DETAILED ACTION
Claims 1, 3, 5-11, and 31-40 are pending and under consideration on the merits.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/18/25 and 3/26/26 was filed prior to the mailing date of a Final Office Action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of the Rejections
The 35 USC 112(b) rejection is withdrawn in view of the amendment, but a new rejection was necessitated by the amendment.
The 102 rejections are withdrawn in view of the amendment.
The 103 rejections are revised in view of the amendment and expanded to include the newly added claims.
The double patenting rejections are revised in view of the amendment and expanded to include the newly added claims.
A new 35 112(a) rejection was necessitated by the amendment.
The specification is newly objected to in view of the amendment.
Specification
The amendment filed on 1/14/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: page 6 has been amended to recite that the powder has a “particle size from about 20 nanometers to about 2000 nanometers,” wherein previously this passage recited a size range of about 20 to about 2000 microns.
An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).
Here, Applicant argues that it is evident that the specification intended to teach a particle size unit of nanometers and not microns based on the context and purpose of the disclosure, such that the amendment does not constitute new matter.
In response, the skilled artisan would recognize that a cosmetic powder composition could be formulated to have a particle size of about 20 to about 2000 microns. Therefore, it is not clear from the evidence of record that the skilled artisan would have recognized that the recitation of microns as the unit of particle size was erroneous, and further that the correction would entail changing the unit of particle size to nanometers. Applicant’s argument that there is a typographical error “based on the context and purpose of the disclosure” is not persuasive because it is conclusory without any discussion of what about the context and purpose of the disclosure would inform the skilled artisan that there is a typographical error that would be correctable by changing microns to nanometers. Therefore, the amendment to the specification prima facie introduces new matter.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Newly added claim 31 recites, and claim 1 has been amended to recite, that the powder has a “particle size from about 20 nanometers to about 2000 nanometers.” The Office has reviewed the specification and the only discussion of particle size is at page 6, 3rd paragraph, which recites a size range of from about 20 to about 2000 microns:
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While Applicant has amended the specification to provide support for the claim amendments, the amendment to the specification introduces new matter as discussed above. Therefore, the claim amendment is unsupported by the disclosure as originally filed.
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 31-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as 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.
Newly added claim 31 recites that the composition comprises a combination of alpha and gamma kerateine, and which "are not denatured and maintain natural keratin protein conformation." The skilled artisan would recognize that kerateines are produced by the reduction or oxidation of keratins, which the present specification also confirms at paragraph 16 as published. The skilled artisan, however, would further recognize that the reduction of a protein such as keratin is a process that involves the alteration of the primary structure by cleaving of the disulfide bonds, which necessarily will result in a change of conformation relative to its natural keratin conformation. Therefore, kerateines cannot maintain natural keratin protein conformation and without any denaturation as recited by the claim. Clarification is required. Since
dependent claims 32-37 do not clarify the point of confusion, they are also rejected.
For the purpose of examination in view of the prior art, the claims must be given
their broadest reasonable interpretation. MPEP 2111. Here, because claim 31
expressly and unequivocally requires that the composition comprises alpha and gamma
kerateined, for the purpose of examination in view of the prior art, the claims have been
interpreted as allowing for the degree of deviation from natural keratin protein
conformation that is present in alpha and gamma kerateine.
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, 3, and 31-40 are rejected under 35 U.S.C. 103 as unpatentable over Luo et al. (Materials Science and Engineering C 63 (2016) 352-358).
