That DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/11/2026 has been entered.
Election/Restriction
During a telephone conversation with R. James Balls on 7/16/2025 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 Claims 19-20 and 34-37 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The Election was affirmed by R. James Ball in the reply filed 1/8/2026.
Response to Arguments
All of Applicant’s arguments filed 6/11/2026 have been fully considered.
103 Rejections
Applicant remarks that the rejection is based on hindsight and unsupported routine optimization between the propylene carbonate and the amodimethicone.
This is not persuasive. As for the assertion that the rejection is based on hindsight, as noted in MPEP 2145, any obviousness rejection is in a sense necessarily a reconstruction based on hindsight reasoning and is not improper if it takes into account only knowledge within the level of ordinary skill in the art at the time the claimed invention was made. Applicants have provided no evidence that the rejection is not based on knowledge available to those of ordinary skill in the art. As for the assertion of “unsupported routine optimization” this is not persuasive as the rejection is not based on optimization of the amounts of propylene carbonate and amodimethicone, it’s based on overlapping ranges. The prior art teaches individual amounts of propylene carbonate and amodimethicone which provide a ratio that overlaps with the claimed ranges, overlapping ranges are obvious absent evidence of criticality. Optimization is not necessary when ranges overlap.
Applicant remarks that Kadir does not use silicone in any of the working examples.
This is not persuasive as the teachings of Kadir are not limited to the working examples. Kadir teaches amodimethicone to be suitable for use as a conditioning agent, therefore, it would have been prima facie obvious to use it in the composition of Kadir for its taught purpose.
Applicant remarks that the amounts of Kadir result in a ratio that is much broader than claimed.
This is not persuasive as the ratio of Kadir overlaps with the claimed ratio and overlapping ranges are prima facie obvious absent evidence showing the claimed range to be critical, which has not been presented.
Applicant remarks that the prior art does not reflect that the amount of amodimethicone relative to propylene carbonate is relevant to the straightening process.
This is not persuasive, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that the overlap of Kadir alone does not, by itself, establish obviousness as Kadir does not require amodimethicone, does not identify it as a straightening agent, and does not suggest it would enhance propylene carbonate's straightening efficacy.
This is not persuasive. As previously discussed Kadir taches amodimethicone to be suitable for use as a conditioning agent, therefore, it would have been prima facie obvious to use it in the composition of Kadir for its taught purpose in the claimed amounts, which results in an overlapping ratio. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
On pages 9-10, Applicant states “The rejection argues that optimizing the amounts of cyclic carbonate and amodimethicone would result in the claimed compositions. Final Office Action, p. 6” and argues that optimizing dimethicone for its purpose as a conditioner would be expected to enhance straightening.
This is not persuasive as page. 6 of the office action only states that it would be obvious to optimize the amounts of water, no where in in the office action does the examiner state it would be obvious to optimize the amounts of cyclic carbonate and amodimethicone.
Applicant argues that the arriving at the claimed amount of propylene carbonate requires optimizing the amounts of cyclic carbonates away from what Kadir shows to be most effective and the claims as amended require propylene carbonate to be the only cyclic carbonate.
This is not persuasive as Kadir teaches suitable amounts of use are 10-40% and this overlaps with the claimed range, optimization is not needed to make the claimed range obvious. With respect to propylene carbonate being the only cyclic carbonate, Kadir teaches “at least one hair straightening agent” which clearly suggests that only one agent needs to be used and propylene carbonate is taught as a suitable agent for use, thus the use of propylene carbonate alone is prima facie obvious even if the working examples of Kadir use a blend of ethylene carbonate and propylene carbonate, as working examples and preferred embodiments do not teach away from broader, non-preferred embodiments.
Applicant states “arriving at the pending claims would not involve routine optimization of a known result-effective variable within Kadir's preferred teachings.”
As discussed above this is not persuasive as the rejection is not based on optimization and the teachings of the reference are not limited to the preferred embodiments.
In summary, Applicant argues on pages 12-15, that the specification shows unexpected results that is commensurate in scope with the instant claims.
This is not persuasive as the data presented is still not commensurate in scope with the claimed despite some amendments. As previously noted, a single very specific composition was tested and a single data point is not sufficient to exemplify a trend on the exemplified data. While the claims are narrower with respect to components (a) and (b), the data tested demonstrates a single ratio having an unexpected effect but the claimed recite a much broader ratio. With respect to components (c)-(i), the data presented used very specific species or a specific combination of ingredients, however the claimed are much broader than this. Further, Applicant also provides no evidence that the differences shown in Table 6 were statistically significant. Appellant has not provided any error bars or other explanation of the data in the Specification suggesting that the results represent a single experiment. See McNeil-PPC, Inc. V. L. Perrigo Co., 337 F.3d 1362, 1370 (Fed. Cir. 2003) (Finding evidence unpersuasive that "was based on the results of a study involving only nine participants and thus did not rise to the level of statistical
significance" and finding the studies were "not shown to be reproducible."). Therefore "even assuming that the test methodology were valid, the test results were not statistically significant. These are all determinations of credibility, reliability, and weight." Novartis Pharm. Corp. V. Watson Labs., Inc., 611 Fed. Appx. 988, 999 (Fed. Cir. 2015).
