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 .
Formal Matters
Receipt of Applicant’s response dated 06/15/2026 is acknowledged.
Claims 1-18 are pending.
Claims 1, 8, 12, and 16 are amended.
Claims 1-18 are under consideration to the extent of the elected species, i.e., the at least one acyclic carbonate ester having a plurality of C6-C18 fatty chains is dicaprylyl carbonate, the liquid vehicle is the combination of C2-C4 monoalcohol and water, the one or more amino silicones is amodimethicone, the one or more polysaccharides is starches, gums, and/or celluloses, the one or more surfactants is the combination of glyceryl stearate and PEG-100 stearate, the one or more water soluble solvents is C2-C4 monoalcohol, and the one or more non-silicone-based fatty compounds is oil.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objection to the specification set forth in the Office action dated 02/18/2026 is hereby withdrawn in light of Applicant’s amendments to the specification.
Claim Objections
The objections, with the exception of two (See MAINTAINED GROUNDS OF OBJECTION section below), set forth in the Office action dated 02/18/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The rejections set forth in the Office action dated 02/18/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The rejection set forth in the Office action dated 02/18/2026 is hereby withdrawn in light of Applicant’s amendments to the claims.
MAINTAINED GROUNDS OF OBJECTION
Claim Objections
Claims 1 and 16 remain objected to because of the following:
The last three lines of claim 16 (step (ii)) should be left aligned to be consistent with lines 3-4 of claim 16 (step (i)) (See formatting of claim 1); and
Either claim 1 or claim 16 should be amended so that either “% by weight” or “wt.%” is used consistently throughout the claims.
Appropriate correction is required.
Response to Applicant’s Arguments - Claim Objections
In remarks dated 06/15/2026, it is stated that the claims have been updated as suggested by the Examiner to correct a variety of typographical errors in the claims. The above two objections have not been addressed, and therefore, the above two objections are hereby maintained.
NEW GROUNDS OF REJECTION
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kadir et al (WO 2019/200027 A1, published 10/17/2019, cited in Notice of References dated 02/18/2026) in view of Von Aspern et al (US 2019/0192397 A1, published 06/27/2019, cited in Notice of References dated 02/18/2026).
Kadir et al teach a process for modifying hair including coating hair fibers with a hair modifying composition and contacting the coated hair with a heating appliance at a temperature of at least 150°C for a sufficient time to modify the hair fibers (See entire document, e.g., Abstract).
The hair modifying composition comprises propylene carbonate, a glycol selected from at least one of propylene glycol, 1,3-propane diol, dipropylene glycol, tripropylene glycol, and mixtures thereof, and a cosmetically acceptable carrier, wherein the amount of the propylene carbonate and the glycol ranges from about 16 to about 35 wt% based on the total weight of the composition, and wherein the weight ratio of the propylene carbonate and the glycol ranges from about 0.3 to about 3.5 (e.g., [0019]).
The hair modifying composition may comprise one or more surfactants including cationic surfactants selected from a list including amodimethicone and nonionic surfactants selected from a list including glyceryl stearate and PEG-100 stearate (e.g., [0084], [00104], [00114]). The hair modifying composition may comprise hair fixative polymers including film-forming polymers such as polyacrylic acid and sodium polyacrylate polymer fixatives (e.g., [00197]). The hair modifying composition may comprise polysaccharides selected from a list including gums, celluloses, and starches (e.g., [0082]). The hair modifying composition may comprise hydrophobically modified alkali-swellable and alkali-soluble emulsion polymers such as commercially available Aculyn® 44 (INCI Name: PEG-150/Decyl Alcohol/SMDI Copolymer) and/or Aculyn 46® (INCI Name: PEG- 150/Stearyl Alcohol/SMDI Copolymer) (e.g., [0078]). The solvent/cosmetically acceptable carrier may be selected from water, organic solvent, and combinations of water and organic solvent, wherein examples of organic solvents include linear and branched alcohols, such as ethanol, propanol, isopropanol, hexanol, and the like (e.g., [0069]). The hair modifying composition may comprise conditioning agents including hydrocarbon oils such as dodecane and tridecane (e.g., [00167]-[00168]). The hair modifying composition may comprise any preservative suitable for use in personal care, and may comprise preservatives from 0.01 wt% to 3.0 wt% of the total weight of the hair modifying composition (e.g., [00180],[00185]). The hair modifying composition may comprise humectants including oils with vegetable origins (e.g., [00258]).