As to claims 1, 3, and 31-40, Luo discloses kerateine nanoparticles in the form of a powder and obtained from human hair as recited by claims 1 and 21-22 (Abstract; page 353, 1st paragraph, and Section 2.3 on page 353 and Section 3.1 on page 354). The kerateines will comprise both alpha and gamma kerateine since Luo does not disclose separating and removing either kind of kerateine from the nanoparticles. The Luo powder does not comprise any other ingredients, thereby reading on the “consisting essentially of” language in the preamble of claims 1 and 31. Luo teaches particle sizes of the kerateine nanoparticles that are within the about 20 to about 2000 nanometer range recited by claims 1 and 31, such as about 60 nm and about 115 nm (see Figure 2). The kerateines will be substantially or completely soluble in water as evidenced by the present specification, which states at paragraph 16 as published that kerateines obtained by reduction of human hair fibers are soluble. The kerateines are considered to maintain sufficient protein conformation to meet the requirements of claim 31 that the kerateines are not denatured and maintain natural keratin protein conformation in view of the indefiniteness of this limitation and the manner in which this limitation has been interpreted as laid out in the 112(a) rejection, supra. The recitation by the preamble of claim 1 that the composition is for colored, treated, bleached, or damaged hair, and the recitation of claim 32 that the human hair is end cut hair, is merely an intended use of the composition, and as such is not granted any additional patentable weight, as it does not place any structural limitations on the claimed composition that would distinguish from the Luo kerateine powder.
Regarding claim 35, the Luo composition does not comprise sulfates, parabens, phthalates, colors, dyes, or gluten.
As to claim 36, the recitations that the composition is formulated for mixing with a hair colorant or developer to form a hair colorant mixture does not distinguish the composition from the Luo composition, which is also capable of being mixed with a hair colorant or developer to form a hair colorant mixture.
Regarding claims 1 and 37, the recitation that when the composition is mixed with a hair colorant and applied to colored treated, bleached, or damaged hair, there is a reduction in breakage and increased color retention will be a characteristic of the Luo composition because it comprises the same ingredients recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
The recitations of claims 38-40 regarding the components of the hair colorant that produce the functional results recited by claim 37 if the keratin protein powder composition is mixed with the hair colorant as recited by claim 37 are not granted additional patentable weight because the claims are drawn to a keratin protein powder composition, and not to the hair colorant composition with which the powder composition can be mixed. The recitations of claims 38-40 are merely directed to an intended use of the keratin protein powder composition (i.e., to be mixed with a hair colorant having the recited ingredients).
As to claims 1, 3, and 31-37, Luo does not further expressly disclose that the kerateine is derived from human hair in a manner such that they maintain sufficient natural keratin protein conformation to repave the cuticle of the hair and refill any keratin eroded by a hair coloring process as recited by base claim 1 or are not denatured and maintain natural keratin protein conformation as recited by base claim 31.
As to claims 1, 3, and 31-40, the kerateine powder of Luo is viewed as derived from human hair in a manner such that they maintain sufficient natural keratin protein conformation to repave the cuticle of the hair and refill any keratin eroded by a hair coloring process as recited by claim 1 based upon the evidence of record, since the present specification states merely that a reductant agent is added to the hair and mixed in order to obtain reduced hair (i.e., hair in which the keratin has been reduced to kerateine) according to standard methods already known in the art (page 4, 4th paragraph and page 5, third paragraph), and Luo similarly uses a standard reductive agent to obtain the kerateine without disclosing any additional steps or ingredients that would further alter the natural protein conformation (Section 3.1 on page 354). The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Regarding claims 3 and 33-34, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
Here, the kerateine powder disclosed by Luo comprises the same ingredients recited by the claims, and it is the Office’s position that the structure of the composition therefore will be the same regardless of whether it was obtained by the recited process steps, based upon the evidence of record. Additionally, regarding the temperature at which the freezing is carried out as recited by claim 34, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 5-11 are rejected under 35 U.S.C. 103 as unpatentable over Luo et al. (Materials Science and Engineering C 63 (2016) 352-358) as applied to claims 1, 3, and 31-40 above, and further in view of Burnett et al. (US Pat. Pub. 2016/0324750; of record in IDS) and Pressly et al. (US Pat. Pub. 2017/0119637; of record in IDS.
The teachings of Luo are relied upon as discussed above, but Luo does not further expressly disclose that the keratin protein filler composition is packaged in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), or a shampoo or conditioner (claim 10) nor one of the ingredients recited by claim 11 such as a dye or surfactant.
Burnett discloses a protein filler powder consisting of alpha kerateine or gamma kerateine for the treatment of damaged hair (paragraphs 6-8, 27, 42, and 52).
