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 .
DETAILED ACTION
The Applicant’s reply filed on 9/10/25 is acknowledged. Claims 1-20 are pending. Claims 1-10, 16, 17 and 20 have been withdrawn. Claims 11, 15 and 18 have been amended. Claims 11-15, 18 and 19 are under consideration.
Rejections Withdrawn
The rejection of Claims 11 and 12 under 35 U.S.C. 102(a)(1) as being anticipated by Bresak et al. (US 4,452,261; cited in IDS) is withdrawn in view of the amended claim(s).
The rejection of Claims 11 and 12 under 35 U.S.C. 102(a)(1) as being anticipated by Nöcker et al. (US 2019/0133909; cited in IDS) is withdrawn in view of the amended claim(s).
The rejection of Claims 11, 12 and 14 under 35 U.S.C. 103 as being unpatentable over Bresak et al. (US 4,452,261; cited in IDS) is withdrawn in view of the amended claim(s).
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 11-15, 18 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 has been amended to recite “…the hair styling composition comprising at least one water-insoluble energy-curable phenol-based monomer (PBM) and at least one of a curing facilitator and an auxiliary polymerization agent miscible therewith, each having an average molecular weight of 10,000 g/mol or less and a solubility in water of 1 wt.% or less”. There is no support in the Specification or originally filed claims for anything other than the HPM or PBMs having the claimed water solubility.
Claim 15 has been amended to recite “natural resins” in line 3. There is no support in the Specification or originally filed claims for all “natural resins”. The term appears only once in the Specification, on page 36, in a definition of “shellac”, a single specific natural resin. Applicant does not have support for the full scope of “natural resins”.
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 15 and 18 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 15 recites the limitation “a co-solvent” in line 11 and then “the one or more co-solvents” in line 13. There is insufficient antecedent basis for this limitation in the claim. It is also unclear how many co-solvents are required in the claim.
Claim 18 recites the limitation “the at least one auxiliary polymerization agent” in line 2. There is insufficient antecedent basis for this limitation in the claim, because claim 15 recites only “an auxiliary polymerization agent”. It is also unclear how many agents are required in the claim.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 12 recites a PBM of Formula I. The claim broadens and does not include all the limitations of Claim 11 because not all structures within the scope of Formula 1 have the water solubility recited in Claim 11 (for example, resorcinol, as evidenced by the Declaration of Sagi Abramovich filed 9/10/25).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11-13, 15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by De Oliveira et al. (BR-102016015982-A2; 2018).
De Oliveira et al. teach formulations which are effective in preventing the formation of bedsores by employing the constituents of cashew nut shell as an antioxidant and antimicrobial (e.g. abstract).
Regarding Claims 11-13, 15 and 18, De Oliveira et al. exemplify a composition comprising cardanol (i.e. PBM according to Formula I, and component of cashew nut liquid, as evidenced by the instant Specification), sunflower oil (i.e. auxiliary polymerization agent which is a triglyceride of fatty acid), EDTA (i.e. chelating agent), and water which is free of a. through d. (e.g. Tables 2 and 3).
Regarding the preamble “A hair styling composition for modifying a shape of mammalian hair fibers”, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). In the instant case, the claimed components of the composition are taught by De Oliveira, therefore the claim has been met.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 11-15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over De Oliveira et al. (BR-102016015982-A2; 2018).
De Oliveira et al. teach formulations which are effective in preventing the formation of bedsores by employing the constituents of cashew nut shell as an antioxidant and antimicrobial (e.g. abstract).
Regarding Claims 11-13, 15 and 18, De Oliveira et al. exemplify a composition comprising cardanol (i.e. PBM according to Formula I, and component of cashew nut liquid, as evidenced by the instant Specification), sunflower oil (i.e. auxiliary polymerization agent which is a triglyceride of fatty acid), EDTA (i.e. chelating agent), and water which is free of a. through d. (e.g. Tables 2 and 3).
Regarding the preamble “A hair styling composition for modifying a shape of mammalian hair fibers”, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). In the instant case, the claimed components of the composition are taught by De Oliveira, therefore the claim has been met.
Regarding Claim 14, De Oliveira teach that the composition comprises 0.03 to 20% of substances derived from the Liquid Cashew Nut Bark (e.g. Claims 6 and 7), which overlaps the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Claims 11, 12, 14, 15, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Nöcker et al. (US 2019/0133909; cited in IDS).
Nöcker et al. teach a process for treating hair wherein the hair is semi permanently shaped and subsequently reshaped with the application of an aqueous composition (e.g. abstract).
Regarding Claims 11 and 12, Nöcker et al. teach a process for treating hair wherein the hair is semi permanently shaped and subsequently reshaped with the application of an aqueous composition comprising catechin and/or resorcinol and their derivatives (i.e. free of a. through d.) (e.g. abstract).
