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 .
Information Disclosure Statements
Information Disclosure Statement (IDS) filed on 03/11/2024 and 05/15/2025 have been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Claim Status
Applicant’s election without traverse of Group I, claims 1-4 in the reply filed on 09/17/2025 is acknowledged. Examiner respectfully submits that Applicants did not respond to the species election, however Examiner currently withdraws the species election to the composition ingredients.
Claims 5-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/17/2025.
Claims 1-4 are under current examination.
Specification Objections
The disclosure is objected to because of the following informalities: The Specification is also objected to because of the use of trademarks. The use of the trademarks "Tris" and “AEPD” has been noted in this application. The trademark should be capitalized wherever it appears and be accompanied by the generic terminology. See MPEP 608.01(v)(II). Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks.
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.
Claim 2 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 2 contains the trademark/trade name AEPD and TRIS. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe 2-Amino-2-ethyl-1,3-propanediol and Hydroxymethyl)Aminomethane( tromethamine) and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 112(d)-failure to further limit
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 4 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 4 fails to further limit the composition of claim 1 because claim 1 recites a pH of greater than 7 (i.e. is not inclusive of 7), and claim 4 is now inclusive of 7 because the claim recites “at least” 7. Therefore, claim 4 does not further limit the range encompassed by claim 1 for the pH. 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dhamdhere et al. (WO2022182596-IDS filed 05/15/2025).
Claim 1 recites a hair perming composition that comprises: 5% to 8% of thioglycolic acid by weight of the hair perming composition; and one or more C3-C5 alkanolamines in a molar ratio to thioglycolic acid of at least 1;wherein the pH of the hair perming composition is greater than 7. According to the instant specification at page 2, “hair perming” refers to either curling or straightening. Alkanolamines include DL-2-AP at claim 2.
Dhamdhere et al. discloses a hair straightening composition at Table 10 comprising thioglycolic acid at 8% by weight with DL-2-AP present at 9% by weight. Example 10 has a pH of 9.02 for the overall composition. This pH anticipates greater than 7 and a range claimed that is at least 7.
Thioglycolic acid (TGA) has a molar mass of 92.11g/mol and is present at 8% weight. DL-2-amino-1-propanol (DL-2-AP) is 75.11g/mol at present at 9% weight. Thus, the molar ratio can be calculated as follows:
8.00g/92.11 g/mol=080869 mol
9g/75.11 g/mol=01199mol
Therefore, a molar ratio of alkanolamine DL-2-AP to thioglycolic acid is 0.1199/0.0869 which equivalent to a molar ratio of 1.38. This molar ratio is greater than 1 and greater than1.25 claimed.
Accordingly, the disclosure of Dhamdhere et al. anticipates claims 1-4
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.
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) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Dhamdhere et al. (WO2022182596-IDS filed 05/15/2025).
Claim 1 recites a hair perming composition that comprises: 5% to 8% of thioglycolic acid by weight of the hair perming composition; and one or more C3-C5 alkanolamines in a molar ratio to thioglycolic acid of at least 1;wherein the pH of the hair perming composition is greater than 7.
Dhamdhere et al. teach compositions having 2-aminopropanol (DL-2-AP) which can be present from 2-15% by weight, or from about 6-11% by weight, see paragraph [0005]. Example 10 has a pH of 9.02, however the pH is taught to be above 7, see paragraph [0090]. Dhamdhere teaches that the thioglycolic acid can be present at 8% by weight, see Table 10. From example 10, 8% of thioglycolic acid is about 8g per 100g solution and helps form a composition that may be for altering curl, kink texture or color of hair, see paragraph [0005]. Dhamdhere at Table 10 teaches hair straightening compositions comprising DL-2-AP at 9% by weight together with 8% by weight of thioglycolic acid. The pH is 9.02 of the overall composition. Curl modifying agents including thioglycolates can be added from 0.1-20% by weight, see paragraph [0069].
Thioglycolic acid (TGA) has a molar mass of 92.11g/mol and is present at 8% weight.
DL-2-amino-1-propanol (DL-2-AP) is 75.11g/mol at present at 9% weight.
8.00g/92.11 g/mol=080869 mol
9g/75.11 g/mol=01199mol.
Therefore, 0.1199/0.0869 is equivalent to 1.38 as a molar ratio. This is greater than 1 and 1.25 claimed.
Although Table 10 exemplifies a hair straightening composition, the composition containing DL-2-amino-1-propanol is taught by Dhamdhere et al. to also be used to add curls to naturally straight hair, see paragraph [0005] and [0069].
It would have been prima facie obvious to adjust the amount of the DL-2AP present with the thioglycolic acid exemplified to the desired weight percent to achieve the desired molar ratio for perming (either straightening or curling) hair. One of ordinary skill in the art would have been motivated to do so because the DL-2-AP is taught as being added to alter curl, kink, texture or color of hair. Thus, one of ordinary skill in the art would have been motivated to adjust the amount of DL-2AP at table 10 to achieve the desired hair curl or straightness of hair since the composition can be used for straightening or curling of the hair.
Conclusion
All claims are currently rejected and no claims are allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619