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 .
DETAILED ACTION
The Applicant’s reply filed on 10/14/25 is acknowledged. Claims 68-87 and 89 are pending. Claim 89 is new. Claims 71, 72, and 79-87 are withdrawn. Claims 68-70, 73-78 and 89 are under consideration.
Claims 68-70, 73-78 and 89 are under consideration to the extent that the composition comprises the elected species of xylose and monosodium phosphate in a single composition.
Rejections Maintained and New Grounds of Rejections
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 12/5/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 68-70 and 73-78 are rejected under 35 U.S.C. 103 as being unpatentable over Coffindaffer et al. (US 5,932,203) in view of Mellul et al. (US 2007/0226916) and Perkins (<https://www.beautycon.com/article/sugar-is-a-heat-protectant> 2015).
Coffindaffer et al. teach conditioning shampoo compositions comprising an anionic surfactant, a cationic hair conditioning polymer, and a synthetic ester (e.g. abstract). Coffindaffer et al. teach that the shampoo compositions provide improved hair conditioning performance, including improved wet hair feel (e.g. column 1, lines 6-10). Coffindaffer et al. exemplify a composition comprising 0.1% monosodium phosphate (e.g. Examples). Coffindaffer et al. teach that the compositions may further comprise conditioning agents (e.g. column 11, lines 12-20).
Coffindaffer et al. do not teach that the composition includes a sugar (xylose) in an amount of about 0.1 to 6% by weight. This is made up for by the teachings of Mellul et al.
Mellul et al. teach hair compositions which contain at least one monosaccharide and/or disaccharide, at least one α-hydroxy acid, and at least one ceramide compound (e.g. abstract). Mellul et al. teach that the composition may be a rinse-out or leave in, and may be a shampoo (e.g. paragraph 0087 and 0097; Examples). Mellul et al. teach that the monosaccharide is xylose, which is exemplified at 0.1% (e.g. paragraph 0057, Example 2). Mellul et al. teach that use of their compositions protect hair from physical or chemical assaults and in particular with regard to blow-drying operations (e.g. paragraph 0013 and 0017).
Regarding Claims 68-70 and 73-77, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the shampoo compositions of Coffindaffer et al. and Mellul et al. resulting in a shampoo comprising 0.1% monosodium phosphate and 0.1% xylose, resulting in a ratio of 1:1. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions are useful a shampoos, and one would have been motivated to obtain the combined benefits of improved hair conditioning performance, including improved wet hair feel, as taught by Coffindaffer, and protection during blow-drying, as taught by Mellul et al. In addition, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding the limitation, “leave-in”, the recitation is understood as an intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). However, in addition, as both Coffindaffer and Mellul teach the inclusion of active ingredients and benefits other than only cleansing (i.e. improved hair conditioning performance, improved wet hair feel, and protection during blow-drying) the compositions must, at least in part, remain on the hair (i.e. leave-in).
Regarding the limitation, “wherein the hair protecting composition protects the hair from heat when left on hair” as the composition of Coffindaffer and Mellul et al. teach the claimed ingredients in the claimed amounts, then the outcome of “protects the hair from heat” would necessarily occur. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, Mellul et al. teach protecting during blow-drying (i.e. heat) (e.g. paragraph 0013 and 0017), and as disclosed by Perkins, xylose protects the hair from heat styling and also seals in the moisture to stave off dryness (e.g. pages 2 and 3).
Regarding Claim 78, Coffindaffer et al. teach that the pH of the shampoo is preferably between 4 and 7, which is within the claimed range (e.g. column 7, lines 14-16) and Mellul et al. teach that the pH is preferably from 4-9, which overlaps with the claimed range (e.g. paragraph 0085). 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) (MPEP 2144.05.I).
Claims 68-70, 73-75, and 77 are rejected under 35 U.S.C. 103 as being unpatentable over Hiroshima et al. (JP 2017/226620 A; English translation provided herein) and Perkins (<https://www.beautycon.com/article/sugar-is-a-heat-protectant> 2015).
Hiroshima et al. teach a hair dye composition which has high hair-dyeing power and excellent storage stability under a high-temperature environment, which comprises (A) at least one selected from xylose, fructose, methylglyoxal, glyceraldehyde, alloxan, erythrulose and dihydroxyacetone, (B) at least one selected from ethanol, glycerol, propylene glycol, sorbitol, 1,3-butylene glycol and a polyethylene glycol having an average molecular weight of 190 to 1050 and (C) at least one selected from disodium hydrogen phosphate and sodium dihydrogen phosphate (i.e. monosodium phosphate), where the mass ratio (A/C) of the content (mass%) of the component (A) to the content (mass%) of the component (C) is 1.0 to 83 (e.g. abstract; Claim 1). Hiroshima et al. teach that the sugar xylose may be present at 2.5-16% by mass (e.g. paragraph 0006 and 0011).
Regarding Claims 68, 70, 74 and 75, while the amount of xylose taught by Hiroshima et al. (2.5-16%) does not anticipate the claimed range of “0.1% to about 6% by weight” as in claim 68, it does render those ranges obvious. 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) (MPEP 2144.05.I).
Regarding the limitation, “leave-in”, the recitation is understood as an intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). However, in addition, Hiroshima et al. teach a step of applying the composition to hair without rinsing (i.e. leaving it in) (e.g. paragraph 0049).
