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 Application
Applicants' arguments/remarks filed 11/28/2025 are acknowledged. Claims 1-3, 7, 11, 15 and 17-20 are examined on the merits within and are currently pending.
Maintained Rejections
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 non-obviousness.
Claims 1-3, 7, 11, 15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Alves et al. (EP 3 016 630 B1) in view of Fan et al. (US 20190350820 A1).
Claim 1,
Alves et al. teach an oily cosmetic composition, especially hair compositions comprising a combination of a volatile oil, a fatty ester and a thickener, (0001), a cosmetic process for treating the hair, especially for caring for, cleansing and/or conditioning the hair, comprising: (a) one or more liquid fatty esters in an amount ranging from 10% to 40% by weight relative to the total weight of the composition,
(b) one or more volatile oils, chosen from branched C8-C16 alkanes, in an amount of greater than or equal to 30% by weight relative to the total weight of the composition. (0008). The volatile oil(s) are advantageously chosen from isododecane, isodecane or isohexadecane. The compositions according to the invention comprise the said volatile oil{s) in an amount of greater than or equal to 30% by weight relative to the total weight of the composition, and especially in an amount ranging from 30% to 98% by weight relative to the total weight of the composition. (0023).
(c) one or more thickeners chosen from optionally hydrogenated block of olefin, preferably containing one or two ethylenic un-saturations, and/or preferably containing from 2 to 5 carbon atoms, (0008), which includes polymer isobutene. In oil-based hair products, polyisobutene (PIB) is valued for its ability to enhance gloss, control texture, and provide long-lasting conditioning. And other thickeners can be included in the group.
(d) Composition according to one of the preceding claims, comprising the thickener(s) in an amount ranging from 0.1 % to 20% by weight. (Claim 9, pg. 13).
The composition according to the invention may be aqueous or anhydrous. It is advantageously anhydrous. For the purposes of the present invention, the term "anhydrous" refers to a composition comprising less than 5% by weight of water. (0056).
Alves et al. teach one or more liquid fatty esters in an amount ranging from 10% to 40% by weight relative to the total weight of the composition, but do not teach triheptanoin, which is a type of fat ester, a triglyceride, where three fatty acid chains are attached to a glycerol molecule through ester linkages. Specifically, triheptanoin is a medium-chain triglyceride (MCT) composed of three 7-carbon (C7:0) fatty acids, known as heptanoates.
Fan et al. teach the compositions of the invention may be administered onto hair of a subject, a mammalian subject, such as a human subject. (0246). One of the excipients in the composition is an emollient triheptanoin, 15% ((1008), or Table 8, pg. 18; Table 9, pg. 19).
Alves et al. teach (c) one or more thickeners chosen from optionally hydrogenated block of olefin, preferably containing one or two ethylenic un-saturations, and/or preferably containing from 2 to 5 carbon atoms, (0008), which includes isobutene. And Alves et al. recite these hydrogenated block of olefin as thickening agents. Actually, these hydrogenated blocks of olefin at 0.1 % to 20% by weight. (Claim 9, pg. 13), are both non silicone lipophilic compound(s) being liquid at 25°C and atmospheric pressure and being thickening agent(s). Applicant has hydrogenated polyisobutene, in a total concentration in the range of 10% to 90% by weight, calculated to the total weight of the composition and one or more thickening agent(s), at a total concentration in the range of 1 % to 20%, by weight, calculated to the total weight of the composition, and Aves has polyisobutene and other thickeners in an amount ranging from 0.1 % to 20% by weight. (Claim 9, pg. 13), which provides the same composition as the applicant’s.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare an oil-based cosmetic composition for human hair, comprising (a) one or more liquid fatty esters in an amount ranging from 10% to 40% by weight relative to the total weight of the composition, (b) one or more volatile oils, chosen from branched C8-C16 alkanes, isododecane, isodecane or isohexadecane in an amount of greater than or equal to 30% by weight relative to the total weight of the composition, (c) one or more thickeners/non-volatile oil like isobutene polymer, (d) comprising the thickener(s) in an amount ranging from 0.1 % to 20% by weight and less than 5% by weight of water, taught by Alves et al., b) triheptanoin, a compatible non-volatile glycerol triester taught by Fan et al., and an oil phase comprising hydrogenated polyisobutene, taught by Goutayer et al. since they have proven it is suitable to do so.
With regard to claims 2 and 3, Alves et al. teach the composition may be aqueous or anhydrous. It is advantageously anhydrous. The term "anhydrous" refers to a composition comprising less than 5% by weight of water.
