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
Amendment filed on 02/23/2026 is acknowledged.
Claims 1, 8, 12, 16, and 20 are amended.
Claims 1-20 are pending and being examined on merits herein.
Priority
The instant application 18355447, filed on 07/20/2023, does not claim priority.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 12/01/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 02/23/2026.
NSDP rejection over Application No. 18355516 (App’516) has been withdrawn because the amended claims of App’516 have overcome this rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
New Matter Rejection
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 16 each has been amended to add “less than about 2 wt.% of … selected from glycerin, propylene glycol, propanediol, dipropylene glycol, …” as part of the amendment filed on 02/23/2026. However, the instant specification does not provide support for the claimed amount range “less than about 2 wt.%” as recited. The instant specification (Pg. 44, Lines 14-22) recites “about 0.1 to about 20 wt.% of the one or more water soluble solvents, based on the total weight of the compositions. In further embodiments, the compositions include about 0.1 to about 15 wt.%, about 0.1 to about 10 wt.%, about 0.5 to about 20 wt.%, about 0.5 to about 15 wt.%, about 0.5 to about 10 wt.%, about 1 to about 20 wt.%, about 1 to about 15 wt.%, about 1 to about 10 wt.%, about 2 to about 20 wt.%, about 2 to about 15 wt.%, about 2 to about 10 wt.%, about 5 to about 20 wt.%, about 5 to about 15 wt.%, or about 5 to about 10 wt.%, based on the total weight of the compositions.” The ranges in specification do not support the instantly claimed range “less than about 2 wt.%”. Thus, the amended claim introduces new matter.
Claims 2-15 and 17-20 are rejected accordingly because they are directly or indirectly depending upon either claim 1 or claim 16, and they do not clarify the new matter issue as addressed above.
If Applicant believes this rejection is in error, applicant must disclose where in the specification support for the entire scope of the amendment(s) and/or new claims can be found. As a result, Claim 27 represents new matter.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kadir et al. (WO2019200027, 10/17/2019, IDS of 05/03/2024) in view of Goutsis et al. (US20140325768, 11/06/2014).
Regarding instant claim 1, Kadir teaches a process for straightening hair and reducing hair curls (corresponding to increasing smoothness of hair and reducing frizz), comprising applying a hair treatment composition comprising propylene carbonate, and a heating appliance at a temperature of at least 150 C for a sufficient heat treatment time to modify the hair (e.g., Abstract). Kadir indicates the hair care composition comprising a) propylene carbonate; b) a glycol from at least one of propylene glycol, 1,3-propane dial, dipropylene glycol, tripropylene glycol, and mixtures thereof; and c) a cosmetically acceptable carrier (e.g., Claim 1), wherein the carrier is water (Claim 16). The composition is free from alkylene carbonates, cyclic carbonates other than the propylene carbonate, and N-alyl-2-mercaptonacetamide.
Kadir indicates in the composition shown above that the total amount of component propylene carbonate a) + glycol component b) ranges from about 16 to about 35 wt.%, wherein amount a)/b) ratio is from about 0.3 to about 3.5, or from about 0.5 to about 3.5, or from about 0.6 to about 3, or from about 0.7 to about 2.5, or from about 0.75 to about 2 (e.g., Claim 1), which resulting in propylene carbonate amount range from about 3.7% to about 27.2% in the composition (the minimum amount of component a) propylene carbonate calculated when a/b=0.3 and total (a+b)=16%; maximum amount of component is calculated with a/b=3.5 and total (a+b)=35%). Kadir exemplifies in Examples 2-3, 6, 8, 10-12 compositions with propylene carbonate amount presenting from 5-15% (Table 1; [00278]). Kadir also indicates that propylene carbonate is reasonably soluble in water at room temperature (25 C), up to about 20 wt. % [0052]. Therefore, Kadir teaches the propylene carbonate amount in the composition from about 3.7% to about 20 wt. %, which overlaps with the range from about 1 to about 15% of propylene carbonate as recited in instant claim 1. Kadir teaches exemplifies propylene glycol amount in various formulations between 4-12%, e.g., Ex. 2-3, 6, 8, 10-12, among which the curls remain straight with no curl reversion after 3 washes; while (slight) curl reversion also occurs when propylene glycol amount is 0% in Ex. 9; 4% in Ex. 4; 9% in Ex. 5; 10.85% in Ex. 7; and 14, 95% and 90% in Ex. 16 and 17 respectively (e.g. Table 1; [00278]), suggesting that 0% and above 90% propylene glycol are definitely not working, while 4-12% may be workable with adjustments of propylene carbonate amounts, leaving artisans to test the propylene glycol ranges above 0% but below 4%, or above 12% to experiment.
