CTNF 18/906,741 CTNF 86481 DETAILED ACTION Claims 1-14 are currently pending and under examination. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority The instant application is a continuation of PCT/EP2023/051054, filed 01/18/2023, which claims priority to DE 102022203484.8, filed 04/07/2022. Information Disclosure Statement Applicant’s Informational Disclosure Statement, filed on 01/06/2025 has been considered. Please refer to Applicant's copy of the 1449 submitted herein. Claim Objections 07-29-01 AIA Claim 10 and 14 is objected to because of the following informalities: Claim 10 contains the limitation “selected the group consisting of: from…” which appears to be a typographical error for “selected from the group consisting of: from …”. Claim 14 contains the limitation “scalpe” which is a typographical error for scalp . Appropriate correction is required. Claim Rejections - 35 USC § 112 (b) 07-30-02 AIA 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. 07-34-01 Claims 8 and 14 is 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. Claim 8 contains multiple limitations in parenthesis, wherein the parenthesis makes it unclear if the limitations inside the parenthesis are required or not. In multiple instances the limitations inside the parenthesis are narrower than the limitation preceding it, e.g. lactic acid esters is broader the (sodium lauroyl lactylate, ….), thus the scope of the claims is unclear. For examination purposes the limitations inside the parenthesis will be interpreted as being optional and not required. Claim 14 contains the limitation “rinsing the hair or scalpe out again after contact time” wherein the limitation of “again” implies a previous rinsing step which is not recited in the instant claim, and thus has unclear metes and bounds. It is unclear if the rinsing steps is required to be a second rinsing step, or only one rinsing step is required. For examination the step of rinsing after application of the treatment agent will be deemed to meet the instant claim limitations. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 1, 4-5 and 13 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Mintel (Mintel, Dandruff Oily Shampoo, Applicant provided) as evidenced by Toxic Free (Toxic Free Foundation, Ethylhexylglycerin, accessed 04/27/2026) . Mintel teaches a composition comprising ethylhexylglycerin and sodium salicylate and additional ingredients which read on carrier (page 2). Toxic Free evidences the structure of ethylhexylglycerin reads on Formula I, wherein R1 is C8 branched alkyl group and n is 1 . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 1-5 and 7-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 944 852 (Applicant provided) as evidenced by Toxic Free (Toxic Free Foundation, Ethylhexylglycerin, accessed 04/27/2026) . Regarding claims 1 and 4-5, the limitation of a hair treatment agent, including a cosmetic carrier, comprising a) at least one compound of formula I and b) at least one active anti-dandruff ingredient different from the at least one compound of formula I a) is met by the ‘852 publication teaching antidandruff cosmetic composition comprising piroctone olamine (abstract) and diols including ethylhexylglycerin [0017]. Toxic Free evidences the structure of ethylhexylglycerin reads on Formula I, wherein R1 is C8 branched alkyl group and n is 1. Regarding claim 2, the limitation of wherein at least one compound of formula I a) and b) are present in the agent in a weight ratio ranging from 5:1 to 1:1 is met by the ‘852 publication teaching ratio of piroctone olamine to the booster is from 0.01 to 2.4, more preferably from 0.1 to 1.2 [0035]. As MPEP 2144.05 recites “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization”. Regarding claim 3, the limitation of wherein the total compound of the at least one formula (I) is 0.1-3 wt% is met by the ‘852 publication teaches 0.1 wt%-1.0 wt% of the booster [0161]. Regarding claim 7, the limitation of wherein the total amount of that at least one active anti-dandruff ingredient b) different form a) is 0.05 to 1 wt% relative to the total weight of the hair treatment agent is met by the ‘852 publication teaching shampoo comprising 0.05-5 wt% piroctone olamine [0161]. Regarding claims 8-9, the limitation of wherein the at least one active anti-dandruff agent is piroctone olamine is met by the ‘852 publication teaching piroctone olamine (abstract). Regarding claim 10, the limitation of further comprising 0.5 to 20 wt% of at least one surfactant c) selected from the group consisting of anionic surfactants, amphoteric surfactants, zwitterionic surfactants, non-ionic surfactants, cationic surfactants and mixtures thereof is met by the ‘852 publication teaching at least 0.5 % by weight of surfactants, preferably anionic surfactants [0163]. Regarding claim 11, the limitation of further comprising 0.01-3 wt% of at least one cationic polymer d) wherein the quantities specified relate to the total weight of the hair treatment agent is met by the ‘852 publication teaching at least 0.5 wt% of further components including polymers [0161] wherein cationic fixative polymers are taught [0167]. Regarding claim 12, the limitation of further comprising 0.01-5 wt% of at least one hair care substance e) different from d) wherein the quantities specified relate to total weight of the hair treatment agent is met by the ‘852 publication teaching at least 0.5 wt% of further components including polymers and lubricants [0161]. Regarding claim 13, the limitation of wherein the hair treatment agent is an anti-dandruff shampoo is met by the ‘852 publication teaching an anti-dandruff composition in the form of a shampoo (abstract, [0161]). Regarding claim 14, the limitation of a cosmetic method for controlling scalp dandruff, comprising applying the hair treatment agent of claim 1 to hair or scalp is met by the ‘852 publication teaching use of the composition to be used on human hair and/or scalp [0092] wherein the composition is taught to be an anti-dandruff composition, thus teaching the step of applying the composition of claim addressed above, wherein rinsing step is optional and thus not required. 