DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 23, 2026 has been entered.
Previous Rejections
Applicant’s arguments, filed March 23, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claims 2, 5, and 8 are cancelled.
Claims 1, 3, 4, 6, 7, and 9 – 19 are examined here-in.
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 non-obviousness.
Claims 1, 3, 4, 6, 7, 9 – 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, 7, 9 – 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.
With regards to the functional limitation recited in claims 1 and 12 (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 6 – 9 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, also shown in graph below).
[Chart]
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). In other words, viscosity is an inherent feature of a composition that includes components (A) – (C) as claimed.
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 claims 1 and 12. 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 claims 1 and 12 are obvious.
Rijk’s teachings fully meet the claimed limitations, however, in arguendo, the role of pH as related to polymer viscosity is known. As evidenced by Patil (Patil. A. and Ferritto, M.S. “Polymers for Personal Care and Cosmetics: Overview” American Chemical Society 2013, pages 3 – 11) pH is known to affect the viscosity of polymers and copolymers such as acrylates (page 5). Patil explicitly states that viscosity is low at low pH and increases as pH increases (page 5). In other words, a viscosity increase would be expected to accompany a pH increase for the polymer.
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).
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 March 23, 2026
[Chart]Applicant argues that Rijk does not enable one of ordinary skill in the art to produce a composition that adheres to the present claims without undue experimentation, specifically that one or ordinary skill in the art could not arrive at the claimed viscosity at pH 4.1, then change in viscosity at pH 5.0 without undue experimentation (Remarks page 6 - 7). Applicant argues that the instant specification’s examples 1 – 8 show that there is no simple relationship between the amount of pH-responsive thickener and viscosity change (Remarks page 7). The Examiner disagrees, because for examples 1, 2, 6, 7, 8, and 9, which include the essential elements of claim 1, there appears to be a linear relationship between the amount of pH-responsive thickener in the composition and the viscosity. A simple graph illustrating this relationship is shown below. Examples 3 – 5 do not adhere to the linear relationship because they include additional thickeners.
Applicant argues that “Rijk does not recognized such a pH change upon application nor any advantageous effects of having a low viscosity prior to application to help achieve uniform coverage and applicability which changes to a higher viscosity to allow the composition to remain in place without dripping or running off the hair or scalp” and thus one of ordinary skill in the art would not recognize pH as a result-effective variable to be optimized (Remarks pages 7 – 8). In response to applicant's argument, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145(ii). As discussed in the body of the rejection above, viscosity is an inherent feature of a composition that includes components (A) – (C) as claimed. 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 claims 1 and 12. 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 claims 1 and 12 are obvious.
Furthermore, Rijk’s teachings fully meet the claimed limitations, however, in arguendo, the role of pH as related to polymer viscosity is known. As evidenced by Patil (Patil. A. and Ferritto, M.S. “Polymers for Personal Care and Cosmetics: Overview” American Chemical Society 2013, pages 3 – 11) pH is known to affect the viscosity of polymers and copolymers such as acrylates (page 5). Patil explicitly states that viscosity is low at low pH and increases as pH increases (page 5). In other words, a viscosity increase would be expected to accompany a pH increase for the polymer. For these reasons, Applicant’s argument regarding pH as a result-effective variable (Remarks pages 7 – 8), is not persuasive.
Conclusion
All claims are rejected. No claims are allowed.
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
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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