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 .
All previous claim rejections indicated in the previous Office action dated January 6, 2026 have been withdrawn in view of the claim amendments made in the response filed on April 2, 2026.
New rejections have been made to address the amended or new claims.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in France on January 21, 2022. It is noted, however, that applicant has not filed a certified copy of the FR2201499 application as required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected 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.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 depends on claim 4, which in turn depends on claim 1; claim 5 requires (d) about 1 to about 10 wt % of one or more fatty compound and (e) about 1 to about 15 wt % of the one or more fatty alcohols; and wherein the weight ratio of (e) to (d) is from about 2:1 to about 15:1. The present specification discloses the weight ratio of the total amount of the one or more fatty alcohols to the total amount of the one or more fatty compounds can be from about 2:1 to about 15:1. The ratio of the amount of the one or more fatty compounds to amount of the fatty alcohol as presently claimed is not supported in the originally filed specification.
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.
Claims 1-4, 7-13, 17-26 and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Verboom et al. (US 8540975 B2, published on September 24, 2013) (“Verboom” hereunder) in view of Iwao et al. (US 4183917 A, published on January 15, 1980) (“Iwao” hereunder).
The amended claim 1 is directed to a hair treatment composition comprising:
About 1 to about 10 wt % of a combination of citric acid and one or more salts of citric acid, wherein the weight ratio of citric acid to salts of citric acid added to form the combination is from 1:10 to about 10:1;
One or more surfactants;
Water; and
One or more fatty compounds chosen from oils, waxes, alkanes, fatty acids, fatty esters, triglyceride compounds, lanolin derivatives thereof, and mixtures thereof;
Wherein the pH of the composition is from about 3 to about 10; and weight percentages are based on the total weight of the composition; and wherein the hair treatment composition is an oil-in-water emulsion.
Verboom discloses a hair styling composition comprising about 1 wt % citric acid, about 5 wt % sodium citrate, about 0.75 wt % of cetrimonium chloride and the balance being an aqueous carrier. See col. 11, line 57 – col. 12, line 7. Since the reference further teaches that the citrate composition preferably has a pH of from about 3 to about 8, the pH of the disclosed citrate composition must be within this range. See col. 3, lines 20-40; the present claims 1-3 and 22. The citrate composition is concurrently used with a composition comprising poly (vinylamine-vinyl formamide) copolymer in a carrier; the treated hair is said to exhibit reduced frizz and styling effects.
Regarding the requirement that the hair treatment composition is an oil-in-water emulsion, Verboom teaches that the citrate composition can be in the form of oil-in-water emulsions, hair grooming gels, lotions, creams, etc., which would obviously include one or more fatty compounds. See col. 8, lines 36 - 43. As the reference further teaches that one or more anionic, nonionic, cationic, amphoteric surfactants can be used, doing so to further stabilize the above formulations would have been prima facie obvious. See col. 8, lines 26-35.
Verboom further teaches to include in the citrate composition additional ingredients such as a conditioning agent, a film former or modifier, a thickener, a surfactant, an emollient, an emulsifier, a fatty alcohol, etc. See col. 6, lines 21 – 27.
The reference teaches that the suitable fatty alcohols include myristyl alcohol, cetyl alcohol, stearyl alcohol, oleyl alcohol, behenyl alcohol, and a mixture thereof. See col. 7, lines 36 – 43. Although the reference teaches that any suitable amount of such fatty alcohols can be used, Example 1 teaches 2 wt % cetyl alcohol is used in the citrate composition.
Verboom fails to specifically teach adding one or more fatty compounds other than fatty alcohols.
Iwao teaches a hair treatment emulsion comprising 5 w% cetyl alcohol and 2 wt % isostearyl palmitate (fatty compound), and nonionic surfactants (POP monobutylether) as well as a cationic surfactant (distearyl dimethylammonium chloride). See Table 4, Example 21.
Given the teachings of Verboom to make emulsions based on the disclosure, one of ordinary skill in the art before the effective filing date would have been obviously motivated to look to prior art such as Iwao for specific teachings on how to formulate such compositions. Since Verboom suggests oil and water emulsions and also suggests that nonionic surfactants could be used, and Iwao teaches an oil and water emulsion for hair conditioning comprising such surfactants, the skilled artisan would have had a reasonable expectation of successfully combining the references and producing a stable emulsion comprising the citrate composition suitable for styling and conditioning hair.
Regarding claims 7 and 8, Verboom teaches that glycols, glycerine, etc. can be used as a plasticizers in an amount ranging from about 0.01 wt % to about 10 wt %. See col. 7, lines 3-20. Although these are not specifically named as a water-soluble solvent, using such plasticizers as taught and suggested by the reference would have obviously resulted in the same composition as defined by applicant in the present claims 7 and 8.
