DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed August 3, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 1 – 21, 24, 26, 33, and 40 are cancelled.
Claims 34 – 39 and 41 are withdrawn.
Claims 22, 23, 25, and 27 – 32 are examined here-in.
Claim Rejections - 35 USC § 112 (New, Necessitated by Amendment)
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.
Claim 22 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim 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 had possession of the claimed invention.
Claim 22 introduces new matter as the claims recite the limitation: "wherein the composition is not a… hair relaxing/straightening composition”. There is no support in the specification for this limitation. The limitation of: "not a… hair relaxing/straightening composition" was not described in the specification as filed, and person skilled in the art would not recognize in the Applicant' s disclosure a description of the invention as presently claimed.
MPEP 2173.05(i) states “Any negative limitation or exclusionary proviso must have basis in the original disclosure,” as such, since the limitation “not a… hair relaxing/straightening composition” is not in the specification, it is new matter.
The specification discloses hair bleaching and hair dyeing compositions, specifying that the pretreatment composition is compatible with such compositions (page 4 lines 26 – 27), but does not describe the instantly claimed limitation “not a… hair relaxing/straightening composition”. The terms “relaxing” and “straightening” are not present in the specification. There is no guidance in the specification that the pretreatment composition is not a hair relaxing/straightening composition.
According to MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments. Therefore, it is the Examiner' s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Claim Rejections - 35 USC § 112 (New, Necessitated by Amendment)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 32 is rejected under 35 U.S.C. 112(d) 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. Claim 32 depends on claim 22. Claim 32 recites “wherein the composition comprises a total amount of coloring agents and/or reducing agents of less than 0.1% by weight relative to the total weight of the composition” which does not further limit claim 22’s recitation of “wherein the composition… comprises less than… 0.1% of hair coloring agents and less than 0.1% of reducing agents by weight, relative to the total weight of the composition”.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 22, 23, 25, and 27 – 32 are rejected under 35 U.S.C. 103 as being unpatentable over Viscogliosi (US 12,029,810 B2, of record) and DeGeorge (US 2018/0116930 A1, of record).
Viscogliosi teaches a composition with an amino acid and an alcohol for the cosmetic treatment of hair (abstract, claim 1).
Viscogliosi teaches glycine, proline, methionine, serine, arginine, and lysine, among others (column 4 lines 1 – 9). Viscogliosi teaches the composition contains 0.1 to 20% of amino acid (column 4 lines 55 – 59).
Viscogliosi teaches the composition may contain alcohol in the amount of 1 to 50% (column 5 lines 9 – 10), where the alcohol has between 1 and 10 carbon atoms and a hydroxyl group (column 3 lines 45 – 47, column 4 lines 21 – 23).
Viscogliosi does not teach the pH of the composition, cationic polymers, or silicones.
DeGeorge teaches the missing elements of Viscogliosi.
DeGeorge teaches a composition for hair lightening which includes an amino acid and a cationic conditioning agent (abstract), explaining that the composition strengthens hair fibers, protects hair fibers form damage, and confers enhanced softness, shine, and conditioning (paragraphs 0011, 0012). DeGeorge teaches the treatment composition may be separate from a composition containing a bleaching agent, and exemplifies this possibility with the composition of claim 1 which does not require the inclusion of a bleaching agent (paragraph 0013, claims 1 – 5). DeGeorge teaches that the composition mitigates damage during chemical treatment, such as a lightening or bleaching process (paragraph 0012), thus suggesting that the composition is applied prior to lightening or bleaching processes.
DeGeorge teaches the pH of the composition is above 7 (paragraph 0006, 0059).
DeGeorge teaches the cationic conditioning agent of the composition is a cationic polymer (paragraph 0117-0119). DeGeorge teaches the cationic conditioning agent in the amount of 0.01 to 10 wt. % (paragraph 0064). DeGeorge teaches dialkyldiallyl ammonium salts and copolymers thereof as preferred cationic conditioning agents (paragraph 0118).
DeGeorge teaches the inclusion of volatile or non-volatile silicone oils, including aminated polysiloxanes (paragraphs 0127, 0134-0136) in the amount of 0.1 to 10 wt. % (paragraph 0050).
DeGeorge teaches that coloring agents may optionally be included, but are not necessary for the composition (paragraph 0021).
DeGeorge teaches that anionic surfactant may be included in the composition in the amount of 0.1 to 10 wt. %, however does not require inclusion of an anionic surfactant (paragraphs 0053 – 0058).
The combination of Viscogliosi and DeGeorge’s teachings renders claims 22, 23, 25, and 27 – 32 prima facie obvious according to MPEP 2143I(I)(a) as combining known prior art elements according to known techniques to yield predictable results. A person of ordinary skill in the art would have been motivated to modify Viscogliosi’s composition with DeGeorge’s teachings because DeGeorge suggests the inclusion of a cationic conditioning agent strengthens hair fibers, protects hair fibers form damage, and confers enhanced softness, shine, and conditioning (paragraphs 0011, 0012). The combination of Viscogliosi and DeGeorge’s prior art teachings for haircare compositions, yielding predictable results (i.e. a haircare composition to lighten keratin fibers) is prima facie obvious according to MPEP 2143(I)(a).
