DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09 February 2026 has been entered.
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 09 February 2026, in response to the Office Correspondence dated 10 November 2025, are acknowledged.
The listing of Claims filed 09 February 2026, have been examined. Claims23-42 are pending. Claims 23, 31, 35, and 41 are amended and are supported by the originally-filed disclosure. Claims 1-22 are canceled and no new claims have been added.
Response to Amendment
The amendments to claims 23, 31, 35, and 41 have been entered and considered. The prior informal objection regarding step numbering has been resolved by amendment to claim 23. Accordingly, the objection is withdrawn. The amendment to claim 35 (removal of “i), or”) is acknowledged and overcomes the prior ambiguity identified in the previous Office Correspondence with respect to the sequencing of steps. Accordingly, the rejection of claims 35 and 37-39 under 35 U.S.C. § 112(b) is withdrawn. However, as discussed below, the claims remain subject to prior art rejections under 35 U.S.C. § 103 and nonstatutory double patenting.
Claim Objections
Claims 31, 40 and 42 are objected to because of the following informalities:
Claim 31 is objected to for “thematic acid”, which appears to be a typographical error. "Thematic acid" is not a known reducing agent in hair treatment chemistry and this is likely intended to be thioctic acid (another name for lipoic acid, which is already listed and would be considered redundant) or thiomatic acid. Given the context of thiol-based reducing agents, this is likely a misspelling of a known compound. Appropriate correction is required.
Claim 40 is objected to for the use of inconsistent terminology. Claim 40 recites “non-thiol reducing agent”, however, other claims in the claim set (claims 29 and 42) refer to “non-thiol-based reducing agent” and “thiol-based reducing agent” is used throughout. The exclusion of "-based" is not necessarily an error, but it creates inconsistency within the same claim set regarding the terminology for the same class of agents. It is recommended that the claim terminology used in the claims (e.g., claims 29, 40, and 42) align to avoid arguments about scope during prosecution.
Claim 42 is objected to because the Markush group for the amino acid formula is incomplete. In the definition of the formula for composition (A), the text states: "when p = 1, R forms a saturated 5- to 8-membered with the nitrogen atom". This appears to be missing the word "ring". It should read "forms a saturated 5- to 8-membered ring with the nitrogen atom". Appropriate correction is required.
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.
Claims 23, 24, 26-28, 33 and 40-42 are rejected under 35 U.S.C. § 103 as being unpatentable over Voisin (WO2016102543A1; publication date 30 June 2016) in view of Biato (WO2016154692A1; publication date: 06 October 2016).
Regarding instant claims 23-25 and 41, Voisin teaches a method for treating keratin fibers, by applying a composition comprising at least one amino acid to keratin fibers followed by a step on reshaping keratin fibers as, “The present invention relates to a process for treating keratin fibres, in particular the hair, comprising the application of a composition comprising at least one specific amino acid and a step of straightening/relaxing by means of a straightening iron.” (page 2, lines 3-5; claim 1), wherein the amino acid is glycine (claim 10) used at a concentration of 1.5-15% w/w of the total composition (claim 11).
Voisin teaches the use of the composition prior to the straightening step, as in claim 1 wherein step a) is the application of the composition and step b) of straightening/relaxing the keratin fibers explicitly follows step a) (“Process for treating keratin fibres, in particular the hair, comprising: a) the application, to said keratin fibres, of a composition…b) followed by a step of straightening/relaxing the keratin fibres…”; claim 1). The use of the term “pretreatment” characterizes the known steps as described by Voisin.
Regarding instant claim 26, Voisin teaches the pH of the composition described above as, “…the pH of the composition is at less than two units from the pKa of the equilibrium of the amino acid of formula (I) or (II) with its base (lb) or (lib)…” (claim 12), in which depending on the specific amino acid and the basifying agent, the pH of the composition would fall within pH 2-12.5 wherein the working range for most amino acid conjugate bases (typically near pKa to pKa +2) would be a pH range of 4-12.5. Thus, the instant claim 26 range of pH 2-11 is encompassed.
