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 3/23/26 is acknowledged. Claims 1-7, 21, and 24-29 are pending. Claims 1, 5 and 24 have been amended. Claims 1-7, 21 and 24-29 are under consideration.
Objections Withdrawn
The objection to claim 1 is withdrawn in view of the amended claim.
Rejections Withdrawn
The rejection of Claims 1-7, 9, and 21-29 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn in view of the amended claims.
The rejection of Claims 1-7, 9 and 21-29 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claim.
Rejections Maintained and New Grounds of Rejections
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 4/15/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
Claims 1, 24 and 25 are objected to because of the following informalities:
In claim 1, in line 12, “the light” should be “the visible light” for consistency with line 11.
In claim 24, in line 2, “light” should be “visible light” for consistency with claim 1.
In claim 25, in line 2, “light” should be “visible light” for consistency with claim 1.
Appropriate correction is required.
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.
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, 3-7, 21 and 24-29 are rejected under 35 U.S.C. 103 as being unpatentable over Greaves (US 2020/0375866) in view of Shaban et al. (US 2018/0369117).
Greaves teaches a hair treatment process, comprising the application of a composition comprising i) at least one flavin derivative and at least one step of exposing the hair to artificial or natural light radiation, in particular for caring for and/or repairing the hair (e.g. abstract). Greaves teaches the composition comprises at least one flavin derivative, which may be riboflavin-5′-phosphate (i.e. crosslinker compound), at least one polyamino acid, which may be keratin, and at least one amine which is different from the flavin and the polyamino acid, which may be L-arginine (i.e. co-initiator) (e.g. paragraph 0021, 0025 0093, 0097, 0120; Examples).
Greaves does not teach that the keratin comprises both alpha and gamma keratin. This is made up for by the teachings of Shaban et al.
Shaban et al. teach keratin protein cosmetic compositions that include at least one keratin protein derived from human hair and a base cosmetic solution (e.g. abstract). Shaban et al. teach that the keratin compositions reduce hair breakage, reduce hair frizz, and reduce or mend hair split ends (e.g. paragraphs 0008-0010; Claims 11-16; Examples). Shaban et al. teach that the keratin proteins may be a mixture of alpha and gamma keratin (e.g. paragraphs 0015 and 0016; Claim 2). It is noted that Shaban et al. teach that “keratin” and “keratose” may be used interchangeably (e.g. paragraph 0016). Shaban et al. teach that the keratin protein is not denatured and maintains natural keratin protein conformation (i.e. substantially non-degraded and native or sunstantially native conformation) (e.g. paragraph 0007, 0022; Claim 9). Shaban et al. teach that the keratin protein comprises at least 30% alpha keratin to 100% alpha keratin, relative to the gamma keratin, which overlaps with the ratio of 4:1 (e.g. paragraph 0020). 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 1, 3, 4, and 29, it would have been obvious to one of ordinary skill in the art at the time of filing to select the alpha and gamma keratins of Shaban et al. for use in the compositions of Greaves. 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 both of the compositions are useful as hair repair compositions and treatments comprising keratin, and one of ordinary skill would have been motivated to include the alpha and gamma keratins in order to provide the benefits of reduced hair breakage, reduced hair frizz, and reduced or mended hair split ends, as taught by Shaban et al. In the alternative, it would have been obvious to combine the hair repair compositions of Greaves and Shaban et al., resulting in a third composition. "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).
Regarding the limitation, “wherein the alpha keratin has a peak average molecular weight of at least about 443 kDa, and the gamma keratin has a peak average molecular weight of from about 25 to about 35 kD”, the claim also recites that “wherein each of the alpha keratin and gamma keratin maintain native or substantially native protein conformation” therefore the molecular weights are understood as inherently present in the natural proteins. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “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 the limitation “wherein upon exposure to visible light, the keratin protein composition and the activator composition form a photochemically activated composition, the light having a wavelength of from about 445 nm to about 455 nm, an intensity of from about 25,000 lux to about 45,000 lux, and an exposure duration of from about 1 minute to about 10 minutes, and wherein hair treated with the keratin protein composition and the activator composition is exposed to a temperature of no greater than about 85 °C” is a recitation of an intended use of the claimed product. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the combination of Greaves et al. and Shaban et al. teach a composition comprising the claimed components in the claimed amounts, therefore the claim it met. Nevertheless, Greaves do teach steps relating to the exposure of light (e.g. paragraphs 0146-0194).
