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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/10/2026 has been entered.
Applicants' arguments, filed 05/04/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 1-11 and 15-17 are pending.
Claim 16 is withdrawn.
Claim Interpretation
The examiner best understands the optional components (e) of claim 1 as also being required to be free of anionic surfactant, cationic surfactant, a liquid oil other than a perfume oil, a solid fat and wax wherein he liquid oil is a liquid and the solid fat is a solid at least at a temperature of about 25 °C. For example, a silicone that is not a liquid oil.
Claim Objections
Claim 3 is objected to because of the following informalities: the semicolons could be replaced by commas. Further, “and their salts thereof”, “and its salts thereof”, “or the isomer mixture resulting therefrom”, and “and their isomer mixtures therefrom” reads a bit awkward and the examiner suggests replacing the above language with “or salts thereof” and “or isomer mixtures thereof”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: “wherein it comprises” should recite “wherein the composition comprises” to make clear the composition is being referred to. Appropriate correction is required.
Claims 5-11 are objected to because of the following informalities: the comma following “The composition” in line 1 of each should be removed in order to be consistent with the preceding claims. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: “and” is missing following the semicolon at the end of (a). Appropriate correction is required.
Claim 17 is objected to because of the following informalities: a comma is missing following “claim 1” in line 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b) or pre-AIA 2nd ¶
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 1-11, 15, and 17, 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.
Claim 1 recites wherein the permanent shaping composition is free of anionic surfactant, cationic surfactant, a liquid oil other than perfume oil, a solid fat, and a wax, and the claim also recites optional components (e). It is unclear of the metes and bounds of the claim where many of the optional classes of components, some of which cited based on their intended use, include components that reasonably overlap the negative proviso limitations. For example, it appears that fatty alcohols, under certain conditions and depending on their carbon chain length, saturation, etc., could potentially read on liquid oils, solid fats, and waxes. Likewise, there are many silicones that are liquid oils and cationic polymers that may also have cationic surfactant properties. These are just a few examples of the overlap of the optional components with the excluded components. From this, it is unclear if these are also to be excluded by the later exclusive proviso, or if the above examples are allowed by the claim. For purposes of examination, the examiner is interpreting the optional components of (e) as also being free of anionic surfactant, cationic surfactant, a liquid oil other than perfume oil, a solid fat, and a wax… For example, a silicone that is not an anionic surfactant, cationic surfactant, a liquid oil other than perfume oil, a solid fat, and a wax, under the specified conditions.
Claims 2-11, 15, and 17, are also rejected for the same reasons for depending upon rejected claim 1.
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.
Claims 1-11, 15, and 17, are rejected under 35 U.S.C. 103 as being unpatentable over Schmelz et al (EP 2460512 A1, hereinafter “Schmelz”), in view of Johnson et al (US 20060269501 A1, hereinafter “Johnson”) and Maresch et al (US 5554362 A, hereinafter “Maresch”), as evidenced by Special Chem (SYNTRAN 5905, 2026), Chemical Navi (NIKKOL BO-50V, retrieved 2026), and SciFinder (Laureth 23, retrieved 2026).
Schmelz teaches permanent hair shaping compositions, wherein one embodiment comprises thioglycolic acid (reducing agent) at 8.0 wt%, C16-C22 fatty alcohol mixture at 3.5 wt%, oleth-50 (non-ionic surfactant) at 2.5 wt%, laureth-23 (non-ionic surfactant) at 1.5 wt%, Syntran 5905 (opacifier) at 2.0 wt%, ethanol at 5.0 wt%, perfume, monoethanolamine (alkalizing agent) ad pH 9.3, and water ad 100.0 wt% (example 2). As evidenced by Special Chem, Syntran 5905 is a styrene/acrylates copolymer that acts as an opacifier. As evidenced by Chemical Navi, Oleth 50 is a polyoxyethylene alkyl ether non-ionic surfactant by addition polymerization of ethylene oxide and oleyl alcohol (C18). As evidenced by SciFinder, laureth-23 is a polyoxyethylene C12 alkyl ether. The amount of fatty alcohols can range from 1-15 wt% (¶ 39). The amount of non-ionic surfactants can range from 0.05-10 wt% (¶ 23). The pH of the compositions can vary from about 6.5 to 10.5 (¶ 20). Examples of suitable fatty alcohols include lauryl alcohol, myristyl alcohol, cetyl alcohol, stearyl alcohol, cetearyl alcohol, behenyl alcohol and their mixtures (¶ 40). As evidenced by the instant specification, these fatty alcohols are linear and/or branched C14-C30 fatty alcohols (see ¶ 19 of the instant specification). The compositions can be in the form of a gel (¶ 41). Thickening agents can be included to adjust viscosity (¶ 23). Optimum hair conditioning is observed (abs). The compositions can be in the form of a kit, wherein the kit comprises at least two compositions kept separately, wherein one of the compositions comprises at least one reducing agent, and the other comprises at least one oxidizing agent (¶ 47). The compositions can comprise organic solvent (¶ 32).
