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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/03/2026 has been entered.
Status of Claims
Receipt of Remarks/Amendments filed on 04/03/2026 is acknowledged. Claim 1 is amended and claims 3, 5-6, 8-11, 14, 16, and 21-27 are canceled. Claims 18-20 remain withdrawn as being drawn to a non-elected invention or species. Claims 1-2, 4, 7, 12-13, 15, and 17 are examined on the merits herein.
Priority
The instant application filed 10/13/2023, is a 371 filing of PCT/EP2022/060291, filed 04/19/2022, which claims foreign priority to EP21170414.3, filed 04/26/2021.
Claim Interpretation
Claim 1 recites a cosmetic composition “for reshaping keratin fibers with heat”. Such a recitation is simply a recitation of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). In the instant case, the body of the claim sets forth the structural components of the composition while the statement “for reshaping keratin fibers with heat” provides no structure. Even if it did, a composition comprising all of the structural elements of the instant claim, as made obvious below, is inherently capable of reshaping keratin fibers with heat.
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 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 1-2, 4, 7, 12-13, 15, and 17 are rejected under 35 U.S.C. 103 as being obvious over Breakspear, S, et al. (US 20230059775 A1, 02/23/2023, effectively filed 02/28/2020, PTO-892), hereinafter Breakspear, in view of Bouchara, A, et al. (WO 2013144263 A1, 10/03/2013, on record), hereinafter Bouchara.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding claim 1: Breakspear discloses an aqueous non-reducing, non-oxidizing reshaping composition for keratin fibers having a pH in the range of 7 to 12 and comprises a) one or more alkalizing agents, b) one or more lipophilic compounds, at a total concentration in the range of 10% to 80% by weight, c) one or more surfactants, and d) one or more thickening agents (abstract; claim 1). The lower amount of the lipophilic compounds (i.e., 10%) falls within the instantly claimed range of 1 to 25%. The non-oxidizing composition necessarily comprises less than 1% of oxidizing agents as instantly claimed. The alkalizing agent is preferably selected from ammonia and/or ammonium salts, and/or organic amines and/or salts of organic amines according to the following general structure:
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, wherein the R groups read on the instantly claimed R groups ([0005]-[0008]; [0044]-[0049]; Examples; claim 1).
Regarding claim 2: The non-reducing composition necessarily comprises less than 1% by weight of a reducing agent, relative to the total weight of the composition.
Regarding claim 4: It is most preferred that the pH of the composition is 8.5 or more and 10.0 or less ([0036]-[0038]).
Regarding claim 13: The lipophilic compounds are selected from natural and/or vegetable oils, mineral oil, and fatty acid esters consisting of linear or branched, saturated or unsaturated fatty acids with C12 to C22 being esterified with linear or branched primary alcohols with C3 to C12, silicones, lauryl alcohol, and/or their mixtures ([0062]; claim 5).
Regarding claim 15: The lipophilic compounds are present at a total concentration of 10% to 80% by weight as discussed above, with the lower amount of 10% falling within the instantly claimed range of 1 to 20%.
Regarding claim 17: The composition is a permanent waving composition ([0043]; claim 17).
The teachings of Breakspear differ from that of the instant invention in that Breakspear does not explicitly teach an inorganic particulate thickening agent as defined in claims 1, 7, and 12.
Bouchara teaches a cosmetic composition for treating keratin fibers and a process for permanently reshaping keratin fibers via heat (abstract). The treatment of Bouchara gives the hair satisfactory cosmetic properties in terms of softness, feel and disentangling (p. 7, lines 5-7). Additionally, the cosmetic compositions do not run at the time they are applied to the keratin fibres nor when the iron is being passed over said fibres (p. 6, lines 5-7).
Bouchara specifically teaches the composition to contain one or more inorganic thickeners in the form of particles, which reads on the inorganic particulate thickening agent of claim 1.
The inorganic thickener particles of Bouchara have a primary number-average size ranging from 0.1 to 500 µm (abstract), even more preferably it ranges from 1 to 100 µm (p. 20, lines 7-9), which falls with range of claim 7 (i.e., 10 nm to 100 µm). Regarding the recitation of “determined by static light scattering technique”, particle size is inherent to a given particle and will be the same regardless of the measurement method.
