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 .
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 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.
DETAILED ACTION
Claims 32-51 are pending, claims 1-31are canceled in this application. This application is a national stage entry of PCT/IL2022/050353, filled on 04/04/2022. This application claims priority to provisional application 63/170,596, filed on 04/05/2021.
Election/Restrictions
Applicant's election with traverse of Group I, claims 32-47, in the reply filed on 12/10/2025, is acknowledge.
The traversal is on the ground(s) that US 2018/0344606 A1 does not teach the claimed amounts of the components This is not found persuasive because US 2018/0344606 A1 teaches about 0.1-20.0 wt. % of at least one functional polymer containing at least one or more of monomeric components including acrylates and a cross-linking monomeric unit, about 0.1-20 wt. % of at least one reducing agent selected from the group consisting of cysteine, etc., nonionic surfactant, and about 40-95.0 wt. % of at least one carrier which is obvious to the claimed about 1-20 wt % of at least one acrylic-based polymer comprising about 2.5-25 wt % of cross-linking acrylic units relative to said acrylic-based polymer that will cross-link the polymer chains and thereby styling the hair upon drying, about 0.05-6 wt % of a non-ionic surfactant, 0.01-0.9 wt % of an organic compound comprising one or more thiol group and having a molecular weight of from 50 to 1000 Da, and a cosmetically acceptable aqueous carrier.
The requirement is still deemed proper and is therefore made FINAL.
Claims 48-51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Claims 32-47 will presently be examined to the extent they read on the elected subject matter of record.
Claim Objection
Claim 39 is objected to because of the following informalities: “wt%” is missing after “from 0.2 to 0.8”. Appropriate correction is required.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claim 36 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 36 recites the limitation “the monoacrylate oligomer”. There is insufficient antecedent basis for this limitation in the claim.
Claim 36 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 36 contains the trademark/trade name Tween. 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). See MPEP 2173.95(u): If the 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 the 35 U.S.C. 112(b). Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). See also Eli Lilly & Co. v. Apotex, Inc., 837 Fed. Appx. 780, 784-85, 2020 USPQ2d 11531 (Fed. Cir. 2020).
Also, a trademark or trade name is used to identify a source of goods and the parentheses raise the question as to which term is required by the claim because the subject matter in the parentheses is not identical in scope; thus, it is not clear whether Tween in the parentheses is a further limitation used to identify a source of polysorbate or not, i.e., polysorbate is limited to polysorbate with Tween trademark or not.
Claim 38 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 38 depends on claim 38. One of ordinary skill could not ascertain and interpret the metes and bounds of the patent protection desired as to claim 38.
Claim 43 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 43 recites the limitation “the hair straightening formulation”. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 32, 36, 37, and 43-47 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uzan et al. (WO 2019/234733 A1).
Uzan et al. meet all of the limitations of claims 32, 36, 37, and 43-47. Uzan et al. disclose a hair straightening (the instant claim 46) formulation comprising
about 2-50 wt% and 20 wt% of the stock emulsion of claims 1-15 (claim 16 and table 3) in form of spray (the instant claims 43 and 46) (claim 17);
wherein the stock emulsion of claims 1-15, having about 20-55% wt% solid (→ about 4-11 wt%: 20%x20%=1% and 55%x20%=11%) (claim 12), comprises
about 5-55 wt% of at least one acrylic-based polymer comprising acrylic units that act as cross-linkers that will form bonds between the polymers (→ about 1-11 wt %: 5%x20%=1% and 55%x20%=11%) which is derived from a combination of acrylic monomers and oligomers and the amount of said cross-linker units is about 2.5-25 wt% of said acrylic-based polymer (the instant claim 32), and
about 0.5-15 wt% of a non-ionic surfactant (→ about 0.1-3 wt%: 0.5%x20%=0.1% and 15%x20%=3%) (the instant claim 32),
in a cosmetically acceptable water carrier (the instant claim 32),
wherein the polymer chains undergo cross linking and thereby straighten the hair upon drying (the instant claims 32 and 47) (claims 1 and 19);
wherein the monoacrylate oligomer is 2-hydroxy-3-(prop-2-enoyloxy)propyl 2-methyl-2-propylhexanoate (the instant claim 36 item iii) (claim 5);
wherein the cross-linker unit is 2-(methacryloyloxy)ethylacetoacetate (AAEM) (the instant claim 37 item ii) (claim 6);
and the formulation further comprising about 0.05-18 wt% and about 3-5.0 wt% reducing agents such as thioglycolates (MW of thioglycolate ion being 91 g/mol, the claimed thiol group containing organic compound with MW of 50-1000 Da in the instant claim 32) and pH adjusting agents (the instant claims 44 and 45) (paragraph 79).
