DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-20 are pending in this application. Claims 1-14 and 18-19 are amended.
Claims 4, 13, 17 are withdrawn as being drawn to a non-elected invention or species. Claims 4 and 17 is withdrawn because they are not directed to (3-aminopropyl)triethoxysilane. Claim 13 is withdrawn because it is not directed to chitosan.
Claims 1-3, 5-12, 14-16 and 18-20 are examined on their merits in light of the elected species of (3-aminopropyl)triethoxysilane as the only species of an organic silicone compound, Chitosan as the only species of cationic polymers and methyltrimethoxysilane as the only species of organic silicon compound of formula IV.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Rejections Withdrawn
Double Patenting
In light of the abandonment of the application the provisional rejection of claims 1-3, 5-12, 14-15 and 18-20 as being unpatentable over claims 11-15 of U.S. Patent Appn. No. 17/290725 in view of Singer et al. US 2013/0167860 (7/4/2013), Rollat et al. FR 2995526 (3/21/2014) and Mathonneau et al. WO 2017/102855 (6/22/2017)(3/25/2024 IDS) is withdrawn as moot.
New Rejections/Rejections Maintained
Claim Rejections - 35 USC §112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 3, 9-10 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 3 is indefinite in the recitation of “the agent for treating a keratinous material”. There is insufficient antecedent basis for this limitation in the claim. Specifically, there is no recitation of an agent for treating a keratinous material in claim 1.
For the purpose of this office action, the agent for treating a keratinous material will be interpreted to be referring to the at least one organic silicon compound.
Claim 9 recites the limitation “the cosmetic composition for treating keratinous material” in lines 2-3 in referring to claim 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, there is no recitation of a cosmetic composition for treating keratinous material in claim 1.
For the purpose of this office action, the cosmetic composition for treating keratinous material will be interpreted to be referring to the cosmetic composition for treating stressed hair.
Claim 10 recites the limitation “the cosmetic composition for treating keratinous material” in lines 2-3 in referring to claim 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, there is no recitation of a cosmetic composition for treating keratinous material in claim 1.
For the purpose of this office action, the cosmetic composition for treating keratinous material will be interpreted to be referring to the cosmetic composition for treating stressed hair.
Claim 20 is rejected as depending from claim 10.
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.
The rejection of claims 1-3, 5-12, 14-16 and 18-20 are rejected 35 U.S.C. 103 as being unpatentable over Singer et al. US 2013/0167860 (7/4/2013) in view of Rollat et al. FR 2995526 (3/21/2014) and Mathonneau et al. WO 2017/102855 (6/22/2017)(3/25/2024 IDS) as evidenced by the instant specification is maintained and made again as necessitated by amendment.
Singer et al. discloses cosmetic compositions comprising an organic silicon compound and a protein denaturant for the treatment of hair to reduce frizziness. (See Abstract). The organic silicon compound can be 3-aminopropyltriethoxysilane as called for in instant claims 3, 10, 12 and 18. 3-aminopropyltriethoxysilane falls within the formula (I) in claims 1 and 11. (See Singer claim 34). Singer teaches 3-aminopropyltriethoxysilane in an amount of from about 1% to about 10% by weight. (See Singer claim 13). Singer also teaches a method of treating hair with the composition that comprises applying the composition to the hair as called for in instant claim 11. (See Singer claim 1).
Singer teaches that more than one alkoxysilane compounds are suitable in the composition. (See [0025]). Singer teaches that alkoxysilane compounds and urea make it possible to obtain powerful hair styling effects in reducing frizz that last even through successive hair washings. (See [0024]).
The composition can also comprise a protein denaturant. (See [0058-60]). The composition may include urea, as called for in claim 8. (See Singer claim 30).
Singer does not teach chitosan polymer, methyltrimethoxysilane, methyltriethoxysilane or 3-(triethoxysilyl)-N-[3-(triethoxysilyl)propyl]-1-propanamine. These deficiencies are made up for with the teachings of Rollat et al. and Mathonneau.
Rollat et al. (Rollat) teaches at least one silane which is used to treat keratin fibers (See Abstract). The silane compounds include bis[3-triethoxysilyl)propylamine. Thickeners taught to be used in the composition are taught to include chitosan. (See page 12). Chitosan is the elected species of cationic polymer and is called for in instant claim 14.
