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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 3-6, 8-15, 18-22, 24, 26, 28, and 35, in the reply filed on January 7, 2026 is acknowledged. The traversal is on the grounds that:
the prior art of McEntire et al. is not combinable with Uzan et al., and
claims 17, 23, 27, 29-31, and 34 were incorrectly restricted out of Group I due to their dependency on claim 1.
First, the McEntire et al. citation is concerned with a dermal patch, which on the surface is unlike the hair treatment compositions of Uzan et al. However, McEntire et al. disclose that their dermal patch has an effective residence time with minimal discomfort and ease of use and is an appropriate vehicle for local as well as systemic delivery of cosmetic, dermatological, and pharmaceutical active ingredients to the surface of skin or to the surrounding tissues. One skilled in the art will understand that the patch of the present invention can have any dimension that would be convenient to the user or for delivery of any cosmetic, dermatological, and pharmaceutical active ingredient (see paragraph [0036] within McEntire et al.). Therefore, McEntire et al. is analogous cosmetic art to the Uzan et al. reference and both references can be combined.
Second, the argument to combine the withdrawn claims with the pending ones is not found persuasive.
Group II: Claims 17, 23, and 27 are directed to “specific monomers of the copolymer.” These three claims are different than those of claim 1. Claims 17, 23, and 27 describe monomer ratios, specific reagents, and alternative crosslinking agents, respectively. Each one of these claim limitations call for much deeper search queries than those disclosed within claim 1 and would cause an undue or onerous burden for the Examiner.
Group III: Claims 29-31, and 34 are directed to a “process of preparing a cosmetic.” The searching of Groups I and III together would not necessarily uncover a process of using the product. Each group requires a different field of search as they have different classifications and require the use of different search queries. Furthermore, a search for the limitations of claim 1 would not encompass the search required to examine the process steps delineated in invention III. Also, invention III requires additional consideration under 35 U.S.C. 112(a) regarding enablement and written description issues that do not necessarily apply to the product as claimed in invention I.
Thus, claims 17, 23, 27, 29-31, and 34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 7, 2026.
The requirement is deemed proper and made FINAL.
Summary
Claims 1, 3-6, 8-15, 18-22, 24, 26, 28, and 35 are pending in this office action. Claims 2, 7, 16, 25, and 32-33 are cancelled. Claims 17, 23, 27, 29-31, and 34 are withdrawn. Applicant is encouraged to amend the withdrawn claims to be within the scope of the pending claims to expedite the process of rejoinder. All pending claims are under examination in this application.
Priority
The current application was filed on June 22, 2023 is a 371 of PCT/EP2021/086180 filed December 16, 2021. The current application claims foreign priority to FR2108536 and FR2014085 filed August 5, 2021 and December 23, 2020, respectively.
Information Disclosure Statement
Receipt of the Information Disclosure Statements filed on June 22, 2023 and January 13, 2025 are acknowledged. A signed copy of both documents are attached to this office action.
Claim Objections
Claims 1, 3-6, 8-15, 18-22, 24, 26, 28, and 35 are objected to because of the following informalities:
Claim 1 needs more specific description of monomer (C). Please identify either/or linear or branched C1-C4 alkyl acrylates and linear or branched C1-C4 alkyl methacrylates.
Dependent claims 3-6, 8-15, 18-22, 24, 26, 28, and 35 fail to cure the defect of claim 1.
In a similar fashion, please identify linear or branched C1-C4 alkyl acrylates and linear or branched C1-C4 alkyl methacrylates for claims 4, 9, and 11-15.
Claim 6 should have the text at the end of the claim, “relative to the total weight of the monomers” deleted by amendment since it is repetitive and not needed.
Claim 26 discloses text “i), ii), iii), v), and vi).” Please adjust the text to include “iv).” Also, after the most recent amendment there is a comma missing after “iii) (poly)carbonyl compounds.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 non-obviousness.
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 1, 3-6, 8-15, 18-22, 24, 26, 28, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Uzan et al. (WO2019/234733A1, published in December 2019) in view of McEntire et al. (US2007/0259029A1) and Farcet (US2014/0227210A1).
[The Examiner is going to introduce each new reference and then combine them where appropriate to reject the instant claims.]
1. Uzan et al.
Uzan et al. is considered the closest prior art as it teaches self-curing acrylic composition for hair styling (see title). In addition, Uzan et al. disclose that the present invention provides hair straightening compositions comprising acrylic polymers configured to crosslink upon drying and thereby to form a film that is able to preserve hair in straightened conformation. Also provided is a hair straightening cosmetic formulation comprising said hair straightening composition and its use in straightening hair or preserving hair in a straightened conformation. The hair straightening effect is temporary and can be removed when the formulation is washed away in water or with shampoo. The cosmetic formulations of the present invention are ready to use formulations and may be applied frequently (see abstract).