The particulate thickener(s) of Bouchara are most preferably present in the cosmetic composition at an amount of 2% to 10% by weight relative to the total weight of the composition (p. 23, lines 9-14), which falls within the range of claim 12 (i.e., 0.1% to 30%).
Regarding the thickener of claim 1: It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the inorganic particulate thickener of Bouchara into the reshaping composition of Schneider since the inorganic particulate thickeners of Bouchara are known and routine in the art of permanent keratin reshaping as taught by Bouchara. One of ordinary skill in the art could have either performed simple substitution of one known thickener for another (i.e., substitute the thickener of Breakspear with the thickener of Bouchara) or combined the known thickener of Bouchara according to known methods into the composition of Breakspear, both to predictably yield the instant invention. One of ordinary skill in the art would have been motivated to incorporate the thickener of Bouchara since said thickener provides a composition that gives the hair satisfactory cosmetic properties, in terms of softness, feel and disentangling and reduce running of the composition during application.
Regarding claim 7: It would have been further obvious to use an inorganic thickener with the particle size of Bouchara (i.e., 1 to 100 µm) in the combined composition above, since such a particle size is taught as known and effective for particles used as thickeners in permanent reshaping compositions. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Regarding claim 12: It would have been obvious to provide the inorganic particulate thickener in the combined composition at an amount of 2% to 10% by weight relative to the entire composition since such an amount is taught as known and effective in permanent reshaping compositions by Bouchara. One of ordinary skill in the art would have been motivated to followed the guidance of Bouchara when incorporating inorganic thickener particles into a reshaping composition since the amount taught by Bouchara is known and effective for providing a reshaping composition with good softness, feel and disentangling properties. Additionally, one of ordinary skill in the art would have reached the instantly claimed amount through no more than routine experimentation depending on the desired rheology of the final composition. 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).
As such, the prior art teaches all the components of the composition as claimed with amounts within the instantly claimed ranges. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
One of ordinary skill in the art would have had a reasonable expectation of success in achieving the above modifications since Breakspear and Bouchara both teach the use of thickeners in keratin reshaping compositions which are activated by heat.
Regarding the viscosity of claim 1, because the composition made obvious by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
2. Claims 1-2, 4, 7, 12-13, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Schneider, J., et al. (WO 2019096815 A1, 05/23/2019, on record), hereinafter Schneider, in view of Bouchara, A, et al. (WO 2013144263 A1, 10/03/2013, on record), hereinafter Bouchara.
Schneider discloses a process for permanent waving keratin fibers, especially human hair, for achieving durable waves wherein fibers are treated with a reducing composition, a non-reducing and non-oxidizing alkaline composition and finally an oxidizing composition (abstract).
Regarding claim 1: The non-reducing and non-oxidizing aqueous composition comprises one or more alkalizing agent (p. 2, para. 4; p. 4, para. 5; claims 1 and 15). The pH of the composition is in the range of 7.5 to 12 (p. 4, para. 6), which falls within the instantly claimed pH range (i.e., 7 to 12). Suitable and most preferred alkalizing agents include ammonia and its salts (p. 5, para. 2; p. 6, para. 2; claims 9-10). The aqueous compositions of Schneider advantageously comprise a thickening agent (p. 7, para. 4; claim 14). The aqueous compositions may also comprise one or more fatty alcohols. Non-limiting examples are myristyl alcohol, cetyl alcohol, stearyl alcohol, behenyl alcohol, octyl dodecanol, cetostearyl alcohol, and their mixtures (p. 7-8, bridge paragraph). Such fatty alcohols read on the instantly claimed lipophilic compound as instantly claimed. The total concentration of fatty alcohol is preferably in the range of 1 to 10% by weight, calculated to total of each of the compositions (p. 8, para. 2), which falls within the instantly claimed range of 1 to 25%. The non-oxidizing composition necessarily comprises less than 1% of oxidizing agents as instantly claimed.
Regarding claim 2: The non-reducing composition necessarily comprises less than 1% by weight of a reducing agent, relative to the total weight of the composition.
Regarding claim 4: The pH of the non-reducing and non-oxidizing composition is most preferably 8.5 to 10 (p. 4, para. 6), which falls within the instantly claimed pH range (i.e., 8 to 10.5).
Regarding claim 13: The fatty alcohols may be cetyl alcohol, stearyl alcohol, cetostearyl alcohol (i.e., cetearyl alcohol), and their mixtures (p. 7-8, bridge paragraph).
