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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/30/2026 has been entered.
Response to Amendment
The Amendment filed 03/30/2026 has been entered (also deemed suitable for entry per the Amendment After Final attachment filed 04/03/2026, and found not persuasive for Allowance in the PTOL-303 filed 04/03/2026). Applicant’s amendments are in response to in the Final Office Action mailed 12/01/2025. Applicant’s claims have been amended in the following manner: independent claim 1 has been modified by inclusion of “and reacted combinations thereof” in part (a) of claim 1. As discussed in the PTOL-303, this amended limitation was not considered significantly scope changing because “and reacted combinations thereof” is the predicted result of mixing the polyol monomer and curing facilitator during the curing step of (c), “and reacted combinations thereof” are already predicted to exist within the compositions of independent method of claim 1 (i.e., where “reacted combinations” are supported by the descriptions on pg 29-30 of the Specification, in terms of mechanism of reaction and alternately pre-polymers, in which the molecular weight restriction of pg 4 could still apply). Thus, the same ground of rejection that was applied in the previous Final Office Action is applied herein, but adds minor clarification on “reacted combinations thereof” and to reenforce the conclusions of the PTOL-303.
Because the amended claim scope from 03/30/2026 is patentably indistinct from the prior claim scope, a First Action Final Office Action is appropriate. First Action Final is appropriate when a continuing application claims the same or a patentably indistinct invention, where the rejections made are maintained from the previous office action. See MPEP 706.07(b).
The following objections/rejections are withdrawn: none.
The Examiner further acknowledges the following:
Claims 1-6, 8-10, and 21-31 are pending.
No claims are withdrawn, although a restriction requirement remains in place (see Requirement for Restriction filed 3/27/2025).
Claims 1-6, 8-10, and 21-31 are presented for examination and rejected as set forth below.
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 1-6, 8-10, 21, 24, 26, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (Progress in Organic Coatings, 2020; published online February 12, 2020; cited on the IDS filed 11/24/2022), and in further view of Nandagiri (US 5362486; cited on the IDS filed 06/07/2023) and Glenn (US20150359726A1).
Applicant’s claims are directed to a method of styling mammalian hair fibers having a native shape, the method comprising: a) applying to individual hair fibers a hair styling composition, the hair styling composition comprising at least one water-insoluble thermally-curable polyol monomer (T-PM), at least one curing facilitator miscible therewith, each, and reacted combinations thereof, having an average molecular weight of 10,000 g/mol or less, and water; b) allowing the hair styling composition to remain in contact with the hair fibers for at least 5 minutes; and c) applying thermal energy to at least partially cure at least part of the T-PMs within the hair fibers, said curing occurring while the hair fibers are at a temperature of at least 50°C, so as to obtain treated hair fibers.
In the “wherein” clause, there is a restriction of certain chemicals from the composition, and note that “formaldehyde-forming” and “glutaraldehyde-forming” chemicals are considered to encompass chemicals that degrade to afford formaldehyde or glutaraldehyde, respectively. Although the BRI is applied to terms such as T-PM and curing facilitator, the Examiner looks to the specification for examples of a T-PM (e.g., castor oil) and curing facilitator (e.g., the cross-linker isophorone diisocyanate (IPDI)) (Table 1 on pg 50-51). Finally, it is noted that Applicant’s claims (e.g., instant claim 1) are directed to mammalian hair fibers in general, such that the scope would encompass hair tufts not attached to living mammals (as demonstrated in the Specification in Figure 5A or Example 2) and hair on living mammals.
Zhang teaches castor oil-based waterborne polyurethanes (CWPU) for hair-styling agents (title, abstract).
