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 arguments, filed 12/10/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Applicant’s arguments with respect to claims 1-10, and 13-15, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Status
Claims 1-11 and 13-16 are pending.
Claim 16 is withdrawn.
Claim Interpretation
Claim 11 recites a “gel network system,” and while it does not appear that the “gel network system” is defined by the instant specification, “gel network system” and “gel network” appear to be used interchangeably throughout the instant specification. As such, for purposes of examination, “gel network system” is interpreted as a “gel network.”
Claim Rejections - 35 USC § 112
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, and 13-15, stand 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 the newly amended limitation of wherein the permanent shaping composition is free of a liquid oil, a solid fat, and a wax. It is unclear of the meets and bounds of the claim where the liquid oil, solid fat, and wax, are phases that depend on environmental conditions (i.e., temperature and pressure), which are not claimed or defined by the instant specification. For example, an oil may be liquid at a certain temperature and pressure, but solid under other temperatures and pressures. Further, 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.
Claim 5 recites the phrase “other water soluble physiologically tolerable salts of organic and inorganic bases,” and where the salt of a base is its conjugate acid, it is unclear whether a water-soluble, physiologically tolerable salt of an organic or inorganic base, that itself has no basicity, would have read on the required alkalizing agent. Applicants did not provide arguments with respect to this rejection in their response, accordingly, the claim stand rejected.
Claim 6 recites the limitation “from about 0.1 to about 10 by total weight,” and it is unclear if these amounts are intended to be a percentage, or something else. For purposes of examination, the limitation is interpreted as a wt%.
Claim 14 recites the limitation of “perfume oils,” and claim 1, as newly amended, excludes liquid oils. It is unclear how perfume oils can be included while also not including any liquid oils. For purposes of examination, claim 14 is interpreted without the inclusion of perfume oils.
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, and 13-15, are rejected under 35 U.S.C. 103 as being unpatentable over Schmelz et al (EP 2460512 A1, hereinafter “Schmelz”), as evidenced by 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 (water insoluble polymer) at 2.0 wt%, ethanol at 5.0 wt%, monoethanolamine (alkalizing agent) ad pH 9.3, and water ad 100.0 wt% (example 2). 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). 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).
Schmelz does not teach 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 %, nor an embodiment as instantly claimed in the form of a gel.
Regarding claim 1, it would have been obvious to modify the permanent hair shaping composition of example 2 of Schmelz, which comprises a reducing agent comprising a mercapto functional group, fatty alcohol, non-ionic surfactants, and an alkalizing agent, 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 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 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, thereby meeting the claimed limitation.
Regarding claim 2, the composition made obvious above comprises water as the carrier, thereby meeting the limitation of a cosmetically acceptable aqueous carrier.
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 surfactant laureth 23, a polyoxyethylene C12 alkyl ether, as evidenced by SciFinder above, thereby meeting the claimed limitation.
Regarding claim 10, it would have been obvious to adjust the amount of non-ionic surfactant in the composition made obvious above to those taught to be suitable, such as from 0.05-10 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 11, it would have been obvious to formulate the composition made obvious above in the form of a gel, appearing to read on a gel network system as instantly claimed.
Regarding claim 13, it would have been obvious to further include a thickener to the compositions made obvious above, in order to adjust the viscosity, as taught by Schmelz.
Regarding claim 14, the composition made obvious above comprises ethanol, thereby reading on the limitation of further comprising alcohols.
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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612