DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed October 8, 2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 6, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 2 and 5 are cancelled.
Claims 1, 3, 4, and 6 – 19 are examined here-in.
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 non-obviousness.
Claims 1, 3, 4, 6 – 13, and 16 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over Rijk (US 2009/0214628, of record).
Rijk teaches a composition for application to the scalp which can be applied with hair coloring or bleaching products (abstract, paragraphs 0013, 0017, 0263). Rijk teaches that the composition should be applied to the scalp (paragraphs 0089 – 0092, 0256).
Rijk teaches that the composition should include pH-adjusting agents, antioxidants, and thickening agents (claim 23).
Rijk teaches that citric acid and sodium citrate are a common pH-adjusting agent, noting that the pH of the final composition should be between 4 and 8 (paragraphs 0237 – 0238, 320). Rijk teaches that pH adjusting agents may be in the composition in the amount of 0.001 to 10 wt. % (paragraphs 0268 – 0270).
Rijk teaches ascorbic acid (which is also known as vitamin C) is an antioxidant that can be included in the composition (paragraphs 0103, 0123, 0142, 0148, 0154, 0179, 0224). Rijk teaches that ascorbic acid may be included in an amount of 0.04 to 5 wt. % (paragraphs 0148-0149).
Rijk teaches the inclusion of a thickening polymer in an amount of 0.01 to 20 wt. % (paragraph 0093). Rijk teaches that the thickener should be present in an amount appropriate to impart a viscosity value of 500 to 10,000 mPa*s or centipoise (paragraph 0135). Rijk teaches carboxyvinyl polymers, sometimes known by the brand name Carbopol, as a thickening agent (paragraphs 0173, 0196, 0215).
Rijk teaches hydroxyethyl cellulose as an ingredient that can be included in the composition to provide ease of formulation (paragraphs 0135, 0187 – 0189, 0195, 0215, 0331, 0376). Rijk also teaches that the water soluble salts of hydroxyethyl cellulose are appropriate for the composition (paragraph 0376).
Rijk teaches that a surfactant may be included in the amount of 0.05 to 15% in the composition (paragraph 0219).
Rijk does not teach an embodiment having all of the claimed elements. However, claims 1, 3, 4, 6 – 13, and 16 – 19 are rendered prima facie obvious over the teachings of Rijk, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., buffer, antioxidant, thickening polymer) were known in the prior art (e.g., cosmetic compositions) 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 yielded nothing more than predictable results to one of ordinary skill in the art (MPEP 2143(I)(a)).
Rijk’s teaching to apply a composition to the scalp (paragraphs 0089 – 0092, 0256) which includes a pH-adjusting agent, an antioxidant, and a thickening agent (claim 23) with hair coloring or bleaching products (abstract, paragraphs 0013, 0017, 0263), where the composition has a pH between 4 and 8 (paragraphs 0237 – 0238, 320) and a viscosity value of 500 to 10,000 mPa*s (paragraph 0135) reads on instant claims 1 and 12.
Rijk’s teaching that pH adjusting agent may be in the composition in the amount of 0.001 to 10 wt. % (paragraphs 0268 – 0270), an antioxidant may be included in an amount of 0.04 to 5 wt. % (paragraphs 0148-0149), and a thickening polymer in an amount of 0.01 to 20 wt. % (paragraph 0093) overlaps on the instantly claimed amount of 0.15 to 10.0 mass % pH buffer, 0.01 to 5.0 mass% antioxidant and 0.08 to 1.5 mass% pH-responsive thickener as recited in instant claims 1 and 12. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
With regards to the limitation “wherein the cosmetic composition has a mass ratio of an amount of component (A) to an amount of component (B) ((A)/(B)) of 1.0 to 8.0”, i.e. that the mass ratio of pH adjusting agent to antioxidant is between 1 and 8, Rijk’s teachings regarding pH adjusting agent in the amount of 0.001 to 10 wt.% and antioxidant ascorbic acid in the amount of 0.04 to 5 wt. % (paragraphs 0148-0149, 0268-0270) are consistent with this ratio. As an example, if the pH adjusting agent were included in an amount of 8 wt. % and the antioxidant in the amount of 1 wt. %, the mass ratio would be 8. Alternatively, if the pH adjusting agent were included in an amount of 1 wt. % and the antioxidant in the amount of 1 wt. %, the mass ratio would be 1. Therefore, Rijk’s teachings regarding the relative amounts of pH adjusting agent and antioxidant ascorbic acid read on instant claims 1 and 12.
