DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after November 17, 2023, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 11/17/2023 in the matter of Application N° 18/562,079. Said documents are entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after November 17, 2023, is being examined under the first inventor to file provisions of the AIA .
Thus, claims 1, 4-10, 12, 13, and 15-26, represent all claims currently under consideration.
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, 4-10, 12, 13, and 15-26, are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (JPH05170627A), Hines et al. (WO2017106284A1) and Bovaere et al. (FR3085592A1).
Regarding claims 1, 8, and 18, Matsumoto et al. teach a hair growth and hair-growth material with superior hair growth and health growth effects and high safety. It concerns a revolutionary hair-growth and hair growth material (See paragraph 0001). A hair-growth effect was observed in the hair tonic that contained prickly pear extract (See paragraph 0014, Example 1).
Regarding claim 10, Hines et al. teach by topically applying a composition containing an effective amount of Opuntia ficus-indica tuna (Prickly pear fruit), and Opuntia ficus-indica nopales (Prickly pear paddles), or both, or extracts thereof, to skin that requires it, you can effectively reduce the production of vascular endothelial growth factor (VEGF) and tumor necrosis factor alpha in skin cells (See paragraph 0012 and abstract). In certain cases, the extractant may consist of either alcohol or water, or a combination of the two (aqueous alcoholic mixture) (See Paragraph 0039).
Regarding claims 5, and 15, Hines et al. teach keratin-containing layers disposed as the outermost protective covering of mammals and includes, but is not limited to hair (See paragraph 0024).
However, Hines et al. does not disclose the prickly pear extract used in cosmetics is an extract of the stems of prickly pears. Nor do they disclose treating keratin fibers.
Regarding claim 12, Matsumoto et al. teach a hair growth and hair growth substance that consists of an extract made from prickly pear cactus that contains water and organic solvent that dissolves in water. Based on the overall amount of hair growth and hair-growth material in terms of extract, the extract corresponds to hair-growth and hair-growth material that is contained in amounts ranging from 0.0001 to 10% by weight (See paragraph 0004).
Regarding claims 4, and 13, Matsumoto et al. teach UV protectors and properly chosen and manufactured medicinal ingredients are additional raw material components applied to the hair growth and hair growth composition (See paragraph 0004).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the instant effective filing date to Incorporate the teachings of Hines et al., which disclose applying prickly pear fruit and prickly pear paddles, or extracts thereof, into the teachings of Matsumoto et al., which disclose the preparation of prickly pear by submerging prickly pear cactus stems (e.g., 00 grams) in 1 liter of 70% ethanol to assess quality. One of ordinary skill in the art would have been motivated to combine these references because they are directed to the same plant source (Prickly pear cactus) and share common objectives (obtaining and using extracts with biological effects on skin), and such a combination would have represented nothing more than the predictable use of known methods for preparing and applying prickly pear extracts. Accordingly, there would have been a reasonable expectation of success in modifying Matsumoto et al. in view of Hines et al. to arrive at the claimed invention, consistent with the reasoning of MPEP2141.01(a).
However, Matsumoto et al. do not teach wherein keratin fibers are dull, fine, colored-treated, and rough.
Regarding claims 6, 7, 16, 17, 19, 20, 21, 22, 23, 24, 25, and 26, Bovaere et al. teach the cationic conditioning agent made from guar gum that is part of the composition in accordance with the invention will adhere specifically to the damaged areas because of its positive charge. The long chains of galactomannans will also help to detangle, lessen static electricity, and provide softness (See paragraph 0079). It will reduce the chance of having thick, dull hair since it chooses where to attach (See paragraph 0080). The “control” composition, as defined by the invention, was tested on a variety of natural hair types, including curly, dry, and fine (See paragraph 0187). A type of fine, flexible, dyed colored hair was used to evaluate the composition in accordance with the invention’s “control” (See paragraph 0182).
It would have been obvious to one of ordinary skill in the art prior to the instant effective filing date to modify the teachings of Bovaere et al., which disclose keratin fibers that are dyed, dull, and fine, by incorporating the hair growth extract of Matsumoto et al., which teaches prickly pear cactus extract containing water and a water-soluble organic solvent because one of ordinary skill in the art would expect that the hair growth agent of Matsumoto et al. would have a similar effect.
Response to Arguments
Applicant's arguments filed December 23, 2025 have been fully considered but they are not persuasive.
Applicant’s arguments regarding anticipation under 35 U.S.C. 102 have been considered and are persuasive, that rejection is hereby withdrawn.
With respect to amended claim 1, the Claim recites a cosmetic method for tightening the scales of keratin fibers comprising topically applying a prickly pear extract, wherein the extract is an aqueous or hydro-glycerine extract of prickly pear stems.
Matsumoto et al. disclose compositions comprising prickly pear extract and teach that such compositions exhibit hair growth and hair health effects when applied topically. Matsumoto et al. further disclose preparation of prickly pear stem extracts by submerging prickly pear cactus stems (Opuntia ficus-indica) in ethanol to obtain an extract. Thus, Matsumoto et al. teach the use of prickly pear stem extracts in topical applications to keratin containing substrates such as hair.
Hines et al. disclose topical compositions comprising extracts of Opuntia ficus-indica (Prickly pear), including extracts derived from fruit (tuna)and paddles (nopales), for application to skin. Hines et al. further teach that the extractant may be water, alcohol, or mixtures thereof, and specifically disclose aqueous extracts. Hines et al. also teach that keratin-containing tissues include hair, thereby encompassing application to keratin fibers.
Applicant argues that neither Matsumoto et al. nor Hines et al. disclose an aqueous extract of prickly pear stems. However, Hines et al. explicitly teach that extraction may be performed using water, alcohol, or combinations thereof, thereby suggesting aqueous extraction techniques. Matsumoto et al. disclose extraction from prickly pear stems, albeit using ethanol. The substitution of one known solvent (water or hydro-glycerine) for another (ethanol) represents a routine optimization of extraction conditions, which would have been within the ordinary skill in the art.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the extraction method of Matsumoto et al. by employing the aqueous or hydro-glycerine extraction techniques taught by Hines et al. thereby arriving at an extract of prickly pear stems as recited in the claim. One of ordinary skill in the art would have been motivated to combine these teachings because both references are directed to the same plant source (Opuntia ficus-indica) and to topical applications of extracts having biological activity on skin and keratin-containing tissues. Such a combination would have amounted to no more than the predictable use of known extraction methods to obtain a known plant extract for its known cosmetic benefits.
Accordingly, there would have been a reasonable expectation of success in combining the teachings of Matsumoto et al. and Hines et al. to arrive at the claimed invention. The rationale for combination is consistent with MPEP 2141.01(a).
Applicant’s arguments regarding the absence of a specific disclosure of aqueous stem extracts are not persuasive, as the claimed subject matter differs only by the selection of a known extraction solvent, which constitutes an obvious variation.
Accordingly, the rejection of claims 1, 4-10, 12, 13, and 15-26 under 35 U.S.C. 103 is maintained and made final.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615