Regarding instant claim 27, Voisin teaches “The composition used in the process of the invention may also comprise at least one customary cosmetic ingredient, chosen in particular from… nacreous agents and opacifiers… Depending on their nature and the purpose of the composition, the normal cosmetic ingredients can be present in normal amounts which can be easily determined by those skilled in the art and which can be, for each ingredient, between 0.01 % and 80% by weight.” (page 19, lines 12-13, 15-16 and 21-24), where nacreous pigments are used as hair coloring agents, typically in amounts significantly less than standard colorants and can create a visible effect when used at 0.05-1.0% w/w (mica-based types).
Regarding instant claim 28, Voisin teaches, “The composition may in particular comprise one or more organic solvents that are in particular water-soluble, such as Ci-C7 alcohols; mention may in particular be made of Ci-C7 aliphatic monoalcohols, for instance ethanol, or C6-C7 aromatic monoalcohols, which may be used alone or as a mixture with water.” (page 18, lines 8-11).
Regarding instant claim 33, Voisin teaches a process including the application of an amino acid composition to keratin fibers followed by a step of straightening/relaxing the keratin fibers by straightening iron (claim 1) which includes sodium hydroxide as a basifying agent in the composition (claims 2-3).
Voisin, however, does not explicitly teach “permanently reshaping the keratin fibers”, which implies alteration of disulfide bonds as newly specified in amended claims 23 and 41, rather teaches straightening/relaxing by means of a straightening iron. Voisin points out that it is known in the art to utilize other straightening/relaxing means to reshape keratin fibers (page 2, line 25- page 3, line 30).
Biato teaches a permanent reshaping composition comprising a mixture of thiol and non-thiol reducing agents and a mixture of mineral and organic hydroxides (Abstract and claim 1), which constitutes a permanent reshaping process in the art of hair treatment, as it involves chemical modification of keratin disulfide bonds and denaturation of keratin structures that persist after washing (see MPEP § 2111.01, wherein claim terms are given their broadest reasonable interpretation in light of the specification). Biato teaches that compositions comprising amino acids (page 14, line 21- page 15, line 1), reducing agents (thiols or non-thiols), and alkaline agents can be applied before or during permanent reshaping, confirming compatibility of amino acids with reshaping processes and supporting the rationale to use amino acid pretreatments before permanent reshaping.
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to substitute the missing limitation of permanently reshaping of keratin fibers, as described by Biato, for the temporary or semi-permanent reshaping via heat-based straightening iron straightening/relaxing to the invention of Voisin. A person of ordinary skill in the art would have been motivated to combine the pre-treatment amino acid composition taught by Voisin with a known permanent reshaping process such as that taught by Biato to achieve a beneficial hair protection results for the permanent reshaping, as an extension of the method initiated by the Voisin for protection during temporary reshaping.
Regarding instant claim 40, Voisin teaches a method for treating keratin fibers, by applying a composition comprising at least one amino acid to keratin fibers followed by a step on reshaping keratin fibers as, “The present invention relates to a process for treating keratin fibres, in particular the hair, comprising the application of a composition comprising at least one specific amino acid and a step of straightening/relaxing by means of a straightening iron.” (page 2, lines 3-5; claim 1), wherein the amino acid is glycine (claim 10) used at a concentration of 1.5-15% w/w of the total composition (claim 11). Voisin does not explicitly teach reshaping of keratin fibers by applying a composition containing a thiol-based and non-thiol-based reducing agent and a mineral and organic hydroxide alkaline agent to keratin fibers.
Biato teaches reshaping of keratin fibers by applying to keratin fibers a composition that may contain a mixture of a thiol-based and non-thiol-based reducing agents and a mixture of a mineral and organic hydroxide alkaline agents (sodium hydroxide and aminomethyl propanol, respectively) as, “The invention also concerns a process of shaping or altering the shape of hair, for example, by straightening hair. The process comprises the steps of: (1 ) applying onto the hair, a composition containing: (a) least one reducing agent selected from thiol reducing agents, non-thiol reducing agents, and mixtures thereof, preferably selected from thiolactic acid, thioglycolic acid, and mixtures thereof, and more preferably selected from thiolactic acid; (b) at least one neutralizing agent, preferably selected from aminomethyl propanol, sodium hydroxide, and mixtures thereof…” (page 24, line 29- page 25 line 3). Biato teaches that compositions comprising amino acids (page 14, line 21- page 15, line 1), reducing agents (thiols or non-thiols), and alkaline agents can be applied before or during permanent reshaping, confirming compatibility of amino acids with reshaping processes and supporting the rationale to use amino acid pretreatments before permanent reshaping.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to add the missing limitation to reshaping of keratin fibers by applying a composition containing a thiol-based and non-thiol-based reducing agent and a mineral and organic hydroxide alkaline agent to keratin fibers the invention of Voisin because applying these compositions for reshaping keratin fibers was known for the same purpose as disclosed by Biato. A person of ordinary skill in the art would have been motivated to combine the pre-treatment amino acid composition taught by Voisin with a known permanent reshaping process such as that taught by Biato to achieve a beneficial hair protection results for the permanent reshaping, as an extension of the method initiated by the Voisin for protection during temporary reshaping.