Rijk’s teaching that a surfactant may be included in the amount of 0.05 to 15% in the composition (paragraph 0219) overlaps on the instantly claimed range of less than 5.0 mass% as recited in instant claim 3.
Rijk’s teachings that a pH adjusting agent may be in the composition in the amount of 0.001 to 10 wt. % (paragraphs 0268 – 0270) and that antioxidant ascorbic acid may be included in an amount of 0.04 to 5 wt. % (paragraphs 0148-0149) overlaps on the instantly claimed range of 0.2 to 6 mass % as recited in instant claim 4. For example, if the pH adjusting agent and antioxidant ascorbic acid were included in the minimum amounts of their respective ranges, the total amount would be 0.041 wt.%. If the pH adjusting agent an antioxidant ascorbic acid were included in the maximum amounts of their respective ranges, the total amount would be 15 wt. %. A possible range of 0.041 to 15 wt. % overlaps on the instantly claimed 0.2 to 6 mass %.
Rijk’s teaching that hydroxyethyl cellulose can be included in the composition (paragraphs 0135, 0187 – 0189, 0195, 0215, 0331, 0376) reads on instant claims 6 and 7. A person of ordinary skill in the art would be motivated to include hydroxyethyl cellulose in addition to a different thickening agent because Rijk teaches hydroxyethyl cellulose is an ingredient that eases formulation (paragraphs 0187 – 0189, 0195, 0215, 0331, 0376). Furthermore, although hydroxyethyl cellulose is not sodium stearoxy PG-hydroxyethylcellulose sulfonate specifically, Rijk teaches that the water soluble salts of hydroxyethyl cellulose are appropriate for the composition (paragraph 0376), reading on instant claim 7. Since hydroxyethyl cellulose (and its water soluble salts) as taught by Rijk has close structural similarity to the claimed sodium stearoxy PG-hydroxyethylcellulose sulfonate, a person of ordinary skill in the art would expect these compounds to have similar properties. Close structural similarity between compounds is generally prima facie obvious according to MPEP 2144.09(I).
With regards to the functional limitation recited in claim 8 (i.e. wherein at pH 5 the viscosity is 1.1 to 10 times greater than at a pH of 4.1), it appears that this property results from the combination of buffer, antioxidant, and pH-responsive thickener as taught by Rijk since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations (Table 4, examples 1, 2, and 5 in the instant specification show the claimed pH buffer, antioxidant, and pH-responsive thickener have an increased viscosity at pH 5 than pH 4.1). According to MPEP 2112(III) and 2163.07(a), an inherent feature of a composition or method does not need to be explicitly recognized in the prior art for the prior art to be applied. Said differently, “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it” MPEP 2163.07(a).
Since Rijk teaches the claimed ingredients in the claimed amounts, a person of ordinary skill in the art would expect that the viscosity of the composition behaves as claimed, wherein at pH 5 the viscosity is 1.1 to 10 times greater than at a pH of 4.1, reading on instant claim 8. Something which is old (e.g., the combination of pH buffer, antioxidant, and pH-responsive thickener taught by Rijk) does not become patentable upon the discovery of a new property (e.g., the ability to increase viscosity 1.1 to 10 times with a change of pH from 4.1 to 5), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I) and 2112(II). Put another way, "When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F .2d 705, 709, (Fed. Cir. 1990). Therefore, since Rijk’s prior art teaches the claimed ingredients in the claimed amounts, the functional limitation of claim 8 is obvious.
Rijk’s teaching of citric acid and sodium citrate as pH-adjusting agents (paragraphs 0237 – 0238, 320), reads on instant claims 9, 10, 11, and 13.
Rijk’s teaching of ascorbic acid (which is also known as vitamin C) as an antioxidant that can be included in the composition (paragraphs 0103, 0123, 0142, 0148, 0154, 0179, 0224) reads on instant claims 16 and 18.
Rijk’s teaching of carboxyvinyl polymer as a thickening agent (paragraphs 0173, 0196, 0215) reads on instant claims 17 and 19.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Rijk (as cited above) and further in view of Goldstein (US 2007/0277331 A1, of record).
Rijk’s teachings are discussed above.
Rijk does not teach a kit which includes the scalp protection composition with an additional hair treatment composition.
Goldstein teaches the missing element of Rijk.
Goldstein teaches a kit for hair color which includes hair dye and a composition to protect the skin (paragraphs 0013 – 0015).
