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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 3/27/2026 has been entered.
Response to Amendment
This office action is responsive to the amendment filed on 3/27/2026. As directed by the amendment, the status of the claim(s) are:
Claim(s) 4 has/have been amended;
Claim(s) 15 has/have been canceled;
Claim(s) 1-14 is/are presently pending.
Response to Arguments
The amendment(s) to the claim(s) is sufficient to overcome the 35 U.S.C. 112 rejection(s) from the previous office action.
Applicant’s arguments have been previously addressed in the previous Examiner’s Answer of 2/24/2025. For clarity, the current arguments are responded to below.
Applicant on p. 7 argues that the prior art of record does not teach the recited “indicative of cysteic acid on hairs of a user” of claim 1. After review this is not persuasive. The plain text of the cited Dawson paragraph [0140] states (emphasis added) “Levels of cysteic acid are measured…The operator is able to focus on the specific region of interest on the surface of the hair, to measure the amount of cysteic acid (SO3= and Amide) from precise areas along the hair fiber. The resultant data is expressed and SO3=/Amide; the higher the number, the higher the ratio of SO3=/Amide (less SO3=/more Amide) and thus, the greater the oxidative damage”.
First, Appellant has not presented any evidence other than attorney arguments that the plain text of the Dawson reference is mistaken and does not refer to “cysteic acid”. Attorney arguments cannot take the place of factually supported objective evidence. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). Merely providing a blanket statement of patentability, without evidence, cannot be found persuasive.
Second, even if it is assumed that the Dawson reference does not teach “cysteic acid”, which the Examiner does not concede, the limitation is (emphasis added) “sensor for detecting at least one sensor value indicative of cysteic acid on hairs of a user”. The sensor value does not need to be a direct measure of cysteic acid to meet the claim limitation of “indicative of cysteic acid”. A sensor value that is correlated with cysteic acid would also meet this limitation. Even if Dawson’s teaching of SO3= is not cysteic acid as asserted by Appellant, Dawson does at least teach that it is related to cysteic acid in [0140] and [0017]-[0018] “As it relates to hair, oxidation breaks the disulfide bonds of cystine, creating cysteic acid (SO3= as one by-product”…Oxidation compromises the health of the hair”; and so this would meet the limitation of “indicative of cysteic acid”.
Applicant argues on p. 7 of remarks regarding the same with respect to claim 4 that the prior art does not teach “cysteic acid”. After review, this is similarly not persuasive for similar reasons above in that the plain text of the cited Dawson paragraph [0140] states (emphasis added) “Levels of cysteic acid are measured…The operator is able to focus on the specific region of interest on the surface of the hair, to measure the amount of cysteic acid (SO3= and Amide) from precise areas along the hair fiber. The resultant data is expressed and SO3=/Amide; the higher the number, the higher the ratio of SO3=/Amide (less SO3=/more Amide) and thus, the greater the oxidative damage”.
Applicant argues on p. 8 of remarks that ““The methods and equipment disclosed in Dawson represent very large laboratory devices. Appellant submits that one skilled in the art would not expect success in the combination these references to form "a portable sensor device having at least one sensor for detecting at least one sensor value indicative of cysteic acid on hairs of a user" as is claimed. While In reLindberg, 194 F .2d 732, 93 USPQ 23 (CCPA 1952) stand for the holding that a claimed device being portable or movable is not sufficient by itself to patentably distinguish over an otherwise old device unless there are new or unexpected results. Contrary to this holding Appellant submits that one skilled in the art would not expect success in the combination these references to form the claimed invention, and therefor the combination fails.”
Response: First, the limitation of “a portable sensor device” was met by the primary reference and not Dawson, in other words, Dawson was not relied upon for the limitation of “portable sensor device”. Furthermore, while citing case law stating that “new or unexpected results” are needed in order to patentably distinguish, Appellant does not assert or demonstrate “new or unexpected results”. Instead, Appellant presents a naked assertion that there is no expectation of success in the combination with no supportive evidence. Attorney arguments cannot take the place of factually supported objective evidence. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). Merely providing a blanket statement of patentability, without evidence, cannot be found persuasive.
Applicant argues on p. 9 of remarks “Regarding the rejections of Claims 2 and 10, the Examiner acknowledges that the combination of Miklatzky, Dawson, and Marapene does not teach wherein the determining of the user's hair condition comprises determining a degree of damage of the hair by measuring a signal indicative of the hair having self-fluorescence. To overcome the deficiencies, the Examiner cites, Landa for teaching determining a degree of damage of the hair by measuring a signal indicative of the hair having self-fluorescence. Applicant notes the cited passages and figures ([0594]; Fig. 18; [0331]; [0333]; [0596]) do not teach the self-fluorescence limitation, and therefore the rejection is improper.”
