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 .
Applicant’s response filed on December 9, 2025 has been fully considered but does not place the application in allowable condition.
The previous claim rejection made under 35 U.S.C. 103 as indicated in the Office action dated June 9, 2025 has been modified to address new claim limitations.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over in view of El (FR 2728168 A1, published on June 21, 1996), Oezer (TR 201000532 A2, published January 21, 2011) in view of Erdem (TR 201907711 A1, published on July 22, 2019) and Wolfe (US 20190365635 A1, published on May 29, 2019) and as evidenced by Kleen (EP 2248509 A2, November 10, 2010).
The amended claim 1 is directed to an herbal mixture for hair, beard, eyebrow, eyelash and mustache care consisting of:
25-35% Prunus Amygdalus Dulcis Oil in volume,
10-25% Pinus Pinaster-Turpentine in volume,
25-40% Nigella Sativa Seed Oil in volume,
10-25% Sesamum Indicum Seed Oil in volume, and
0.10-0.4% Tocopherol in volume.
El teaches a cosmetic oil consisting of Nigella sativa oil and Eruca sativa oil present at 4:1 ratio or Nigella sativa oil, Eruca sativa oil and Nasturtium officinal oil at 3:1:1 ratio. The composition is useful for stimulating hair regrowth and eradicating dandruff.
The hair care oil in El lacks other herbal oils in the present claim 1.
Qezer teaches a natural hair care oil which includes 8-12 sweet almond oil (Prunus Amygdalus Dulcis), 3.5-6.5 pine turpentine (Pinus pinaster-turpentine) oil, at least one or any combination of additional vegetable oils, such as 2.5 ml sesame (Sesamum Indicum Seed) oil and black seed ((Nigella Sativa seed) oil, in 100 ml of the hair care oil. See abstract. The reference further teaches adding 2 ml vitamin E (tocopherol) against skin disease and hair breakage. The reference further teaches that pine turpentine is used for dandruff problems.
Erdem also teaches a hair care composition containing an herbal mixture comprising the same components of the present invention; sweet almond oil, pine turpentine, Nigella Oil, Sesame Seed oil, and natural vitamin E present these or other oils. The reference teaches a hair strengthening herbal care lotion comprising at least 50 ml of sweet almond oil, at least 75 ml of pine turpentine oil, at least 20 ml sesame oil, at least 25 ml black cumin oil. Black cumin oil is Nigella oil. See Kleen, translation, [0036]. Erdem further teaches the specific functions of each oil: sweet almond oil recovers irritation and damages on the scalp, and revitalizes hair follicles and is effective in formation of new roots; pine turpentine oil stimulates capillaries and nourishes hair follicles and helps hair grow fast; sesame oil repairs the hair by nourishing it from the inside and allows it to grow quickly; and black cumin seed oil also helps promoting healthy hair growth while preventing shedding, protecting the main structure of the hair, strengthening the hair and minimizing the fracture formation. The reference further teaches that oils with high contents of vitamin E restore hair strands and roots.
It is well settled in patent law combining or substituting art-recognized functional equivalents for same purposes is prima facie obvious. See MPEP 2144.06. In this case, Oezer and Erdem establish that sweet almond oil, pine turpentine, nigella oil and sesame seed oil are known and used in promoting hair growth and functionally equivalent to Nigella sativa oil, Eruca sativa oil and Nasturtium officinal oil which are used in the hair growth oil mixture disclosed in El. Thus, combining the above oils or substituting one for the other to make another herbal oil formulation for hair growth would have been prima facie obvious before the effective filing date of the present application. Further incorporating vitamin E (tocopherol) to prevent hair breakage as motivated by Oezer would have been also obvious.
While the references fail to teach the specific concentration ranges of the components as described in the present claim 1, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, the four herbal oils can be about 25 % by volume, thus incorporating these in approximately equal amount or adjusted amount to obtain the known hair care benefits depending on the desired outcome would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present application. For example, since Nigella oil is well known to promote healthy hair growth, prevent shedding, protect the main structure of the hair, increasing its relative proportion to obtain such effects would have been prima facie obvious. Sweet almond oil is known to recover the scalp from irritation and damages, and revitalizes hair follicles and is effective in formation of new roots, thus incorporating this oil in a relatively larger portion would have been obvious if scalp management was desired. Erdem also teaches that Pine turpentine oil stimulates capillaries and nourishes hair follicles and helps hair grow fast, whereas Oezer teaches benefits of eliminating dandruff issues. Thus, optimizing the amount of pine turpentine oil to make a hair care oil which is effective in hair growth and dandruff management would have been obvious. Sesame oil is known to repair the hair by nourishing it from the inside and allows it to grow quickly, thus optimizing the amount of the oil to obtain such quick hair growth effects would have been also obvious.
Regarding the amount of vitamn E, Wolfe suggests using less than about 0.1% by volume of tocopherol in a hair care oil composition. See [0010]. The range “less than about” 0.1 % overlaps with 0.1 % and renders the presently claimed range obvious. Alternatively, adjusting the amount of tocopherol depending on the desired feel of the oils would have been also obvious. See [0021].
Response to Arguments
Applicant's arguments filed on December 9, 2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the present rejection has been made on the objective standard of what one ordinary skill in the art would have known before the effective filing date of the present application in view of the combined teachings of the references.
Applicant argues that the El invention is specifically designed for scalp and not “appliable to eyelashes and mustaches.” In the present claim, the phrase “for hair, beard, eyebrow, eyelash and mustache” is a preamble which denotes intended future use. See MPEP 2111.02. In this case, all of the cited references are directed to cosmetic compositions suitable for application to hair, skin and scalp which suggests safe administration to the skin area of beard, eyebrow, eyelash and mustache. The references suggest that the prior art components are capable and suitable for the intended use of the present invention, and applying the prior art in this case is proper. Furthermore, applicant’s assert that the El formulation is not appliable to eyelashes and mustaches lacks support.
In response to applicant’s assertion that the references teach different concentration ranges, the examiner respectfully points out that modification of concentrations within known or obvious parameters is prima facie obvious. Applicant asserts that Kleen requires alcohol; El discloses an oil-only formulation consisting of herbal oils known for hair growth, without an alcohol. and substituting one oil for another does not require alcohols. In response to applicant’s assertion that Wolfe was used for facial products, the reference was cited only to show the concentration range for tocopherol which is conventionally used in cosmetic formulations.
Any references not enclosed with the previous communication can be obtained by contacting the examiner or viewed in Patent Center as indicated in the last paragraph of the Office action.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See TR 201900300 A2, teaching an eyebrow oil comprising pine turpine oil, almond oil, sesame oil, black seed oil, etc.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617