Regarding claim 15: The total concentration of fatty alcohol is preferably in the range of 1 to 10% by weight (p. 8, para. 2), which falls within the instantly claimed range of 1 to 20%.
Regarding claim 17: The non-reducing and non-oxidizing composition of Schneider is used in a process for permanently waving keratin fibers (title; abstract; claims). Thus, the non-reducing and non-oxidizing composition reads on a permanent waving composition.
The teachings of Schneider differ from that of the instantly claimed invention in that Schneider does not explicitly teach the inorganic particulate thickening agent as defined in claims 1, 7, and 12.
Bouchara teaches a cosmetic composition for treating keratin fibers and a process for permanently reshaping keratin fibers via heat (abstract). The treatment of Bouchara gives the hair satisfactory cosmetic properties in terms of softness, feel and disentangling (p. 7, lines 5-7). Additionally, the cosmetic compositions do not run at the time they are applied to the keratin fibres (p. 6, lines 5-7).
Bouchara specifically teaches the composition to contain one or more inorganic thickeners in the form of particles, which reads on the inorganic particulate thickening agent of claim 1.
The inorganic thickener particles of Bouchara have a primary number-average size ranging from 0.1 to 500 µm (abstract), even more preferably it ranges from 1 to 100 µm (p. 20, lines 7-9), which falls with range of claim 7 (i.e., 10 nm to 100 µm). Regarding the recitation of “determined by static light scattering technique”, particle size is inherent to a given particle and will be the same regardless of the measurement method.
The particulate thickener(s) of Bouchara are most preferably present in the cosmetic composition at an amount of 2% to 10% by weight relative to the total weight of the composition (p. 23, lines 9-14), which falls within the range of claim 12 (i.e., 0.1% to 30%).
Regarding the thickener of claim 1: It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the inorganic particulate thickener of Bouchara into the reshaping composition of Schneider since the inorganic particulate thickeners of Bouchara are known and routine in the art of permanent keratin reshaping as taught by Bouchara. One of ordinary skill in the art could have either performed simple substitution of one known thickener for another (i.e., substitute the thickener of Schneider with the thickener of Bouchara) or combined the known thickener of Bouchara according to known methods into the composition of Schneider, both to predictably yield the instant invention. One of ordinary skill in the art would have been motivated to incorporate the thickener of Bouchara since said thickener provides a composition that gives the hair satisfactory cosmetic properties, in terms of softness, feel and disentangling and reduce running of the composition during application.
Regarding claim 7: It would have been further obvious to use an inorganic thickener with the particle size of Bouchara (i.e., 1 to 100 µm) in the combined composition above, since such a particle size is taught as known and effective for particles used as thickeners in permanent reshaping compositions. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Regarding claim 12: It would have been obvious to provide the inorganic particulate thickener in the combined composition at an amount of 2% to 10% by weight relative to the entire composition since such an amount is taught as known and effective in permanent reshaping compositions by Bouchara. One of ordinary skill in the art would have been motivated to followed the guidance of Bouchara when incorporating inorganic thickener particles into a reshaping composition since the amount taught by Bouchara is known and effective for providing a reshaping composition with good softness, feel and disentangling properties. Additionally, one of ordinary skill in the art would have reached the instantly claimed amount through no more than routine experimentation depending on the desired rheology of the final composition. 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).
As such, the prior art teaches all the components of the composition as claimed with amounts within the instantly claimed ranges. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
One of ordinary skill in the art would have had a reasonable expectation of success in achieving the above modifications since Schneider and Bouchara both teach the use of thickeners in keratin reshaping compositions.
Regarding the viscosity of claim 1, because the composition made obvious by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Double Patenting
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.
1. Claims 1-2, 4, 7, 12-13, 15, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,296,034 in view of Schneider and Bouchara. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Schneider and Bouchara.