It would have also been obvious to one of ordinary skill in the art to organize the elements of the invention in separate containers and combine them to form a kit, because organizing reagents used together or successively prior to use is logical and a common practice to those of ordinary skill in the art for efficiency of use and to reduce the frequency of errors (see MPEP 2144.02 and 2144). The kit structure is routine packaging in the art for multi-component systems commonly separated for stability. It would have been a matter of routine packaging to provide the pretreatment composition (A) and the permanent reshaping composition (B) of Beato in a kit, as claimed. The combination of Voisin and Biato would have been obvious to achieve improved, permeant reshaping results with reduced processing time.
Claims 23, 25, 34-39 are rejected under 35 U.S.C. § 103 as being unpatentable over Voisin (WO2016102543A1; publication date 30 June 2016) in view of Biato (WO2016154692A1; publication date: 06 October 2016) an in further view of Sasaki (JPH11139941A; publication date 25 May 1999).
Regarding instant claim 25, Voisin and Biato teach the method for treating keratin fibers of instant claim 23, as described above, from which instant claim 25 depends, however does not teach the specific limitation of instant claim 25, use of the amino acid composition from 15-20% w/w of the total composition.
Sasaki teaches a method for treating keratin fibers to prevent damage during hair dye, bleach, straightening or permanent wave treatment, by applying a composition comprising one or more amino acids as, “The amino acids used in the present invention are one or more amino acids selected from the group consisting of component (B) glycine, alanine, serine and proline, and among them, glycine is most preferable because of its remarkable enhancing effect. The amount is 0.1 to 100% by weight of the total amount of the hair treatment composition 20% by weight, preferably 1 to 10% by weight; If the amount is less than 1% by weight, a sufficient effect cannot be obtained, and if the amount is more than 20% by weight, the effect remains unchanged and is not economical.” (paragraph [0008]).
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to use up to 20% amino acid concentration relative to the total weight of the composition, as taught by Sasaki, in the Voisin process with the use of permanent reshaping as taught by Biato to enhance hair protection, because the higher concentration taught by Sasaki provides better strengthening and protective effects and was known for use with the same purpose as the amino acid composition disclosed by Voisin. One would be motivated to combine the teachings to improve conditioning and damage protection in hair-straightening treatments. Optimization of concentration and treatment time would be a matter of routine experimental optimization.
Regarding instant claims 34-37, Voisin teaches the limitations of instant claim 23, from which instant claims 34-37 depend, as described above, however does not teach all the specific limitations of instant claims 34-37.
Voisin teaches a method of keratin fiber treatment containing the composition of claim 23 wherein, “The composition which has just been described can be applied to dry or wet hair, preferably to dry hair.” (page 20, lines 4-5) and “The process of the invention may comprise other intermediate steps aimed at improving the straightening of the keratin fibres. In particular, the step of applying the composition may be followed by a leave-in time. The leave-in time, namely the time of contact of the composition on the hair, is preferably at least 5 minutes, preferably between 10 and 60 minutes and preferably between 15 and 45 minutes. Rinsing of the hair can optionally be envisaged after the application of the composition and optionally the leave-in time. The hair may then optionally be wrung dry, preferably wrung dry. A step of drying with a hairdryer, optionally combined with straightening with a brush (blow-drying) may be envisaged before the step of straightening using a straightening iron…According to one particular embodiment, the process of the invention comprising the steps of applying the composition according to the invention to the hair, then of straightening with an iron, is carried out one or more times, optionally separated by one or more cosmetic treatments, preferably shampooing, until the desired shape or shape intensity is obtained.” (page 20, lines 16-34).
