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 Claims
Claim amendment filed on 05/08/2026 is acknowledged.
Claims 10-11 and 21 remain cancelled. Claim 5 is now cancelled.
Claims 17-19 remain withdrawn for being drawn to nonelected groups.
Claims 1, 3, 6-7, 13-15, 20 and 22-24 are amended.
Claims 1-4, 6-9, 12-16, 20, and 22-24 are pending and being examined on the merits herein.
Priority
This instant application 18288205, filed on 10/25/2023, is a 371 of PCT/EP2022/060812, filed on 04/25/2022, which claims foreign priority of European Patent Office (EPO) 21171559.4, filed on 04/30/2021.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 02/10/2026) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 05/08/2026.
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7 recites “C12/C18” and “C16/C18”, while a hyphen between the carbon numbers, e.g., C8-C18, C6-C18, C12-C18 appear in other claims. In light of applicant’s remark, if C12/C18 and C16/C18 convey the same meaning as C12-C18 and C16-C18 respectively, the format of such meaning should keep consistent throughout the claim set.
Appropriate correction is required.
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.
Claims 7, 13-15 and 23-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites “; mixed esters of pentaerythritol, fatty acids, citric acid, fatty alcohol and/or mixed esters of fatty acids containing 6 to 22 carbon atoms”. It is unclear whether the first “mixed esters of “ defines all the following terms: pentaetythritol, fatty acids, citric acid, fatty alcohol. If it does, then at least it results in a component as “mixed esters of fatty acids”, which is a broader scope of the same component as defined in “mixed esters of fatty acids containing 6 to 22 carbon atoms” shown as narrower scope in the claim. A broad range or limitation together with a narrow range or limitation makes this claim indefinite because it fails to clearly set forth the metes and bounds of the claim scope. Moreover, it is unclear how “ pentaetythritol, fatty acids, citric acid, fatty alcohol” can be mixed esters.
Claim 7 recites “alkyl glucosides, methyl glucoside, butyl glucoside, lauryl glucoside”. Alkyl glucosides are broader than the species. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The broad range or limitation together with a narrow range or limitation makes this claim indefinite because it fails to clearly set forth the metes and bounds of the claim scope.
Claim 7 recites “hardened castor oil” and “partial esters”, the terms “hardened” and “partial” are relative terms which render the claim indefinite. The term “hardened” or “partial” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how hard is considered hardened castor oil, and at what proportion or degree is considered partial esters.
Claims 13, 14, and 15 recites “according to claim 1, comprising less than 5 wt% water”, “according to claim 1, wherein the formulation comprises less than 5 wt% sulfur containing compounds, or “according to claim 1, wherein the formulation comprises less than 5 wt% polymers” respectively. It is unclear whether this component belong to a group in claim 1 a) to f), or it is an additional component. If it is the latter, it needs to specify as “wherein the formulation further comprises”. The phrase “less than” also makes the claim scope unclear whether 0% (still representing less than 5 wt%) is a valid option, resulting in the formulation does not contain this additional component.
Claim 15 recites “(meth)acrylic acid”. The claim is considered indefinite because there is a question or doubt as to whether the term between the parentheses defining a narrower scope is merely exemplary of the remainder of the claim, and therefore not required, or it is a required feature of the claim.
Claim 22 recites “… according to claim 5” while claim 5 is cancelled. The claim scope therefore is indefinite. The claim is interpreted as depending on claim 1 instead.
Claims 23 and 24 recites “according to claim 1, wherein the relaxer formulation comprises …” “a mixture of …”. It is unclear whether this mixture further defines the complete relaxer formulation or the mixture of agents herein belong to components in claims 1a)-1f), or the mixture of agents are additional agents in addition to Claim 1a)-1f). Further clarification is required to make the claims definite, that is, if the mixture of agents belong to a component of 1a)-1f), please indicate that; if they are additional agents, the language has to read “the relaxer formulation further comprises …”.
Claim Interpretation
Claims 1, 3, 13-15, 22-24 are interpreted as following:
The phrases in claim 1, “concentrated … relaxer” and “which is ready to use after mixing with water”, are interpreted as formulation properties or intended use of the formulation, because they do not materially contribute to the formulation. The phrase of “a structurant” is interpreted as “intended use” or property of the wax agent, since it does not materially contribute to the formulation.
Claim 3 is interpreted as the emollient c) according to claim 1 is a combination of at least two of the emollients selected from the group consisting of mineral oil, glyceride ester based on C6-C18 fatty acids and ethoxylated with 1 to 10 mol ethylene oxide, and Butyrospermum parkii (Shea) butter.