Conflicting claim 1 recites a non-reducing, non-oxidizing reshaping composition for keratin fibers, the composition having a pH in the range of 7 to 12, and comprising: a) one or more organic alkalizing agents having a pKa of less than 9.0; b) one or more lipophilic compounds; c) one or more surfactants; and d) one or more thickening agents wherein the one or more organic alkalizing agents according to a) is tris-(hydroxymethyl)-aminomethane and/or a salt thereof. The conflicting claims differ from the instant claims in that the conflicting claims do not recite the specific alkalizing agents or inorganic particulate thickening agents of instant claim 1. Schneider discloses a process for permanent waving keratin fibers, especially human hair, for achieving durable waves wherein fibers are treated with a non-reducing and non-oxidizing alkaline composition comprising one or more alkalizing agent (p. 2, para. 4; p. 4, para. 5; claims 1 and 15). Suitable and most preferred alkalizing agents include ammonia and its salts (p. 5, para. 2; p. 6, para. 2; claims 9-10), which reads on the instantly elected alkalizing agent of instant claim 1. Bouchara teaches a cosmetic composition for treating keratin fibers and a process for permanently reshaping keratin fibers (abstract; p. 5, lines 19-30). The treatment of Bouchara gives the hair satisfactory cosmetic properties in terms of softness, feel and disentangling (p. 7, lines 5-7). Bouchara specifically teaches the composition to contain one or more inorganic thickeners in the form of particles, which reads on the inorganic particulate thickening agent of claim 1. It would have been prima facie obvious to one of ordinary skill in the art to add the ammonia of Schneider into the composition of the conflicting claims since ammonia is a routine and known alkalizing agent for permanent reshaping compositions as taught by Schneider. One of ordinary skill in the art could have performed simple substitution of one alkalizing agent for another to predictably yield the instant invention. Similarly, it would have been obvious to select the inorganic particulate thickener of Bouchara as the thickener of the conflicting claims since such thickeners are routine and known in the art of permanent keratin reshaping as taught by Bouchara. One of ordinary skill in the art could have therefore substituted one known thickener for another to predictably yield the instant invention.
Regarding the viscosity of claim 1, because the composition made obvious above is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Claims 1-2, 4, 7, 12-13, 15, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 14 of U.S. Patent No. 12,403,074 in view of Schneider and Bouchara. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Schneider and Bouchara.
Conflicting claim 1 recites a process for permanently waving keratin fibers which includes applying a second non-reducing and non-oxidizing aqueous composition comprising one or more alkalizing agents and having a pH ranging from 7.5 to 12. The alkalizing agent may be selected from a number of ammonium salts (conflicting claim 7), which will exist as both ammonium and ammonia in solution. At least one of the first, second, third, and fourth compositions comprises at least one of a thickening agent (conflicting claim 14). The conflicting claims differ from the instant claims in that they do not recite one or more lipophilic compounds nor the inorganic particulate thickening agents of instant claim 1. Schneider discloses a process for permanent waving keratin fibers, especially human hair, for achieving durable waves wherein fibers are treated with a reducing composition, a non-reducing and non-oxidizing alkaline composition and finally an oxidizing composition (abstract). In addition to an alkalizing agent, the non-reducing and non-oxidizing alkaline composition may also comprise one or more fatty alcohols. Non-limiting examples are myristyl alcohol, cetyl alcohol, stearyl alcohol, behenyl alcohol, octyl dodecanol, cetostearyl alcohol, and their mixtures (p. 7-8, bridge paragraph), which read on the instantly claimed lipophilic compound. The total concentration of fatty alcohol is preferably in the range of 1 to 10% by weight (p. 8, para. 2), which falls within the instantly claimed range of 1 to 25%. Bouchara, throughout the reference teaches a cosmetic composition for treating keratin fibers and a process for permanently reshaping keratin fibers (abstract; p. 5, lines 19-30). The treatment of Bouchara gives the hair satisfactory cosmetic properties in terms of softness, feel and disentangling (p. 7, lines 5-7). Bouchara specifically teaches the composition to contain one or more inorganic thickeners in the form of particles, which reads on the inorganic particulate thickening agent of claim 1. It would have been prima facie obvious to one of ordinary skill in the art to add 1 to 10% of fatty alcohol into the composition of the conflicting claims since this is a known and routine component in the art of permanent reshaping compositions as taught by Schneider. One of ordinary skill in the art could have combined the known fatty elements of Schneider with the known composition of the conflicting claims, also a non-reducing and non-oxidizing alkaline reshaping composition, to predictably yield the instant invention. It would have also been prima facie obvious to incorporate the inorganic particulate thickener of Bouchara as the thickener of the conflicting claims since such thickeners are routine and known in the art of permanent keratin reshaping as taught by Bouchara. One of ordinary skill in the art could have therefore substituted one known thickener for another to predictably yield the instant invention.
