DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants’ arguments, filed 12/15/2025, have been fully considered. Rejections and/or objections not reiterated from previous office action are hereby withdrawn.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 – New by Amendment
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 24-26 and 28-31 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.
The phase “formulated to be mixed” in claim 24 is a relative phrase which renders the claim indefinite. The phrase “formulated to be mixed” 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. It is not clear what is meant by this phrase such that the artisan would reasonably appreciate the metes and bound of what is encompassed by it. It is not clear how far from the base emulsion comprising microfabricated cellulose one can deviate and still meet the requirement of the claim because it is not clear what limitation the phase “formulated to be mixed” requires. For the purpose of examination the Examiner is interpreted the recited “formulated to be mixed” as “capable to be mixed”.
Claim Rejections - 35 USC § 103
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 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.
Previous
1) Claims 24-26 remain rejected under 35 U.S.C. 103 as being unpatentable over Bowes et al. (US 2003/0226217 A1, publication date 12/11/2003) and Anni (How to use MFC in cosmetic products? Interview with Cosmacon & Rainer Kropke, 2016, https://www.borregaard.com/insights/how-to-use-mfc-in-cosmetic-products-interview-with-cosmacon-and-rainer-kr%C3%B6pke; cited in IDS 01/17/2023).
Regarding instant claim 24-27, Bowes discloses “[c]ompositions suitable for dyeing and bleaching hair comprising a phosphate ester compound and an oxidizing agent”, which may be in the form of oil-in-water emulsions [abstract]. Bowes discloses the phosphate esters are used to replace thickening agents such as acrylate copolymers (i.e., composition does not comprise acrylate copolymers; instant claim 26) [0007] and are present in amounts from 0.1% to 5% of the total weight of the composition [0040]. Bowes also desires thickeners, conditioning agents and stabilizers [0055]. The “[o]xidative dye compositions are usually sold as a kit comprising at least two separate containers: one contains the oxidative dye precursors and the other contains the oxidizing agent” [0087]. The two compositions are then mixed immediately before use [0088].
Bowes does not disclose microfibrillated cellulose.
Anni discloses microfibrillated cellulose (MFC) can be used in oil-in-water emulsions and rinse-off hair care formulations to provide rheological properties like stabilization or thickening [p. 1, last paragraph]. Additionally, when used in a hair care product MFC provides the added benefit of a conditioning effect which improves wet combability of hair [p. 2, para. 3]. According to Anni, MFC can replace other rheology additives in a 1:1 substitution [p. 2, para. 4]. Anni does not disclose modified MFC.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the microfibrillated cellulose (MFC) of Anni with the composition comprising phosphate ester thickening agent of Bowes. One would have been motivated to make this combination because Anni discloses MFC provides the additional benefits of emulsion stabilization and hair conditioning which are desired by Bowes. One would have had an expectation of success because Anni discloses MFC for the same purpose as the thickeners in Bowes, i.e., thickening agent in hair care compositions. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Furthermore, Anni teaches MFC can replace thickening agents at a 1:1 ratio which a skilled artisan would have understood to mean that MFC provides the same thickening effects. Thus, in combing of the phosphate ester and MFC, one would have been motived to provide the cumulative amount of thickening agent within the 0.1 to 5% w/w disclosed by Bowes. As a result the instantly claimed range for MFC present in composition (0.1-5wt.%) would have overlapped with the range of the prior art. Therefore, a prima facie case of obviousness exists for the instantly claimed amount of MFC. 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(I).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have to have formulated a hair dye (i.e., hair care) composition as an oil-in-water emulsion comprising unmodified MFC in the claimed amounts and wherein the composition is free of acrylic copolymers. Additionally, one would have expected the final composition to also be an oil-in-water emulsion because it would have been the product from the mixing two oil-in-water emulsions (i.e., dye composition and oxidizing composition).