Claims 13-15 are interpreted as the formulation further comprising the ingredients as specified in each claim at less than 5 wt% of the total formulation, and 0 wt% of the specific ingredient is interpreted as an allowable option.
Claim 22 is interpreted as according to claim 1.
Claims 23 and 24 are interpreted as according to claim 1, the formulation comprises a mixture of the specific ingredients belong to claim 1 c), 1e), and 1f), since they clearly do not belong to components 1 a), 1 b) and 1 d), and there is no indication that they are additional ingredients in addition to 1 a) -1 f).
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 1-4, 6-9, 12-16, 20, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Guardia et al. (US4605018, 08/12/1986, IDS of 11/27/2023), in view of Markus et al. (CN101677921, 03/24/2010, translation relied upon below, in record of 02/10/2026).
Guardia throughout the reference teaches hair relaxer compositions comprising guanidine hydroxide (e.g., Col. 1, Lines 18-24).
Regarding instant claims 1-2 and 7, Guardia teaches to use components corresponding to instant claim a) calcium hydroxide (corresponding to metal hydroxide in instant claim 1a) and calcium hydroxide in instant claim 2) with b) guanidine carbonate in the composition to obtain guanidine hydroxide for hair treatment, e.g., relaxation (Col. 1, Lines 19-25), and include c) emollient, such as lanolin products, petrolatum, mineral oil, cocoa butter, and the like (Col. 3, Lines 18-21), e) emulsifiers (e.g., Col. 3, Lines 45-53) that can be self-emulsifying emollients including glycerol stearate and PEG-100 stearate (known as esters of C18 fatty acid) (corresponding to O/W emulsifier in instant claim 7), also can be d) ethoxylated ethers and esters, propoxylated ethers and esters (wherein a combination of ethylene and propylene oxide is used seriatim), having laural (C12 as known in field of art) and cetyl (C16) derivatives, with stearate (C18) compounds (e.g., polymers such as polyethylene glycol ether of stearyl alcohol Brij 78, Brij 72, Col. 8, Lines 15; 24) being particularly preferred (corresponding to polymers of C8-C18 fatty alcohol alkoxylated with ethylene oxide and propylene oxide in instant clam 1d), and f) waxes especially having from 2 to 60 moles of ethylene oxide per mole of monofunctional alcohol or acid (e.g., Col. 3, Lines 45-64), corresponding to components a)-f) in instant claim 1.
Guardia exemplifies using 8.0% calcium hydroxide (resulted from 8.0 parts out of 100 parts total) in the composition (Example 1, Col. 9, lines 20-24), and 6.67% calcium hydroxide and 8.83 % guanidine carbonate (Example 3, Col. 10, Lines 22-34), corresponding to components a) metal hydroxide and b) guanidine carbonate, amounts falling within ranges 5 to 10 wt% of metal hydroxide and 5 to 10 wt% guanidine carbonate based on total weight of the formulation as recited amounts in instant claim 1a) and 1b) respectively. Guardia teaches c) emollient amount can be from 15% to 97.26% (e.g., Col. 4, Lines 45-47), and exemplifies mineral oil amount range 0.05-95% with preferred 56.80% in the general breakdown of components in the formulation (e.g., Col. 5-6, Table), overlapping with 50-70 wt% of an emollient as recited amount in instant claim 1c). Guardia teaches e) emulsifiers from 0.5 to 30 wt%, preferably from 10 to 20 wt% in the formulation (e.g., Col. 3, Lines 65-67), overlapping with 0.5 to 20 wt% amount in instant claim 1e), meanwhile, since Guardia teaches propoxylated ester or ethers containing laural, cetyl, and stearate derivatives (corresponding to copolymer of C8-C18 fatty alcohol alkoxylated with ethylene oxide and propylene oxide in instant claim 1d as discussed above), and waxes are specific emulsifiers (Col. 3, line 62), these emulsifier amount ranges can apply to d) copolymer and f) wax, of which 0.5-30 wt% overlapping with 0.01 to 2.0 wt% of a block copolymer amount in instant claim 1d), and both ranges overlapping with 5-15 wt% of a wax as recited amount in instant claim 1f). Guardia exemplifies in breakdown component table using polyoxyethylene (20) stearyl ether (or stearth-20) 1.94- 17.56 % or polyoxyethylene stearyl ether (steareth-2) 1.87-12.44% (Col. 5-6, Table, Lines 23-58), overlapping with block copolymer 0.01 to 2.0 wt% amount in instant claim 1d). Guardia exemplifies using Syncrowax HRS-C present at 7 wt% or 6.5 wt% or 5 wt% in formulations (Examples 2-5, Col. 9-10), falling within amount range of wax 5-15% in instant claim 1f).
