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 . Claims included in prosecution are claims 1-4 and 6-20.
Claim Objections
Claim 19 objected to because of the following informalities: “(iv)” in line 1-2 should be recited as --- (iii) ---. 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.
1. Claim 20 is 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 20 recites the limitation "wherein styling the hair comprises" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 18, from which claim 20 depends, makes no mention of such styling.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
1. Claim(s) 1-4, 6-8, 10-11, 13-15, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blowout Studio (How to Flat Iron Curly Hair, Jul. 24, 2020) (hereinafter Blowout) in view of Kadir et al. (US 2021/0154120, May 27, 2021) (hereinafter Kadir) and Stone et al. (US 2013/0034515, Feb. 7, 2013) (hereinafter Stone).
Blowout teaches techniques to get curly hair straight (Pg. 1). It is important to use a flat iron with the temperature set between 410 °F and 450 °F (i.e., 210 °C to 232 °C) (satisfies claim 20) (Pg. 2). Step one comprises cleaning and conditioning hair. In this step one should utilize a smoothing conditioner after shampooing (satisfies step (i) of claim 1 & 17) (Pg. 3). After this step is completed, one should use a thermal protection product prior to blow drying their hair to protect it from heat (satisfies step (ii) of claim 1 & 17) (Pg. 5). In steps three and four one should first dry their hair using hairdryer before styling it with a flat iron (satisfies step (iv) of claim 19) (Pg. 6-8).
Blowout differs from the instant claims insofar as not disclosing the specific hair treatment and leave-on compositions recited in the instant claims.
However, Kadir discloses a hair care composition for modifying hair fibers which is utilizable for straightening, smoothing, and conditioning hair (¶ [0001]). The composition comprises: a) propylene carbonate and b) a glycol selected from at least one of propylene
glycol, 1,3-propane dial, dipropylene glycol, tripropylene glycol, and mixtures thereof (satisfies cyclic carbonates and water soluble solvents of claim 1, 10-11, 15, & 17) (¶ [0019-0021]). The amount of the propylene carbonate component a) + the glycol component b) ranges from about 16 to about 35 wt. %, based on the total wt. of the composition; and wherein the wt. ratio of the propylene carbonate component/the glycol component in the composition
ranges from about 0.3 to about 3.5 (satisfies amount of claim cyclic carbonates and water soluble solvents of claim 15 & 17) (¶ [0023]). To provide a composition which adheres well to the hair fibers, the composition can include a rheology modifier (¶ [0076]). Suitable rheology modifiers include polysaccharides such as xanthan, gellan, cellulose derivatives, and guar gum which may be included in an amount of up to 10 wt. % (satisfies polysaccharides of claim 4, 15, & 17) (¶ [0086-0087]). In one aspect, any preservative suitable for use in personal care can be used in the composition (¶ [0184]). Suitable preservatives include citric acid which may be included in an amount of 0.01 wt. % to 3.0 wt.% (satisfies citric acid of claim 1, 15, & 17) (¶ [0186] & [0189]). Chelating agents can be employed to stabilize the composition against the deleterious effects of metal ions. Suitable chelating agents include citric acid and cyclodextrins which may be included in an amount of 0.001 wt. % to 3 wt. % (satisfies cyclodextrin of claim 1, 15, & 17) (¶ [0190-0191]). The pH of the composition can be from to 1.5-9.5 (satisfies claim 2) (¶ [0222]). Most of the examples in Tables 1-6 contained water in an amount of 82.5% (satisfies water of claim 1, 15, & 17).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Blowout discloses wherein step one requires the use of a smoothing conditioner for straightening curly hair. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have utilized the composition of Kadir in the method of Blowout since Kadir discloses a hair care composition for modifying hair fibers which is utilizable for straightening, smoothing, and conditioning hair.
The combined teachings of Blowout and Kadir differ from the instant claims insofar as not disclosing the use of the specific leave on composition claimed.
