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 .
Reopening of Prosecution After Appeal
In view of the Appeal Brief filed on 06/25/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
Formal Matters
Receipt of Applicant’s Appeal Brief filed 06/25/2026 is acknowledged.
Claims 1-10, 12-14, and 16-22 are pending.
Claims 11 and 15 are canceled.
Claim 19 is amended.
Claims 12 and 14 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 3 and 17 remain withdrawn from consideration as being drawn to nonelected species.
Claims 1-2, 4-10, 13, 16, and 18-22 are under consideration in the instant Office action to the extent of the elected species, i.e., the one or more compound(s) according to group a) is succinic acid, the one or more compound(s) according to group b) is serine, and the one or more conditioning compound(s) according to group c) is cetrimonium chloride.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections set forth in the Office action dated 02/18/2026 are hereby withdrawn.
Claim Rejections - 35 USC § 103
The rejection set forth in the Office action dated 02/18/2026 is hereby withdrawn in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF REJECTION
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 4-10, 13, 16, and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mahadeshwar et al (US 2018/0116942 A1, published 05/03/2018, cited in IDS dated 11/06/2023) in view of Dreher et al (US 2017/0246094 A1, published 08/31/2017).
Mahadeshwar et al teach compositions for treating keratinous substrates, such as the hair, comprising at least one amino acid, at least one carboxylic acid, at least one amine, and at least one cationic polymer as well as kits comprising the compositions (See entire document, e.g., Abstract). The compositions are suitable for treating hair subjected to treatments including straightening, wherein the composition can be applied before, during and/or after the treatment of the hair, e.g., a hair shaping treatment such as straightening in order to alter the shape of the hair, while providing other cosmetic advantages such as shine, conditioning, fiber strength, and/or a healthy appearance to the hair and avoiding or minimizing damage to the hair (e.g., [0010], [0013]).
The at least one amino acid is chosen from glycine, alanine, serine, proline, or mixtures thereof (e.g., [0033]). The at least one amino acid may be present in an amount ranging from about 0.01% to about 20%, from about 0.1% to about 15%, from about 1% to about 12%, or from about 2% to about 10%, by weight, based on the total weight of the composition (e.g., [0034]). The at least one carboxylic acid may be chosen from oxalic acid, malonic acid, malic acid, glutaric acid, citraconic acid, citric acid, maleic acid, glycolic acid, succinic acid, adipic acid, tartaric acid, fumaric acid, adipic acid, sebacic acid, benzoic acid, and glyoxylic acid monohydrate, as well as combinations thereof (e.g., [0040]). The at least one carboxylic acid may be present in an amount ranging from about 0.01% to about 20%, from about 0.1% to about 15%, or from about 1% to about 12%, by weight, based on the total weight of the composition (e.g., [0042]).
The compositions may comprise a cosmetically acceptable solvent such as water (e.g., [0065]). The cosmetically acceptable solvent may be present in an amount ranging up to about 90%, such as up to about 85%, up to about 80%, up to about 75%, up to about 70%, up to about 65%, or up to about 60%, for example from about 5% to about 85% by weight, from about 10% to about 80% by weight, from about 15% to about 75% by weight, or from about 20% to about 70% by weight, based on the total weight of the composition (e.g., [0068]).
The compositions may optionally, i.e., but do not have to, be mixed with an oxidizing composition containing at least one oxidizing agent (e.g., [0073]).
At least one auxiliary agent may also be present in the compositions, wherein auxiliary agents include conditioning agents (e.g., [0164]).
The compositions can also comprise, i.e., but do not have to, at least one cosmetically acceptable additive used conventionally in compositions for application onto hair, wherein cosmetically acceptable additives that can be used include reducing agents (e.g., [0167]-[0169]).
Mahadeshwar et al teach kits for chemical treatment of keratinous fibers, such as the hair (e.g., [0186]). Mahadeshwar et al teach a kit comprising a first compartment comprising a composition comprising at least one amino acid and at least one cationic polymer and a second compartment comprising a composition comprising at least one carboxylic acid and at least one amine (e.g., [0227]-[0233]).
Mahadeshwar et al do not et al teach the pH of the composition. Mahadeshwar et al do not provide examples of suitable conditioning agents, and therefore, do not teach cetrimonium chloride as the conditioning agent.
These deficiencies are made up for in the teaching of Dreher et al.
Dreher et al teach compositions for treating keratinous substrates, such as the hair, that can provide advantageous effects such as strengthening of the hair fiber, protecting hair fibers from damage or further damage, enhanced properties such as softness, shine, conditioning, healthy appearance, while at the same time, providing desired effects such as coloring, lightening, straightening, relaxing, and/or shaping (See entire document, e.g., Abstract, [0012]).