Kadir specifies that after maintaining keratin fibers (e.g., hair) in contact with the composition for sufficient time, optionally drying the fibers to remove at least some of the cosmetically acceptable carrier component (e.g., water), the hair is subjected to heat treatment using heating appliance such as flat iron heated to a temperature at least 150 C (e.g., [0042]).
Regarding instant claim 2, Kadir indicates that heating can be carried out by any conventional heating means, such as hair dryer, helmet, hot iron, such as straighteners, curling irons, cakes, or wavers [009], with heating temperature ranging from about 150 to about 250 C, or from about 175 to about 240°C, or about 200 to about 235°C, or from about 220 to about 230°C (overlapping with temperature range of about 150 to about 280 C as recited in instant claim 2), for sufficient time to relax the keratin fibers, e.g., by reaching the glass transition temperature, which can vary, to some degree, depending on the moisture content [0042].
Regarding instant claim 3, Kadir indicates that non-aqueous solvents or diluents include silicones, and silicone derivatives can be included in the formulation (e.g., [0069]; [00153]).
Regarding instant claim 4, Kadir teaches alkyl amine surfactant, amino-functionalized silicone polymer amodimethicone, such as aminoethylamino propylsiloxane can be used in the composition [00104].
Regarding instant claims 5 and 6, Kadir teaches that film-forming polymers such as polyacrylic acid and sodium polyacrylate polymer fixatives, representing anionic polymers, are suitable for the composition (e.g., [00197]). Nonionic, cationic, and amphoteric hair setting polymers, cationic conditioning polymers can be used as hair fixing agents in the composition [00194], such as, amphoteric polymers including octylacryamide/ acrylates/ butylaminoethyl-methacrylate copolymer (such as the AMPHOMER® polymers, Akzo Nobel), acrylates/lauryl acrylate/stearyl acrylate/ethylamine oxide methacrylate copolymers (such as the DIAFORMER® polymers, Clariant Corp.), and the like [00196], many nonionic polymers [00195].
Regarding instant claim 7, Kadir teaches polysaccharide polymers, such as cationic cellulose derivatives and cationic starch derivatives modified with a quaternary ammonium halide moiety, are suitable for use in the composition [00123].
Regarding instant claim 8, Kadir teaches that polysaccharides obtained from tree and shrub exudates such as gum Arabic, gum gahatti, and gum tragacanth, pectin, xanthan, gellan, guar gum, starches, celluloses, and many others are suitable for the composition [0082].
Regarding instant claims 9-12, Kadir teaches thickeners Aculyn 44 (INCI Name: PEG-150/Decyl Alcohol/SMDI Copolymer), Aculyn 46 (INCI Name: PEG-150/Stearyl Alcohol/SMDI Copolymer [0079] suitable for the composition [0079]. Although Kadir does not indicate they are nonionic associative polyurethane/polyether thickeners, as MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."), therefore, Kadir teaches the claimed compounds are nonionic associative polyurethane/polyether thickeners.
Regarding instant claim 13, Kadir specifies that formaldehyde being used in many commercial modifying products, either as ingredient of the composition or as a reaction product that is formed on heating of the hair, can cause allergic reactions to the skin, eyes and lungs, severe damage to the eyes, and poses other health risks [0003]. The composition Kadir discloses as shown above (regarding instant claim 1) is free from formaldehyde, derivatives of formaldehyde, formalin, and any compounds that produce formaldehyde upon heating.
Regarding instant claim 14, Kadir teaches that the composition is devoid of harsh chemical reducing or oxidizing agents that can damage the hair and scalp and produce melliferous odors [0017]. The method Kadir discloses above does not comprise oxidizing compound or oxidizing composition to the hair.
Regarding instant claim 15, the method Kadir discloses as shown above does not comprise application of thioglycolic acid, thiolactic acid, or salts thereof; and does not comprise application of a peroxide.
