DETAILED ACTION
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 .
Claim Status
Claims 1-9 were pending in the present application. By virtue of a Preliminary Amendment, filed by Applicant on 28 May 2024, claims 1-9 were amended and claims 10-16 were added. Therefore, claims 1-16 are currently under examination.
Information Disclosure Statement (IDS)
The IDSs (2) filed on 28 May 2024 and 12 January 2026 have been considered by the examiner. Signed copies are enclosed.
Applicant is reminded of their duty to disclose to the Office all information known to the
person to be material to patentability as defined in 37 CFR 1.56. As stated therein, “[e]ach
individual associated with the filing and prosecution of a patent application has a duty of candor
and good faith in dealing with the Office, which includes a duty to disclose to the Office all
information known to that individual to be material to patentability as defined in this section.”
Claim Objections
Claim 12 is objected to because of the following informalities as recited in the claim –
“…and n represents a number of from 2 to 6.” The limitation “of from” is assumed to be a typographical error. Appropriate correction is required.
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 4, 10-11, and 13-16 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.
Regarding instant claim 4 –
The phrase “leave-off formulation” in claim 4 is indefinite as its meaning is not well-known or widely used in the art and the specification does not clearly redefine the phrase. The specification provides examples of a leave-off formulation ([0012]) but does not redefine the phrase. It is assumed, for purposes of claim interpretation, that based of the examples provided by Applicant in the specification, that “leave-off formulation” is synonymous with “rinse-out formulation” which is terminology that is widely used and accepted in the art.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
Regarding instant claims 10 and 11 –
Use of the terms ‘the 2)’ and ‘the 3)’ to establish antecedent basis renders these claims indefinite because one of ordinary skill would not grasp the metes and bounds of the claimed operation. A more suitable format, for example, could be written as: “The method of claim 2, wherein the scrunch operation is one or more operations selected from the group consisting of: 2) twisting the hair and 3) placing the hair in a palm of a hand and then lifting up the hair in such a way as to grasp up the hair followed by releasing the hair.
Regarding instant claims 13, 14, and 15 –
Claims 13, 14, and 15 each depends from claim 1. Claim 1 is drawn to a method whereby the hair treatment composition comprises a compound selected from the group consisting of a polyalkylene glycol ether and an alkylene glycol (emphasis added). Claims 13, which depends from claim 1, recites “the polyalkylene glycol ether is one or more selected from the group…” Similarly, claim 14 recites “the alkylene glycol is one or more selected from the group…” And finally, claim 15 recites “the compound is one or more selected from the group…” Claim 1 indicates, through the use of specific transitional phrases, that the compound is singular and selected from a singular polyalkylene glycol ether or a singular alkylene glycol. However, claims 13, 14, and 15 each allow for plural polyalkylene glycol ethers, plural alkylene glycols, and plural compounds. The specification provides no specific guidance on how to interpret the meaning of these claims and therefore, under the broadest reasonable interpretation, claim 1 is not limited to a single compound, polyalkylene glycol ether, or an alkylene glycol. Further clarification and appropriate correction are required.
Regarding instant claim 16 –
Claim 16 is rejected as indefinite for the following reasons: claim 16, which depends from claim 1, recites the method of claim 1 wherein the hair treatment composition comprises only an alkylene glycol. Claim 1 uses the transitional phrase “comprising” when describing the components of the hair treatment composition indicating a non-exhaustive list. A compound that is part of the hair treatment composition is limited to only a polyalkylene glycol ether or an alkylene glycol through use of the transitional phrase “consisting of.” It is unclear in claim 16 whether: 1) the hair treatment composition is comprised of only alkylene glycol and no other component; or 2) a compound within the hair treatment composition is comprised of alkylene glycol instead of polyalkylene glycol ether. Under the broadest reasonable interpretation of the claim, claim 16 is read on the latter interpretation where a compound within the hair treatment composition is alkylene glycol instead of polyalkylene glycol ether. This interpretation is aligned with applicant’s disclosure as the working examples of hair treatment formulations comprise water with the alkylene glycol compound (see [0090], Examples 1-10 and Table 1).
Claim Rejections - 35 USC § 102
(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.
Claims 1-2, 4, and 7-9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lee (cited in Applicant’s 12 January 2026 IDS as: US PGPub No. 2020/0206111 A1; published: 02 July 2020).
Lee discloses hair care and conditioning compositions and methods for conditioning, managing, and/or styling hair using these compositions (abstract).