2. McEntire et al.
McEntire et al. teach water-dispersible patch containing an active agent for dermal delivery (see title). Furthermore, McEntire et al. disclose a dermal patch having comprising at least two layers wherein at least one layer is a polymer matrix system having an active agent admixed therein. At least one of the layers includes a water-dispersible or water-dissipatable polymer. The dermal patch has an elongation factor of at least 50% (see abstract).
3. Farcet
Farcet teaches gradient copolymer, composition including same and cosmetic make-up or care method (see title). Additionally, Farcet discloses novel gradient copolymers including at least two different and specifically selected monomers, and cosmetic or skincare compositions including same. The invention also relates to a cosmetic method for make-up or the care of keratin materials, in particular the skin of the body or of the face, the nails, the hair and/or the eyelashes, comprising the application of a cosmetic composition as defined above on said materials (see abstract).
Combination of Uzan et al. and McEntire et al.
Regarding instant claim 1, Uzan et al. and McEntire et al. teach a polymeric composition. The necessary citations of Uzan et al. and McEntire et al. that pertain to instant claim 1 are presented in Table I.
Table I
Instant Claim 1
Uzan et al. and McEntire et al. Citations
A composition, termed "C1", comprising:
Both Uzan et al. and McEntire et al. disclose use of a copolymer (see Example 1 within Uzan et al.; and see Example 2 within McEntire et al.).
i) at least one fatty phase; and
ii) at least one copolymer, termed "CP", obtained by polymerization of:
0% to 99% by weight, relative to the total weight of the monomers, of at least one monomer (A) chosen from 2-ethylhexyl acrylate, 2-ethylhexyl methacrylate, isobornyl acrylate, isobornyl methacrylate, and mixtures thereof;
i) at least one fatty phase
McEntire et al. disclose use of the coconut oil fatty acid (COFA) (see Example 2 within McEntire et al.).
ii) at least one copolymer
- 45% by weight, relative to the total weight of the monomers, of isobornyl acrylate (see Table 1; 1140; within Uzan et al.).
ii) at least one copolymer
- 43% by weight, relative to the total weight of the monomers, of 2-ethylhexyl acrylate (see Example 2 within McEntire et al.).
1% to 20% by weight, relative to the total weight of the monomers, at least one monomer (B) of formula (I):
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- 15% by weight, relative to the total weight of the monomers, of acetoacetoxyethyl methacrylate (AAEM) (see Table 1; 1140; within Uzan et al.).
Squalane and other hydrophilic ingredients are added to the copolymer in order to obtain a ready-to-use composition for straightening hair (see Table 3 within Uzan et al.).
- 9% by weight, relative to the total weight of the monomers, of acetoacetoxyethyl methacrylate (AAEM) (see Example 2 within McEntire et al.).
Ra represents a hydrogen atom or a linear or branched (C1-C4)alkyl group;
Rb and RC, which may be identical or different, represent a hydrogen atom or a linear or branched (C1-C4)alkyl group;
Rd represents a linear or branched (C1-C4)alkyl group;
L represents a linear or branched (C1-C6)alkylene or cycloalkylene group;
See above
0% to 99% by weight of at least one monomer (C) chosen from C1-C4 alkyl acrylates, C1-C4 alkyl methacrylates, silicone macromonomers and mixtures thereof, relative to the total weight of the monomers,
it being understood that the copolymer termed "CP" is obtained by polymerization of at least one monomer (B) with at least one monomer (A) or at least one monomer (C).
0% monomer C
Therefore, a skilled artisan (POSITA; person of ordinary skill in the art) would consult the disclosures of Uzan et al. and McEntire et al. to teach all the elements of instant claim 1.
The remainder of the instant claims which are either directly or indirectly dependent on claim 1 are taught in full by the combination of Uzan et al. and McEntire et al.
Regarding instant claim 3, Uzan et al. and McEntire et al. teach in which said copolymer termed "CP" is free of monomer (A). Uzan et al. disclose the hair straightening composition of claim 2, wherein the acrylic monomers and acrylic oligomers are selected from the group consisting of monoacrylate oligomer, acrylate,
methacrylate(s), isobornyl acrylate, butyl acrylate, lauryl methacrylate, 2-hydroxy-3-(prop-2-enoyloxy)propyl 2-methyl-2-propylhexanoate and any combination thereof (see claim 3 within Uzan et al.). Therefore, the polymer can be free of monomer (A) by a skilled artisan (POSITA) not selecting isobornyl acrylate.