Regarding instant claim 16, Kadir teaches a method for straightening hair, which reduces frizz and increases smoothness, consisting of i) applying a hair treatment composition comprising propylene carbonate (6-15 wt. %), water, glycol (corresponding to the instantly claimed component claim 16 h, water soluble solvent) (Table 1, Examples 2-3, 6, 8, 11-12; [00278]), wherein the composition is free from alkylene carbonates, cyclic carbonates other than the propylene carbonate, and N-alkyl-2-mercaptoacetamides, and ii) heat treatment of the hair at a target temperature of 210 C (at least 150 C, e.g., Abstract) according to dipping method ([00272]; [00274]; [00278]).
Regarding instant claim 17, Kadir teaches that the hair can be dried after treatment with the composition as shown above (regarding instant claim 16), by blow drying with a hair dryer, a drying hood, free drying, wiping with a towel, etc., prior to application of heat to raise the temperature of hair (e.g., [00273]; [0048]) and/or to avoid substantial release of heat to the environment during the heating stage (e.g., [0048]) using flat or round irons to raised surface temperature of at least 150 to about 280 C (e.g., [0047]).
Regarding instant claim 18, Kadir specifies that formaldehyde being used in many commercial modifying products, either as ingredient of the composition or as a reaction product that is formed on heating of the hair, can cause allergic reactions to the skin, eyes and lungs, severe damage to the eyes, and poses other health risks [0003]. The composition Kadir discloses as shown above (regarding instant claim 16) is free from formaldehyde, derivatives of formaldehyde, formalin, and any compounds that produce formaldehyde upon heating.
Regarding instant claims 19-20, Kadir indicates that the hair treatment method applying composition comprising propylene carbonate (as shown in regarding instant claim 1 and regarding instant claim 16), and heating via a flat iron at a temperature of about 150 C or such as about 210 C, the curly hair-tresses used in the tests, once straightened, can withstand up to 20 shampoo wash cycles, and the straightened hair-tresses look shiny and feel smooth and silky without malodor (e.g., [00267]). When compared with the identical comparative method except that the hair treatment composition lacks propylene carbonate, the propylene carbonate containing method (Example 6, 6.65% propylene carbonate, Table 1; [00278]) sustains straight hair after 3 washes, while the one without propylene carbonate shows curl reversion (Example 7, 0% propylene carbonate, Table 1; [00278]), demonstrating that the propylene carbonate containing composition in combination with the iron heating method reduces frizz and increases smoothness of the hair to a greater extent than the method without propylene carbonate in the composition.
Kadir does not explicitly teach rinsing the composition from the hair, prior to the heat treatment as recited in instant claims 1 B) and 16 B) and Kadir does not teach the soluble solvent amount is less than about 2 wt.% in the composition of the hair treatment method as recited in instant claims 1 (A)(c) and 16 (A)(h).
Regarding the rinsing element in instant claims 1B) and 16B), Kadir teaches that in exemplary embodiment the hair can be dried to some extent after treatment with the modifying composition prior to application of heat, and in general, drying (e.g., blow drying, wiping with a towel, etc.) is performed to remove solvent while retaining at least a portion, or all, of the applied hair care agent on the hair. For this reason, the hair is not rinsed (e.g., with water or other aqueous solutions) between the application and the heating stages (e.g., [0048]). Kadir also states that excess amount of the hair treatment composition solution is squeezed out and blow dried to at least 95% dryness before thermal modifying with a flat iron [00272]. As instant specification defines “rinse-off” refers to at least a portion of the composition is removed from the hair during the rinsing and/or washing. Therefore, the rinsing step in instantly claimed method has equivalent effect as the drying or squeezing step in prior art, as removing excessive amount of composition and remaining part of the composition on hair, while rinsing is less messy, and easier to manage than the squeezing or towel drying method. Furthermore, rinsing the composition from hair prior to heating would not risk the positive effect of modifying hair, as Kadir concludes that results of tests show that propylene carbonate in combination with certain glycols in certain concentrations, can readily penetrate the hair fibers and react with hard proteinaceous materials via a flat ion at temperature of about 150 C or such as about 210 C [00267], suggesting the composition already penetrated the hair fibers during the soaking and prior to heating. That would have motivated artisans in the field to choose rinsing, the step more convenient to manage than squeezing or towel drying, and take all the benefit of modifying hair by the method comprising the hair treatment composition and heat treatment as Kadir taught.