Voisin points out that it is known in the art to utilize straightening/relaxing means to reshape keratin fibers in conjunction with dyeing or bleaching before or after reshaping keratin fibers as, “These treatments [formol-based straightening/relaxing] have the particularity of being robust, perfectly compatible with all the other conventional hair treatments, such as the thiol-based straightening operations previously mentioned, alkaline relaxing operations, dyeing or bleaching operations of all types, carried out before or after.” (page 2, lines 32-36).
Voisin does not teach leaving the amino acid composition on the keratin fibers for a time period ranging from 1-5 minutes.
Sasaki teaches a method for preventing hair damage by a hair dye, bleach, permanent wave or straightening by treating hair with a glycine amino acid containing composition, wherein “The hair treatment compositions of Examples 1 to 3 and Comparative Examples 1 to 3 are applied to each of the previously prepared damaged hairs, left for a few minutes, and then rinsed with warm water.” (paragraph [0017]), where anything more than 1 can be considered a few, thus encompassing the range of 1-60 minutes of instant claim 34.
Further, Sasaki wherein “The hair treatment composition of the present invention can be used for permanent wave treatment for artificially forming wavy or curled hair, or for curly hair straightening for straightening curly hair. Even better effects can be obtained. That is, it is used before and / or during and / or after the permanent wave treatment and the hair straightening treatment. Also, permanent wave treatment agent, A high effect can also be obtained when used in combination with the first and / or second agent for hair straightening.” (paragraph [0011]) and “According to the present invention, hair damaged by a chemical treatment such as a hair dye, a bleach or a permanent waving agent is repaired, or damage is prevented during the treatment...” (paragraph [0032]).
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to add the missing limitation of 1–5-minute incubation to the invention of Voisin, substituting the permeant straightening taught by Biato for the more temporary straightening. Because amino acid incubation time of 1-60 minutes was known for the same purpose as disclosed by Sasaki.
Regarding instant claims 38 and 39, Voisin and Sasaki teaches the limitations of instant claim 37 as described above.
Additionally, Sasaki teaches the application of conventional bleaching agents to keratin fibers (paragraph [0016]), which to one skilled in the art at the time of the invention, would be known to most commonly include the main chemical oxidizing agent hydrogen peroxide and oxidation dyes that react with hydrogen peroxide including either p-phenylenediamine, p-aminophenol or toluene-2,5-diamine.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to add the missing limitation of conventional bleaching agent application to the invention of Voisin, substituting the permeant straightening taught by Biato for the more temporary straightening, because they were known to be used for the same purpose as disclosed by Sasaki.
Claims 23, 29-32 are rejected under 35 U.S.C. § 103 as being unpatentable over Voisin (WO2016102543A1; publication date 30 June 2016) in view of Biato (WO2016154692A1; publication date: 06 October 2016) and in further view of Mahadeshwar (US20180116942A1; publication date 03 May 2018).
Regarding instant claim 29-32, Voisin and Biato teach the limitations of instant claim 23, as described above, from which instant claims 29-32 depend, however does not teach all the specific limitations of instant claims 29-32. Voisin does not explicitly teach reshaping of keratin fibers by applying a composition containing thiol-based reducing agent to keratin fibers, including thiolactic acid, at a pH of 1-6.
Mahadeshwar teaches, reshaping of keratin fibers by applying a composition containing thiolactic acid (claim 9) at a pH of 1-6 as, “In various embodiments, the pH of the hair after application of the compositions may be less than about 7, such as less than about 6.5, less than about 6...” (paragraph [0032]). Furthermore, it would have been known by one skilled in the art at the time of the invention that the optimal pH for reduction using thiolactic acid is approximately 3.5.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to add the missing limitation of reshaping keratin fibers with thiolactic acid at a pH of 1-6 to the invention of Voisin, substituting the permeant straightening taught by Biato for the more temporary straightening, because thiolactic acid at a pH of 1-6 was known to be used for the same purpose of reshaping keratin as disclosed by Mahadeshwar. One would be motivated to combine the teachings to improve straightening performance and hair protection. Selection of known reducing systems and pH conditions is routine optimization of process parameters.
