Notice of Pre-AIA or AIA Status
The present application, filed on or after November 10, 2022, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 11/10/2022 in the matter of Application N° 17/998,438. Said documents are entered on the record. The Examiner further acknowledges the following:
Thus, claims 1-20 represent all claims currently under consideration.
Claim Rejections - 35 USC § 112
Claims 5, 9, 10, 12, and 14, are 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. 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.
Claims 5, 9, 10, 12, and 14 are rejected under 35 U.S.C. 112 (d) because they fail to further limit the method of treating keratinous material recited in claim 1. The recited limitations relate solely to preparation parameters of the alkoxy siloxane mixture (e.g. catalyst identity, stirring conditions, temperature, reaction time) and do not impose additional structural or functional limitations on the treatment method itself. Accordingly, these claims are of improper dependent form.
Claim Interpretation
The claims are directed to a process for treatment of keratin by applying a composition but the composition applied is described by a method of making the composition. As is well known, patentability of a product by process claim resides in the product and, as such, the method of making steps have no patentable weight.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Brun et al. (EP2168633B1) in view of Lechner et al. (WO2020035359A1) and Bourdin et al. (US20140076346A1).
Regarding claims 1, 2, 3, 4, 6, 9, 11, 12, 13, 14, and 18, and 19, Lechner et al. disclose a process for treating human hair (see Examples on pages 51-52), wherein a cosmetic agent serving as a pretreatment agent (a1) is applied to the hair and subsequently rinsed off after a leave-on period of approximately one minute (See page 52). The cosmetic agent comprises a mixture of organic C1-C6 alkoxysiloxanes, which is prepared by mixing a plurality of organic C1-C6 alkoxysilanes, specifically 3-aminopropyltriethoxysilane, corresponding to alkoxysilanes of formula (I), and methyltrimethoxysilane, corresponding to alkoxysilanes of formula (IV), with a solvent other than water, followed by controlled hydrolysis and pre-condensation through the addition of water and a catalyst, such as citric acid (See pages 12, 22, 51, and 52).
Lechner et al. further disclose a second cosmetic composition, identified as a post-treatment agent (c1-c5), which contains a fatty component, such as polydimethylsiloxanes (dimethicone) (See page 38, fourth paragraph), and cetearyl alcohol, in combination with a surfactant, such as cetrimonium chloride (See page 51). Accordingly, Lechner et al. disclose a kit-of-parts comprising a first preparation A (pre-treatment agent (a)) and a second preparation B (post-treatment agent (c)), which are package separately.
Lechner et al. addresses the same general technical problem as the present application (see page 3, paragraph 1). In particular, Lechner et al. disclose a multistage hair dyeing process in which human hair is treated with a condensation product formed from 3-aminopropyltriethoxysilane and methyltrimethoxysilane, corresponding to agent (a). The process disclosed by Lechner et al. is characterized in that the pre-treatment agent (a), in addition to organic silicon compounds of formula (I), further contains at least one additional organic silicon compound of formula (IV), wherein both formulae correspond to c1-c6 alkoxysilanes (See page 21, paragraph 2).
Regarding claim 6, Lechner et al. disclose preparing organic C1-C6 alkoxy siloxanes by mixing organic C1-C6 alkoxysilanes (e.g. 3-aminopropyltriethoxysilane and methyltrimethoxysilane) with a solvent other than water, followed by controlled hydrolysis and pre-condensation through addition of water and a catalyst. Although Lechner et al. may not expressly disclose the specific weight ratio of 5:1 to 1:5 between the alkoxysilane and the solvent, Lechner clearly teaches the same reaction system and preparation process.
The selection of a solvent-to-alkoxysilane weight ratio within the range of about 5:1 to about 1:5 represents nothing more than routine optimization of a result-effective variable (i.e. solvent concentration affecting reaction rate, viscosity, and degree of condensation).
It would have been obvious to one of ordinary skill in the art to adjust the relative proportions of alkoxysilane and solvent to achieve suitable handling properties, reaction control, or application performance, as such adjustments are standard in silane hydrolysis and condensation chemistry. Absent evidence of a critical or unexpected result associated with the claimed ratio range, the selection of a workable ratio within this range would have been an obvious matter of routine experimentation.
Regarding claim 12, Lechner et al. disclose controlled hydrolysis and pre-condensation of alkoxysilanes, which inherently involves stirring and allowing the reaction to proceed for a period of time sufficient to achieve condensation. Reaction temperature and duration are conventional parameters in silane hydrolysis chemistry. The recited temperature range of 30-80 degree Celsius and time range of 20 minutes to 24 hours fall squarely within conventional reaction conditions for alkoxysilane hydrolysis and condensation reactions.
Reaction temperature and reaction time are well recognized result-effective variables in condensation chemistry. Adjusting temperature within moderate heating ranges and varying reaction time from minutes to hours to achieve desired condensation is routine practice. The claimed ranges therefore constitute routine optimization of known reaction parameters. In the absence of evidence showing that the claimed ranges produce an unexpected technical effect, such limitations do not confer patentable distinction.
Regarding claim 14, this limitation merely extends the reaction duration into longer conventional condensation timeframes. Silane hydrolysis and precondensation reactions are known to proceed over extended periods depending on desired molecular weight, degree of condensation, or viscosity. The claimed temperature range remains the same moderate range as in claim 12, and the extended reaction time represents a predictable variation within ordinary reaction control parameters. Extending stirring time to longer durations within a known temperature range constitutes routine process modification. Such variation would have been obvious to one of ordinary skill seeking to control the extent of condensation or adjust product properties. No evidence has been presented that the recited temperature and time ranges produce a surprising or critical technical effect. Optimization of reaction time, temperature, and reactant ratios to obtain desired condensation products constitutes routine experimentation and does not render the claimed subject matter nonobvious. See MPEP 2144.05 (optimization of Result-Effective Variables).
