DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 06/10/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 § 112 – Improper Markush Group (Maintained)
Claims 69, 74-77, and 79-82 are rejected on the basis that it contains an improper Markush grouping of alternatives.
A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of claims 69 and 74 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
Claims 69 and 74 recite “polysaccharide thickening agents” where the polysaccharide thickening agent is chosen from hydroxypropyl guar, carrageenan, xanthan gum, cellulose gum, cyclodextrin, sclerotium gum, polyvinyl alcohol, or mixtures thereof. Each of the listed polysaccharide thickening agents other than polyvinyl alcohol are known in the art to be polysaccharides and share the structural similarity of monosaccharide units linked together by glycosidic bonds. To the contrary, polyvinyl alcohol is not known in the art to be a polysaccharide and is a synthetic polymer with the chemical formula [CH2CH(OH)]n.
Since there is nothing common to the Markush alternative chemical species, one can conclude that the instantly claimed species, polyvinyl alcohol, as recited in claims 69 and 74 fails to share a substantial structural similarity or any substantial structural feature or common activity that naturally flows from the substantial structural feature. Thus, not all members recited in this improper Markush group of species belong to the same recognized physical/ chemical class.
Response to Arguments
Applicant's arguments filed 06/10/2026 have been fully considered but they are not persuasive.
Applicant argues at pg. 6 that the Markush grouping is proper because the alternatives share a common use as thickening agents in hair styling compositions.
The Examiner disagrees. The Markush grouping of claims 69 and 74 is improper because polyvinyl alcohol, as recited in claims 69 and 74, fails to share a substantial structural similarity or any substantial structural feature or common activity that naturally flows from the substantial structural feature.
To overcome this rejection, applicant may 1.) set forth each alternative within an improper Markush grouping in a series of independent or dependent claims (in this case recite polyvinyl alcohol in a separate dependent claim), 2.) remove polyvinyl alcohol from claims 69 and 74 (as suggested by the applicant in the remarks) and/or 3.) present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections - 35 USC § 103 (Maintained)
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 64-77 and 79-83 are rejected under 35 U.S.C. 103 as being obvious over Lagrange et al. (WO 2018/114875 A1).
Regarding independent claims 64 and 74, Lagrange teaches a composition to lighten the hair (abstract) comprising polyphosphorus derivatives such as sodium hexametaphosphate (pg. 8, lines 26-31) in an amount ranging from 0.5 to 20% by weight relative to the weight of the composition (pg. 12, lines 13-15), an organic thickener, such as xanthan gum (pg. 44, lines 21-27), in an amount of 0.01% to 20% by weight (pg. 45, lines 3-4), and water in an amount from 5 to 90% by weight (pg. 39, lines 23-24).
Claims 64 and 74 are rendered prima facie obvious over the teachings of Lagrange, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., sodium hexametaphosphate, xanthan gum, and water) were known in the prior art (e.g., Lagrange) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a composition for the hair) to one of ordinary skill in the art. MPEP 2143.A.
Regarding the amounts of the components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 A.
Further regarding claim 64, while the composition having a weight ratio of the total amount of polysaccharide thickening agent to the total amount of inorganic phosphate to provide styling effect to the hair is not explicitly disclosed, a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the prior art discloses a composition for the hair with the same components (i.e., sodium hexametaphosphate and xanthan gum in amounts overlapping with those claimed), the properties the applicant discloses and/or claims (provides styling effects) are reasonably expected to be necessarily present. Furthermore, Lagrange teaches that compositions containing the claimed amount of sodium hexametaphosphate and xanthan gum in the presence of water is applied to hair and used for lightening keratin fibers (abstract; Claim 25). It would be reasonably expected that the compositions of Lagrange would provide other forms of styling to hair.
Claims 65 and 75 are rendered prima facie obvious because Lagrange discloses sodium hexametaphosphate (pg. 8, lines 26-31) in an amount ranging from 0.5 to 20% by weight relative to the weight of the composition (pg. 12, lines 13-15) and an organic thickener, such as xanthan gum (pg. 44, lines 21-27), in an amount of 0.01% to 20% by weight (pg. 45, lines 3-4). A prima facie case of obviousness exists because of overlap, as previously discussed. Furthermore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general conditions of the amounts of sodium hexametaphosphate and xanthan gum have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation.
Claims 66-67 are rendered prima facie obvious because Lagrange discloses the inorganic polyphosphate, sodium hexametaphosphate (pg. 8, lines 26-31).
Claim 68 and 76 are rendered prima facie obvious because Lagrange discloses the composition can further include lactones in an amount from 0.1% to 35% by weight (Claim 23). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 69 is rendered prima facie obvious because Lagrange discloses the organic thickener xanthan gum (pg. 44, lines 21-27).