Response: Landa as cited in [0594] (emphasis added) teaches “Various optical data may be measured…or fluorescence characteristics may be measured”. The instant specification describes “self-fluorescence” as:
[0035] The fluorescence range in different exemplary embodiments can be a wavelength range in which damaged hair emits self-fluorescence and/or a wavelength range in which fluorescent dyes, which are more strongly adsorbed by damaged hair than by undamaged hair, emit fluorescent light.
[0039] In different exemplary embodiments, damaged hair can show a self-fluorescence, which is used to determine the degree of damage by measuring the fluorescence intensity of the hair.
And Wikipedia (https://en.wikipedia.org/wiki/Autofluorescence) describes:
Autofluorescence is the natural fluorescence of biological structures such as mitochondria and lysosomes, in contrast to fluorescence originating from artificially added fluorescent markers (fluorophores).
Thus, Landa’s teaching of “fluorescence characteristics may be measured” in [0594] meets the claim limitation because Landa does not teach needing to use fluorescent dyes or markers in order to measure fluorescence characteristics of the hair and so the fluorescence measured would be “self-fluorescence” as understood in the art, both described in the instant specification as well as Wikipedia.
Applicant argues on p. 9 of remarks that Landa does not teach claim 4’s “an optical sensor for determining a cysteic acid content of the hair for determining a hair colour of the user”. The amendment to claim 4 has changed the recitation to “wherein the at least one sensor and the at least one further sensor comprises an optical sensor for determining a cysteic acid content of the hair and for determining a hair colour of the user.” Dawson and Marapene are relied upon to teach claim 4 as currently recited; see claim 4 rejection below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3, 4, 5, 8, 9, 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miklatzky (US 20170156476 A1; 6/8/2017; cited in previous office action) in view of Dawson (US 20090274642 A1; 11/5/2009; cited in previous office action), and further in view of Marapene (US 20020010556 A1; 1/24/2002; cited in previous office action).
Regarding claim 1, Miklatzky teaches a system for determining a hair condition (Abstract; Fig. 1) comprising:
a portable sensor device having at least one sensor for detecting at least one sensor value on hairs of a user (Fig. 3A; Fig. 4);
a data processing device ([0191]).
Miklatzky does not teach one sensor value indicative of cysteic acid on hairs of a user. However, Dawson teaches in the same field of endeavor (Abstract) one sensor value indicative of cysteic acid on hairs of a user ([0140]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Miklatzky to include this feature as taught by Dawson because this indicates the damage to hair ([0017]-[0018]; [0140]).
Miklatzky does not teach data processing device set up to determine whether, in addition to the at least one sensor value, at least one further sensor value is provided to the data processing device by a further sensor device. However, Marapene teaches in the same field of endeavor (Abstract; Fig. 1) data processing device ([0135]) set up to determine whether, in addition to the at least one sensor value, at least one further sensor value is provided to the data processing device by a further sensor device ([0033] “may further contain”; claims 1-2). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Miklatzky to include this feature as taught by Marapene because this enables better prediction of desired ending hair color with additional data/measurements (claims 1-2).
The combination of Miklatzky, Dawson, and Marapene teaches being set up to determine the hair condition of the user based on the detected at least one sensor value in a case where the data processing device has determined that only the at least one sensor value is provided, or based on the provided at least one sensor value and the provided at least one further sensor value in a case where the data processing device has determined that the at least one further sensor value is provided (Miklatzky Fig. 10A; [0027]; Marapene Fig. 1; [0031]; [0033]; claims 1-2).
Claim 8 is rejected under substantially the same basis as claim 1 above.
Regarding claim 3, the combination of Miklatzky, Dawson, and Marapene teaches wherein the data processing device is set up to determine the user’s hair condition by determining a degree of damage of the hair (Marapene [0033]; [0037]).
Regarding claim 4, the combination of Miklatzky, Dawson, and Marapene teaches wherein the at least one sensor and the at least one further sensor comprises an optical sensor for determining a cysteic acid content of the hair (Dawson [0140]) and for determining a hair colour of the user (Marapene [0031]; claim 2).
Regarding claim 5, in the combination of Miklatzky, Dawson, and Marapene, Marapene teaches wherein the at least one sensor or the at least one further sensor comprises a microphone for determining a surface roughness of the hair ([0036]-[0037]).