Regarding instant claim 3, Guardia teaches c) emollient can be those known to the art, such as lanolin products, petrolatum, mineral oil, cocoa butter, and the like (Col. 3, Lines 18-20), and Cyclochem NI (polyethylene glycol ether of cetyl alcohol), Arlacel 165 (ICI), a mixture of glycerol stearate and PEG-100 stearate (Col. 3, Lines 41-44; Col. 9, Example 1). It would be obvious and convenient for artisans in the field to swap cocoa butter with shea butter. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Regarding instant claims 8-9 and 23-24, Guardia teaches self-emulsifying emollient as a mixture of glycerol stearate and PEG-100 stearate (e.g., Col. 3, Line 43), the latter known in the art as polyethoxylated of C18 stearic acid containing 100 mols of ethylene oxide, corresponding to instant claims 8 and 23-24. Guardia teaches emulsifiers laural (C12 as known in field of art) and cetyl (C16) derivatives, stearate (C18) compounds ethoxylated with ethylene oxide, e.g., 2 to 60 moles of ethylene oxide per mole for monofunctional alcohols or acids (Col. 3, lines 59-64), overlapping with carbon numbers of C12-C18 fatty alcohol, and C12-18 fatty alcohol ethoxylated with overlapping 15 to 40 mol ethylene oxide in instant claims 9 and 23-24. As discussed above, Guardia teaches emollient, e.g., mineral oil, amount can be at range 0.05-95% (e.g., Col. 5-6, Table), and emulsifiers can range from 0.5 to 30 wt% in the formulation (e.g., Col. 3, Lines 65-67). Therefore, the agents in instant claim 24, in light of claim interpretation, can be as emollients or emulsifiers, with the instantly claimed amount ranges 0.1 to 5 wt% and 0.4 to 15 wt% overlapping with those taught by Guardia.
Regarding instant claims 13-15, Guardia exemplifies anhydrous formulations with 0% water, 0% sulfur containing compounds, and 0% polymers based on methacrylic acid or their derivatives, e.g., Examples 4 and 5 (Col. 10), overlapping with range of less than 5% in instant claims.
Regarding instant claims 16 and 20, Guardia teaches that the composition can be packaged in a single container (e.g., Col. 1, lines 40-41), corresponding to 1-pack in instant claims.
Guardia does not explicitly teach block copolymer as C8-C18 fatty alcohol alkoxylated with ethylene oxide and propylene oxide as recited in instant claim 1d), although Guardia exemplifies polymer of polyethylene glycol ether of C18 stearyl alcohol, and teaches both polyethylene and propoxylated ethers and esters with C12, C16 and C18 fatty acid are suitable for the composition as discussed above. Guardia does not teach the formulation comprises 0.01 to 1.5% polyethoxylated hydrogenated castor oil ethoxylated with 20 to 100 mol ethylene oxide as recited in instant claim 1 d), or the polyethoxylated castor oil is ethoxylated with 30 to 50 mol ethylene oxide in instant claim 22, and Guardia does not teach the block copolymer of C8-C18 fatty alcohol is alkoxylated with 5 to 15 mol ethylene oxide and 1 to 3 mol propylene oxide as recited in instant claims 4 and 22. Guardia does not explicitly teach emulsifier as O/W type as recited in instant claim 1e). Guardia does not teach the formulation comprises a 0.01 to 2.0% of a C12-C18 fatty alcohol ethoxylated with 1 to 10 mol ethylene oxide as in instant claim 6. Guardia does not teach natural wax as recited in instant claim 12. Guardia teaches using glyceryl stearate, but does not explicitly teach glyceryl mono stearate as recited in instant claims 8 and 23-24.
Markus throughout the reference teaches cosmetic preparations and compositions containing light-feeling oils or so-called light emollients such as hydrocarbons (e.g., [0002]; [0004]) used for caring for skin and/or hair (e.g., [0027]; [0030]).
Markus teaches that various nonionic emulsifiers are suitable for the composition, such as, sorbitan monoesters [0116], alkyl monoglycosides [0117], polyol esters [0119], esters based on fatty acids with glycols including polyglycerol or sugar alcohol or alkyl glucosides or polyol (e.g., [0121]; [0123]), fatty alcohols alkoxylated with ethylene oxide and/or propylene oxide [0124] (corresponding to O/W emulsifiers in instant claim 7). Markus teaches that depending on the formulation, it may be advantageous to additionally use at least one emulsifier selected from nonionic O/W emulsifiers (HLB value: 8-18), such as the ethylene oxide adducts mentioned above with a relatively high degree of ethoxylation, e.g., 10 to 20 ethylene oxide units for O/W emulsifiers (e.g., [0129]), corresponding to O/W emulsifier in instant claim 1e).