Double Patenting Rejections
In view of the amendments to the claims, the DP rejections previously presented are withdrawn.
Claim Interpretation
Multiple claims recite “polyurethane/polyether” the instant specification also refers to these thickeners as polyurethane-polyether, thus the “/” will be interpreted as reciting “polyurethane-polyether” or “polyurethane polyether”.
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.
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.
Claim(s) 18, 21-24, 29 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kadir (WO2015/069823), as evidenced by Baust (US 2004/0096813). Baust is newly cited.
Kadir discloses a composition and process for straightening hair (Abs). The technology related to a thermally-activated composition comprising at least one hair straightening agent (a) and at least one hair straightening adjuvant (b) and a carrier [0004].
Regarding claim 18(a), 21(a) and 22(a): Kadir teaches the hair straightening agent to be present in amounts ranging from 10-40wt% [0020], suitable agents include propylene carbonate, ethylene carbonate and mixture thereof, as these have low toxicity and do not form byproducts during the heating stage [0045, 0047 and 0048]. Kadir teaches that mixtures can be used and teaches “at least one”, both which suggests that the use of single hair straightening agent is suitable, therefore, it would have bene prima facie obvious to just propylene carbonate as the only hair straightening agent in the composition.
Regarding 18(b), 21(b) and 22(b): Kadir teaches the inclusion of a volatile and non-volatile silicone conditioning agent, suitable agents include amino functional polydimethysiloxane, specifically amodimethicones [0120]. The silicone conditioning agents are taught to be used in amounts ranging from 0.01-20%, preferably 0.1-10wt% [0129].
Regarding the weight ratio of cyclic carbonate (a) and aminofunctionalized silicone/amodimethicone (b): The prior art makes obvious the use of 10-40% (a) and 0.1-10% (b), which results in a weight ratio of (a) : (b) of 4-400:1 which overlaps with the claimed ranges and overlapping ranges are prima facie obvious absent evidence of unexpected results.
Kadir teaches that rheology modifiers can be included, these increase the overall viscosity of the composition to provide a composition that adheres well to hair [0158].
Regarding claims 18(c), 21(c), 22(c), 24 and 29: Kadir teaches suitable rheology modifiers to include polysaccharides such as guar gum, hydroxypropyl celluloses, xanthan, etc. [0168], thus the inclusion of any of these agents is prima facie obvious and yielding no more than would be expected from such an arrangement. These can be used alone or in combination in amounts ranging from 0.1-10% [0169].
Regarding claims 18(d), 21(d), 22(d) and 32: Kadir teaches suitable rheology modifiers to include HASE polymers such as PEG-150/decyl alcohol/SMDI copolymer [0165], thus the inclusion of any of these agents is prima facie obvious and yielding no more than would be expected from such an arrangement. These can be used alone or in combination in amounts ranging from 0.1-10% [0169].
Regarding claims 18(e), 21(e) and 22(e): Kadir teaches that non-ionic surfactants can be added to the composition, these include sorbitan fatty acid esters, etc. [0093]. These can be used in amounts ranging from 0.001-20wt% [0096].
Regarding claims 18(f), 21(f) and 22(f): Kadir teaches that emollient such as mineral oil, vegetable oil, shea butter, fatty alcohol esters, etc., can be added in amounts ranging from 1-15wt% [0109-0112].
Regarding claims 18(g), 21(g) and 22(g): Kadir teaches that humectants such as glycerin, propylene glycol, polyethylene glycol, etc. can be added in amounts ranging from 0.01-20wt% [0106-0107].
Regarding claims 18(h), 21(h) and 22(h): Kadir teaches that water can be used as a suitable carrier/excipient and exemplifies the use of water 70% (table 1) and 53.78% (table 8), thus teaching ranges which overlap with those claimed. Kadir further teaches that the choice and amount of each excipient will vary with the purpose and character of the end product and can be readily determined by a skilled artisan [0067], thus it would have been obvious to optimize the amounts of water present in the composition.
Regarding claims 18(i) and 21(i): Kadir teaches the inclusion of preservatives in amounts ranging from 0.01-3%[0178], reading on miscellaneous ingredient.
Kadir does not teach a specific embodiment having all the claimed elements.