2) Claims 28 and 29 remain rejected under 35 U.S.C. 103 as being unpatentable over Bowes et al. (US 2003/0226217 A1, publication date 12/11/2003) and Anni (How to use MFC in cosmetic products? Interview with Cosmacon & Rainer Kropke, 2016, https://www.borregaard.com/insights/how-to-use-mfc-in-cosmetic-products-interview-with-cosmacon-and-rainer-kr%C3%B6pke; cited in IDS 01/17/2023) as applied to instant claims 24-26, and in further view of Imai (JP 2004 026703 A, publication date 04/16/2008; citing English machine translation).
Bowes and Anni, which are taught above, differ from the instant claims insofar as they do not teach an oxidizing formulation comprising microbibrillated cellulose (MFC). Bowes does disclose a suitable carrier for the oxidizing agent is a liquid [0087].
Anni discloses microfibrillated cellulose (MFC) can be used in rinse-off hair care formulations to provide rheological properties like stabilization or thickening [p. 1, last paragraph]. Additionally, when used in a hair care product MFC provides the added benefit of the conditioning effect which improves wet combability of hair [p. 2, para. 3]. According to Anni, “[s]ometimes it might be optimal to use MFC in combination with another rheology additive. We have obtained good results in a 1:1 combination with microcrystalline cellulose or with a product containing cellulose gum, carrageenan…” [p. 2, para. 4].
Imai discloses a hair dyeing composition comprising a first agent and a second agent comprising an oxidizing agent, water and thickening agent [abstract]. The first and second agents are mixed together to be used as an oxidative hair dye [abstract]. Specific thickeners include carrageenan [0042]. Imai discloses a thickener is used in the second agent (i.e., oxidizing composition) to suppress dripping from the hair when applying the mixture [0041].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have simply substituted the oxidizing solution of Bowes for the oxidizing solution of Imai. One would have been motivated to do so to suppress dripping from the hair when applying the composition, as disclosed by Imai. One would have had an expectation of success because the oxidizing solution of Imai was formulated to deliver an oxidizing agent to an oxidative hair dye composition, as required by Bowes. Furthermore, the oxidative dye composition of Imai comprises an acceptable carrier (i.e., liquid) according to Bowes. The simple substitution of one known element (e.g., the oxidizing solution of Imai) in place of another (e.g., the oxidizing solution of Bowes) in order to achieve predictable results (oxidizing hair dye) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Furthermore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the MFC of Anni with the carrageenan gum of Imai because Anni discloses that combination provides optimal results. One would have been motivated to do so because Anni discloses MFC provides the desirable effect of hair conditioning. One would have had an expectation of success because the combination of carrageenan gum and MFC in cosmetic compositions was taught by Anni. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have to have formulated a hair dye composition, as taught by Bowes and Anni, wherein the oxidizing solution comprises MFC and is delivered as an aqueous phase. Additionally, one would have expected the final composition resulting from the mixing of the dye composition (oil-in-water emulsion) and the oxidizing composition (aqueous phase) to also be an oil-in-water emulsion1.
3) Claims 30 and 31 remain rejected under 35 U.S.C. 103 as being unpatentable over Bowes et al. (US 2003/0226217 A1, publication date 12/11/2003) and Anni (How to use MFC in cosmetic products? Interview with Cosmacon & Rainer Kropke, 2016, https://www.borregaard.com/insights/how-to-use-mfc-in-cosmetic-products-interview-with-cosmacon-and-rainer-kr%C3%B6pke; cited in IDS 01/17/2023), as applied to instant claims 24-26, and in further view of Blell et al. (US 2018/0078484 A1, publication date 03/22/2018)
Bowes and Anni, which are taught above, differ from the instant claims insofar as they do not teach the length, diameter or water retention capacity of the microfibrillated cellulose (MFC).
Blell discloses a cosmetic composition comprising microfibrillated cellulose [abstract]. Blell discloses the microfibrillated cellulose has a water holding capacity of 50 (i.e., water retention capacity of at least 50%) [0026], an average length from 100 nm to 50 μm [0052] and an average diameter from 1 nm to 500 nm [0053].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have include MFC with an average length from 100 nm to 50 μm, an average diameter from 1 nm to 500 nm and water retention capacity of at least 50%. One would have been motivated to, and had an expectation of success in, using MFC with the characteristics described by Blell because Blell discloses those characteristics are appropriate for cosmetic compositions. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have used MFC with an average length from 100 nm to 50 μm, an average diameter from 1 nm to 500 nm and water retention capacity of at least 50% as the MFC desired by Anni.
