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 .
Status of the Claims
Claims 30-49 are pending and under current examination.
Withdrawn Claim Rejections
All rejections under 35 U.S.C. 112(b) are withdrawn in view of the amendments to the claims filed 1/26/2026.
All rejections not reiterated have been withdrawn.
Claim Objections
Claim 31 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 30. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 34 and 35 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 34 recites the limitation that the treatment composition is applied during the bleaching process and claim 35 recites the limitation that the composition is applied to the hair after the bleaching process. However, the amended claim 30 from which claims 34 and 35 depend recites the limitation that the composition is applied before a bleaching process. Therefore, the limitations of claim 34 and 35 fail to further limit the subject matter of claim 30. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Applicant’s amendments to the claims filed 1/26/2026 have necessitated the new grounds of rejection.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 30-40 and 43-46 are rejected under 35 U.S.C. 103 as being unpatentable over Goutsis (U.S. Patent Application No. 2019/0167548, publication date: 6/6/2019, of record) in view of Devin-Baudoin (U.S. Patent No. 6,953,484, issue date: 10/11/2005, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 30 and 31, Goutsis teaches an agent for the treatment of oxidatively damaged human hair [0030] containing one or more aliphatic polyols [0031] and one or more cyclic carbonates [0032]. Citric acid, lactic acid, malic acid, or maleic acid may be present as an acidifying agent [0121]. The composition may also contain cyclodextrins [0132]. The composition may also contain a thickening agent [0130] such as guar gums, xanthan gums, gum arabic, and karaya gum [0131]. The composition may also contain water [0223]. The conditioning agent may have a pH value in the range of 2 to about 10, preferably a pH value from about 5 to about 7 [0119]. The agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166]. The steps of applying the oxidizing agent may be carried out as part of a lightening or bleaching process [0168]. Goutsis also teaches that the conditioning agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166]. The steps of applying the oxidizing agent may be carried out as part of a lightening or bleaching process [0168]. The conditioning composition is left on the hair for a period of from about 2 to about 45 minutes [0173]. Goutsis also teaches that the reduction in damage to keratin fibers rendered by the conditioning composition is understood to mean the reduction of the structural damage to the protein scaffold responsible for the mechanical strength of the fiber [0036].
Regarding claim 32, Goutsis teaches that the conditioning composition is left on the hair for a period of from about 2 to about 45 minutes [0173].
Regarding claim 33, Goutsis teaches that the conditioning agent may be designed as a "leave-on" product and left on the hair [0174].
Regarding claim 34, Goutsis teaches that the conditioning agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166]. The steps of applying the oxidizing agent may be carried out as part of a lightening or bleaching process [0168]. The conditioning agent may be left on the hair without rinsing [0174 and 0181].
Regarding claim 35, Goutsis teaches that the agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166]. The oxidizing agent preparation is rinsed from the hair prior to treating the hair with the conditioning agent [0160-0161].
Regarding claim 36, Goutsis teaches that the conditioning composition is left on the hair for a period of from about 2 to about 45 minutes [0173].
Regarding claims 37 and 38, Goutsis teaches that the additional ingredients, including cyclodextrin, may be present from 0.0001-about 25% by weight [0133]. The acidifying agents may be included in the composition to adjust the pH into the preferred 5 to 7 range [0019-0121]. Selection of the further substances in the composition may be made by the person skilled in the art according to the desired properties of the agents [0133].
Regarding claim 39, Goutsis teaches that citric acid, lactic acid, malic acid, or maleic acid may be present as an acidifying agent [0121].
Regarding claim 40, Goutsis teaches that the acidifying agents may be included in the composition to adjust the pH into the preferred 5 to 7 range [0019-0121].
Regarding claim 43, Goutsis teaches that the additional ingredients, including cyclodextrin, may be present from 0.0001-about 25% by weight based on the total weight of the agents [0133].
Regarding claim 44, Goutsis teaches that the composition may also contain a thickening agent [0130] such as guar gums, xanthan gums, gum arabic, and karaya gum [0131].
Regarding claim 45, Goutsis teaches that the additional ingredients, including thickeners, may be present from 0.0001-about 25% by weight based on the total weight of the agents [0133].
Regarding claim 46, Goutsis teaches that the one or more aliphatic polyols are present from about 1 to about 40% by weight [0014]. Goutsis also teaches that the conditioning agent contains aliphatic polyols and cyclic carbonates in certain quantity ranges and quantity proportions to restructure and repair oxidatively damaged hair [0020].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 30 and 31, Goutsis does not teach that the conditioning composition may be applied before the bleaching process. However, this deficiency is cured by Devin-Baudoin.
