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 .
Request for continued examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/24/2025 has been entered.
DETAILED ACTION
As filed on 08/08/2025, Claims 43-76 are pending of which claim 43 is amended. Claims 52-75 are withdrawn from further consideration as being drawn to a nonelected invention.
Response to Remarks
Applicant’s amendments have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
1.The rejection of claims 43-51 under 35 U.S.C. § 112 first paragraph written description is maintained.
The Applicants have not amended claim 43 to curtail the scope closer to that of the examples. As amended, instant claims are drawn to a method of treating hair by applying compounds of formula R2(-0H)a(-O-C(O)-R3-R4)b,
PNG
media_image1.png
200
400
media_image1.png
Greyscale
By contrast, the specification is limited to preparation of two compounds: glycerol diglycidyl ether based gallic acid and propylene glycol based gallic acid (shown below as indexed in the registry Data base):
PNG
media_image2.png
200
400
media_image2.png
Greyscale
Th
PNG
media_image3.png
200
400
media_image3.png
Greyscale
Therefore, instant claims do not comply with the written description requirement because the disclosure does not provide a representative number of species falling within the scope of the genus compound as claimed and method for treatment of hair by applying said compounds.
2.The rejection of claims 43-46, 48 under 35 U.S.C. § 102(a)(1) over Okano et al. Journal of the Society of Cosmetic Chemists (1991), 42(1), 45-57 is withdrawn per amendment to claims.
3.The rejection of claims 43-51 under 35 U.S.C. § 103 over US 2008/0249195, Oct. 9, 2008, by Mentlik et al. is withdrawn in view of claim amendments.
4.The rejection of claims 43-45 under 35 U.S.C. § 103 over WO 92/18457 is withdrawn in view of claim amendments.
Claim Rejections - 35 USC § 112
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 43-51, 76 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Examination of Patent Applications Under the 35 U.S.C. 112 ¶1 "Written Description" Requirement, Rev. 1, 2008; at http://www.uspto.gov/web/menu/written.pdf.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that the Artisan can reasonably conclude that the inventor(s) had possession of the claimed invention. Such possession may be demonstrated by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and/or formulae that fully set forth the claimed invention. Possession may be shown by an actual reduction to practice, showing that the invention was “ready for patenting”, or by describing distinguishing identifying characteristics sufficient to show that Applicant was in possession of the claimed invention (January 5, 2001 Fed. Reg., Vol. 66, No. 4, pp. 1099-11).
A written description of an invention involving a chemical genus, like a description of a chemical species, “requires a precise definition, such as by structure, formula, [or] chemical name,” of the claimed subject matter sufficient to distinguish it from other materials. Regents of the Univ. of Cal. v. Eli Lilly & Co., 199 F.3d 1559, 1568 (Fed. Cir. 1997) (“Eli Lilly”). The Federal Circuit commented on Eli Lilly in Ariad:
Nature and scope of the instant claims in view of the specification:
Claim 1 recites: “A method for treatment of hair, which comprises the step of applying the compound of the formula R2(-0H)a(-O-C(O)-R3-R4)b, wherein
PNG
media_image4.png
200
400
media_image4.png
Greyscale
PNG
media_image5.png
200
400
media_image5.png
Greyscale
By contrast, the nature and scope of the invention described in the Specification includes the use a glycerol diglycidyl ether based gallic acid compound or propylene glycol based gallic acid derivative as shown by preparative examples 1 ( the elected species) and example 2 on [0212] of PgPUB and test method for measuring color and color retention of hair dyes compositions on examples 3 and 4 containing compounds of example 1 and 2 and additional ingredients.
Thus, the specification describes a method of treatment of hair as by applying compositions containing either compound of example 1
PNG
media_image6.png
200
400
media_image6.png
Greyscale
(the elected species) which does not fall within the scope of claimed formula R2(-OH)a(-O-C(O)-R3-R4)b or the compound of example 2
PNG
media_image7.png
200
400
media_image7.png
Greyscale
(non-elected species).