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 32, 33, 36, 37, and 43-47 are rejected under 35 U.S.C. 103(a) as being unpatentable over Uzan et al. (WO 2019/234733 A1).
The teachings of Uzan et al. are discussed above and applied in the same manner.
Uzan et al. do not specify the same weight percentage of thioglycolates as the thiol containing organic compound (about 0.05-18 wt% vs the claimed 0.1-0.8 wt% in the instant claim 33).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of thiol containing organic compound is 0.1-0.8 wt% and the range of thioglycolates taught in the prior art is about 0.05-18 wt% and therefor, includes the claimed range.
Claims 32-37 and 39-47 are rejected under 35 U.S.C. 103(a) as being unpatentable over Uzan et al. (WO 2019/234733 A1) in view of Gregolin et al. (US 2021/0030651 A1).
The teachings of Uzan et al. are discussed above and applied in the same manner. Uzan et al. teach the crosslinker in the polymer being about 5-20 wt% (the instant claim 39) (claim 7).
Uzan et al. do not specify the thiol containing organic compound being cysteine in the instant claim 34 and N-acetyl cysteine in the instant claims 35 and 39 and the pH of the formulation in the instant claim 41.
This deficiency is cured by Gregolin et al. who teach hair straightening compositions with a pH of 5 comprising at least one reducing agent including N-acetyl cysteine, glyceryl thioglycolate, etc., (abstract, paragraph 480-481, and claims 1 and 3).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Uzan et al. and Gregolin et al. to replace about 0.05-18 wt% of thioglycolate reducing agents in the hair straightening composition taught by Uzan et al. with about 0.05-18 wt% of N-acetyl cysteine and to specify the pH of the composition being 5. Both N-acetyl cysteine and glyceryl thioglycolate being suitable reducing agent in hair straightening compositions with a pH of 5 was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replacing thioglycolate reducing agents in the hair straightening composition taught by Uzan et al. with N-acetyl cysteine flows from both N-acetyl cysteine and glyceryl thioglycolate being suitable reducing agent in hair straightening compositions having been used in the prior art, and from them being recognized in the prior art as useful for the same purpose. The motivation for specifying the pH of the composition aught by Uzan et al. being 5 flows from hair straightening compositions with a pH of 5 having been used in the prior art, and from hair straightening compositions with a pH of 5 being recognized in the prior art as useful for the same purpose.
Uzan et al. do not specify the claimed weight percentages of
the polymer (about 5-55 wt% vs the claimed about 1.5-12 wt% and 3-7 wt% in the instant claims 39 and 41),
the surfactant (about 0.5-15 wt% vs the claimed about 0.2-4 wt% in the instant claim 39), and
N-acetyl cysteine (about 0.05-18 wt% vs the claimed 0.2-0.8% in the instant claim 39).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside/overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed ranges of polymer are about 1.5-12 wt% and 3-7 wt% and the range of polymer taught in the prior art is about 5-55 wt% and therefor, overlaps with the claimed ranges.
The claimed range of surfactant is about 0.2-4 wt% and the range of surfactant taught in the prior art is about 0.5-15 wt% and therefor, overlaps with the claimed range.
The claimed range of N-acetyl cysteine is 0.2-0.8 wt% and the range of N-acetyl cysteine taught in the prior art is about 0.05-18 wt% and therefor, includes the claimed range.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 32-47 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 24, 29-44, 46, and 47 (05/09/2025) of copending Application No. 15/734,462 (national stage of the prior art WO 2019/234733 A1 in the 102 and 103 rejections above (PCT/IL2019/050628)) in view of Gregolin et al. (US 2021/0030651 A1). Although the patent and instant claims are not identical, they are not patentably distinct from each other in view of Gregolin et al. (US 2021/0030651 A1) to add reducing agents in the hair straightening composition claimed in claims 24, 29-44, 46, and 47 of 15/734,462.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same composition.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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/HONG YU/
Primary Examiner, Art Unit 1614