Devin-Baudoin teaches a pre-or post-treatment comprising applying a conditioning composition to hair either before or after bleaching. An embodiment of the process is to improving the condition of the hair after bleaching (col. 1 lines 54-62). An improvement in the condition of the fiber means a reduction in the porosity or alkaline solubility of the fiber and an improvement in at least one cosmetic property (col. 2 lines 3-6).
Regarding claims 37 and 38, Goutsis does not teach a specific amount of carboxylic acid present in the composition nor does it disclose a mole or weight ratio of carboxylic acids to cyclodextrins present in the composition.
Regarding claim 40, Goutsis does not teach a specific amount of carboxylic acid present in the composition.
Regarding claim 46, Goutsis does not disclose the total amount of polyols as embraced by the instant claim.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 30 and 31, it would have been prima facie obvious to one of ordinary skill in the art of filing to apply the conditioning composition embraced by Goutsis before a bleaching process. See MPEP 2144.04 (IV) (C), which states “selection of any order of performing steps is prima facie obvious in the absence of new or unexpected results”. One would have understood in view of Devin-Baudoin that a conditioning composition intended to improve the condition of the hair by reducing porosity or alkaline solubility of the fiber may be applied to the hair before or after a bleaching composition. It would have been obvious to apply the conditioning composition of Goutsis before the bleaching composition to obtain the same result of improved condition of the hair after applying a bleaching composition. One of ordinary skill in the art of filing would have been motivated to apply the conditioning composition before the bleaching composition in order to improve the condition of the hair after bleaching. The artisan of ordinary skill in the art would have had reasonable expectation of success because Devin-Baudoin teaches that a conditioning composition may be applied to the hair before or after a bleaching composition in order to improve the condition of the oxidatively treated hair fibers.
Regarding claims 37 and 38, the mole and weight ratio of carboxylic acid to cyclodextrin present in the composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of citric acid present in the composition in order to best achieve the desired results as such would provide advantageous adjustment to the pH of the formulation. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Goutsis teaches that the acidifying agents may be included in the composition to adjust the pH into the preferred 5 to 7 range [0019-0121] and that the additional ingredients, including cyclodextrin, may be present from 0.0001-about 25% by weight [0133]. The Examiner considers it prima facie obvious to optimize the amount of the citric present relative to the amount of cyclodextrin present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of citric acid would have a direct effect on the pH of the composition and therefore be an optimizable variable.
Regarding claim 40, the weight percentage of carboxylic acid present in the composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage of carboxylic acid order to best achieve the desired results as such would provide advantageous formulation effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Goutsis teaches that the acidifying agents may be included in the composition to adjust the pH into the preferred 5 to 7 range [0019-0121]. The Examiner considers it prima facie obvious to optimize the weight percentage of the carboxylic acid present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of carboxylic acid would have a direct effect on the pH of the composition and therefore be an optimizable variable.
Regarding the weight percentage of polyols as specified in claim 46, MPEP 2144.05 states:
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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Goutsis teaches that the conditioning agent contains aliphatic polyols and cyclic carbonates in certain quantity ranges and quantity proportions to restructure and repair oxidatively damaged hair [0020]. The Applicants' specification provides no evidence that the selected weight percentage of polyols in claim 46 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effect of the ratio of aliphatic polyols to cyclic carbonates on the restructuring and repair effects of the composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of polyols to the weight percentage embraced by the instant claim. One of ordinary skill in the art would have been motivated to change the weight percentage of polyol as this could be expected to be advantageous for adjusting the restructure and repair properties of the composition.
Claims 41 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Goutsis (U.S. Patent Application No. 2019/0167548, publication date: 6/6/2019, of record) in view of Devin-Baudoin (U.S. Patent No. 6,953,484, issue date: 10/11/2005, of record), as applied to claims 30-40 and 43-46 above, and further in view of Van Gogh (U.S. Patent Application No. 2013/0149271, publication date: 6/13/2013, of record), as evidenced by PubChem (beta-Cyclodextrin, available 6/24/2005, of record).