Claim Rejections – Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Claims 23-40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-24, 26 and 33 of co-pending application 18/265,749 (filed 03 December 2021). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Composition (A) of instant claims 23 is encompassed within the broader scope of ‘749 claim 21. Composition (A) of instant claim 23 does not explicitly allow optional combinations of substitutions/interruptions in the linear form (p=2) as explicitly permitted in ‘749 claim 21, which allows for more complex variants with combined functionalizations. ‘749 claim 23 further specifies, wherein the total amount of amino acid(s) is at least 5% by weight, relative to the total weight of composition (A), as in the limitation of instant claim 23. Further, ‘749 claim 33 adds the limitation, wherein composition (A) further at least one reducing agent, reduce disulfide bonds and reshape the keratin fibers, as in the limitation ii) of instant claim 23. Therefore, because the combination of conflicting claims 21, 23 and 33 are the same as instant claim 23, they are directed to an obvious variation of the claimed invention. Instant claims 24-40 are dependent on instant claim 23, and therefore are rejected as such.
Further, instant claim 24 claims the same amino acids for composition (A) as ‘749 claim 22. Instant claim 25 is encompassed within the broader range of ‘749 claim 23. Instant claim 26 claims the same pH range of 2-11 for composition (A) as ‘749 claim 26. Instant claim 27 claims wherein composition (A) also comprises at least one coloring agent and at least one reducing agent, in a total amount of less than 0.1% by weight, relative to the total weight of composition (A), as does ‘749 claim 33. Instant claim 28 claims wherein composition (A) also comprises at least one organic solvent, defined to include monoalcohols, encompasses ‘749 claim 24, wherein composition (A) also comprises at least one monoalcohol. Therefore, instant claims 24-28 are further rejected as they are directed at obvious variations of the combination of conflicting claims 21, 23 and 33 and claims 22-24 and 26.
Claims 23-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9-13 and 15 of patent application 12,239,726 (issued 04 March 2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
Composition (A) of instant claims 23 is encompassed within the broader scope of ‘659 claim 1. Composition (A) of instant claim 23 does not explicitly allow optional combinations of substitutions/interruptions in the linear form (p=2) as explicitly permitted in ‘659 claim 1, which allows for more complex variants with combined functionalizations. The claims all specify the amino acid(s) being present in composition (A) in a total content of at least 5% by weight relative to the total weight of composition (A). Instant claim 23 specifies ii) reshaping of the keratin fibers, whereas ‘659 claim 1 specifies ii) applying to the keratin fibers a dyeing or bleaching composition. ‘659 claim 5 further specifies in which composition (A) comprises a total content of coloring agents and/or reducing agents of less than 0.1% by weight, indicating that the dyeing and bleaching compositions of claim 1 can contain a reducing agent which would reduce disulfide bonds and reshape the keratin fibers, as in the limitation ii) of instant claim 23. Instant claim 27 further specifies wherein composition (A) further comprises at least one agent chosen from coloring agents and/or reducing agents, wherein the total amount of coloring agents and reducing agents is less than 0.1% by weight, relative to the total weight of composition (A). Therefore, because the combination of conflicting claims 1 and 5 are the same as instant claim 23 and 27, they are directed to an obvious variation of the claimed invention. Instant claims 24-40 are dependent on instant claim 23, and therefore are rejected as such.
Further, instant claim 24 amino acids are encompassed in ‘659 claim 2. Instant claim 25 and ‘659 claim 3, both claim amino acids are present in composition (A) in a total content ranging from 5% to 20% by weight, relative to the total weight of composition (A). Instant claim 26 and ‘659 claim 4 both claim wherein the pH of composition (A) ranges from 2 to 11. Instant claim 28 and ‘659 claim 7 both claim wherein composition (A) further comprises at least one organic solvent.
Instant claim 34 and ‘659 claim 11 both claim leaving composition (A) to stand on the keratin fibers for a period of time ranging from 1 minute to 60 minutes. Instant claim 35 and ‘659 claim 12 both further claim comprising, after step i), or i'), and before step ii), a step i") of rinsing and/or drying the keratin fibers and instant claim 36 and ‘659 claim 36 claim in which the process does not comprise a rinsing step between step i) or i′) and step ii). Instant claim 37 additionally adds a step of dyeing and/or bleaching the keratin fibers after step i), i'), or i"), and before and/or after step ii), where ‘659 claim 15 defines composition (A) as a pretreatment composition for a dyeing or bleaching process.