Regarding claims 9 and 10, the reference teaches that suitable thickeners include gums (guar gum, xanthan gum) and acrylates. See 7, lines 21 – 35. Using such thickeners to modify the rheology of the citrate composition as taught, suggested and motivated by the reference would have been prima facie obvious.
Regarding claims 11 and 12, the reference teaches that suitable conditioning agents can include polyquarternium-30 and polyquaternium – 4. See col. 7, line 61 - col. 8, line 25.
Regarding claim 13, Verboom teaches that aminosilicones, one or more PEG-n dimethicone, cyclomethicone, etc. can be used as film modifiers. See col. 7, lines 4 - 20.
Regarding claim 19, the term “a leave-on hair treatment” to describe the claimed composition is a preamble which denotes the intended future use of the claimed subject matter. Verboom teaches that the citrate composition can be suitable for use in “conventional hair styling compositions” such as conventional hair fixative, hair setting and/or hair grooming gels, pomades, sprays, mousses, etc. Thus, the disclosed citrate composition is suitable and capable for use as a leave-on hair treatment composition and meets the present claim 19.
Regarding claims 23 and 25, Verboom teaches that conditioning agents such as cetrimonium chloride can be used in the amount from about 0.25 wt % to about 3 wt %, from about 05 wt % to about 2 wt %, or from about 0.70 wt % to about 1.5 wt %. See col. 8, lines 2-25. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, since the reference teaches the workable ranges of cetrimonium chloride as a conditioning agent, discovery of optimal concentration range to condition the hair by routine experimentations would have only taken ordinary skill in the art.
Claims 24 and 26, require the weight ratio of citric acid to salts of citric acid in the range of about 1:3 to about 3:1, which would cover the range where the lower bound is approximately 1:3.3, as the term “about” is defined to cover +/-10%. See the present published application, [0358]. The disclosed citrate composition in Verboom has a 1:5 weight ratio of citric acid to sodium citrate. It is well settled in patent law that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%). In this case, the reference discloses using citric acid and sodium citrate at the weight ratio of 1:5 instead of 1:3.3. However, the same or overlapping range of amount of the citric acid/citrate salt combination for the same purpose of treating hair, and Verboom teaches that the citrate composition according to the invention can have a pH ranging from about 3 to about 8 by adjusting the amount of citric acid. See col. 3, lines 19-44. Thus, the citrate composition with a slightly lowered pH would still be suitable for same use according to the teachings of Verboom, and no differences are seen between the present composition and the disclosed composition.
Claim 29 is directed to a hair treatment composition comprising:
About 1 to about 10 wt % of a combination of citric acid and one or more salts of citric acid, wherein the weight ratio of citric acid to salts of citric acid added to form the combination is from 1:10 to about 10:1;
One or more surfactants;
Water; and
From about 0.1 to about 12 wt % of one or more cationic conditioning agents chosen from cationic polymers;
Wherein the pH of the composition is from about 3 to about 10; and weight percentages are based on the total weight of the composition; and wherein the hair treatment composition is an oil-in-water emulsion.
Verboom discloses a hair styling composition comprising about 1 wt % citric acid, about 5 wt % sodium citrate, about 0.75 wt % of cetrimonium chloride and the balance being an aqueous carrier. See col. 11, line 57 – col. 12, line 7. Since the reference further teaches that the citrate composition preferably has a pH of from about 3 to about 8, the pH of the disclosed citrate composition must be within this range. See col. 3, lines 20-40. Although this specific embodiment does not contain a cationic polymer, Verboom specifically teaches that cationic polymers such as polyquaternium-39, -4, or VA/Dimethylaminoethyl Methacrylate copolymer can be alternatively used. See col. 8, lines 15-20. Thus, doing so as taught and suggested by the reference would have been prima facie obvious. See present claims 29 and 31.
Iwao teaches a hair treatment emulsion comprising 5 w% cetyl alcohol and 2 wt % isostearyl palmitate (fatty compound), and nonionic surfactants (POP monobutylether) as well as a cationic surfactant (distearyl dimethylammonium chloride). See Table 4, Example 21.
Given the teachings of Verboom to make emulsions based on the disclosure, one of ordinary skill in the art before the effective filing date would have been obviously motivated to look to prior art such as Iwao for specific teachings on how to formulate such compositions. Since Verboom suggests oil and water emulsions and also suggests that nonionic surfactants could be used, and Iwao teaches an oil and water emulsion for hair conditioning comprising such surfactants, the skilled artisan would have had a reasonable expectation of successfully combining the references and producing a stable emulsion comprising the citrate composition suitable for styling and conditioning hair.
