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
Claims 1-18 are pending.
Election/Restriction
Applicant's election with traverse of the following in the reply filed on 11/03/2025 is acknowledged:
Dicaprylyl carbonate as the species of the at least one acyclic carbonate ester having a plurality of C6-C18 fatty chains;
C2-C4 monoalcohol and water as the species of the liquid vehicle;
Amodimethicone as the species of the one or more amino silicones;
Pullulan as the species of the one or more film-forming polymers;
Sclerotium gum as the species of the one or more polysaccharides;
PEG-240/HDI copolymer bis-decyltetradeceth-20 ether as the species of the one or more nonionic associative polymeric thickeners;
Glyceryl stearate and PEG-100 stearate as the species of the one or more surfactants;
C2-C4 monoalcohol as the species of the one or more water soluble solvents; and
Oil as the species of the one or more non-silicone-based fatty compounds.
The traversal is on the grounds that the various species are not independent or distinct within the meaning of 35 USC 121 and MPEP 802.01 and that the Election of Species requirement dated 09/15/2025 states that “the species have mutually exclusive characteristics”, however no evidence is provided to support this assertion and does not identify applicable characteristics nor explain how they are mutually exclusive from one another. The traversal is also on the grounds that examination of the species together would not impose a serious burden on the Office because the identified species belong to art-recognized classes of compounds that would be encompassed by a single search strategy.
This is not found persuasive because the different species of composition have different chemical structures, and therefore have different effects. Further, the generic claims encompass such a multiplicity of species that an unduly extensive and burdensome search would be necessary to search the entire scope of the claims (see MPEP §808.01 (a)).
The requirement is still deemed proper and is therefore made FINAL.
Upon further search and consideration, each of the species elections for the one or more film-forming polymers and the one or more nonionic associative polymeric thickeners set forth in the requirement dated 09/15/2025 are hereby withdrawn. Upon further search and consideration, the species election for the one or more polysaccharides is hereby broadened to starches, gums, and/or celluloses.
Claims 1-18 are being examined 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.
Information Disclosure Statement
The information disclosure statements (IDS) filed 12/08/2023 and 08/28/2024 have been considered by the Examiner. A signed copy of each IDS is included with the present Office Action.
Specification
The disclosure is objected to because of the recitation of trade names and/or marks without the proper symbol in at least Par. [00033], [00049], [00051], [00067], and [00069] of the specification.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks; the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term.
Applicant is requested to check throughout the disclosure for trade names and/or marks missing the proper symbol and make corrections accordingly.
Appropriate correction is required.
Claim Objections
Claims 1 and 16 are objected to because of the following:
The tab indentation of line 8 of claim 1 should be removed;
At the end of line 9 of claim 1, “and” should be added for grammatical correctness;
Appearing at the end of line 5 of claim 16, “and” should be deleted for grammatical correctness;
Appearing at the beginning of line 11 of claim 16, “are” should be deleted for grammatical correctness;
In line 13 of claim 16, “nonionic surfactant” should be amended to “nonionic surfactants” in order to improve claim readability and consistency;
One of (i) and (j) in claim 16 should be deleted in order to remedy the typographical duplication error;
The tab indentation of the fifth to last line of claim 16 should be removed;
The last three lines of claim 16 should be left aligned to be consistent with lines 2-3 of claim 16; and
Either line 4 of claim 1 or line 4 of claim 16 should be amended so that either “% by weight” or “wt.%” is used consistently throughout the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 16-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(a) A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, each of claims 8 and 16 recite a broad recitation and also recite a narrower statement of the range/limitation using “preferably”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 17-18 are rejected for depending from claim 16.
(b) Claim 12 recites the limitation "the polyurethane/polyether thickeners" in line 1. There is insufficient antecedent basis for this limitation in the claim because neither claim 12, claim 10, claim 9, or claim 1 earlier recite “polyurethane/polyether thickeners”. The Examiner suggests amending claim 12 to depend on claim 11 rather than claim 10 in order to overcome this rejection.
(c) Claim 16 is indefinite in the recitation of “wherein the composition is free from…cyclic carbonates other than the at least one acyclic carbonate ester having a plurality of C6-C18 fatty chains” because it is unclear what is excluded or permitted in the claim since cyclic carbonates are necessarily other than acyclic carbonates. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims. Claims 17-18 are rejected for depending from claim 16 without resolving the ambiguity of claim 16.
(d) Claim 16 is indefinite in the recitation of “optionally rinsing the composition from the hair and subjecting the hair to a heat treatment” because it is unclear whether ‘optionally’ applies to only rinsing the composition from the hair, both of rinsing the composition from the hair and subjecting the hair to a heat treatment, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims. Claims 17-18 are rejected for depending from claim 16 without resolving the ambiguity of claim 16.
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) in view of Von Aspern et al (US 2019/0192397 A1, published 06/27/2019).
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 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 does not teach the hair modifying composition comprising dicaprylyl carbonate from about 5-50 wt%.
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, and 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, 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.
The modified process for modifying hair of Kadir et al in view of Von Aspern et al renders obvious instant claims 1-18.
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)).
Conclusion
No claims are allowable.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619