Applicant’s Invention
Goutsis renders obvious the relevant limitations of claim 30 above. Applicant’s claim 41 further adds the limitation of the method according to claim 30, wherein the at least one cyclodextrin or derivative thereof is chosen from compounds of formula:
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163
209
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wherein: R is chosen from H, CH3, or a hydroxypropyl group; and n is an integer ranging from 6 to 8. Applicant’s claim 42 further adds the limitation of the method according to claim 30, wherein the at least one cyclodextrin or derivative thereof is chosen from α-cyclodextrin, β-cyclodextrin, γ-cyclodextrin, methyl derivatives of α-cyclodextrin, methyl derivatives of β-cyclodextrin, methyl derivatives of γ- cyclodextrin, hydroxypropyl derivatives of α-cyclodextrin, hydroxypropyl derivatives of β- cyclodextrin, hydroxypropyl derivatives of γ-cyclodextrin, or mixtures of two or more thereof.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 41 and 42, Goutsis teaches an agent for the treatment of oxidatively damaged human hair [0030] containing one or more aliphatic polyols [0031] and one or more cyclic carbonates [0032]. The composition may also contain cyclodextrins [0132].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Goutsis does not teach the inclusion of a certain species of cyclodextrin in the conditioning composition. However, this deficiency is cured by Van Gogh.
Van Gogh teaches a teaches a composition for restoring damaged keratin-containing fibers that have been oxidatively dyed [0023]. The composition may contain beta-cyclodextrin [0305 Table III and 0307 Table V]. PubChem teaches that β-cyclodextrin has a structure of the formula (pg. 3, 2D Structure):
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330
340
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.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 41 and 42, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (cyclodextrins and β-cyclodextrin for a hair conditioner to treat oxidatively treated hair). See MPEP 2144.06 (II).
Claims 47-49 are rejected under 35 U.S.C. 103 as being unpatentable over Goutsis (U.S. Patent Application No. 2019/0167548, publication date: 6/6/2019, of record) in view of Devin-Baudoin (U.S. Patent No. 6,953,484, issue date: 10/11/2005, of record) and Van Gogh (U.S. Patent Application No. 2013/0149271, publication date: 6/13/2013, of record).
Applicant’s Invention
Applicant’s claim 47 is drawn to a method for treating hair comprising applying to the hair a treatment composition comprising: (a) from about 1% to about 5% of citric acid and/or a salt thereof; (b) from about 1% to about 5% of β-cyclodextrin; (c) at least one polysaccharide gum; (d) at least one polyol; and (e) water; wherein the composition has a pH of less than 7; and wherein the treatment composition is applied to the hair before, during, or after a bleaching process.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 47, Goutsis teaches an agent for the treatment of oxidatively damaged human hair [0030] containing one or more aliphatic polyols [0031] and one or more cyclic carbonates [0032]. Citric acid, lactic acid, malic acid, or maleic acid may be present as an acidifying agent [0121]. The composition may also contain cyclodextrins [0132]. The composition may also contain a thickening agent [0130] such as guar gums, xanthan gums, gum arabic, and karaya gum [0131]. The composition may also contain water [0223]. The conditioning agent may have a pH value in the range of 2 to about 10, preferably a pH value from about 5 to about 7 [0119]. The agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166]. The steps of applying the oxidizing agent may be carried out as part of a lightening or bleaching process [0168]. The additional ingredients, including cyclodextrin, may be present from 0.0001-about 25% by weight based on the total weight of the agents [0133]. Goutsis also teaches that the acidifying agents may be included in the composition to adjust the pH into the preferred 5 to 7 range [0019-0121].
Regarding claim 48, Goutsis teaches that the additional ingredients, including cyclodextrin, may be present from 0.0001-about 25% by weight [0133]. The acidifying agents may be included in the composition to adjust the pH into the preferred 5 to 7 range [0019-0121]. Selection of the further substances in the composition may be made by the person skilled in the art according to the desired properties of the agents [0133].
Regarding claim 49, Goutsis teaches that the conditioning agent may have a pH value in the range of 2 to about 10, preferably a pH value from about 5 to about 7 [0119].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 47, Goutsis does not teach a weight percentage of citric acid present in the composition, inclusion of a certain species of cyclodextrin in the conditioning composition or that the conditioning composition may be applied before the bleaching process. However, this deficiency is cured by Van Gogh and Devin-Baudoin.
Van Gogh teaches a teaches a composition for restoring damaged keratin-containing fibers that have been oxidatively dyed [0023]. The composition may contain beta-cyclodextrin [0305 Table III and 0307 Table V]. Devin-Baudoin teaches a pre-or post-treatment comprising applying a conditioning composition to hair either before or after bleaching. An embodiment of the process is to improving the condition of the hair after bleaching (col. 1 lines 54-62). An improvement in the condition of the fiber means a reduction in the porosity or alkaline solubility of the fiber and an improvement in at least one cosmetic property (col. 2 lines 3-6).
