DETAILED ACTION
Notice of Pre-AIA or AIA Status
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/26/2026 has been entered.
Claim Status
Applicant’s amendment of 05/26/2026 is acknowledged. Claims 1 and 14 are amended, and claims 2-13 are cancelled. Claims 1 and 14-18 are currently pending and are examined on the merits herein.
Election/Restrictions
An election of species was required in the instant application as detailed in the Office action dated 05/15/2025. The election is maintained. Accordingly, claims 1 and 14-18 are examined on the merits herein.
Priority
The instant application is a 371 of PCT/EP2021/067926 filed on 06/29/2021 and claims domestic benefit to U.S. Application No. 63/046,110 filed on 06/30/2020 as reflected in the filing receipt dated on 07/21/2023.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed applications, U.S. Application No. 63/046,110 and PCT/EP2021/067926, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Instant claim 1 recites limitations wherein the keratin fibers are prepared by applying a praeparatur technique and a fundamenta technique for which U.S. Application No. 63/046,110 and PCT/EP2021/067926 do not provide support. Instant claims 14-18 depend from instant claim 1 and are, therefore, also not supported by the prior-filed applications.
Therefore, the effective filing date of instant claims 1 and 14-18 is 12/22/2022.
Declaration Under 37 CFR 1.132
Dr. Simon Godfrey provided a Declaration under 37 CFR 1.132, filed 05/26/2026. The Declaration meets the formal requirements. In the most relevant part, the Declaration provides Dr. Godfrey’s expert opinion that the process practiced by Dayin is severely damaging to the hair, whereas application of cold plasma using a plasma pen provided an unexpected way to deep clean human anagenic hair while providing a tactile sensation like that of untreated hair.
The Declaration under 37 CFR 1.132 filed 05/26/2026 has been fully considered and was found to be persuasive in combination with Applicant’s amendment to the claims to recite “hand-held plasma pen”.
Withdrawn Objections and Rejections
Applicant’s amendments to the claims have overcome the previous objections to the claims. Thus, the objections are hereby withdrawn.
Applicant’s amendments to the claims have overcome/rendered moot the previous 112(b) rejections. Thus, the rejections are hereby withdrawn.
Applicant’s amendments to the claims have overcome/rendered moot the previous 103 rejections. Thus, the rejections are hereby withdrawn.
Applicant’s amendments to the claims have overcome/rendered moot the previous non-statutory double patenting rejections.
Applicant’s amendment to the claims has prompted the new grounds of objection and rejection presented herein.
Specification
The disclosure is objected to because of the following informalities:
Applicant’s instant specification recites several recitations of the terms “Praeparatur” and “Fundamenta” throughout the disclosure. If the terms are generic terms used to describe a known technique in the field, the terms should be uncapitalized. If the terms are trademarks or trade names, Applicant must comply with the requirements set forth in MPEP 608.01(v).
Appropriate correction is required.
Claim Objections
Claims 1 and 14-18 are objected to because of the following informalities:
Claim 1 recites the limitation “Praeparatur” in lines 3 and 37 and the limitation “Fundamenta” in lines 3 and 44 which are improperly capitalized. If the terms are generic terms used to describe a known technique in the field, the terms should be uncapitalized. If the terms are trademarks or trade names, Applicant must comply with the requirements set forth in MPEP 608.01(v).
Claim 1 recites the limitation “wherein the compatible medium of the pretreatment…acetic acid, the compatible medium of the film forming…” in lines 27-29. The conjunction “and” should be inserted between the terms “acetic acid,” and “the compatible medium”.
Claim 1 recites the limitation “includes a basic aqueous wash” in lines 34-25; however, process steps in the body of a method claim should be positively recited. Claim scope is not limited by claim language that suggests but does not require steps to be performed, see MPEP 2111.04. In the interest of compact prosecution, the process step is interpreted as active step of washing the keratin fibers with dilute ammonium or an organic amine.
Claim 1 recites an extraneous space between the term “fibers” and the semicolon recited in line 43. The space should be removed.
Claims 14-17 recite the limitation “A method according to claim 1” in line 1, and claim 18 recites the limitation “Method according to claim 1” in line 1. Because each of the claims further limit the method of claim 1, the claims should recite “The method according to claim 1” rather than “A method” or “Method”.
Appropriate action is required.
Claim Rejections - 35 USC § 112(b)
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 1 and 14-18 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.
Claim 1 recites the term “low”, which is a relative term which renders the claim indefinite [see lines 4, 45, and 50]. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Because the specification does not provide a limiting definition of “low”, it is not clear exactly how much keratin protein surface disruption [lines 4 and 50], or what temperature [line 45], is required to be considered “low” as opposed to, for example, medium or high. Therefore, the metes and bounds of what the Applicant considers to be “low” are unclear. Claims 14-18 are rejected by virtue of their dependency on claim 1, as they fail to cure the relative term.