Claims 70 and 79 are rendered prima facie obvious because Lagrange discloses the composition has a pH less than or equal to 11 (Claim 24). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 71 and 80 are rendered prima facie obvious because Lagrange discloses the composition can further include a polyol in an amount ranging from 0.1 to 35% by weight (pg. 36, lines 15-20). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 72 and 81 are rendered prima facie obvious because Lagrange discloses the composition can further include surfactants, such as anionic surfactants (pg. 24, lines 9-10), which are present in the composition in an amount of 0.05 to 20% by weight (pg. 33, lines 24-25). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 73 and 82 are rendered prima facie obvious because Lagrange discloses the composition can be left on for an hour (pg. 46, lines 21-22).
Claim 77 is rendered prima facie obvious because Lagrange taught lactones in an amount from 0.1% to 35% by weight (Claim 23) and sodium hexametaphosphate in an amount ranging from 0.5 to 20% by weight (pg. 8, lines 26-31; pg. 12, lines 13-15). A prima facie case of obviousness exists because of overlap, as previously discussed. Furthermore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general conditions of the amounts of sodium hexametaphosphate and lactones have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation.
Regarding claim 83, Lagrange teaches applying a composition to human keratin fibers, such as the hair, to lighten the fibers (Claim 25; abstract) where the composition comprises polyphosphorus derivatives such as sodium hexametaphosphate (pg. 8, lines 26-31) in an amount ranging from 0.5 to 20% by weight relative to the weight of the composition (pg. 12, lines 13-15), an organic thickener, such as xanthan gum (pg. 44, lines 21-27), in an amount of 0.01% to 20% by weight (pg. 45, lines 3-4), and water as a solvent (pg. 39, lines 23-24). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Response to Arguments/Analysis of Alleged Unexpected Results
Applicant's arguments filed 06/10/2026 have been fully considered but they are not persuasive.
Applicant argues at pg. 7-8 that Lagrange is directed to a lightening composition for keratin fibers and does not recognize or suggest the unexpected lasting styling benefits obtained with the claimed composition.
In the non-final rejection (03/10/2026, pg. 8-9) the Examiner discussed the results alleged to be unexpected by the applicant.
The combination of xanthan gum (or cyclodextrin, sclerotium gum, carrageenan, or cellulose gum), sodium hexametaphosphate, and water in the tested amounts providing lastingness of elongation and anti-frizz benefits to the hair was found to be unexpected over the prior art.
However, the claims are still not “commensurate in scope” with the showing. See MPEP § 716.02(d). Applicant has demonstrated the combination of xanthan gum (or cyclodextrin, sclerotium gum, carrageenan, or cellulose gum), sodium hexametaphosphate, and water provides unexpected styling effects to the hair. However, it is unclear that a comparative composition containing these specific components and in these specific amounts would be reasonably representative of compositions containing other inorganic phosphates (i.e., other than sodium hexametaphosphate), other anionic and/or nonionic polysaccharide thickening agents (i.e., other than those tested), and in differing amounts, falling within the broader scope currently claimed.
As reiterated from the non-final rejection, “claim 74 would be commensurate in scope with the showing if the amount of sodium hexametaphosphate were recited to be 1-10 wt.% (0.5 wt.% sodium hexametaphosphate did not show any benefit over the comparative composition) and the tested polysaccharide thickening agents were recited (i.e., incorporating the subject matter of claim 78 into claim 74 minus polyvinyl alcohol because polyvinyl alcohol was neither tested nor does it have close structural similarity to the tested polysaccharides).”
The applicant has incorporated the subject matter of claim 78 into claim 74, but has not placed the amount of sodium hexametaphosphate commensurate in scope with the showing (1-10 wt.%) nor the polysaccharide thickening agents (by removing polyvinyl alcohol).
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
Claim 84 is rejected under 35 U.S.C. 103 as being obvious over Lagrange et al. (WO 2018/114875 A1) in view of Herrlein et al. (US 2016/0235655A1).
The 35 U.S.C. 103 rejection over Lagrange was previously discussed.
Regarding claim 84, Lagrange does not disclose that the composition includes at least one fixing polymer in an amount of about 0.1 to about 10% by weight.
Herrlein discloses a composition for the hair with a hairstyling polymer (fixing polymer) in an amount of 0.01 to 20 wt.% [0039] [0202] [0025]. Herrlein teaches that the hair fixing polymer provides volume benefits to the consumer and offers good resistance to environmental humidity [0039].
Since Lagrange generally teaches a composition for the hair, it would have been prima facie obvious to one of ordinary skill in the art to include a hair fixing polymer, in an amount of 0.01 to 20 wt.% within the teachings of Lagrange, because Herrlein teaches a fixing polymer in a composition for the hair in this amount. An ordinarily skilled artisan would be motivated to use a fixing polymer because Herrlein teaches that the hair fixing polymer provides volume benefits to the consumer and offers good resistance to environmental humidity [0039]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
The rejection of claim 84 over Lagrange in view of Herrlein is newly applied and has not been traversed.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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