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 .
DETAILED ACTION
This action is in response to papers filed April 13, 2026. Applicant’s reply to the restriction/election requirement of February 12, 2026 has been entered. Claims 1-10 have been amended. Claims 1-10 are pending in the application.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/JP2022/043778, filed November 28, 2022 under 35 U.S.C. 365(c), is hereby acknowledged.
Acknowledgment also is made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of Japanese Patent Application No. JP 2021-194582, filed in Japan on November 30, 2023, has been received as required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group III, claims 2, 7, and 8, is hereby acknowledged. Applicant’s elections of i) “component A1” (i.e. a silicone resin with a T unit and/or a Q unit) as the species of component A, ii) “component B2” (i.e. an aminopolyether-modified silicone) as the species of component B, and iii) “an anionic surfactant” as the species of component D are all also acknowledged. The Examiner has determined that claims 7 and 8 read on the elected subject matter.
The traversal is on the following grounds:
1. “no adequate reasons and/or examples have been provided to support a conclusion of patentable distinctness between any of Groups I – III”; that “the inventions of Groups I and II also share the technical feature of applying to the keratin fiber for a head decoration product”; and “no explanation has been provided as to why one skilled in the art would have thought of combining the teachings of U.S. Patent Application Pub. No. 2009/0074702 with those of JP 2021-123535A”.
2. “no attempt has been made at all to establish the patentable distinctness of the disclosed species”.
These grounds of traversal are not found persuasive for the following reasons:
1. It’s entirely unclear what “reasons” or “examples” Applicant thinks are lacking here. As noted in the restriction letter, the identified groups lack unity of invention a posteriori. The special technical feature common to all the groups, i.e. all of Groups I-III is what is addressed. There is no reason to address multiple special technical features that are not common to all of Groups I-III. The finding that the groups lack unity a posteriori is based on the written opinion of the ISA. Hence, in view of the cited art, a person skilled in the art could easily have conceived of providing a step for applying a second agent containing an oil to a keratin material and removing a film.
2. The identified species have mutually exclusive characteristics, and thus they are deemed patentably distinct and there is a search burden, as noted in the restriction letter. Applicant has not established or even attempted to argue that the identified species are not patentably distinct, such that e.g. a disclosure of e.g. component A1 would read on both component A1 and component A2 just the same, or e.g. a disclosure of component B1 would read on both component B1 and component B2.
Accordingly, claims 1-6, 9, and 10 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected subject matter, there being no allowable generic or linking claim. The restriction/election requirement is still deemed proper, maintained, and is therefore made FINAL.
Applicant timely traversed the restriction (election) requirement in the reply filed on April 13, 2026. Claims 7 and 8 are under examination.
Claim Rejections - 35 USC § 112(b)
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 7 and 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.
Claims 7 and 8, which include the limitations of claim 1, thus continually make reference to “a head decoration product”. One of ordinary skill in the art cannot make heads or tails out of how this phrase is intended to limit the claimed method, if at all. Further, in view of phrases such as “for a head decoration product to form a film” and “for a head decoration product on which the film has been formed to remove the film”, one of ordinary skill in the art cannot definitively ascertain whether the film is formed on the keratin substance/fiber, or rather whether the film is formed on this cryptic “head decoration product”. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
***For examination at this time, the claims are being interpreted as the application of the first composition to keratin substance/fiber (i.e. skin or hair) forms a film on the skin or hair, and the application of the second composition works to remove the film from the skin or hair. The phrase “a head decoration product” is thus effectively being treated as extraneous with no real meaning or substance in defining the claimed subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 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 (i.e., changing from AIA to pre-AIA ) 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.
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 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Correia et al. (U.S. Patent Application Pub. No. 2021/0330572), in view of Shimma (Japanese Patent Application Pub. No. JP 2017-109964A).
Applicant Claims
Applicant’s elected subject matter is directed to a method for treating a keratin substance or fiber comprising i) applying to a keratin substance or fiber a first composition comprising a silicone resin, an aminopolyether-modified silicone, and a colorant to thus form a film; and ii) applying to a keratin substance or fiber a second composition comprising an “oil agent” and an anionic surfactant to remove the film; wherein the said silicone resin comprises a T unit and/or a Q unit.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Correia et al. disclose a method for treating keratin fibers comprising i) applying to keratin fibers a composition comprising e.g. a silicone resin, an aminosilicone, and a pigment/colorant to thus form a film; and ii) washing the keratin fibers by applying thereto e.g. a shampoo composition; wherein the silicone resin can be a silicone resin comprising a T unit and/or a Q unit, such as e.g. a polysilsesquioxane, a polymethylsilsesquioxane, SR1000, and KF-7312J; and wherein the aminosilicone can be an aminopolyether-modified silicone, such as e.g. SILSOFT A+ (abstract; paragraphs 0001, 0002, 0020, 0021, 0070, 0150, 0220, 0221, 0244-0247, 0265, 0270, 0271, 0344-0347, 0386-0395, 0401, 0403).
Shimma discloses a cosmetic shampoo/cleaning composition for application to keratin substance/fibers comprising an ester oil and an anionic surfactant.
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Correia et al. do not explicitly disclose that the second composition applied to keratin substance/fibers contains an oil agent and an anionic surfactant. This deficiency is cured by the teachings of Shimma.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Correia et al. and Shimma, outlined supra, to devise Applicant’s claimed method.
Correia et al. disclose a method for treating keratin fibers comprising i) applying to keratin fibers a composition comprising e.g. a silicone resin, an aminosilicone, and a pigment/colorant to thus form a film; and then ii) washing the keratin fibers by applying thereto e.g. a shampoo composition. Since Shimma discloses that a suitable cosmetic shampoo/cleaning composition for application to keratin substance/fibers comprises an ester oil and an anionic surfactant; and further has the advantages that the shampoo/cleaning composition has high foaming effect, excellent detergency and emollient effect, and improves the bulkiness of the skin after washing; one of ordinary skill in the art would thus be motivated to employ the Shimma shampoo/cleaning composition in the Correia et al. method, with the reasonable expectation that the resulting method will successfully wash the keratin fibers with a high foaming effect and excellent detergency, and further benefit the keratin fibers by providing an emollient effect and improving the bulkiness of the skin.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
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 at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
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