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 . Claims included in the prosecution are claims 1 and 3-15.
Applicants' arguments, filed 03/19/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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.
Claims 1 and 3-15 are rejected under 35 U.S.C. 103 as being unpatentable over Phillips et al. (US 2003/0147830, Aug. 7, 2003) (hereinafter Phillips) in view of Thomas et al. (US 5,616,548, Apr. 1, 1997) (hereinafter Thomas) and Yasuda et al. (JP H0820518 A, Jan. 23, 1996) (hereinafter Yasuda).
Phillips discloses a topical skin and/or hair composition containing protein (Title), specifically a topical personal care composition containing at least one protein that is a hydrolyzed or partially-hydrolyzed protein (¶ [0012]). The source of the hydrolyzed and/or partially hydrolyzed protein is not limited and include potato proteins, pea proteins, and cottonseed proteins (¶ [0041]). Preferably, the protein or proteins are present in concentrations ranging from about 0.0001% to about 40% by weight (¶ [0036]). Mixtures of more than one protein may be used (¶ [0046]). The composition may comprise from about 50% to about 90% or from about 45% to about 85% water (¶ [0061]). The composition may contain a safe and effective amount of a dermatologically acceptable carrier (¶ {0055]). The dermatologically acceptable carrier may contain thickening agents, structuring agents, and mixtures thereof (¶ [0067]). Suitable structuring agents include stearyl alcohol and cetyl alcohol (¶ [0082]). The composition can be formulated as shampoos, hair conditioners, and hair tonics (¶ [0063]).
Phillips differs from the instant claims insofar as not disclosing the molecular weights of the partially hydrolyzed potato proteins and of the partially hydrolyzed pea or cottonseed proteins.
However, Thomas discloses wherein partially hydrolyzed protein may have a relatively broad spectrum of molecular weights in the range from about 500 to about 70,000, preferably from about 500 to about 10,000 for hand care effects (col. 16, lines 4-8).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated partially hydrolyzed potato proteins and partially hydrolyzed pea or cottonseed proteins each with a molecular weight in the range from about 500 to about 10,000 into the composition of Phillips motivated by the desire to use partially hydrolyzed proteins that provide good hand care effects as taught by Thomas.
The combined teachings of Phillips and Thomas do not teach wherein the composition comprises aspartic acid and leucine.
However, Yasuda discloses blending a protein hydrolysate and an amino acid to supplement hair with proteins and amino acids which are easily lost during hair dyeing treatment and to maintain the moistness and smoothness of hair after dyeing treatment (seventh paragraph). One or more amino acid may be used and includes aspartic acid and leucine. The amino acid is 0.001 to 20% by weight (sixth paragraph).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated 0.001 to 20% aspartic acid and leucine into the composition of Phillips since the composition comprises hydrolyzed protein and the combination of hydrolyzed protein with amino acids maintains the moistness and smoothness of hair as taught by Yasuda.
In regards to instant claim 1 reciting wherein the weight ratio of the first component : the second component is in a range of 0.6:1 to 1.4:1, Phillips discloses wherein the proteins are present in concentrations ranging from about 0.0001% to about 40% by weight. Accordingly, the claimed ratio would have been obvious from one selecting an amount of each protein from the range disclosed by Phillips and arriving at a ratio of both proteins that overlaps with the claimed ratio. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A. In regards to instant claim 6 reciting wherein the first component and/or the second component is a chemically unmodified hydrolyzed protein, Philips discloses in paragraph [0040] wherein the proteins may be chemically modified. Thus, since the proteins may be chemically modified, it would have been obvious to one of ordinary skill in the art that the proteins are not required to be chemically modified and may be chemically unmodified.
In regards to instant claim 12 reciting wherein the hair care ingredient is an emulsifying agent, as discussed above, Phillips discloses wherein the composition comprises stearyl alcohol or cetyl alcohol. As noted in the instant specification on page 11, lines 14-15, stearyl alcohol and cetyl alcohol are emulsifiers for hair care formulations. As such, the stearyl alcohol and cetyl alcohol of Phillips are emulsifying agents for hair care.
In regards to instant claim 14 reciting wherein the method comprises cleaning or conditioning of the hair, as discussed above, Phillips discloses wherein the composition may be formulated as a shampoo or hair conditioner. As such, it would have been obvious to one of ordinary skill in the art to clean and/or condition hair with the composition of Phillips.
In regards to instant claim 15 reciting wherein the application of the composition to the hair strengths the hair, since the composition of Phillips comprises substantially the same active ingredient as claimed (i.e., partially hydrolyzed potato protein and partially hydrolyzed pea or cottonseed protein), the composition of Phillips necessarily strengthens hair. Additionally, as noted page 15, lines 19-20 of the instant specification, hydrolyzed proteins strengthen hair. Thus, since the composition of Phillips comprises hydrolyzed protein, the composition of Phillips strengthens hair when applied.
Response to Arguments
Applicant argues that in contrast to claim 1, Yasuda teaches the combination of two separate components: (i) a protein hydrolyzate and (ii) an amino acid.
The Examiner does not find Applicant’s argument to be persuasive. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. As discussed in the rejection, Phillips teaches a composition comprising the claimed partially hydrolyzed vegetable proteins and Yasuda provides motivation incorporate an amino acid into the composition of Phillips. As such, the claimed combination is obvious and Applicant’s argument is unpersuasive.
Applicant argues that Yasuda teaches away from the use of a protein hydrolyzate in the absence of a separate amino acid component.
The Examiner does not find Applicant’s argument to be persuasive. The rejection does not state wherein a protein hydrolyzate and an amino acid component would not be combined. As discussed in the rejection, Phillips discloses a composition containing a mixture of proteins, wherein the proteins include hydrolyzed and partially hydrolyzed proteins. It would have been prima facie obvious to one of ordinary skill in the art to have incorporated aspartic acid and leucine into the composition of Phillips since the composition comprises hydrolyzed protein and the combination of hydrolyzed protein with amino acids maintains the moistness and smoothness of hair as taught by Yasuda. As such, Yasuda does not teach away from the instant claims. Moreover, Yasuda does not limit the hydrolyzed protein to be specifically a keratin protein hydrolyzate, collagen protein hydrolyzate, silk protein hydrolyzate, or elastin protein hydrolyzate since Yasuda discloses in the abstract wherein these specific proteins are merely preferable and not required. Therefore, one of ordinary skill in the art would find success in combining the amino acid of Yasuda with the hydrolyzed protein of Phillips. Furthermore, the instant claims recite the transitional term “comprising,” thus the instant claims are open-ended and may include additional components not recited, such as the hydrolyzed protein of Philips. Therefore, none of the prior art references teach away from the instant claims and Applicant’s argument is unpersuasive.
Conclusion
Claims 1 and 3-15 are rejected,
No claims are allowed.
THIS ACTION IS MADE FINAL. 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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/TRACY LIU/Primary Examiner, Art Unit 1614
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