FINAL 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 the Claims
This action is in response to papers filed 10/03/2025 in which claims 2-3, 6, 8, 10, and 17 were canceled; claim 16 was withdrawn; claims 1 and 4 were amended; claim 18 was newly added. All the amendments have been thoroughly reviewed and entered.
Claims 1, 4-5, 7, 9, 11-15 and 18 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Rejections
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
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 are 1, 4-5, 7, 9, 11-15 and 18 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 introduces new matter as the claim recites the limitation: “a film forming polymer … is acrylic-based” There is no support in the specification for the film forming polymer to be generically acrylic-based.
Applicant asserted that the support for the amendment can be found in paragraphs [0036]-[0039] of the specification. However, after a thorough review of said paragraphs[0036]-[0039], as well, as thorough the specification, there appeared to be no support or disclosure for broad genus of “acrylic-based” film forming polymers. While paragraph [0036]-[0039] recites a few species (i.e., alkyl/acrylate/octylacrylamide copolymer, acrylic acid/acrylamide/ethyl acrylate copolymer, etc.), this is not support for the broad genus of “acrylic-based” film forming polymers. It is noted that the broad genus of acrylic based film forming polymers include polymers such as polyacrylates, styrene-acrylic polymers, poly(methyl cyanoacrylate), and poly(methyl methacrylate), which are clearly not supported by Applicant’s specification.
Claims 4-5, 7, 9, 11-15 and 18 are also rejected as they depend directly or indirectly from claim 1, thereby also containing the new matter material.
Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 15, the recitation of “wherein a content of the component (D) is 10% by mass or less” renders claim 15 indefinite because claim 15 is dependent from claim 1 and claim 1 recites that the “component D comprises 30% by mass or more of ethanol relative to a total mass of component (D).” Thus, it is unclear how content of the compound (D) of claim 15 can be 10% by mass or less when the component (D) in claim 1 requires 30% by mass or more of ethanol relative to a total mass of component (D). Clarification by amendment in claim 15 is required.
As a result, claim 15 does not clearly set forth in the metes and bounds of patent protection desired.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15 is not further limiting from claim 1 because claim 1 recites that the “component D comprises 30% by mass or more of ethanol relative to a total mass of component (D)” and thus, the recitation of “a content of the component (D) is 10% by mass or less” does not further limit from or is outside the scope of “component D comprises 30% by mass or more of ethanol relative to a total mass of component (D)” from claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 4-5, 7, 9, and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alexandrova (US 2017/0014314 A1) in view of Montezinos et al (US 2007/0141002 A1; previously cited).
Regarding claim 1, Alexandrova teaches a cosmetic composition capable of temporarily modifying the color of the hair, the cosmetic composition comprising colored pigments; a film-forming polymer such as PVM/MA copolymers and sodium polyacrylate; and a cosmetically acceptable solvent, preferably a mixture of alcohol (ethanol) and water (Abstract; [0001], [0009]-[0029], [0044]-[0046] and [0052]-[0064]; claims 1-5 and 14-17). Alexandrova teaches the mixture of alcohol (ethanol) and water include more than 90% alcohol ([0024]-[0026]; claims 3-4), thereby the remainder is less than 10% by weight of water. Alexandrova teaches that the mixture of alcohol (ethanol) and water include more than 90% alcohol allows the solution to dry quickly without damaging the scape or skin, or dry keratin fibers ([0025]-[0026]).
Montezinos teaches a hair care composition comprising a film forming agent and a shine enhancing system that includes at least two colored pigments (Abstract; [0006]-[0048], [0052]-[0060]; claims 1-17). Montezinos teaches the filming-forming agent such as acrylate polymers is present in the composition in an amount from about 0.001% to about 5% by weight (Abstract; [0008], [0032], claim 1). Montezinos teaches the colored pigments includes interference pigments and at least one other colored pigment selected from reflective pigments, effect pigments, and luminescent pigments ([0042]-[0047]). Montezinos teaches a shine enhancing system containing 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas) (Table 1). Montezinos teaches the hair care composition provides a semi-permanent treatment and provide natural looking shine and color enhancement when applied to hair ([0059]).