Regarding claims 1-3 and 5-6, 21, 24: Zhang teaches a method of combing isophorone diisocyanate (IPDI) (MW = 222.3 g/mol) (reads on curing facilitator in claim 1(a), in that it is a cross-linker – see Table 1 of Applicant’s specification), castor oil (reads on T-PM polyol monomer having a MW of 10K g/mol or less in claim 1(a) and encompasses the 5000 g/mol or less of claim 21 – see Table 1 of Applicant’s Specification, where Castor oil is named as the T-PM), and a chain extender and stirred for 10 min at 78 °C (reads on time of claim 1(b) and temperature of 1(c)) (pg 3, paragraph 1 and pg 2, scheme 1). Then, 0.1 % Dibutyltin dilaurate (DBTDL) (reads on curing accelerator) was added till the mixture almost can’t flow, a small amount of MEK (reads on cosolvent of claim 5(I)) was added to reduce the viscosity to finally afford a CWPU emulsion (pg 3, paragraph 1). The castor oil-waterborne polyurethane (CWPU) emulsion (also referred to as a dispersion) was applied to a hair tress (reads on applying to hair in claim 1(a)) and dried for 90s and heated to 120 C for 10s to curl the tress (reads on desired modified shape of claim 2) (pg 3, ‘hair styling test’). The small reactive aldehydes (SRAs) of the “wherein” clause are not required by Zhang’s invention. Note that with regard to method steps, that Zhang teaches a pre-polymerization prior to mixing with water (reads on claim 6(A)).
Zhang does not teach the wt% by weight of the total composition of the castor oil (T-PM), IPDI (cross-linker), and N-methyl diethanolamine (curing accelerator); however, Zhang teaches the relative ratios of the composition being 1.70: 1.00: 0.69 for example (see PUDB164-69, Table 1, pg 3).
Regarding claim 9: As far as the endotherm analysis, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 10: Zhang teaches CWPU emulsion composition samples with a pH at 8.79 (Table 1, PUDB164-69 Sample) or 4.63 (Table 1, PUMD208-119 Sample). Applicant’s specification is turned to for definition of the isoelectric point of hair, which is defined as pH 3.5-5 (pg 10, lines 1-8). Thus, Zhang teaches a composition both within and “other than the isoelectric point of the hair fibers.”
Regarding claim 26: Zhang teaches N-methyl diethanolamine, which fits the non-limiting description of a curing accelerator, as provided by Applicant in the Specification (pg 18, lines 17-30). Applicant defines curing accelerators in a non-limiting manner (i.e., only a few examples are provided, where the broader class such as tertiary amines is defined, taken to mean all tertiary amines provide a “curing acceleration” effect) are tertiary amines and can be incorporated into the polymeric network (pg 18, lines 17-30).
In summary, Zhang teaches most elements of the instant method. However, Zhang teaches first forming the CWPU emulsion from ingredients, prior to application onto the hair, whereas the instant method teaches polymerizing the ingredients while they are on the hair (instant claim 1). Thus, Zhang does not explicitly teach in situ polymerization or that the curing facilitator, co-solvent, and T-PM are in the same phase while in contact with the hair fibers (instant claim 1 and 4-5), does not teach rinsing excess ingredients and conditioning hair (instant claim 8), the additional ingredients (instant claims 28-29), and the kit (instant claims 30).
Nandagiri teaches in situ polymerization in hair (abstract) using different starting materials (i.e., isophorone diisocyanate (IPDI) is directly named (col 6, lines 14-19) and castor oil (MW = 933.4 g/mol) (col 6, last paragraph)), as a way to increase body to the hair and provide more continuous films of polymer into and onto the hair (provides motivation to conduct method in situ as recited in claim 1) (abstract, Nandagiri – claim 1). The penetrative property into hair fibers of these low MW ingredients is inherent to their identity, because an ingredient and its properties are inseparable (i.e., notably, Applicant names IPDI and castor oil as a suitable crosslinker and T-PM, respectively in the Specification Table 1 on pg 50-51). Nandagiri also teaches it is common to use strategies that apply the polymer already preformed or perform the polymerization in situ (col 3). The oligomer is mixed with ethanol and a polymerization initiator (all in same phase as a “mixed solution” to read on claims 4-5), in which the mixed solution is applied to the hair for in situ polymerization at 40 °C over 45 minutes (col 15, lines 10-35). However, temperature and time of the method may be varied to configure (or “reset”) the hair appropriately (abstract). Nandagiri teaches the excess ingredients are washed from the hair, after the treatment (reads on rinsing fibers of claim 8(III)) (col 15, experimental).
