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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/12/26 has been entered.
Claims 68-87 and 89-91 are pending.
Election/Restrictions
Applicant's election with traverse of the invention of Group I, claims 68-78 and 88, drawn to a composition, and the species of:
(a) A species of at least one sugar - xylose;
(b) A species of at least one compound having at least one phosphate group - monosodium phosphate; and
(c) A species of composition blend - both of a) and b) present in a single composition,
in the reply filed on 2/3/23 is acknowledged.
The elected species of monosodium phosphate is free is the art. Accordingly, the Examiner has expanded the search to include phytic acid.
Claims 72, and 79-87 are withdrawn.
Claims 68-71, 73-78 and 89-91 are under consideration to the extent that the composition comprises xylose and phytic acid in a single composition.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 2/9/26. 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 68-70, 77, 90 and 91 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mann (WO 96/37187; cited in IDS, full translation provided herein).
Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims, and in an effort to expedite prosecution this art has been applied.
Mann et al. teach the use of phytic acid or its salts for the prophylaxis and treatment of damaging oxidative effects on the skin or hair (e.g. abstract).
Regarding Claims 68-70, 90 and 91, Mann et al. exemplify a hair treatment comprising 5 wt% sorbitol (i.e. at least one sugar, as evidenced by the instant Specification [0037]) and 1.3 wt% phytic acid (i.e. at least one compound having at least one phosphate group), which is not a hair dye or a shampoo (e.g. Example 7).
Regarding Claim 77, this results in a ratio of phosphate to sugar of 1.3 : 5, which is within the claimed range.
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, Mann et al. teach the hair lotions are not rinsed out (e.g. page 6).
Regarding the limitation, “wherein the hair protecting composition protects the hair from heat when left on hair” as the composition of Mann 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).
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 68-71, 77, 78, 90 and 91 are rejected under 35 U.S.C. 103 as being unpatentable over of Mann (WO 96/37187; cited in IDS, full translation provided herein).
Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims, and in an effort to expedite prosecution this art has been applied.
Regarding Claims 68-70, 77, 90 and 91, the teachings of Mann et al. are described supra.
Regarding Claim 71, Mann et al. teach that the phytic acid may be present at 0.001-20 wt%, 0.1-10 wt%, and 0.1-3 wt%, which overlap with the claimed range (e.g. page 4). 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 Claim 78, Mann et al. teach that the compositions have a pH of 4-9 or preferably from 5-7, which is within the claimed range (e.g. page 7).
Claims 68-71, 74-78, 90 and 91 are rejected under 35 U.S.C. 103 as being unpatentable over of Mellul et al. (US 2007/0226916) in view of Mann (WO 96/37187; cited in IDS, full translation provided herein) and Perkins (<https://www.beautycon.com/article/sugar-is-a-heat-protectant> 2015).
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 leave-in product for the styling of hair (i.e. not a shampoo and not a hair dye) (e.g. paragraph 0098 and 0099). Mellul et al. do not require the presence of dyes. 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).
Mellul et al. do not teach the inclusion of phytic acid. This is made up for by the teachings of Mann et al.
Mann et al. teach the use of phytic acid or its salts for the prophylaxis and treatment of damaging oxidative effects on the skin or hair (e.g. abstract). Mann et al. teach that phytic acid is present at 0.001-20 wt%, or preferably 0.1-3 wt%, and exemplify a hair treatment comprising 1.3 wt% or 0.5 wt% (e.g. page 3-4, and Examples 7 and 15). Mann et al. exemplify a hair treatment comprising 5 wt% sorbitol (i.e. at least one sugar, as evidenced by the instant Specification [0037]) and 1.3 wt% phytic acid (i.e. at least one compound having at least one phosphate group), which is not a hair dye or a shampoo, and comprises no dyes (e.g. Example 7). Mann et al. teach that the cosmetic preparations are in the form of a lotion that is not rinsed out, in particular a lotion for inlaying the hair, a lotion used for blow-drying the hair, a styling and treatment lotion (e.g. page 7).
Regarding Claims 68-71, 74-77, 90 and 91, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the hair styling/blow-drying lotions of Mellul et al. and Mann et al. resulting in a hair styling composition comprising 0.1% xylose and 1.3 wt%, resulting in a ratio of 13:1. 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 hair styling and blow-drying lotions for protecting hair, and one would have been motivated to obtain the combined benefits of protection during blow-drying, as taught by Mellul et al. and prophylaxis and treatment of damaging oxidative effects on the hair, as taught by Mann 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 Mann and Mellul teach the inclusion of active ingredients and benefits to hair (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). In addition, Mann et al. teach that the cosmetic preparations are in the form of a lotion that is not rinsed out.
Regarding the limitation, “wherein the hair protecting composition protects the hair from heat when left on hair” as the composition of Mann 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, 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). Mann et al. teach that the compositions have a pH of 4-9 or preferably from 5-7, which is within the claimed range (e.g. page 7).
Allowable Subject Matter
Claims 73 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.
Claim 89 is allowed.
Response to Arguments
Applicant’s arguments with respect to claim(s) 68-70 and 74-78 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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
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