Goldstein does not teach a protecting composition which includes a buffering agent, an antioxidant, and a thickening polymer.
Claims 14 and 15 are rendered prima facie obvious over the teachings of Rijk and Goldstein, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. A person of ordinary skill in the art would have been motivated to include Rijk’s protective composition in the kit of Goldstein because 1) Rijk teaches the scalp protective composition should be applied with a hair dyeing composition and 2) because kits are a convenient for customers. The combination of Rijk and Goldstein’s teachings is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements in order to yield predictable results.
The combination of Rijk’s teachings for a composition which contains pH adjusting agent may be in the composition in the amount of 0.001 to 10 wt. % (paragraphs 0268 – 0270), an antioxidant may be included in an amount of 0.04 to 5 wt. % (paragraphs 0148-0149), and a thickening polymer in an amount of 0.01 to 20 wt. % (paragraph 0093) where the composition has a pH between 4 and 8 (paragraphs 0237 – 0238, 320) and a viscosity value of 500 to 10,000 mPa*s (paragraph 0135) with Goldstein’s teaching for a kit which includes hair dye and a composition to protect the skin (paragraphs 0013 – 0015) reads on instant claim 14. A person of ordinary skill in the art would have been motivated to include Rijk’s composition in a kit because kits are convenient for customers. (Rijk’s teachings for the claimed ingredients in amounts overlapping the claimed amounts are discussed above on pages 4 and 5. Claimed amounts that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i)).
Rijk’s teaching that the pH adjusting agent, or in the language of the instant claim, the pH buffer, is citric acid and sodium citrate (paragraphs 0237 – 0238, 320) which has a buffering range that encompasses 4.5 to 5.5 reads on instant claim 15.
Examiner’s Reply to Attorney Arguments Dated October 8, 2025
Applicant argues that “Rijk provides no suggestion or motivation to select from the very broad ranges of possible components and amounts of those components” and that the presently claimed ranges “are significantly more narrow than Rijk” (Remarks page 7). The Examiner disagrees because, as discussed in the body of the rejection above, Rijk’s teachings for amounts of pH adjusting agents and antioxidants (0.001 to 10 wt. % and 0.04 to 5 wt. %) closely overlap the claimed ranges (0.15 to 10 mass% and 0.01 to 5.0 mass%). Rijk’s teaching for the inclusion of a thickening polymer in an amount of 0.01 to 20 wt. % (paragraph 0093) overlaps the instantly claimed amount of 0.08 to 1.5 mass% which is prima facie obvious according to MPEP 2144.05(i). Although Rijk’s taught range is greater than that which is instantly claimed, a person of ordinary skill in the art would have the expertise to arrive at the claimed amounts as a matter of routine experimentation, which is prima facie obvious according to MPEP 2144.05(ii)(a). For example, a person of ordinary skill in the art would recognize that a greater amount of thickener would result in greater viscosity and a lower amount of thickener would result in a lower viscosity. Therefore, a person of ordinary skill in the art would know that if Rijk’s teaching for a thickening polymer in an amount of 20 wt. % resulted in a greater viscosity than desired (as would be shown by routine experimentation), then a lower amount of thickening polymer should be used. Similarly, a person of ordinary skill in the art would be able to experiment with Rijk’s teaching for 0.01 wt. % thickener, then observe the resulting viscosity. As such, a person of ordinary skill in the art would have a reasonable expectation of success to arrive at an appropriate viscosity based on Rijk’s teachings to include 0.01 to 20 wt. % thickener (paragraph 0093).
Applicant alleges unexpected results, stating “the cosmetic composition of the present application is associated with unexpected improvements in the scalp protection ability, the viscosity change at different pH values, the dyability, application property, and dripping property” (Remarks pages 7 and 8).
As an initial matter, the Examiner notes that a proper side-by-side comparison to the closest prior art as required by MPEP 716.02(e) does not appear to have been made. Applicant points to comparative Examples 3 and 4, which lack pH-responsive thickener or have a higher amount of thickener than claimed, and display excessive dripping or poor application property, respectively (Remarks page 8, specification page 56, Table 4). Applicant notes that both comparative Examples 3 and 4 exhibit low scalp protection ability at 7.6 and 7.0% (Remarks page 8, specification page 56, Table 4). The Examiner disagrees that the comparison of Applicant’s Comparative Examples 3 and 4, with the remaining examples is proper because Applicant’s Example 2, which contains pH buffer, antioxidant, and pH-responsive thickener in the claimed amounts also displays dripping greater than 30 cm (specification page 56, Table 4). Put another way, Applicant’s inventive Example 2, which contains each of the claimed ingredients in the claimed amounts, has the same unfavorable properties that Applicant argues result from the compositions of Comparative Examples 3 and 4.