Markus teaches proper emulsifier species, for instance, 2 to 50 mol of ethylene oxide and/or 1 to 20 mol of propylene oxide onto straight-chain C8-C40 fatty alcohols, or onto C12-C40 fatty acids (e.g., [0114]), corresponding to block copolymer of C8-C18 fatty alcohol alkoxylated with ethylene oxide and propylene oxide in instant claim 1d), 4 and 22 with overlapping carbon ranges of C8-C18, oxide ranges of 5 to 15 mol of ethylene oxide and 1 to 3 mol propylene oxide as instantly recited; also corresponding to instant claim 6 with overlapping C12-C18 carbon numbers of fatty alcohol and 1 to 10 mol ethylene oxide. Markus teaches other suitable emulsifiers such as, 7 to 60 mol of ethylene oxide onto castor oil [0118], and products of ethylene oxide onto castor oil and/or hydrogenated castor oil (e.g., [0120]), corresponding to polyethoxylated hydrogenated castor oil ethoxylated with 20 to 100 mol ethylene oxide as recited in instant claim 1 d), and polyethoxylated castor oil ethoxylated with 30 to 50 mol ethylene oxide in instant claim 22.
Markus also teaches using fatty acid monoesters of products of 1 to 50 mol of ethylene oxide onto glycol (e.g., [0115]), or suitable fatty acid partial glycerides i.e. industrial mono- and/or diesters of glycerol and fatty acids having 12 to 18 carbon atoms including glyceryl mono stearate corresponding to glyceryl mono stearate (e.g., [0163]) in the formulation, corresponding to glyceryl mono stearate in instant claims 8 and 23-24.
Markus specifies that formulations generally contain one or more emulsifiers in an amount of 0 to 40% by weight, preferably 0.1 to 20% by weight, more preferably 0.1 to 15% by weight, and especially 0.1 to 10% by weight, based on the total weight of the formulation (e.g., [0109]), overlapping with the block copolymer amount of 0.01 to 2.0 wt% in instant claim 1d), and overlapping with amount range of 0.01 to 2.0% of C12-C18 fatty alcohol ethoxylated with ethylene oxide as in instant claim 6, with amount range of 0.01 to 1.5% polyethoxylated hydrogenated castor oil in instant claim 22.
Markus indicates that suitable waxes can be used in the formulation, for example, natural vegetable waxes, mineral waxes (e.g., [0162]), corresponding to instant claim 12.
It would have been prima facie obvious for one person with ordinary skills in the art to implement the agents taught by Markus into the hair relaxer formulation taught by Guardia to arrive at current invention. Because Guardia already specifies the general suitable components for the formulation including emollient, polymers of alkoxylated fatty alcohols, emulsifier, and wax, in addition to active ingredients metal hydroxide and guanidine, while Markus teaches various suitable agents that match the functional roles Guardia desires. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, all the carbon numbers, weight amount ranges overlap with those taught by prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Response to Arguments
Applicant’s remarks/arguments filed on 05/08/2026 have been fully considered.
35 U.S.C. 112 Rejections
Applicant believes the remarks are sufficient to overcome the stated grounds of 35 U.S.C. 112(b) and 112 (d) rejections.
Some 112 rejections are overcome by amendments and remarks, but there are maintained/new 112 rejections. Please find the details in the office action as presented above in light of the claim amendments and remarks.
Art Rejections
Applicant asserts that Guardia or Markus does not provide teaching of the specific mixture of polyethoxylated hydrogenated castor oil ethoxylated with 20 to 100 mol ethylene oxide and a block copolymer of C8-C18 fatty alcohol alkoxylated with ethylene oxide and propylene oxide as instantly claimed.
One cannot show nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what
the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686
F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012). Because the ground of rejection is obviousness type rejection, neither Guardia nor Markus requires to teach all elements in instant claims.
Combined teaching of Guardia and Markus teaches the current invention as presented in office action above.
Applicant asserts that Guardia examples rely on steareth 20 and steareth 2, which are ethoxylated stearyl ethers, i.e., neither EO/PO block copolymers nor containing propylene oxide units, and Markus does not rectify this deficiency.
