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 .
Status of Claims
Claims 1-10 and 21-30 are pending. Claims 11-20 are canceled. Claims 21-30 are newly added. Claim 1 is amended.
Claims 1-10 and 21-30 are examined on their merits.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
New Rejections/Rejections Maintained
Claim Rejections - 35 USC §112(b)
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.
Claim 24 is 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 is rejected under 35 USC 112(b) for reciting “aliphatic amines”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claim 24 recites the broad recitation “aliphatic amines” and the claims also recite “including chain aliphatic polyamines, alicyclic polyamines, and aliphatic aromatic amines”
Regarding claim 24, these broad and then narrow phrases render the claim indefinite because it is unclear whether these limitations are part of the claimed invention, e.g., is the claim limited to aliphatic polyamines, alicyclic polyamines, and aliphatic aromatic amines. See MPEP § 2173.05(d). The intended scope of claim 24 is unclear because it is unclear what is called for. For the purposes of this office action claim 24 will be interpreted using the broader phrase as the limitation.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in reciting "selected from a group comprising....". A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(h).
Claim 24 is rejected as being indefinite in the recitation of the “and” on lines 3, 5 and 6. The recitation of the and on these lines and the punctuation make it unclear whether the limitations in claim 24 are in the alternative, if they are all required, or if there are different subgroups ending with each “and”. It is not clear from the other claims and the specification does not provide a way of ascertaining exactly whether the limitations are all required, are all alternatives, or are alternative subgroups. One of ordinary skill in the art would not be reasonably apprised of what exactly is being referred to by this phrasing in claim 24.
For the purposes of this office action the limitations of claim 24 will be construed to be reciting alternatives.
Claim 25 is rejected under 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 applicant regards as the invention.
Claim 25 is rejected for the recitation of “the at least one cross-linker”. Claim 23 does not recite “at least one cross-linker”, so there is also insufficient antecedent basis for this limitation in the claim. There is no recitation of “at least one cross-linker” in claim 5 or claim 1.
Claims 26-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in reciting "selected from a group comprising....". A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(h).
Claim 27 is rejected under 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 applicant regards as the invention.
Claim 27 is rejected for the recitation of “the at least one curing accelerator”. Claim 26 does not recite “at least one curing accelerator”, so there is also insufficient antecedent basis for this limitation in the claim. There is no recitation of “at least one curing accelerator” in claim 23, 5 or 1.
Claim 28 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in reciting "selected from a group comprising....". A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(h).
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 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.
The rejection of claims 1-10 and newly applied to claims 21-28, 30 under 35 U.S.C. 103 as being unpatentable over Baumer et al. WO 2007/144189 (12/21/2007) in view of Anderson US 2014/0360522 (12/11/2014) as evidenced by Poly(dimethylsiloxane) | 9016-00-6 and the instant specification.
Baumer et al. (Baumer) teaches a personal care composition that contains condensation polymers having in the polymer backbone at least one unit comprising an amide bond attached to a trismethylene aminomethane group. (See Abstract). The composition can be a styling gel or hair straightening preparation or liquid hair setting preparations, hair foams or hair spray . (See page 35, lines 5-16). The composition also contains oil and water. (See page 35, lines 1-10). The composition can be a hair straightening composition used in a method of hair straightening as called for in instant claim 30. (See page 34, lines 5-15).
Baumer teaches that the monomer has a molecular weight between 600 g/mol to 50,000 g/mol. (See page 6, lines 15-25). This overlaps with the 5000 g/mol or less called for in instant claim 22.
The composition can also include glycidyl ethers. (See page 11, lines 4-10). Glycidyl ethers are called for in claim 3 and it is a water-insoluble thermally-curable epoxy monomer as called for in instant claim 1a). The composition can be in an oil-in-water emulsion and the co-solvent can be a wax such as beeswax. An oil-in-water emulsion is called for in instant claim 21. (See page 16, lines 15-25). Being in the oil phase of the emulsion the beeswax will be in the same phase as the T-EM as called or in instant claim 5. (See page 44, lines 6-20).
Baumer teaches that the monomer has a molecular weight between 600 g/mol to 50,000 g/mol. (See page 6, lines 15-25). This overlaps with the 5000 g/mol or less called for in instant claim 22.
The alkanolamine of formula VIII is a crosslinker for the glycidyl ether TEMs in the thermally curable system. (See Baumer claim 29). The glycidyl ether react with various amine-functionalized crosslinkers such as the alkanolamine of formula VIII in Baumer claim 29. The alkanolamine of formula VIII is a polyamine as called for in instant claim 24. Baumer teaches that the polymer can have a molecular weight between 600 g/mol to 50,000 g/mol. (See page 6, lines 15-25). With the polymer having a molecular weight of 600 g/mol, this requires the crosslinker to have a molecular weight of 600 g/mol or less which overlaps with the 10,000 g/mol or less called for in instant claim 23.