Pressly discloses a composition for repairing hair that has been damaged by a coloring or other reducing treatment (Abstract) and which may be packaged in the form of a kit along with a composition for coloring hair (paragraph 151) which comprises a color developer component and a bleaching component (paragraph 122), and may include a dye (paragraph 71), wherein one of the compounds imparts temporary or semi-permanent color to the hair (paragraph 22). The kit may comprise a shampoo or conditioner (paragraph 73). The composition may further comprise additional ingredients recited by claims 11 and 30 such as ammonia (paragraph 123), a surfactant (paragraph 72), perfumes, and antioxidants (claim 12 of Pressly).
As to claims 5-11, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the composition of Luo by packaging it in the form of a kit comprising a hair colorant composition comprising a developer and a compound to impart temporary or semi-permanent color, or a bleaching compound, a dye or pigment, a shampoo or conditioner, and wherein the colorant comprises one of the ingredients recited by claim 11 such as a dye, ammonia, a surfactant, perfumes, or antioxidants, since Burnett teaches that alpha kerateine or gamma kerateine compositions are useful for the treatment of damaged hair such that the skilled artisan reasonably would have expected that the Luo composition would be useful for the treatment of damaged hair, and the Pressly composition is for repairing hair that has been damaged such as by coloring, which is the same purpose as the composition disclosed by Burnett, such that the skilled artisan would have had a motivation to incorporate the Luo composition into a kit comprising the hair coloring/bleaching ingredients as taught by Pressly that are the cause of the damage as taught by Pressly, in order to provide the consumer with the ability to treat said damage without the inconvenience of requiring a separate purchase of the hair coloring/bleaching ingredients.
Response to Applicant’s Arguments
Applicant argues that Luo does not teach that the extracted kerateine retains its natural protein conformation, and that reductive extraction as performed by Luo leads to denaturation of proteins, while the conditions of the present application are specifically selected to preserve this conformation.
In response, the assertion that the kerateines produced by the Luo process are denatured while the conditions of the present application results in kerateines that are not denatured is conclusory and without any supporting evidence. As discussed in the 35 112(b) rejection, kerateines by definition are produced by oxidation or reduction to cleave the disulfide bonds, which necessarily will result in a change in natural protein conformation, and there is no evidence of record that the Luo kerateines will have a greater change in conformation that proteins produced under the conditions taught by the present specification. Indeed, the present specification states merely that a reductant agent is added to the hair and mixed in order to obtain reduced hair (i.e., hair in which the keratin has been reduced to kerateine) according to standard methods already known in the art (page 4, 4th paragraph and page 5, third paragraph), and Luo similarly uses a standard reductive agent to obtain the kerateine without disclosing any additional steps or ingredients that would further alter the natural protein conformation (Section 3.1 on page 354). The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Applicant argues that Luo does not teach the recited particle size range.
In response, Luo does in fact teach particles within the recited size range as discussed in the revised rejection, supra.
Applicant argues that Luo does not limit the keratin source to human hair but identifies multiple sources that include wool and feathers.
In response, this is not persuasive because Luo expressly uses human hair as the source of the kerateine used in the experiments disclosed therein (see section 2.1).
Applicant argues that Luo does not describe using the keratein in combination with a hair colorant, while the present claims include functional requirements for results that occur when the powder is used with a hair colorant.
In response, and as acknowledged by Applicant, the limitations to a hair colorant are merely functional, and the claims nowhere require that the kerateine powder is mixed with a hair colorant. The Luo kerateine powder comprises the same ingredients as the claimed powder and therefore will lead to the same results when mixed with a hair colorant.
Applicant also asserts that the rejection does not identify any motivation to modify Luo to arrive at the claimed keratin protein filler composition including selecting only alpha and gamma kerateine, isolating them exclusively from human hair, preserving their natural structure, formulating them as a nanoscale powder, and combining them with hair colorants to achieve specific performance benefits.
In response, and as discussed in the rejection, Luo already discloses nanoscale powders obtained from human hair which will comprise alpha and gamma kerateines and therefore does not require any modification to arrive at these elements, and the claims in fact do not require mixing the powder with a hair colorant as discussed above, and the Luo powder will have the same functional characteristics as the claimed powder based upon the evidence of record because they comprise the same ingredients as discussed above. Further, the claims do not require that the powder only comprises alpha and gamma kerateines, nor does Luo disclose adding any other ingredients to the kerateine powder.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3, 5-11, and 31-40 are rejected on the ground of nonstatutory double patenting as unpatentable over all claims of US Pat. Appl. No. 19/035,265 and in view of Pressly et al. (US Pat. Pub. 2017/0119637) and/or Luo et al. (Materials Science and Engineering C 63 (2016) 352-358 where indicated below.