Regarding claim 48, Goutsis does not teach a mole ratio of citric acid and salts to β-cyclodextrin present in the composition.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 47, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (cyclodextrins and β-cyclodextrin for a hair conditioner to treat oxidatively treated hair). See MPEP 2144.06 (II).
Furthermore, the weight percentage of citric acid present in the composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage of citric acid in order to best achieve the desired results as such would provide advantageous adjustment to the pH of the formulation. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Goutsis teaches that the acidifying agents may be included in the composition to adjust the pH into the preferred 5 to 7 range [0019-0121]. The Examiner considers it prima facie obvious to optimize the weight percentage of the citric present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of citric acid would have a direct effect on the pH of the composition and therefore be an optimizable variable.
It would have been prima facie obvious to one of ordinary skill in the art of filing to apply the conditioning composition embraced by Goutsis before a bleaching process. See MPEP 2144.04 (IV) (C), which states “selection of any order of performing steps is prima facie obvious in the absence of new or unexpected results”. One would have understood in view of Devin-Baudoin that a conditioning composition intended to improve the condition of the hair by reducing porosity or alkaline solubility of the fiber may be applied to the hair before or after a bleaching composition. It would have been obvious to apply the conditioning composition of Goutsis before the bleaching composition to obtain the same result of improved condition of the hair after applying a bleaching composition. One of ordinary skill in the art of filing would have been motivated to apply the conditioning composition before the bleaching composition in order to improve the condition of the hair after bleaching. The artisan of ordinary skill in the art would have had reasonable expectation of success because Devin-Baudoin teaches that a conditioning composition may be applied to the hair before or after a bleaching composition in order to improve the condition of the oxidatively treated hair fibers.
Regarding claim 48, the mole ratio of citric acid to β-cyclodextrin present in the composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of citric acid present in the composition in order to best achieve the desired results as such would provide advantageous adjustment to the pH of the formulation. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Goutsis teaches that the acidifying agents may be included in the composition to adjust the pH into the preferred 5 to 7 range [0019-0121] and that the additional ingredients, including cyclodextrin, may be present from 0.0001-about 25% by weight [0133]. The Examiner considers it prima facie obvious to optimize the amount of the citric present relative to the amount of cyclodextrin present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of citric acid would have a direct effect on the pH of the composition and therefore be an optimizable variable.
Response to Arguments
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive.
On page 10, Applicant argues that because Goutsis teaches that the conditioning agent is applied after oxidative bleaching, the method recited in the amended claims is fundamentally different from the post-treatment method taught by Goutsis. This is not found persuasive. In response, please refer to MPEP 2144.04 (IV) (C), which states: “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. As discussed below, the Applicant as not established new or unexpected results rendered by the application of the conditioning agent before oxidative bleaching. Therefore, the selection of any order of performing process steps is prima facie obvious.
On page 11, Applicant argues that while Devin-Baudoin teaches a pre-treatment before bleaching, it does not teach the specific combination of components recited in claim 30. 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). As discussed above, the selection of any order of performing process steps is prima facie obvious and therefore the Examiner considers the teachings of Goutsis in view of Devin-Baudoin to read on the limitations of the instant claims. Therefore, the argument is not persuasive and the rejection is maintained.
On pages 11-12, Applicant argues that the combination of Goutsis, Van Gogh, and PubChem fails to teach or suggest the specific pre-treatment method recited in the amended claim 30. This is not found persuasive. In response, please refer to MPEP 2144.04 (IV) (C), which states: “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. As discussed above, the selection of any order of performing process steps is prima facie obvious and therefore the Examiner considers the teachings of Goutsis in view of Devin-Baudoin to read on the limitations of the instant claims. Therefore, the argument is not persuasive and the rejection is maintained.
On page 12, Applicant argues that treatment with the conditioning composition before a bleaching process surprisingly improved the break stress of the hair, prevented and/or reduced curl elongation, and restored and/or improved hair integrity and that the synergistic combination generally performed better when being used to treat the hair before or after the hair was applied with a bleaching composition. This is not fond persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results amounts to improved hair quality and reduced curl elongation when the composition is applied before the bleaching process. However, as discussed in the obviousness rejection above, Goutsis teaches that the agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166] and that the reduction in damage to keratin fibers rendered by the conditioning composition is understood to mean the reduction of the structural damage to the protein scaffold responsible for the mechanical strength of the fiber [0036]. MPEP 2144.04 (IV) (C) states that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. It would have been obvious that application of the conditioning composition before a bleaching process would also render the improved hair properties as demonstrated by the evidence of unexpected results. Therefore, the evidence of unexpected results is not unexpected or unobvious.