With regard to the initial ingredients of claims 28-29, Nandagiri also teaches cosolvents as common additive that is important for solubility of oligomer/prepolymer (col 4, lines 34-46), and emulsifiers for conditioning and aesthetic effects (col 14, lines 9-45), as required by instant claims 28-29.
With regard to the kit of instant claim 30, Nandagiri teaches a treatment process where a pretreatment composition is first applied followed by a cosmetic composition [0469]. Since the compositions are maintained separately prior to application, it implies they are being held in separate containers (such a containers within a kit). “Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.”
Glenn teaches a method hair conditioning to make hair more manageable (reads on conditioning the fibers of claim 8(III)) (background of invention).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair styling process of Zhang to perform the polymer formation in situ (on the hair follicle), add additional cosolvents and emulsifiers, and provide the product in kit form, as taught by Nandagiri, because the in situ approach increases hair body and more continuous films of polymer (in contrast to, forming the polymer first and then applying the polymer to the hair), and Nandagiri also teaches isophorone diisocyanate as a suitable polymerization reagent (col 6, lines 14-19) that can be separate an then combined with castor oil for polymerization (col 6, last paragraph), as well as cosolvents as common additive that is important for solubility of oligomer/prepolymer (col 4, lines 34-46), and emulsifiers for conditioning and aesthetic effects (col 14, lines 9-45).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair styling process of Zhang to add a rinse and conditioning step, as taught by Nandagiri and Glenn, because washing removes excess ingredients and conditioning improves manageability of hair. Zhang has general interest in good hair-styling performance (abstract).
Claims 1-6, 8-10, and 21-31 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (Progress in Organic Coatings, 2020; published online February 12, 2020; cited on the IDS filed 11/24/2022), Nandagiri (US 5362486; cited on the IDS filed 06/07/2023) and Glenn (US20150359726A1), as applied to claims 1-6, 8-10, 21, 24, 26, and 28-30, and in further view of Mahadeshwar (WO2018200969A1), Kanamori (US20180037692A1), and That’s Foxy (2015).
As discussed above, the combined prior art teaches an in-situ method of forming polyurethanes onto the hair to style the hair. However, they do not teach an oil-in-water emulsion (instant claim 22), the amounts (instant claims 23, 25, and 27), nor straightening (instant claim 31).
Mahadeshwar teaches hair treatment compositions comprising a polyurethane latex polymer (abstract) for the purpose of hair styling, hold, memory, improved volume, etc. (pg 2-3) and also as applied to straightening hair (pg 1, lines 12-16). Mahadeshwar teaches both water-in-oil and oil-in-water emulsions as suitable formulation types (pg 14-15), and teaches emulsifiers for O/W emulsions (pg 51).
Kanamori teaches a method of making polyurethanes and the amounts typically used (abstract, document). Note that Kanamori also teaches castor oil as an alternative polyol [0005, 0101], IDPI [0091], and amine catalysts [0130], where the preferred ratios of polyol (no limit on amount) to isocyanate (no limit on amount), and chain extender (no limit on amount) relative amounts are described [0111-0113]. Kanamori teaches polyurethanes are made in both solvated and solvent-free processes in a one-step method [0103-0108]. There is no limit to the amount of solvent used in the polymerization process [0103-0105]. Kanamori teaches that the rate of reaction can depend from the amount of solvent [0128], establishing solvent amount as something a PHOSITA would routinely optimize to alter rate of reaction. Thus, the amounts claimed by 23, 25, and 27 are obvious, based on the broad variability taught for the ratios of reactants and amounts of solvent as acceptable for polyurethane synthesis.