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”. KSR v. Teleflex , 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro , 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” ( Id. ). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex , 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of disclosed ingredients (for example, ethylhexylglycerin, piroctone and additional agents of surfactant, cationic polymer and lubricants) from within the prior art disclosure of the ‘852 patent, to arrive at the instantly claimed hair treatment composition “yielding no more than one would have expected from such an arrangement”. That being said and in lieu of objective evidence of unexpected results, the anti-dandruff agent, booster agent and additive components can be viewed as a variable which achieves the recognized result of successfully treating a specific patient as an antidandruff composition. The optimum or workable range of dosing can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellants provide no evidence of any secondary consideration such as unexpected results that would render the optimized amounts of ingredients nonobvious . 07-22-aia AIA Claim (s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 944 852 (Applicant provided) as evidenced by Toxic Free as applied to claim s 1-5 and 7-14 above, and further in view of US 2016/0100574 and WO 2020/007571 . As mentioned in the above 103 rejection, all of the limitations of claims 1-5 and 7-14 are taught by the ‘852 publication. The ‘852 publication does not specifically teach methylheptylglycerin (claim 6). The ‘574 publication teaches personal care compositions [0001] to be used in the field of cosmetics [0020]. Structures of glycerylethers include: PNG media_image1.png 86 350 media_image1.png Greyscale wherein R 2 stands for linear or branched alkyl radical having 2 to 12 carbon atoms [0022]. Ethylhexylglycerin is taught [0033]. The ’571 publication teaches antimicrobial compositions comprising glycerol derivatives used in cosmetic formulations (abstract) wherein glycerin derivatives include 2-ethylhexyoxypropediol and 3-[(2-octyl)oxy]-1,2-propanediol (claim 1), which are ethylhexylglycerin and methylheptyglycerin as evidenced by page 107. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) as is stated in MPEP 2144.09. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use methylheptylglycerin in the compositions of the ’852 publication because methyheptyglycerin and ethylhexylglycerin are structural isomers. "Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties." This is supported by the ‘574 publication teaching glycerylethers with branched carbon chain lengths of 2-12 carbons being used in personal care compositions and the ‘571 publication teaching glycerin derivatives used in cosmetic care compositions to include ethylhexylglycerin and methyheptylglycerin, thus providing an expectation of success in using methylheptylglycerin in place of the ethyhexylglycerin . Double Patenting 08-33 AIA 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. 08-35 AIA Claim s 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-9 of copending Application No. 18/906,773 (reference application) in view of EP 3 944 852 . Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘773 publication teaches an antidandruff shampoo comprising methylheptylglycerin, an anionic surfactant, cationic polymer and additional agent in overlapping amounts applied to hair. The ‘852 publication teaches anti-dandruff shampoo comprising piroctone olamine and a booster comprising ethylhexylglycerin (abstract, [0017], [0161]). It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use a specific antidandruff agent, piroctone olamine, in the antidandruff shampoo taught by the ‘773 application as the ‘773 application and the ‘852 publication are directed to antidandruff shampoos which comprise glycerylethers . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-35 AIA Claim s 1, 4-6, 8-9 and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-9 of copending Application No. 18/906,654 (reference application) in view of EP 3 944 852 . Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘654 application teaches an antidandruff shampoo comprising methylheptylglycerin applied to hair. The ‘852 publication teaches anti-dandruff shampoo comprising piroctone olamine and a booster comprising ethylhexylglycerin (abstract, [0017], [0161]). It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use a specific antidandruff agent, piroctone olamine, in the antidandruff shampoo taught by the ‘654 application as the ‘654 application and the ‘852 publication are directed to antidandruff shampoos which comprise glycerylethers . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion No claims are allowed. Examiner Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm. 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, Brian-Yong Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613 Application/Control Number: 18/906,741 Page 2 Art Unit: 1613 Application/Control Number: 18/906,741 Page 3 Art Unit: 1613 Application/Control Number: 18/906,741 Page 4 Art Unit: 1613 Application/Control Number: 18/906,741 Page 5 Art Unit: 1613 Application/Control Number: 18/906,741 Page 6 Art Unit: 1613 Application/Control Number: 18/906,741 Page 7 Art Unit: 1613 Application/Control Number: 18/906,741 Page 8 Art Unit: 1613 Application/Control Number: 18/906,741 Page 9 Art Unit: 1613 Application/Control Number: 18/906,741 Page 10 Art Unit: 1613 Application/Control Number: 18/906,741 Page 11 Art Unit: 1613 Application/Control Number: 18/906,741 Page 12 Art Unit: 1613 Application/Control Number: 18/906,741 Page 13 Art Unit: 1613
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