Regarding Claim 5, Greaves teaches that the polyamino acid is present at 0.01% and 20% by weight, or more preferentially between 0.25% and 1% by weight, which is within the claimed range (e.g. paragraph 0110). Shaban et al. teach about 0.01% to about 100% keratin protein, or 0.01% to about 10% keratin protein, or 0.01% to about 1.00% keratin protein, which is within the claimed range (e.g. paragraph 0027).
Regarding Claim 6, Greaves teaches that the flavin derivative is present at 0.01% and 30% by weight or preferentially between 1% and 5% by weight, which is within the claimed range (e.g. paragraph 0020).
Regarding Claims 7 and 27, Greaves et al. teach that the amino acid is present at 0.01% and 15% by weight or more preferentially between 0.5% and 5% by weight, which is within the claimed range (e.g. paragraph 0114).
Regarding Claim 21, Greaves teaches that the components may be in a multi-compartment kit and separately packaged (e.g. paragraph 0022-0027; Claim 40).
Claims 24, 25 and 28 are directed to intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the claimed composition is taught by the combination of Greaves and Shaban et al., as described supra. Nevertheless, Greaves do teach steps relating to the exposure of light (e.g. paragraphs 0146-0194).
Regarding Claim 26, Greaves and Shaban et al. are silent as to the inclusion of instructions, however, where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (see MPEP 2112.01.III). In addition, it would have been prima facie obvious to provide the kit and compositions Greaves and Shaban et al. with instructions in order to provide ease of application of the composition and kit.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Greaves (US 2020/0375866) in view of Shaban et al. (US 2018/0369117), as applied to Claims 1, 3-7, 21 and 24-29, and further in view of Hoffmann et al. (US 2020/0405615).
Regarding Claims 1, 3-7, 21 and 24-29, the teachings of Greaves and Shaban et al. are described supra. Greaves teaches that the compositions may further comprise a sequestrant (e.g. paragraph 0205). They do not teach the sequestrant is EDTA in 0.01-3 wt%. This is made up for by the teachings of Hoffmann et al.
Hoffmann et al. teach aqueous compositions for the human hair such that the conditioned human hair achieves long lasting conditioning of the human hair (e.g. abstract). Hoffmann et al. teach that the composition comprises sequestering agents, that are selected from polycarboxylate acids; the preferred one is ethylene diamine tetraacetic acid, EDTA. Typical useful concentration range for sequestering agents is of 0.01-2.5% by weight calculated to the total composition (e.g. paragraph 0067).
Regarding Claim 2, it would have been obvious to one of ordinary skill in the art at the time of filing to select 0.01-2.5wt% of EDTA as the sequestrant of Greaves. One of ordinary skill in the art would have predicted success as both Greaves and Hoffmann et al. are directed to hair care formulations comprising sequestrants, and one of ordinary skill in the art would have been motivated to seek out additional guidance on appropriate sequestrants and amounts thereof because Greaves suggests their inclusion but does not provide further detail.
Response to Arguments
Applicant's arguments filed 3/23/26 have been fully considered but they are not persuasive.
Applicant argues, beginning on page 6 that Claim 1 has been amended to recite that the keratin protein composition includes alpha keratin and gamma keratin derived from human hair. Neither Greaves nor Shaban, alone or in combination, teaches or suggests this aspect in the manner now claimed.
This is not found persuasive. As described supra, Shaban et al. teach keratin protein cosmetic compositions that include at least one keratin protein derived from human hair and a base cosmetic solution (e.g. abstract).
Applicant further argues that Greaves does not direct a person of ordinary skill in the art to any particular keratin source, let alone to keratin specifically derived from human hair, and that Shaban does not, however, teach or suggest incorporating human-hair-derived keratin into a photochemical activation system, much less the type disclosed in Greaves.
This is not found persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As described supra, it would have been obvious to one of ordinary skill in the art at the time of filing to select the alpha and gamma keratins of Shaban et al. for use in the compositions of Greaves. One of ordinary skill in the art would have predicted success both of the compositions are useful as hair repair compositions and treatments comprising keratin, and one of ordinary skill would have been motivated to include the alpha and gamma keratins in order to provide the benefits of reduced hair breakage, reduced hair frizz, and reduced or mended hair split ends, as taught by Shaban et al. Greaves does not limit the source of the keratin and one of ordinary skill in the art would have no reason to exclude a human keratin source.
In the alternative, it would have been obvious to combine the hair repair compositions of Greaves and Shaban et al., resulting in a third composition. "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). Greaves does not limit the source of the keratin and one of ordinary skill in the art would have no reason to exclude a human keratin source.