That’s Foxy teaches curling irons vs curling wands for the purpose of straightening or curling hair (pg 3-4). The only difference between straightening hair is through the use of the physical method of fixing the hair (i.e., heating them while in a curl form or heating as a straight hair strand) (pg 3-4). Although Zhang only explicitly teaches curling hair via a curling iron (pg 3, ‘2.4 hair styling test’), it would be obvious to straighten hair by using the curling iron to straighten the hair (reads on instant claim 31), as taught by That’s Foxy (pg 3-4).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the -in-situ hair styling process of the Prior Art by formulating the composition as an oil-in-water emulsion because Mahadeshwar teaches both water-in-oil and oil-in-water emulsions as suitable formulation types (pg 14-15), and teaches emulsifiers for O/W emulsions (pg 51) for hair treatment compositions comprising a polyurethane latex polymer (abstract) for the purpose of hair styling, hold, memory, improved volume, etc. (pg 2-3). Furthermore, Zhang teaches polyurethane formulations (abstract) in terms of emulsions (pg 3, paragraph 1), and Nandagiri also teaches emulsions (‘summary of invention’), and so, specifying the formulation type as oil-in-water emulsion is merely specifying the emulsion type to oil-in-water (where Mahadeshwar also teaches the other common type of emulsion as water-in-oil emulsions), where emulsions in general were taught as suitable by Zhang as suitable for hair styling.
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the -in-situ hair styling process of the Prior Art with the ratios/amounts of ingredients taught by Kanamori in combination with the ratios disclosed by Zhang. Note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)). For example, Zhang teaches a ratio of 1.70:1.00:0.60 (IPDI/CO/Chain Extender), where Kanamori teaches solvated or solvent free processes (which can impact reaction rate) to form polyurethanes with similar ratios of polyol (no limit on amount) to isocyanate (no limit on amount), and chain extender (no limit on amount), thus making the instant amounts of claims 23, 25, and 27 as obvious. Thus, the amount of solvent is a variable that a PHOSITA would optimize in order to improve reaction rate, as applied to the ratios taught by Zhang: See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (indicating that 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). To demonstrate non-obviousness of the claim ranges, data should be provided to support the instant ranges to demonstrate an unexpected effect compared to the Prior Art. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair styling process of the Prior Art to use a curling iron to straighten the hair, as taught by That’s Foxy, as opposed to spiral-wrapping the hair by the curling iron, as taught by Zhang (pg 3, ‘hair styling test’). Thus, the combination of a curling iron and a polyurethane-based composition is enabled to straighten hair, based on the physical motion of straightening the hair vs. wrapping the hair. Furthermore, Mahadeshwar teaches that polyurethane compositions apply to straightening hair (pg 1, lines 12-16).
Note that to break an element of an obviousness rejection, an unexpected result should be demonstrated in the form of an affidavit or declaration (see MPEP 716) or by pointing to the Specification. Any demonstration of unexpected results should be commensurate with the claim scope (i.e., the Specification demonstrates the invention for non-living hair tuft, whereas Applicant claims the method for living mammals (implicitly), where isocyanate sensitivity is a known issue for in situ hair fixative formulations in the Prior Art). Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Thus, to maintain the current claim breadth (that also applies to hair on a living mammal), Applicant should provide data supporting practical use of the invention on a living mammal (whereby the Specification Examples on pg 50-60 generally involve hair tufts).
Response to Arguments
Applicants arguments, see pg 6-11, filed 03/30/2026, with respect to the 103 rejection of claims 1-6, 8-10, and 21-31 under rejection have been fully considered but they are not persuasive. The 103 rejection maintains the same ground of previous rejection, but provides an explanation regarding the minor amendments included, which justifies a First Action Final Office Action. First Action Final is appropriate when a continuing application claims the same or a patentably indistinct invention, where the rejections made are maintained from the previous office action. See MPEP 706.07(b).
Additionally, note the Examiner addressed most arguments from the PTOL-303 (filed 04/03/2026), but will provide further explanation below (i.e., due to being afford more time to completely respond to the arguments), including the inclusion of evidentiary references on the penetrability property of small molecule ingredients (i.e., based on molecular weight) into the hair fiber to provide a more complete explanation to Applicant, which also supports the conclusions of the PTOL-303.