Regarding the viscosity of claim 1, because the composition made obvious above is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Claims 1-2, 4, 7, 12-13, 15, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 10 of U.S. Patent No. 12,667,175 in view of Schneider and Bouchara. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Schneider and Bouchara.
Conflicting claim 1 recites a process for permanently waving keratin fibers which includes applying a non-reducing and non-oxidizing aqueous composition onto the fibers, wherein the non-reducing and non-oxidizing aqueous composition comprises one or more alkalizing agent and has an alkaline pH. Specifically, the pH of the non-reducing and non-oxidizing aqueous alkaline composition is in the range of 7.5 to 12 (conflicting claim 8). The alkalizing agent may be selected from a number of ammonium salts (conflicting claim 10), which will exist as both ammonium and ammonia in solution. The copending claims differ from the instant claims in that they do not recite one or more lipophilic compounds nor a particulate thickening agent, as recited in instant claim 1. Schneider discloses a process for permanent waving keratin fibers, especially human hair, for achieving durable waves wherein fibers are treated with a reducing composition, a non-reducing and non-oxidizing alkaline composition and finally an oxidizing composition (abstract). In addition to an alkalizing agent, the non-reducing and non-oxidizing alkaline composition may also comprise one or more fatty alcohols. Non-limiting examples are myristyl alcohol, cetyl alcohol, stearyl alcohol, behenyl alcohol, octyl dodecanol, cetostearyl alcohol, and their mixtures (p. 7-8, bridge paragraph), which read on the instantly claimed lipophilic compound. The total concentration of fatty alcohol is preferably in the range of 1 to 10% by weight (p. 8, para. 2), which falls within the instantly claimed range of 1 to 25%. Bouchara, throughout the reference teaches a cosmetic composition for treating keratin fibers and a process for permanently reshaping keratin fibers (abstract; p. 5, lines 19-30). The treatment of Bouchara gives the hair satisfactory cosmetic properties in terms of softness, feel and disentangling (p. 7, lines 5-7). Bouchara specifically teaches the composition to contain one or more inorganic thickeners in the form of particles, which reads on the inorganic particulate thickening agent of claim 1. It would have been prima facie obvious to one of ordinary skill in the art to add 1 to 10% of fatty alcohol into the composition of the conflicting claims since this is a known and routine component in the art of permanent reshaping compositions as taught by Schneider. One of ordinary skill in the art could have combined the known fatty elements of Schneider with the known composition of the conflicting claims, also a non-reducing and non-oxidizing alkaline reshaping composition, to predictably yield the instant invention. It would have also been prima facie obvious to incorporate the inorganic particulate thickener of Bouchara as the thickener of the conflicting claims since such thickeners are routine and known in the art of permanent keratin reshaping as taught by Bouchara. One of ordinary skill in the art could have therefore substituted one known thickener for another to predictably yield the instant invention.
Regarding the viscosity of claim 1, because the composition made obvious above is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Claims 1-2, 4, 7, 12-13, 15, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/788,073 in view of Bouchara. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Bouchara.
Copending claim 1 recites a non-reducing, non-oxidizing reshaping composition for keratin fibers having a pH in the range of 7 to 12, the non-reducing, non-oxidizing reshaping composition comprising: a) one or more alkalizing agents selected from: ammonia and/or ammonium salt(s), and/or organic amine(s) and/or salt(s) of organic amines; b) one or more lipophilic compounds; c) one or more surfactants; and d) one or more thickening agents being soluble in the one or more lipophilic compounds according to b) and comprising at least one homo- or copolymer comprising monomers of styrene. The copending claims differ from the instant claims in that they do not recite the inorganic particulate thickening agent of instant claim 1. Bouchara teaches a cosmetic composition for treating keratin fibers and a process for permanently reshaping keratin fibers (abstract; p. 5, lines 19-30). The treatment of Bouchara gives the hair satisfactory cosmetic properties in terms of softness, feel and disentangling (p. 7, lines 5-7). Bouchara specifically teaches the composition to contain one or more inorganic thickeners in the form of particles, which reads on the inorganic particulate thickening agent of claim 1. As such, it would have been prima facie obvious to one of ordinary skill in the art to 1) add the inorganic particulate thickener of Bouchara into the reshaping composition of the copending claims or 2) substitute the styrene thickener of the copending claims with the inorganic particulate thickener of Bouchara since such thickeners are routine and known in the art of permanent keratin reshaping as taught by Bouchara. Regarding option 1, one of ordinary skill in the art could have combined prior art elements according to known methods to predictably yield the instant invention. Regarding option 2, one of ordinary skill in the art could have substituted one known element for another (i.e., a thickener) to predictably yield the instant invention.
