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 .
Claim Objections
Claim 13 is objected to because of the following informalities: Claim 13 does not end in a period. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-20 are 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.
Regarding claims 3 and 5, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 13 fails to end with a period thus it’s unclear if something is missing from the claim, thus rending the metes and bounds of the claim indefinite.
Claim 16 is rejected as failing to distinctly claim the subject matter because the phrases “a derivative thereof” with respect to the citric acid is vague and indefinite. The term “derivative” is indefinite because it is unclear how far one can deviate from the parent compound without the “derivative” being so far removed therefrom as to be a completely different compound. The specification fails to provide a limiting definition of the above phrases and provides no examples.
Claim 1, 16 and 18 are rejected as failing to distinctly claim the subject matter because the phrases “derivative thereof” with respect to the cyclodextrin is vague and indefinite. The term “derivative” is indefinite because it is unclear how far one can deviate from the parent compound without the “derivative” being so far removed therefrom as to be a completely different compound. While the specification provide the examples of methyl derivatives of a-cyclodextrin and hydroxypropyl derivatives of a-cyclodextrin these are not limiting and the specification fails to provide a limiting definition of the above phrases, furthermore, it is unclear if salt forms of cyclodextrin are included as derivatives. For purposes of examination, salt forms will be considered to be different from derivatives.
Claims 2-20 are rejected in view of their dependency on claim 1 as they do not cure the deficiencies described above with respect to “derivatives” and thus are deficient for the same reasons.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 16 recites “citric acid, a salt thereof, or a derivative thereof,” however, the claim from which it depends recites “citric acid, a salt thereof, or a combination thereof” the inclusion of derivatives broadens the citric acid alternatives allowed to be present. Claim 16 also recites “cyclodextrin, a derivative thereof, or a salt thereof,” however, the claim from which it depends recites “cyclodextrin, a derivative thereof, or a combination thereof” as discussed in the 112(b) rejection above the specification fails to provide a limiting definition of “derivatives” it is unclear if the derivatives of claim 1 embraces salts forms of cyclodextrin, as such it appears that the inclusion of salt forms in claim 16 broadens claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-6 and 8-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan (US 2012/0325255), Simonet (US 2010/0154140), Ansher-Jackson (WO 91/16878), Midori Laga (US 2022/0362130), Botto (US 2022/0031591), Nanasimham (US 2004/0154108) and Cafasso (2020), as evidenced by Schmid (US 2012/0244083). Midori Laga is cited on the 6/6/2024 IDS.
The instant claims are directed to a method of treating hair comprising applying an alkaline composition to hair and then rinsing; applying a conditioner to hair and then rinsing; and lastly applying a leave in treatment to hair and allowing it to remain on the hair.
Alkaline Composition
Tan discloses a composition and method of lifting color and lightening color and imparting shine onto keratinous substrates, such as hair. The composition contains a polyamine compound, a nonionic surfactant, a phosphate ester and an oxidizing agent. The composition can also comprise a thickening agent, an alkaline agent and a fatty substance other than a fatty acid, along with water (Abs and [0001, 0007 and 0018]).
Regarding claims 1(i), 2 and 18(i): The composition of Tan having a pH ranging from 2-12, such as 7-11, which overlaps with the claimed about 9-12 [0089]. Tan teaches the composition to be applied to hair and after a resting time of 1-60min [0229], the hair is rinsed and optionally washed with a shampoo, this reads on applying an alkaline composition to hair, allowing it to remain for a period of time and then rinsing the hair.
Regarding claim 1(i)(a), 15(a) and 18(a): The composition is taught to comprise at least one alkaline agent such as alkanolamine [0079], Example 1 exemplifies the addition of ethanolamine. These agents can be added in amounts of 0.01-30% [0088]. It would have been prima facie obvious to use an alkanolamine as exemplified and optionally one or more additional alkaline agents in a total amount ranging from 0.01-30% which provides a range of alkanolamine and other alkaline agents that overlap with the claimed ranges.