Baumer teaches that its composition can have an oil which can be dimethylpolysiloxane. (See page 45, lines 1-8). Dimethylpolysiloxane has a surface tension of 19 mM/m as evidenced by Poly(dimethylsiloxane) | 9016-00-6. 19 mM/m is less than 25mN/m as called for in instant claim 7. The number average molecular weight of the silicone oils is preferably in the range of 100 to 150000 g/mol. (See page 45, lines 1-8). The pH of the composition is between 3-10 which overlaps with a pH that is other than an isoelectric point of the hair fibers as called for in instant claim 10.
Piperidine can be present in the composition as called for in instant claim 26. (See page 9, lines 5-20). The piperidine can be present in an amount of between 0.01 and 5.0 mg equivalent/gram polymer and the polymer can be present in an amount of from 0.01 to 20.0 wt% of the composition. (See page 10, lines 1-10 and page 12, lines 1-5). This overlaps with the at least 0.001% to 5 wt% by weight of the hair styling composition called for in instant claim 27.
The polymer being present in an amount of from 0.01 to 20.0 wt% of the composition means that the crosslinker is present in the composition at an amount that must overlaps with the at least 0.001 wt% called for in instant claim 25.
Antioxidants can be present as called for in claim 28. (See page 15). The composition can be a hair straightening preparation for use in a hair straightening method as called for in claim 30. (See page 34 lines, 5-15)
An aldehyde is not taught as an essential element of the composition, so Baumer teaches a composition that is free of small reactive aldehydes. Being free of small reactive aldehydes means having less than 0.1 wt% of small reactive aldehydes as called for in instant claim 1.
Baumer does not teach a step of applying the composition to hair and waiting an amount of time with the composition in contact with the hair nor does Baumer teach the application of heat to the composition covered hair. This deficiency is made up for with the teachings of Anderson.
Anderson teaches a hair management process in which the hair and scalp are washed, towel dried, an oil composition is applied to the hair, the hair is covered with a cap and then hair moisturizer is applied after the cap is removed and then the hair is styled. (See Abstract). The hair can be styled by styling it with hair rollers which causes the hair to be in a desired modified shape which is different from the native shape of the hair as called for in instant claim 2.
Before the composition is applied the hair is washed which reads on the hair fibers being cleaned prior to applying the hair styling composition to the hair fibers as called for in instant claim 6. Anderson also teaches shampooing the hair (i.e., applying a cleaner with a cleansing agent) after allowing the hair to remain in contact with the hair composition as called for in instant claim 8. (See Anderson claim 17).
Anderson teaches that after the hair is allowed to set with the composition on it for about 5 to about 8 hours, the hair is blown dry on the low setting. (See Anderson claim 15). The temperature of a blow dryer at low setting ranges from about 60 ˚ Celsius to about 80 ˚ Celsius. The blow drying of the hair is the applying of thermal energy to the composition covered hair and raises the composition coated hair fibers to at least 50 degrees Celsius as called for in instant claim 1 c).
Anderson teaches that its process reduced the need to wash hair daily and resolves the problem of offensive smell due to lack of washing. (See Anderson claims 21 and 22).
Anderson also teaches a step of its hair management process in which the composition containing oil is applied to the hair, the cap is applied to the hair and the cap remains on the composition coated hair for about 6 to about 8 hours. This is more than five minutes as called for in instant claim 1b).
It would have been prima facie obvious to one of ordinary skill in the art before the earliest effective filing date making the composition of Baumer would apply the composition to washed hair fibers, let them sit for 6 to 8 hours, style the hair with curlers or a straightener and then blow dry the hair on low heat setting in order to have a method that reduced the need to wash hair daily and resolves the problem of offensive smell due to lack of washing.
With respect to claim 9’s property of the treated fibers and the untreated fibers display at least one endotherm temperature within 4 degrees Celsius from one another as measured by thermal analysis, the prior art is silent as to this property. However, the prior art of Baumer in view of Anderson teaches the same steps using the same components as that claimed. Namely, Baumer in view of Anderson teaches applying a hair styling composition comprising at least glycridyl ether and a silicone oil and water in an emulsion with beeswax to hair fibers, waiting for 6 to 8 hours, styling the hair with hair curlers and then blow drying the hair with the composition on it so as to obtain treated hair fibers. Following the teachings of the prior art would necessarily cause the treated fibers and the untreated fibers display at least one endotherm temperature within 4 degrees Celsius from one another as measured by thermal analysis as evidenced by the specification at [0211].
With respect to claim 1’s property of the partial penetration of the T-Ems into the hair fibers being ensured by allowing the hair styling composition to remain in contact with the hair fibers for at least 5 minutes, the prior art of Anderson expressly teaches keeping the composition in contact with the hair for 6 to 8 hours which is at least 5 minutes. The prior art of Baumer in view of Anderson teaches the same steps using the same components as that claimed. Namely, Baumer in view of Anderson teaches applying a hair styling composition comprising at least glycidyl ether and a silicone oil and water in an emulsion with beeswax to hair fibers, waiting for 6 to 8 hours, styling the hair with hair curlers and then blow drying the hair with the composition on it so as to obtain treated hair fibers. Following the teachings of the prior art would necessarily cause the partial penetration of the T-EM(s) into the hair fibers as evidenced by the specification at [0016].