Regarding claim 9, in the combination of Miklatzky, Dawson, and Marapene, Dawson teaches wherein the determining of the user’s hair condition comprises determining a degree of damage of the hair by measuring a signal indicative of the hair having a percentage of cysteic acid (Fig. 7; [0017]-[0018]; [0139]-[0140]; [0144]-[0145]).
Regarding claim 11, the instant claim is inherently rejected because the limitations are contingent limitations; see MPEP 2111.04 II. The instant recitations require a case in which there is “provided at least one further sensor value” as recited in claim 8; the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.
Regarding claim 12, the instant claim is inherently rejected because the limitations are contingent limitations; see MPEP 2111.04 II. The instant recitations require a case in which there is “provided at least one further sensor value” as recited in claim 8; the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. Note that Landa (US 20140082854 A1; cited below) teaches polarization microscopy to examine hair (Fig. 39B-39C; [0724]-[0725]; [0729]) which within the art is recognized as a type of interference microscopy.
Regarding claim 13, in the combination of Miklatzky, Dawson, and Marapene, Miklatzky teaches a method for determining a recommendation regarding hair of a user ([0094]), comprising:
determining a hair condition according to claim 8 (see regarding claim 8 above); and
determining a recommendation regarding the hair of the user based on the determined hair condition ([0094]).
Regarding claim 14, in the combination of Miklatzky, Dawson, and Marapene, Miklatzky teaches wherein the hair recommendation of a user comprises at least one of a hair treatment product recommendation and a hair treatment method recommendation ([0094]-[0095]).
Claims 2, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miklatzky, Dawson, and Marapene as applied to claims 1, 8 above, and further in view of Landa (US 20140082854 A1; 3/27/2014; cited in previous office action).
Regarding claim 2, the combination of Miklatzky, Dawson, and Marapene teaches the further sensor device is further defined as a further portable sensor device having at least one further optical sensor (Marapene [0037] “comb”). The combination of Miklatzky, Dawson, and Marapene does not teach optical sensor configured to detect self-fluorescence of the hairs of the user. However, Landa teaches in the same field of endeavor (Abstract) optical sensor configured to detect self-fluorescence of the hairs of the user ([0594]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Miklatzky, Dawson, and Marapene because this allows for measurement of hair condition (Fig. 18; [0331]; [0333]; [0596]).
Regarding claim 10, the combination of Miklatzky, Dawson, and Marapene does not teach wherein the determining of the user’s hair condition comprises determining a degree of damage of the hair by measuring a signal indicative of the hair having self-fluorescence. However, Landa teaches in the same field of endeavor (Abstract) determining a degree of damage of the hair by measuring a signal indicative of the hair having self-fluorescence ([0594]; Fig. 18; [0331]; [0333]; [0596]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Miklatzky, Dawson, and Marapene to include this feature as taught by Landa because this allows for measurement of hair condition (Fig. 18; [0331]; [0333]; [0596]).
Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miklatzky, Dawson, and Marapene as applied to claim 1 above, and further in view of Goutsis (WO2015086283; 6/18/2015; espacenet English translation relied upon; cited in previous office action).
Regarding claim 6, the combination of Miklatzky, Dawson, and Marapene does not teach wherein the at least one sensor or the at least one further sensor comprises a sensor configured to detect NIR having a wave number form about 5022 cm-1 to about 4020 cm-1. However, Goutsis teaches in the same field of endeavor ([0387]) he at least one sensor or the at least one further sensor comprises a sensor configured to detect NIR having a wave number form about 5022 cm-1 to about 4020 cm-1 ([0390]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Miklatzky, Dawson, and Marapene to include this feature as taught by Goutsis because this enables measuring hair damage by measuring cysteic acid via NIR ([0387]).
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miklatzky, Dawson, and Marapene as applied to claim 1 above, and further in view of Hutchings (US 20150342515 A1; 12/3/2015; cited in IDS; cited in previous office action).
Regarding claim 7, the combination of Miklatzky, Dawson, and Marapene does not teach wherein the portable sensor device and the data processing device form an integrated portable device. However, Hutchings teaches in the same field of endeavor (Abstract; Fig. 2; [0053]) wherein the portable sensor device and the data processing device form an integrated portable device (Fig. 2; [0071] “microcontroller”). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Miklatzky, Dawson, and Marapene to have the portable sensor device and the data processing device form an integrated portable device as taught by Hutchings because this enables processing of the data at the portable device and saves how much data needs to be transmitted ([0071]). In addition, this is an obvious modification of making integral; MPEP 2144.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan T Kuo whose telephone number is (408)918-7534. The examiner can normally be reached M-F 10 a.m. - 6 p.m. PT.
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/JONATHAN T KUO/ Primary Examiner, Art Unit 3792
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