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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-15) in the reply filed on 31 October 2025 is acknowledged. The traversal is on the ground(s) that that the international searching authority in their preliminary report on patentability did not check the box for lack of unity of invention (reply, pg. 6). This is not found persuasive for the reasons of record in the restriction requirement mailed 05 September 2025. In brief, the examiner found a composition comprising a solution of L-cysteine and pimelic acid that was heated/sterilized at 134 °C (i.e. complex formation at a high heat).
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 requirement in the reply filed on 31 October 2025.
Applicant's election with traverse of
A) Thiol-cysteamine;
B) Additional active agents other than the dicarboxylic acid, thiol, complex, solvent and a pH adjustor- present; and
C) Formulation which comprises the hair treatment composition- straight perm in the reply filed on 31 October 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the election requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12 & 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the election requirement in the reply filed on 31 October 2025.
Claim Status
Applicant’s claim amendments in the response filed 31 October 2025 are acknowledged.
Claims 1-20 are pending.
Claims 12-13 & 16-20 withdrawn.
Claims 1-11, 14 & 15 are under consideration.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Drawings
The drawings were received on 27 September 2023. These drawings are accepted.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 27 September 2023 and 06 June 2025 have been fully considered by the examiner. A signed and initialed copy of each IDS is included with the instant Office Action.
Objections/Rejections
Specification
The specification is objected to because amended paragraph [0015] contains the misspelling “Figs. 3A-#B”.
Applicant may wish to consider whether an amendment to disclose “Figs. 3A-3B” would obviate the objection.
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 8 & 10 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 term “ high temperature” in claim 8 is a relative term which renders the claim indefinite. The term “ high temperature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “high temperature” is a relative term because what is a high temperature for one person may not be a high temperature for another.
The term “high temperature” in claim 10 is a relative term which renders the claim indefinite. The term “high temperature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “high temperature” is a relative term because what is a high temperature for one person may not be a high temperature for another.
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 7 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 7 depends from claim 6. Claim 6 recites the upper limit for the mole ratio of thiol/dicarboxylic aid is 100. Claim 7 fails further limit claim 6 by expanding the upper limit to be a value of more than 1 (i.e. “1 or more”) which includes values beyond the upper limit of 100 recited by claim 6.
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.
Applicant may wish to consider whether an amendment to change the dependency of claim 7 from claim 6 to claim 1 would obviate the rejection.
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)(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.
Claims 1-3, 7, 8, 10, 14 & 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Blackkolb (US 2013/0122040; Published: 05/16/2013; previously cited; PTO-892: 09/05/2025).
*Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. cysteine a species in the genera to which the elected species of cysteamines belongs) and in an effort to expedite prosecution, this art has been applied. The species election is maintained.
**Claim Interpretation: The recitation of “high heat” by claims 8 & 10 has been interpreted broadly.
The claim 14 recitation of “a hair quality improver for use in dyeing or bleaching, a hair quality improver for use in a wave perm or a straight perm” are statements of intended use which do not further limit the recited composition.
The claim 15 recitation of “the hair quality improver for use in a waver perm or a straight perm” is a statement of intended use which do not further limit the recited composition.
With regard to claims 1-3, 14 & 15, Blackkolb in Table 3 teaches a fermentation medium comprising 1.20 mg of pimelic acid (i.e. dicarboxylic acid) and 280.19 mg of L-cysteine solution (pg. 22-23). With regard to claims 1, 8 & 10, the reagents are added and the fermentation medium was sterilized at 134 °C in an autoclave . With regard to claims 1, 8 & 10, a complex comprising pimelic acid and L-cysteine would necessarily form because the mixture is heated to 134 °C which is a high heat and in an autoclave (which supplies pressure) and the instant specification teaches at paragraph [0029] that “mixing at a high temperature promotes the formation of a complex, serving as an active ingredient, of the dicarboxylic acid and the thiol” and at paragraph [0033] that the ”mixing step [of the thiol and dicarboxylic acid] may be performed under high pressure” is how the complex is formed. With regard to claim 7, the mole ratio of the thiol/L-Cysteine to dicarboxylic acid/pimelic acid is 308 [Math for moles of pimelic acid: 0.0012 g/160 =0.0000075; Math for cysteine: 0.28019/121.16 = 0.002; 0.002/0.0000075 = 308].
With regard to the ratio of the thiol/L-Cysteine to dicarboxylic acid/pimelic acid, a specific example in the prior art which is within a claimed range anticipates the range. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (MPEP 2131.03.I.)
Claims 1-4, 6, 9-11, 14 & 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cohen [(FR 3009785; Published: 02/27/2015; IDS-09/27/2023); as evidenced by Ahn (WO 2018/0626970; Published: 04/05/2018)].
*Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. cysteine a species in the genera to which the elected species of cysteamines belongs) and in an effort to expedite prosecution, this art has been applied. The species election is maintained.
**The references refer to the English Translations.
****Claim Interpretation: The recitation of “high heat” by claims 8 & 10 has been interpreted broadly.
The claim 14 recitation of “a hair quality improver for use in dyeing or bleaching, a hair quality improver for use in a wave perm or a straight perm” are statements of intended use which do not further limit the recited composition.
The claim 15 recitation of “the hair quality improver for use in a waver perm or a straight perm” is a statement of intended use which do not further limit the recited composition.
With regard to claims 1-4, 14 & 15, Cohen teaches a composition called Prolissium which comprises 2.0% cysteine and 5.0 % adipic acid (pg. 5). With regard to claims 14 & 15, as evidenced by Ahn, C2 to C4 aliphatic dibasic acids which include adipic acid, fill the damaged part of hair to strengthen the hair to obtain a conditioning effect (i.e. adipic acid and the composition it is in is a hair quality improver; pg. 2-3). With regard to claim 6, the mole ratio of thio/dicarboxylic acid is 0.5 [Math: Moles of cysteine 2.0/121.16 = 0.16; Moles of adipic acid 5/146.14 = 0.03; 0.16/0.03 =0.5]. With regard to claims 1, 9-11, 14 & 15, Cohen in Example 1 teaches a smoothing cream compromising Prolissium in Phase B which is headed to 75 °C ( pg. 5). With regard to claims 1 & 10, a complex comprising adipic acid and cysteine would necessarily form because the mixture is heated to 75 °C which is a high heat and the instant specification teaches at paragraph [0029] that “mixing at a high temperature promotes the formation of a complex, serving as an active ingredient, of the dicarboxylic acid and the thiol” and at paragraph [0009] that the “mixing step may be a mixing step of mixing the dicarboxylic acid with the thiol at 60°C to 100°C” is how the complex is formed.
With regard to the ratio of the thiol/cysteine to dicarboxylic acid/pimelic acid, a specific example in the prior art which is within a claimed range anticipates the range. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (MPEP 2131
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 1-6, 9-11, 14 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen [(FR 3009785; Published: 02/27/2015; IDS-09/27/2023); as evidenced by Ahn (WO 2018/0626970; Published: 04/05/2018)] in view of Ahn (WO 2018/0626970; Published: 04/05/2018) and Fondin (US 2005/0232883; Published: 10/20/2005).
*The references refer to the English Translations
**Claim Interpretation: The recitation of “high heat” by claims 8 & 10 has been interpreted broadly.
The claim 14 recitation of “a hair quality improver for use in dyeing or bleaching, a hair quality improver for use in a wave perm or a straight perm” are statements of intended use which do not further limit the recited composition.
The claim 15 recitation of “the hair quality improver for use in a waver perm or a straight perm” is a statement of intended use which do not further limit the recited composition.
The teachings of Cohen are described above. In brief, Cohen teaches Prolissium which comprises 2.0% cysteine and 5.0 % adipic acid for use in a smoothing cream (pg. 5). Cohen teaches Prolissium is incorporated into various supports such as creams and was tested by thermo-application which made hair smooth, shiny and soft to the touch (pg. 2-3).
Cohen does not teach inclusion of muconic acid or that the thiol is cysteamine.
In the same field of invention of providing hair shine, softness and smoothness, Ahn teaches adipic acid and muconic acid are C2 to C4 aliphatic dibasic acid compounds that form an ionic bond with the inside of the hair to fill the damaged part of the hair to strengthen the hair to obtain a conditioning effect as well as providing excellent ionic bond. (pg. 2-3). Ahn teaches “at least one selected from the group consisting of muconic acid can be used” (pg. 3).
In the same field of invention of hair fiber treatment methods which provide hair softness and shine, Fondin teaches composition and method of treating hair with a reducing composition, followed by heat treatment, without fixing the hair ([0012] & [0013]). Fondin teaches the reducing agent may be cysteine or cysteamine [0022].
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Cohen’s Prolissium by substituting the adipic acid with muconic acid as taught by Ahn because Ahn teaches adipic acid with muconic acid are both C2 to C4 aliphatic dibasic acid compounds that form an ionic bond with the inside of the hair to fill the damaged part of the hair to strengthen the hair to obtain a conditioning effect with Ahn showing a pattern of preference for muconic acid by teaching it as the sole option of a Markush group. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to fill damaged hair with a preferred C2 to C4 aliphatic dibasic acid compound.
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Cohen’s Prolissium by substituting the cysteine with cysteamine as taught by Fondin because both Cohen and Fondin are directed to compositions which smooth hair and making it soft and cysteine or cysteamine are both suitable reducing agents for such compositions as taught by Fondin.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J Blanchard can be reached at 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LORI K MATTISON/Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619