With regard to claim 7, Alves et al. teach the volatile oil(s) are advantageously chosen from isododecane, isodecane or isohexadecane. The compositions comprise the said volatile oil{s) in an amount of greater than or equal to 30% by weight relative to the total weight of the composition, and especially in an amount ranging from 30% to 98% by weight, preferably from 35% to 97% by weight, relative to the total weight of the composition (0023).
With regard to claim 11,
Alves et al. teach the compositions comprise the said liquid fatty ester(s) in an amount ranging from 10% to 40% by weight, preferably from 10% to 35% by weight, relative to the total weight of the composition. (0021).
Fan et al. teach the compositions of the invention may be administered onto hair of a subject, a mammalian subject, such as a human subject. (0246). One of the excipients in the composition is an emollient triheptanoin, 15% ((1008), or Table 8, pg. 18; Table 9, pg. 19).
With regard to claim 15, Alves et al. teach the thickeners are chosen from diblock copolymers, which are preferably hydrogenated, bearing styrene blocks and ethylene/C3-C4 alkylene blocks, more particularly copolymers, which are preferably hydrogenated, bearing styrene blocks and ethylene/propylene or ethylene/butylene blocks. (0037).
With regard to claim 17, Alves et al. teach the composition preferably has a texture that is halfway between that of a styling gel and that of a hair oil; (0013).
With regard to claim 18, Alves et al. teach the composition according to the invention comprises the pigment(s) and/or the microcapsule(s) in a total amount of from 0.01 % to 40% by weight, preferably from 0.05% to 30% by weight, or even from 0.1 % to 20% by weight, better still from 0.5% to 15% by weight, or even from 1 % to 10% by weight, relative to the total weight of the composition. (0050).
With regard to claim 19,
Alves et al. teach a cosmetic treatment method, especially for caring for, cleansing and/or conditioning the hair (0061) to apply to the hair (0005) the cosmetic composition, especially a hair composition, which may or may not be rinsed out after having been applied to the keratin materials, especially the hair. It is optionally possible to perform rinsing, for example with water, after an optional leave-in time. (0060).
Fan et al. teach the compositions of the invention may be administered onto hair of a subject, a mammalian subject, such as a human subject. (0246). The composition flowed as
expected when the fluid was rubbed into the wet scalp, generating a more stable foam that had lubricity to its feel. (0265). Personal care compositions are washed into waste water treatment systems when the user of the personal care composition showers or bathes, (0005) including shampoo, hair conditioner, hair treatment, hair reconstruction, styling gel, styling foam , hair mousse, hair spray, hair set lotion, blow styling lotion, hair color lotion and dyes, hair bleaching cream, shaving cream, shaving lotion , hair relaxing, curl activator, fragrant hair gloss (0087), of which some are leaving on hair for a period of time up to hours or even days.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Alves et al. (EP 3 016 630 B1) in view of Fan et al. (US 20190350820 A1) as applied in claim 1 above and further in view of De Boni et al. (WO 2011/074135 Al).
Hair is primarily composed of keratin fibers; essentially, hair is made up of a protein called keratin, which forms long, strong fibers that give hair its structure and strength; meaning keratin fibers are the building blocks of hair. (Yang et al., The structure of people’s hair. Peer J . 2014 Oct 14;2:e619).
The teachings of Alves et al. and Fan et al. are described in claim 1 above.
Alves et al. and Fan et al. do not teach a method for treating split-ends of human hair comprising:
x) applying a composition as defined in claim 1 onto keratin fibers, preferably onto
the dry tips of the human hair.
xi) applying heat to the human hair in a temperature range of 40°C to 230°C,
for a time period in the range of 10 s to 600 s, and
xii) optionally washing and shampooing the human hair.
De Boni et al. teach a process for treating keratin fibers comprising the steps of: applying onto the keratin fibers a composition comprising at least one reactive polymer; then placing the keratin fibers in an occlusive space; and then heating the keratin fibers. (Abs). The present invention relating to the treatment process for keratin fibers, keratin fibers such as hair are subjected to a specific heating process which is performed in an occlusive space. (pg. 11, 6th last par.).
One embodiment of the cosmetic treatment process for reshaping or permanent deforming keratin fibers, in particular hair, comprising:
b) applying the above-described composition to the keratin fibers;
c) an optional step of rinsing the keratin fibers,
e) heating the keratin fibers at a temperature of between 45 ± 2-3°C and 250 ± 2-3°C for 1 minute to 2 hours. (pg. 15, 5th par.).