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Moreover, Guardia teaches fatty alcohol that can be alkoxylated with ethylene oxide and propylene oxide in the formulation; meanwhile Markus teaches polyethoxylated hydrogenated castor oil ethoxylated with ethylene oxide and copolymer of fatty alcohol alkoxylated with ethylene oxide and propylene oxide as instantly claimed, as presented in office action above and copied the most relevant paragraphs below for reference (in bold font for emphasis).
Regarding instant claims 1-2 and 7, Guardia teaches to use components corresponding to instant claim a) calcium hydroxide (corresponding to metal hydroxide in instant claim 1a) and calcium hydroxide in instant claim 2) with b) guanidine carbonate in the composition to obtain guanidine hydroxide for hair treatment, e.g., relaxation (Col. 1, Lines 19-25), and include c) emollient, such as lanolin products, petrolatum, mineral oil, cocoa butter, and the like (Col. 3, Lines 18-21), e) emulsifiers (e.g., Col. 3, Lines 45-53) that can be self-emulsifying emollients including glycerol stearate and PEG-100 stearate (known as esters of C18 fatty acid) (corresponding to O/W emulsifier in instant claim 7), also can be d) ethoxylated ethers and esters, propoxylated ethers and esters (wherein a combination of ethylene and propylene oxide is used seriatim), having laural (C12 as known in field of art) and cetyl (C16) derivatives, with stearate (C18) compounds (e.g., polymers such as polyethylene glycol ether of stearyl alcohol Brij 78, Brij 72, Col. 8, Lines 15; 24) being particularly preferred (corresponding to polymers of C8-C18 fatty alcohol alkoxylated with ethylene oxide and propylene oxide in instant clam 1d), and f) waxes especially having from 2 to 60 moles of ethylene oxide per mole of monofunctional alcohol or acid (e.g., Col. 3, Lines 45-64), corresponding to components a)-f) in instant claim 1.
Markus teaches proper emulsifier species, for instance, 2 to 50 mol of ethylene oxide and/or 1 to 20 mol of propylene oxide onto straight-chain C8-C40 fatty alcohols, or onto C12-C40 fatty acids (e.g., [0114]), corresponding to block copolymer of C8-C18 fatty alcohol alkoxylated with ethylene oxide and propylene oxide in instant claim 1d), 4 and 22 with overlapping carbon ranges of C8-C18, oxide ranges of 5 to 15 mol of ethylene oxide and 1 to 3 mol propylene oxide as instantly recited; also corresponding to instant claim 6 with overlapping C12-C18 carbon numbers of fatty alcohol and 1 to 10 mol ethylene oxide. Markus teaches other suitable emulsifiers such as, 7 to 60 mol of ethylene oxide onto castor oil [0118], and products of ethylene oxide onto castor oil and/or hydrogenated castor oil (e.g., [0120]), corresponding to polyethoxylated hydrogenated castor oil ethoxylated with 20 to 100 mol ethylene oxide as recited in instant claim 1 d), and polyethoxylated castor oil ethoxylated with 30 to 50 mol ethylene oxide in instant claim 22.
Applicant asserts that it is critical to have EO/PO fatty alcohol block copolymer in combination with polyethoxylated hydrogenated castor oil ethoxylated with ethylene oxide in the formulation for achieving high stability (no segregation after 1 month), as evidenced by data shown in Examples 1-4 (containing castor oil with EO/PO copolymer) vs. Comparison Example 5 (containing castor oil only, not EO/PO).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., high stability, no segregation after 1 month) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
MPEP 716.02(d) states “[W]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”; further, MPEP 716.02 (d) II states “[T]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)”.
The data in the examples of instant specification is not commensurate in scope with the instant claims, claiming that castor oil has to be combined with both EO/PO. In detail, the comparison Example 5 does not comprise both EO and PO in the formulation, but there are no other Examples to show castor oil with either EO or PO as comparative controls. therefore, the instant result only provides evidence that castor oil without both EO/PO cannot achieve desirable feature, however, the data fails to prove that castor oil combining with EO or PO also cannot achieve desirable feature. Furthermore, the result is rather a qualitative measure without statistical analysis, and drawing conclusion of significance based on such result is premature. Thus, the instant scope of claiming both EO and PO together with castor oil is critical has not been demonstrated in the presented data.
Moreover, prior art of combined teaching Guardia and Markus teaches EO, PO, or both can be combined with castor oil in the formulation, therefore, whatever property the formulation constitutes, it would necessarily be present in prior art.
In conclusion, the arguments are not persuasive. Rejections are maintained.
Please refer to entire office action as complete response to remarks/arguments.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUE X. LIU can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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