor teaches a hair treatment composition comprising components a-i and wherein the composition has pH of less than about 7 and is stable for at least 24 hours (independent claim 53). Dependent claims 54, 55, 58, 60 and 63 teach wt. % ranges of particular components. Dependent claim 59 teaches that the silicon compound is dimethicone (i.e. dimethylpolysiloxane), amodimethicone and/or derivatives thereof. Dependent claim 61 teaches that the composition comprises at least one plant oil. Dependent claim 62 teaches that the composition further comprises at least one polymer chosen from carbomers, quaternary ammonium polymers and/or polysaccharide polymers. Dependent claim 67 teaches a composition pH of about 3 to about 5. Dependent claim 72 teaches a method of use of the composition comprising leaving in the hair for about 15 minutes and then rinsing the hair, wherein the method imparts softness, smoothness, ease of combing/detangling, frizz control, and/or reduced appearance of split ends.
US 10.251,821 B2 teaches an oxidative hair treatment composition comprising (abstract):
50-96 wt.% water;
0.5-20 wt.% hydrogen peroxide;
2.7-6 wt.% of at least one linear saturated 1-alkanol with 12-30 carbon atoms;
0.3-1 wt.% of at least one polyethylene glycol ether of a linear saturated C12-C22 alkanol with 15-30 ethylene oxide units in the molecule;
0.3-1 wt.% at least one anionic surfactant;
0.1-0.5 wt.% at least one cellulose ether;
0.1-0.5 wt. % of at least one oil.
In order to stabilize the composition during storage, the composition has a pH of 2.5-5.5, preferably 3.0-5.0 (column 7, line 7).
A wide variety of cosmetic oils may be utilized in the composition, including explicitly silicon oils such as, for instance, dimethylpolysiloxane (column 6, line 13).
The composition is applied to the hair for a time period of 1-60 minutes and then the hair is rinsed (column 17, line 39, line 52).
The single example of the oxidative composition comprises (column 18, Table 2):
Cetearyl alcohol (a non-ionic surfactant)
Laureth-23 (a fatty alcohol)
Hydroxyethyl cellulose (a polysaccharide polymer)
Apricot kernel oil (a cosmetic plant oil)
Hydrogen peroxide
Water (a solvent).
Inventor principally distinguishes over the prior art exemplified composition essentially in that at least one silicone compound is a component of the composition. However, as the prior art makes clear, a wide variety of cosmetic oils are explicitly taught as equivalent oils (column 4, line 60ff) and that it is exceptionally preferred to use a mixture of such oils (column 6, line 37). That being the case, one of ordinary skill, before the effective filing date of the instant invention and with a reasonable expectation of success, would have found it obvious to add a silicone oil, for instance, such as dimethicone (dimethylpolysiloxane), to the exemplified composition. One of ordinary skill in the art would have been motivated to do so given the explicit teaching of the prior art that a mixture of oils is exceptionally preferred, and that a variety of oils are explicitly taught as equivalent.
With respect to the instant limitation of at least 24 hour stability, the prior art composition is explicitly taught as stable and without specifying any time limit to this stability. That being the case, the prior art composition is presumed stable indefinitely. And that being the case, the instant 24 hour limitation is intrinsically encompassed by the prior art teaching.
With respect to the limitations of claim 72 regarding imparting softness, smoothness, ease of combing/detangling, etc., note that no patentable distinction is made by a recitation of an intended use or result unless some structural difference is imposed by the use or result on the structure or material recited in the claim, or some manipulative difference is imposed by the use or result on the action recited in the claim. Note the discussion at MPEP 2173.05(g). That being the case, the instant limitation regarding imparting softness, smoothness, ease of combing/detangling, etc., can be given no patentable weight and cannot distinguish over the cited art.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 72 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 74 (9/26/2024 amended claim set) of copending Application No. 18/898,086 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The subject matter of the instant claim and that of the reference application is identical. The only difference is rhetorical in that the instant claim includes limitations with respect to imparted properties to the hair of softness, smoothness, etc. However, since the hair treatment composition of the instant claim and that of the reference application, and the method of its application, are identical, imparted properties such as hair softness, smoothness, etc. will also be necessarily identical. This is so because a compound (in the instant case, a composition comprising various compounds) and its properties are inseparable (MPEP 2112.01; 2141.02 (V)). In short, the instant limitation is intrinsic to the teachings of the reference application.
Furthermore claim 72 of this application is patentably indistinct from claim 74 (9/26/2024 amended claim set) of Application No. 18/898,086 (hence the double patenting rejection immediately above). Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
Allowable Subject Matter
Claim 56, 57 and 64-66 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 70 and 71 are objected to as being dependent upon a base claim which has also been objected to, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush, can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 9/27/2026
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