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 .
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 16 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 16 fails to further limit the claim on which it depends (claim 1) because claim 1 as-amended now requires that the claimed “polymer resin” is a “polymer resin emulsion.”
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-16 and 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Gonzalez (US 2011/0268681 A1) in view of Lubnin (US 6,897,281 B2).
Regarding claim 1, Gonzalez teaches a method of treating thermally and/or chemically damaged hair (Abstract), comprising treating said hair with a composition comprising:
An aminosilicone of the following general formula (I) (Abstract):
PNG
media_image1.png
42
858
media_image1.png
Greyscale
General Formula (I) of Gonzalez (US 2011/0268681 A1)
Wherein R1 is an alkyl group having 12 to 50 carbon atoms, R2 is a substituted or un-substituted hydrocarbon group having 1 to about 6 carbon atoms, R3 is a 3-aminopropyl group and/or an N-(2-aminoethyl)-3-aminopropyl group, x has a value of 1 to about 2,000, and y has a value of 1 to about 50.
The aminosilicone of Gonzalez reads on the claimed aminosilicone material because because of the following reasons:
The R1 substituents are essentially identical in both formulae.
The R2 in the formula of Gonzalez contains the same type of functional groups as R2-R4 in the claimed formula, and teaches that said groups have 1-6 carbon atoms which anticipates the claimed range of “1 to about 20 carbon atoms.” The R2 groups of Gonzalez are not taught as being independently selected; however, Since the claimed R2-4 may all be the same, the R2 of Gonzalez nonetheless reads on the claimed groups.
The R3 in the formula of Gonzalez fall within the scope of R5 in the claimed formula because 3-aminopropyl and/or N-(2-aminoethyl)-3-aminopropyl groups are both aminoalkyl or diaminoalkyl groups which are equivalent to the claimed R5 when the claimed R6-8 are as follows: R6 is a divalent 3 carbon alkylene and R7 and R8 are both Hydrogen (in the case of a 3-aminopropyl group), and R6 is a divalent 3 carbon alkylene, R7 is Hydrogen, and R8 is -R9NH-2 where R9 is an alkylene group with 2 carbon atoms (in the case of an N-(2-aminoethyl)-3-aminopropyl group).
x and y are identical in both formulae.
Additional components which may be blended into the formulation ([0052]) including inter alia oil components such as ethylene glycol, propylene glycol, glycerin, or sorbitol polyethylene glycol ([0052]). This component reads on the claimed “organic resin” because it is an organic polymer (it contains a polyethylene glycol structure). Furthermore, Gonzalez teaches that the inventive composition is preferably an oil-in-water emulsion ([0023]), and teaches the incorporation of surfactants ([0039]). The composition of Gonzalez therefore meets the claimed limitation requiring that the presence of a polymer resin emulsion. Regarding the compositional limitations of the claimed polymer resin emulsion, Gonzalez teaches that the surfactant is included in amounts ranging from 1 to about 40 wt% ([0046]), but differs from claim 1 because it is silent with regard to the amount of the sorbitol polyethylene glycol, and thus is silent with regard to the combined amounts of the surfactant and polymer resin.
In the same field of endeavor, Lubnin teaches a coating composition (Abstract) suitable for hair-care products (col. 13, lines 7-12), which may be in the form of sprays (col. 14, lines 51-53). Lubnin teaches that the inventive compositions are emulsions (col. 13, lines 38-39), and teaches the incorporation of an array of additives overlapping those of Gonzalez including viscosity adjusters such as propylene glycol (col. 19, lines 33-40). As described above, Gonzalez teaches the incorporation of sorbitol polyethylene glycol alongside propylene glycol ([0052]). Lubnin teaches the incorporation of the viscosity adjusters preferably in amounts ranging from 1 to 40 wt% (col. 19, line 38). It is prima facie obvious to substitute equivalents based on their art-recognized suitability for a known purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art to incorporate the sorbitol polyethylene glycol of Gonzalez into the inventive formulation of Gonzalez in amounts ranging from 1 to 40 wt%, as Gonzalez teaches sorbitol polyethylene glycol and propylene glycol as suitable alternative water-soluble oil components, and because Lubnin teaches the incorporation of one of these equivalents (propylene glycol) in said range. The formulation of Gonzalez as modified by Lubnin therefore would contain between about 2 and about 80 wt% of surfactant and organic resin combined, which encompasses the claimed range of “about 25 to about 70 weight percent,” establishing a prima facie case of obviousness.
Regarding claims 2 and 3, as described above, Gonzalez teaches that R2 (which reads on the claimed R2-4) is a substituted or un-substituted hydrocarbon group having 1 to about 6 carbon atoms, which aligns with the claimed R2-4. The R2 groups of Gonzalez are not taught as being independently selected, however Since the claimed R2-4 may all be the same, the R2 of Gonzalez nonetheless reads on the claimed groups. Methyl, ethyl, butyl, and hexyl groups all fall within the purview of substituted or un-substituted hydrocarbons having 1-6 carbons. Gonzalez further teaches that methyl, ethyl, butyl, and and hexyl groups are included, and that methyl groups are preferable ([0026])
Regarding claims 4-6, Gonzalez teaches that the R2 group (which reads on the claimed R2-4 groups as described above) may be cycloalkyl groups, alkoxy groups, and aryl groups ([0026]). The R2 groups of Gonzalez are not taught as being independently selected; however, Since the claimed R2-4 may all be the same, the R2 of Gonzalez nonetheless reads on the claimed groups. Gonzalez further teaches that the R2 group may most preferably be methyl and phenyl ([0026]).