Lee discloses several working examples applying compositions containing an alkylene glycol. Example 9 anticipates the following claims:
Regarding instant claim 1, Lee discloses a consumer testing study where women with a variety of hair types, including curly and wavy hair, were instructed to shampoo their hair and, instead of using their regular conditioner, participants were instructed to use composition Y (Example 9 at [0192]). Composition Y is comprised of propylene glycol, an alkylene glycol, at 73 wt% ([0192]). After shampooing and while the hair was wet/damp, participants applied composition Y in an amount sufficient to saturate the hair ([0193]). After thoroughly massaging composition Y into the hair, the hair was rinsed with water and styled ([0193]). Thus, Lee discloses a method for treating hair which comprises a composition containing an alkylene glycol, where participants, some of whom have wavy or curly hair, were instructed to apply this composition to wet/damp hair by massaging said composition into the hair. Of note: the specification indicates the mass ratio of water to hair is 1 when the wet hair, after washing, naturally drains (see specification, [0042]). Therefore, Lee’s disclosure of wet/damp hair after washing would indicate a water to hair ratio of 1 or less as defined by the specification.
Regarding instant claim 2, Lee discloses the participants thoroughly massaged composition Y into their hair ([0193]).
Regarding instant claim 4, Lee discloses the participants rinsed their hair after treatment with composition Y ([0193]).
Regarding instant claim 7, Lee discloses the participants first shampoo their hair and the hair is in a wet/damp state prior to applying composition Y ([0193]).
Regarding instant claim 8 and as discussed above, Lee discloses the massaging of composition Y occurs at a time after shampooing the hair and prior to conditioning, where the hair is still wet/damp ([0193]). There is no active step of drying the hair, indicating the ratio of water to hair is 1 or less as defined by the specification.
Regarding instant claim 9, Lee discloses a hair treatment composition comprising an alkylene glycol ([0193]). Thus, since Lee discloses an identical compound as what is currently claimed, any inherent properties or characteristics need not be explicitly stated or even recognized in the prior art disclosure. See MPEP 2112(I),(II), and (III).
For the reasons stated above, Lee anticipates that which is currently claimed in instant claims 1-2, 4, and 7-9.
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.
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 1-3, 6-8, 12-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Niwano (WO2020/230624 A1; published: 19 November 2020; machine translation relied upon).
Of note: Niwano shares the same applicant/inventor as the current application. However, Niwano was published more than 1 year prior to the effective filing date of the current application.
Niwano discloses a hair treatment method for hair that is permanently treated to curl which restores the appearance of the curl, reduces the entanglement, and improves the handleability of the curl ([0005]). Niwano further discloses a multi-step treatment for curly hair, the method of which involves a step of applying a first hair treatment agent to the hair and rinsing the hair (step A-1); applying a second hair treatment agent to the hair (step B); and applying a third hair treatment to the hair (step C) ([0108]).
Regarding instant claims 1, 2, 7, 8, 13, and 15, Niwano discloses an embodiment whereby the following first steps are performed:
Applying a first hair treatment agent to the hair, washing the hair using shampoo, and rinsing the hair with water;
Removing moisture from the hair by towel drying;
Applying a second hair treatment agent to the hair comprising component G, which is selected from: diethylene glycol monobutyl ether and diethylene glycol monoethyl ether among other organic solvents represented by the formula R2 – (OCH2CH2)q – R3 ([0097]-[0099]). Component G of the second hair treatment improves the spiral rate, uniformity, and difficulty of entanglement of the curl ([0100]).
In order to apply the second hair treatment agent, a method involving rubbing (or massaging) the composition into the hair is used ([0125]).
As previously discussed, the specification indicates the mass ratio of water to hair is 1 when the wet hair, after washing, naturally drains and the mass ratio is 0.3-0.7 when towel dried (see specification, [0042]). Therefore, Niwano’s disclosure of wet/damp hair after washing would indicate a water to hair ratio of 0.7 or less as defined by the specification.
Regarding instant claim 3, Niwano discloses that a combination of rubbing the composition into the hair then brushing or combing the hair may be used ([0125]).
Regarding instant claim 6, Niwano discloses that the second hair treatment may be rinsed from the hair prior to the next step ([0142]).
Regarding instant claim 12, Niwano discloses diethylene glycol monobutyl ether and diethylene glycol monoethyl ether are present in the second hair treatment agent. These compounds both meet the limitations of applicant’s claimed Formula 1 (see also specification, [0016]-[0019]).
The difference between the applied reference and the claimed invention in instant claims 1-3, 6-8, 12-13, and 15 is that the applied reference may not teach the instantly claimed composition with particularity so as to amount to anticipation. See MPEP “[t]he identical invention must be shown in as complete detail as is contained in the ... claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Instant claims 1-3, 6-8, 12-13, and 15 require the skilled artisan to choose from the disclosed components at a range or amount that falls within or close to the disclosed range or amount for use in the claimed method. However, this is not so out of the grasp of a skilled artisan because Niwano discloses the purpose of the components (e.g., polyalkylene glycol ether improves the spiral rate, uniformity, and difficulty of entanglement of the curl) and their anticipated outcome (e.g., restores the appearance of the curl, reduces the entanglement, and improves the handleability of the curl).
