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 .
Priority
The instant application is the national stage entry of PCT/EP2020/082238 filed 16 November 2020. Acknowledgement is made of the Applicant’s claim of foreign priority to application DE102019219408.7 filed 12 December 2019. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application. The effective filing date is 16 November 2020.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 December 2025 has been entered.
Examiner’s Note
Applicant's amendments and arguments filed 19 December 2025 are acknowledged and have been fully considered. 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. In the Applicant’s response, filed 19 December 2025, it is noted that claims 1 and 10 have been amended. Support can be found in the claims as originally filed. No new matter or claims have been added.
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.
Claims 1, 3-5, 7-12, and 14 stand rejected under 35 U.S.C. 103 as being unpatentable over Brice et al. (US 2018/0271759) in view of Burns et al. (US 5,635,168) in view of Fonseca et al. (WO 2019/119080) in view of NewDirectionAromatics.com (https://www.newdirectionsaromatics.com/blog/all-about-peg-40-hydrogenated-castor-oil/).
Brice teaches a shampoo or conditioner composition for the repair of hair damage comprising trehalose (0.1%; disaccharide), sodium sulfate (0.1%; alkali salt), sodium chloride (1.0%; alkali salt), co-surfactant, and water, wherein the composition is free of synthetic film forming polymers [0171-0172] (Table 1, Example 1). The disaccharide can be used in amounts ranging from 0.001-8 wt% [0066] and the salt can be used in amounts up to less than 10 wt% including as low as 0.001 wt% [0071]. Regarding the co-surfactant, said agent can be a nonionic surfactant [0088]. Brice teaches the composition can be used by applying to the hair either as rinse-off or leave-on, for the treatment of dry hair and/or unmanageable hair [0164].
Brice does not teach using magnesium sulfate nor does it teach sucrose as the disaccharide. Brice does not exemplify a composition with the claimed ranges. Brice does not teach using sucrose or PEG derivatives of hydrogenated castor oil.
Burns teaches a composition for treating hair useful for preventing or repairing damage to the hair (abstract). The composition can comprise at least 1 wt% of a polyvalent metal compound such as an alkaline earth metal (col 4, lns 61-67) wherein the preferred compound is magnesium sulfate in from 6-9 wt% (col 6, lns 28-30). The polyvalent metal compound is included to show effectiveness in improving the condition of the hair (col 9, lns 5-10). Burns teaches that is important for the active agent (polyvalent metal compound) to penetrate the hair so that the cysteine inside the cuticle can participate in formation of the disulfide bonds, and thus repair said hair (col 11, ln 59- col 12, ln 5).
Fonseca teaches that sucrose and trehalose are both examples of disaccharides (pg 13, lns 7-9).
NewDirectionAromatics.com teaches that PEG 40 hydrogenated castor oil is a surfactant that can be used in shampoos, conditioners, and other hair care treatments (pgs 2-3).
It would have been prima facie obvious to prepare the composition of Example 1 of Brice and modify it so as to increase the amounts of trehalose to 3.5 wt% and the amount of sodium chloride to 2.0 wt% since Brice teaches these broader ranges. Moreover, it would have been obvious to select a nonionic polymer as the co-surfactant. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07). Alternatively, the disaccharide can be used in amounts up to 8 wt% and the sodium chloride can be used in 0.01 wt% or lower.
Looking to Burns, the skilled artisan would have found it obvious to further include an alkali earth metal compound, such as magnesium sulfate, in amounts of from 6-9 wt%, so as to enhance the ability of the composition to repair the damaged hair by promoting the formation of disulfide bonds.
Regarding the disaccharide, although trehalose is preferred, any disaccharide comprising two hexose units is suitable for the invention. Thus, it would have been obvious to use sucrose in place of trehalose, both of which are shown by Fonseca to be alternatives for use in hair treatments.
Regarding claim 10, Brice teaches using the composition as a conditioner or shampoo that can be left-on or washed out so as to improve manageability of the hair.
Regarding the nonionic surfactant of Brice, the art teaches that any nonionic surfactant can be used, thus it would have been obvious to look to NewDirectionAromatics.com and include PEG 40 hydrogenated castor oil as the surfactant in the hair care treatment composition of Brice. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).
Claims 1, 3-5, 7-12, and 14 are accordingly rejected as obvious over the prior art.
Response to Arguments
Applicant's arguments filed 19 December 2025 have been fully considered but they are not persuasive. The Applicant argues, on pages 5-6 of their remarks, that even though Brice provides a broader range of disaccharide, all the examples and preferred embodiments use amounts of less than 2% by weight.
In response, the Applicant is erroneously pointing to narrow embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments (see MPEP § 2123). A reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Since Brice teaches a broader range of disaccharide from 0.001-8 wt%, any value within said range would have been prima facie obvious to the skilled artisan despite the narrower preferred ranges.
The Applicant argues, on pages 6-7 of their remarks, that Brice does not teach disaccharides are useful for providing a shaping effect and that the relatively high amounts of sucrose in claim 1 allow for hair shaping.
In response, the fact that the inventor 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The Applicant has not provided evidence of a critical range of sucrose or an unexpected result associated with the inclusion thereof. Since the prior art teaches using disaccharide in up to 8% by weight, the above rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613