Chitosan is a cationic polymer in which the monomer units having a cationic formal charge exceeds the amount of monomer units having a formal charge other than the cationic formal charge as called for in instant claim 6. Rollat teaches that the use of thickeners of natural origin such as chitosan is well known in hair care compositions. (See pages 11-12). The chitosan is present in an amount of from about 0.01% to about 30%. (See page 13). 0.01% to about 30% overlaps with the from about 1 to about 6% called for in claim 19 and the from about 0.1 to 10% called for in claim 7.
Rollat also teaches 3-(triethoxysilyl)-N-[3-(triethoxysilyl)propyl]-1-propanamine on page 3, lines 100-120 in formula (CH3CH2O)3-Si-(CH2)3-NH-(CH2)3 -Si –(OCH2CH2)3 wherein the instant specification evidences that same formula is 3-(triethoxysilyl)-N-[3-(triethoxysilyl)propyl]-1-propanamine at paragraph [0054]. 3-(triethoxysilyl)-N-[3-(triethoxysilyl)propyl]-1-propanamine is called for in instant claims 3 and 4. 3-(triethoxysilyl)-N-[3-(triethoxysilyl)propyl]-1-propanamine falls within the scope of Formula II in instant claim 2.
The silane is taught to be used in the amount of 0.1 to 30 wt%. (See page 5, lines 22-23).
Mathonneau et al. (Mathonneau) teaches a composition for conditioning hair that can contain mixtures of alkylalkoxysilanes. (See Abstract and claims 8 and 9). Mathonneua teaches methyltrimethoxysilane, the elected species of additional organic silicon compounds called for in instant claims 5 and 16. (See Mathonneau claim 8). Additionally, Mathonneau teaches methyltriethoxysilane (a third organic silicon compound in addition to methyltrimethoxysilane and 3-aminopropyltriethoxysilane) as called for in instant claim 20. (See Mathonneau claim 8). Mathonneau expressly teaches that mixtures of alkoxysilane compounds are contemplated to be appropriate for its invention. (See claim 8). The alkylalkoxysilanes are present in an amount ranging from 0.1% to 50% by weight. (See Mathonneau claim 9). 0.1 to 50 % overlaps with the from 3.2 to about 7% called for in instant claim 10.
With the combined teachings of Singer and Mathonneau, there are two organic silicon compounds which are structurally different as called for in instant claim 9.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the composition in Singer to add chitosan, a second alkoxysilane compound methyltrimethoxysilane and a third alkoxysilane compound methyltriethoxysilane as taught by Mathonneau in order to have a thickener of natural origin that is suitable for use in a hair care styling composition as taught by Rollat and more alkoxysilane compounds that allow for styling effects that last for several shampoos. There would be a reasonable expectation of success in light of Singer’s teaching that more than one alkoxysilane compound is suitable in the composition and Rollat’s teaching that mixtures of alkoxysilanes are contemplated to be appropriate in its composition.
With respect to claim 1’s language of “for treating stressed hair” this is language of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, as it is in this instance, then it meets the claim.
Response to Remarks
Applicants’ arguments of July 22, 2025 have been fully considered and are found to be unpersuasive as described further below.
Election/Restriction
Applicants again assert that claims 4 and 17 depend from currently amended Claim 1, and therefore incorporate the subject matter of claim 1, which requires the presence of compounds of formula (I) as well as requiring the presence of additional compounds. Applicants argue that because claims 4 and 17 do include the elected species as well as additional compounds, they should not be withdrawn. Applicants argue that the Office made no objection to Applicants election of species.
Response
In the Restriction Requirement of July 8, 2024, Applicants were required to specify “a single organic silicon compound or a single combination of organic silicon compound” (page 4, second to last paragraph). Applicants elected the silicon compound (3-aminopropyl)triethoxysilane as the only species of an organic silicon compound. Applicants did not elect a combination of silicon compounds as their elected species. Rather Applicants elected a single silicone compound as their elected species.