Regarding claims 30 and 32, Verboom specifically teaches and suggests that anionic and/or nonionic surfactants can be used. See col. 8, lines 26-35. Doing so as taught and suggested by the reference to stabilize compositions would have been prima facie obvious.
Claims 5, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Verboom and Iwao as applied to claims 1-4, 7-13 and 17-26 above, and further in view of Patel et al. (US 4911919) (“Patel” hereunder).
Regarding claim 14, the Verboom composition comprises (a) about 1 wt % citric acid, about 5 wt % sodium citrate and cetrimonium chloride in water. See col. 11, line 57 – col. 12, line 7. As discussed above, Iwao Example 18 comprises (b) a cationic surfactant and nonionic surfactants; (c) water; (d) a fatty alcohol and (e) a fatty compound in a weight ratio of 3:1; (f) a water-soluble solvent (propylene glycol). Verboom teaches that the pH of the composition is adjusted from about 3 to about 8.
Although Verboom teaches using associative, non-associative or polysaccharides as a thickening agent, the reference fails to specifically mention using (g) nonionic thickening polymers.
Patel teaches oil-in-water emulsion for hair straightening conditioners which comprise a nonionic cellulose polymer and polyvinylpyrrolidone which form a hair relaxing film and a mixture of propylene glycol, mineral oil and volatile dimethyl polysiloxane which plasticize the film. See col. 4, lines 52-68. The composition also contains a fatty alcohol (stearyl alcohol). See Examples 4 and 5. The reference teaches that the resulting film “remains resilient”, non-tacky but adheres to the surface of the conditioned hair strands. The reference teaches that the water-soluble, nonionic, cellulose polymer functions both as a thickening agent and as a film forming agent. See col. 7, lines 24 – 28.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Verboom and Iwao and incorporate to the hair styling composition one or more nonionic polymers of Patel as a film forming agent and a thickening agent; the skilled artisan would have been motivated to do so, as the latter teaches the polymers form resilient, non-tacky film that adheres to the conditioned hair. Since Verboom teaches water-based hair treatment compositions in the form of oil and water emulsion, and also teaches to incorporate to the composition cationic conditioning surfactants, fatty alcohols, film forming agent, plasticizers, etc. the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and produce a stable oil-in-water emulsion comprising a long-lasting styling effects without tacky feeling. See present claims 14 and 15.
The amended claim 5 and claim 14 (e) further requires one or more fatty compounds other than fatty alcohol present in the weight ratio of from about 2:1 to about 15:1. Iowa teaches that “by suitably varying the addition” of the liquid fatty acid esters, a wide variety of preparations can be made, ranging from cream to lotion with various viscosities. The reference teaches that the liquid ester oil improves retention of hair conditioning effects, but also warns against using too much as the addition of over 10 wt % would result in the increase sense of tackiness and poor feeling of use. As discussed above, discovering the optimum or workable range of a variable in a known process is prima facie obvious. See In re Aller. Since Iowa teaches the expected outcome of using the liquid ester oil within the suggested range, varying the amount of the liquid fatty ester to optimize the ratio and the viscosity of the composition to produce a final product with a targeted viscosity and prolonged conditioning effects would have been well within the skill in the art. See also the present claim 16 (e).
Regarding claim 16, the hair treatment composition of Iwao Example 21 comprises (b) 1 wt % the cationic surfactant (distearyl dimethylammonium chloride), (c) 52.8 wt % water, (d) 5 w% cetyl alcohol, (e) 2 wt % isostearyl palmitate (fatty compound), (f) 5 wt % propylene glycol as a water-soluble solvent and (i) other components such as 2 wt % stearic acid.
As for (g) nonionic thickening polymer, Patel teaches that the nonionic water-soluble polymer is used in an amount ranging from 0.25-2.5 % by weight. See col. 3, lines 37-58. Adding the film forming agent/thickener within to the Verboom/Iwao composition to achieve a targeted film-forming property and viscosity of the composition would have been prima facie obvious.
As for (h), Verboom teaches and suggests that aminosilicones can be used as a film plasticizer in an amount ranging from about 0.001-10 wt %. See col. 7, lines 4 – 20. Adding the silicone oil in such amount to obtain plasticized film of the composition would have been prima facie obvious.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Verboom and Iwao as applied to claims 1-4, 7-13 and 17-26 above, and further in view of Ault (US 5804172).
Verboom teaches that the citrate compounds in the citrate composition can be present in an amount from about 6 wt %, but also suggests concentration ranges such as from about 0.1-12 wt %, from about 1 wt -10wt %, etc. See col. 5, line 60- col. 6, line 5. Thus, the presently claimed range of the citric acid/citrate salt compounds of the present claim 27 is well within the taught and suggested range.