Claim 1 recites the limitation “90%-95% aqueous medium” in line 27. It is unclear whether the percentage represents component mass or component volume, etc. and whether the mass or volume, etc. is relative to the total weight or total volume, etc. of the composition. Therefore, the metes and bounds of the claim are indefinite. Claims 14-18 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim 1 recites the limitation “90%-95% aqueous medium with ethanol and/or isopropanol” in line 27. It is unclear whether the percentage represents the content of ethanol and/or isopropanol in an unrecited aqueous solvent, such as water, or whether the percentage represents the total concentration of the aqueous medium, wherein the aqueous medium includes an unrecited amount of ethanol and/or water. Therefore, the scope of the claim is indefinite. Claims 14-18 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim 1 recites the limitation “wt.%” in lines 28, 30, and 47. It is unclear whether the term indicates total composition mass or component mass, etc. Therefore, the metes and bounds of the claim are indefinite. Claims 14-18 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim 1 recites the term “rapid”, which is a relative term which renders the claim indefinite [see line 35]. The term “rapid” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Because the specification does not provide a limiting definition of “rapid”, it is not clear exactly how much curing time is permitted to be considered “rapid” curing as opposed to, for example, slow or moderate curing. Therefore, the metes and bounds of what the Applicant considers to be “low” are unclear. Claims 14-18 are rejected by virtue of their dependency on claim 1, as they fail to cure the relative term.
Claim 14 recites the limitation “the pretreatment composition in alcoholic, non-aqueous medium”. There is insufficient antecedent basis for this limitation in the claim. Claim 14 depends from claim 1, which requires that the compatible medium of the pretreatment composition is an aqueous medium with ethanol and/or isopropanol [lines 27-28]. Therefore, it is unclear to which pretreatment composition in non-aqueous medium the claim refers, rendering the scope of the claim indefinite.
Claim 14 recites the limitation “the binder in alcoholic, non-aqueous medium…the catalyst in aqueous alcoholic medium for the film forming composition…are all maintained in separate containers before use”. There is insufficient antecedent basis for these limitations in the claim. First, claim 14 depends from claim 1, which does not require that the binder is in alcoholic, non-aqueous medium or that the catalyst is in aqueous alcoholic medium. Claim 1 recites that both the binder and the catalyst are components of the compatible medium of the film forming composition [lines 18-20 and 29-31], which can be up to 10 wt.% water (e.g., permits but does not require the medium to be aqueous). Therefore, it is unclear to which non-aqueous and aqueous media the claim refers, rendering the scope of the claim indefinite.
Claim 14 recites the limitation “wherein the catalyst in aqueous medium for the pretreatment composition”. There is insufficient antecedent basis for this limitation in the claim. Claim 14 depends from claim 1, which does not recite a catalyst in aqueous medium, nor does it recite a catalyst for the pretreatment composition. Therefore, it is unclear to which catalyst in aqueous medium for the pretreatment composition the claim refers, rendering the scope of the claim indefinite.
Claim Rejections - 35 USC § 112(a)
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.
New Matter Rejection
Claims 1 and 14-18 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation “an acidic catalyst of…a sulfate ester” was added to independent claim 1 [lines 30-31] in the amendment filed on 05/26/2026. However, the instant disclosure does not provide support for the entirety of the scope encompassed by the limitation “a sulfate ester” as recited in the amended claims. In particular, the instant specification and claims as originally filed only discloses the following sulfate esters: C2-C8 alkyl sulfate ester acid, bis(2-ethyl hexyl) sulfate ester, and methyl sulfate ester.
The limitation “phase transfer tenside…of up to 25 wt.%” was added to independent claim 1 [lines 46-47] in the amendment filed on 05/26/2026. However, the instant disclosure does not provide support for the entirety of the scope encompassed by the limitation “up to 25 wt.%” as recited in the amended claims. In particular, the instant specification and claims as originally filed only disclose amounts of 0.1 wt.% to 25 wt.% of phase transfer tenside, which does not support amounts of less than 0.1 wt.% which fall within the range as claimed.
If Applicant believes this rejection is in error, Applicant must disclose where in the specification support for the entire scope of the amendment(s) and/or new claims can be found. As a result, claim 1 represents new matter, and claims 14-18 are rejected by virtue of their dependency on claim 1.
Closest Prior Art
The Examiner notes that Brun et al. (US20100083446A1; published: 04/08/2010; PTO-892 of 07/25/2025) represents the closest prior art to the instant claims.
Brun discloses a process for treating keratin fibers, comprising applying to the keratin fibers a cosmetic pretreatment composition comprising, in a cosmetically acceptable medium, at least one organosilicon compound and applying to the keratin fibers a cosmetic composition comprising at least one hydrophobic film-forming polymer, at least one pigment, and at least one volatile solvent [0048-0050].
The method of Brun differs from the instantly claimed method in that Brun does not teach the instantly claimed praeparatur and fundamenta techniques, the specific organic polymeric binder of Formula V and acidic catalyst, or the basic aqueous wash.
While the Examiner maintains that the teachings of Worlée (Worlée-Chemie GmbH, p. 1-2; published April 2018; PTO-892 of 07/25/2025) and Matz et al. (EP1046390A1; published: 10/25/2000; PTO-892 of 07/25/2025) provide reasonable motivation for modifying the method of Brun to include the instantly claimed binder/catalyst combination and step of applying a praeparatur technique, respectively, the prior art does not teach or suggest a motivation to include a step of applying a fundamenta technique as instantly claimed. Brun teaches away from using an oxidizing agent to prepare keratin fibers for color coating [0015], and applying cold plasma from a hand-held plasma pen or applying a phase transfer tenside do not appear to be routine practices in the art to prepare keratin fibers for coloring. Therefore, one of ordinary skill in the art would not have been motivated to modify Brun to include applying of one or more of these techniques without looking to Applicant’s instant disclosure.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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, Sue Liu can be reached at (571)272-5539. 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.
/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
Prosecution Insights