It would have been obvious to one of ordinary skill in the art to include at least two colored pigments such as a shine enhancing system containing 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas), as part of the colored pigments in the cosmetic composition of Alexandrova, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Montezinos provided the guidance to do so by teaching that a shine enhancing system containing an interference pigment and at least one other colored pigment selected from reflective pigments, effect pigments, and luminescent pigments, such as a shine enhancing system containing 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas), can be included as part of the colored pigments in a hair care composition such as a temporary hair treatment composition so as to provide a natural looking shine, as well as, color enhancement when applied to hair. One of ordinary skill in the art would have reasonable expectation of success of including at least two colored pigments such as a shine enhancing system containing 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas), as part of the colored pigments in the composition of Alexandrova because Alexandrova indicated that mixtures of colored pigments can be used to provide a temporary hair dye that gives a natural color. Thus, an ordinary artisan seeking to produce a temporary hair dye composition that provides not only a natural color, but also natural looking shine, as well as, color enhancement to the hair would have looked to including a shine enhancing system containing 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas) as part of the colored pigments in the composition of Alexandrova, and achieve Applicant’s claimed invention with reasonable expectation of success.
It would also have been obvious to one of ordinary skill in the art to routinely optimize the weight amount of interference pearl pigment to the total content of pigments to a mass ratio of 0.60 to more and 0.89 or less, as well as, the weight amount of film-forming polymer to the total content of pigments to a mass ratio of 0.6 or more and 2.0 or less, the composition of Alexandrova in view of Montezinos, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Montezinos teaches the hair care composition can contain filming-forming agent such as acrylate polymers in an amount from about 0.001% to about 5% by weight, and from about 0.1% to about 20% by weight of the shine enhancing system (Abstract; [0008], [0032], claim 1), in which Montezinos further provided the guidance to use colored pigments such as 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas) as part of the shine enhancing system (Montezinos: Abstract; [0006]-[0048], [0052]-[0060]; Table 1; claims 1-17). It is noted that the amounts of colored pigments and film-forming polymer as taught by Montezinos overlaps the mass ratios of interference pigment to the total content of pigments and film-forming polymer to the total content of pigments of the claimed invention as recited in claim 1. Thus, the Courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the mass ratios of interference pigment to the total content of pigments and film-forming polymer to the total content of pigments in the hair cosmetic composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
With respect to the absolute value of a hue difference ∆H° for components A and B as recited in claim 1, as discussed above, Montezinos teaches and provides guidance for including at least two colored pigments such as a shine enhancing system containing 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas), as part of the colored pigments in the cosmetic composition of Alexandrova. It is noted that the shine enhancing system containing 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas) meets the claimed structures of (A) an interference pearl pigment and (B) a pigment other than the component (A), and thus, composition of Alexandrova in view of Montezinos containing 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas) would implicitly have “an absolute value of a hue difference ∆H° for components A and B of 15 or less, absence of evidence to the contrary. As such, it is noted that [w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. It is further noted that the method to which the hue difference is measured as recited in claim 1 is immaterial to the patentability of the hair cosmetic product, as how the hue difference is measured does not change the structures of the claimed hair cosmetic or the components (A) and (B) that is part of the hair cosmetic.
Regarding claims 4 and 9, as discussed above, Montezinos teaches the hair care composition can contain filming-forming agent such as acrylate polymers in an amount from about 0.001% to about 5% by weight, and from about 0.1% to about 20% by weight of the shine enhancing system (Abstract; [0008], [0032], claim 1), in which Montezinos further provided the guidance to use colored pigments such as 1.2% of an interference pigment (Colorona™) and 1.2% of a reflective pigment (KTZ Xian Vistas) as part of the shine enhancing system (Montezinos: Abstract; [0006]-[0048], [0052]-[0060]; Table 1; claims 1-17). It is noted that the amounts of colored pigments and film-forming polymer as taught by Montezinos overlaps the mass ratios of film-forming polymer to the total content of pigments of the claimed invention as recited in claims 4 and 9. As such, the Courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the mass ratio of film-forming polymer to the total content of pigments in the hair cosmetic composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 5, as discussed above, both Alexandrova and Montezinos teach a temporary hair dye composition.