Regarding claim 1(i)(b)(ai), 15(b) and 18(b): Tan teaches the composition to be ready to use and comprises water or a mixture of water and at least one cosmetically acceptable solvent [0222]. Example 1 exemplifies the use of water in amounts ranging from 75-78% suggesting these are suitable amounts for use and overlapping with the claimed ranges.
Regarding claims 8, 15(c) and 18(c): Tan teaches the composition to comprise at least 10%, such as 10-80% of fatty substances including fatty alcohols, esters of fatty acids, etc. (Tan – claim 22 and [0095 and 0146]). Tan teaches that suitable fatty alcohols for use include cetyl alcohol, stearyl alcohol, etc. [0099]. It would have been prima facie obvious to use a fatty alcohol and optionally one or more additional fatty compounds in a total amounts ranging from 10-80% which provides a range of fatty alcohols and other fatty compounds that overlaps with the claimed ranges.
Regarding claim 9(d), 15(d) and 18(d): Tan teaches the composition to comprise an oxidizing agent wherein the oxidizing agent is provided in the form of a composition comprising an organic solvent such as ethanol (i.e. a water-soluble organic solvent). These solvents are used in amounts of 5-50% of the oxidizing composition [0237-0238]. Tan teaches the oxidizing agent to make up 0.05-40% of the composition, as such the amount of ethanol used in the total composition can be calculated to be .0025-20%.
Regarding claim 9(e), 15(e) and 18(e): Tan teaches the composition to comprise 0.5-30% of a non-ionic surfactant [0043].
Regarding claim 9(f), 15(f) and 18(f): Tan teaches the composition to comprise an 0.1-10% of a thickening agent including polymeric and non-polymeric thickeners as described in US2010154140 (i.e. Simonet) and include various gums [0057-0058]. Simonet teaches suitable gums for use include gum Arabic, ghatti gum, karaya gum, gum tragancanth, agar, alginates, guar gum, carbon, gum, etc. which are all polysaccharides gums, thus the use of any of the taught polysaccharide gums of Simonet as the thickening agent in Tan is prima facie obvious.
Conditioning Composition
Ansher-Jackson discloses a hair conditioning composition comprising a mixture of conditioning agents including cationic surfactants, fatty alcohols and silicones (Abs) which provide superior hair conditioning without drawback typically associated with typical hair conditioners (pg. 5, lines 15-25).
Regarding claims 1(ii)(a), 16(a) and 18(ii)(a): Ansher-Jackson teaches the inclusion of a chelating agents, such as citric acid, in amounts ranging from 0.01-1%. This agent allows for a smoother compositions with less gelatinous consistency (pg. 21, lines 5-15).
Regarding claims 1(ii)(c), 16(c) and 18(ii)(c): Ansher-Jackson teaches the inclusion of cationic surfactants and preferred composition comprise at least a portion of water insoluble surfactant component. Ansher-Jackson teaches that preferably up to 1% of the composition comprises stearamidopropyl dimethylamine (i.e. water-insoluble) is used (pg.21, lines 25-30 and pg. 32, lines 4-7) and up to 2.5% of quaternary ammonium compounds can be used (pg. 30, lines 1-2).
Regarding claims 16(d), 10 and 18(ii)(d): Ansher-Jackson teaches adding water-insoluble surfactants in amounts of 0.2-10% and can be selected from glycerol monooleate (i.e. non-ionic surfactant as evidenced by Schmid [0014]) (Ansher-Jackson – claims 1 and 5).
Regarding claims 16(e), 11 and 18(ii)(e): Ansher-Jackson teaches the composition to have greater than 1-1.5% of a fatty alcohol (Ansher-Jackson – claim 1), which overlaps with the claimed ranges.
Regarding claims 16(f) and 18(ii)(f): Ansher-Jackson teaches the composition to comprise 0.1-18 of a silicone conditioning agent (pg. 22, lines 5-10), these include non-volatile aminosilicones used in amounts of 0.015-9% and preferably up to 1% of trimethylsilyl amodimethicone(pg. 23, lines 15, pg. 26, lines 30-35 and pg. 27, lines 5-8).
Regarding claims 16(g) and 18(ii)(g): This ingredient is optional and not required.