On page 6-11, Applicant argues against the Final Office Action (filed 12/01/2025). The added limitation of “and reacted combinations thereof” does not significantly change the scope of the claim set from the Examiner's perspective, and is considered to represent reacted intermediates and/or the pre-polymers of the Specification (pg 30, lines 15-19), whereby the molecules within the composition are sufficiently small enough (i.e., ''10,000 g/mol or less'' of claim 1) to penetrate within the hair fibers (pg 30, lines 15-19). The Examiner also notes that Applicant provides an inventive embodiment that mixes isophorone diisocyanate (IPDI) and castor oil (on pg 50-53 of the Specification), to support the scope of the instant method claims.
On page 6-11, Applicant mainly argues that the individual and also combined Prior Art on record does not reasonably suggest ''polymerization of monomers within a hair fiber”, as supported in claim 1 by “to ensure at least partial penetration.”
First, note that a general recognized theme of the arguments is that the references are treated piecemeal (i.e., which is especially focused against Zhang’s teachings, whereby Zhang is solely argued against almost exclusively throughout pg 6-8), which is per se unpersuasive. For each individual reference, note that all elements of each prior art reference need not read on the claimed invention, rather, the proper test for obviousness is what the combined teachings would have suggested to a person of ordinary skill in the art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Thus, it is the combined teachings of Prior Art (i.e., Zhang, Nandagiri, Glenn, Mahadeshwar, Kanamori, and That's Foxy), that is relevant to an obviousness analysis.
Furthermore, all references are reasonably analogous to the instant invention (i.e., the instant invention is an in-situ method of polymerization in the scalp/hair area). Applicant is reminded that the scope of analogous art is to be considered broadly. Wyers v. Master Lock Co., No. 2009-1412, 2010 WL 2901839 (Fed. Cir. July 22, 2010). Art is analogous if it is (1) from the same field of endeavor, regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). In this case, all references pertain to cosmetic hair care, and provide relevant teachings in relation to the instant invention of an in situ hair styling process based on ingredient polymerization.
However, the Examiner will respond to arguments of substance when presented (i.e., all attacks solely made against Zhang found on pg 6-8 with regard to not teaching hair fiber penetration are not persuasive, because the obviousness of the 103 rejection also relies on the in situ polymerization teachings of Nandagiri, whereby in situ polymerization has the benefits of better chemical attachment to hair and minimizing absorption of harmful monomers to the user’s skin (col 3, lines 55-70), as also discussed below).
On pg 9, when Applicant states Nandagiri is concerned with the formation of external coatings (i.e., to beneficially alter one or more surface properties of the hair). While Nandagiri teaches effects on the hair ''surface'' or toward'' external coatings'' (as argued by Applicant, as evidence that the compositions (and their ingredients) taught by Nandagiri do not penetrate the hair fiber), these teachings of Nandagiri do not mean that there is no effect of the compositions and/or ingredients within the hair fiber. Nandagiri is merely silent on whether certain compositions and/or ingredients are able to penetrate the hair fiber. Furthermore, Applicant has provided no objective evidence or convincing argument that the in situ processes taught by Nandagiri, including compositions comprising isophorone diisocyanate (IPDI) (col 6, lines 14-19) and castor oil (col 6, last paragraph), do not penetrate the hair fiber (in contrast, Applicant’s inventive embodiment that mixes isophorone diisocyanate (IPDI) and castor oil (on pg 50-53 of the Specification) suggests that the ingredients taught by Nandagiri suitably penetrate and polymerize within the hair fiber).