Dreher et al teach a composition comprising monoethanolamine and at least one carboxylic acid, wherein suitable carboxylic acids include succinic acid and wherein the at least one carboxylic acid may be present in an amount ranging from about 0.50% to about 10% based on the weight of the composition (e.g., [0164], [0172], [0174]). Dreher et al teach that the composition may include at least one auxiliary component present in an amount up to about 25% by weight based on the total weight of the composition, wherein auxiliary components include conditioning agents (e.g., [0181]-[0182]). Conditioning agents that may be included include cetrimonium chloride and serine (e.g., [0179]-[0180]). Dreher et al teach that the pH of the composition can range from about 1 to about 7, such as from about 2 to about 5, or about 3 to about 4 (e.g., [0183]).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Mahadeshwar et al and Dreher et al, to provide a composition for treating the hair and a kit for treating the hair, wherein the composition can be applied before, during, and/or after treatment of the hair, e.g., a hair shaping treatment such as straightening in order to alter the shape of the hair, wherein the composition comprises at least one amino acid being serine present from about 0.01% to about 20%, from about 0.1% to about 15%, from about 1% to about 12%, or from about 2% to about 10% by weight, at least one carboxylic acid being succinic acid present from about 0.01% to about 20%, from about 0.1% to about 15%, or from about 1% to about 12% by weight, at least one amine, at least one cationic polymer, a cosmetically acceptable solvent being water present in an amount ranging up to about 90%, such as up to about 85%, up to about 80%, up to about 75%, up to about 70%, up to about 65%, or up to about 60%, for example from about 5% to about 85% by weight, from about 10% to about 80% by weight, from about 15% to about 75% by weight, or from about 20% to about 70% by weight, and a conditioning agent being cetrimonium chloride, wherein weight percents are based on the total weight of the composition, wherein the composition has a pH of from about 1 to about 7, such as from about 2 to about 5, or about 3 to about 4, and wherein the kit comprises a first compartment comprising a composition comprising the at least one amino acid being serine and the at least one cationic polymer and a second compartment comprising a composition comprising the at least one carboxylic acid being succinic acid and the at least one amine.
One of ordinary skill in the art would have been motivated to use cetrimonium chloride as the conditioning agent in the composition of Mahadeshwar et al because Dreher et al teach a list of suitable examples of conditioning agents as including cetrimonium chloride. There would have been a reasonable expectation of success in using cetrimonium chloride as the conditioning agent in the composition of Mahadeshwar et al because Mahadeshwar et al teach the compatibility of the composition with conditioning agents and Dreher et al teach the compatibility of cetrimonium chloride in a composition also comprising serine and succinic acid. One of ordinary skill in the art would have been motivated to look to the teaching of Dreher et al in order to provide a teaching for the pH of the composition of Mahadeshwar et al because Mahadeshwar et al does not teach the pH of the composition. There would have been a reasonable expectation of success in looking to the teaching of Dreher et al for a teaching of the pH of the composition of Mahadeshwar et al because of the similarity of the compositions.
The composition of Mahadeshwar et al in view of Dreher et al comprising succinic acid as the at least one carboxylic acid renders obvious the elected species of succinic acid as the one or more compound(s) according to group a) of the instant claims. The composition of Mahadeshwar et al in view of Dreher et al comprising serine as the at least one amino acid renders obvious the elected species of serine as the one or more compound(s) according to group b) of the instant claims.
The composition of Mahadeshwar et al in view of Dreher et al not comprising at least one oxidizing agent meets the limitation of “the composition is free of oxidizing agents” of instant claim 1. The composition of Mahadeshwar et al in view of Dreher et al not comprise a reducing agent meets the limitation of “the composition is free of reducing agents” of instant claim 22. See AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (“[A] reference need not state a feature’s absence in order to disclose a negative limitation.”); Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1004–05 (Fed. Cir. 2009) (affirming finding that reference disclosed “uncoated” film where it did not describe the film as coated and did not suggest necessity of coatings).
The composition of Mahadeshwar et al in view of Dreher et al meets the limitation of “aqueous” of instant claim 1 because, as evidenced by Page 3 Lines 15-18 of the instant specification, the term ‘aqueous’ within the meaning of the present invention requires the composition to have a water content of 50% by weight or more, preferably to have a water content of 60% by weight or more, more preferably to have a water content of 70% by weight or more, calculated to the total weight of the composition.
Regarding the ranges required by the instant claims, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Specifically regarding the requirement that the weight ratio of compound(s) according to group a) to compound(s) according to group b) is in the range of 0.2 to 5 (instant claim 6) and in the range of 0.5 to 1 (instant claim 20), the composition of Mahadeshwar et al in view of Dreher et al comprising serine from about 0.01% to about 20%, from about 0.1% to about 15%, from about 1% to about 12%, or from about 2% to about 10% by weight and succinic acid from about 0.01% to about 20%, from about 0.1% to about 15%, or from about 1% to about 12% by weight, wherein weight percents are based on the total weight of the composition, necessarily overlaps the recited ranges of weight ratio required by instant claims 6 and 20.
Thus, the composition and kit of Mahadeshwar et al in view of Dreher et al renders obvious instant claims 1-2, 4-10, 13, 16, and 18-22.
Response to Applicant’s Arguments
Applicant’s arguments filed in the Appeal Brief dated 06/25/2026 have been considered, however the arguments are moot as they pertain to the rejection under 35 USC 103 set forth in the Office action dated 02/18/2026 which has been withdrawn.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
Prosecution Insights