DETAILED ACTION
Withdrawn Rejections:
Applicant's amendments and arguments filed on 05/04/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claims 1-5, 8-16, 18-20 are pending, claims 1-5, 10-16, 18-20 are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/04/2026 and 05/05/2026 is being considered by the examiner.
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) 1-5 and 18 are rejected under 35 U.S.C. 102 (a)(1) & (a)(2) as being anticipated by Schweinsberg et al. (US20120328532).
The limitation of claims 1-7 and 18 are met by Schweinsberg et al. disclosing a method of shaping hair by applying a composition comprising hydrolyzed, propylene oxide modified starch obtained from pea (abstract; claims 1 and 11; [0009, 0015]), and propylene oxide modified starch is hydroxypropylated modified starch according to applicant’s specification ([ 0028]). Schweinsberg et al. teaches retention of hair curl, but silent about all other functional properties in claims 1-5 and 18 which are regarded as results from the prior art steps.
In summary, although the reference is silent about all the functional properties instantly claimed, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same hair is being administered the same cosmetic agent by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, Schweinsberg et al. teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is not only anticipated in the prior art but also obvious.
Response to Argument:
Applicants argue that Schweinsberg et al. does not enable those functional properties and not experimental basis. All related arguments are incorporated herein by reference.
In response to this argument: this is not persuasive. Firstly, there is no requirement to have experimental data to establish 102 rejection. Secondly, ss discussed in the above 103 rejection, it is reasonable to conclude that the same hair is being administered the same cosmetic agent by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, Schweinsberg et al. teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is not only anticipated in the prior art but also obvious. MPEP 2112, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). MPEP 716.01, Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Applicants failed to meet their burden to provide evidence that prior art process can not achieve those claimed functional properties. Therefore, the 102 rejection is still proper.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Schweinsberg et al. (US20120328532).
In arguendo that claims 1-7 and 18 are not anticipated, they are still obvious according to the following analysis.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Schweinsberg et al. teaches Cosmetic agents for temporarily reshaping keratin fibers, particularly human hair, containing in a cosmetic carrier at least one starch modified with propylene oxide, the starch having an average molecular weight (weight-average) of 50 to 2,500 kDa and a propylene oxide content of 4 to 6 wt. % (based on weight of the starch modified with propylene oxide), wherein the agents achieve styling with a good degree of hold and elevated flexibility. The propylene oxide-modified starches are based on renewable raw materials. Here, effective styling agents for hair can be provided without having to rely on setting polymers obtained from fossil fuels (abstract, claim 1). Method for temporarily reshaping keratin fibers comprising applying a cosmetic agent according to claim 1 onto the keratin fibers (claim 11). The modified starch can be obtained from peas, beans, etc. ([0009]). Starches modified with propylene oxide are, for example, prepared by reacting a native starch with propylene oxide. Prior to modification with propylene oxide, the starch may have been subjected to various physical or chemical processes such as heat treatment, shearing or cleavage by thermal treatment, acid hydrolysis, oxidation, or enzymatic treatment, etc. ([0015]). In addition to starch modified with propylene oxide (particularly that modified with propylene oxide according to embodiments A) to R)), the cosmetic agent according to the invention preferably also contains at least one polymer chosen from film-forming polymers or setting polymers ([0047]). Preferred cosmetic agents according to one embodiment are those having at least one additional film-forming and/or setting polymer, provided that all these additional polymers are polysaccharide-based polymers. These additional polymers differ from the propylene oxide-modified polysaccharides. It is preferred that all further polymers of the cosmetic agent be chosen from xanthan, dehydroxanthan, alginate, guar gum, gum arabic, locust bean gum, starch, chitosan or mixtures thereof ([0112]). It is also preferred to use at least one nonionic surfactant. According to the invention, these surfactants can already have an emulsifying action ([0117]). It is preferred in particular if the agent according to the invention is formulated as a cream so that the cosmetic agent according to the invention additionally contains at least one oil phase. In a preferred embodiment, the oil of the oil phase is chosen from at least one oil of plant oils, animal oils, ester oils. Preferred vegetable oils are chosen from at least one of amaranth oil, sunflower oil, olive oil, soy oil, rapeseed oil, castor oil, sesame oil, almond oil, jojoba oil, orange oil, apricot kernel oil, macadamia nut oil, wheat germ oil, peach stone oil and the liquid fractions of coconut oil ([0141-0149]). Agents according to the invention which additionally contain at least one fatty substance are also suitable. The fatty substance is preferably chosen from candelilla wax, shea butter, carnauba wax, beeswax, coconut oil, C12 to C20 fatty acids (particularly palmitic acid, stearic acid) ([0153, 0155]). Agents according to the invention contain their active ingredients in a cosmetic carrier, preferably in a hydrous cosmetic carrier, alcoholic cosmetic carrier or an aqueous-alcoholic cosmetic carrier. For temporarily reshaping hair, such carriers include lotions, water-in-oil emulsions, oil-in-water emulsions, creams, gels, foams, pomades, waxes or other preparations suitable for use on hair ([0157]). In one particular embodiment, the cosmetic agent contains one or more direct dyes. This makes it possible, when applying the composition, for the treated keratin fibers not only to be temporarily structured but also to be dyed at the same time. This may be particularly desirable when, for example, only temporary dyeing with conspicuous fashion colors is desired, which can be removed again from the keratin fibers simply by washing ([0171]). Curl retention is measured after treatment of cosmetic agents ([0182]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Schweinsberg et al. is that Schweinsberg et al. is not specific enough for anticipation.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Schweinsberg et al. teaches a method of shaping hair by applying a composition comprising hydrolyzed, propylene oxide modified starch obtained from pea, and propylene oxide modified starch is hydroxypropylated modified starch according to applicant’s specification ([ 0028]). Schweinsberg et al. teaches retention of hair curl, but silent about all other functional properties in claims 1-5 and 18, which are regarded as results from the prior art steps.
