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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/23/2026 has been entered.
Election/Restrictions
Claims 15-20 and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/3/2024.
Response to Arguments
The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
The arguments and declaration of Tycho Speaker in the response filed 1/23/2026 will be addressed below to the extent they apply to the current rejections.
Regarding the declaration of Tycho Speaker, this is not persuasive as it is not commensurate in scope with the claimed as amended. The data tested comprises of a blend of oils consisting of Gac and pomelo peel oil, however the claims are not limited to this blend of oils, other oils can be present in the blend and no data has been shown demonstrating the effect the inclusion of other oils has on the hair repair. The data tested also comprises the sapindus extract as part of the microcapsules, however, this is not required by the instant claims. The Examiner would also like to note that the compositions tested in the declaration are not supported by the originally filed disclosure. As explained in the new matter rejection below, while there is support for claiming a blend of gac and pomelo peel oil, there is no support in the originally filed specification for the blend ratios claimed.
Claim Interpretation
Claim 1 recites a blend of pomelo peel oil and gac oil and then recites “the gac oil is present in the blend of oils...”. While the composition recites “comprising” language and permits the inclusion of additional oils, “the blend of oils” is interpreted as being limited to the blend of pomelo and gac oils .
New Claim Rejections - 35 USC § 112(a)
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 10-14 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. Claim 1 requires the gac oil to be present in the blend of oils in an amount of 20-80 wt %. The original disclosure teaches “ at least 0.1% by weight of the oil” and “0.1 to 20% by weight, in total, of the oils and extracts described above..” (pg. 2 and 4) The working examples show the combination of pomelo oil and gac oil, wherein the gac oil makes up 5%, 10% 20% or 50% of the total between pomelo and gac oil, but this does not provide sufficient support for claiming that the gac oil makes up 20-80% of a blend of pomelo oil and gac oil.
New 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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1 and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR20180123997, CN107569408, CN101862281, Anand (GB 2081580), Behr (US 2007/0122492) and Suzuki (WO 2011/016139). Anand and Behr are newly cited.
KR’997 discloses external compositions for hair growth [0001], reading on compositions suitable for treating hair. The composition comprises minoxidil, and at least one extract of GAC fruit (GAC oil) and extract of citrus peel [0015 and 0035]). It would have been prima facie obvious to use both GAC oil and an extract of citrus peel as mixtures are contemplated by the teachings of “at least one.”
While KR’997 teaches adding citrus peel extract, KR’997 does not teach pomelo peel oil
CN’408 teaches a hair composition for increasing the brightness of hair, and promoting a healthy hair and scalp [0008]. The composition comprises jojoba oil and pomelo peel oil which has a moisturizing effect on the skin, can balance the pH value of the skin, help collagen formation, moisturize, hydrate and whiten, and fade fine lines. It has a good effect on the growth and repair of body tissues, can promote sweating, and thus help blocked skin to expel toxins. It is helpful for people with oily, acne or dry skin. [0026]. CN’408 teaches placing all the oils together in a single phase [0010], thus it would be obvious to a skilled artisan to keep like ingredients together in the same phase.
It would have been prima facie obvious to a skilled artisan to use pomelo peel oil as the citrus peel extract in KR’997 as KR’997 teaches that citrus peel can be used and its prima facie obvious to select a known material for incorporation into the composition based on its recognized suitability for its intended purpose and CN’408 teaches that pomelo peel oil can be effectively used in hair composition to provide compositions which provide care of the scalp and promote healthy growth of hair [0027].
However, the above reference do not teach encapsulating the blend of oils in alginate and chitosan microcapsules.
CN’281 discloses a personal cleansing composition for hair such as shampoos. The composition comprises .01-5% of microcapsules which comprises oils and other additives (Abs). The microcapsule is taught to be made with chitosan and alginate [0027-0035]. CN’281 teaches that inclusion of functional components in microcapsules allow for improved stability and allows for the functional components to be slowly released [0002]. CN’281 teaches the use of olive oil (component a) in the microcapsules in amounts of 5-10% by weight of the microcapsule (calculated to make up .0005-0.5% of the composition as a whole) , the olive oil has excellent moisturizing effect and can stimulate skin cells and hair follicles [0023]. CN’281 teaches component a can also be other plant oils [0024].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the above references with those of CN’281. One of skill in the art would have been motivated to encapsulated the functional ingredients, such as the gac and pomelo oil in alginate/chitosan microcapsules as taught by CN’281 as this allows for improved stability and allows for the functional components to be slowly released. There would be a reasonable expectation of success as all references teach compositions for hair comprising plant oil/extracts.
However, the above references do not teach the inclusion of Sapindus extract.
Anand discloses sapindus trifoliatus extracts and teaches these to suitable for topical application to promote hair growth (Abs).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the above references with those of Anand. One of skill in the art would have been motivated to add a Sapindus extract as taught by Anand to the composition made obvious above as Anand teaches this extract to help promote hair growth and KR’997 teaches composition for promoting hair growth and its prima facie obvious to combine two compositions each taught to be used for the same purpose (i.e. promote hair growth) to create a new composition for the same purpose.
However, the above reference do not teach the gac oil to make up 20-80% by weight of a blend of pomelo and gac oil.
Behr teaches the use of plant extracts for treating various skin and hair conditions (Abs). Behr teaches that effective amounts of one or more plant extracts which improve the health and/or appearance of skin, hair and nails can be used [0181]. Behr teaches that effective amounts means an amount of the plant extract or active ingredient that provides a beneficial effect in the treatment of a dermatological condition or a desired skin improvement effect. It should be understood by one of ordinary skill in the art that this amount will vary depending on the application and on the individual subject and will be readily determinable by one of skill in the art [0186].
In view of the teachings of Behr a skilled artisan would recognize that the amounts of gac oil and pomelo peel oil used are optimizable variables and it would have been obvious to optimize the amounts used of each oil depending on the application and the subject to be treated.
Regarding claim 10: Claim 10 defines the shampoo as comprising the composition of claim 1, as the prior art makes obvious the composition of claim 1, the composition is expected to be capable of being a shampoo.
Regarding claim 11: The composition is taught to comprise pomelo oil and CN’480 teaches this ingredient to provide moisture, therefore as the composition made obvious above comprises a conditioning agent and is deemed to read on conditioner.
Regarding claim 12: Claim 12 defines the composition to be a “leave-in hair product” which is a recitation 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 composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. The above references make obvious the claimed composition and teaches it to be applied to hair and absent a definition requiring the leave-in product to be left on for a specific duration, the composition made obvious above reads on a leave-in hair product.
Regarding claim 13: Claim 13 defines the composition to be a “hair styling product” which is a recitation 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 composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. The above references make obvious the claimed composition and teaches it to be applied to hair thus the composition made obvious above is capable of being a hair styling product.
Regarding all of claims 10-14: Suzuki teaches that a skilled artisan has the knowledge necessary to choose the appropriate presentation form for a composition, for examples, powder, lotion, foundation, sunscreen, leave-in formulation, etc. (pg. 45). Thus it would have been prima facie obvious for a skilled artisan to formulate any of the claimed compositional forms with a reasonable expectation of success.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
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