Response to Arguments
1) On page 6 of their remarks, Applicant asserts Bowes teaches that phosphate ester compounds can replace acrylate copolymers in their entireties while Annie teaches that microfibrillated cellulose (MFC) should be used together with acrylate copolymers, and argues that a person of skill in the art would therefore conclude that the phosphate ester compounds taught by Bowes are more desirable than MFC.
This argument is not persuasive. While Annie discloses the combination of MFC and acrylate copolymers, Annie does not indicate that such a combination is necessary when using MFC as a rheology agent. Specifically, Annie discloses “In shampoos, a number of acrylate copolymers can be reduced when used together with MFC. MFC and the acrylates impact the rheology of the products, and MFC produces a conditioning effect on the hair. Sometimes, it might be optimal to use MFC in combination with another rheology additive” (emphasis added) [p. 2, last para.]. Thus, Annie discloses MFC can be used in combination with another rheology agent generally, and appears to only mention acrylates as an example, i.e., Anni does not require acrylates.
2) On page 6 of their remarks, Applicant argues that a person of skill in the art, at the time of Applicant's invention, would not have been motivated to replace the phosphate esters taught by Bowes with the MFC taught by Annie.
This argument is not persuasive. For the same reasons a skilled artisan would have been motivated to substitute the phosphate esters for MFC, one would have also been motivated to combined the phosphate esters and MFC. That is, because the prior art discloses both phosphate esters and MFC are hair care thickeners, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined them. See rejections above.
3) On page 6 of their remarks, Applicant argues that a person of skill in the art would have had concerns about the structure of the formula, and would have questioned the efficacy of MFC in hair dye formulations due to the inability of MFC to solubilize.
This argument is not persuasive. Bowes does not disclose the phosphate esters as providing a solubilizing function. Thus, effecting the solubilizing function of phosphate esters would not have precluded a skilled artisan from making changes to Bowes. Further, Bowes discloses that the compositions may comprise anionic, non ionic and cationic surfactants [0055]. A skilled artisan would have recognized that additional surfactants may also provide a solubilizing function.
4) On page 6 of their remarks, Applicant asserts that phosphate esters provide lubricity to hair (the “silicone-like” feel) and MFC provides a matte feel and argues that as a result on would not be motivated to substitute the two thickeners.
This is not persuasive. Bowes does not appear to disclose the lubricity or “silicone-like” feel as an essential part of the compositions. Thus, a change to the feel of the composition would not have precluded a skilled artisan to substitute or combine the MFC of Annie with the thickeners of Bowes.
5) On page 7 of their remarks, Applicant argues that one would not have been motivated to use MFC in the compositions disclosed by Bowes because doing so would be more laborious.
This argument is not persuasive. Bowes does not disclose that processing complexity is an essential element of the invention. Thus, changes to the processing steps would not have precluded a skilled artisan from combining MFC with the compositions disclosed by Bowes.
6) On page 7 of their remarks, Applicant asserts that the examples disclosed in the instant specification “indicate that adding MFC to an O/W emulsion, and mixing that emulsion at the time of use with an oxidizing formulation, can produce results that were discovered by Applicant and were not predictable in view of the prior art.”
This argument is not persuasive. The instant specification indicates unexpected results insofar as it discloses that “It has moreover been surprisingly
found that MFC can replace, in part or totally, both (co)polyacrylates used as
stabilisers and polymeric quaternary-ammonium salts used as conditioners in so far
as MFC simultaneously bestows in an effective way to cosmetic formulations for hair
care both stabilising properties (typical of co-polyacrylates) and conditioning
properties” typical of polymeric quaternary-ammonium salts [instant specification (as originally filed) at page 2, lines 22-27]. Furthermore, in Example C, on pages 48-62 applicant demonstrates hair dye and oxidant compositions comprising MFC demonstrate improved properties over the same compositions that do not comprise MFC (see last paragraph of page 62 of the instant specification as originally filed).