Regarding instant claim 4, Uzan et al. and McEntire et al. teach in which said copolymer CP comprises from 5% to 99% by weight, relative to the total weight of the monomers, of at least one monomer (A) chosen from 2-ethylhexyl acrylate, 2- ethylhexyl methacrylate, isobornyl acrylate, isobornyl methacrylate, and mixtures thereof and from 0% to 45% by weight of at least one monomer (C) chosen from C1-C4 alkyl acrylates, C1-C4 alkyl methacrylates, silicone macromonomers, and mixtures thereof, relative to the total weight of the monomers. Please see the discussion and citations within instant claim 1 for the relevant rejection text.
Regarding instant claim 5, Uzan et al. and McEntire et al. teach in which said copolymer CP comprises from 50% to 99% by weight, of at least one monomer (A) chosen from 2-ethylhexyl acrylate, 2-ethylhexyl methacrylate, isobornyl acrylate, isobornyl methacrylate, and mixtures thereof, relative to the total weight of the monomers. Uzan et al. disclose as hair straightening composition comprising from about 5 wt% to about 55 wt% of at least one acrylic-based polymer comprising acrylic units that act as cross-linkers that will form bonds between the polymers, wherein the amount of said cross-linker units is from about 2.5% to about 25 wt% of said acrylic-based polymer, and from about 0.5 wt% to about 15 wt% of a non-ionic surfactant, wherein the non-ionic surfactant is selected from a pharmaceutical or cosmetic grade surfactant, and wherein the polymer chains undergo cross linking and thereby straighten the hair upon drying (see claim 1 within Uzan et al.). Please see the discussion and citations within instant claim 3 for the relevant rejection text. Therefore, a skilled artisan (POSITA) could select greater than 50 wt% of monomer isobornyl acrylate to synthesize the hair straightening polymer composition.
Regarding instant claim 6, Uzan et al. and McEntire et al. teach in which said copolymer CP comprises at least one monomer (A) chosen from 2-ethylhexyl acrylate, 2-ethylhexyl methacrylate, isobornyl acrylate, isobornyl methacrylate, and mixtures thereof, in an amount of less than 50% relative to the total weight of the monomers. Please see the discussion and citations within instant claim 1 for the relevant rejection text.
Regarding instant claim 8, Uzan et al. and McEntire et al. teach in which said copolymer CP is free of monomer (C). Please see the discussion and citations within instant claim 1 for the relevant rejection text.
Regarding instant claims 9 and 11, Uzan et al. and McEntire et al. teach in which said copolymer CP comprises as monomer (C) at least one monomer chosen from C1-C4 alkyl acrylates and/or C1-C4 alkyl methacrylates. Uzan et al. disclose the use of monomer n-butyl acrylate within batch 2-18-15 comprising all necessary monomers of instant claim 1 (see Table 1 within Uzan et al.).
Regarding instant claim 12, Uzan et al. and McEntire et al. teach in which the copolymer CP comprises from 80% to 99% by weight of at least one monomer (C) chosen from C1-C4 alkyl acrylates and C1-C4 alkyl methacrylates and is free of monomer (A). Please see the discussion and citations within instant claims 3 and 4 for the relevant rejection text. Therefore, a skilled artisan (POSITA) could select monomers C1-C4 alkyl methacrylates (see paragraph [0038] within Uzan et al.) and/or n-butyl acrylate (see claim 3 within Uzan et al.) at 80 to 99% by weight and avoid any monomers defined within instant claim 1, to obtain the desired polymer.
Regarding instant claim 14, Uzan et al. and McEntire et al. teach in which the copolymer CP comprises more than 30% by weight of at least one monomer (C) chosen from silicone macromonomers and mixtures thereof with C1-C4 alkyl acrylates or with C1-C4 alkyl methacrylates, relative to the total weight of the monomers, and at least one monomer (A) in a non-zero amount and less than 50% relative to the total weight of the monomers. Please see the discussion and citations within instant claims 3 and 4 for the relevant rejection text. Therefore, a skilled artisan (POSITA) could select monomers C1-C4 alkyl methacrylates (see paragraph [0038] within Uzan et al.) and/or n-butyl acrylate (see claim 3 within Uzan et al.) at more than 30% by weight and further select one monomer (A) at less than 50% by weight defined within instant claim 1, to obtain the desired polymer.