Regarding claim 8, Brun et al. disclose wherein the organicsilicon compounds can hydrolyze and subsequently condense to produce a hybrid prepolymer that promotes the adherence of the organosilane to the hair when the pretreatment composition contains water or is applied in the presence of water, such as on damp hair (See paragraph 19).
However, Brun et al. do not disclose wherein the organic C1-C6 alkoxysilane are selectively hydrolyzed by addition of from 0.10 to 0.80 molar equivalents of water etc.
Bourdin et al. disclose wherein the alkoxysilane is present in the composition in an amount ranging from about 0.05% to about 20% by weight relative to the total weight of the composition (See claim 24).
Regarding claim 7, Bourdin et al. disclose wherein the process for the nontherapeutic cosmetic treatment of keratin fibers, applying to said keratin fibers a composition comprising at least one alkoxysilane, wherein the applying of the composition takes place in the presence of heating between about 40° C. and about 220° C (See claims 31 and 34).
It would have been obvious to one of ordinary skill in the art, at the time of the invention and prior to the effective filing date of the claimed invention, to modify the composition of Brun et al. to include the alkoxysilane in the amounts taught by Bourdin et al. since Bourdin et al. teach that such concentrations are suitable and effective for compositions comprising alkoxysilanes. The selection and adjustment of alkoxysilane concentration and the corresponding amount of water necessary to achieve partial or selective hydrolysis would have constituted a matter of routine optimization, involving the use of known techniques to achieve a predictable result.
Regarding claims 5, and 20, Lechner et al. disclose wherein the aqueous alcohol can also be used as the cosmetic carrier. Aqueous-alcoholic solutions are defined as aqueous solutions that contain two to seventy percent by weight of a C1-C4 alcohol, specifically isopropanol or ethanol (See page 4).
Regarding claim 9, Lechner et al. disclose wherein acidifying agents that are well-known to an expert in the field include beneficial acids like hydrochloric acid, phosphoric acid, citric acid, acetic acid, malic acid, maleic acid, lactic acid, and hydroxybenzoic acids, (See paragraph 161 and 162).
Regarding claim 10, Lechner disclose wherein Inorganic alkalizing agents are selected from the group formed from potassium hydroxide, calcium hydroxide, and sodium hydroxide (See paragraph 139 and 140).
Regarding claims 15, 16, and 17, Lechner et al, disclose with respect to step (i) providing a mixture of organic C1-C6 alkoxy siloxanes, wherein the mixture is obtained by mixing organic C1-C6 alkoxy silanes with a solvent other than water, followed by selective hydrolysis and pre-condensation through the addition of water and a catalyst, such as citric acid. Specifically, Lechner et al. disclose mixing 3-aminopropyltriethoxysilane, corresponding to alkoxysilanes of formula (I), and methyltrimethoxysilane, corresponding to alkoxysilanes of formula (IV), to form a condensation product comprising organic C1-C6 alkoxy siloxanes (See page 21, paragraph 2). With respect to step (ii), Lechner et al. disclose blending the mixture of organic C1-C6 alkoxy siloxanes with a water-containing cosmetic carrier to obtain a ready-to-use cosmetic agent. In particular, Lechner et al. disclose that agent (a1), which contains at least one organic silicon compound, is mixed with agent (a2), which contains water, to form the ready-to-use agent (a). with respect to steps (iii) and (iv), Lechner et al. disclose applying the ready-to-use- cosmetic agent (a), formed from agents (a1) and (a2), to keratinous material, including human hair, either immediately after preparation or after a brief reaction period of approximately 10 to 20 minutes (See pages 51-52). With respect to step (v), Lechner et al. disclose rinsing the applied cosmetic agent from the hair after the specified leave-on time (See page 52). With respect to steps (vi)-viii), Lechner et al. disclose optionally applying a post-treatment agent to the keratinous material, optionally exposing the keratinous material to the post-treatment agent, and optionally rinsing the post-treatment agent from the keratinous material. In particular, Lechner et al. disclose a kit-of-parts comprising a separately packaged post-treatment agent (c) which contains a fatty component such as dimethicone and cetearyl alcohol, and may be applied following treatment with agent (a). Accordingly, Lechner et al. disclose all the steps of claim 15, including providing the organic C1-C6 alkoxy siloxanes, forming a ready-to-use cosmetic agent with a water-containing carrier, applying the agent to keratinous material, rinsing the agent from the keratinous material, and optionally applying and rinsing a post-treatment agent. Claim 17 depends from claim 15 and further recites that the method is a method for dyeing human hair and that the post-treatment agent comprises a pigment and/or a direct dye. Lechner et al. disclose that the method is directed to dyeing human hair and further disclose a separately packaged agent (b) containing at least one coloring compound selected from pigments and/or direct dyes (see kit-of-parts disclosure). Lechner et al. further disclose applying agents (b) and (c) following treatment with agent (a), thereby teaching the application of a post-treatment agent comprising pigments and/or direct dyes.
It would have been obvious to one of ordinary skill in the art at the time of the invention to perform the method steps in the order recited in claim 15 and to apply a post-treatment agent comprising pigments and/or direct dyes as recited in claim 17, as taught by Lechner et al. because Lechner et al. expressly disclose a multi-stage hair treatment and dyeing process employing a pre-treatment agent comprising organic C1-C6 alkoxy siloxanes followed by application of coloring agents. Such a modification merely follows the teaching of Lechner et al. and represents a predictable use of known cosmetic treatment steps to achieve the intended hair dyeing effect.
Conclusion
No claim is allowed.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax, can be reached at telephone number (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615