Instant claim 38 and ‘659 claim 9 both claim wherein dyeing and/or bleaching the keratin fibers comprises applying to the keratin fibers a dyeing and/or bleaching composition comprising at least one chemical oxidizing agent. Instant claim 39 and ‘659 claim 10 both claim wherein dyeing the keratin fibers comprises applying to the keratin fibers a dye composition comprising at least one coloring agent chosen from oxidation dyes, direct dyes, or mixtures of two or more thereof.
Therefore, instant claims 24-28 and 34-39 are further rejected as they are directed at obvious variations of the combination of conflicting claims 1-5, 7, 9-13, and 15.
Response to Arguments
In the Applicant Arguments/Remarks of the reply, filed 09 February 2026, the applicant argues that Voisin teaches away from combining its amino acid pretreatment with reducing agents, Biato, Sasaki, and Mahadeshwar fail to cure the deficiencies of Voisin, and the specification shows unexpected results of reduced hair breakage in Example 1. The Examiner has fully considered these arguments but finds them unpersuasive for the reasons detailed below.
Regarding the first point, the applicant argues that Voisin "teaches away" from using reducing agents because Voisin identifies drawbacks of thiol-based reducing agents and states that "[p]referably, the process according to the invention does not comprise a step of applying a reducing composition comprising a reducing agent". However, a reference teaches away only when it "criticizes, discredits, or otherwise discourages" the claimed combination (see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) and MPEP § 2145). Voisin's background discussion of known drawbacks in existing reducing agent technologies does not constitute a teaching away from using reducing agents in all contexts. Voisin merely describes the state of the art and notes that its preferred embodiment avoids those drawbacks. Voisin acknowledges known reshaping techniques, including chemical systems and does not state that reducing agents are inoperable or incompatible with amino acid pretreatment.
In addition, Voisin explicitly states that its process is "perfectly compatible with all the other conventional hair treatments, such as the thiol-based straightening operations previously mentioned, alkaline relaxing operations, dyeing or bleaching operations of all types, carried out before or after" (page 1, lines 34-36). This acknowledgment demonstrates that chemical reshaping systems were part of the same technical field. This affirmative disclosure of compatibility with thiol-based straightening operations directly contradicts the applicant's teaching away argument. The substitution of heat-based reshaping taught by Voisin with chemical permanent reshaping taught by Biato constitutes a predictable substitution of one known element for another performing the same function, consistent with KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Both Voisin and Biato address keratin fiber reshaping, hair protection/conditioning, thus, the combination does not require hindsight but arises from routine optimization within the same technical domain. Voisin does not teach away, rather, it provides a recognized starting point for substitution with known permanent reshaping chemistries.
Furthermore, the statement that the process "preferably" does not include a reducing step is merely a description of a preferred embodiment (preference ≠ prohibition). The Federal Circuit has consistently held that disclosure of a preferred embodiment does not teach away from other embodiments (see In re Fulton, 391 F.3d at 1201 (Fed. Cir. 2004); wherein mere disclosure of alternatives does not constitute teaching away). Moreover, the fact that Voisin's working examples use a straightening iron rather than reducing agents does not teach away from using reducing agents. The specification contemplates both heat-based and chemical reshaping methods, and the examples illustrate only one embodiment. Therefore, Voisin does not teach away from the combination with reducing agents, rather, it expressly teaches compatibility with such agents.
Regarding the second point, the applicant argues that Biato, Sasaki, and Mahadeshwar provide no motivation for combination with Voisin and that they are silent regarding amino acid pretreatment compositions. This argument is not persuasive. Voisin teaches amino acid pretreatment for hair protection during reshaping. Biato teaches permanent reshaping compositions with reducing agents and alkaline agents. In addition, Biato explicitly teaches that compositions comprising amino acids can be applied before or during permanent reshaping (page 14, line 21 to page 15, line 1). This direct disclosure confirms compatibility of amino acids with reducing systems and use as pretreatment agents, providing specific motivation to combine.