The specification does not show any other examples of compounds of formula as claimed. The only compounds utilized for the method of treatment of hair of instant specification are two compound species: glycerol diglycidyl ether based gallic acid and propylene glycol based gallic acid.
The extent and content of the prior art: Applicant has provided several references in the IDS which discuss hair treatment formulations. For example, US4981485 teach naturally derived tannins, i.e. tannic acid as a complex polygalloyl ester of glucose, are used in in hair dyeing formulations. WO2016046178 discloses polyhydroxyaromatic silicones for the treatment of hair; polygalloyl derivatives, i.e. hexagalloyl sorbitol, pentagalloyl glucose and trigalloyl glycerol were proposed in tanning compositions (WO 9218457).
The predictability of the aspect at issue: The chemical art is deemed unpredictable. Based on the general knowledge in the art, as well as art that is particular to method of treating hair, the claimed invention is of an unpredictable nature.
Conclusion Instant claims do not comply with the written description requirement because the disclosure does not provide a representative number of species falling within the scope of the genus compound of formula R2(-OH)a{-O-C(O)-R3-R4)b, for the method of treating method for treatment of hair, by applying said compound. The specification is limited to preparation of two compounds: glycerol diglycidyl ether based gallic acid and propylene glycol based gallic acid, and shampoo compositions containing said compound and additional 14 ingredients and applying said composition on hair.
As pointed out above, the nature of the claimed invention is unpredictable and is not a mature art. Further, the Federal Circuit stated that the lack of any disclosure of examples may be considered when determining whether the claimed invention is adequately described. Boston Scientific Corp. v. Johnson & Johnson, --- F.3d --- (Fed. Cir. 2011). Applicant has not provided a representative number of species to suggest that Applicant was in possession of a compounds of formula R2(-F)2 -6 and the method for treatment hair by applying compounds as claimed; rather, Applicant has provided evidence for the method of treatment with two compounds and compositions thereof.
As stated in MPEP 2163 II: If the application as filed does not disclose the complete structure or method of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The instant specification is devoid of a description for the compound of instant formula R2(-F)2 -6 wherein variable R1-R4, F are as claimed. Thus, Applicants have failed to demonstrate possession of the compounds claimed and methods of treatment thereof.
The breadth of the claims as reading on the method for treatment of hair with said variety of compounds of formula R2(-0H)a{-O-C(O)-R3-R4)b, as claimed and in view of the level of knowledge or skill in the art at the time of the invention, and the limited information provided in the specification, one of ordinary skills in the art would not recognize from the disclosure that Applicant was in possession of the methods for treatment of hair with compounds as claimed before the effective filing date of the claimed invention.
Therefore, it is concluded that the written description requirement is not satisfied.
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.
Claims 43-51, 76 are 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.
A claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. Federal Register, Vol. 76, No. 27, February 9, 2011, 7162-7175, 7164.
In the instant application, as amended claim 43 recites a method for the treatment of hair, which comprises the step of applying
a compound of formula R2(-OH)a(-O-C(O)-R3-R4)b obtained by reacting polyol or a polyepoxide of the formula: R2(-A)c, wherein A is OH and/or an epoxy group, and c = 2 to 8, with a poly hydroxy aromatic carboxylic acid of the formula H-O-C(O)-R3-R4. However, the product of reacting the hydroxyl or epoxy group of R2(-A)c by condensation with the carboxylic group of the H-O-C(O)-R3-R4 would be of the structure (A)R2-O-C(O)-R3-R4 instead of R2(-OH)a(-O-C(O)-R3-R4)b.
Regarding instant claims 45 and 47 the indicator of said claims is “cancelled”, therefore is not clear whether the claims were intended to be canceled.
Regarding instant claim 76, said claim is incomplete, and therefore indefinite.
Regarding instant claims 49-51, the formulae in said claims do not fall within the scope of claimed formula R2(-OH)a(-O-C(O)-R3-R4)b, rendering said claims indefinite.
Conclusion
Claims 43-51, 76 are rejected. Claims 52-75 are withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANA Z MURESAN/Primary Examiner, Art Unit 1692