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 .
This office action is in response to the reply filed 11/10/2025.
DETAILED ACTION
Election/Restriction
During a telephone conversation with R. James Balls on 7/7/2025 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Mr. Balls affirmed the election of Group I in the reply filed 11/10/2025.
Response to Arguments
All of Applicant’s arguments filed 11/10/2025 have been fully considered. In view of the amendments to the claims, all prior art rejection presented in the office action mailed 8/12/2025 are withdrawn and new rejections are presented below addressing the claims as newly amended
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New 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.
Claim(s) 1-5, 7-18 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2020/0206111), Josso (US 5,985,925) and Gupta (US 2006/0110415). Josso and Gupta are newly cited.
Regarding claim 1 and 17: Lee discloses a hair care and conditioning composition comprising propylene glycol, one or more monoalcohols having 2-6 carbons atoms; one or more cationic surfactants; and one or more fatty compounds (Abs). Lee teaches the composition to be essentially anhydrous and preferably contain less than 0.5% water [0027].
Regarding claim 1(b), 7-8, 17(b) and 18: Lee teaches the inclusion of 20-95wt% of propylene glycol [0021].
Regarding claim 1(c), 9-10 and 17(c): Lee teaches the inclusion of cationic surfactants in amounts ranging from 0.1-5% [0042], preferred surfactants for use include stearamidopropyl dimethylamine [0039].
Regarding claim 1(d), 11-12 and 17(d): Lee teaches the inclusion of fatty alcohols in amounts ranging from 0.1-15% [0059] and this preferably includes myristyl alcohol (a C14 linear alcohol) [0058].
Regarding claim 1(e) and 17: As discussed above, Lee teaches compositions essentially free of water (i.. less than 0.5%), as such it’s obvious to formulate the composition to have 0% water. Lee further teaches the inclusion of monoalcohols having 2-6 carbons in amounts ranging from about 5-30% [0034]. Lee defines about to mean “+/-5%” of the indicated number [0213], as such Lee teaches amounts of monoalcohols in amounts as low as 4.75% which overlaps with the claimed less than 5%.
Regarding claims 2 and 17: Lee teaches the composition to be transparent [0007].
Regarding claim 3 and 17: Lee teaches the composition to be solubilized, non-emulsified composition until it is applied to wet or damp hair, whereupon it forms a lamellar phase in situ [0013].
Regarding claim 4: Instant claim 4 requires a composition comprising less than 1% of ethanol, Lee teaches that monoalcohols other than ethanol can be used, these include propanol, butanol, pentanol, etc. [0033], as such it would have been prima facie obvious to use any of the taught monoalcohols, which are not ethanol, with a reasonable expectation of success as Lee teaches the use of one monoalcohol and teaches functionally equivalent alternatives which are not ethanol and the use of any of the taught alternatives is prima facie obvious.
Regarding claims 14 and 17(e): Lee teaches the inclusion of fatty compounds such as fatty acids [0043]. The total amount of fatty compound present ranges from 0.1-20% [0044].
Regarding claims 15 and 17(f): Lee teaches the inclusion of one or more thickening agents [0066] in amounts ranging from 0.01-20% [0079].
Regarding claims 16 and 17(g): Lee teaches the inclusion of 0.1-15% of sucrose esters, reading on one or more miscellaneous ingredients [0087].
Regarding claim 21: Lee teaches the composition to be free silicones [0088]
Regarding claim 22: While Lee teaches fatty acids to be a suitable type of fatty compound which can be added to the composition [0153], Lee does not teach the use of fatty acids to be critical, as such it would have been prima facie obvious to use any of the other fatty compounds taught by Lee to formulate a composition free of fatty acids.
However, Lee does not teach the inclusion of 5-95% of one or more alpha hydroxy acid esters as required by instant claim 1(a), 5 and 17(a).
Josso teaches cosmetic UV photoprotective compositions for skin and hair which comprise a sunscreening agent and PF-enhancing amount of at least one dialkyl tartrate (Abs). Josso teaches the cosmetics to have improved sun protection factor to protect the hair from the damaging effects if UV radiation, in particular solar radiation (col. 1, lines 15-25).
Regarding claims 1(a), 5 and 17(a): A preferred dialkyl tartrate is diethyl tartrate and this can be used in amounts ranging from 0.1-10% (col. 3, lines 10-45).
Gupta teaches topical compositions which can comprise diethyl tartrate as a skin penetration agent and can be formulated as anhydrous compositions (Gupta – claims 5 and 35).
It would have been prima facie obvious to modify the teachings of Lee with those of Josso and Gupta. One of skill in the art would have been motivated to add 0.01-10% of diethyl tartrate and a sunscreening agent as taught by Josso into the hair conditioning composition of Lee as this is taught to be effective at protecting the hair from damaging effect of UV radiation. One of skill in the art would have a reasonable expectation of success Josso teaches that its known in the art to include sun protection agents in hair cosmetics and Gupta shows that diethyl tartrate can be used in anhydrous compositions and its prima facie obvious to pursue the known options within the technical grasp of a skilled artisan to formulate a hair cosmetic comprising sunscreen agents.