Differences are of both practical and statistical significance: The evidence of unexpected results amounts to improved hair properties after a bleaching process; therefore the differences are of practical significance. However, the evidence of unexpected properties presented in Figure 2 and discussed in paragraph [00149] of the instant specification demonstrate no significant difference in curl elongation or hair integrity in hair swatches when the composition is treated before (R1) or after (R3) bleaching. Furthermore, the evidence presented in Figure 10 pertaining to break stress of the hair only provides data relating to hair treated with the conditioning composition before a bleaching process and provides no evidence demonstrating the criticality of applying the composition before a bleaching process rather than after a bleaching process. The data presented in Figures 6 and 7 appears to suggest that hair treated with the conditioning treatment after a bleaching process have increased fiber durability and denaturation temperature when compared to hair treated before a bleaching process. Therefore, the evidence of unexpected results is not of statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The evidence of unexpected properties is in commensurate scope with the claims.
Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
Double Patenting
Applicant’s amendments to the claims filed 1/26/2026 have necessitated the new grounds of rejection.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 30-40, 43, 45, and 46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,257,331.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘331 patent embrace a method for protecting hair and mitigating damage to the hair from oxidative bleaching or coloring of the hair comprising applying a fortifying composition to the hair. The fortifying composition comprises citric acid, cyclodextrin, one or more polyols, one or more cationic polysaccharides, and water. The fortifying composition has a pH of about 2 to about 6 and is applied before or after application of an oxidative bleaching composition. The fortifying composition may remain on the hair for 1 to 30 minutes. The fortifying composition may be left on the hair without rinsing before applying an oxidative bleaching composition. The citric acid and cyclodextrin are in a mole ratio of about 20:1 to about 3:1. The citric acid may be present form 1 to about 10 wt. % and the cyclodextrin may be present from 0.5 to about 10 wt. %. The total amount of citric acid and cyclodextrin may range from about 2 to about 15 wt. %. The cationic polysaccharides may be present from about 0.1 to about 5wt. % and the polyols may be present from 0.1 to 10 wt.%.
With regards to the “thickener” limitations of instant claims 30 and 45, the prior art teaches the same polysaccharides as claimed and therefore, the thickening properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Claims 41, 42, and 47-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,257,331, as applied to claims 30-40, 43, 45, and 46 above, and further in view of in view of Van Gogh (U.S. Patent Application No. 2013/0149271, publication date: 6/13/2013, of record), as evidenced by PubChem (beta-Cyclodextrin, available 6/24/2005, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘331 patent embrace the relevant limitations as described above. The claims of the ‘331 patent do not embrace a β-cyclodextrin. However, this deficiency is cured by Van Gogh. Van Gogh teaches a teaches a composition for restoring damaged keratin-containing fibers that have been oxidatively dyed [0023]. The composition may contain beta-cyclodextrin [0305 Table III and 0307 Table V]. PubChem teaches that β-cyclodextrin has a structure of the formula (pg. 3, 2D Structure):
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Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (cyclodextrins and β-cyclodextrin for a hair conditioner to treat oxidatively treated hair). See MPEP 2144.06 (II).
Claim 44 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,257,331, as applied to claims 30-40, 43, 45, and 46 above, and further in view of Goutsis (U.S. Patent Application No. 2019/0167548, publication date: 6/6/2019) and Formula Botanica (The Formulator’s Guide the Natural Gums, available 6/14/2022).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘331 patent embrace the relevant limitations as described above. The claims of the ‘331 patent also embrace a cationic guar as the cationic polysaccharide. The claims of the ‘331 patent do not embrace a polysaccharide thickening agent as embraced by the instant claim 44. However, this deficiency is cured by Goutsis and Formula Botanica. Goutsis teaches that suitable thickening agents for a conditioning agent to repair oxidatively damaged hair may include nonionic guar gums [0131]. Formula Botanica teaches that non-ionic gums are more resistant to low pH and can be used in products containing alpha-hydroxy and other acids (pg. 2 What are Natural Gums?).
It would have been prima facie obvious to utilize the non-ionic guar gum embraced by Goutsis in the fortifying composition embraced by the claims of the ‘331 patent. One would have understood in view of Formula Botanica that non-ionic gums are suitable for inclusion in formulations that also contain an acid. It would have been obvious to include a non-ionic rather than a cationic guar gum in the fortifying composition embraced by the claims of the ‘331 patent. One of ordinary skill in the art of filing would have been motivated to include a non-ionic guar gum in order to improve the formulation at a low pH. The artisan of ordinary skill would have had reasonable expectation of success because Goutsis teaches that a nearly identical composition may contain non-ionic guar gum as a thickener.