Regarding the viscosity of claim 1, because the composition made obvious above is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 04/03/2026 have been fully considered but they are not persuasive:
(1) Applicant argues that Comparative Examples 1 and 7, set forth on pages 22 and 24 of the present application, comprise every feature of pending claim 1 excluding the presently claimed particulate thickening agents and are therefore representative of the compositions of Schneider which also exclude the presently claimed particulate thickening agents. According to the tables on pages 22 and 24, Applicant states that Inventive Examples 2-6 and 8-10 achieve surprising, superior, and unexpected results with respect to curl ratio as compared to Comparative Examples 1 and 7, and are therefore strong evidence that the composition of claim 1 is nonobvious in view of the prior art.
In response to these arguments, it is noted that the compositions of newly applied Breakspear and previously relied on Schneider are taught to comprise thickening agents. The difference between the compositions of the prior art and the instantly claimed invention lie in the type of thickener (i.e., polymeric vs inorganic particulate), rather than the presence of the thickener all together. As such, a comparative example representative of the “closest prior art” entails a composition having every component claimed but in place of a inorganic particulate thickener, the comparative example comprises a polymeric thickener, such as the polysaccharides and synthetic acrylate types taught by Schnieder or the homopolymers or copolymers of ethylene and/or propylene and/or butylene and/or styrene and hydrogenated vegetable oil as taught by Breakspear.
Secondly, in the presentation of unexpected results, the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). While Comparative Examples 1 and 7 of the instant specification show lower curl ratios than the working examples, there is no indication of the statistical significance associated with these results. For instance, how many trials were performed to obtain the curl ratio or is each example a single trial? Is the variation between the comparative example and the working examples statistically significant? Regarding the variation, as discussed in the prior advisory action, it is difficult to judge if working examples 2-6 are “significantly” different than comparative example 1 when there is a bigger difference in curl ratio between working examples 2 and 6 than there is between working example 2 and comparative example 1. Applicant is welcome to submit a declaration comprising more data or with a statement of statistical significance for the currently provided examples.
(2) Applicant argues that Bouchara’s clay thickeners are for oil rich, high temperature straightening systems, not aqueous alkaline perm compositions. The particulate inorganic thickeners are designed to thicken oils, not water according to Bouchara, and are activated by flat iron temperatures rather than moist heat environments of a digital perm. Applicant further argues that there is no teaching in Schneider that particulate clays would be desirable or compatible, nor is there recognition of the heat stability or dripping problem solved by the presently claimed cosmetic compositions. There is no disclosure in Bouchara that its clays operate in high water, high pH alkaline compositions and the combination is technologically incompatible for several reasons.
In response to these arguments, the compositions of Schneider comprise lipophilic compounds, as discussed in the rejection above and as claimed. Thus, the design of particulate inorganic thickeners to thicken oils is relevant to the compositions of Schneider, which comprise oily substances in addition to water. Regarding the temperature difference between the methods of use in the composition of Schneider and that of Bouchara, both compositions are used for permanently reshaping keratin making their teachings relevant to one another regardless of heat levels. Additionally, the claims are drawn to a product not a process, meaning that the temperature at which the reshaping process occurs is simply a matter of intended use. There is no explicit teaching that the thickeners of Bouchara would be undesirable or incompatible in the compositions of Schneider. The fact that inorganic particulate thickeners are known and routine in permanent reshaping compositions and provide compositions with beneficial properties would encourage one of ordinary skill in the art to try and incorporate them. Moreover, the disclosures of both Schneider and Bouchara address the same technical problem – providing permanent reshaping compositions which reduce hair damage. Regarding the recognition of the desirable properties provided in the instant invention, Bouchara does recognize that compositions comprising the particulate thickeners do not run at the time of application (i.e., solves a dripping problem). Even so, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Regarding Applicant’s argument of technical incompatibility, it is discussed above that there is no explicit teaching in Bouchara against the use of clays in permanent reshaping compositions such as those of Schnieder. Additionally, the compositions of Schnieder comprise lipophilic compounds which are compatible with the clays of Bouchara.
Conclusion
No claims allowed.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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