However, overcoming a rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the results must truly be unexpected, and the claims must be commensurate in scope. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b). Applicant's showing of allegedly unexpected results does not satisfy all of these requirements.
Specifically, the results have not been compared to the closest prior art because they have not been compared to a composition comprising a thickening agent. For example, Bowes discloses a compositions comprising thickening agents (phosphate esters), e.g., the Crodafos CES RTM (cetearyl alcohol, dicetyl phosphate and ceteth-10 phosphate) phosphate ester thickening agent of Example A [0058-0065].
Furthermore, the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (MPEP 716.02(b)). In the present case, the allegedly unexpected results do not appear to be truly unexpected in view of the prior art.
With respect to the specific result indicated as unexpected (MFC able to replace acrylates as thickener and conditioner) by the specification at page 2, lines 22-27, Anni discloses “a number of acrylate copolymers can be reduced when used together with MFG. MFG and the acrylates impact the rheology of the products, and MFG produces a conditioning effect on the hair” [p. 2, last para.].
Additionally, with respect the improved properties demonstrated by Example C on pages 49-62:
On pages 52-54 of the instant specification as originally filed, applicant discloses allegedly unexpected improved composition stability due to MFC. However, this would have been expected in view of the prior art. Turback et al (US 4,500,546, 02/19/1985; cited in Office Action 07/16/2025) discloses that “microfibrillated cellulose has the unique capability of enhancing the homogeneity and stability of a wide variety of suspensions” [col. 1, lines 22-25]. Suspensions include emulsions, according to Turbak at column 2, lines 4-10.
On pages 55- 57 of the specification as originally filed, applicant demonstrates the alleged unexpected results of improved hair strength. However, this would have been expected in view of Anni and Birchbox (BirchBox, 05/13/2015 [retrieved 03/10/2026], https://www.birchbox.com/magazine/article/mens-hair-conditioner). Anni discloses “MFG produces a conditioning effect on the hair” [p. 2, last para.]. Birchbox discloses “conditioner seals it back uplocking nutrients in and pollutants out. This in turn strengthens the hair shaft, preventing breakage, split ends, and even hair loss” [p. 1, para. 2]. Therefore, a skilled artisan would have expected MFC to strengthen hair because it was known to provide a conditioning effect.
On pages 58-60 applicant discloses the alleged unexpected result of improved combability. However, this would have been expected in view of the prior art because Anni teaches MFC improves combability of hair [p. 2, para. 3].
On pages 60-62 applicant demonstrates the alleged unexpected result of improved anti-slip along a vertical surface. However, this would have been expected because Anni discloses that “MFG gives the "non-dripping" effect”[p. 2, para. 1].
Therefore, the results demonstrated by applicant appear to be expected in view of the prior art.
Finally, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (see MPEP 716.02(d) quoting In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)). The examples demonstrating the alleged unexpected results comprise MFC where “[t]he average length of the cellulose fibrils used in the formulations listed hereinafter ranged from 3 μm to 10 μm, the average diameter of the cellulose fibrils and of the groups of fibrils ranged from 10 nm to 30 nm” (instant specification at [p. 22, lines 23-26]). However, the independent claim does not recipe the specific size of the microfibrils. Additionally, the instant specification discloses the MFC of the examples has a water retention capacity of at least 70% (instant specification at [p. 23, lines 6-7], and the independent claim does not recite a specific water retention capacity.
Technological Background
The prior art made of record is considered pertinent to applicant's disclosure. Dietemann et al., A Colloidal Description Of Tempera And Oil Paints, Based On A Case Study Of Arnold Böcklin's Painting Villa Am Meer Ii (1865), 2014, e-Preservation Science (11), p. 29-46. Dietemann is pertinent for teaching emulsions are simply diluted by adding additional continuous phase at page 35, last paragraph.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at (571)272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612
1 Dietemann et al. (e-Preservation Science, 2014, (11), p. 29-46)