Viscogliosi’s teaching to include an amino acid in the composition in the amount of 0.1 to 20% (column 4 lines 55 – 59) and an alcohol in the amount of 1 to 50% (column 5 lines 9 – 10) in combination with DeGeorge’s teachings to include a cationic polymer (paragraph 0117-0119) in the amount of 0.01 to 10 wt. % (paragraph 0064), volatile or non-volatile silicone oils (paragraphs 0127, 0134-0136) in the amount of 0.1 to 10 wt. % (paragraph 0050), and a composition pH greater than 7 (paragraphs 0006, 0059) reads on instant claim 22. Viscogliosi’s teachings of 0.1 to 20% and 1 to 50% for amino acid and alcohol respectively (column 4 lines 55 – 59, column 5 lines 9 – 10) overlap on the instantly claimed ranges of “about 8% to about 12%” recited in claim 22. DeGeorge’s teachings for cationic polymer in the amount of 0.01 to 10 wt.% (paragraph 0064) and silicones in the amount of 0.1 to 10 wt. % (paragraph 0050) overlap on the instantly claimed ranges of about 0.00005% to about 1% and about 0.02% to about 1% for cationic polymers and silicones, respectively. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Furthermore, DeGeorge teaches the treatment composition may be separate from a composition containing a bleaching agent, and exemplifies this possibility with the composition of claim 1 which does not require the inclusion of a bleaching agent (paragraph 0013, claims 1 – 5) reading on the instant limitation “wherein the composition is not a hair bleaching composition, hair dyeing composition, or hair relaxing/straightening composition, and comprises less than 0.1% of chemical oxidizing agents, less than 0.1% of hair coloring agents, and less than 0.1% of reducing agents by weight, relative to the total weight of the composition” of amended claim 22. While Viscogliosi’s composition is a hair straightening composition, the amendment to instant claim 1 reciting “wherein the composition is not a… hair relaxing/straightening composition…” is not supported in the instant specification and has been rejected as new matter under 35 U.S.C. 112(a).
DeGeorge’s teaches that the composition mitigates damage during chemical treatment, such as a lightening or bleaching process (paragraph 0012), thus suggesting that the composition is applied prior to lightening or bleaching processes, reading on the “pretreatment” limitation of claim 22.
Viscogliosi’s teaching that the amino acid may be glycine, proline, methionine, serine, arginine, or lysine, among others (column 4 lines 1 – 9) reads on instant claim 23.
Viscogliosi’s teaching that the alcohol included in the composition has between 1 and 10 carbon atoms and a hydroxyl group (column 3 lines 45 – 47, column 4 lines 21 – 23), reads on instant claim 25, which recites the alcohol has 2 to 4 carbon atoms and only one hydroxyl group.
DeGeorge’s teaching that the pH of the composition is above 7 (paragraph 0006, 0059) overlaps on the instantly claimed range of “about 9” recited in claim 27.
DeGeorge’s teaching to include a cationic polymer, such as a copolymer of dialkyldiallyl ammonium salts (paragraph 0117-0119) in the amount of 0.01 to 10 wt. % (paragraph 0064) reads on instant claims 28 and 29. A copolymer of dialkyldiallyl ammonium salts reads on the description and examples of homopolymers or copolymers as denoted by the structures shown in claim 28 and described in the instant specification on page 9 line 8 to page 10 line 23. DeGeorge’s teachings of an amount in the range of 0.01 to 10 wt. % (paragraph 0064) overlaps on the instantly claimed range of 0.00007 to 0.5% as recited in claim 29.
DeGeorge’s teaching to include volatile or non-volatile silicone oils can be animated polysiloxanes (paragraphs 0127, 0134-0136) in the amount of 0.1 to 10 wt. % (paragraph 0050) reads on instant claims 30 and 31. DeGeorge’s teachings of an amount in the range of 0.01 to 10 wt. % (paragraph 0064) overlaps on the instantly claimed range of 0.05 to 0.5% by weight as recited in claim 31.
DeGeorge’s teaching that coloring agents may optionally be included, but are not necessary for the composition (paragraph 0021) reads on instant claim 32.
Examiner’s Reply to Attorney Arguments Dated August 3, 2026
Applicant argues that DeGeorge requires 20 to 80 wt% bleaching agent, and therefore does not comply with the recitation of instant claim 1 which requires “less than 0.1% chemical oxidizing agents by weight” (Remarks pages 2 and 3). The Examiner disagrees, because as discussed in the body of the rejection above, DeGeorge teaches the treatment composition may be separate from a composition containing a bleaching agent, and exemplifies this possibility with the composition of claim 1 which does not require the inclusion of a bleaching agent (paragraph 0013, claims 1 – 5).