Further, Applicant argues that Examples 19 and 22 have mass ratios of A/B lower than and greater than the claimed range and thus display “shows inferior scalp protection ability, dyeability, application property, and dripping property” (Remarks page 8).
Applicant’s Examples 13, 25, 32, 33, 36, 37, and 39 – 41 which each have the claimed ingredients in the claimed amounts and ratios, display a scalp protection abilities ranging from 13.8% to 19.4%, which is less than “inferior scalp protection ability” of Examples 19 and 22 of 20.4%. Said differently, examples which meet each of the limitations regarding claimed ingredients and amounts display scalp protection abilities less than those which are deemed unacceptable by Applicant.
Applicant’s Examples 3, 5, 7, 14, 26, and 32 – 37 which each have the claimed ingredients in the claimed amounts and ratios, display dyeability scores ranging from 0.34 to 0.66, which is less than the inferior dyeability of Examples 19 and 22 of 0.67. As such, the dyeability of Examples 3, 5, 7, 14, 26, and 32 – 37, which each have the claimed ingredients in the claimed amounts, is less than that which is deemed inferior by Applicant.
Applicant’s Examples 3, 5, 7, 14, 26, and 32 – 37 which each have the claimed ingredients in the claimed amounts and ratios, display application properties scores ranging from 3 to 4, which is less than the inferior application property of Examples 19 and 22 of 5.
Finally, Applicant’s assertion that Examples 19 and 22 have inferior dripping properties (Remarks page 8), suggest that any dripping greater than 2 cm, as shown in Example 22, is inferior. Applicant’s Examples 1, 2, 5 – 8, 16 – 18, and 23 which each have the claimed ingredients in the claimed amounts, each have dripping greater than 2 cm, ranging from 2.1 to 30 cm.
Taken together, Applicant’s arguments that Examples 19 and 22 display inferior properties, does not support Applicant’s allegations that unexpected results, i.e. favorable scalp protection, dyability, application property, and dripping property, are seen in compositions with the claimed ingredients in the claimed amounts. In other words, although the examples have the claimed ingredients in the claimed amounts, they do not all show favorable scalp protection, dyability, application property, and dripping property as alleged by Applicant in the Remarks (page 8).
At present, Applicant seems to argue that Comparative Examples 3 and 4 and Examples 19 and 22 have unfavorable properties because the examples do not have each of the claimed ingredients in the claimed amounts. However, as discussed above, the examples which do have the claimed ingredients in the claimed amounts do not exhibit all of the properties that Applicant states are representative of unexpected results. As such, it is not clear to the Examiner how Applicant’s argument is supported by the proffered evidence.
Finally, and purely arguendo, even if Applicant has in fact shown unexpected results (of which the Examiner is not persuaded at this time), the Examiner notes that Applicant’s alleged showing is in regards to scalp protection ability, dyeability, application property, and dripping property which supposedly results from a composition containing the claimed ingredients in the claimed amounts which does not appear to be “reasonably representative” of the claims in their current scope. See MPEP 716.02(d). The Applicant has allegedly demonstrated favorable scalp protection ability, dyeability, application property, and dripping property, however, if this is in fact true it would only have been shown for specific ranges of the claimed ingredients (Tables 4 – 9). It is unclear that a composition containing the specific amounts of pH buffer (examples show a range from 0.83 to 5.6%), antioxidant (0.29 to 1.67%), and pH-responsive thickener (0.08 to 1.5%), or the claimed pH range (examples show a range of 4.1 to 7.0), would be reasonably representative of compositions containing these ingredients in the claimed ranges of 0.15 to 10 mass% (pH buffer), 0.01 to 5.0 mass% (antioxidant), 0.08 to 1.5 mass% (pH-responsive thickener), pH ranging from 3.0 to 7.0, and a mass ratio of pH buffer and antioxidant ranging from 1.0 to 8.0, thereby falling within the broader scope of what is presently claimed.
For the reasons discussed above, the 35 U.S.C. 103 rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/FREDERICK F KRASS/Supervisory Patent Examiner, Art Unit 1612
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