Regarding claims 1(ii)(h), 16(h) and 18(ii)(h): Ansher-Jackson teaches the composition to comprise 75-95% of a solvent which comprises water (pg. 20, lines 20-25).
However, Ansher-Jackson does not teach the conditioning composition to comprise a cyclodextrin as required by instant claims 1(ii)(b), 16(b) and 18(ii)(b) and does not teach the limitations of instant claims 3-4.
Midori Laga discloses compositions having a cyclodextrin and optionally a cationic surfactant, emulsifier, silicone and oil (Abs). Midori Laga teaches compositions comprising cyclodextrin are able to deliver benefits of smoothness, softness, shine and/or frizz control to the hair [0001 and 0005]. Midori Laga teaches the use of 0.01-20% of a cyclodextrin (Midori-Laga – claim 4).
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 Ansher-Jackson with those of Midori Laga. One of skill in the art would have been motivated to add 0.01-20% of a cyclodextrin as Midori Laga teaches that including this in hair composition provides benefits of smoothness, softness, shine and/or frizz control. One of skill in the art would have a reasonable expectation of success as both Ansher-Jackson and of Midori Laga teach hair conditioning composition comprising cationic surfactants, emulsifiers, etc.
Regarding claim 3: Ansher-Jackson does not disclose a suitable pH for the conditioning composition, however Midori Laga teaches the hair compositions to preferably have a pH of less than 7, such as 3-6 [0205]. It would have been prima facie obvious to formulate the composition of Ansher-Jackson with the cyclodextrin to have a pH as taught by Midori Laga as this is taught to be the ideal pH for hair compositions comprising the required cyclodextrin.
Regarding claims 1(ii), 4 and 18(ii): Ansher-Jackson teaches the conditioning composition to be applied to hair, massage and then rinsed off. Midori Laga teaches applying the composition comprising the cyclodextrin onto hair after cleansing with a shampoo, allowing it to remain for a period of time ranging from 5sec to 30mins or longer and then rinsing [0210-0211]. As such it would have been prima facie obvious to apply the composition of Ansher-Jackson with the cyclodextrin to the hair, leave on for a brief period of time and then rinse.
Leave-On Hair Composition
Botto discloses hair treatment compositions [0001] which can be used as leave in product, wherein the product is applied to hair and then optionally drying and/or styling the hair [0206] to provide keratin conditioning [0204]. The composition provides benefits of softness, stronger hair that does not feel rigid and healthy looking hair that is not weighted down [0004].
Regarding claims 1(iii)(a), 12, 17(a) and 18(iii)(a): Botto teaches the composition to comprise 0.1-10% of silicone copolymers [0094] such as amino functionalized silicones [0027].
Regarding claims 1(iii)(b), 13, 14(e), 17(b), 17(e), 18(iii)(b) and 18(iii)(e): Botto teaches the composition to comprise 0.01-15% of one or more thickening agents, suitable agents for use include nonionic associative polymers [0189-0190] and polymers such as acacia, tragacanth, alginates, xanthan gum (i.e. all polysaccharide thickening agents) [0188]. It would have been prima facie obvious to a person of skill in the art to use multiple thickening agents as taught by Botto in the taught amounts which provides ranges that overlaps with those claimed.
Regrading claims 17(c) and 18(iii)(c): Botto teaches the compositions to comprise 75-98% water of water [0120].
Regarding claim 14(d), 17(d) and 18(iii)(d): Botto teaches the composition to fatty compounds in amounts of 0.01-10% [0136].
Regarding claim 14(f), 17(f) and 18(iii)(f): Botto teaches the composition to comprise a solvent which can be water, non-aqueous solvents and mixtures thereof. Suitable solvents include polyols, glycerin (i.e. water soluble). It would have been prima facie obvious to a person of skill in the art to use multiple solvents such as water and glycerin as taught by Botto in amounts of 60-98% which provides ranges of water and glycerin that overlaps with those claimed.