A composition having the same components as those claimed will necessarily have the same properties as those claimed. See MPEP 2112.01[R-3]: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Baumer et al. WO 2007/144189 (12/21/2007) in view of Anderson US 2014/0360522 (12/11/2014) as evidenced by Poly(dimethylsiloxane) | 9016-00-6 and the instant specification as applied to claims 1-10 and 21-28 and 30 and further in view of Benn et al. US 2015/0342857 (12/3/2015).
The teachings of Baumer in view of Anderson are described supra. Baumer in view of Anderson do not teach a kit. This deficiency is made up for with the teachings of Benn et al.
Benn et al. (Benn) teaches a composition for relaxing or straightening hair. (See Abstract). Benn teaches that depending on the composition, the composition may be packaged as a first unit of a multi-compartment kit which contains a second unit comprising a composition containing another ingredient. The compositions of the first and second units are mixed and the resulting mixture or composition is applied onto hair in order to relax or straighten the hair. (See [0274]). Benn teaches that its composition are highly effective at hair straightening. (See [0287-288]).
It would have been prima facie obvious to one of ordinary skill in the art before the earliest effective filing date making the composition of Baumer in view of Anderson would use a kit so that the composition may be packaged as a two unit multi-compartment kit and mix the compositions of the first and second units and apply to hair to straighten the hair in order to have highly effective hair straightening from a composition that is fresh right before application to the hair.
Response to Arguments
Applicants comments of December 29, 2025 have been considered carefully. Applicants note the amendments to the claims and where support for the amendments can be found.
Applicants assert that taken together, Applicant submits that Baumer does not describe Applicants’ compositions and Anderson does not describe the methods of styling hair as claimed. There is also no motivation to modify the teachings of the prior art to arrive at the claimed method.
Applicants assert that Baumer notes that its compositions may also include glycidyl ethers, which comprise an epoxy ring. Applicants argue that the modification of Baumer’s condensation polymers takes place before use of the modified polymer. Applicants also argue that the compositions in the claims are devoid of the hyperbranched condensation polymers which are essentials to Baumer.
Applicants argue that Baumer’s composition are described for use in surface treatment of hair and not for penetration within the hair fiber.
Applicants assert that Anderson’s composition are moisturizing and not styling and a skilled artisan would not be motivated to combine Anderson’s suggestion to apply a moisturizing composition to a scalp for an extended period of time for styling and that running fingers through hair is not tantamount to styling.
Applicants’ arguments have been carefully considered and are not found to be sufficiently persuasive.
Baumer teaches the application of at least one polymers and additives which can include glycidyl ethers. Therefore, the composition, which can also include glycidyl ethers, can have a water-insoluble thermally-curable epoxy monomer upon application to the hair fibers. Just because glycidyl ethers are an additive does not negate their teaching as a component in the composition that can be applied to the hair fibers.
Applicants’ argument that the compositions in the claims are devoid of the hyperbranched condensation polymers which are essentials to Baumer is not found to be persuasive because the claims are drafted with the open ended transitional phrase of “comprising” which allows the hyperbranched condensation polymers to be present in the prior art and still read on the claims.
Applicants’ argument that Baumer’s composition are described for use in surface treatment of hair and not for penetration within the hair fiber is not persuasive because the effect of Baumer’s compositions is the same whether they are described as for use in surface treatment of hair or for its penetration. The same chemicals will be used which will have the same effect, regardless of how the composition is described in Baumer itself.
Similarly, Andersons’ description as a moisturizing composition will not prevent the composition from styling hair when it is applied to the hair fibers and has its effect. The same steps are being taught as are being described and the compositions have the same elements as those claimed. Therefore, the same effect will take place whether that effect is described or recognized in the prior art. Applicants’ assertion that Anderson’s composition are moisturizing and not styling and a skilled artisan would not be motivated to combine Anderson’s suggestion to apply a moisturizing composition to a scalp for an extended period of time for styling are not found to be persuasive. The language of the claims only requires styling and the placing of the hair fibers in a modified shape, which would be accomplished even by running fingers through hair. Straightening hair with fingers or tousling hair with fingers is still styling and placing the hair fibers in a modified shape, so the prior art does read on the claimed language. A person of ordinary skill in the art would recognize this. If Applicants have a different conception of what styling is, it has not been captured in the language of the claims.
There is motivation to combine the teachings of the prior art in that it would have been prima facie obvious to one of ordinary skill in the art before the earliest effective filing date making the composition of Baumer would apply the composition to washed hair fibers, let them sit for 6 to 8 hours, style the hair with curlers and then blow dry the hair on low heat setting in order to have a method that reduced the need to wash hair daily and resolves the problem of offensive smell due to lack of washing.
Conclusion
Claims 1-10 and 21-30 are rejected.
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.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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