Regarding instant claim 15, Uzan et al. and McEntire et al. teach in which the copolymer CP comprises more than 45% and less than 49% by weight of at least one monomer (C) chosen from C1-C4 alkyl acrylates, C1-C4 alkyl methacrylates, silicone macromonomers, and mixtures thereof and at least one monomer (A) in an amount of from 50% to 99% relative to the total weight of the monomers. Please see the discussion and citations within instant claims 3 and 4 for the relevant rejection text. Therefore, a skilled artisan (POSITA) could select monomers C1-C4 alkyl methacrylates (see paragraph [0038] within Uzan et al.) and/or n-butyl acrylate (see claim 3 within Uzan et al.) at more than 45% and less than 49% by weight and further select one monomer (A) in an amount from 50% to 99% by weight defined within instant claim 1, to obtain the desired polymer.
Regarding instant claim 18, Uzan et al. and McEntire et al. teach comprising from 1% to 70% by weight of said copolymer, relative to the total weight of the composition. Please see the discussion and citations within instant claim 1. McEntire et al. disclose the Petrolatum or other active ingredient portion (COFA; coconut oil fatty acid) of the modified resin represents about 0.1 to about 50 weight %, such as, for example, from about 10 to about 40 weight % of total solids of the latex, or from about 10 to about 30 weight percent (see paragraph [0124] within McEntire et al.). Therefore, the copolymer could be 50% to 99.9% (overlapping region) by weight of said copolymer, relative to the total weight of the composition.
Regarding instant claim 24, Uzan et al. and McEntire et al. teach a composition termed "C2" as claimed in instant claim 1, comprising at least one crosslinking agent, termed "R", and optionally at least one cosmetic active agent, termed "CAA", chosen from a) coloring agents chosen from pigments, direct dyes, and mixtures thereof, b) active agents for caring for keratin materials, c) UV-screening agents, and d) mixtures thereof; or - a composition termed "C3" as claimed in claim 1, comprising at least one cosmetic active agent, termed "CAA", chosen from a) coloring agents chosen from pigments, direct dyes, and mixtures thereof, b) active agents for caring for keratin materials, c) UV-screening agents, and d) mixtures thereof. Please see the discussion and citations within instant claim 1 for the relevant rejection text. Additionally, Uzan et al. disclose the additional additives dimethicone and gum guar (see Example 2 within Uzan et al.), both of which are keratin cosmetic active agents (see PTO-892 NPL V-W).
Regarding instant claim 26, Uzan et al. and McEntire et al. teach in which said crosslinking agent is chosen from i) (poly)amine compounds, ii) (poly)thiolated and/or (poly)hydroxylated compounds, iii) (poly)carbonyl compounds, v) metal salts chosen from va) metal alkoxides, vb) (poly)(hydroxy)(C1-C6)alkylcarboxylates of transition metals or of post-transition metals, and vc) salts of metals belonging to the group of the rare-earth metals, and vi) mixtures thereof. Uzan et al. disclose the crosslinking agent, 2-(methacryloyloxy)ethylacetoacetate (AAEM) [polycarbonyl compound] (see instant claim 1; also see PTO-892 NPL U).
Regarding instant claim 28, Uzan et al. and McEntire et al. teach the composition as claimed in instant claim 1, which is in the form of:
- either a colored product for the lips;
- or a skincare product, which may be colored,
- or a haircare product.
Uzan et al. disclose the hair straightening composition of instant claim 1 (haircare product; see instant claims 1 and 5).
Regarding instant claim 35, Uzan et al. and McEntire et al. teach a kit for keratin material comprising:
- a first compartment containing at least one composition C1 as claimed in instant claim 1;
- a second compartment separate from said first compartment and comprising at least one crosslinking agent R and
- where appropriate, a third compartment separate from the first and second compartments and containing at least one cosmetic active agent, termed "CAA", which may be identical to or different from those optionally contained in the first and/or second compartments;
it being understood that the first and/or second compartments may also contain one or more cosmetic active agents CAA, which may be identical or different, and in that said active agent CAA is chosen from a) coloring agents chosen from pigments, direct dyes and mixtures thereof, b) active agents for caring for keratin materials, c) UVscreening agents and d) mixtures thereof.
Please see the discussion and citations within instant claim 1 for the relevant rejection text. Furthermore, it would be obvious to a skilled artisan (POSITA) to assemble a kit-of-parts for commercial sale based on the polymer of instant claim 1 as disclosed within instant claim 35.
