DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant's election with traverse of Group I, claims 1-8, and potassium carbonate, glycerol, a polyol other than glycerol, and lactic acid in the reply filed on 17 February 2026 is acknowledged. The traversal is on the ground(s) that “the search and examination of the subject matter of all pending claims would not constitute a serious burden” (Remarks, pg. 3, lines 11-12). This is not found persuasive because a serious search burden, as defined in MPEP § 808.02, does exist. A serious search burden is present when examination would require searching subjects that have separate classifications, and therefore a separate field of search. For example, instant claim 1 recites “at least one polyol”, which includes all molecules with more than one hydroxyl group such as the species glycerol (CPC Symbol C07C 31/225), cellulose (CPC Symbol C04B24/383), and paclitaxel (CPC Symbol A61L 2300/416).
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-20 are pending in the instant Office Action.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 17 February 2026.
Claims 1-8 are under consideration in the instant Office Action, to the extent of the following elected species:
the alkaline carbonate is potassium carbonate;
the polyol is glycerol;
the non-aqueous solvent is a polyol other than glycerol; and
the pH adjuster is lactic acid.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of French Application No. FR 2301019, filed on 3 February 2023, has been received.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 31 January 2024, and 12 July 2024, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-8 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 1 recites the limitation "the at least one carbonate" in the penultimate line. There is insufficient antecedent basis for this limitation in the claim because line 2 recites “at least one alkaline carbonate” (bold added for emphasis). Claims 2-8 depend from claim 1, incorporate all limitations of the claim, and are therefore also rejected as being indefinite. Applicant may overcome this rejection by amending the penultimate line of claim 1 to recite “the at least one alkaline carbonate”.
Claim 2 recites the range of ratios “from less than 1:3 to about 1:50” in line 2. The phrase “from less than” makes unclear whether the ratio must be between 1:3 and 1:50 or if values outside of that range are also included and the limitation therefore renders the claim indefinite. Applicant may overcome this rejection by amending the claim to recite a specific range of ratios as done in claim 8.
Claim 4 recites “wherein the total amount of alkaline carbonates….” in line 1. Claim 1, from which claim 4 depends, recites “at least one alkaline carbonate”. Claim 4 ignores the fact that the composition can comprise a single alkaline carbonate in claim 1 and is therefore indefinite. Applicant may overcome this rejection by amending the claim to recite “wherein the total amount of alkaline carbonate(s)” as done in claim 8 (bold added for emphasis).
Claim 7 recites “wherein the total amount of polyols….” in line 1. Claim 1, from which claim 7 depends, recites “at least one polyol”. Claim 7 ignores the fact that the composition can comprise a single polyol in claim 1 and is therefore indefinite. Applicant may overcome this rejection by amending the claim to recite “wherein the total amount of polyol(s)” as done in claim 8 (bold added for emphasis).
Claim 6 recites “The composition of claim 1, comprising at least one polyol chosen from glycerol, sorbitol, xylitol, maltitol, isomalt, or a combination of two or more thereof.” The recitation in claim 6 is ambiguous because it is not clear whether the recitation is trying to further define the “at least one polyol” recited in claim 1 or if it is trying to further incorporate an additional at least one polyol, which is not consistent with the recitation in claim 1 which allows incorporation of one or more polyols, rendering the claim indefinite. Applicant may overcome this rejection by amending claim 6 to recite “The composition of claim 1, wherein the at least one polyol is chosen from glycerol, sorbitol, xylitol, maltitol, isomalt, or a combination of two or more thereof.”
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hercouet et al. (U.S. Patent No. 7,947,089 B2, published on 24 May 2011, hereafter referred to as Hercouet).
Hercouet teaches a method of coloring or lightening human keratin fibers via application of three compositions: an oxidizing composition (A), a cosmetic composition (B) comprising at least one surfactant and at least one fat; and a composition (C) comprising at least one inorganic base (Abstract and col. 1, lines 11-19). Coloring or lightening human keratin fibers is considered to be equivalent to “treating keratinous substrates” as recited in instant claim 1. The composition (C) is taught by Hercouet to contain an inorganic base that is an alkali-metal carbonate, which in one embodiment is potassium carbonate (claims 1 and 14-15). The inorganic base is further taught to be present in an amount from 0.01-30% w/w relative to the weight of composition (B) (claim 16). Composition (B) is taught to optionally comprise at least one organic solvent, which may be glycerol, propylene glycol, dipropylene glycol, or other polyols, and is present in an amount from 1-40% w/w relative to the weight of composition (C) (col. 12, lines 29-38). Glycerol is a polyol that has a molar mass of less than 500 g/mol as evidenced by para. [0009] of the instant specification. Hercouet additionally teaches that composition (B) may comprise one or more acidifying agents, which are interpreted as being equivalent to the pH adjusters recited in instant claim 1, and that in one embodiment the acidifying agent may be lactic acid (col. 12, lines 43-49).
Both compositions (B) and (C) are taught to be aqueous, which Hercouet defines as having >5% w/w water (col. 12, lines 25-29 and col. 30, line 66 - col. 31, line 5). Finally, Hercouet teaches that compositions (A), (B), and (C) may be mixed prior to application (claim 20). When mixed, the weight ratio of compositions (A)+(C)]/(B) and of compositions (A)/(C) range from 0.1 to 10 (claim 21). In Example 1, Hercouet teaches a mixture comprising 10 parts of composition (A) (~34% w/w), 15 parts composition (B) (~52% w/w), and 4 parts composition (C) (~14% w/w). Using the ranges for potassium carbonate and glycerol above, the mass of potassium carbonate relative to the total weight of the composition in this example would be 0.005-15.5%, which significantly overlaps with the range recited in instant claim 4, the mass of glycerol relative to the total weight of the composition in this example would be 0.14-5.5%, which significantly overlaps with the range recited in instant claim 7, and the ratio between the two components would be 1:0.009 to 1:1067, which encompasses the ranges recited in instant claims 2 and 8.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the ratio of potassium carbonate to glycerol and the amounts of potassium carbonate and glycerol. In each case, the ranges taught by Hercouet either significantly overlap with or encompass the ranges recited in instant claims 2, 4, and 7-8.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 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 v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Hercouet and the instant claims is that Hercouet does not teach the specific combination of components as claimed in a single embodiment (e.g., one composition comprising potassium carbonate, glycerol, water, and lactic acid), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Hercouet, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[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.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Hercouet, to arrive at an invention such as the one being sought.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean J. Steinke, Ph.D., whose telephone number is (571) 272-3396. The examiner can normally be reached Mon. - Fri., 09:00 - 17:00 ET.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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