Applicant argues that DeGeorge’s pH is a direct result of the inclusion of an oxidative dye or bleaching agent (Remarks pages 3 and 4). The Examiner disagrees, because according to DeGeorge’s paragraph 0059, pH can be modulated with metal hydroxides such as sodium hydroxide. Sodium hydroxide is not interpreted to be one of the chemical oxidizing, hair coloring, or reducing agents of amended claim 1 because sodium hydroxide is included in the pretreatment compositions in Tables 1, 7, 13, and 14 of the instant specification for the purpose of modulating pH. Further, in arguendo, if sodium hydroxide were to read on the reducing agents referenced in amended claim 1, the claim allows up to 0.1% reducing agent. As such, sodium hydroxide would still be acceptable for modulating pH so long that the amount is less than 0.1% by weight of the total composition.
Applicant argues that modifying either Viscogliosi or DeGeorge to arrive at the claimed invention would render the reference unsatisfactory for its intended purpose (Remarks page 4). Applicant argues because Viscogliosi teaches a straightening composition, it is not compatible with the amended limitation of claim 1 reciting “wherein the composition is not a… hair/relaxing straightening composition” (Remarks page 4). As discussed above, the amendment reciting “wherein the composition is not a… hair/relaxing straightening composition” is not supported by the specification and is new matter, and is thereby rejected under 35 U.S.C. 112(a). Furthermore, as discussed above, DeGeorge teaches the treatment composition may be separate from a composition containing a bleaching agent, and exemplifies this possibility with the composition of claim 1 which does not require the inclusion of a bleaching agent (paragraph 0013, claims 1 – 5). Therefore, Applicant’s argument that modifying Viscogliosi or DeGeorge to arrive at the claimed invention would render the reference unsatisfactory for its intended purposes is not persuasive.
Double Patenting
The judicially created doctrine for non-statutory double patenting rejections has been described in detail in the previous action.
Double Patenting over U.S. Patent No. 12,239,726
Claims 22, 23, 25, and 27 – 32 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,239,726 in view of Viscogliosi (as cited above).
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 22 is drawn to a hair pretreatment composition comprising i) about 8 to 12% amino acid, ii) about 8 to 12% one or more monoalcohol, iii) about 0.00005 to 1% cationic polymer, iv) about 0.02 to 1% one or more silicones, wherein the pH of the composition is ranges from 8 to 10.
Conflicting claim 1 is drawn to a method for bleaching or dyeing keratin fibers by applying a pretreatment composition comprising amino acid in the amount of at least 5% by weight.
The instant and conflicting claims differ because instant claim 22 recites the inclusion of monoalcohol, cationic polymer, and silicones, and specifies the pH of the composition.
Regarding cationic polymer and silicones: Conflicting claim 5 recites the inclusion of cationic polymer and aminosilicone, overlapping on instant claim 22.
Regarding pH: Conflicting claim 4 specifies the pH of the composition is from 2 to 11, overlapping on the range of instant claim 22. Conflicting claim 14 specifies the pH of the composition is from 8 to 10, overlapping on the range of instant claim 22. Conflicting claim 19 specifies the pH of the composition is from 4 to 10, overlapping on the range of instant claim 22.
Viscogliosi teaches a composition with an amino acid and an alcohol for the cosmetic treatment of hair (abstract, claim 1). Viscogliosi teaches the composition includes an alcohol with 1 to 10 carbon atoms and one hydroxyl group in the amount of 1 to 50% (column 3 lines 45 – 47, column 4 lines 21 – 23, column 5 lines 9 – 10).
It would be prima facie obvious to the ordinarily skilled artisan to include, within conflicting claim 1, a monoalcohol as taught by Viscogliosi. It is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
Double Patenting over U.S. Application No. 18/265,749
Claims 22, 23, 25, and 27 – 32 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 21 – 23, 25 – 34, and 36 – 40 of copending Application No. 18/265,749.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 22 is drawn to a hair pretreatment composition comprising i) about 8 to 12% amino acid, ii) about 8 to 12% one or more monoalcohol, iii) about 0.00005 to 1% cationic polymer, iv) about 0.02 to 1% one or more silicones, wherein the pH of the composition is ranges from 8 to 10.
Conflicting claim 21 is drawn to a method for bleaching or dyeing keratin fibers by applying a pretreatment composition comprising an amino acid and a monoalcohol, wherein the monoalcohol is in the amount of about 5 to 20% by weight.
The instant and conflicting claims differ because instant claim 22 recites the inclusion of cationic polymer and silicones, and specifies the pH of the composition.
Regarding cationic polymer and silicones: Conflicting claims 27 – 31 recite the inclusion of cationic polymer and aminosilicone, overlapping on instant claim 22.
Regarding pH: Conflicting claim 26 specifies the pH of the composition is from 2 to 11, overlapping on the range of instant claim 22.
Conflicting claim 40 recites a composition comprising 5 to 15% amino acid, 5 to 20% monoalcohol, at least one cationic polymer, at least one silicone, wherein the pH of the composition ranges from 2 to 11, reading on each of the limitations of instant claim 22.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Reply to Attorney Arguments Dated August 3, 2026
Applicant asserts that that Terminal Disclaimer has been submitted (Remarks page 1), however there is no Terminal Disclaimer present in the file. Therefore, the non-statutory double patenting rejections are maintained.
Conclusion
Applicant's amendment necessitated the new grounds 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.
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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