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 .
Priority
The instant application was filed 18 February 2024 and is the Continuation-in-Part of PCT/IB2022/057741 filed 18 August 2022. The Applicant claims priority to foreign application GB2111904.5 filed 19 August 2021. An English copy of the foreign document has been provided. Therefore, the effective filing date of the instant application is acknowledged as 19 August 2021.
Election/Restrictions
Applicant’s election of Group I (claims 1-19) and urea, Formula VII, zinc stearate, and shellac in the reply filed on 15 April 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species and invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 April 2026.
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 5, 6, 10, 15, and 16 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.
Claim 5 recites the limitation "the energy-curable water-insoluble PBM" in line 2 of claim 5. However, claim 4 recites “the at least one energy-curable water-insoluble PBM.” There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “the water-soluble hygroscopic agent” in lines 1-2 of claim 6. However, claim 1 recites “at least one polar water-soluble hygroscopic agent (WHA).” There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the curing facilitator" in line 2 of claim 10. However, claim 10 recites “at least one curing facilitator” in lines 1-2 of claim 10. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the auxiliary polymerization agent" in line 2 of claim 15. However, claim 14 recites “at least one auxiliary polymerization agent.” There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the co-solvent" in line 4 of claim 16. However, claim 16 recites “at least one co-solvent” in line 2 of claim 16. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-4, 6-11, 13-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krueger (US 2015/0050228 A1).
Applicant has elected a) urea as the WHA b) Formula VII wherein R1 is a C1-C8 aromatic or non-aromatic ester and R2, R3, R4, and R5 are either H or OH, c) zinc stearate as the curing accelerator, and d) shellac as the auxiliary polymerization agent. The elected species are interpreted as being encompassed by instant claims 1-11 and 13-19.
Regarding claim 1, Krueger teaches a hair treatment composition (abs; entire teaching) to style or shape hair (para. 15). The composition may comprise urea as a swelling agent (para. 291), 2-ethylhexyl salicylate as a UV filtering agent (para. 262), and water as a carrier (para. 21). The composition does not require the presence of any peptides.
Regarding claim 2, 2-ethylhexyl salicylate has the following structure:
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R5 of Formula I is a C1-C8 non-aromatic ester and the R1, R2, R3, and R4 are Hydrogen atoms.
Regarding claim 3, 2-ethylhexyl salicylate addresses Formula VII. R1 is a C1-C8 non-aromatic ester, and R2, R3, R4, and R5 are Hydrogen atoms.
Regarding claim 4, a UV filtering agent may be 2-ethylhexyl salicylate (para. 262).
Regarding claims 6-8, the claims are interpreted as being addressed by the Applicant’s election of urea as the WHA.
Regarding claim 9, the amount of UV filtering substances, such as 2-ethylhexyl salicylate, may be 0.01-15% (para. 273).
Regarding claim 10, the composition may include pigments, such as zinc stearate (para. 272). In regards to the limitation of “the curing facilitator being adapted to be in a same phase as the PBM within the hair fibers,” the composition is interpreted as being combined and applied as a mixture (abs).
Regarding claim 11, zinc stearate is preferentially combined with UV filters, wherein the amount of UV filter substances may be 0.01-15% (paras. 272, 273).
Regarding claim 13, the claim is interpreted as being addressed by the Applicant’s election of zinc stearate.
Regarding claim 14, the claim is interpreted as being addressed by the Applicant’s election of shellac.
Regarding claim 15, the amount of shellac (para. 286) in the composition may be 0.05-10% (para. 288).
Regarding claim 16, the composition may further include a thickening agent (para. 313).
Regarding claim 17, the combination of ingredients recited in claim 1 (urea as the WHA, 2-ethylhexyl salicylate as the PBM, and water) is interpreted as inherently and necessarily producing a composition with the recited glass transition temperature. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)).
Regarding claim 18, the instant specification recites a pH of 1-3.5 or 5-11 (para. 15). Krueger teaches compositions wherein the pH is adjusted to 2-4 or 4.5-5.8 (paras. 311, 312).
Regarding claim 19, the hair composition may comprise i) 2-ethylhexylsalicylate (para. 262), ii) urea (para. 291), and water (para. 21). In regards to the limitation of “the contents of the second compartment are a liquid having a pH selected to increase penetration of at least part of the monomer into the hair fibers,” the instant specification recites a pH of 1-3.5 or 5-11 (para. 15). Krueger teaches compositions wherein the pH is adjusted to 2-4 or 4.5-5.8 (paras. 311, 312). In regards to the limitation of “wherein mixing of the compartments produces a single-phase composition or an oil-in-water emulsion constituting a hair styling composition for modifying a shape the mammalian hair fibers by application thereto,” the claim is interpreted as its final product. Therefore, the claim is interpreted as a final mixture of all of the components, which is addressed by the “synergistic combination” of ingredients taught by Krueger (abs). In regards to the limitation of “the hair styling composition containing less than 0.1 wt. % of small reactive aldehydes (SRA), the SRA being selected from formaldehyde, formaldehyde-forming chemicals, glutaraldehyde, and glutaraldehyde-forming chemicals,” Krueger’s composition does not seem to require or produce the recited components.
Krueger does not teach an exact combination of the recited components in claim 1.
In regards to selecting the combination of urea, 2-ethylhexyl salicylate, and water, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Krueger teaches a hair composition comprising urea, 2-ethylhexylsalicylate, and water, whereas the claimed invention is directed towards a hair styling composition comprising a PBM with an average molecular weight of 10,000 g/mol or less, a WHA, and water. Since Krueger teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Claim(s) 1-11, 13-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krueger (US 2015/0050228 A1).
In regards to claim(s) 1-4, 6-11, and 13-19, Krueger, as applied supra, is herein applied in its entirety for its teachings of a hair composition comprising urea, 2-ethylhexyl salicylate, and water.
Krueger does not teach 2,3-dihydroxybenzoate in claim 5.
Punyani teaches a hair composition used to reduce frizz and control moisture (abs; entire teaching). The composition includes an acidic component, such as 2,3-dihydroxybenzoic acid or salicylic acid, that is preferably used to help with moisture (abs; pg. 6, ln. 12).
Since Krueger does not 2,3-dihydroxybenzoate in claim 5, one of ordinary skill in the art would have been motivated to use Punyani’s teaching of using 2,3-dihydroxybenzoic acid as an acidic component to control moisture and frizz. A skilled artisan would have been led to combine the teachings since Krueger teaches acidic components and an acidic pH for their hair compositions. Krueger’s hair compositions are also used for improving hair moisture (para. 9). Therefore, a skilled artisan would have been motivated to improve the compositions in Krueger’s teachings. “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).”
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 9, 10, 13, 14, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 12, 14, 15, 17, and 19 of copending Application No. 18/052,221 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 11 of the reference application recites a PBM, a curing facilitator, an auxiliary polymerization agent, and water, which corresponds to instant claim 1.
Claim 12 of the reference application recites Formula I with the same conditions recited in instant claim 2.
Claim 14 of the reference application recites a wt. % that overlaps with that of instant claim 9.
Claim 15 of the reference application includes limitations regarding the curing facilitator, auxiliary polymerization agent, co-solvent, and additive that are encompassed by instant claims 10, 14 and 16.
Claim 17 of the reference application recites at least one curing facilitator with the same limitations as instant claim 13.
Claim 19 of the reference application recites a similar limitation regarding the pH as instant claim 18.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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