Especially, taking into consideration that Kadir implements the method to show curly hair can obtain straight, shiny, and smooth status after the treatment, which is a dramatic frizz reducing and smoothness increasing effect. For artisans in the field, for frizz reducing and smoothness increasing, a gentler approach with less amount of composition on the hair, rinsing with water would obviously be the better choice than squeezing or drying with towel. “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 MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Goutsis throughout the reference teaches an oxidizing agent preparation method for treating hair (e.g., Abstract; [0032]). Goutsis teaches that the composition used in the method can comprise 0.1 to 10.0 wt.% of one organic carbonate such as propylene carbonate (e.g., Claim 7), and solvents such as propylene glycol, propanediol, glycerol, butylene glycol, propanediol, may present in a quantity of 0.1 to 10.0 wt.% (e.g., Claim 5), overlapping with the instantly claimed amount of less than 2 wt.% of the solvents in instant claims 1 (A)(c) and 16 (A)(h).
It would have been prima facie obvious for one person with ordinary skills in the art prior to filing date to adjust solvent amount based on Goutsis and select suitable components based on Kadir’s composition and method to arrive at current invention. 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, the claimed temperature of at least 150 C of heat treatment is the same as that is taught by prior art. The claimed propylene carbonate amount and hot iron temperature ranges are overlapping with those taught in 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). Especially, because Kadir already shows the result from different solvent amounts in the formulation, leaving two ranges for artisans to experiment, while Goutsis teaches the solvent amounts in the composition at the range towards to the lower end of what Kadir teaches, it would be logical for artisans to optimize the amount within such a range and expect for reasonable success.
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.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18224125 (Hereafter App’125) in view of Kadir et al. (WO2019200027, 10/17/2019, IDS of 05/03/2024) and Goutsis et al. (US20140325768, 11/06/2014).
App’125 claim 1 reads on instant claim 1, except about 1 to about 15 wt.% of propylene carbonate and water. App’125 recites “from about 5% by weight to about 50% by weight of at least one acrylic carbonate ester having a plurality of C6-C18 fatty chains; and a liquid vehicle”.
App’125 claims 2-15 and 17-18 read exactly on instant claims 2-15 and 17-18 respectively.
App’125 claim 16 recites the same method consisting of i) and ii) that reads on instant claim 16 with exactly the same components from b)-j), except the propylene carbonate component is substituted with acyclic carbonate ester having a plurality of C6-C18 fatty chains at about 5-50 wt.%, and rinsing the composition from the hair prior to heat treatment is an optional step instead of in instant claim 16 being a required step.
App’125 does not recite propylene carbonate, solvent species and amount in the composition as recited in instant claims 1 and 16, and App’125 does not recite the method reduces frizz and increases smoothness of the hair to a greater extent as recited in instant claims 19-20.
Kadir and Goutsis teaches a method for reducing frizz and increasing smoothness comprising a hair treatment composition comprising propylene carbonate, with its amount in the composition present from about 3.7% to about 20 wt. %, which overlaps with the range from about 1 to about 15% of propylene carbonate as recited in instant claim 1, and less than 2% of propylene glycol in the composition, and also teaches that the method using propylene carbonate-comprising composition in combination with heat treatment can reduce hair frizz and increase smoothness after 3 washes of hair without losing the straightness, when compared side by side to comparative method which is identical to the method except that the hair treatment lacks propylene carbonate, as discussed above in great detail and incorporated herein.
It would have been prima facie obvious for a person with ordinary skills in art to substitute acrylic carbonate ester having a plurality of C6-C18 fatty chains of App’215 with propylene carbonate taught by Kadir to arrive at current invention. Simple substitution of one known element for another to obtain predictable results renders obviousness. See The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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, the claimed temperature of at least 150 C and hot iron temperature range of heat treatment are the same as that is taught by App’125. The claimed propylene carbonate and solvent amount ranges overlaps 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).
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 3-6, 8-16, and 18-20 of copending Application No. 18355455 (Hereafter App’455) in view of Kadir et al. (WO2019200027, 10/17/2019, IDS of 05/03/2024).
App’455 claim 1 recites a hair treatment composition comprising the components as shown in the screenshots below (with letters corresponding to claimed components; current App’455 amended (b) ratio of about 5:1 to about 2:1 instead of showing screenshot below as about 12:1 to 1:2 (a): (b)), in addition, claims 3-4 indicate the cyclic carbonate can be propylene carbonate. Therefore, App’455 claims 1 and 3-4 read into instant claim components a) and b) in instant claims 1 and 16, component c) in instant claims 3-4 and 16, component e) in instant claims 7, component f) in instant claim 9, component g)-j) in instant claim 16.