The teachings of the secondary references are relied upon as discussed above.
The reference claims recite a cosmetic composition comprising gamma or alpha-kerateine derived from human hair that is not denatured and is in the form of a powder and wherein the composition may be a shampoo or conditioner hair care product. The kerateines will be soluble in water as is asserted by the present specification at paragraph 16. The recitation by the preamble of claims 1 and 31 that the composition is for colored, treated, bleached, or damaged hair, and the recitation of claim 32 that the human hair is end cut hair, is merely an intended use of the composition, and as such is not granted any additional patentable weight
Regarding claim 35, the reference composition does not comprise sulfates, parabens, phthalates, colors, dyes, or gluten.
As to claim 36, the recitations that the composition is formulated for mixing with a hair colorant or developer to form a hair colorant mixture does not distinguish the composition from the reference composition, which is also capable of being mixed with a hair colorant or developer to form a hair colorant mixture.
Regarding claims 1 and 37, the recitation that when the composition is mixed with a hair colorant and applied to colored treated, bleached, or damaged hair, there is a reduction in breakage and increased color retention will be a characteristic of the reference composition because it comprises the same ingredients recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
The recitations of claims 38-40 regarding the components of the hair colorant that produce the functional results recited by claim 37 if the keratin protein powder composition is mixed with the hair colorant as recited by claim 37 are not granted additional patentable weight because the claims are drawn to a keratin protein powder composition, and not to the hair colorant composition with which the powder composition can be mixed. The recitations of claims 38-40 are merely directed to an intended use of the keratin protein powder composition (i.e., to be mixed with a hair colorant having the recited ingredients).
Although the reference claims do not teach the recited particle size range, it would have been obvious to use such sizes because Luo teaches that kerateine nanoparticles suitably may have such sizes.
Although the reference claims do not teach that the keratin protein filler composition is packaged in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), nor one of the ingredients recited by claim 11 such as a dye or surfactant, it would have been prima facie obvious to modify the reference composition by packaging it in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), or one of the ingredients recited by claim 11 such as a dye, ammonia, a surfactant, perfumes, or antioxidants, since the reference composition is for the treatment of hair, such that the skilled artisan would have had a motivation to incorporate it into a kit comprising the hair coloring ingredients as taught by Pressly that cause hair damage as taught by Pressly, in order to conveniently provide the consumer with the ability to treat said damage without requiring the inconvenience of a separate, additional purchase of the hair care composition.
Although the reference claims do not teach the process steps recited by claims 3, and 33-34, these claims are product by process claims such that their patentability is determined by the composition of the claimed product. Since the reference composition comprises the same ingredients as the present composition and appears to possess the same structure based upon the evidence of record, claims 3 and 33-34 viewed as obvious in view of the reference claims.
The claims are directed to an invention not patentably distinct from the claims of the copending application. Specifically, see above.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application of common ownership (see 37 CFR 42.411). The copending application, discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the Examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case.
Claims 1, 3, 5-11, and 31-40 are rejected on the ground of nonstatutory double patenting as unpatentable over claims 1-14 of US Pat. No. 11,534,383 and in view of Pressly et al. (US Pat. Pub. 2017/0119637) and/or Luo et al. (Materials Science and Engineering C 63 (2016) 352-358) where indicated below.
The teachings of the secondary references are relied upon as discussed above.
The reference claims recite a composition comprising a keratin protein derived from human hair comprising alpha or gamma kerateine and which is not denatured and maintains natural keratin protein conformation, along with a cosmetic base solution, the composition being in the form of a powder lotion, paste, or cream, and which may be formulated as a shampoo or conditioner. The recitation by the preamble of claims 1 and 31 that the composition is for colored, treated, bleached, or damaged hair, and the recitation of claim 32 that the human hair is end cut hair, is merely an intended use of the composition, and as such is not granted any additional patentable weight
Regarding claim 35, the reference composition does not comprise sulfates, parabens, phthalates, colors, dyes, or gluten.