Example 1: Composition 1 was applied for 15 minutes on a lg natural Japanese hair swatch. Then, the hair was wrapped in a plastic film and covered by a flexible heating film. The hair was heated in occlusive conditions for 15 minutes at 90°C. After the heating step, the hair was rinsed. (pg. 19, 1st par.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare an oil-based cosmetic composition for human hair, comprising (a) one or more liquid fatty esters in an amount ranging from 10% to 40% by weight relative to the total weight of the composition, (b) one or more volatile oils, chosen from branched C8-C16 alkanes, isododecane, isodecane or isohexadecane in an amount of greater than or equal to 30% by weight relative to the total weight of the composition, (c) one or more thickeners/non-volatile oil like isobutene polymer, (d) comprising the thickener(s) in an amount ranging from 0.1 % to 20% by weight and less than 5% by weight of water, taught by Alves et al., b) triheptanoin, a compatible non-volatile glycerol triester taught by Fan et al., to apply the methods of treating spit-ends of human hair taught by De Boni et al., since they have proven it is suitable to do so and the steps were working for deforming keratin fibers, in particular hair.
Response to Arguments
Applicant argues that Claims 1-3, 7, 11, 15, 17, and 18 relate to oil-based cosmetic compositions for human hair, while Claims 19 and 20, dependent on claim 1, relate to methods for conditioning or treating split-ends of human hair with such a composition. Thus, all the present claims require the presence or use of triheptanoin. The cited references contain no suggestion of the presently claimed compositions or methods. Accordingly, these references cannot affect the patentability of the present claims. As conceded on page 4 of the Office Action, Alves et al. does not disclose the use of triheptanoin in a hair composition. Instead, it is noted that Fan et al. discloses the use of triheptanoin and asserted that the combination of these references makes Claim 1 obvious.
Applicant's arguments have been fully considered but they are not persuasive since the basis for 103 rejection is that no one reference has to teach all the claim limitations for an obviousness rejection and therefore several references are combined to render the claims obvious. One with ordinary skill in the art can learn from and select specific parts of several prior arts’ teachings before the effective filing date of the invention to achieve better outcome results even though some prior arts may teach more and may teach different things. Throughout claims 1-3, 7, 11, 15 17 and 18, Alves and Fan teach compositions and Fan teaches trihelptanoin; Claim 19, Alves teaches a cosmetic treatment method, especially for caring for, cleansing and/or conditioning the hair; Claim 20, De Boni teaches a process for treating keratin fibers comprising the steps of: applying onto the keratin fibers a composition to repair damaged keratin fibers and split ends are caused by the breakdown of the hair's structure, specifically when the protective cuticle layer erodes and exposes the inner keratin fibers of the cortex to damage, so indirectly, De Boni teaches process/method for treating hair splitting.
Applicant argues that in the First Declaration of Burgdorf, additional comparative examples (Comp. Ex. 2 and Comp. Ex. 3) were carried out in which triheptonoinwas replaced with tricaprylin. With, trihelptannoin the hair area after 24 hrs are 55.1 and 55.5 (ave. 55.3) cm2, without Tricaprylin and substituting with Tricaprylin 52.6 and 53.4 (ave. 53) cm2. The submitted affidavits were acknowledge in the previous office actions (10/18/2024 and 7/24/2025). As answered in the previous arguments that the increase of area by triheptanoin vs tricaprylin are not significantly different, 55.1 vs 52.6 and 55.5 vs 53.4, and even when triheptanoin wt.% is increased from 32.5 to 50, the area is increased only from 55.1-55.5; And Fan has triheptanoin as emollient in the composition for hair (0003, Table 8, pg. 18, Table 9, pg. 19, Table 10, pg. 19), and teaches as for improving the properties of personal care compositions (0010), (skin and hair care, primarily). Improved product attributes ness or globular domains, smooth spreading, more uniform texture, non - greasy feel, improved emulsion stability compatibiliser for other ingredients, improved fragrance, foam stability, better adhesion to skin and hair, wear resistance, (0013), hair treatment (0087). General knowledge, emollients are recognized that they can replenish hair’s moisture, so they can help reduce hair split, specifically by improving the health of the scalp and conditioning the hair shaft, which prevents damage that leads to splitting. (Lanjewar et al. Review on Hair Problem and its Solution. Journal of Drug Delivery & Therapeutics. 2020; 10(3-s):322-329). Applicant’s affidavit provides data to confirm general knowledge and what Fan teaches triheptanoin as an emollient in the composition improving hair care!
Conclusion
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.
Correspondence
No claim is allowed
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGOC-ANH THI NGUYEN whose telephone number is (571)270-0867. The examiner can normally be reached Monday - Friday 8:00 am.
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/NGOC-ANH THI NGUYEN/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615