Regarding the limitation, “wherein the hair protecting composition protects the hair from heat when left on hair” as the composition of Hiroshima et al. teach the claimed ingredients in amounts which render obvious the claimed amounts, then the outcome of “protects the hair from heat” would necessarily occur. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) . "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, as disclosed by Perkins, xylose protects the hair from heat styling and also seals in the moisture to stave off dryness (e.g. pages 2 and 3).
Regarding Claims 69 and 73, Hiroshima et al. teach that the sodium dihydrogen phosphate is present at 0.16% by mass to 2.73% by mass, which is within the claimed range of “0.1 to 4.5%” and overlaps the claimed range of “about 0.01 to about 2%” (e.g. paragraph 0006).
Regarding Claim 77, Hiroshima et al. teach that the mass ratio (A/C) of the content (mass%) of the component (A) to the content (mass%) of the component (C) is 1.0 to 83 or preferable 1.3-42, which overlaps with the claimed range (e.g. abstract; paragraph 0021).
Regarding Claim 78, Hiroshima et al. teach that the pH is from 6-10, which overlaps with the claimed range (e.g. abstract; Claim 1).
Allowable Subject Matter
Claim 89 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 10/14/25 have been fully considered but they are not persuasive.
Applicant argues on page 9 that in view of the claim amendments, that the preamble should be given patentable weight because it creates a structural difference between the claimed leave-in, hair protecting compositions and the rinse-out shampoo compositions of Coffindaffer or hair dye compositions of Hiroshima. Applicant further argues on page 10, that Coffindaffer's compositions do not demonstrate any heat-protecting effects. Absent hindsight, there is no evidence that one of skill in the art would have been motivated to modify Coffindaffer's traditional rinse-out shampoo compositions to be leave-in compositions that protect hair from heat, much less make such a modification with a reasonable expectation of success.
This is not found persuasive. The claims are directed to a composition comprising components a) and b) in a range of concentration, which are met as described supra. It is not clear how the structure of the claimed compositions differs between the claimed leave-in, hair protecting compositions and the compositions of Coffindaffer and Hiroshima. Both Coffindaffer and Mellul teach the inclusion of active ingredients and benefits other than only cleansing (i.e. improved hair conditioning performance, improved wet hair feel, and protection during blow-drying) therefore the compositions must, at least in part, remain on the hair (i.e. leave-in). In addition, Hiroshima et al. teach a step of applying the composition to hair without rinsing (i.e. leaving it in) (e.g. paragraph 0049).
Applicant further argues on page 10, that Hiroshima relates to hair dye compositions and as a person skilled in the art would understand, hair dye compositions are rinsed out of the hair. Further, there is nothing in Hiroshima suggesting the compositions would protect the hair from heat if left on the hair.
This is not found persuasive. Regardless of how other hair dyes are used, Hiroshima et al. teach a step of applying the composition to hair without rinsing (i.e. leaving it in) (e.g. paragraph 0049). They disclose, “Then, the hair dye compositions…was uniformly applied, allowed to stand at 25 ° C. for 20 minutes, and then towel-dried, and then dried with a dryer”. Regarding the limitation, “wherein the hair protecting composition protects the hair from heat when left on hair” as the composition of Hiroshima et al. teach the claimed ingredients in amounts which render obvious the claimed amounts, then the outcome of “protects the hair from heat” would necessarily occur. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) . "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, as disclosed by Perkins, xylose protects the hair from heat styling and also seals in the moisture to stave off dryness (e.g. pages 2 and 3).
Applicant further argues on page 12, that the record is devoid of any evidence whatsoever that compounds having at least one phosphate group were known or even expected to provide any heat-protecting benefit to hair. Applicant continues that the application provides eight sets of experiments using two different sugars, xylose and glucose, in amounts ranging from 0.5% to 1 %, in combination with three different compounds having a phosphate group, monosodium phosphate, glycerol phosphate, and phytic acid, in amounts ranging from 0.05% to 4.4%. The results of these studies, as shown in the bar graph figures and state that the TD values evidence a statistical improvement in heat protection, demonstrate a clear trend that is sufficient to establish non-obviousness of the full scope of claimed compositions.
This is not found persuasive, for the pending claims other than claim 89. First, Applicant’s data is not commensurate in scope with the claims. Applicant has provided data for distinct narrow compositions while the claims are still much broader, both in terms of ingredients and the amounts thereof. For example, Claim 68 recites any sugar in an amount of 0.1-6 wt% while the Examples provided include only xylose or glucose in 0.5 or 1wt%. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Second, it does not appear that the combination of sugar and phosphate results in greater than additive effects (i.e. synergistic). For example, in Example 2 and Figure 2, 2E is essentially the combination of Compositions 2B and 2D (0.5% xylose and 0.5% monosodium phosphate). In order to show a synergistic relationship 2E must be greater than addition of 2B and 2D which does not appear to be the case in Figure 2. The data state that the combination imparted statistically higher Td values to hair compared to the DI water controls. The closest prior art comprises either monosodium phosphate, xylose, or both. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). However, regardless of whether the results are found unexpected, they must be commensurate in scope with the claims.
Accordingly, the rejections are maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619