The applied reference Niwano discloses the components of the claimed composition with sufficient guidance, particularity, and with a reasonable expectation of success for the skilled artisan, that the invention would be prima facie obvious to one of ordinary skill in the art. While a full working example of each embodiment that flows from the disclosures of Niwano is not detailed with specificity, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to pick and choose from the disclosed components at the disclosed ranges or amounts to arrive at the currently claimed invention. This is obvious because Niwano discloses all the claimed components of a hair treatment composition for use in a method to treat wavy hair and suggests their combination. Therefore, instant claims 1-3, 6-8, 12-13, and 15 are obvious over Niwano.
Claims 1-2, 4-5, 7-9 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (cited above in previous rejection).
As discussed above, Lee provides working examples detailing the application of a composition containing alkylene glycol to curly or wavy hair by massaging the composition into the hair following shampooing and while the hair is still wet/damp, which anticipate that which is currently claimed in instant claims 1-2, 4, and 7-9. Lee discloses further possible embodiments of the hair treatment composition which make obvious the instantly claimed invention as follows:
Regarding instant claim 5, Lee discloses the hair treatment compositions can be applied immediately after shampooing and conditioning the hair as a leave-in treatment ([0014]).
Regarding instant claims 14 and 15, Lee discloses the hair treatment compositions can optionally include 1,3-propanediol ([0113]).
Regarding instant claim 16, Lee further discloses the optional 1,3-propanediol is preferably included in the hair treatment composition in a range of 1 to 20 wt% ([0113]). Lee further exemplifies this in a working example where butylene glycol (1,3-butanediol) is included in the hair treatment composition at 1.1 wt% ([0189]).
Regarding the aforementioned claims 5 and 14-16, Lee discloses the currently claimed components of the hair treatment composition and particularly with respect to claim 16, Lee discloses the alkylene glycol in ranges or amounts that overlap or are merely close to the claimed ranges or amounts. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). Therefore, the claimed range of alkylene glycol concentration in the hair treatment composition, as suggested by Lee, yield ranges that are embraced by, overlap with, or are close to the ranges instantly claimed, thereby rendering the rejected claim obvious.
The difference between the applied reference and the claimed invention in instant claims 5 and 14-16 is that the applied reference may not teach the instantly claimed composition with particularity so as to amount to anticipation. See MPEP “[t]he identical invention must be shown in as complete detail as is contained in the ... claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). While Lee anticipates instant claims 1-2, 4, and 7-9, instant claims 5 and 14-16 require the skilled artisan to choose from the disclosed components at a range or amount that falls within or close to the disclosed range or amount for use in the claimed method anticipated by Lee.
The applied reference Lee discloses the components of the claimed composition with sufficient guidance, particularity, and with a reasonable expectation of success for the skilled artisan, that the invention would be prima facie obvious to one of ordinary skill in the art. While a full working example of each embodiment that flows from the disclosures of Lee is not detailed with specificity, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to pick and choose from the disclosed components at the disclosed ranges or amounts to arrive at the currently claimed invention. This is obvious because Lee discloses all the claimed components of a hair treatment composition for use in a method to treat wavy hair and suggests their combination. Therefore, instant claims 1-2, 4-5, 7-9, and 14-16 are obvious over Lee.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (previously cited) as applied to claims 1-2, 4-5, 7-9 and 14-16 above, and further in view of Smith (US PGPub No. 2012/0145175 A1; published 14 June 2012).
Lee renders obvious the limitations of instant claims 1-2, 4-5, 7-9 and 14-16 where a hair treatment agent is applied and massaged into the hair during a scrunch operation. Other methods of scrunch operations – twisting the hair and scrunching the hair – are not explicitly recited as required by instant claims 11 and 12.
Regarding instant claims 11 and 12, Smith discloses a natural hair transformation agent useful in transforming hair texture from kinky to curly (abstract). Smith further discloses that after applying the product to hair, the use should scrunch the hair by gathering the hair tips in the palm of hands, move the hand up to grab the roots, close, and open fist ([0024]). Smith discloses this step will facilitate the forming of curls ([0024]). Finally, Smith discloses the product is also used followed by hair twisting ([0028]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the scrunch operation method in Lee with the scrunch and twist methods disclosed by Smith. One of ordinary skill would be motivated to do so because Smith discloses scrunching and twisting hair following product application facilitates the formation of curls. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. Therefore, instant claims 11 and 12 are obvious over Lee in view of Smith.
Conclusion
Claims 1-16 are rejected. No claim is allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julia A Rossi whose telephone number is (571)272-0138. The examiner can normally be reached M-F 8:30-5:00.
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/JULIA A ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615