That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. AG. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is... a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of various disclosed ingredients including propylene carbonate, amodimethicone, polysaccharides, nonionic associative thickeners, nonionic surfactants, non-silicone based fatty compounds, water soluble solvents, water and miscellaneous ingredients, as discussed above, for inclusion hair treatment composition from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Instant claim 21: Regarding the consisting of language in claim 21, Kadir makes obvious a composition comprising component (a)-(i) as claimed, however, Kadir also comprises as a required component a guanidine moiety containing adjuvant compound (Abs and Kadir – claim 1). Kadir teaches this ingredient to be used in a weight ratio of 1.5-1 to about 10:1 (cyclic carbonate : guanidine compound) and teaches the combined amount of these agents to be about 20-35% [0026-0027], thus the cyclic carbonate can be calculated to be used in amounts ranging from 12-31.81% and the guanidine compound in amounts of 1.81-14%. This results in a weight ratio of cyclic carbonate and amino-functionalized silicone of 1.2-318.1:1.
Kadir teaches a required component of the composition to be a guanidine moiety containing adjuvant compound, guanidine carbonate is a pH adjusting agent, suitable adjuvant compounds include l-arginine (Kadir – claim 16), as evidenced by Baust this compound is an antioxidant [0019], which falls within ingredient (i).
Regarding claims 22-23: Kadir teaches that the pH of the composition should range from 1.5-9.5 [0170].
Claim(s) 18, 21-24, 25-26, 29, 30-31, and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kadir (WO2015/069823), as evidenced by Baust (US 2004/0096813), as applied to claims 18, 21-24, 29 and 32 above and further in view of Lee (US 2019/0125650). Lee is newly cited.
As discussed above, Kadir makes obvious the limitations of claims 18, 21-24, 29 and 32, but Kadir does not each the polysaccharide to be sclerotium gum does not teach non-ionic surfactant to be alkoxylated fatty alcohol
Regarding claims 25 and 30: As discussed above, Kadir teaches suitable rheology modifiers to include polysaccharides such as guar gum, hydroxypropyl celluloses and xanthan, etc.
Lee teaches hair care compositions and teaches guar gum, xanthan gum and sclerotium gum to be equivalent polysaccharide gums which function as thickening agents and rheology modifiers [0094-0095].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Kadir with those of Lee. One of skill in the art would have been motivated to substitute the rheology modifiers of Kadir, such as guar gum with sclerotium gum as Lee teaches guar gum and sclerotium gum to be art recognize equivalent rheology modifiers and its prima facie obvious to substitute one art recognized equivalent for another.
One of skill in the art would have a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
As recognized by MPEP §2144.06, it is prima facie obvious to substitute art-recognized equivalents, and an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Regarding claims 26 and 31: Kadir teaches that suitable non-ionic surfactant including sorbitan fatty acid ester and alkyl polyglucosides [0093].
Lee taches hair care composition and teaches the inclusion of nonionic surfactants [0131], suitable nonionic surfactants include polyethoxylated fatty alcohols (reading on a alkoxylated fatty alcohol) and ethoxylated fatty acid esters of sorbitan [0175] and alkylpolyglucoside type surfactants [0176].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Kadir with those of Lee. One of skill in the art would have been motivated to use as the non-ionic surfactants of Kadir, polyethoxylated fatty alcohols as Lee teaches polyethoxylated fatty alcohols and alkylpolyglucoside to be art recognize equivalent non-ionic surfactants and its prima facie obvious to substitute one art recognized equivalent for another. One of skill in the art would have a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim(s) 18, 21-26, 27-28, 29-31, 32 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kadir (WO2015/069823) and Lee (US 2019/0125650), as evidenced by Baust (US 2004/0096813), as applied to claims 18, 21-26, 29-31 and 32 above and further in view of Ogihara (US 2022/0202684).
As discussed above, Kadir makes obvious the limitations of claims 18, 21-24, 29 and 32, but Kadir does not teach the thickener to be PEG-240/HDI copolymer bis-decyltetradeceth-20 ether.
Regarding claims 27-28 and 33: As discussed above, Kadir teaches suitable rheology modifiers to include HASE polymers such as PEG-150/decyl alcohol/SMDI copolymer.
Ogihara teaches cosmetic compositions and teaches PEG-240/HDI copolymer bis-decyltetradeceth-20 ether, PEG-150/stearyl alcohol/SMDI copolymer and PEG-150/decyl alcohol/SMDI copolymer to be suitable urethane associative thickeners for use [0033].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Kadir with those of Lee. One of skill in the art would have been motivated to substitute the PEG-150/decyl alcohol/SMDI copolymer rheology modifier of Kadir with PEG-240/HDI copolymer bis-decyltetradeceth-20 ether as Ogihara teaches PEG-150/decyl alcohol/SMDI copolymer and PEG-240/HDI copolymer bis-decyltetradeceth-20 ether to be art recognize equivalent thickening agents and its prima facie obvious to substitute one art recognized equivalent for another. One of skill in the art would have a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Conclusion
No claims are allowable.
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
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