Claims 30-49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 34-55 of copending Application No. 18/231,729 in view of Goutsis (U.S. Patent Application No. 2019/0167548, publication date: 6/6/2019, of record) and Devin-Baudoin (U.S. Patent No. 6,953,484, issue date: 10/11/2005, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the’729 application embrace a method for treating hair, comprising applying to the hair a composition comprising at least one carboxylic acid, at least one cyclodextrin, at least one polysaccharide thickening agent, at least one polyol, and water. The composition has a pH of less than 7. The carboxylic acid may be citric acid and the cyclodextrin may be β-cyclodextrin. The mole ratio of carboxylic acids to cyclodextrins ranges from about 0.5:1 to about 25:3 and the weight ratio of the total amount of carboxylic acids and cyclodextrins ranges from about 1:3 to about 6:1. The thickening agent is chosen from gums.
The claims of the ‘729 application do not embrace applying the treatment composition before or after a bleaching process, a period of time for the treatment to remain on the hair, a total amount of carboxylic acids, cyclodextrins, polysaccharide thickener, or polyol present in the composition, or a specific gum. However, this deficiency is cured by Goutsis. Goutsis teaches an agent for the treatment of oxidatively damaged human hair [0030] containing one or more aliphatic polyols [0031] and one or more cyclic carbonates [0032]. Citric acid, lactic acid, malic acid, or maleic acid may be present as an acidifying agent [0121]. The composition may also contain cyclodextrins [0132]. The composition may also contain a thickening agent [0130] such as guar gums, xanthan gums, gum arabic, and karaya gum [0131]. The composition may also contain water [0223]. The conditioning agent may have a pH value in the range of 2 to about 10, preferably a pH value from about 5 to about 7 [0119]. The agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166]. The oxidizing agent preparation is rinsed from the hair prior to treating the hair with the conditioning agent [0160-0161]. Goutsis also teaches that the conditioning composition is left on the hair for a period of from about 2 to about 45 minutes [0173]. The steps of applying the oxidizing agent may be carried out as part of a lightening or bleaching process [0168]. Goutsis teaches that the additional ingredients, including thickeners and cyclodextrins, may be present from 0.0001-about 25% by weight based on the total weight of the agents [0133]. Goutsis teaches that the one or more aliphatic polyols are present from about 1 to about 40% by weight [0014]. Goutsis also teaches that the conditioning agent contains aliphatic polyols and cyclic carbonates in certain quantity ranges and quantity proportions to restructure and repair oxidatively damaged hair [0020]. Goutsis also teaches that the conditioning agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166]. The steps of applying the oxidizing agent may be carried out as part of a lightening or bleaching process [0168]. The conditioning composition is left on the hair for a period of from about 2 to about 45 minutes [0173]. Goutsis also teaches that the reduction in damage to keratin fibers rendered by the conditioning composition is understood to mean the reduction of the structural damage to the protein scaffold responsible for the mechanical strength of the fiber [0036]. The conditioning composition is left on the hair for a period of from about 2 to about 45 minutes [0173]. Goutsis also teaches that the conditioning agent may be designed as a "leave-on" product and left on the hair [0174]. Devin-Baudoin teaches a pre-or post-treatment comprising applying a conditioning composition to hair either before or after bleaching. An embodiment of the process is to improving the condition of the hair after bleaching (col. 1 lines 54-62). An improvement in the condition of the fiber means a reduction in the porosity or alkaline solubility of the fiber and an improvement in at least one cosmetic property (col. 2 lines 3-6).
It would have been prima facie obvious to one of ordinary skill in the art of filing to apply the conditioning composition embraced by the claims of the ‘526 application before a bleaching process. See MPEP 2144.04 (IV) (C), which states “selection of any order of performing steps is prima facie obvious in the absence of new or unexpected results”. One would have understood in view of Devin-Baudoin that a conditioning composition intended to improve the condition of the hair by reducing porosity or alkaline solubility of the fiber may be applied to the hair before or after a bleaching composition. It would have been obvious to apply the conditioning composition of Goutsis before the bleaching composition to obtain the same result of improved condition of the hair after applying a bleaching composition. One of ordinary skill in the art of filing would have been motivated to apply the conditioning composition before the bleaching composition in order to improve the condition of the hair after bleaching. The artisan of ordinary skill in the art would have had reasonable expectation of success because Devin-Baudoin teaches that a conditioning composition may be applied to the hair before or after a bleaching composition in order to improve the condition of the oxidatively treated hair fibers.