However, Stone discloses hair care compositions containing one or more quaternized polysiloxanes, one or more zwitterionic surfactants, one or more anionic surfactants, one or more botanical compounds, one or more amino acids, one or more vitamins, or any combination thereof (Abstract). The composition can be applied to hair to allow for enhanced thermal protection specifically during blow drying and/or using a curling iron or a flat iron (¶ [0007]). The composition may be in the form of a thermal protection spray and comprises between 0.01 and 5 wt. % quaternized polysiloxane (¶ [0009]). Suitable quaternized polysiloxanes include amodimethicone, bis-cetearyl amodimethicone, and bis-amino PEG/PPG-41/3 aminoethyl PG propyl dimethicone (satisfies amino-functionalized silicones claim 1 & 17) (¶ [0018]). The hair care composition can contain one or more optional classes of ingredients such pH adjusters, preservatives, solvents, fragrance, and viscosity increasing agents (¶ [0030]). The final pH of the composition can be between about 4.0 and about 8.5 (satisfies pH of claim 6 & 18) (¶ [0031]). Suitable solvents include one or more of glycerin and propylene glycol (satisfies solvents of claim 14 & 17) (¶ [0033]). Suitable viscosity modifiers include xanthan gum (satisfies polysaccharides of claim 14 & 17) (¶ [0034]). In exemplary embodiments, the amount of water ranged from 47.24 wt.% to 94.66 wt.% (Example 1-40). In example 20, Polyurethane-14 and AMP-Acrylates Copolymer was used in an amount of 5 wt.%, while coconut oil, avocado oil, and jojoba oil were each used in an amount of 0.1 wt.% (satisfies film forming polymer of claim 1, 13, & 17 and fatty compound of claim 14 & 17) (Example 20).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Blowout discloses wherein step two requires the use of a thermal production product prior to drying/styling hair. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have utilized the composition of Stone in the method of Blowout since Stone discloses a hair care composition for that allow for enhanced thermal protection specifically during blow drying and/or using a curling iron or a flat iron.
Regarding the amounts/ratios of citric acid and cyclodextrin in the hair treatment composition recited in instant claims 1, 7, 15, & 17-18, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Kadir’s composition contains citric acid and cyclodextrins in an amount of an amount of 0.001 wt. % to 3 wt. %. Accordingly, because the range recited in the instant claims overlaps with the range disclosed by Kadir, the range disclosed by Kadir meets the instantly recited limitations.
Regarding the amount of cyclic carbonates in the hair treatment composition recited in instant claims 15 & 17, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Kadir’s composition contains The amount of the propylene carbonate component a) + the glycol component b) ranges from about 16 to about 35 wt. %, based on the total wt. of the composition; and wherein the wt. ratio of the propylene carbonate component/the glycol component in the composition ranges from about 0.3 to about 3.5. As such, when the total amount of the two components is 21 wt.% and the ratio is 0.5, the propylene carbonate component will be present in an amount of 7 wt.%. Accordingly, because the range recited in the instant claims overlaps with the range disclosed by Kadir, the range disclosed by Kadir meets the instantly recited limitations.
Regarding the amount of polysaccharides in the hair treatment composition recited in instant claims 4, 15, & 17, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Kadir’s composition contains polysaccharides such as xanthan, gellan, cellulose derivatives, and guar gum in an amount of up to 10 wt. %. Accordingly, because the range recited in the instant claims overlaps with the range disclosed by Kadir, the range disclosed by Kadir meets the instantly recited limitations.
Regarding the amount of water in the hair treatment composition recited in instant claims 15 & 17, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Most of the examples of Kadir’s composition in Tables 1-6 contained water in an amount of 82.5%. Accordingly, because the range recited in the instant claims overlaps with the amount disclosed by Kadir, the amount disclosed by Kadir meets the instantly recited limitations.
Regarding the amount of amino-functionalized silicones in the leave-on composition recited in instant claims 17, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Stone’s composition comprises between 0.01 and 5 wt. % quaternized polysiloxane such as amodimethicone. Accordingly, because the range recited in the instant claims overlaps with the range disclosed by Stone, the range disclosed by Stone meets the instantly recited limitations.
Regarding the amount of polymeric thickeners/film-forming polymers in the leave-on composition recited in instant claims 17, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Polyurethane-14 and AMP-Acrylates Copolymer was used in Stone’s example in an amount of 5 wt.%. Accordingly, because the range recited in the instant claims overlaps with the amount disclosed by Stone, the amount disclosed by Stone meets the instantly recited limitations.