Although the reference does not particularly disclose using citric acid and a citrate salt in the weight ratio ranging from about 1:2 to about 2:1, Ault teaches that using these components in 1:1 ratio to remove mineral deposits from hair is well known. See col. 4, lines 1-3, which discloses a combination of citric acid and citric acid in 0.42% and 0.42%, respectively, in a hair treatment composition. The total amount of the citrate compounds in this case is 0.84wt %, which is close to about 1 wt %, the lower bound of the presently claimed range.
Given the teachings of Verboom to use a combination of citric acid and a citrate salt in improving hair styling properties and controlling frizz, one of ordinary skill in the art would have been obviously motivated to look to prior arts such as Ault for further teachings on the weight ratio of the two compounds to be used in hair treatment. Since the latter teaches using citric acid and a citrate salt in 1:1 ratio in removing mineral deposits from hair, the skilled artisan would have been obviously motivated to combine the teachings and adjust the citric acid and citrate salt amounts in the Verboom compositions in such ratio. Since both references are directed to hair conditioning and treating compositions comprising citric acid and citrate salt components as the active agents used in overlapping concentration ranges, the skilled artisan would have had a reasonable expectation in successfully combining the teachings of the references and making a stable hair styling and conditioning composition which removes mineral deposits from the hair.
Regarding the amount of the cationic surfactant in claim 27, Verboom teaches that a conditioning agent such as cetrimonium chloride, which is also a cationic surfactant, can be used in the amount ranging from 0.25-3 wt %. See col. 7, line 61 – col. 8, line 15. Discovery of the optimum amount of the hair conditioning agent to maximize hair conditioning effects by routine experimentations would have been well within the skill in the art.
Response to Arguments
Applicant's arguments filed on April 2, 2026 have been fully considered but they are not persuasive or moot in view of the withdrawal of the previous rejections.
Applicant cites Ex parte Borgman et al. and Ex parte Bathlomaus and argues that “various ingredients function in vastly different ways in different compositions depending upon the other ingredients present and/or the relative amounts.” However, applicant does not specifically point out how the facts of the present case apply in their favor. Unlike these cases in which citric acid was used for different purposes and in different amount than what was required in the claims at issue, Vroom plainly discloses the use of citric acid and salts in improving hair texture; the ratio between the acid and salt and the effective amount to treat hair as presently claimed are also disclosed in the reference. The only difference between Vroom and the presently claimed composition is that the composition is in the form of oil-in-water emulsion comprising a fatty component which is not necessarily a fatty alcohol. Vroom Example 1 is directed to an aqueous composition comprising a fatty alcohol – a fatty component - with a surfactant in a stabilized form. Although applicant asserts this is not an oil-in-water emulsion, it is not clear how such cannot be in the form of an emulsion. Nonetheless, Verboom specifically teaches making oil-in -water emulsions, as indicated in the rejection.
Iowa further teaches hair treatment oil-in-water emulsions comprising a liquid ester oil and a fatty alcohol in the form of an oil-in-water emulsion. In view of the teachings of the references, the claimed composition is viewed an obvious modification of Verboom.
Applicant further argues that the amounts of ratios of citric acid to the citrate according to the present invention provide surprisingly improved properties, but the only citric acid and citrate ratio used in the comparison was the 1:1 ratio, which is the ratio used in Ault.
Applicant also argues that Verboom suggests using citric acid only as a pH adjusting agent, but the examiner respectfully disagrees. The reference specifically refers the composition as “the citrate composition” as the active agent useful in styling and conditioning hair and does not in any way suggest any limited use of the citric acid/citrate combination as a mere pH adjusting agent. 2
Applicant argues that the examiner has not articulated adequate reason as to why a POSITA would be motivated to modify the citrate composition with fatty compounds from Iwao. The examiner respectfully disagrees, as the rejection specifically points out that the teachings of Verboom to make oil-containing products such as oil and water emulsions and cream, etc., and the disclosed examples in Iwao teach and suggest that hair conditioning oil-in-water emulsions containing liquid ester oils with fatty alcohols are plainly known.
Applicant’s arguments on the rejection made over Verboom and Iwao and further in view of Patel are unpersuasive for above reasons, and applicant presents no independent grounds why the pending rejection is in error.
Applicant’s remarks regarding the examiner’s evaluation of the 1.132 declaration dated January 6, 2026 have been fully considered, but does not place the application in condition for allowance. As indicated in the previous Office, in view of the all the evidence as whole, the declaration fails to show an unexpected result over prior art because using a citric acid/citrate salt combination within the presently claimed amount and in ratio as an active hair conditioning agent is well known according to Verboom.
Conclusion
No claims are 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 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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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
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