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 Status
Claims 1-11 and 13-16 are pending and under current examination.
Priority
This application is a CON of Application 17/209,292, filed 03/23/2021, now abandoned. Application 17/209,292 claims priority to US PRO 63/000,016, filed 03/26/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/28/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
The numbering of claims is not in accordance with 37 C.F.R. 1.121(c), particularly “All of the claims presented in a claim listing shall be presented in ascending numerical order.”
The instant claim set presents claims 1-11 and 13-16 with no claim 12 presented. In the interest of compact prosecution, the claims are examined herein. Any subsequent amendments must comply with 37 C.F.R. 1.121 (see also MPEP 714).
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 1-11 and 13-16 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 1 recites a hair care composition comprising “a high melting point fatty compound”. The term “high melting point” is a relative term which renders the claim indefinite. The term “high melting point” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification states (emphasis added) “[t]he one or more high melting point fatty compounds useful herein can have a melting point of 25°C or higher” (pg. 6, bottom paragraph), but does not set forth a clear definition of what constitutes a “high” melting point. This is further confused by pg. 9, bottom paragraph of the specification which states that “[l]ow melting in this case is considered to be a melting point of at most about 45°C”. One of ordinary skill in the art would not be reasonably apprised of the scope of compounds that satisfy the limitation of “a high melting point fatty compound”.
Claim 1 recites “a triglyceride oil having at least about 30 wt.% C18:1”. This is indefinite as “at least” requires a value of 30 or higher while “about” encompasses values less than 30. The scope of values encompassed by “at least about” is therefore indefinite, and the metes and bounds of the claim uncertain.
Claim 1 recites “the ratio of triglyceride oil to low melting point wax is about 90:10 to about 50:50”. No units are associated with the ratio (weight, volume, mole, etc.), rendering the metes and bounds of the claim uncertain.
Claims 2-11 and 13-16 are rejected under 35 U.S.C. 112(b) by virtue of their dependency on indefinite claim 1 and failure to cure the deficiencies noted above.
Claim 2 recites “the ratio of triglyceride oil to low melting point wax is about 85:15 to about 60:40”. No units are associated with the ratio (weight, volume, mole, etc.), rendering the metes and bounds of the claim uncertain.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitations “orange”, “lemon”, “bitter orange”, “acacia farnesiana”, “narcissus poeticus”, “rose flower”, and “jasmine” and the claim also recites "citrus aurantium dulcis," "citrus limon," "aurantium amara," “cassie flower”, “narcissus flower”, "rose centifolia," and "jasminium sambac," which are the narrower statements of the limitations, respectively.
Similarly, claim 7 recites the broad recitations "orange," "lemon," and "bitter orange", and the claim also recites "citrus aurantium dulcis," "citrus limon," and "aurantium amara", respectively. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claims, and therefore not required, or (b) a required feature of the claims.
Regarding the use of “orange” and “citrus aurantium dulcis” in claims 6 and 7, it is unclear whether infringement would occur through the use of the wax of other types of oranges, such as Citrus reticulata or Citrus bergamia Risso, or exclusively the use of Citrus aurantium dulcis. Regarding the use of “lemon” and “citrus limon” in claims 6 and 7, it is unclear whether infringement would occur through the use of the wax of other types of lemons, such as Citrus meyeri or Citrus depressa, or exclusively the use of Citrus limon. Regarding the use of “aurantium amara” and “bitter orange” in claims 6 and 7, it is unclear whether infringement would occur through the use of the flower wax of other types of bitter oranges, such as Aurantium myrtifolia or Aurantium daidai, or exclusively through the use of Aurantium amara. Regarding the use of “acacia farnesiana” and “cassie flower” in claim 6, it is unclear whether infringement would occur through the use of waxes derived from other portions of the acacia farnesiana plant, or exclusively through the use of waxes derived from the flower. Regarding the use of “narcissus poeticus” and “narcissus flower” in claim 6, it is unclear whether infringement would occur through the use of waxes derived from other portions of the narcissus poeticus plant, or exclusively through the use of waxes derived from the flower. Regarding the use of “rose flower” and “rose centifolia” in claim 6, is unclear whether infringement would occur through the use of the wax of other types of roses, such as Rosa alba or Rosa villosa, or exclusively through the use of Rosa centifolia. Regarding the use of “jasmine” and “jasminium sambac” in claim 6, it is unclear whether infringement would occur through the use of the wax of other types of jasmine, such as Jasminum adenophyllum, Jasminum multiflorum, or others. It is further unclear whether infringement would occur through the use of waxes derived from other portions of the rosa centifolia plant, or exclusively through the use of waxes derived from the flower.
It is suggested that Applicant can overcome this rejection by amending to eliminate either the narrow or broad claim limitations.
Claim 8 recites the limitation "the fatty alcohol" in line 1. There is insufficient antecedent basis for this limitation in the claim as claim 1, from which claim 8 depends, recites a “fatty compound”, but does not recite a “fatty alcohol”. For purposes of examination and applying prior art, the Examiner interprets that claim 8 requires that the high melting point compound comprises a fatty alcohol selected from those recited in claim 8.