Regarding the amount of water in the leave-on composition recited in instant claims 17, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the amount of water ranged from 47.24 wt.% to 94.66 wt.% in Stone’s examples. Accordingly, because the range recited in the instant claims overlaps with the amounts disclosed by Stone, the amounts disclosed by Stone meets the instantly recited limitations.
Regarding the amount of fatty compounds in the leave-on composition recited in instant claims 14 & 17, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, coconut oil, avocado oil, and jojoba oil were each used in an amount of 0.1 wt.% in Stone’s example. Accordingly, because the range recited in the instant claims overlaps with the amounts disclosed by Stone, the amounts disclosed by Stone meets the instantly recited limitations.
Regarding the amount of polysaccharides in the leave-on composition recited in instant claims 14 & 17, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). As discussed above, polysaccharides such as xanthan gum are viscosity modifiers, which makes amounts thereof a result effective variable, since amounts directly impact the viscosity. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amounts of polysaccharides to yield the desired final viscosity profile.
Regarding the amount of solvents in the leave-on composition recited in instant claims 14 & 17, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). As discussed above, glycerin and propylene glycol are solvents, which makes amounts thereof a result effective variable, since amounts directly impact the composition concentration. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amounts of solvent to yield the desired final concentration.
Regarding claim 3, the combined teachings of Blowout, Kadir, and Stone, do not require pre-treating the hair with an alkalizing agent. As such, this step would have been obvious for one of ordinary skill in the art.
Regarding claims 8 & 17, recited wherein components (a) and (b) are premixed, as discussed above, Kadir discloses that suitable chelating agents include mixtures of citric acid and cyclodextrins. It would be reasonable for one of ordinary skill in the art to conclude that they would be premixed as preservatives that are added to the other components of the composition.
Alternatively, a prima facie case of obviousness exists when selecting any order of performing process steps in the absence of new or unexpected results. See MPEP § 2144.04(IV)(C). As discussed above, the composition of Kadir may comprise a mixture of citric acid and cyclodextrins. Kadir does not disclose the exact order of adding ingredients as recited in the claim. However, it would have been obvious to one of ordinary skill in the art prior to filing the instant application to have added the ingredients of the Kadir as recited in instant claim 17 with a reasonable expectation that the resultant mixture would yield substantially the same structural composition as that recited by the instant claim. Therefore, the mixing steps of the instant claims are obvious over Kadir, absent of evidence to the contrary.
2. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blowout Studio (How to Flat Iron Curly Hair, Jul. 24, 2020) (hereinafter Blowout) in view of Kadir et al. (US 2021/0154120, May 27, 2021) (hereinafter Kadir) and Stone et al. (US 2013/0034515, Feb. 7, 2013) (hereinafter Stone) and further in view of Modi (US 2007/0258918, Nov. 8, 2007) (hereinafter Modi).
The teachings of Blowout, Kadir, and Stone are discussed above.
The combined teachings of Blowout, Kadir, and Stone do not explicitly disclose the specific cyclodextrins used.
However, Modi discloses a hair conditioner composition (Abstract). The composition may comprise cyclodextrins (¶ [0040]). Suitable cyclodextrins include alpha-cyclodextrin, beta-cyclodextrin, gamma-cyclodextrin, methylated alpha-cyclodextrin, and methylated beta-cyclodextrin (¶ [0041]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Kadir discloses wherein the composition may comprise cyclodextrins. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Kadir to contain alpha-cyclodextrin, beta-cyclodextrin, gamma-cyclodextrin, methylated alpha-cyclodextrin, and/or methylated beta-cyclodextrin since these are known cyclodextrins for use in hair conditioning composition as taught by Modi.
3. Claim(s) 12 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blowout Studio (How to Flat Iron Curly Hair, Jul. 24, 2020) (hereinafter Blowout) in view of Kadir et al. (US 2021/0154120, May 27, 2021) (hereinafter Kadir) and Stone et al. (US 2013/0034515, Feb. 7, 2013) (hereinafter Stone) and further in view of Liang (US 2021/0369579, Dec. 2, 2021) (hereinafter Liang).