With regard to the limitation “wherein the treatment composition is applied to the hair before a bleaching process”, please refer to MPEP 2144.04 (IV) (C), which states: “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. As discussed above, the selection of any order of performing process steps is prima facie obvious and therefore the Examiner considers the teachings of the claims of the ‘729 application in view of Goutsis and Devin-Baudoin to read on the limitations of the instant claims.
It would have been prima facie obvious to one of ordinary skill in the art of filing that the composition embraced by the claims of the ‘729 application may be used before or after a bleaching process. One would have understood in view of Goutsis that a nearly identical composition may be used in a method to treat hair damaged by a bleaching process. It would have been obvious to use the composition embraced by the claims of the ‘729 application in the same method of treating oxidatively damaged hair embraced by Goutsis. One of ordinary skill in the art would have been motivated to use the composition embraced by the claims of the ‘729 application in such a method in order to repair damage to oxidatively damaged hair. The artisan of ordinary skill in the art would have had reasonable expectation of success because Goutsis teaches the use of a nearly identical composition after a bleaching process on the hair.
Regarding the weight percentages of carboxylic acid and cyclodextrins as specified in the instant claims 40 and 43, MPEP 2144.05 states:
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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, the claims of the ‘729 application embrace a weight ratio of carboxylic acids to cyclodextrins ranging from about 1:3 to 6:1. The Applicants' specification provides no evidence that the selected weight percentages in the instant claims 40 and 43 were not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the range of ratios of carboxylic acids and cyclodextrins embraced by the claims of the ‘729 application, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentages of carboxylic acids and cyclodextrins. One of ordinary skill in the art would have been motivated to change the weight as this could be expected to be advantageous for optimizing the pH of the composition.
The idea for combining compounds, each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional gum thickeners used in hair treatment compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the weight percentages of thickener and polyols of the instant claims 45 and 46, MPEP 2144.05 states:
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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Goutsis embraces a composition containing additional ingredients, including thickeners and cyclodextrins, may be present from 0.0001-about 25% by weight based on the total weight of the agents [0133] and that the one or more aliphatic polyols are present from about 1 to about 40% by weight [0014]. Goutsis also teaches that the conditioning agent contains aliphatic polyols and cyclic carbonates in certain quantity ranges and quantity proportions to restructure and repair oxidatively damaged hair [0020]. The Applicants' specification provides no evidence that the selected weight percentages in the instant claims 45 and 46 were not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due thickening effects of the polysaccharide thickener and the hair repair effects rendered by the polyol, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentages of thickeners and polyols present in the composition. One of ordinary skill in the art would have been motivated to change the weight as this could be expected to be advantageous for optimizing thickness and repair properties of the formulation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 30-40, 43, 45, and 46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/355,526 in view of Goutsis (U.S. Patent Application No. 2019/0167548, publication date: 6/6/2019, of record) and Devin-Baudoin (U.S. Patent No. 6,953,484, issue date: 10/11/2005, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ’526 application embrace a method for treating oxidatively bleached or colored hair comprising applying a fortifying composition to the bleached hair and allowing the composition to remain on the hair for a period of time of about 1 to 30 minutes. The fortifying composition comprises about 1 to 10 wt. % of citric acid, about 0.5 to 10 wt.% of cyclodextrin, about 0.1 to about 10 wt.% of polyols, water, and about 0.1 to 5 wt. % cationic polysaccharides. The fortifying composition has a pH of about 2 to about 5. The mole ratio of citric acid to cyclodextrin is about 20:1 to about 3:1. The claims of the ‘526 application do not embrace a weight ratio of carboxylic acids to cyclodextrins or the application of the treatment composition before a bleaching process. However, this deficiency is cured by However, this deficiency is cured by Goutsis and Devin-Baudoin. Goutsis teaches that the conditioning agent is used in a method of treating hair in which the conditioning composition is applied after treating the hair with an oxidizing agent preparation [0158-0166]. The steps of applying the oxidizing agent may be carried out as part of a lightening or bleaching process [0168]. The conditioning composition is left on the hair for a period of from about 2 to about 45 minutes [0173]. Goutsis also teaches that the reduction in damage to keratin fibers rendered by the conditioning composition is understood to mean the reduction of the structural damage to the protein scaffold responsible for the mechanical strength of the fiber [0036]. The conditioning composition is left on the hair for a period of from about 2 to about 45 minutes [0173]. Goutsis also teaches that the conditioning agent may be designed as a "leave-on" product and left on the hair [0174]. Devin-Baudoin teaches a pre-or post-treatment comprising applying a conditioning composition to hair either before or after bleaching. An embodiment of the process is to improving the condition of the hair after bleaching (col. 1 lines 54-62). An improvement in the condition of the fiber means a reduction in the porosity or alkaline solubility of the fiber and an improvement in at least one cosmetic property (col. 2 lines 3-6).
