Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the reply filed 2/18/2026.
DETAILED ACTION
Election/Restriction
During a telephone conversation with R. James Balls on 8/6/2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-19. Affirmation of this election must be made by applicant in replying to this Office action. Claim 20 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The election was confirmed by R. James Balls in the reply filed 2/18/2026.
Response to Arguments
All of Applicant’s arguments have been fully considered. In view of the filed amendments the 112(b) issues presented in the office action mailed 10/25/2025 have been resolved.
Applicant’s arguments that FR3126618 not being prior art as it has a publication date of Oct. 3rd 2023 is not persuasive. As noted on the IDS filed 5/3/2024, FR3126618 has a publication date of 2023-03-10 and IDS dates are written in the format of Year-Month-date, this is supported by the actual FR3126618 cover sheet which lists the date of publication as 10-03-23 and European dates are formatted as Day-Month-Year and the Written Opinion for FR2310312 cited on the 5/3/2024 IDS which lists the date of FR3126618 to be “10 mars 2023”
Applicant argues that the compositions of FR’618 are for applying after shampooing and conditioning and teaches applying its composition last.
This is not persuasive. While FR’618 does not teach applying a hair conditioning composition afterwards, it does teach the composition can be applied along with other hair treatment agents [0093] which suggests the composition can be used in conjunction with other hair treatment agents prior to rinsing and it is well established that the performance of any order of performing method steps is prima facie obvious absent evidence of criticality.
Applicant argues that FR’618 compositions include at least one film-former which would impede contact between Liangs conditioning agent and undermine Liangs intended depositions.
This is not persuasive as it is unsupported by factual evidence.
Applicant remarks regarding claim 22-23 and not persuasive in view of the new rejections presented below which address this newly added limitation.
Maintained Claim Objections
Claim 16 is objected to because of the following informalities: Claim 16 in part (i) recites “a firm period of time” instead of “a first period of time” Appropriate correction is required.
Maintained 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) 1-7, 9-12, 16-18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over FR3126618 A1 and Liang (US 2021/0369579), as evidenced by SciFinder (Citric Acid and Cyclodextrin).
FR’618 teaches a composition for treating keratinous fibers wherein the composition provide smoothing properties, shine and frizz control to the hair [0001 and 0031].
FR’618 teaches the composition to comprise at least one cyclodextrin; a film-forming agent; and at least one solvent.
Regarding claim 1(i)(a) and 16(i)(a): FR’618 teaches that acids such as citric acid can be added in amounts ranging from 0.1-5% [0083]. FR’618 teaches that the composition can be applied to hair and can be left on the hair as a leave-in for a period of time after which the composition is washed or rinsed. This period of time can be brief from about a few seconds or 10, 20 or 30 minutes or longer [0092].
Regarding claim 1(i)(b) and 16(i)(b): FR’618 teaches the cyclodextrin to be present in amounts ranging from 0.5-15% [0010]. The cyclodextrin is preferably solely β-cyclodextrin [0041]. The combined total of citric acid and cyclodextrin is 0.6-2% which overlaps with the claimed ranges of about 2-15%.
Regarding claim 1(i)(c), 1(i)(d), 16(i)(c) and 16(i)(d): FR’618 teaches the solvent to include mixture of water and polyols such as glycerin [0070], the additional solvent (i.e. glycerin) can be present in amounts ranging from 0.01-10% [0073] and water makes up 85-99% by weight of the total solvent which is 50-98% of the total composition [0067 and 0075].
Regarding claim 2 and 17: The compositions of FR’618 are taught to have a pH ranging from 3-7 [0087].
Regarding claims 3, 16 and 17: As evidenced by SciFinder citric acid has a molecular weight of 192.12 g/mol and β-cyclodextrin has a molecular weight of 1134.987 g/mol. As discussed above, the citric acid can be used in amounts ranging from 0.1-5% and the cyclodextrin in amounts of 0.5-15%, thus the molar ratio of (a) : (b) can be calculated to be .000052-.026 : .00044-.0132 or .0039-59.09 : 1, which overlaps with the claimed about 3-20:1
Regarding claims 4-5: As discussed above, the solvent includes water and glycerin.
Regarding claim 6: FR’618 teaches that suitable film-forming agents for use include guar hydroxypropyltrimonium chloride, reading on cationic polysaccharide [0055].
Regarding claim 18: FR’618 teaches that prior to applying the composition to hair, the hair can be cleansed with a shampoo [0093].
Regarding claim 19: FR’618 teaches that when the composition is applied to provides anti-frizz properties to the hair (reading on prevents frizz of hair) [0091].
The composition of FR’618 reads on the claimed fortifying composition and FR’618 teaches applying this composition to hair and leaving it on for a first period of time. However, FR’618 does not teach specifically applying the composition to colored hair or bleached hair and does not teach the subsequent application of a conditioning composition as claimed.
Liang discloses a hair treatment composition (Abs).
Regarding claims 1(ii)(a) and 16(ii)(a): The composition of Liang comprises 0.1-10% of cationic surfactants (Abs). Liang teaches that the composition can be applied to hair and allowed to remain on the hair for a period of time (a few seconds up to about 30min) and then rinsing the composition from the hair. The composition can also be used in conjunction with additional hair treatment compositions in a routine. It may be applied individually or may be combined with additional compositions. It can be mixed with the additional composition prior to application or they can be layers on top of each other. The compositions maybe be rinsed simultaneously [0231 and 0233].
Regarding claims 1(ii)(b) and 16(ii)(b): The composition of Liang comprises 0.1-10% of fatty acids, reading on non-silicone fatty compounds [0062].
Regarding claims 1(ii)(c), 10-11 and 16(ii)(c): The composition of Liang comprises 0.1-10% of silicones, such as silicones oils like dimethicone [0167]. The composition can also comprise amino-functionalized silicones such as amodimethicone [0168]
Regarding claims 1(ii)(d): The composition of Liang comprises 50% or more of water, such as 94% or more [0214].
Regarding claim 9: Liang teaches the composition to comprise 0.1-20% of fatty alcohols [0070].
Regarding claim 12: Liang teaches the inclusion of polyols such as propylene glycol, glycerin, etc., these reads on water soluble solvents [0205-0207].
Liang teaches the composition to be used to treat and condition hair. The composition of Liang reads on the claimed conditioning composition.
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 FR’618 with those of Liang. One of skill in the art would have been motivated to combine the compositions of FR’618 and Liang to form a hair treatment method as both FR’618 and Liang teach compositions used to treat hair and provide properties of moisture (i.e. conditioning) and manageability (i.e. better combing, suppleness, smoothness) (Liang [0076] and FR’618 [0091) and its prima facie obvious to combine two composition each which are known in the art to be used for the same purpose to create a third composition for the same purpose. A skilled artisan would have been motivated to apply the composition of FR’618 for a period of time and then apply the conditioner of Liang for a period of time and then rinse both compositions from hair. As demonstrated by Liang when using compositions in conjunction with each other, they can be applied in layers and after being allowed to remain on the hair for a period of time, they are rinsed. Furthermore, the performance of any order of performing method steps is prima facie obvious absent evidence of criticality.
Regarding the treatment of bleached or colored hair, FR’618 teaches that the hair to be treated can be chemically treated or non-chemically treated hair [0090] and Liang teaches treating bleached hair [0282], as such it would have been prima facie obvious to perform the method made obvious above to bleached hair as this is a specific type of chemically treated hair.
Regarding claim 7: FR’618 teaches that additional ingredients such as conditioning agents, can be added the composition. Liang teaches the that emollients such as plant and vegetable oils can be effectively added, suitable oils include sesame oil, sunflower oil, etc. (both defined by the filed specification to be hydrocarbon based non-volatile polar oils) [0197], as such it would have been prima facie obvious to add an emollient such as sesame or sunflower oil into the composition of FR’618 with a reasonable expectation of success as FR’618 teaches that conditioning agents can be added.
Claim(s) 1-7, 8, 9-12 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over FR3126618 and Liang (US 2021/0369579), as evidenced by SciFinder (Citric Acid and Cyclodextrin), as applied to claims 1-7, 9-12 and 16-18 above, and further in view of Ferebee Maher (US 2020/0069025).
As discussed above, the prior art makes obvious the limitations of claims 1-7, 9-12 and 16-18 above, however they do not teach the fortifying composition (i.e. composition of FR’618) to further comprise a non-ionic emulsifier as required by instant claim 8.
Ferebee Maher teaches hair treatment compositions for providing softness, manageability, suppleness, conditioning, etc. and teaches that suitable non-ionic emulsifiers for use include those which are alkoxylated [0246] and these are used to help enhance incorporation of oils [0094].
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 FR’618 with those of Ferebee Maher. One of skill in the art would have been motivated to add an alkoxylated non-ionic emulsifier as these are well known to be included in hair treatment composition which provide properties of suppleness, moisture, etc. (just like the properties provided by FR’618) and its prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended purpose and FR’618 teaches that oils such as vegetable oil can be added.
New Claim Rejections - 35 USC § 103
Claim(s) 1-12, 16-18 and 22-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Gogh (US 2012/0058068), Botta (US 2022/0031591), Liang (US 2021/0369579), and Nanasimham (US 2004/0154108), as evidenced by SciFinder (Citric Acid and Cyclodextrin). Van Gogh, Botta and Nanasimham are newly cited.
Fortifying composition (i)
Van Gogh discloses a composition that can be used along with regular shampooing and conditioning products (Abs). The compositions can be used to restore and repair damaged keratin-containing fibers [0001]. The compositions comprise a conditioning and moisturizing protectant system [0030]. Keratin can be damaged in a number of ways including by chemical means such as oxidative bleaching or coloring [0003].
Regarding claims 1(i) and 16(i): Van Gogh teaches the composition to be used to treat damage caused by coloring treatments [0185] and oxidative bleaching [0003], thus it would have been prima facie obvious to apply the composition to colored or oxidatively bleached hair.
Regarding claim 1(i)(a) and 16(i)(a): Van Gogh teaches the composition to comprise a metal chelant this can be organic acids such as citric acid [0176]. Van Gogh teaches that chelants can be used in amounts ranging from 0.05-5% [0286].
Regarding claims 1(i)(b) and 16(i)(b): Van Gogh teaches the compositions to comprise 0.5% of cyclodextrin (working examples 7-10, table VI) [0275]. This results in a combined weight of (a) and (b) of 0.1-5.5%.
Regarding claims 1(i)(c), 4-5 and 16(i)(c): Van Gogh teaches the compositions to comprise glycerin in an amount of 0.5 or 0.7% (working examples 7-10, table VI) [0275].
Regarding claims 1(i)(d) and 16(i)(d): Van Gogh teaches the compositions to comprise water in amounts ranging from 70.78-75.85 (working examples 7-10, table VI) [0275].
Regarding claims 2 and 17: While Van Gogh is silent to the pH of the composition, Liang teaches compositions for treating and conditioning hair which have been previously bleached [0002-0003 and 0282]. The pH of these hair treatment compositions range from 2.5-5.5 [0217]. It would have been prima facie obvious to formulate the composition of Van Gogh to have a pH as taught by Liang as this is taught to be a suitable pH for hair treatment composition that condition hair.
Regarding claims 3 and 17: As evidenced by SciFinder citric acid has a molecular weight of 192.12 g/mol and β-cyclodextrin has a molecular weight of 1134.987 g/mol. As discussed above, the citric acid can be used in amounts ranging from 0.05-5% and the cyclodextrin in amounts of .5%, thus the molar ratio of (a) : (b) can be calculated to be .59-59 : 1, which overlaps with the claimed about 3-20:1
Regarding claims 6 and 8: The compositions of Van Gogh comprise PPG-5-Ceteth-20 (i.e. a non-ionic alkoxylated emulsifier) (working examples 7-10, table VI) [0275].
Regarding claim 7: The compositions of Van Gogh comprise sunflower seed oil (i.e. a non-polar hydrocarbon based oil as evidenced by the originally filed specification, pg. 5) (working examples 7-10, table VI) [0275]. Van Gogh also teaches that 0.1-3% of emollients such as caprylic/capric triglyceride can be added [0086].
Regarding claim 16i and ingredients (e) through (h), these are all optional and thus not required.
Conditioning Composition
Regarding claims 1(ii) and 16(ii): Botto discloses hair treatment compositions [0001] which can be rinsed off the hair [0005], when used as a rinse off composition, the composition is allowed to remain on the hair for a period of time ranging from a few seconds (5-30seconds) to about 1-30 minutes [0205]. 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(ii)(a) and 16(ii)(a): Botto teaches the compositions to comprise cationic surfactants in amounts ranging from 0.1-10% [0144-0181].
Regarding claims 1(ii)(b), 9 and 16(ii)(b): Botto teaches the composition to fatty compounds in amounts of 0.01-10% [0136], these include fatty alcohols [0122].
Regarding claims 1(ii)(c), 10-11 and 16(ii)(c): Botto teaches the composition to comprise 0.1-10% of silicone copolymers [0094] such as amino functionalized silicones such as amodimethicone [0027].
Regarding claims 1(ii)(d) and 16(ii)(d): Botto teaches the compositions to comprise 75-98% water of water [0120].
Regarding claim 12: Botto teaches the composition to comprise 0.01-15% of one or more thickening agents, [0188].
Regarding claim 22-23: While Botto teaches fatty acids to be a suitable fatty compound for use, these are not required and Botto teaches many other fatty compounds are suitable for use, such as fatty alcohols, as such the use of fatty compounds which are not fatty acids is prima facie obvious.
Regarding claim 16ii and ingredients (e) through (g), these are all optional and thus not required.
Method Steps
As discussed above, the prior makes obvious the claimed fortifying composition and conditioning composition, 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 post-treatment composition (i.e. a shampoo) is applied to hair and allowed to remain on the hair for a period of time ranging from 30 seconds to 3minutes and rinsed from hair, afterwards the treated hair can be further treated by one or more additional treatment such as hair conditioners [0025, 0135 and 0150].
Liang teaches compositions for treating and conditioning hair which have been previously bleached [0002-0003 and 0282]. Liang teaches that the compositions can be applied to hair and allowed to remain on the hair for a period of time (a few seconds up to about 30min) and then rinsed from the hair. The composition can also be used in conjunction with additional hair treatment compositions in a routine. They may be applied individually or may be combined with additional compositions. It can be mixed with the additional composition prior to application or they can be layers on top of each other. The compositions maybe be rinsed simultaneously [0231 and 0233].
It would have been prima facie obvious given the above teachings to create a method of treating hair as claimed. A skilled artisan after using the composition of Van Gogh on oxidatively damaged hair would have been motivated to use the composition of Botto has a secondary hair treatment agent (i.e. conditioner) as Narasimhan teaches that after an oxidative treatment its known to use one or more hair treatment conditioning agents and both Van Gogh and Botto teach compositions for conditioning damaged hair and its prima facie obvious to combine two composition each which are known in the art to be used for the same purpose to create a third composition for the same purpose. A skilled artisan would have been motivated to apply the composition of Van Gogh for a period of time (a few seconds up to about 30min) as both Botto and Narasimhan show that its customary to apply these types of hair compositions and leave them on for a period of time that overlaps with the range claimed and then immediately apply the conditioner of Botto for a period of time and then rinse both compositions from hair. As demonstrated by Liang when using compositions in conjunction with each other, they can be applied in layers and after being allowed to remain on the hair for a period of time, they are rinsed. Furthermore, the performance of any order of performing method steps is prima facie obvious absent evidence of criticality.
Regarding claim 18: Narasimhan teaches that its customary after an oxidative bleach treatment to wash hair with a shampoo prior to applying a hair treatment agent, as such it would have been prima facie obvious to shampoo the treated hair before applying the fortifying composition as claimed.
Regarding claims 24-25: Narasimhan teaches that its customary after rinsing out an oxidative bleach treatment, to wash hair with a shampoo, leave on for up to 3min, rinse and then apply a hair treatment agent, thus it would have been obvious to apply the compositions of Van Gogh and Botta right after the shampooing step with occurs roughly 3 min after the bleaching step, which reads on “within 2hrs.”
Claim(s) 1-12, 16-18, 21 and 22-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Gogh (US 2012/0058068), Botta (US 2022/0031591), Liang (US 2021/0369579), and Nanasimham (US 2004/0154108), as evidenced by SciFinder (Citric Acid and Cyclodextrin), as applied to claims 1-12, 16-18 and 22-25 above, and further in view of Mueller (CN 100457077 C). Muller is newly cited.
As discussed above, the prior art makes obvious the limitations of claims 1-12, 16-18 and 22-25 above, and Van Gogh teaches citric acid can be used in amounts ranging from 0.05-5%, however they do not teach the fortifying composition (i.e. composition of FR’618) to comprise the claimed amounts of cyclodextrin required by instant claim 21.
Muller teaches the use of cyclodextrins and at least one surfactant in cosmetic compositions, in particular those for washing and/or conditioning hair. The cyclodextrins functions as a suspending agent for insoluble conditioning agent (Abs). The cyclodextrin and surfactant also provides the composition with a pearlescent effect (pg. 2) and helps stabilize the viscosity of the composition (pg. 6) A cationic surfactant can be used in amounts ranging from 0.1-10% (pg. 4) and the cyclodextrin can be present in amounts ranging from 0.2-30% (pg. 20).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Van Gogh with those of Muller. One of skill in the art would have been motivated use 0.2-30% and optimize the amounts of cyclodextrin used in Van Gogh as Muller teaches that using cyclodextrin in these amounts, along with cationic surfactants, allows for a pearlescent composition more stable compositions and cyclodextrin allows for the suspension of insoluble conditioning agents. One of skill in the art would have a reasonable expectation of success as Van Goh teaches hair treatment compositions comprising cationic surfactants and insoluble conditioning agents such as oils.
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613