Schmelz does not teach wherein the perfume is a perfume oil specifically, a particular embodiment as instantly claimed comprising the ratio of fatty alcohol to non-ionic surfactant as instantly claimed, the particular amount of alkalizing agent in terms of its weight %, an embodiment as instantly claimed in the form of a gel, nor a solid crystalline gel network as instantly claimed.
Johnson teaches cosmetic compositions that can be applied to the hair, where it was known to formulate the compositions in the form of a solid crystalline gel network (¶ 9). The physical structure of the gel network allows the fatty alcohol to deposit on the hair in sheets, with the fatty ends of the fatty alcohol molecules aligning away from the hair and forming a low friction surface, which contributes to the improved conditioning benefit (¶ 9). The fatty alcohol and secondary surfactant, which includes nonionic surfactants, crystallize to form a crystalline gel network at a temperature below the chain melt temperature of the fatty alcohol (¶ 99-100).
Johnson does not teach wherein the perfume is a perfume oil specifically.
Maresch teaches it was known to include perfume oils in permanent hair shaping compositions comprising a reducing agent comprising a mercapto functional group (abs, examples, claim 3).
Regarding claim 1, it would have been obvious to modify the permanent hair shaping composition of example 2 of Schmelz, which consists of a reducing agent comprising a mercapto functional group, fatty alcohol, non-ionic surfactants, an alkalizing agent, an opacifier, and a perfume, in a pharmaceutically acceptable carrier, by adjusting the amounts of fatty alcohol and non-ionic surfactants within the disclosed ranges, thereby resulting in a ratio that overlaps the weight ratio of about 10:3.5 to 10:1, as instantly claimed.
Regarding the perfume, it would have been obvious to formulate the composition made obvious above with a perfume oil as the perfume, where perfume oils were known to be suitable for permanent hair shaping compositions, as taught by Maresch, in order to achieve desired fragrance properties.
Regarding the total amount of fatty alcohol and non-ionic surfactant of claim 1, where example 2 of Schmelz teaches a total amount of fatty alcohol and non-ionic surfactant of 7.5 wt%, it would have been obvious, even upon adjusting the mixing ratios between the two components, to start with 7.5 wt%, falling within the claimed range.
Regarding the gel network of claim 1, where Schmelz teaches the compositions can be in the form of gels and is directed to hair shaping compositions with optimal hair conditioning, it would have been obvious to formulate the composition made obvious above in the form of a gel network, where the fatty alcohol and nonionic surfactant at least in part form the gel network system, where these gel networks were known to improve the hair conditioning of cosmetic compositions applied to the hair, as taught by Johnson.
Regarding the negative proviso of claim 1, it does not appear that the composition made obvious above comprises any anionic surfactants, cationic surfactants, liquid oils, solid fats, or waxes as instantly claimed, thereby meeting the claimed limitation.
Regarding claim 2, the composition made obvious above comprises an aqueous carrier, thereby meeting the limitation of a cosmetically acceptable aqueous carrier. Purely arguendo, if the mixture of ethanol and water, with water being the predominate carrier, would somehow not read on an aqueous carrier, it would have been obvious to formulate the compositions without ethanol, where Schmelz appears to teach the inclusion of an organic solvent as optional.