In summary, although the reference is silent about all the functional properties instantly claimed, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same hair is being administered the same cosmetic agent by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, Schweinsberg et al. teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is not only anticipated in the prior art but also obvious.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 10-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schweinsberg et al. (US20120328532), as applied for the above 103 rejection for claims 1-5 and 18, in view of Zhu et al. (US20170065512).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Schweinsberg et al. teaching has already been discussed in the above 103 rejection and is incorporated herein by reference.
Zhu et al. teaches cosmetic composition in the form of hair styling (abstract; claims 1 and 21). The composition comprises modified starch such as hydroxypropyl starch ([0111]). The compositions disclosed herein may be used in many end-use applications. Examples include (but are not limited to) a water phase suspension, an oil in water emulsion, a water in oil emulsion, a silicone in water emulsion, a water in silicone emulsion, a Pickering emulsion, and/or an oil phase suspension, and/or kits ([0084]). Oils typically used in cosmetics include those selected from the group consisting of polar oils, non-polar oils, volatile oils, non-volatile oils and mixtures thereof. These oils may be saturated or unsaturated, straight or branched, aliphatic or aromatic hydrocarbons. Preferred oils include non-polar volatile hydrocarbons including isodecane (such as Permethyl-99A®, available from Presperse Inc.) and the C7-C8 through C12-C15 isoparaffins (such as the Isopar® Series available from Exxon Chemicals) ([0088]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Schweinsberg et al. is that Schweinsberg et al. do not expressly teach mixture of volatile oil and non-volatile oil. This deficiency in Schweinsberg et al. is cured by the teachings of Zhu et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Schweinsberg et al., as suggested by Zhu et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to replace mixture of volatile oil and non-volatile oil for plant oil (such as castor oil) as oil in oil phase of emulsion because this is simple substitution of one known oil for another to obtain predictable results. MPEP 2143, it is prima facie obviousness for simple substitution of one known element for another to obtain predictable results. Under guidance from Zhu et al. teaching mixture of volatile oils and non-volatile oils as alternative to non-volatile oil (such as plant oil) as oil in oil phase of emulsion, it is obvious for one of ordinary skill in the art to replace mixture of volatile oil and non-volatile oil for plant oil (such as castor oil) as oil in oil phase of emulsion and produce instant claimed invention with reasonable expectation of success.
Regarding claims 10-16 and 19-20, prior art teaches a method of shaping hair by applying a O/W emulsion comprising volatile oi, non-volatile oil, propylene oxide modified starch (hydroxypropylated modified starch according to applicant’s specification ([ 0028])) obtained from pea, wax, surfactant, dye (colorant), guar gum (gelling agent according to applicant’s specification) and water. Schweinsberg et al. teaches retention of hair curl, but silent about all other functional properties claimed, which are regarded as results from the prior art steps.
In summary, although the reference is silent about all the functional properties instantly claimed, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same hair is being administered the same cosmetic agent by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, Schweinsberg et al. teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is not only anticipated in the prior art but also obvious.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument:
Applicants argue that the preferred starch is tapioca starch and there is no experimental data for pea-derived starch.
In response to this argument: this is not persuasive. MPEP 2123, A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). It is well settled, however, that the teachings of a reference are not limited to the working examples. See in re Miiis and Pairner, 470 F.2d 649 (CCPA 1972) ("[A] reference is not limited to the disclosure of specific working examples."), In re Chapman and Cosby, 357 F.2d 418, (CCPA 1966) ("A reference can be used for all it realistically teaches, and is not limited to the disclosures in its specific illustrative examples."), and In re Widmer, Batzer and Nikles, 353 F2d 752 (CCPA 1965) ("Examples in a reference are merely that, exemplary of the broader disclosure, all of which is available for what it clearly teaches."). Thus, the fact that pea-derived starch is not preferred and not in working example does not make pea-derived starch less obvious, and the 103 rejection is still proper.
Applicants argue that the different content of amylose among different plant starch and thus, pea starch is not interchangeable with tapioca starch according to literature.
In response to this argument: this is not persuasive. There is no evidence to show that different content of amylose in plant starch would affect the performance of hair composition comprising those starch, especially propylene oxide modified starch (hydroxypropylated modified starch). MPEP 716.01, Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). As discussed in the above 103 rejection, There is no requirement to substitute propylene oxide modified pea starch for propylene oxide modified tapioca starch to establish the obvious rejection since prior art teaches a method of shaping hair by applying a O/W emulsion comprising volatile oi, non-volatile oil, propylene oxide modified starch (hydroxypropylated modified starch according to applicant’s specification ([ 0028])) obtained from pea, wax, surfactant, dye (colorant), guar gum (gelling agent according to applicant’s specification) and water. Therefore, the 103 rejection is still proper.
Applicants argue that prior art does not teach functional properties and those parameters. All related arguments are incorporated herein by reference.
In response to this argument: this is not persuasive. Firstly, there is no requirement to have experimental data to establish 103 rejection. Secondly, ss discussed in the above 103 rejection, it is reasonable to conclude that the same hair is being administered the same cosmetic agent by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, Schweinsberg et al. teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is not only anticipated in the prior art but also obvious. MPEP 2112, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). MPEP 716.01, Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Applicants failed to meet their burden to provide evidence that prior art process can not achieve those claimed functional properties. Therefore, the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
Conclusion
No claim is allowed.
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 JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong 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.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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