It would have been prima facie obvious to one of ordinary skill in the art of filing to apply the conditioning composition embraced by the claims of the ‘526 application before a bleaching process. See MPEP 2144.04 (IV) (C), which states “selection of any order of performing steps is prima facie obvious in the absence of new or unexpected results”. One would have understood in view of Devin-Baudoin that a conditioning composition intended to improve the condition of the hair by reducing porosity or alkaline solubility of the fiber may be applied to the hair before or after a bleaching composition. It would have been obvious to apply the conditioning composition of Goutsis before the bleaching composition to obtain the same result of improved condition of the hair after applying a bleaching composition. One of ordinary skill in the art of filing would have been motivated to apply the conditioning composition before the bleaching composition in order to improve the condition of the hair after bleaching. The artisan of ordinary skill in the art would have had reasonable expectation of success because Devin-Baudoin teaches that a conditioning composition may be applied to the hair before or after a bleaching composition in order to improve the condition of the oxidatively treated hair fibers.
Regarding the weight ratio of carboxylic acid to cyclodextrins as specified in the instant claim 38, MPEP 2144.05 states:
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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, the claims of the ‘526 application embrace about 1 to 10 wt. % of citric acid and about 0.5 to 10 wt.% of cyclodextrin. The Applicants' specification provides no evidence that the selected weight ratio in the instant claim 38 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the range of weight percentages of carboxylic acids and cyclodextrins embraced by the claims of the ‘526 application, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight ratio of carboxylic acids and cyclodextrins. One of ordinary skill in the art would have been motivated to change the weight as this could be expected to be advantageous for optimizing the pH of the composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 41, 42, and 47-49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/355,526 in view of Goutsis (U.S. Patent Application No. 2019/0167548, publication date: 6/6/2019, of record) and Devin-Baudoin (U.S. Patent No. 6,953,484, issue date: 10/11/2005, of record), as applied to claims 30-40, 43, 45, and 46 above, and further in view of in view of Van Gogh (U.S. Patent Application No. 2013/0149271, publication date: 6/13/2013, of record), as evidenced by PubChem (beta-Cyclodextrin, available 6/24/2005, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘526 application embrace the relevant limitations as described above. The claims of the ‘526 application do not embrace a β-cyclodextrin. However, this deficiency is cured by Van Gogh. Van Gogh teaches a teaches a composition for restoring damaged keratin-containing fibers that have been oxidatively dyed [0023]. The composition may contain beta-cyclodextrin [0305 Table III and 0307 Table V]. PubChem teaches that β-cyclodextrin has a structure of the formula (pg. 3, 2D Structure):
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Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (cyclodextrins and β-cyclodextrin for a hair conditioner to treat oxidatively treated hair). See MPEP 2144.06 (II).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 44 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/355,526 in view of Goutsis (U.S. Patent Application No. 2019/0167548, publication date: 6/6/2019, of record) and Devin-Baudoin (U.S. Patent No. 6,953,484, issue date: 10/11/2005, of record), as applied to claims 30-40, 43, 45, and 46 above, and further in view of Formula Botanica (The Formulator’s Guide the Natural Gums, available 6/14/2022, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ’526 application embrace the relevant limitations as described above. The claims of the ‘526 application do not embrace a polysaccharide thickening agent as embraced by the instant claim 44. However, this deficiency is cured by Goutsis and Formula Botanica. Goutsis teaches that suitable thickening agents for a conditioning agent to repair oxidatively damaged hair may include nonionic guar gums [0131]. Formula Botanica teaches that non-ionic gums are more resistant to low pH and can be used in products containing alpha-hydroxy and other acids (pg. 2 What are Natural Gums?).
It would have been prima facie obvious to utilize the non-ionic guar gum embraced by Goutsis in the fortifying composition embraced by the claims of the ‘526 application. One would have understood in view of Formula Botanica that non-ionic gums are suitable for inclusion in formulations that also contain an acid. It would have been obvious to include a non-ionic rather than a cationic guar gum in the fortifying composition embraced by the claims of the ‘526 application. One of ordinary skill in the art of filing would have been motivated to include a non-ionic guar gum in order to improve the formulation at a low pH. The artisan of ordinary skill would have had reasonable expectation of success because Goutsis teaches that a nearly identical composition may contain non-ionic guar gum as a thickener.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ request for the double patenting rejection of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejection will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejection.
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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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614