Regarding claim 5: Botto teaches that pH adjusting agents can be added [0193], but does not teach the pH of the leave on treatment. As discussed above, Midori Laga discloses hair conditioning compositions having a pH of less than 7, such as 3-6, suggesting this pH is suitable for hair composition which aim to provide conditioning properties. It would have been prima facie obvious to formulate the composition of Botto to have a pH of 3-6 as this pH is taught to be suitable for use in hair care compositions.
Method Steps
As discussed above, the prior makes obvious the claimed alkaline composition, conditioning composition and leave on treatment, however, the prior art does not teach using these three compositions together to treat hair.
Narasimhan teaches methods for oxidatively coloring or lightening hair. The hair is first treated with an oxidative composition which is then removed with water, a pre-treatment composition is applied and rinsed from hair, afterwards the treated hair can be further treated by applying a rinse out or a leave in hair conditioner [0025].
Cafasso teaches how to use leave-in conditioners and teaches that these are applied after shampooing and it can replace the conditioner that would normally be use or it can be used in combination with the conditioner, especially if your hair is particularly dry or damaged. A method of doing this is washing the hair with a shampoo and rinsing thoroughly. Then applying a regular conditioner and rinsing hair. Then gently removing excess water from the hair and applying the leave on conditioner. Brushing the hair and letting it hair dry or style it as desired (Pg. 2).
It would have been prima facie obvious given the above teaching to create a method of treating hair as claimed. A skilled artisan after using the alkaline composition of Tan, as taught above, having oxidizing agents and used to lighten hair and rinsing it from hair, would be motivated to apply both a rinse-off conditioner and a leave-on conditioner in the order detailed by Cafasso above. A skilled artisan would be motivated to use the rinse-off hair conditioning composition of Ansher-Jackson and Midori Laga by applying, leaving on for a period of time and them rinsing, as Narasimhan teaches that after treating hair with compositions having oxidizing agents for lightening hair, its known in the art to rinse (and optionally shampoo the hair) to remove the hair treatment composition and then apply a conditioning composition and then rinse. One of skill in the art would have been motivated to use the conditioner of Ansher-Jackson and Midori-Laga made obvious above as the conditioner provides superior hair conditioning (i.e. softness and strength) and Tan expresses a desire to minimize damage and provide conditioning to the hair [0005]. One of skill in the art would have also been motivated to further apply a leave-on conditioner after rinsing off the conditioner as it’s known in the art that both a conditioner and a leave-in treatment can be used together as discussed by Cafasso above and the composition of Botta is taught to provide multiple benefits to the hair such as smoothness, frizz control, strength, soft feel, etc. [0014].
Regarding claims 6 and 19: Both Botta and Cafasso teach that after applying a leave-on conditioner to the hair the hair can be optionally dried and/or styled, therefore, it would have been prima facie obvious to dry and style the hair.
Claim(s) 1-6, 7, 8-19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan (US 2012/0325255), Simonet (US 2010/154140), Ansher-Jackson (WO 91/16878), Midori Laga (US 2022/0362130), Botto (US 2022/0031591), Nanasimham (US 2004/0154108) and Cafasso (2020), as evidenced by Schmid (US 2012/0244083), as applied to claims 1-6 and 8-19 above, and further in view of Crudele (WO 99/17719).
As discussed above, the prior art makes obvious the limitations of claims 1-6 and 8-19, however, they do not teach styling the hair with a hot iron at a temperature of 150-280°C as recited by instant claims 7 and 20.
Crudele teaches methods for conditioning hair which comprise applying to hair a leave-on composition and then applying heat via a heating appliance to dry or style the hair (abs). Crudele teaches that after drying the hair, the hair can be curled or straightened to give the finishing touches to provide a desired hairstyle (pg. 1). Crudele teaches that suitable heating appliances include curling irons having an average temperature of 200-400°C (pg. 5).
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 method made obvious above with the teachings of Crudele. One of skill in the art would have been motivate to use a heat appliance to style the hair after application of a leave in treatment as Crudele teaches that the hair can be curled or straightened to give the finishing touches to provide a desired hairstyle. One of skill in the art would have a reasonable expectation of success as both Crudele and Botto teaches that its customary to dry and style after application of a leave in treatment.
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