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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 10/27/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.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.
Claims 1-16 are pending, claims 1-15 are under examination.
Terminal Disclaimer
The terminal disclaimer filed on 10/27/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US patent application 17787192 and 17786439 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7,10 and 13 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Garoche et al. (US5112360) as evidenced by ChemViews (“Shampoo Science”, ChemViews, January 8, 2013).
The limitation of claims 1-2, 4-7 and 10 is met by Garoche et al. disclosing a process of applying a composition A (pH 3-5) comprising Ce2(SO4)3 5H2O (2.6g/100g, about 2.6%) and sodium lauryl ether sulphate (anionic surfactant), followed by composition B, the rinsing with water and shampooing, and dried (column 6, example 1). As evidenced by ChemViews that shampoo inherent comprises surfactant.
In summary, although the reference is silent about all the functional properties “shaping hair” instantly claimed, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same hair is being administered the same composition by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, Garoche et al. teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is anticipated in the prior art.
The limitation of claim 3 is met by Garoche et al. disclosing Ce2(SO4)3 5H2O with Ce3+.
The limitation of claim 13 is met by Garoche et al. disclosing dried (step) after shampooing.
Response to Argument:
Applicants argue that there is no disclosing of shaping hair.
In response to this argument: this is not persuasive. As discussed in the above 102 rejection, shaping hair is inherency of prior art process, and the 102 rejection is still proper.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-8, 11-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Nocker et al. (US20180338894).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Nocker et al. teaches a process for permanent shaping and dyeing carried out one after another with compositions providing improved and milder shaping and dyeing of hair, especially human hair (abstract). Process for treating hair, especially human hair, comprising the following steps: a) hair is washed with a cleansing composition and towel dried, b) hair is applied an aqueous composition (composition A) comprising one or more reducing agents, one or more alkalizing agents and has an alkaline pH in the range of 7.5 to 12.0, and is left on hair from 1 to 30 min, c) hair is rinsed off with water d) optionally hair is applied a composition C, wherein the composition C is an aqueous composition comprising one or more oxidizing agents, and has a pH in the range from 1.5 to 5, e) Hair is applied an aqueous composition consisting of two compositions B and C, wherein B is an aqueous composition comprising one or more hair dyes and one or more alkalizing agents and has an alkaline pH in the range of 7.1 to 12, wherein the mixed composition has an alkaline pH and is obtained by mixing the compositions B and C immediately before application onto hair and left on the hair for a period of 1 to 45 min, f) Hair is rinsed off and optionally washed with a cleansing composition and dried, wherein the composition(s) in step(s) b and/or e is (are) mixed with a composition D immediately before application onto hair for obtaining ready to use compositions, wherein the composition D comprises i) one or more carboxylic acids having three or more carboxyl groups and/or their salts, and ii) one or more additional organic acid and/or their salts having one or two carboxyl groups, wherein the composition D comprises the acids of i) and ii) and/or their salts at a total concentration of 10% to 100% by weight calculated to the total of composition D, wherein the ready to use compositions in steps b and/or e have a pH in the range from 6.5 to 11 and comprise the acids and/or their salts at a total concentration in the range of 1% to 10% by weight calculated to the total of the ready to use compositions, wherein the hair is optionally put under tension before or during or after application of reducing composition in step b and the tension is released from hair before application of the composition in step e (claim 1). Anionic surfactant is known in cleansing composition (page 4, [0048]). The cleansing shampoo is applied on hair (page 7, [0081]). After rinsing off the reducing composition in step c and prior to application of the composition C and or prior to releasing the tension from hair, an aqueous intermediate treatment composition may preferably be used in order to de-swell hair for minimizing further damage to the hair fibre. The intermediate composition is applied onto hair after rinsing off the reducing composition but before applying the oxidizing composition and preferably left on the hair up to 15 min, more preferably up to 10 min and optionally rinsed off from hair prior to application of the oxidizing composition in steps d or e. The intermediate composition comprises one or more inorganic salt, preferably at a concentration of 0.5% to 15%, more preferably 1% to 12.5% and most preferably 2% to 12.5% by weight calculated to the total of the composition. In principle any water soluble inorganic salt is suitable for the purpose. In the preferred embodiment, salts are preferably selected from salts of mono or divalent cations with mono and divalent anions. Preferred cations are sodium, calcium, potassium and magnesium and anions are chloride and sulfate. Suitable ones are such as sodium chloride, sodium sulfate, magnesium sulfate, potassium chloride, potassium sulfate, magnesium chloride, calcium chloride, ammonium salts such as ammonium chloride and ammonium sulfate. Additionally salts have been found to be especially suitable such as iodide ions especially potassium and sodium salts, copper chloride, copper sulphate, cobalt chloride, cerium sulphate, cerium chloride, vanadium sulphate, lithium chloride, magnesium acetate, calcium nitrate, barium nitrate, magnesium oxide, and ammonium nitrate. The intermediate treatment composition has a pH between 2 and 7, preferably 2.5 and 6 and more preferably 3 and 5 (page 6, [0071-0072, 0074]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Nocker et al. is that Nocker et al. is not specific enough for anticipation.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claims 1-8, Nocker et al. teaches a process of treating hair by applying an intermediate composition with pH from 3-5 comprising 0.5% to 15% of Cerium Chloride (CeCl3) between step c) and step d), followed by step, f) Hair is rinsed off and optionally washed with a cleansing composition and dried. Nocker et al. further teaches cleansing composition shampoo and anionic surfactant in cleansing composition, thus shampoo comprises anionic surfactant.