The hair modifying composition and corresponding hair modifying process are free or substantially free of formaldehyde, meaning formaldehyde is not used directly, in the composition, or through reaction, during the method (e.g., [0058]). The hair modifying composition and corresponding hair modifying process may be free or substantially free of mercapto or thiol group containing compounds (e.g., [0059]). The hair modifying composition may, i.e. or may not, comprise oxidizing agents and Kadir et al teach that harsh chemical reducing and oxidizing agents can damage the hair and scalp and produce maliferous odors (e.g., [0017], [0070]). Kadir et al teach that peroxide can cause damage to the hair and scalp (e.g., [0002]).
The coated hair may be contacted with a heating appliance, such as a flat iron heated to a temperature ranging from about 150 to about 250°C, for a sufficient time to modify the hair fibers meaning until the desired modification is achieved, such as hair relaxing, hair smoothing, hair waving, hair conditioning, hair repairing, and/or hair straightening (e.g., [0042], [0047]). The hair may be dried to some extent after treatment with the hair modifying composition and prior to application of heat to raise the temperature of the keratin fibers and/or to avoid substantial release of heat to the environment during the heating stage, e.g., partial drying may be achieved by blow drying with a hair dryer (e.g., [0048]). The hair-tresses resulting from the process look shiny and feel smooth and silky without malodor (e.g., [00267]).
Kadir et al do not teach using dicaprylyl carbonate in place of propylene carbonate.
This deficiency is made up for in the teachings of Von Aspern et al.
Von Aspern et al teach a cosmetic agent comprising a) one or more alkanes from the group of undecane, dodecane, and tridecane, b) at least one ester oil from the group of dicarboxylic acid esters, carbonate esters and diol esters, c) crambe abyssinica seed oil, and a cosmetically acceptable carrier (See entire document, e.g., [0026]). The cosmetic agent demonstrates an excellent level of care and in particular provides good shine properties, an improved appearance and preferably improved regeneration of the keratin fibers, provides improved care in respect of their detangling ability and combability, feel, shine and anti-frizz properties, without weighing down the hair (e.g., [0027]-[0028]). The at least one ester oil b) contains merely symmetrical, asymmetrical or cyclic esters of carbonic acid with fatty alcohols, and is very particularly preferably dicaprylyl carbonate (Cetiol® CC) (e.g., [0041]). The cosmetic agent comprises from about 10 to about 60% by weight of component a), from about 10 to about 60% by weight of component b), and from about 1 to about 40% by weight of component c) (e.g., [0044]-[0046]).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the cosmetic agent taught by Von Aspern et al into the hair modifying composition taught by Kadir et al, i.e., provide a process for modifying hair, resulting in hair that looks shiny and feels smooth and silky without malodor, provides good shine properties, an improved appearance, improved regeneration of the keratin fibers, improved care in respect of their detangling ability and combability, feel, shine and anti-frizz properties, without weighing down the hair, the process including coating hair fibers with a hair modifying composition and contacting the coated hair with a flat iron heated to a temperature ranging from about 150 to about 250°C for a sufficient time until the desired hair modification is achieved such as hair relaxing, hair smoothing, hair waving, hair conditioning, hair repairing, and/or hair straightening and optionally partially drying by blow drying with a hair dryer after treatment with the hair modifying composition and prior to application of heat, wherein the hair modifying composition comprises dicaprylyl carbonate as Cetiol® CC from about 10 to about 60% by weight, a glycol selected from at least one of propylene glycol, 1,3-propane diol, dipropylene glycol, tripropylene glycol, and mixtures thereof, one or more alkanes from the group of undecane, dodecane, and tridecane from about 10 to about 60% by weight, crambe abyssinica seed oil from about 1 to about 40% by weight, and the combination of water and linear and/or branched alcohol organic solvents as the solvent/cosmetically acceptable carrier, wherein the combined amount of dicaprylyl carbonate and the glycol ranges from about 16 to about 35% by weight, and wherein the weight ratio of dicaprylyl carbonate to the glycol ranges from about 0.3 to about 3.5, wherein the hair modifying composition further comprises amodimethicone as cationic surfactant, glyceryl stearate and PEG-100 stearate as nonionic surfactants, polyacrylic acid and sodium polyacrylate polymer fixatives as film-forming hair fixative polymers, gums, celluloses, and/or starches as polysaccharides, Aculyn® 44 (INCI Name: PEG-150/Decyl Alcohol/SMDI Copolymer) and/or Aculyn 46® (INCI Name: PEG- 150/Stearyl Alcohol/SMDI Copolymer) as hydrophobically modified alkali-swellable and alkali-soluble emulsion polymers, and preservative(s) from 0.01 to 3.0 % by weight, wherein the hair modifying composition and corresponding hair modifying process are free of formaldehyde, mercapto or thiol group containing compounds, oxidizing agents, and peroxide.