Nöcker et al. teach that the resorcinol derivative has the following formula, which overlaps with the formula I of claim 12:
PNG
media_image1.png
162
354
media_image1.png
Greyscale
Wherein R1 may be hydrogen or methyl, A1 and A2 are the same or different and are selected from hydrogen, C1 to C12 linear or branched alkyl or alkenyl, C7 to C12 aralkyl or arylalkenyl which may have a substituent, C1 to C6 linear or branched alkoxy or alkenyloxy, halogen or —COR2 wherein R2 is selected from C1 to C12 linear or branched alkyl or alkenyl, C7 to C12 aralkyl or arylalkenyl which may have a substituent or C6 to C12 aromatic hydrocarbon which may have a substituent, B is selected from hydrogen, C1 to C12 linear or branched alkyl or alkenyl, C7 to C12 aralkyl or arylalkenyl which may have a substituent, —OR3 or —COOR3 wherein R3 is selected from hydrogen, C1 to C6 linear or branched alkyl or alkenyl, D is selected from hydrogen, hydroxyl, methyl or C1 to C12 linear or branched alkoxy or alkenyloxy, E is selected from hydrogen, hydroxyl or C1 to C6 linear or branched alkyl or alkenyl, or C1 to C6 linear or branched alkoxy or alkenyloxy, and two or three of A1, A2, B and E are hydrogen and the others are not containing sulfonic group.
Regarding Claim 14, Nöcker et al. teach an amount of resorcinol and their derivatives of 1-50 wt%, which overlaps the claimed ranges (e.g. paragraph 0032, claim 8). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claims 15 and 18, Nöcker et al. teach the inclusion of 1-20 wt% lipophilic ingredients, including jojoba oil and fatty acid triglycerides (i.e. auxiliary polymerization agent) (e.g. paragraph 0057).
Regarding Claim 19, Nöcker et al. exemplify compositions having a pH of 8.4, which as evidenced by the instant specification, is a pH other than the isoelectric point of hair (e.g. page 15). More generally, Nöcker et al. teach a pH range of 1.5 to 10, preferably 2 to 9, more preferably 4 to 8 (e.g. paragraph 0033).
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).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 11-15, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/444,693 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims require a hair styling composition for modifying a shape of mammalian hair fibers, the composition comprising: a) at least one water-insoluble energy-curable phenol-based monomer (PBM) having an average molecular weight of 10,000 g/mol or less; and b) water; wherein the hair styling composition is further characterized by one of more of the following features: a- the hair styling composition contains less than 0.1 wt.% of small reactive aldehydes (SRA), the SRA being selected from formaldehyde, formaldehyde-forming chemicals, glutaraldehyde, and glutaraldehyde-forming chemicals; b- the hair styling composition contains less than 1 wt.% of amino acids; c- the hair styling composition contains less than 1 wt.% of peptides; and d- the hair styling composition contains less than 1 wt.% of proteins. Claim 10-14 recite inclusion of a curing facilitator and claims 14 and 15 auxiliary polymerization agent
Claim 11 is met by claim 1.
Claims 12 and 13 are met by claims 2 and 3.
Claim 14 is met by claim 9.
Claim 15 is met by claims 10 and 14.
Claim 18 is met by claims 14 and 15.
Claim 19 is met by claim 18.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments and Declaration
Applicant's arguments filed 9/10/25 have been fully considered but they are not persuasive. Arguments relevant to the current grounds of rejection will be addressed below.
Applicant argues, beginning on page 11, that De Oliveira et al. relates to compositions which are effective in preventing the formation of bedsores by employing constituents of cashew nut shell as antioxidant and antimicrobial agents. In addition to the completely different use for the described compositions between De Oliveira and the subject claims, Applicant notes that claim 11 has been amended to require "at least one of a curing facilitator and an auxiliary polymerization agent miscible therewith" - components that are absent from De Oliveira.
This is not found persuasive. De Oliveira et al. exemplify a composition comprising sunflower oil (i.e. auxiliary polymerization agent which is a triglyceride of fatty acid). Regarding the preamble “A hair styling composition for modifying a shape of mammalian hair fibers”, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (see MPEP 2111.02VII). In the instant case, the claimed components of the composition are taught by De Oliveira, therefore the claim has been met.
Applicant further argues that Nöcker’s water-soluble materials (e.g., resorcinol), cannot predict nor render obvious claimed water-insoluble compositions or the effects rendered therefrom.
This is not found persuasive. Nöcker does not require the compound to be water-soluble and the broader recitation of the derivatives (i.e. Formula II) overlaps and encompasses the claimed compounds.
Applicant argues that for a styling effect to be considered meaningful, the styling resultant from the claimed composition should be able to withstand at least 5 shampooing wash cycles without significant changes in the shape of the styled hair (see page 51, line 21).
This is not found persuasive. The claims are directed to a composition and not to a method of styling hair. The claims require no particular effect of using the composition or require any effect to last through washing. In addition, as Nöcker teaches compounds which are within the structure of the claimed compounds, then the outcomes of styling effect would necessarily be present.
Applicant further argues regarding the provisional nonstatutory double patenting rejection that although the '693 Application is similar to the pending application in that it relates to hair styling compositions, the '693 Application diverges from subject application by further requiring the styling composition to include materials referred to as WHAs (water-soluble hygroscopic agents). Applicant notes that the WHAs of the '693 Application are quite different from the PBMs (and curing facilitators or auxiliary polymerization agents) of the subject claims in that the WHAs are disposed in an aqueous phase of the compositions claimed by the '693 Application.
This is not found persuasive. Copending ‘653 Claims 1-20 require at least one energy-curable water-insoluble phenol-based monomer (PBM). Claim 10-14 recite inclusion of a curing facilitator and claims 14 and 15 auxiliary polymerization agent
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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, David Blanchard can be reached on 571-272-0827. 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.
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619