The teachings of Blowout, Kadir, and Stone are discussed above.
The combined teachings of Blowout, Kadir, and Stone do not explicitly disclose the use of aminopropyl dimethicone.
However, Liang discloses hair treatment compositions (Abstract). Hair damage may occur due to many factors such as heat styling (¶ [0003]). As such, there is a need for providing improved hair manageability and conditioning (¶ [0006]). The composition includes silicones (¶ [0078]). The term "amino-functionalized silicone" or "amino silicones" means a silicone containing at least one primary amino, secondary amino, tertiary amino and/or quaternary ammonium group (¶ [0080]). Non-limiting examples of amino-functionalized silicones include bis-cetearyl amodimethicone, amodimethicone, aminopropyl dimethicones, and bis-amino PEG/PPG-41/3 aminoethyl PG-propyl dimethicones (¶ [0168]). The hair care composition may be a leave-on composition (¶ [0198]).
Generally, it is obvious to replace one component for another equivalent component if it is recognized in the art that the two components are equivalent and is not based on the Applicant disclosure. See MPEP 2144.06. Accordingly, it would have been obvious for one of ordinary skill in the art ordinary skill in the art, prior to the filing of the instant application, to have formulated the composition of Blowout, Kadir, and Stone to contain aminopropyl dimethicones in place of bis-cetearyl amodimethicone, amodimethicone, and/or bis-amino PEG/PPG-41/3 aminoethyl PG-propyl dimethicones because they are taught as equivalents by Liang.
Response to Arguments
Applicant’s arguments filed 2/3/26 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that the rejection of record should be withdrawn because Kadir fails to account for the claimed amount of propylene glycol etc., as noted by Applicant’s own arguments, this is an optional limitation. Since these are optional components, the may be omitted and are not limiting. Therefore, the Kadir disclosure still renders obvious the instant limitations.
Regarding Applicant’s arguments that there was no expectation that the inclusion of cyclodextrin and citric acid would improve hair straightening because these components are not described as active components of the straightening mechanism nor are they required, the Examiner submits that the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP 2112 (I). As such, a reference does not need to recognize the specific effect each component has to render obvious a claimed invention. In other words, if the methods & compositions of the prior art contain the claimed components, one of ordinary skill in the art would expect that said components would have the same effect.
Furthermore, regarding Applicant’s argument with respect to a reasonable expectation of success, one of ordinary skill in the art would have a reasonable expectation of success that the composition of Kadir comprising cyclodextrin and citric acid, when used in a method of straightening, would improve hair straightening properties because that is one of the express objectives of the composition. As discussed above, Kadir discloses a hair care composition for modifying hair fibers which is utilizable for straightening, smoothing, and conditioning hair. One of ordinary skill in the art using such a composition would have a reasonable expectation of success that such a composition would improve hair straightening properties regardless of the nomenclature applied to the specific components used therein.
Finally, although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See MPEP § 2173.05(q). Upon examination of the instant application, one would find that the instant claims make no mention of any such “hair straightening”.
Regarding allegations of unexpected results, any differences between the claimed invention and the prior art may be expected to result in some difference in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. The burden is on applicant to establish that the results are in fact really unexpected and of statistical and practical significance. Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992). See also MPEP § 716.02. Applicant does not appear to have discussed same with respect to objective data. Applicant’s findings do not appear unexpected. For instance, the inventive composition contained significant amounts of various additional components such as amodimethicone, trideceth-10, and trideceth-5 which are known conditioning agents, which would be reasonably expected to materially affect hair smoothness, straightness, frizz etc. As such, it is unclear if the alleged improvement can be attributed to the presence of the cyclodextrin and citric acid or if it is the result of the presence of a significant amount of additional conditioning agents. Accordingly, one cannot conclusively point to the presence of cyclodextrin and citric acid as the factor contributing to the alleged alignment, frizz reduction, and smoothness and it is unclear if the findings are indeed “unexpected”.
In light of the foregoing, the Examiner does not find Applicant’s arguments to be persuasive and the rejection is maintained.
Conclusion
Claims 1-4 and 6-20 are rejected.
No claims are 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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