Regarding claim 3, the reducing agent in the composition made obvious above is thioglycolic acid, thereby meeting the claimed limitation.
Regarding claim 4, the reducing agent in the composition made obvious above is included at 8.0 wt%, falling within the claimed ranges.
Regarding claim 5, the composition made obvious above comprises monoethanolamine, an alkalizing agent as instantly claimed.
Regarding claim 6, while the exact wt% of the alkalizing agent is not disclosed, the alkalizing agent is taught by Schmelz to be included ad pH 9.3. Accordingly, it would have been well within the relative skills of the skilled artisan to routinely adjust the amount of alkalizing agent to achieve desired pH, which is taught can vary between about 6.5 to 10.5, which would reasonably be expected to overlap the instantly claimed ranges. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Where 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 MPEP 2144.05(II)(A). Additionally, 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).
Regarding claim 7, where the fatty alcohols in the example made obvious above by Schmelz are C16-C22 fatty alcohols, it would have been obvious to select from those suitable fatty alcohols taught by Schmelz, such as lauryl alcohol, cetyl alcohol, stearyl alcohol, cetearyl alcohol, behenyl alcohol and their mixtures, which are evidenced by the instant specification to be linear and/or branched C14-C30 fatty alcohols.
Regarding claim 8, it would have been obvious to adjust the fatty alcohol content in the composition made obvious above to those taught to be suitable, such as from 1-15 wt%, as taught by Schmelz, overlapping the claimed range. 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).
Regarding claim 9, the composition made obvious above comprises the non-ionic surfactants laureth 23 and oleth-50 which are evidenced above as polyoxyethylene alkyl ethers falling within the claimed range.
Regarding claim 10, the amount of nonionic surfactant in the composition made obvious above is 4.0 wt%, falling within the claimed range.
Regarding claim 11, it would have been obvious to formulate the gel network system that is a solid crystalline gel network at a temperature below the chain melt temperature of the fatty alcohol, for the same reasons discussed above by Johnson.
Regarding claim 15, it would have been obvious to include the composition as a kit comprising two compositions kept separately, wherein one of the composition includes the composition made obvious above comprising the reducing agent, and the other is a composition comprising an oxidizing agent, as taught by Schmelz.
Regarding claim 17, where the composition as claimed comprising the same components and in the same amounts, it appears that the functional limitation of odor reduction is inherent to the composition itself. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. See MPEP 2112(II) and (III).
Response to Arguments
Applicants assert Example 2 of Schmelz includes Syntran 5905 which are dispersed particles of a water insoluble polymer. Applicants assert its inclusion conveys conditioning to the hair, etc. Applicants assert that the solid fat and wax excluded by the instant claims are also water insoluble and are known hair conditioning agents just like Syntran 5905. Applicants assert because of this, Syntran 5905 is also excluded by the instant claims. Further, Applicants assert the “consisting of” language cannot be given a reasonably broad interpretation to include Syntran 5905.
Respectfully, this argument is not persuasive. Syntran 5905 is a styrene-acrylates copolymer, which does not appear to be a fat or a wax. As evidenced above, Syntran 5905 is an opacifying agent, which reads on Applicants optional component (e). Applicants appear to be arguing that Syntran 5905 is excluded because it shares functional characteristics with solid fats and waxes, however, common properties does not necessarily mean they are of the same class of material. Water insolubility and conditioning functionality are not unique characteristics that only solid fats and waxes possess. For example, silicones, which are included in the claimed optional components of (e), were also known to have conditioning properties as taught by Johnson (¶¶ 71, 82). While the examiner agrees that “consisting of” language excludes additional unrecited elements, as discussed above, Syntran 5905 is an opacifying agent which is recited as a suitable component in claim 1. Applicants appear to be attempting to distinguish the instant claims form the prior art by what is not to be included via negative proviso limitations and consisting of language, rather than what the composition is, while also including optional broad classes of components, of which many additional components, including Syntran 5905 reasonably read.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
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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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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
Prosecution Insights