Respectfully, it is not the Office’s burden to object to Applicants’ species election, Rather, it is Applicants’ burden to traverse the species requirement at the appropriate time. Applicants did not traverse this species requirement, and the Restriction Requirement was made final in the Non-Final Office Action of August 29, 2024. Respectfully, as explained in the Non-Final Office Action of August 29, 2024 and again in the Non-Final Office Action of April 3, 2025, claims 4 and 17 are withdrawn because they are not directed to (3-aminopropyl)triethoxysilane alone. Claim 13 is withdrawn because it is not directed to chitosan.
Obviousness Rejections and Double Patenting Rejections
Applicants assert that the claims are not obvious because one skilled in the art would not use component from a chemical hair straightener in a hair treatment, care and conditioning product because hair straightener chemicals cause damage to the hair and the intention of a conditioning product is to improve the condition of the hair. Applicants assert that the Office Action has not provided a reason or rationale to combine the cited references.
Applicants also argue that there is good reason for one skilled in the art to not combine Singer with other references for a hair care product because the straightening chemicals of Singer damage hair.
Applicants argue that Mathanneau describes a composition for cleansing and/or conditioning keratin fibers and makes no mention of an organic silicon compound of the currently claimed formula II and no mention of chitosan.
Applicants state that they will consider filing a terminal disclaimer once there is an indication of allowable subject matter.
Response
Applicants’ arguments that the Office Action does not provide a reason to combine the cited references or any rationale is unpersuasive. As described in the rejection it would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the composition in Singer to add chitosan, a second alkoxysilane compound methyltrimethoxysilane and a third alkoxysilane compound methyltriethoxysilane as taught by Mathonneau in order to have a thickener of natural origin that is suitable for use in a hair care styling composition as taught by Rollat and more alkoxysilane compounds that allow for styling effects that last for several shampoos. There would be a reasonable expectation of success in light of Singer’s teaching that more than one alkoxysilane compound is suitable in the composition and Rollat’s teaching that mixtures of alkoxysilanes are contemplated to be appropriate in its composition.
Respectfully, Applicants disagreement with the rationale does not mean that no rationale has been provided. To an ordinarily skilled artisan, the ability to have a thickener of natural origin that is suitable for use in a hair care styling composition is a highly motivating rationale given the recent emphasis on natural products with natural ingredients in personal and cosmetic care compositions. Additionally, having compounds such as the alkoxysilane compounds that allow for styling effects that last for several shampoos is also highly motivating, since it means that long lasting styling effects can be achieved through the selection and use of certain components.
Applicants’ argument that there is good reason for one skilled in the art to not combine Singer with other references for a hair care product because the straightening chemicals of Singer damage hair is not found to be persuasive because the language of “for treating stressed hair” added by amendment is merely language of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, as it is in this instance, then it meets the claim. There is no structural difference provided by the language of “for treating stressed hair”.
Additionally, Singer is relevant to stressed hair because it is directed to straightening hair. Stressed hair is often frizzy and kinky from humidity and environmental stressors. Straightening such hair can give it the appearance of health and conditioning.
Applicants’ arguments are contradicted by the express teachings in Singer. Singer teaches that with its composition, it is believed that the alkoxysilane attaches to the hair fiber shaft and imparts strength to the hair fibers that allow for the frizz reduction effects to last up to three to four months. (See [0044]). Thus, Singer suggests that its composition actually strengthens as well as styles hair. Applicants’ arguments also ignore the express teaching in Singer that more than one alkoxysilane compound is suitable in the composition which provides a reasonable expectation of success in adding an alkoxysilane compound. Rollat teaches that the use of thickeners of natural origin such as chitosan is well known in hair care compositions and this also provides for a reasonable expectation of success. Furthermore, Singer teaches at [0224] that thickeners may be used in its compositions. Indeed, there is nothing in Singer, Rollat or Mathaneau to suggest that the combination of their respective teachings would be anything other than highly motivating and successful.
Applicants indication that a terminal disclaimer may be filed upon an indication of allowable subject matter in response to the obviousness-type double patenting rejection is acknowledged, however, in view of the abandonment of copending Application No. 17/290,725 the rejection is withdrawn as indicated above.
Conclusion
No claim is allowed.
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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619