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 12/1/25 is acknowledged. 1-10 and 21-28 are pending. Claims 6, 8 and 9 have been withdrawn. Claims 1 and 3 have been amended. Claims 21-28 are new. Claims 1-5, 7, 10 and 21-28 are under consideration.
Objections Withdrawn
The objection to claim 3 is withdrawn in view of the amended claim.
Rejections Withdrawn
The rejection of Claims 1-5, 7 and 10 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claim(s).
The rejection of Claims 1-5 and 7 under 35 U.S.C. 103 as being unpatentable over Anderson et al. (US 2008/0066773; cited in IDS), as evidenced by NCBI PubChem is withdrawn in view of the amended claim(s).
The rejection of Claim 10 under 35 U.S.C. 103 as being unpatentable over Anderson et al. (US 2008/0066773; cited in IDS), as evidenced by NCBI PubChem, as applied to claims 1-5 and 7, and further in view of Flohr et al. (EP 2772246; cited in IDS) is withdrawn in view of the amended claim(s).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 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 24 and 25 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 24 recites an improper Markush group. A Markush-type claim recites alternatives in a format such as “selected from the group consisting of A, B, and C”. It is improper to use the term “comprising” instead of “consisting of.” Ex parteDotter, 12 USPQ 382 (Bd. App. 1931) (see MPEP 2173.05 and 803.02).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 25 recites the broad recitation “linear or branched, substituted or unsubstituted dialkyl carbodiimides”, and the claim also recites “including dicyclohexyl carbodiimide, n,n'-di-tert-butylcarbodiimide and diisopropyl carbodiimide” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Similarly, claim 25 recites the broad recitation “amino carbodiimides”, and the claim also recites “including 1-(3-dimethylaminopropyl)-3-ethylcarbodiimide” which is the narrower statement of the range/limitation. Similarly, claim 25 recites the broad recitation “silicone carbodiimides”, and the claim also recites “including bis(trimethyl-silyl)-carbodiimide” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 26 is rejected as depending from and not clarifying claim 25.
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, 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 1-5, 10, and 21-28 are rejected under 35 U.S.C. 103 as being unpatentable over Flohr (US 2012/0180807), as evidenced by Fisher Scientific and Micro Mist (beauty.takarabelmont.com; 2018).
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). As evidenced by “Micro Mist”, the device may be used at a temperature of 50 °C;
wherein the hair styling composition contains 0 wt.% of small reactive aldehydes (SRA) (e.g. whole disclosure).
Regarding Claims 1-3, 21, and 25, 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 Flohr 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, Flohr teaches that the monomer is present at 0.1-20 wt% of the composition, which overlaps the claimed range (e.g. paragraph 0064). 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, Flohr teaches 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 0069, 0083, 0101). 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 7, Flohr teaches that the hair is washed prior to application of the hair styling composition (e.g. paragraph 0219).
Regarding Claims 10 and 28, Flohr 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 claimed range.
Regarding Claim 22, Flohr teaches that the monomer composition can be provided to the consumer and/or stylist in ready-to-use form (e.g. paragraph 0051), however, they do not teach away from using the composition immediately after mixing. It would have been obvious to one of ordinary skill in the art to use the composition at a convenient time for the individual user, including not more than 3, or 2, or 1 hour prior to applying the composition to hair. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claims 23 and 26, Flohr 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 0073) and that the monomer is present at 0.1-20 wt% of the composition (e.g. paragraph 0064). This results in an amount of crosslinker of 0.002-2 wt%, which is within the claimed ranges.
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Flohr (US 2012/0180807), as evidenced by Fisher Scientific and Micro Mist (beauty.takarabelmont.com; 2018), as applied to claims 1-5, 10, and 21-28, and further in view of Anderson et al. (US 2008/0066773; cited in IDS).
Regarding Claims 1-5, 10, and 21-28, the teachings of Flohr, Fisher Scientific, and Micro Mist are described supra.
Flohr does not teach that the hair is cleaned prior to application of the monomer solution. This is made up for by the teachings of Anderson et al.
Anderson et al. teach technology for polymerizing monomers on hair in situ to produce desired hair characteristics (e.g. abstract). Anderson et al. teach that the composition may be used to straighten wavy, curly, or frizzy hair. The inventive system can alternatively be used to curl or style hair (e.g. paragraph 0017; Example). Anderson et al. teach a method comprising: applying to individual hair fibers a hair styling composition (e.g. Claim 1; paragraph 0017), the hair styling composition comprising a polymerizable monomer, which may be acrylic (i.e. at least one water-insoluble thermally-curable acid-based monomer), a polymerization initiator (i.e. at least one curing facilitator) and water (e.g. paragraph 0010, 0015 and 0069; Claim 15 and 35). Anderson et al. teach that the hair is washed prior to application of the hair styling composition (e.g. paragraph 0219).
Regarding Claim 7, it would have been obvious to one of ordinary skill in the art at the time of filing to wash the hair as taught by Anderson for use in the method of Flohr. 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 Flohr and Anderson are directed to hair styling methods comprising polymerizing monomers, and one of ordinary skill would have been motivated in order to provide the benefits of a clean surface free of other excess dirt or oil, as taught by Anderson et al. (e.g. paragraph 0219).
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.
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.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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