One of ordinary skill in the art would have been motivated to substitute the propylene carbonate in the hair modifying composition of Kadir et al with dicaprylyl carbonate as Cetiol® CC and add one or more alkanes from the group of undecane, dodecane, and tridecane and crambe abyssinica seed oil to the hair modifying composition of Kadir et al, and do so in the amounts taught by Von Aspern et al, because Von Aspern et al teach that the combination of one or more alkanes from the group of undecane, dodecane, and tridecane, at least one ester oil from the group of dicarboxylic acid esters, carbonate esters and diol esters, wherein very particularly preferred is dicaprylyl carbonate as Cetiol® CC, crambe abyssinica seed oil, and a cosmetically acceptable carrier, in the amounts specified above, demonstrate an excellent level of care and in particular provide good shine properties, an improved appearance and preferably improved regeneration of the keratin fibers, provide improved care in respect of their detangling ability and combability, feel, shine and anti-frizz properties, without weighing down the hair, which would be advantageous to the hair modifying process taught by Kadir et al. There would have been a reasonable expectation of success in doing so because of the compatibility of the hair modifying composition of Kadir et al and the cosmetic agent of Von Aspern et al, e.g., the hair modifying composition of Kadir et al is compatible with hydrocarbon oils including dodecane and tridecane and with oils with vegetable origins, the cosmetic agent of Von Aspern et al comprises at least one ester oil selected from a group including symmetrical, asymmetrical or cyclic esters of carbonic acid with fatty alcohols, and both the hair modifying composition of Kadir et al and the cosmetic agent of Von Aspern et al are compositions for treating the hair in cosmetically acceptable carriers.
One of ordinary skill in the art would have been motivated to provide the process for modifying hair without the application of oxidizing agents or peroxide because Kadir et al teach that oxidizing agents can damage the hair and scalp and produce maliferous odors and that peroxide can cause damage to the hair and scalp, and there would have been a reasonable expectation of success because Kadir et al teach that the hair modifying composition is compatible with oxidizing agents, but they are not required, and Kadir et al are silent regarding peroxide as a part of the hair modifying composition.
Regarding the weight percent and temperature ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Thus, the modified process for modifying hair of Kadir et al in view of Von Aspern et al renders obvious instant claims 1-18.
Response to Applicant’s Arguments
Applicant’s arguments filed 06/15/2026 have been considered.