Additionally, specifically regarding the penetrability of cosmetic ingredients within an in situ method (i.e., Nandagiri teaches in situ polymerization in hair (abstract; col 1, lines 5-20) of compositions comprising isophorone diisocyanate (IPDI) (MW = 222.3 g/mol) (col 6, lines 14-19) and castor oil (MW = 933.4 g/mol) (col 6, last paragraph), the Examiner points to evidentiary evidence regarding the penetrability of these types of ingredients into the hair cortex. Song (Scientific Reports, 2019) teaches “that keratin-peptide complex, cellulose polymers (Mw~250,000) and polypeptides (Mw~10,000) can penetrate hair. Polyethyleneimine and urea (Mw~1200) are known to penetrate to a depth of 6.95 μm, and isocyanate (Mw < 400) penetrated the entire hair” (pg 6, paragraph 7), in which IPDI is a <400 g/mol MW isocyanate. Furthermore, Wendy (Science-y Hair Blog, 2016) teaches castor oil moderately penetrates hair (pg 3).
Thus, the ingredients explicitly discussed by Nandagiri (i.e., isophorone diisocyanate (IPDI) (col 6, lines 14-19) and castor oil (col 6, last paragraph)), for in situ hair polymerization (abstract; col 1, lines 5-20) are known to penetrate the hair fiber, as taught by Song and Wendy (discussed above). Furthermore, the penetrative property into hair fibers of these low MW ingredients is inherent to their identity, because an ingredient and its properties are inseparable. In this case, the beneficial results are expected based on the teachings of the prior art: “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.” In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967), see also In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Therefore, the penetration of these types of small molecule ingredients into the hair fiber is demonstrated as expected by the Prior Art.
Further note, that discovery of a previously unappreciated property does not afford patentability: ''[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. lreco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the discovery of the penetrative property that is demonstrated as inherent to Nandagiri’s compositions comprising IPDI and/or castor oil does not necessarily provide patentable eligibility (whereby the method of applying Nandagiri’s compositions then allows for ingredient penetration into the hair fiber), because Nandagiri did not explicitly discuss the penetrability of the ingredients.
On pg 9-11, Applicant argues that Glenn, Mahadeshwar, Kanamori, and That's Foxy only discuss their disclosures in terms of external coating hair. Note that these references are applied to teach specific limitations of the claim set (where obviousness relies on the teachings of the combined Prior Art), and the references are analogous to the instant claim scope that describes an in situ method of treating hair (as discussed above). As discussed above, Nandagiri teaches the in situ polymerization in hair, as a way to improve hair (abstract; col 1, lines 5-20) using different starting materials, including isophorone diisocyanate (IPDI) (col 6, lines 14-19) and castor oil (col 6, last paragraph), which Song and Wendy teach low molecular weight isocyanates and castor oil to penetrate hair fibers. Nandagiri also teaches the polymerization reaction mechanism between a hydroxyl and isocyanate group leads to polymerization (col 6, lines 1-14). Thus, the proposed effect of the instant invention (i.e., “polymerization within the hair fiber”) is an expected outcome of the combined Prior Art: “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.” In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967), see also In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
On page 10-11, Applicant argues that the high MW of the polymers taught by certain references on record (which includes consideration of the “10,000 g/mol or less” MW limitation of independent claim 1) suggest that many polymers of the Prior Art are only expected to provide an effect on the surface of hair. However, Nandagiri teaches the obviousness of IPDI (MW = 222.3 g/mol) (col 6, lines 14-19) and castor oil (MW = 933.4 g/mol) (col 6, last paragraph) in and in situ method of hair treatment (abstract) via a polymerization mechanism (col 6, lines 1-14). Thus, the low MW ingredients taught by Nandagiri for in situ polymerization in hair meets the claim limitation of “10,000 g/mol or less” and as discussed earlier, the penetrative ability of IPDI and castor oil into hair fibers is inherent to the identity of the ingredients.
Finally, regarding the main point of argument of ''polymerization of monomers within a hair fiber'' (i.e., penetration of ingredients into hair that then polymerize), Applicant only argues the non-obviousness of the 103 rejection (which is not persuasive), and does not provide objective evidence that either invalidates the teachings of a reference on record, or that supports an unexpected result (i.e., a result not expected by the Art, etc.), regarding the ''penetrative'' feature of the instant Application.
Correspondence
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/R.P./Examiner, Art Unit 1614 5/14/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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