Regarding claims 13 and 17(b): As discussed above, the prior art makes obvious a composition comprising 0.01-10% of diethyl tartrate (a) and 20-95wt% of propylene glycol (b), this provides a ratio of (a) : (b) that overlaps with the claimed ranges.
Claim(s) 1-5 and 7-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Carvalho (WO 2022/178599), Josso (US 5,985,925) and Gupta (US 2006/0110415). Josso and Gupta are newly cited.
Regarding claim 1 and 17: De Carvalho discloses a hair cosmetic composition capable of forming an emulsion in situ upon combination with extraneous water. The compositions are substantially anhydrous (less than 10% water) (Abs).
Regarding claim 1(b), 7-8, 17(b) and 18: De Carvalho teaches the inclusion of 5-50wt% of polyols such as propylene glycol (De Carvalho – claims 1 and 3 and working examples 1-7).
Regarding claim 1(c), 9-10 and 17(c): De Carvalho teaches the inclusion of cationic surfactants in amounts ranging from 4-10% and includes stearamidopropyl dimethylamine (De Carvalho – claim 1, pg. 6, lines 7-8 and working examples 1-7).
Regarding claim 1(d), 11-12 and 17(d): De Carvalho teaches the inclusion of fatty alcohols in amounts ranging from 2-15% and this preferably includes myristyl alcohol (a C14 linear alcohol) (pg. 25, lines 10-17 and page 26, lines 1-10).
Regarding claim 1(e), 4 and 17: As discussed above, De Carvalho teaches composition essentially free of water (i.e. less than 0.5%), as such it’s obvious to formulate the composition to have 0% water. De Carvalho further teaches the inclusion of monoalcohols having 1-10 carbons in amounts ranging from about 20-90% [0034]. The use of monoalcohols having 7-10 carbons as the sole monoalcohol is prima facie obvious and contemplated by the reference, this results in a composition that is free of monoalcohols having 1-6 carbons and free of ethanol.
Regarding claims 2-3 and 17: De Carvalho teaches the composition to be transparent and solubilized, until combined with extraneous water, whereupon the composition forms an emulsion in situ (pg. 36, lines 1-5). De Carvalho teaches the formation of a lamellar phase (De Carvalho – claim 14). As the composition forms an emulsion upon combination with water, the solubilized composition prior art combining with water is expected to be a non-emulsified composition.
Regarding claims 14 and 17(e): De Carvalho teaches the inclusion of fatty compounds such as fatty acids. The total amount of fatty compound present ranges from 0.5-10% (pg. 25, lines 20-25).
Regarding claims 15: De Carvalho teaches the inclusion Peg-12 dimethicone in amounts of 3%, reading on emollient.
Regarding claims 16 and 17(g): De Carvalho teaches the inclusion of 1.5-2% of fragrance, reading on one miscellaneous ingredient (working examples).
However, De Carvalho does not teach the inclusion of 5-95% of one or more alpha hydroxy acid esters as required by instant claim 1(a), 5 and 17(a).
Josso teaches cosmetic UV photoprotective compositions for skin and hair which comprise a sunscreening agent and PF-enhancing amount of at least one dialkyl tartrate (Abs). Josso teaches the cosmetics to have improved sun protection factor to protect the hair from the damaging effects if UV radiation, in particular solar radiation (col. 1, lines 15-25).
Regarding claims 1(a), 5 and 17(a): A preferred dialkyl tartrate is diethyl tartrate and this can be used in amounts ranging from 0.1-10% (col. 3, lines 10-45).
Gupta teaches topical compositions which can comprise diethyl tartrate as a skin penetration agent and can be formulated as anhydrous compositions (Gupta – claims 5 and 35).
It would have been prima facie obvious to modify the teachings of De Carvalho with those of Josso and Gupta. One of skill in the art would have been motivated to add 0.01-10% of diethyl tartrate and a sunscreening agent as taught by Josso into the hair composition of De Carvalho as this is taught to be effective protecting the hair from damaging effect of UV radiation. One of skill in the art would have a reasonable expectation of success Josso teaches that its known in the art to include sun protection agents in hair cosmetics and Gupta shows that diethyl tartrate can be used in anhydrous compositions and its prima facie obvious to pursue the known options within he technical grasp of a skilled artisan to formulate a hair cosmetic comprising sunscreen agents.
Regarding claims 13 and 17(b): As discussed above, the prior art makes obvious a composition comprising 8-15% of diethyl tartrate (a) and 5-50wt% of propylene glycol (b), this provides a ratio of (a) : (b) that overlaps with the claimed ranges.
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613