As to claim 36, the recitations that the composition is formulated for mixing with a hair colorant or developer to form a hair colorant mixture does not distinguish the composition from the reference composition, which is also capable of being mixed with a hair colorant or developer to form a hair colorant mixture.
Regarding claims 1 and 37, the recitation that when the composition is mixed with a hair colorant and applied to colored treated, bleached, or damaged hair, there is a reduction in breakage and increased color retention will be a characteristic of the reference composition because it comprises the same ingredients recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
The recitations of claims 38-40 regarding the components of the hair colorant that produce the functional results recited by claim 37 if the keratin protein powder composition is mixed with the hair colorant as recited by claim 37 are not granted additional patentable weight because the claims are drawn to a keratin protein powder composition, and not to the hair colorant composition with which the powder composition can be mixed. The recitations of claims 38-40 are merely directed to an intended use of the keratin protein powder composition (i.e., to be mixed with a hair colorant having the recited ingredients).
Although the reference claims do not teach the recited particle size range, it would have been obvious to use such sizes because Luo teaches that kerateine nanoparticles suitably may have such sizes.
Although the reference claims do not teach that the keratin protein filler composition is packaged in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), nor one of the ingredients recited by claim 11 such as a dye or surfactant, it would have been prima facie obvious to modify the reference composition by packaging it in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), a shampoo or conditioner (claim 10) or one of the ingredients recited by claim 11 such as a dye, ammonia, a surfactant, perfumes, or antioxidants, since the reference composition is for the treatment of hair, such that the skilled artisan would have had a motivation to incorporate it into a kit comprising the hair coloring ingredients as taught by Pressly that cause hair damage as taught by Pressly, in order to conveniently provide the consumer with the ability to treat said damage without requiring the inconvenience of a separate, additional purchase of the hair care composition.
Although the reference claims do not teach the process steps recited by claim 3, claim 3 is a product by process claim such that its patentability is determined by the composition of the claimed product. Since the reference composition comprises the same ingredients as the present composition and appears to possess the same structure based upon the evidence of record, claim 3 is viewed as obvious in view of the reference claims.
Although the reference claims do not recite a composition consisting of only the kerateine proteins and in powder form as recited by claims 21-23, or a kit comprising same as recited by claims 24-30, it would have been prima facie obvious to formulate the composition of the reference claims in the form of a kit in which the kerateine proteins are packaged separately from the cosmetic base solution, in order to conveniently provide the consumer with the ability to treat said damage without requiring a separate purchase of the hair care composition.
The claims are directed to an invention not patentably distinct from the claims of the copending application. Specifically, see above.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application of common ownership (see 37 CFR 42.411). The copending application, discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the Examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case.
Claims 1, 3, 5-11, and 31-40 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over all claims of copending Application No. 17/720,507, and in view of Pressly et al. (US Pat. Pub. 2017/0119637), Burnett et al. (US Pat. Pub. 2016/0324750), Luo et al. (Materials Science and Engineering C 63 (2016) 352-358) and/or the Mintel Database GPD entry for “The Polish Un-Frizz Cream” (2017; hereinafter “Mintel”; of record in IDS) where indicated below.
This is a provisional nonstatutory double patenting rejection.
Mintel discloses a hair product in the form of a cream and comprising alpha keratin, the composition being useful to repair damaged hair by filling in cracks and leaving hair thicker and more radiant (page 1). Mintel teaches that the keratin is a whole human hair protein that is extracted in its natural form which Mintel teaches is extremely effective at treating damage (last sentence on page 1 through first two lines of page 2 and last two sentences of page 2 through first two lines of page 3), and therefore is viewed as reading on the limitation of claims 1 and 21 that the keratin protein is not denatured and maintains natural keratin protein conformation.
The teachings of Pressley and Burnett are relied upon as discussed above.