Claim 16 recites “the triglyceride oil has at least about 50% C18:1”. This is indefinite as “at least” requires a value of 50 or higher while “about” encompasses values less than 50. The scope of values encompassed by “at least about” is therefore indefinite, and the metes and bounds of the claim uncertain.
Claim Interpretation
Regarding the claimed triglyceride oil having at least about 30 wt.% C18:1 (instant claim 1) and at least about 50% C18:1, the instant specification states that “[i]n some embodiments, the triglyceride oil may be selected from the group consisting of safflower seed oil, avocado oil, almond oil, olive oil, tea seed oil, chullu (wild apricot) seed oil, peanut oil, marula oil and combinations thereof. These triglyceride oils are at least 30% C18: 1, in some embodiments at least 50% C18:1. Safflower seed oil (high oleic acid (QA) version) has 73% C18:1; Avocado oil has from 55% to 75%, almond oil from 60% to 70%, and olive oil from 65% to 80% C18:1.” (pg. 9, paragraph 2). The Examiner therefore interprets that safflower seed oil, avocado oil, almond oil, olive oil, tea seed oil, chullu (wild apricot) seed oil, peanut oil, and marula oil satisfy the triglyceride oil of instant claim 1, and safflower seed oil (high oleic acid (QA) version, avocado oil, almond oil, and olive oil further satisfy the triglyceride oil of instant claim 16.
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 1-5, 8-11, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Battermann et al. (DE 102010002863 A1, published September 15, 2011, included on IDS submitted 05/28/2025), hereafter “Battermann”, as evidenced by Global Safety Management (“Spermaceti Wax” 2015, https://www.fishersci.com/store/msds?partNumber=S25795&productDescription=SPERMACETI+WAX+100+G&vendorId=VN00115888&countryCode=US&language=en), in view of Marsh et al. (US 2014/0335036 A1, published November 13, 2014, included on IDS submitted 05/28/2025), hereafter “Marsh”.
Herein, the Examiner relies on the translation of Battermann submitted in parent Application 17/209,292.
Regarding instant claim 1, Battermann teaches hair treatment compositions containing a cosmetic carrier and at least four different natural oils (see entire document, particularly Abstract and claim 1). The cosmetic carrier may in particular be aqueous (paragraph [0011]). Battermann teaches the inclusion of at least one surfactant including cationic surfactants (paragraphs [0108] and [0050]). Battermann teaches the compositions contain fatty substances such as fatty alcohols (paragraph [0130]), examples of which include cetyl, stearyl, and behenyl alcohol (paragraph [0133]); per the instant specification, fatty alcohols including cetyl alcohol, stearyl alcohol, and behenyl alcohol are suitable for use as high melting point fatty compounds (pg. 7, paragraph 2).
Battermann teaches that the natural oils are preferably obtained from fruits, nuts, seeds, stones, or kernels (paragraph [0011]) and are selected from those including bitter almond oil, peanut oil, almond oil, olive oil, marula oil, and sweet almond oil (claim 5); avocado oil is also provided as a suitable natural oil (paragraph [0011]).Battermann particularly teaches the inclusion of apricot kernel (seed) oil, sweet almond oil, marula oil, and olive oil (paragraphs [[0011]-[0017], and exemplifies their inclusion (paragraph [0163]). Battermann teaches that each individual oil component is at least 0.01 wt. %, and at most 5.0 wt.% (paragraph [0022]).
Battermann teaches that fatty substances of natural and synthetic waxes can be included (paragraph [0130]), examples of which include spermaceti and fruit waxes such as apple wax or citrus wax (paragraph [0134]). As evidenced by Global Safety Management, spermaceti wax has a melting point of 42-50 °C (pg. 4, “SECTION 9: Physical and chemical properties”), consistent with the recited “about 45 °C or less”. The amount used is preferably 0.1-15 wt.% (paragraph [0135]).
Battermann therefore suggests a ratio of oil (0.01 to 5.0 wt.%) to wax (0.1-15 wt.%) consistent with the instant claim. As just one example, if the oil is present at 5.0 wt.%, the ratio of oil to wax is suggested between 50:1 to 1:3, overlapping the claimed range. 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)”.
Regarding instant claim 2, as noted above, Battermann suggests a ratio of oil (0.01 to 5.0 wt.%) to wax (0.1-15 wt.%) consistent with the instant claim. As just one example, if the oil is present at 5.0 wt.%, the ratio of oil to wax is suggested between 50:1 to 1:3, overlapping the claimed range.
Regarding instant claims 3-4, Battermann teaches that each individual oil component is at least 0.01 wt. %, and at most 5.0 wt.%, and a total amount of oil of at least 0.04 wt.% and at most 40 wt.% (paragraph [0022]), overlapping the claimed ranges.