Regarding claims 7-9, as described above, Gonzalez teaches that the R3 group (which reads on the claimed R5 group) is selected from 3-aminopropyl and/or N-(2-aminoethyl)-3-aminopropyl groups ([0027]). Furthermore, as described above, Gonzalez teaches that R1 (which reads on the claimed R1) is an alkyl group having 12 to 50 carbons (Abstract), which anticipates the claimed ranges of “about 15 to about 20 carbons” and “30 to about 45.” Finally, as described above, Gonzalez teaches that R2 (which reads on the claimed R2-4) may most preferably be methyl groups ([0026]).
Regarding claim 10, Gonzalez teaches that x may preferably be within a range of about 10 to about 1,500 ([0030]) and that y may particularly preferably be within a range of 2 to about 40 ([0030]).
Regarding claim 11, Gonzalez teaches that the viscosity of the aminosilicone is about 1,000 to about 5,000,000 mPas ([0031]); identical to the claimed range.
Regarding claim 12, Gonzalez teaches that the nitrogen content of the aminosilicone is preferably about 0.01 to about 0.3% by weight ([0032]).
Regarding claim 13, Gonzalez teaches that the aminosilicone is an emulsion ([0023], [0036], and [0038]), and teaches the incorporation of a surfactant ([0039]).
Regarding claim 14, Gonzalez teaches the incorporation of anionic, cationic, nonionic, amphoteric, and combinations of surfactants ([0039]).
Regarding claim 15, Gonzalez teaches that the thickener may be polyvinylpyrrolidone derivatives ([0052]), which reads on “vinyl resin” from the claimed list because polyvinylpyrrolidone is a resin based on a vinyl monomer, and the instant Specification provides no particular controlling definition for what constitutes a vinyl resin (the claim is therefore presumably open to the incorporation of any resin formed from a vinyl monomer).
Regarding claim 16, Gonzalez teaches the formation of the inventive composition via mixing the aminosilicone to form the emulsion ([0038]), and teaches the blending of the other components, including thickeners (which read on the claimed “polymer resin”) ([0052]), into the emulsion. The product of this mixing therefore contains an emulsion of the thickening polymers (e.g., polyvinylpyrrolidone), which reads on the claimed limitation “wherein the polymer resin is a polymer resin emulsion.”
Regarding claims 20 and 21, Gonzalez teaches that the inventive aminosilicone emulsion is applied to the surface of hair ([0020]), which reads on the claimed “substrate comprising a surface.” Furthermore, Gonzalez teaches a pretreatment of hair samples using a sodium hydroxide solution ([0064]) followed by a wash with an SLS solution. Application of either of these aqueous solutions results in at least a temporary coating of at least some of the hair with the solution, even if some or all of the coating solution is subsequently removed by drying. The hair samples are subsequently dipped into inventive emulsion E1 ([0064] and Table 1). Therefore, the teachings of Gonzalez additionally read on the claimed limitation wherein the substrate is a “previously coated surface.”
Regarding claim 22, Gonzalez teaches the application of the inventive composition onto the surface of hair ([0020]), which reads on the claimed method.
Regarding claim 23, Gonzalez teaches the formation of the inventive composition via mixing the aminosilicone to form the emulsion ([0038]), and teaches the blending of the other components, including thickeners (which read on the claimed “polymer resin”) ([0052]), which reads on the claimed method.
Regarding claim 24, Gonzalez teaches the formation of the inventive composition via mixing the aminosilicone to form the emulsion ([0038]), and teaches the blending of the other components, including thickeners (which read on the claimed “polymer resin”) ([0052]). The product of this mixing (the inventive emulsion) therefore contains a mixture of emulsions of the inventive aminosilicone and thickener, which reads on the claimed method.
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gonzalez (US 2011/0268681 A1) in view of Lubnin (US 6,897,281 B2) and further in view of Uehara (US 2011/0311471 A1).
Regarding claims 17-19, Gonzalez teaches all of the limitations of claim 1 as described above. Gonzalez differs from claims 17-19 because it is silent with regard to the claimed ranges of aminosilicone within the composition.
In the same field of endeavor, Uehara teaches an aminosilicone hair care composition (Abstract), which can be used in the form of an emulsion ([0005]), wherein the aminosilicone component is included in amounts ranging from about 0.1 wt.% to about 15 wt.% of the composition ([0024]), which overlaps/encompasses the claimed ranges of “about 0.01 to about 10 wt.%,” “about 0.025 to about 0.5 wt.%,” and “about 1 to about 5 wt.%,” establishing prima facie cases of obviousness.
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate between 0.1 and 15 wt.% of aminosilicone within the formulation of Gonzalez, as Uehara teaches this compositional amount as suitable for the formation of an aminosilicone-based hair-care emulsion.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed November 5, 2025, with respect to the objection to the Specification have been fully considered and are persuasive. The objection to the Specification has been withdrawn.
Applicant’s arguments, see Applicant’s Remarks, filed November 5, 2025, with respect to the 35 USC 102 rejections of claims 1-16 and 20-24 have been fully considered and are persuasive. The 35 USC 102 rejection of claims 1-16 and 20-24 has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Gonzalez, Lubnin, and Uehara.
Conclusion
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762