The copending claims recite a hair treatment composition comprising a keratin comprising alpha or gamma keratin, and which may be formulated as a shampoo. The recitation by the preamble of claims 1 and 31 that the composition is for colored, treated, bleached, or damaged hair, and the recitation of claim 32 that the human hair is end cut hair, is merely an intended use of the composition, and as such is not granted any additional patentable weight
Regarding claim 35, the reference composition does not comprise sulfates, parabens, phthalates, colors, dyes, or gluten.
As to claim 36, the recitations that the composition is formulated for mixing with a hair colorant or developer to form a hair colorant mixture does not distinguish the composition from the reference composition, which is also capable of being mixed with a hair colorant or developer to form a hair colorant mixture.
Regarding claims 1 and 37, the recitation that when the composition is mixed with a hair colorant and applied to colored treated, bleached, or damaged hair, there is a reduction in breakage and increased color retention will be a characteristic of the reference composition because it comprises the same ingredients recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
The recitations of claims 38-40 regarding the components of the hair colorant that produce the functional results recited by claim 37 if the keratin protein powder composition is mixed with the hair colorant as recited by claim 37 are not granted additional patentable weight because the claims are drawn to a keratin protein powder composition, and not to the hair colorant composition with which the powder composition can be mixed. The recitations of claims 38-40 are merely directed to an intended use of the keratin protein powder composition (i.e., to be mixed with a hair colorant having the recited ingredients).
Although the reference claims do not teach the recited particle size range, it would have been obvious to use such sizes because Luo teaches that kerateine nanoparticles suitably may have such sizes.
Although the copending claims do not teach that the keratin is an alpha or gamma kerateine and which is not denatured, it would have been prima facie obvious to incorporate these forms of keratin because Burnett teaches that alpha and gamma keratin that are in the form of kerateine are also suitable for use in a hair care composition, and Mintel teaches that keratin protein is extremely effective at treating damage when in its natural, unmodified form.
Although the copending claims do not teach that the composition is in the form of a powder lotion, paste, or cream, it would have been prima facie obvious to formulate the composition in this manner in light of Burnett, which teaches that keratin proteins for use as a hair care composition may be in the form of a powder.
Although the copending claims do not teach that the keratin protein filler composition is packaged in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), nor one of the ingredients recited by claim 11 such as a dye or surfactant, it would have been prima facie obvious to modify the copending composition by packaging it in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), a shampoo or conditioner (claim 10) or one of the ingredients recited by claim 11 such as a dye, ammonia, a surfactant, perfumes, or antioxidants, since the copending composition is for the treatment of hair, such that the skilled artisan would have had a motivation to incorporate it into a kit comprising the hair coloring ingredients as taught by Pressly that cause hair damage as taught by Pressly, in order to conveniently provide the consumer with the ability to treat said damage without requiring the inconvenience of a separate, additional purchase of the hair care composition.
Although the copending claims do not teach the process steps recited by claim 3, claim 3 is a product by process claim such that its patentability is determined by the composition of the claimed product. Since the copending composition comprises the same ingredients as the present composition and appears to possess the same structure based upon the evidence of record, claim 3 is viewed as obvious in view of the copending claims.
Although the copending claims do not recite a composition consisting of only the kerateine proteins and in powder form as recited by claims 21-22, or a kit comprising same as recited by claims 24-30, it would have been prima facie obvious to formulate the composition of the copending claims in the form of a kit in which the kerateine proteins are packaged separately from the cosmetic base solution, in order to conveniently provide the consumer with the ability to treat said damage without requiring a separate purchase of the hair care composition.
Although the copending claims do not that the proteins are obtained from human hair, it would have been obvious to do so since Luo teaches that kerateines are obtainable from human hair.
The claims are directed to an invention not patentably distinct from the claims of the copending application. Specifically, see above.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application of common ownership (see 37 CFR 42.411). The copending application, discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the Examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case.
Claims 1, 3, 5-11, and 31-40 are rejected on the ground of nonstatutory double patenting as unpatentable over all claims of U.S. Pat. No. 11,883,519, and in view of Pressly et al. (US Pat. Pub. 2017/0119637), and/or Luo et al. (Materials Science and Engineering C 63 (2016) 352-358), and/or Burnett et al. (US Pat. Pub. 2016/0324750 where indicated below.
The teachings of the secondary references are relied upon as discussed above.