Regarding claims 11-12 and 15, Nocker et al. teaches hair is washed with a cleansing composition and towel dried before application of intermediate composition comprising cerium chloride, it is obvious to use hand for towel dried of hair and shaping the hair.
Regarding claim 13, Nocker et al. teaches drying hair after shampooing the hair.
Regarding claim 14, claim 14 is interoperated as additional shampooing required after stage ii) shampooing since it is applied between two stage of stages iii). Nocker et al. teaches Hair is rinsed off and optionally washed with a cleansing composition and dried, and it is obvious to
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
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 the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 9-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nocker et al. (US20180338894), as applied for the above 103 rejection for claims 1-8, 11-13 and 15, in view of Garoche et al. (US5112360), Ford et al. (US20060013780) and Blackburn et al. (US20120060303).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Nocker et al. teaching has already been discussed in the above 103 rejection and is incorporated herein by reference.
Garoche et al. teaches treatment of hair by applying a composition comprising cerium chloride and anionic surfactant sodium lauryl ether sulphate followed by rinsing and shampoo and dry (column 8, example 12).
Ford et al. teaches surfactant (abstract). In a shampoo or liquid body wash formulation comprising water and 0.1 to 30 wt % of an anionic surfactant (claim 41).
Blackburn et al. teaches dye mixtures for application to human hair (abstract). Investigations into the fastness properties of the dyes to washing were performed following a standardised procedure, using shampoo and conditioner. Each wash cycle comprised of application of shampoo, thorough rinse under running warm water with combing, repeat application of shampoo, thorough rinse, followed by a single application of conditioner, final rinse, followed by drying with a domestic hair dryer with combing ([0095]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Nocker et al. is that Nocker et al. do not expressly teach anionic surfactant in intermediate composition, amount of surfactant in shampoo and claim 14. This deficiency in Nocker et al. is cured by the teachings of Garoche et al., Ford et al. and Blackburn et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Nocker et al., as suggested by Garoche et al., Ford et al. and Blackburn et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to include anionic surfactant in the intermediate composition comprising cerium chloride because anionic surfactant is a suitable component in composition comprising cerium chloride for hair treatment as suggested by Garoche et al. MPEP 2144.07. therefore, it is obvious for one of ordinary skill in the art to include anionic surfactant in the intermediate composition comprising cerium chloride and produce instant claimed invention with reasonable expectation of success.
One of ordinary skill in the art would have been motivated to have 1-40% of surfactant in shampoo because this is optimization under prior art condition or through routing experimentation. MPEP 2144.05. Under guidance from Ford et al. teaching shampoo or liquid body wash formulation comprising water and 0.1 to 30 wt % of an anionic surfactant, it is obvious to 1-40% of surfactant in shampoo and produce instant claimed invention with reasonable expectation of success.
One of ordinary skill in the art would have been motivated to have additional shampooing after rinsing and shampooing because this is known process after dying hair as suggested by Blackburn et al. Therefore, it is obvious to have additional shampooing step after rinsing and shampooing and produce instant claimed invention with reasonable expectation of success.
Regarding claim 14, prior art teaches rinsing and shampooing, followed by additional step of shampooing, the drying the hair. Since there is no requirement to have additional shampooing immediately after first shampooing, no requirement to dry the hair immediately after additional shampooing. Thus, it is obvious to wait half minute to one minute to do additional shampooing after first shampooing, and wait half minute to one minute to dry the hair after additional shampooing. Thus, a shampooing is carried out between two stage spaced out in time.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
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 the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument:
Applicants argue that applicant’s claimed invention does not comprises a reduction or oxidation step as Nocker method.
In response to this agreement: this is not persuasive. Applicant’s claim reciting “comprising” does not exclude reduction or oxidation step. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., excluding reduction or oxidation step) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
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 JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613