Combination of Uzan et al., McEntire et al., and Farcet
Regarding instant claim 10, Uzan et al., McEntire et al., and Farcet teach in which said copolymer CP comprises as monomer (C) at least one silicone macromonomer. Farcet disclose the use of a at least one silicone macromonomer (see paragraph [0106] and [0118] within Farcet).
Regarding instant claim 13, Uzan et al., McEntire et al., and Farcet teach in which the copolymer CP comprises from 80% to 99% by weight of at least one monomer (C) chosen from silicone macromonomers, and mixtures thereof with C1-C4 alkyl acrylates or with C1-C4 alkyl methacrylates, relative to the total weight of the monomers, and is free of monomer (A). Farcet discloses different monomers such as isobutyl acrylate and isobutyl methacrylate which are not disclosed as monomer (A) of instant claim 1 (see claim 1 within Farcet). In addition, silicone maromonomers can be added (see instant claim 10) along with monomer, hexyl methacrylate (see paragraph [0087] within Farcet). The overall weight percentage for this hypothetical mixture can be isobutyl acrylate / isobutyl methacrylate / silicone macromonomer / hexyl acrylate (45% / 45% / 5% / 5%) (see paragraphs [0066] and [0123] within Farcet). Thus, the weight percentage of the mixture of monomers (C) would be 95%.
Regarding instant claims 19 and 22, Uzan et al., McEntire et al., and Farcet teach comprising at least one hydrocarbon-based oil. Farcet discloses the use of the hydrocarbon-based oil, isododecane (see Example 6 within Farcet). Also, Farcet discloses the use of non-volatile hydrocarbons (see paragraphs [0159] within Farcet).
Regarding instant claim 20, Uzan et al., McEntire et al., and Farcet teach comprising from 15% to 98%, by weight of hydrocarbon-based oil(s) relative to the total weight of the composition. Farcet discloses the use of 15% to 98%, by weight of hydrocarbon-based oil(s) relative to the total weight of the composition (see paragraphs [0159-0160] within Farcet).
Regarding instant claim 21, Uzan et al., McEntire et al., and Farcet teach comprising at least one nonvolatile oil different from said hydrocarbon-based oil. Uzan et al. disclose the use of fatty alcohol, polyoxyethylene [POE 40] having for example, a stearate group (18 Cs) (see paragraph [0044] within Uzan et al.; also see PTO-892 NPL X).
Analogous Art
The Uzan et al., McEntire et al., and Farcet references are directed to the same field of endeavor as the instant claims, that is, a preparation of the cosmetic polymer as disclosed within instant claim 1.
Obviousness Analysis
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the hair straightening composition disclosed by Uzan et al., using the teachings of McEntire et al. and Farcet in order to arrive at the subject matter of the instant claims.
The Uzan et al., McEntire et al., and Farcet references all have considerable overlap for preparation of cosmetic compositions. In this instance, Uzan et al. supplies the polymeric hair straightening composition, McEntire et al. supplies the use of the fatty phase, while Farcet supplies the silicone macromonomer. All references are directed to cosmetic compositions and therefore constitute analogous art under MPEP §2141.01(a). A POSITA would have reasonably consulted the three references when seeking to develop a hair care composition formulation.
Starting with Uzan et al., the skilled person only had to try the necessary claim limitations disclosed by McEntire et al. and Farcet. The combination of Uzan et al., McEntire et al., and Farcet would allow one to arrive at the present application without employing inventive skill. This combination of the hair straightening composition taught by Uzan et al. along with the use of the necessary claim limitations taught by McEntire et al. and Farcet would allow a research and development scientist (POSITA) to develop the invention taught in the instant application. It would have only required routine experimentation to modify the hair straightening composition disclosed by Uzan et al. with the use of the necessary claim limitations taught by McEntire et al. and Farcet. Incorporating the disclosure of Uzan et al. into the cosmetic compositions taught by McEntire et al. and Farcet represents a predictable use of prior art elements according to their established functions, consistent with MPEP §2143 and KSR.
Furthermore, the additional claim limitations taught by McEntire et al. and Farcet would have been viewed by a POSITA as routine design optimizations or known modifications for a hair care composition formulations. Implementing these features in Uzan et al.’s hair straightening composition would not require more than ordinary skill or routine experimentation.
Accordingly, the combination of Uzan et al., supplemented by McEntire et al. and Farcet provides all the elements of the claimed invention. The resulting hair care composition cosmetic formulation constitutes no more than the predictable outcome of combining familiar prior art components, and therefore the claimed subject matter would have been obvious to a POSITA prior to the effective filing date of the invention.
Conclusion
No claims are allowed.
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/JOHN W LIPPERT III/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615