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App’455 claims 13-16, especially claim 18 recites a)-h) components (see screenshot below, with letters corresponding to instant components; Note that current App’455 deleted the phrase “selected from …” in (c), deleted phrase “(polyhydric alcohols)” “or a mixture thereof” in (g), deleted the phrase between parentheses “(e.g., …)” and “or a mixture thereof” in (i), changed “and/or isolates” phrase to “”protein isolates” in (i) ) that read into components a)-j) in instant claims 1, 3-4, 7-11, and 16. The composition in App’455 does not contain alkylene carbonate, N-alkyl-2-mercaptoacetamide, or formaldehyde, oxidizing component, or thioglycolic acid, thiolactic acid, or salts thereof, or a peroxide, corresponding to instant claims 1 and 13-16.
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App’455 recites amino-functionalized silicone species in claims 5-6, corresponding to instant claim 16 component c); App’455 claims 8-12 recite polysaccharide species and polymeric thickener species, read into instant claims 8-12. App’455 claims 19-20 recite a method treating hair comprising applying the composition to the hair; and subjecting the hair to a thermal heat treatment, for example, treating the hair with a flat ion at a temperature of about 150 C to about 280 C, which read into the method i) and ii) of instant claims 1 and 16-17, except after rinsing the composition from the hair in instant claims 1 and 16 is a step without rinsing the composition from the hair, drying the hair instead in App’455.
App’455 does not recite rinsing the composition from the hair step prior to heat treatment as recited in instant claims 1 and 16, or film-forming polymers as recited in instant claims 5-6, or the greater extent of the method for reducing frizz and increasing smoothness of the hair as recited in instant claims 19-20.
Kadir teaches film-forming polymers and greater extent of the method for reducing frizz and increasing smoothness of the hair as discussed above in great detail and incorporated herein.
Kadir teaches that in exemplary embodiment the hair can be dried to some extent after treatment with the modifying composition prior to application of heat, and in general, drying (e.g., blow drying, wiping with a towel, etc.) is performed to remove solvent while retaining at least a portion, or all, of the applied hair care agent on the hair. For this reason, the hair is not rinsed (e.g., with water or other aqueous solutions) between the application and the heating stages (e.g., [0048]). Kadir also states that excess amount of the hair treatment composition solution is squeezed out and blow dried to at least 95% dryness before thermal modifying with a flat iron [00272]. As instant specification defines “rinse-off” refers to at least a portion of the composition is removed from the hair during the rinsing and/or washing. Therefore, the rinsing step in instantly claimed method has equivalent effect as the drying or squeezing step in prior art, as removing excessive amount of composition and remaining part of the composition on hair, while rinsing is less messy, and easier to manage than the squeezing or towel drying method. Furthermore, rinsing the composition from hair prior to heating would not risk the positive effect of modifying hair, as Kadir concludes that results of tests show that propylene carbonate in combination with certain glycols in certain concentrations, can readily penetrate the hair fibers and react with hard proteinaceous materials via a flat ion at temperature of about 150 C or such as about 210 C [00267], suggesting the composition already penetrated the hair fibers during the soaking and prior to heating. That would have motivated artisans in the field to choose rinsing, the step more convenient to manage than squeezing or towel drying, and take all the benefit of modifying hair by the method comprising the hair treatment composition and heat treatment as Kadir taught.
Especially, taking into consideration that Kadir implements the method to show curly hair can obtain straight, shiny, and smooth status after the treatment, which is a dramatic frizz reducing and smoothness increasing effect. For artisans in the field, for frizz reducing and smoothness increasing, a gentler approach with less amount of composition on the hair, rinsing with water would obviously be the better choice than squeezing or drying with towel. “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 MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
It would have been prima facie obvious for one person with ordinary skills in the art to choose suitable components taught by Kadir into the hair heat treatment method and composition recited by App’455 to arrive at current invention. 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, the claimed temperatures are the same as recited in App’455, and the propylene carbonate amount range overlap with that in App’455. 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).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments with respect to claims art rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant asserts that Kadir does not teach the solvent amount range as in amended claims, therefore the art rejection over Kadir should be withdrawn.
In light of the claim amendment and applicant remarks, this argument is persuasive, and reference Goutsis et al. (US20140325768, 11/06/2014) is combined with Kadir to address the amended claim scope. Prior art Kadir and Goutsis teaches the instant invention, and therefore the art rejection cannot be withdrawn.
Please refer to the entire office action as a complete response to the remarks/arguments.
Conclusion
No claim is allowed.
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.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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