Applicant further argues on page 7 that neither Greaves nor Shaban disclose the claimed molecular weights. This is not found persuasive. As described supra, the claim also recites that “wherein each of the alpha keratin and gamma keratin maintain native or substantially native protein conformation” therefore the molecular weights are understood as inherently present in the natural proteins. “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). Applicant has not explained how the claimed alpha keratin and gamma keratin proteins differ from those disclosed by Shaban or explained how the molecular weights would differ given that they are native or substantially native proteins.
Applicant further argues on page 8 that Greaves provides no guidance that would lead a person of ordinary skill in the art to select, from Shaban, a specific alpha-to-gamma ratio, much less the claimed ratio of about 4:1 and incorporate such into Greaves' light-activated system. Shaban also does not attribute any functional significance to a 4:1 alpha-to-gamma ratio in connection with a photochemical activation process.
This is not found persuasive. As described supra, Shaban et al. teach that the keratin protein comprises at least 30% alpha keratin to 100% alpha keratin, relative to the gamma keratin, which overlaps with the ratio of 4:1 (e.g. paragraph 0020). 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). It would have been equally obvious to have selected any of the disclosed concentration ranges of alpha and gamma keratin, including the ratio of 4:1. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Applicant has not provided such a showing.
Applicant further argues on page 9 that Claim 1 recites that activation of the keratin protein composition and activator composition occurs under a defined and coordinated set of operating parameters. Applicant continues on page 10 that the claimed parameters are not independent variables that may be adjusted in isolation but instead define a narrow and interdependent operational regime in which multiple competing physical and chemical effects must be simultaneously balanced. Applicant continues on page 11 that that the experimental results set forth in the present specification further demonstrate that the claimed parameter ranges are critical to achieving the desired hair-styling outcomes and are not arbitrary selections; In particular, shorter exposure durations within the claimed parameter ranges result in a measurable reduction in frizz while substantially maintaining the natural curl pattern of the hair. In contrast, longer exposure durations within the claimed ranges lead to progressive alteration and relaxation of the curl pattern.
This is not found persuasive. The instant claims are directed to a hair styling kit and not to a method of styling hair. The composition itself does not depend on how a consumer applies and uses the claimed product. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the combination of Greaves et al. and Shaban et al. teach a composition comprising the claimed components in the claimed amounts, therefore the claim it met. Nevertheless, Greaves et al. disclose at least one step of exposing the hair to artificial or natural light radiation (e.g. abstract; paragraphs 0146-0154).
Applicant further argues on page 12 that the proposed combination of Greaves and Shaban further fails because it lacks both a proper motivation to combine and a reasonable expectation of success. The two references are directed to fundamentally different objectives and operate according to different technical principles.
This is not found persuasive. As described supra, it would have been obvious to one of ordinary skill in the art at the time of filing to select the alpha and gamma keratins of Shaban et al. for use in the compositions of Greaves. One of ordinary skill in the art would have predicted success both of the compositions are useful as hair repair compositions and treatments comprising keratin, and one of ordinary skill would have been motivated to include the alpha and gamma keratins in order to provide the benefits of reduced hair breakage, reduced hair frizz, and reduced or mended hair split ends, as taught by Shaban et al. Greaves does not limit the source of the keratin and one of ordinary skill in the art would have no reason to exclude a human keratin source.
Applicant further argues that Hoffmann does not cure the deficiencies of Greaves and Shaban. Greaves at most mentions sequestrants generically among many optional cosmetic additives, but provides no guidance as to selecting EDTA specifically, no disclosure of incorporating EDTA into a human-hair-derived alpha/gamma keratin composition, and no teaching regarding compatibility of EDTA with the claimed keratin kit or with the claimed photochemical activation chemistry.
This is not found persuasive. Greaves teaches that the compositions may further comprise a sequestrant (e.g. paragraph 0205). Hoffmann et al. teach aqueous compositions for the human hair such that the conditioned human hair achieves long lasting conditioning of the human hair (e.g. abstract). Hoffmann et al. teach that the composition comprises sequestering agents, that are selected from polycarboxylate acids; the preferred one is ethylene diamine tetraacetic acid, EDTA. It would have been obvious to one of ordinary skill in the art at the time of filing to select 0.01-2.5wt% of EDTA as the sequestrant of Greaves. One of ordinary skill in the art would have predicted success as both Greaves and Hoffmann et al. are directed to hair care formulations comprising sequestrants, and one of ordinary skill in the art would have been motivated to seek out additional guidance on appropriate sequestrants and amounts thereof because Greaves suggests their inclusion but does not provide further detail. Simple substitution of one known element for another to obtain predictable results is obvious. Applicant has not demonstrated unexpected results stemming from the choice of a sequestrant, or explained why one would not have looked to Hoffmann as a suitable choice of sequestrant.
Accordingly, the rejections are maintained.
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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