Regarding instant claim 5, as noted above, Battermann teaches that the natural oils are preferably obtained from fruits, nuts, seeds, stones, or kernels (paragraph [0011]) and are selected from those including bitter almond oil, peanut oil, almond oil, olive oil, marula oil and sweet almond oil (claim 5); avocado oil is also provided as a natural oil (paragraph [0011]). Battermann particularly teaches the inclusion of apricot kernel (seed) oil, sweet almond oil, marula oil, and olive oil (paragraphs [0011]-[0017]), and exemplifies their inclusion (paragraph [0163]).
Regarding instant claim 8, as noted above, Battermann teaches the inclusion of fatty substances such as fatty alcohols (paragraph [0130]), examples of which include cetyl, stearyl, and behenyl alcohol (paragraph [0133]).
Regarding instant claim 9, Battermann teaches fatty alcohols are preferably in amounts of 0.1 to 20 wt.% (paragraph [0133]).
Regarding instant claim 10, Battermann teaches that It is preferred that the compositions are used to treat human hair, and preferred agents according to the invention include conditioners (paragraph [0004]).
Regarding instant claims 11 and 13, Battermann further teaches identical formulations can be used as rinse-off and leave-on formulations (paragraph [0161]).
Regarding instant claim 14, Battermann teaches the inclusion of monoalkyltrimethyl (quaternized) ammonium salts with a chain length of the alkyl radical of 16 to 24 atoms (paragraphs [0039]-[0041]), consistent with the definition of mono-long alkyl quaternized ammonium salt in the instant specification (pg. 4).
Regarding instant claim 15, Battermann teaches that cationic surfactants are preferably present in amounts of 0.1 to 7.5 wt.% (paragraph [0050]).
Regarding instant claim 16, as noted above, Battermann particularly teaches the inclusion of apricot kernel (seed) oil, sweet almond oil, and olive oil (paragraphs [0011]-[0017]), and exemplifies their inclusion (paragraph [0163]).
Battermann does not explicitly teach the limitation of instant claim 1 of a gel matrix.
Marsh teaches a hair care composition that includes a gel matrix phase; the gel matrix comprises high melting point fatty compounds, a cationic surfactant system, and an aqueous carrier (see entire document, particularly abstract and claim 1). The composition is particularly taught to be a hair care conditioning composition (paragraph [0001]). Fatty alcohols are taught to be suitable for use in the composition as high melting point fatty compounds (paragraph [0038]). The cationic surfactant system can be selected from: mono-long alkyl quaternized ammonium salt; a combination of mono-long alkyl quaternized ammonium salt and di-long alkyl quaternized ammonium salt, mono long alkyl amidoamine salt; a combination of mono-long alkyl amidoamine salt and di-long alkyl quaternized ammonium salt, a combination of mono-long alkylamidoamine salt and mono-long alkyl quaternized ammonium salt (paragraph [0026]). Marsh teaches that the gel matrix is suitable for providing various conditioning benefits such as slippery feel during the application to wet hair and softness and moisturized feel on dry hair (paragraph [0046]).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the instant invention to modify the hair care composition of Battermann with the gel matrix of Marsh. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success in order to incorporate a hair conditioning carrier that provides benefits such as slippery feel during the application to wet hair and softness and moisturized feel on dry hair, as suggested by Marsh (paragraph [0046]). There is a reasonable expectation of success as the compositions of Battermann are similarly taught to be hair conditioners (paragraph [0004]) and are taught to comprise an aqueous carrier, fatty alcohols, and cationic surfactants.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Battermann, as evidenced by Global Safety Management, in view of Marsh as applied to claims 1-5, 8-11, and 13-16 above, and further in view of Furukawa et al. (JP 2003113032 A, published April 18, 2003, included on IDS submitted 05/28/2025), hereafter “Furukawa”.
Herein, the Examiner relies on the translation of Furukawa submitted in parent Application 17/209,292.
The teachings of the modified Battermann are set forth above. The combination of Battermann and Marsh do not teach the inclusion of a low melting point wax selected from those recited in instant claims 6 and 7.
Furukawa teaches that orange peel wax is useful as an agent for protecting the skin and the hair and improving feel (see entire document, particularly abstract). Furukawa teaches that the melting point is 60 °C or lower, and it can be easily incorporated into a cosmetic and, as a hair protector and conditioning agent, it improves the ease of combing (pg. 1, “Background of the Invention”); orange peel wax is consistent with those recited in instant claims 6 and 7.
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the instant invention to modify the hair conditioning composition of Battermann in view of Marsh with the orange peel wax taught by Furukawa. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success because Furukawa teaches that orange peel wax is used as a hair protector and conditioning agent that improves the ease of combing and of obtaining smooth, firm hair; it is also provides advantages over other cosmetic waxes, such as being easily commercially available (compared to animal waxes such as beeswax) and overcoming issues of being hard, brittle, and having a high melting point (compared to other commercially available vegetable waxes such as candelilla and carnauba wax) (pg. 1, “Background of the Invention”). There is a reasonable expectation of success as the compositions of the modified Battermann are particularly taught to be hair conditioning compositions (paragraph [0004]) and can include fruit waxes such as citrus wax (paragraph [0134]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDITH M KAMM whose telephone number is (703)756-4575. The examiner can normally be reached M-F 8:00 am-4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611
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