Although the reference claims are method claims, the present application is not a divisional of the reference application such that the safe harbor provisions of 35 USC 121 do not apply.
The reference claims recite a method of administering a hair treatment composition formulated as a powder, paste, or cream, and comprising a keratin obtained from human hair such as alpha or gamma kerateine that is not denatured and maintains natural protein conformation. The recitation by the preamble of claims 1 and 31 that the composition is for colored, treated, bleached, or damaged hair, and the recitation of claim 32 that the human hair is end cut hair, is merely an intended use of the composition, and as such is not granted any additional patentable weight
Regarding claim 35, the reference composition does not comprise sulfates, parabens, phthalates, colors, dyes, or gluten.
As to claim 36, the recitations that the composition is formulated for mixing with a hair colorant or developer to form a hair colorant mixture does not distinguish the composition from the reference composition, which is also capable of being mixed with a hair colorant or developer to form a hair colorant mixture.
Regarding claim 37, the recitation that when the composition is mixed with a hair colorant and applied to colored treated, bleached, or damaged hair, there is a reduction in breakage and increased color retention will be a characteristic of the reference composition because it comprises the same ingredients recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
The recitations of claims 38-40 regarding the components of the hair colorant that produce the functional results recited by claim 37 if the keratin protein powder composition is mixed with the hair colorant as recited by claim 37 are not granted additional patentable weight because the claims are drawn to a keratin protein powder composition, and not to the hair colorant composition with which the powder composition can be mixed. The recitations of claims 38-40 are merely directed to an intended use of the keratin protein powder composition (i.e., to be mixed with a hair colorant having the recited ingredients).
Although the reference claims do not teach the recited particle size range, it would have been obvious to use such sizes because Luo teaches that kerateine nanoparticles suitably may have such sizes.
Although the reference claims do not teach that the composition is formulated as a shampoo, it would have been prima facie obvious to formulate the composition in this manner in light of Pressley which teaches that compositions for the repair of hair may be in the form of a shampoo.
Although the reference claims do not teach that the keratin protein filler composition is packaged in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), nor one of the ingredients recited by claim 11 such as a dye or surfactant, it would have been prima facie obvious to modify the reference composition by packaging it in the form of a kit comprising a hair colorant composition (claim 5) comprising a developer (claim 6) and a compound to impart temporary or semi-permanent color (claim 7) or a bleaching compound (claim 8), a dye or pigment (claim 9), a shampoo or conditioner (claim 10) or one of the ingredients recited by claim 11 such as a dye, ammonia, a surfactant, perfumes, or antioxidants, since the reference composition is for the treatment of hair, such that the skilled artisan would have had a motivation to incorporate it into a kit comprising the hair coloring ingredients as taught by Pressly that cause hair damage as taught by Pressly, in order to conveniently provide the consumer with the ability to treat said damage without requiring the inconvenience of a separate, additional purchase of the hair care composition.
Although the reference claims do not teach the process steps recited by claim 3, claim 3 is a product by process claim such that its patentability is determined by the composition of the claimed product. Since the reference composition comprises the same ingredients as the present composition and appears to possess the same structure based upon the evidence of record, claim 3 is viewed as obvious in view of the reference claims.
Although the reference claims do not recite a composition consisting of only the kerateine proteins and in powder form as recited by claims 21-22, or a kit comprising same as recited by claims 24-30, it would have been prima facie obvious to formulate the composition of the reference claims in the form of a kit in which the kerateine proteins are packaged separately from the cosmetic base solution, in order to conveniently provide the consumer with the ability to treat said damage without requiring a separate purchase of the hair care composition.
Response to Applicant’s Arguments
Applicant argues that the rejections do not show that the reference claims read in view of the cited secondary references disclose the same combination of structural, compositional, and functional limitations. Specifically, Applicant argues that the specific particle sizes and functional properties are lacking.
In response, the revised rejections identify a motivation to select the claimed particle sizes, and the functional properties will be present in the reference compositions because they comprise the same ingredients recited by the claims. The reference claims in view of the cited secondary references do disclose the same combination of structural, compositional, and functional limitations for the reasons discussed in the revised rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached on M-F 9AM-6PM.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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