Regarding claim 7, as discussed above, Montezinos teaches and provide guidance for the hair care composition to contain about 0.1% to about 20% by weight of colored pigments (shine enhancing system), which overlaps total content of pigments of claim 7. Thus, the Courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the total content of pigments in the hair cosmetic composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 11, as discussed above, Alexandrova teaches the solvent includes more than 90% alcohol (ethanol).
Regarding claim 12, Montezinos teaches the colored pigments including interference pigments from about 0.1 to about 20% by weight such as 1.7 wt% (Montezinos: Abstract; [0042]-[0047]; Table 1; claim 1). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amount of interference pearl pigment in the hair cosmetic composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 13, Montezinos teaches the colored pigment selected from reflective pigments, effect pigments, and luminescent pigments, is present in the composition in an amount from about 0.1 to about 20% by weight such as 0.9% by weight or 1.2% by weight ([0038]-[0047]; Table 1).
Regarding claim 14, Montezinos teaches the hair care composition can contain filming-forming agent such as acrylate polymers in an amount from about 0.001% to about 5% by weight (Abstract; [0043] and [0052]), which overlaps the claimed range for component (C) of claim 14. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amount of film-forming polymer in the hair cosmetic composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 15, Alexandrova teaches the cosmetic composition contains 1.20% by weight propylene glycol ([0035], [0060]-[0064]).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alexandrova (US 2017/0014314 A1) in view of Montezinos et al (US 2007/0141002 A1; previously cited), as applied to claim 1 above, and further in view of Fröhling (US 2012/0012128 A1).
The hair cosmetic of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 18, Alexandrova teaches a cosmetic composition capable of temporarily modifying the color of the hair, the cosmetic composition comprising colored pigments; a film-forming polymer such as PVM/MA copolymers and sodium polyacrylate; and a cosmetically acceptable solvent, preferably a mixture of alcohol (ethanol) and water (Abstract; [0001], [0009]-[0029], [0044]-[0046] and [0052]-[0064]; claims 1-5 and 14-17). Alexandrova teaches the mixture of alcohol (ethanol) and water include more than 90% alcohol ([0024]-[0026]; claims 3-4), thereby the remainder is less than 10% by weight of water.
Fröhling teaches a temporary hair dyeing composition comprising colored pigments including interference pigments, wherein when the dyes and adjuvants are stored together in a liquid preparation, the preparation should be substantially anhydrous in order to reduce reactions of the compounds (Abstract; [0058]-[0071] and [009]-[0106]).
It would have been obvious to one of ordinary skill in the art to produce the cosmetic composition of Alexandrova such that it is a substantially anhydrous composition or in other words, 1% by mass or less of water, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Fröhling provided the guidance to do so by teaching that temporary hair dyeing composition can be made substantially anhydrous for storage stability purpose in order to reduce reactions of the compounds in the composition. One of ordinary skill in the art would have reasonable expectation of success in doing so because as discussed above, Alexandrova does contemplate producing a temporary hair dyeing composition with little amount of water. Thus, an ordinary artisan seeking to product a liquid preparation that is stable during storage would have looked to producing the cosmetic composition of Alexandrova such that it is a substantially anhydrous composition or in other words, 1% by mass or less of water so as to reduce reactions of the compounds in the composition, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 10/03/2025 on pages 7-8 have been fully considered but they are not persuasive and moot in view of the new 103 rejections over the combined teaching of Alexandrova, Montezinos, and Fröhling, respectively.
Accordingly, for the reasons discussed in the new 103 rejections, claims 1, 4-5, 7, 9, 11-15 and 18 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections as set forth in this office action.
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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613