Sasaki teaches higher amino acid concentrations, up to 20%, for enhanced protection and use before/during permanent wave or straightening. Sasaki is directly relevant because it teaches amino acid pretreatment specifically for preventing damage during permanent reshaping treatments including straightening and permanent waves. Sasaki ¶[0032] states, "According to the present invention, hair damaged by a chemical treatment such as a hair dye, a bleach or a permanent waving agent is repaired, or damage is prevented during the treatment.". Mahadeshwar teaches thiol-based reducing agents (i.e., thiolactic acid) at pH 1-6, which was the conventional, known optimal pH range for thiol-based reduction in the art. Mahadeshwar simply confirms what was already known.
All references share a common objective of reducing hair damage during chemical treatment, providing a functional motivation of hair protection and combining the teachings of such would yield predictable improvement in protection. A person of ordinary skill in the art would be motivated to combine these teachings to achieve the predictable result of improved hair protection during permanent reshaping. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) teaches, when a known technique is available to improve a known product or process, a person of ordinary skill would be motivated to apply that technique. Thus, the prior art provides ample and clear motivation to combine the disclosed elements based on shared purpose, compatibility, and predictable benefit.
Regarding the third point, the applicant argues that Example 1 demonstrates unexpected results of reduced hair breakage and that the results are "dramatic" and "unexpected." To establish unexpected results, evidence must show that the claimed invention produces results superior to the closest prior art (see In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991)). The applicant's Example 1 compares Lock 1 (control) with no pretreatment, followed by bleaching and thiolactic acid treatment and Lock 2 (invention) with10% glycine pretreatment, followed by bleaching and thiolactic acid treatment. This comparison fails to establish unexpected results because the applicant does not compare the claimed method to the methods taught by Voisin, Biato, or Sasaki. The control lock received no pretreatment, not a prior art pretreatment. Without a comparison to the closest prior art, the data cannot establish that the results are unexpectedly superior. In addition, the applicant provides no replicates and statistical analysis to demonstrate that the observed difference is significant rather than due to experimental variation. The data in Table 2 lack standard deviations, p-values, or any indication of statistical significance. Also, the experiment suffers from an attribution problem in that it simultaneously varies multiple parameters (i.e., amino acid concentration, pH, presence of pretreatment/treatment sequence), making it impossible to attribute the observed reduction in breakage to the claimed amino acid concentration or pretreatment alone.
Even if the data clearly demonstrated that the effect of reduced breakage is due to the claimed invention, such results would be predictable from the combined teachings of the prior art including Voisin’s teaching of amino acids protect hair during reshaping and Sasaki’s teaching of higher amino acid concentrations provide better protection. The combination of these teachings would lead one of skill to expect enhanced protection. Adding a known protective agent to provide enhanced protection and thus a reduction in breakage is a predictable improvement, not unexpected. The applicant argues that the results are "even more surprising" because the hair was subjected to double-bleaching. However, both locks received identical bleaching treatment, the only variable was the pretreatment. The fact that protection was observed under harsh conditions does not render the results unexpected, it simply confirms that the pretreatment is effective. Thus, the applicant has failed to establish unexpected results that would overcome the strong case of prima facie obviousness.
The applicant did not provide any direct rationale for objecting to the rejection of claim 42 under 35 U.S.C. § 103 over Voisin in view of Biato. Even if traversed on the merits, the rejection of claim 42 is maintained as proper for the reasons stated in the Final Office Action Correspondence, dated 10 November 2025.
The applicant also requests that the double patenting rejections be held in abeyance and indicates willingness to consider a terminal disclaimer upon indication of allowable subject matter. However, the provisional and non-provisional nonstatutory double patenting rejections remain in effect. The Examiner will maintain these rejections pending the applicant's submission of either a terminal disclaimer in compliance with 37 CFR 1.321(c), or arguments traversing the rejections with specific identification of patentably distinct limitations. The examiner notes that the applicant has not substantively traversed these rejections. While the Office may hold double patenting rejections in abeyance in appropriate circumstances, the applicant has not presented arguments demonstrating that the instant claims are patentably distinct from the conflicting claims. Accordingly, the rejections are maintained.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
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, Robert A. Wax can be reached at (571) 272-0623. 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.
/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights