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 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.
Claims 1 and dependent claims 8, 14, 19, 32, 40, 42-44, 53, 56, 71, 80, 124 and 136 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.
The scope of the claimed term “Nourishing component” is not defined by the claim nor the specification to limit the nourishing component to a specific material and/or structure. Additionally, the scope of the function of “nourishing” is not defined by the claim. For purposes of examination, the nourishing component will be any component of a composition for the hair fiber.
The scope of the claimed term “Carrier vehicle” is not defined by the claim so as to limit the carrier vehicle to a specific structure or material. For purposes of examination, the carrier vehicle will be any component of the hair fiber composition.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1, 8, 9, 12, 14, 19, 32, 40, 42-44, 53, 56, 64, 67, 71, 80, 124, 136 and 137 rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 recites a user hair or a scalp of the user which are directed to a human organism.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 8, 9, 19, 32, 40, 53, 56, 64, 71, 80, 124 and 137 are rejected under 35 U.S.C. 103 as being unpatentable over Shinbayashi (US 9109326).
Claim 1: A hair fiber comprising:
a core fiber;
an outer coating associated with the core fiber;
and a nourishing component associated with the outer coating,
wherein the nourishing component is comprised in a carrier vehicle.
Shinbayashi is directed to an antibacterial artificial hair of the present invention includes an artificial hair and organic resin particles adhering to the artificial hair. The organic resin particles are powdered fine particles including an organic resin and an aluminum salt that is chemically bonded to the organic resin. An antibacterial coating agent for artificial hair of the present invention is used for an artificial hair and obtained by dispersing the organic resin particles in an aqueous medium. The presence of the organic resin particles including the aluminum salt not only provides the luster and texture similar to those of human hair, but also imparts the antibacterial properties (ABST).
Shinbayashi teaches the artificial hair fiber is one of a synthetic fiber (col. 2, lines 35-61) and is equated with the claimed core fiber. While Shinbayashi does not disclose a human hair, an artificial hair is an obvious variant of a human hair and it would have been obvious to one of ordinary skill in the art before the effective filing date to substitute a human hair for an artificial hair as the artificial hair is intended to substitute and imitate a human hair. Additionally as claim 19 claims the hair is a man-made fiber, the hair of the use can be an artificial hair and fiber.
Shinbayashi teaches an artificial hair that is equated with the core fiber and an antibacterial coating that is equated with the outer coating. As the antibacterial coating is adhered to the hair (the core fiber), the antibacterial coating is associated with the core fiber.
The antibacterial coating comprises organic resin particles adhering to the artificial hair. The organic resin particles are powdered fine particles include an organic resin and an aluminum salt that is chemically bonded to the organic resin. The antibacterial coating includes the organic resin particles dispersed in an aqueous medium (col. 2, lines 13-22).
Shinbayashi teaches the coating composition improves the luster and this is equated with nourishing.
The organic particles are equated with the nourishing component.
The aqueous medium is equated with the carrier component.
As to claim 8, Shinbayashi teaches the coating is applied to the core fiber via adhesion of the particle to the hair (ABST). Shinbayashi teches a binder and organic resin particles in the aqueous medium in weight ratio of 1:3 to 1:10000. If the weight ratio is in this range, a reduction in tactile properties due to the bind can be prevented and the adhesiveness of the particles to the fiber is not a problem. Adhesion is equated with mechanical adhesion. The use of the binder is equated with covalent bonding.
As to claim 9, Shinbayashi teaches the organic resin particles include an antimicrobial component.
As to claim 32, Shinbayahsi teaches the coating can also include an antistatic agent (col. 13, lines 47-50). The coating provides luster and texture (ABST).
As to claim 40, Shinbayashi teaches the fiber core can be spun with a collagen and include dye or pigment (col. 9, lines 11-19).
As to claims 42 and 43, Shinbayashi is silent with regard to property of tenacity.
As Shinbayashi teaches the same materials, and structure of a coated hair fiber, it is reasonable to presume that the property of tenacity is inherent to Shinbayashi.
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention the examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02
It would have been obvious to one of ordinary skill in the art before the effective filing date to produce a hair fiber with the claimed tenacity motivated to produce a hair fiber with the desired strength.
As to claim 44, Shinbayashi is silent with regard to the property no more than 5% of the hair fiber is degraded at a temperature of up to 450°F.
As Shinbayashi teaches the same materials, and structure of a coated hair fiber, it is reasonable to presume that the property of degradation at high temperature is inherent to Shinbayashi.
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention the examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02
It would have been obvious to one of ordinary skill in the art before the effective filing date to produce a hair fiber with the claimed low degradation at higher temperatures motivated to produce a hair fiber with the heat resistance.
As to claim 53, Shinbayashi teaches the hair (as noted under claim 1 of this office action) can be fixed into a wig (claim 20).
As to claim 56, Shinbayashi teaches an antibacterial coating agent for artificial hair of the present invention is used for an artificial hair and obtained by dispersing the organic resin particles in an aqueous medium. The presence of the organic resin particles including the aluminum salt not only provides the luster and texture similar to those of human hair, but also imparts the antibacterial properties.
Shinbayashi teaches the artificial hair fiber is one of a synthetic fiber (col. 2, lines 35-61) and is equated with the claimed core fiber.
Shinbayashi teaches an artificial hair that is equated with the core fiber and an antibacterial coating that is equated with the outer coating. As the antibacterial coating is adhered to the hair (the core fiber), the antibacterial coating is associated with the core fiber.
The antibacterial coating comprises organic resin particles adhering to the artificial hair. The organic resin particles are powdered fine particles include an organic resin and an aluminum salt that is chemically bonded to the organic resin. The antibacterial coating includes the organic resin particles dispersed in an aqueous medium (col. 2, lines 13-22).
The organic particles are equated with the nourishing component.
The aqueous medium is equated with the carrier component.
As to claim 64, Shinbayashi teaches the coating comprises an antibacterial (Title), (ABST), oils such as silicone, camellia (col 13, lines 49-54).
As to claim 71, Shinbayashi teaches a hair fiber with the coating of claim 56.
As to claim 80, Shinbayashi teaches the hair fiber is spun (col. 17, lines 44-55) thereby obtaining a core fiber under step (a) and the coating material is applied to the core hair fiber via methods such as touch roll method, spraying method, dipping method (col. 12, lines 43-55) as applying the coating under step (b).
As to claim 124, Shinbayashi is directed to an antibacterial artificial hair of the present invention includes an artificial hair and organic resin particles adhering to the artificial hair. The organic resin particles are powdered fine particles including an organic resin and an aluminum salt that is chemically bonded to the organic resin. An antibacterial coating agent for artificial hair of the present invention is used for an artificial hair and obtained by dispersing the organic resin particles in an aqueous medium. The presence of the organic resin particles including the aluminum salt not only provides the luster and texture similar to those of human hair, but also imparts the antibacterial properties.
Shinbayashi teaches the artificial hair fiber is one of a synthetic fiber (col. 2, lines 35-61) and is equated with the claimed core fiber.
Shinbayashi teaches an artificial hair that is equated with the core fiber and an antibacterial coating that is equated with the outer coating. As the antibacterial coating is adhered to the hair (the core fiber), the antibacterial coating is associated with the core fiber.
The antibacterial coating comprises organic resin particles adhering to the artificial hair. The organic resin particles are powdered fine particles include an organic resin and an aluminum salt that is chemically bonded to the organic resin. The antibacterial coating includes the organic resin particles dispersed in an aqueous medium (col. 2, lines 13-22).
The organic particles are equated with the nourishing component.
The aqueous medium is equated with the carrier component.
Shinbayashi teaches the hair fiber is spun (col. 17, lines 44-55) and the coating material is applied to the core hair fiber via methods such as touch roll method, spraying method, dipping method (col. 12, lines 43-55).
As to claim 137, Shinbayashi teaches the composition can include oils such as silicone or camellia oil (col. 13, 48-53) and anti-bacterial components (col. 12, lines 6-11).
Claims 12 and 67 are rejected under 35 U.S.C. 103 as being unpatentable over Shinbayashi (US 9109326) in view of Busch et al (WO 0243675).
As to claims 12 and 67, Shinbayashi teaches an aqueous carrier for the organic resin particles and differs and does not teach the claimed materials, e.g. hydro-gel, gel liposomal, cyclodextrin particle etc..
Busch is directed to a method for immobilising active agents on fibres, preferably hair, to a composition comprising reactive active agent components and to the use thereof for restructuring, restoring and positively influencing fibre characteristics such as volume, shine, hold, body, tactility, electrostatic charge and resistance to heat, UV and IR radiation (ABST).
Busch teaches in a further embodiment, the invention relates to a composition comprising the above-mentioned components for treating fibers, in particular human and animal hair. The treatment can have a permanent and positive influence on properties such as wet and dry combability, hold, moisture, strength, fullness, shine, tactility and electrostatic properties as well as increased resistance to UV and IR radiation and heat. The invention is particularly suitable for positively influencing the hair volume (page 1, para 2).
The composition may contain a carrier in addition to the reactive components. The components are present in a total amount of 0.2 to 20% by weight, preferably 1 to 20% by weight, particularly preferably 3 to 10% by weight, based on the total composition (page 9 and 10, last line and first 2 lines).
Suitable carriers are solid, liquid, gel-like or pasty and preferably consist of aqueous systems, natural or synthetic oils, water-in-oil or oil-in-water emulsions. Such systems are known to the person skilled in hair cosmetics. The carrier can also contain conventional additives such as thickeners, surfactants, Contain rheology aids, antioxidants, stabilizers, coloring, aroma, odor, effect substances and the like including gels (page 10, 2nd and 3rd paragraph). The gels are equated with hydro-gels or sol-gels as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the aqueous carrier for a gel carrier motivated to apply the composition to hair.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Shinbayashi (US 9109326) in view of Rothrock (WO 2007133808).
As to claim 14, Shinbayashi differs and does not teach the nourishing component is released over time.
Rothrock is directed to nanoparticles for cosmetic applications. Rothrock teaches the present invention particles are for cosmetic films (page 4, lines 17-26). The composition is a liquid composition and can be liquid or semiliquid that coat the surface of a patterned master (etched substrate) (page 5, lines 20-33).
Rothrock teaches the composition can treat tissue, protein, hair, skin or cell or the like for augmentation, enhancement, alternation, restoration, treatment or the like (page 10, lines 26-33).
The particles can include lotion particles, soap particles, dermatology particles (page 16, lines 30-33). The particles 120 can be fabricated for personal care products such as hair care products for coloring, toning, glossing, balancing etc. (page 23, lines 3-7).
Rothrock teaches the composition of the particles 120 can be optimized for a particular application incorporating biological targeting agents into the micro and/or nanoparticles for tissue or hair applications (page 10, 26-33).
Rothrock teaches the particles can be preserved for sustained release or activation under certain controlled conditions (page 11, lines 5-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate controlled release particles motivated to obtain a sustained release or activation of the treatment composition.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Shinbayashi (US 9109326) in view of Warner et al (US 20160184197).
As to claim 14, Shinbayashi differs and does not teach the nourishing component is released over time.
Warner is directed to formulation and processes for hair coloring (Title). Warner teaches compositions for coating on a hair fiber include color precursors [0022], thickening agents, abrasive material, wetting agents, surfactants, and cosmetically acceptable adjuncts, such as, for example, perfumes [0035]. Warner teaches compositions may be coated with materials suitable for forming a controlled release matrix including microencapsulation to delay adsorption of the dye or dye intermediates into the hair and thereby provide a sustained action over a longer period of time [0040].
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ a coating composition that releases the dye or colorant motivated provide sustained action for a longer period of time.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Shinbayashi (US 9109326) in view of Fujita et al (US 20180016709).
As to claim 19, Shinbayashi teaches the core fiber is synthetic hair fiber and differs and does not teach a cellulose based fiber or a biobased or plant derived fiber.
Fujita is directed to artificial protein fibers for hair. Fujita teaches protein constituting the protein fibers for artificial hair may be at least one selected from the group consisting of collagen, casein, protein derived from soybean meal, protein derived from yeast, protein derived from fish meal, and feather meal. In one or more embodiments, the protein fibers for artificial hair may be water-insoluble regenerated collagen fibers [0013]. Fujita teaches the hair ornamental products may also be synthetic fibers [0020], [0054], and constitute 30-70 % synthetic and 30-70% protein fibers [0055].
The protein fibers offer the benefit of that they prevent loosening of curls after shampoo [0011].
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute some of the fibers with protein fibers motivated to produce a hair product that maintains the curls in the hair after shampoo.
Claim 136 is rejected under 35 U.S.C. 103 as being unpatentable over Shinbayashi (US 9109326) in view of Asahina et al (JP 2005009049).
As to claim 136, Shinbayashi teaches the hair fibers can be made from synthetic fibers but does not teach the claimed materials.
Asahina is directed to an artificial hair with a core -sheath type wherein the core is a polyamide base resin containing protein cross-linked gel. Asahina teaches a protein based fiber. Asahina teaches the protein crosslinked gel provides an improvement over prior artificial hair made from polyamide which has low rigidity and is difficult to design with a permanent wave [0008] and natural protein such as collagen has excellent texture and hydrophilicity but is expensive [0009].
Asahina teaches fibers made of polyamide resin as the base have the disadvantages of shine, low rigidity, and hydrophilicity that are characteristic of rigid fibers, but remarkable improvement has been seen by combining protein cross-linked gels with high structural affinity. Therefore, in order to further improve the texture of the fiber, when component A using a polyamide-based resin containing a protein-crosslinked gel and component B made of a polyamide-based resin are combined and made into a fiber, a surprising effect is obtained [0012].
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ a protein in the fiber core motivated to improve the texture and hydrophilicity of the artificial hair.
Response to Arguments
Applicant’s amendments and arguments, with respect to the 35 USC 102 rejection over Shinbayashi have been fully considered and are persuasive. The 35 USC 102 rejection over Shinbayashi has been withdrawn. Applicant amended the claims to recite the hair is a user hair or scalp of the user. A 35 USC 101 is presented as human organisms are not eligible subject matter for patentability. The 35 USC 103 is presented as the hair of Shinbayashi does not explicitly teach the hair or fiber on the user but it would have been obvious to do so.
Applicant argues the 35 USC 112(b) over the terms nourishing components and carrier components and states that the scope of claims are clear and point to example 3 of the specification and example 4 for clarity. However this level of detail is not provided in the claims and therefore the claims are indefinite as one of ordinary skill in the art would not know if the claimed nourishing components and carrier component are the same or different from the prior art. Applicant’s arguments are not persuasive.
Applicant argues Shinbayashi does not even remotely disclose or suggest the nourishing component for an existing user or scalp. Instead Shinbayashi describes antibacterial functionality and cosmetic properties of the artificial hair itself. Applicant argues that the improving luster of an artificial hair fiber is not equivalent to nourishing existing user hair or a user’s scalp as now clarified in claim 1. And further submits that the rejection conflates two distinct elements (1) an outer coating affixed to and about the core fiber and (2) a nourishing component integrated with or applied to the outer coating. And by contrast the office action maps Shinbayashi antibacterial coating to the claimed outer coating and then the constituent of the same coating to the nourishing component. Shinbayashi describes organic resin particles as constituents of an antibacterial coating composition applied to the artificial hair and Applicant submits that the antibacterial properties taught by Shinbayashi are completely different from a nourishing component, distinct from the outer coating and not a component selected to nourish use hair or scalp.
Applicant’s arguments are not persuasive and not commensurate with the scope of the claims. The office action presents a 35 USC 112(b) rejection regarding the scope of nourishing component and therefore the components of Shinbayashi are equated with such a component. The scope of nourishing component is not clear and therefore the structure and materials of Shinbayashi meet the claim limitation. The claim language is functional in nature and the scope is indefinite so the rejection is maintained. As the coating is applied in an aqueous medium, this is equated with nourishing component and coating.
With regard to claims 8, 9, 40 and 53, the rejection is revised and maintained as the rejection over Shinbayashi is now a 103 rejection and the reference was not withdrawn.
The rejection over claim 19 is withdrawn and new grounds of rejection presented over Shinbayashi in view of Fujita as Shinbayashi does not teach a cellulose or bio-based fiber.
The rejection over claim 32 is revised to include that Shinbayahsi teaches some of the claimed attributes.
Applicants arguments with respect to claims 42 and 43 are not persuasive. As Shinbayashi teaches the same materials and structure as claimed it is reasonable to presume that the properties are inherent. Until Applicant amends the claims to distinguish the materials from Shinbayashi, the rejections are maintained.
As to claims 12 and 67 and similarly claim 14 and 136, Applicant’s arguments are not persuasive as the rejection over Shinbyashi is maintained as a 103.
Applicant argues that Rothrock teaches particles capable of sustained release which is completely different from a hair fibers in which the claimed nourishing component is released over time. In response, sustained release is equated with released over time. In the absence of a difference is release time or mechanism, the rejection is maintained.
With respect to claim 136, Applicant argues that Asahina merely teaches a particular polyamide based composite fiber structure which is completely different from a hir fiber having a core that is biobased synthetic fibers selected from the materials of claim 136. In response, as an artificial hair fiber can be a fiber and fibers are known to be made in sheath and core materials and structure, Asahina is relevant prior art and the rejection is maintained. Shinbayashi teaches the elements of an artificial hair with a beneficial functional coating. Asahina is merely relied upon for teaches a known artificial hair that is made from a protein based core.
Conclusion
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 STEELE whose telephone number is (571)272-7115. The examiner can normally be reached 9-5:30.
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/JENNIFER A STEELE/Primary Examiner, Art Unit 1789
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