Applicant argues that the rejection under 35 USC 103 set forth in the Office action 02/18/2026 does not articulate a sufficient reason to substitute Von Aspern’s dicaprylyl carbonate for Kadir’s propylene carbonate. Applicant argues that Kadir does not disclose the claimed acyclic carbonate ester, but instead centers on a specific hair-modification system comprising propylene carbonate in combination with selected glycols in defined total amounts and weight ratios followed by heat treatment at elevated temperature. Applicant argues that Kadir does not describe propylene carbonate as a generic carbonate-containing conditioning oil, but instead, specifically requires it in combination with a glycol to achieve the desired result of its heat treatment procedure because of propylene carbonate’s low toxicity, lack of toxic byproducts during heating, and water solubility. Applicant argues that Kadir discloses embodiments that are free or substantially free of alkylene carbonates other than propylene carbonate and this reinforces that Kadir is centered on propylene carbonate. Applicant argues that Von Aspern’s dicaprylyl carbonate serves a materially different purpose and Von Aspern does not teach it as a substitute for propylene carbonate in a heat-activated propylene carbonate/glycol hair-modification system. Applicant argues that the fact that both materials, i.e. propylene carbonate and dicaprylyl carbonate, are used in hair care does not suggest they are interchangeable for Kadir’s purposes. Applicant argues that Kadir’s emphasis on propylene carbonate’s water solubility weights against replacing propylene carbonate with dicaprylyl carbonate and Kadir’s description of compositions being free or substantially free of alkylene carbonate other than propylene carbonate show that Kadir does not treat carbonate-containing compounds as generally interchangeable in its hair-modification system. Applicant argues that the rejection under 35 USC 103 set forth in the Office action 02/18/2026 does not establish a reasonable expectation of success in replacing Kadir’s propylene carbonate with Von Aspern’s dicaprylyl carbonate, and that the Office action’s reliance on general compatibility of hair-treatment ingredients is not a reasonable expectation of success that addresses why the hair-modification function would be preserved.
The above arguments have been fully considered by the Examiner but are not found persuasive because, firstly, the argument regarding that Kadir does not disclose the claimed acyclic carbonate ester is not found persuasive because the rejection under 35 USC 103 set forth above is based on the combined teachings of Kadir and Von Aspern and not their individual teachings. Applicant is reminded that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Applicant is reminded that 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 rejection does not rely on the stance that it would have been obvious to “substitute Von Aspern’s dicaprylyl carbonate for Kadir’s propylene carbonate” or “replacing Kadir’s propylene carbonate with Von Aspern’s dicaprylyl carbonate” as alleged by Applicant, but rather, as can be seen in the rejection above, relies on the stance that it would have been obvious to substitute the propylene carbonate in the hair modifying composition of Kadir et al with dicaprylyl carbonate as Cetiol® CC and add one or more alkanes from the group of undecane, dodecane, and tridecane and crambe abyssinica seed oil to the hair modifying composition of Kadir et al. Further, the rejection does provide sufficient reason for such modification to the process of Kadir et al based on the teaching of Von Aspern et al, i.e., one of ordinary skill in the art would have been motivated to substitute the propylene carbonate in the hair modifying composition of Kadir et al with dicaprylyl carbonate as Cetiol® CC and add one or more alkanes from the group of undecane, dodecane, and tridecane and crambe abyssinica seed oil to the hair modifying composition of Kadir et al, and do so in the amounts taught by Von Aspern et al, because Von Aspern et al teach that the combination of one or more alkanes from the group of undecane, dodecane, and tridecane, at least one ester oil from the group of dicarboxylic acid esters, carbonate esters and diol esters, wherein very particularly preferred is dicaprylyl carbonate as Cetiol® CC, crambe abyssinica seed oil, and a cosmetically acceptable carrier, in the amounts specified above, demonstrate an excellent level of care and in particular provide good shine properties, an improved appearance and preferably improved regeneration of the keratin fibers, provide improved care in respect of their detangling ability and combability, feel, shine and anti-frizz properties, without weighing down the hair, which would be advantageous to the hair modifying process taught by Kadir et al. Further, the rejection does provide a reasonable expectation of success in such modification to the process of Kadir et al based on the teaching of Von Aspern et al being the compatibility of the hair modifying composition of Kadir et al and the cosmetic agent of Von Aspern et al, e.g., the hair modifying composition of Kadir et al is compatible with hydrocarbon oils including dodecane and tridecane and with oils with vegetable origins, the cosmetic agent of Von Aspern et al comprises at least one ester oil selected from a group including symmetrical, asymmetrical or cyclic esters of carbonic acid with fatty alcohols, and both the hair modifying composition of Kadir et al and the cosmetic agent of Von Aspern et al are compositions for treating the hair in cosmetically acceptable carriers. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination (In re Sernaker, 702 F.2d 989, 994-95 (Fed. Cir. 1983)). The art needs to provide a motivation and not the same motivation as Applicant or necessarily recognize the same problem/solution as Applicant. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co. v. Teleflex lnc., 550 U.S. 398,419 (2007). Instead, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420.
Conclusion
No claims are allowable.
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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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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