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 .
Acknowledgment of Papers Received: Amendment/Remarks dated 3/26/26
Claim Rejections - 35 USC § 112
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.
Claim 53 is 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.
Claim 53 recites a hair tonic of claim wherein the cosmetically acceptable additive is a moisturizer and/or or cooling agent. However this claim appears to be dependent on a previous claim, yet does not recite the claim. It is unclear what claim, claim 53 is dependent from. Clarification of this claim is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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.
Claim(s) 1-11, 13, 16, 18-20, 22, 23, 25-34, 37, 38, 40, 41, 57, 58 and 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over the disclosures of Kadir et al (WO 2019/200027 A1 hereafter Kadir) in view of Nakono et al (US 2019/0201305 A1 hereafter Nakano).
Kadir discloses a composition comprising sandal pentanol (sandalwood), caffeine, and one or more C10-C18 fatty acids, a solvent and additional components [00169, 00250, 0035]. The additional components include at least a support components such as an antioxidant [00261]; an oil components like lavender or olive oil [00169]; minerals such as iron and zinc [00262]. The fatty acid can be palmitoleic, capric, lauric myristic acid [00210, 00228]. The solvent is water along with other alcohols like propylene glycol [Examples]. The formulation comprises solubilizers such as surfactants [00236]. The formulation is free of biotin, and can be free of non-film forming polymers or quaternary ammonium compounds, depending on the configuration of the final products [Examples]. The formulation further comprises hydroxyethylcellulose [0082]. The formulation further comprises a propellant and particles [00188-00189]. The formulation help hair growth such as a shampoo or leave in product [Examples]. The hair formulation helps grow hair comprising application to the scalp [Examples]. The formulation further comprises pH buffers and adjusters such that he pH of the formulation can be from 1.5 to 8 [Example].
While the formulation of Kadric comprises sandalwood, caffeine, C10-C18 fatty acid, and a carrier comprising water and alcohol, and where the formulation is a shampoo or other hair care formulation. The reference however is silent to the formulation being a tonic formulation. The use of hair formulation comprising similar components as a hair tonic are well known in the art as seen in the Nakano patent.
Nakano discloses a composition that can comprise sandal pentanol (sandalwood), caffeine, a solvent [0007, 0021, 0030, 0262]. The composition can be present as a hair tonic [0267]. The composition further comprises antioxidants and vitamins such as vitamin C and D [0216] meeting the limitations of claims 12 and 14. The composition comprises oils such as lavender or thyme oil [0262] meeting the limitation of claims 15. The formulation comprises minerals like zinc and iron [0218]. The solvent in the formulation can be water-based or aliphatic alcohols based and comprise propylene glycol or ethanol [0024], meeting the limitations of claims 19, 20, 32 and 45. The formulation further comprises solubilization enhancers such surfactants [0070-0071], meeting the limitation of claims 21 and 22. The formulation further comprises hair care materials and cooling agents [0227], meeting the limitations of claims 24. The formulation comprises propellants and inorganic powders [0267], meeting the limitations of claims 35 and 36. The composition can be in the form of shampoo, hair lotion and tonic [0267], meeting the limitations of claims 39 and 40. The formulation further comprises hydrogenated castor oil [0079-0081]. It would have been obvious to apply the similar compounds of Kadric as a tonic as seen in the Nakano as they comprise similar components.
Regarding the ranges and concentrations of the instant claims, Kadric disclose wide coverage of the components and in turn discloses the general conditions of the claims. Nakano discloses a hair growth formulation that can comprise caffein, sandalwood, saturated or unsaturated C10-C18 fatty acids and a solvent along with various supporting components like surfactants, pigments, perfume S, etc. The reference discloses various blends and combination [Examples]. 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. See In re Aller, 220 F.2d 454 105 USPQ 233, 235 (CCPA 1955).
With these aspects in mind it would have been obvious to combine the components to form a hair growing formulation. It would have been obvious to combine the auxiliary components and forms of Nakano into the similarly functioning and structured formulation of Kadric in order to stabilize the pH of the formulation to keep the skin from harm. It would have been obvious to optimize the formulation as seen in the Kadric patent in order to provide a stable formulation for growth or regrowing hair. One of ordinary skill in the art would have been motivated to combine the prior art with an expected result of stable and safe hair growth formulation that was safe for the scalp or undelaying skin area.
Allowable Subject Matter
Claims 42-46 and 48-56 are allowed.
Response to Arguments
Applicant’s arguments, see Amendments, filed 3/26/26, with respect to the rejection(s) of claim(s) 1-60 under USC 103(a) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the above recited rejections.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICAH PAUL YOUNG whose telephone number is (571)272-0608. The examiner can normally be reached Monday through Friday, 9:00 am to 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICAH PAUL YOUNG/Primary Examiner, Art Unit 1618
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