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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/11/26 has been entered.
Claims 1-10 and 21-28 are pending. Claims 6, 8 and 9 have been withdrawn. Claims 1, 21, 24 and 25 have been amended. Claims 1-5, 7, 10 and 21-28 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 and constitute the complete set presently being applied to the instant application.
Election/Restrictions
Applicant’s election of the Invention of Group I, drawn to a method of styling mammalian hair, and the species of
a. a species of at least one T-AM: having carboxylic acid as the acidic group, with acrylic monomers; and
b. a species of at least one further ingredient: at least one co-solvent as in claim 5;
c. species of one or more additional steps as recited in claims 7 and 9: cleaning the hair fibers,
in the replies filed on 5/25/25 and 7/22/25 is acknowledged.
It is noted that as claim 1 has been amended to recite “A method…consisting of…”, the species of (c) one or more additional steps is moot as the claims are closed to additional unrecited steps.
Claim Rejections - 35 USC § 112
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.
Claims 7 and 22 are 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 1 has been amended to recite “A method…consisting of…”, which closes the claim to additional unrecited steps. Claim 7 broadens claim 1 by further adding a step of pre-polymerizing the hair styling composition and/or pre-treating the hair fibers.
Claim 1 has been amended to recite “A method…consisting of…”, which closes the claim to additional unrecited steps. Claim 22 broadens claim 1 by further adding a step of preparing the hair styling composition.
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 § 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 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 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.
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 1-5, 21, 23, 24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Krause et al. (US 20110064684 A1) as evidenced by Fisher Scientific (2018; previously cited).
Krause et al. teach a method of chemically modifying the internal region of a hair shaft (e.g. abstract).
Krause et al. teach the method consisting of:
a) applying to individual hair fibers a monomer composition (e.g. Claim 1), the composition comprising a an ethylenic monomer having a molecular weight of about 500 g/mole or less, a cross-linker having a molecular weight of about 500 g/mole or less, and water (e.g. Claims 1-2, paragraphs 0033, 0040, 0049). Krause et al. teach that the monomer may be furan-3-acrylic acid, which as evidenced by Fisher Scientific is insoluble in water (0.56 g/L) and has a molecular weight of 138.12 g/mol (e.g. paragraph 0035; claim 4);
b) exposing the hair to a relative humidity of at least 70%, within 1 h of applying the treatment composition, and said exposure lasting for 10 to 90 min (which overlaps the claimed range of at least 10 minutes) for penetration of the monomer into the hair shaft (e.g. paragraph 0050 and); and
c) the hair is exposed to the relative humidity at a preferred temperature of 20° C to 50° C (which overlaps the claimed range of 50° C) applying an implement to the hair, wherein the implement may be a flat iron, curling iron, etc. (e.g. paragraph 0054, 0059, 0061),
wherein the hair styling composition contains 0 wt.% of small reactive aldehydes (SRA) (e.g. whole disclosure).
Regarding Claims 1-3, and 21, while there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. Regarding the time and temperature ranges, the teachings of Krause et al. overlap 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).
Regarding Claim 4, Krause et al. teach that the monomer is present at 0.1-20 wt% of the composition, which overlaps the claimed range (e.g. Claim 1). 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 5, 24 and 27, Krause et al. teach the inclusion of cosmetically acceptable carriers, and mixtures thereof, which may include volatile organic C1-C12 alcohols (i.e. co-solvent), and that the composition may be an oil-in-water emulsion (e.g. paragraph 0049, 0064). As the monomer is water-insoluble, it would be expected by one of ordinary skill in the art to be in an oil phase.
Regarding Claim 23, Krause teaches the ratio of the weight percentage of the monomer to the weight percentage of the crosslinker is from about 50:1 to about 10:1 (e.g. paragraph 0041) and that the monomer is present at 0.1-20 wt% of the composition (e.g. Claim 1). This results in an amount of crosslinker of 0.002-2 wt%, which is within the claimed ranges.
Claims 10 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Krause et al. (US 20110064684 A1) as evidenced by Fisher Scientific (2018; previously cited), as applied to claims 1, 3-5, 21, 23, 24, and 27, and further in view of Flohr (US 2012/0180807).
Regarding Claims 1, 3-5, 21, 23, 24, and 27, the teachings of Krause et al. are described supra.
Krause et al. are silent as to the pH of the composition. This is made up for by the teachings of Flohr.
Flohr teaches a method for chemically modifying the internal region of a hair shaft (e.g. abstract). Flohr teaches the method comprising:
a) applying to individual hair fibers a monomer composition (e.g. Claim 1), the composition comprising a polymerizable monomer having a molecular weight of about 500 g/mole or less, a cross-linker having a molecular weight of about 500 g/mole or less, and water (e.g. paragraphs 0061-0063, 0069 and 0070-0072). Flohr teach that the monomer may be furan-3-acrylic acid, which as evidenced by Fisher Scientific is insoluble in water (0.56 g/L) and has a molecular weight of 138.12 g/mol (e.g. paragraph 0061, claim 4).
b) allowing the monomer composition to remain in contact with the hair fibers for 1-120 minutes (which overlaps the claimed range of at least 10 minutes) for penetration of the monomer into the hair shaft (e.g. paragraph 0063, 0068 and 0070); and
c) exposing the hair to heat using a device including Micro Mist (SD200NIW) by Takara Belmont (e.g. paragraph 0104) and/or applying an implement to the hair, wherein the implement may be a flat iron, curling iron, etc. (e.g. paragraph 0105).
wherein the hair styling composition contains 0 wt.% of small reactive aldehydes (SRA) (e.g. whole disclosure).
Flohr further teaches the monomer composition may have a pH of from about 2.0 to about 9.0, or more preferably from about 4.0 to about 6.9 (i.e. acidic) (e.g. paragraph 0093). As evidenced by the instant specification, the isoelectric point of hair varies between 3.5-5 (e.g. page 12), therefore the pHs of Flohr overlap with the range of claim 28.
Regarding Claims 10 and 28, it would have been obvious to one of ordinary skill in the art at the time of filing to select the pH of Flohr for use with the compositions and method of Krause et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of Krause and Flohr are directed to methods for chemically modifying the internal region of a hair shaft comprising the same monomers, and one would have been motivated to seek out additional guidance as Krause et al. are silent as to the pH of the compositions.
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Krause et al. (US 20110064684 A1) as evidenced by Fisher Scientific (2018; previously cited), as applied to claims 1, 3-5, 21, 23, 24, and 27, and further in view of Kalopissis et al. (GB 1186102; 1967).
Regarding Claims 1, 3-5, 21, 23, 24, and 27, the teachings of Krause et al. are described supra.
Krause et al. do not teach that the crosslinker is a carbodiimide. This is made up for by the teachings of Kalopissis et al.
Kalopissis et al. teach a method of improving the properties of damaged hair comprising applying 0.1-10 wt% of a carbodiimide, and may be an amine carbodiimide (e.g. page 1, lines 36-80 and page 2, lines 1-22).
Regarding Claims 25 and 26, it would have been obvious to one of ordinary skill in the art at the time of filing to include the carbodiimides of Kalopissis et al. in the compositions and methods of Krause et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of Krause and Kalopissis are directed to methods for improving hair by chemically modifying a hair shaft. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5, 7, 10 and 21-28 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.
Conclusion
No claim is allowed.
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.
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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.
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/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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