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 1-16 were previously pending.
A non-final rejection office action was mailed 02 March 2026.
In response to that 02 March 2026 office action, Applicant filed an Amendment/Request for Reconsideration, received 02 July 2026, whereby Applicant amended claims 1, 4, 10, 11, and 13-16 and cancelled claims 9 and 12.
Therefore, claims 1-8, 10-11, and 13-16 are now pending and currently under examination.
Priority
Applicant has claimed the following priority:
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Information Disclosure Statement (IDS)
The IDS (1) filed on 31 July 2026 has been considered by the examiner. A signed copy is enclosed.
Withdrawn Claim Objections/Rejections
I. Claim 12 was previously objected to. Applicant has cancelled claim 12 and therefore the previously held claim objection is now moot and hereby withdrawn.
II. The previously held rejection of claims 4, 10-11, and 13-16 under 35 USC 112(b) is hereby withdrawn in view of Applicant’s amendments.
III. The previously held rejection of claims 1-2, 4, and 7-9 under 35 USC 102(a)(1)/102(a)(2) over Lee (US PGPub No. 2020/0206111 A1) is hereby withdrawn because amended claim 1 now requires a polyalkylene glycol ether according to Formula (1) and a total mass of the polyalkylene glycol ether and alkylene glycol of 4 mass% to 10 mass%, limitations not disclosed by Lee as previously applied.
IV. All previously held rejections over now cancelled claims 9 and 12 are moot and hereby withdrawn.
V. All previously held rejections of the claims under 35 USC 103 are hereby withdrawn because amended claim 1 now requires a polyalkylene glycol ether according to Formula (1) and a total mass of the polyalkylene glycol ether and alkylene glycol of 4 mass% to 10 mass%. The limitation of 4 mass% to 10 mass% was not recited in the previous claim set, but supported by Applicant’s disclosure.
The claims nonetheless remain unpatentable for the reasons set forth below.
New Claim Rejections
Applicant’s amendment to claim 1 has necessitated the following new claim rejections.
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.
1. Claims 1-4, 6-8, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Niwano (cited in previous office action as: 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]).
Applicant’s disclosure 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.
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]). With respect to the concentration, Niwano teaches the diethylene glycol monobutyl ether and diethylene glycol monoethyl ether are present in the second hair treatment agent at a concentration of 5% by mass or more ([0058]).
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 claims 4 and 6, Niwano discloses that the second hair treatment may be rinsed from the hair prior to the next step ([0142]).
The difference between the applied reference and the claimed invention in instant claims 1-4, 6-8, 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 1-4, 6-8, 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 1-4, 6-8, 13, and 15 are obvious over Niwano.
Response to Applicant’s Argument
Applicant’s arguments have been considered but are not persuasive for the reasons set forth below.
Applicant argues that “Niwano specifically disparages the claimed range” (Remarks, p. 8) because Niwano states that the amount of component (G) is preferably 3 mass% or less. This argument is not persuasive because the cited passage concerns component (G) in Niwano’s third hair treatment agent, whereas the rejection relies on Niwano’s disclosure of component (G) in the second hair treatment agent.
For the second hair treatment agent, Niwano teaches the component (G) at range of 5 mass% to 35 mass%, including preferred lower limits of 5, 7.5, and 10 mass% ([0058]). Niwano therefore does not teach away, discredit, or otherwise discourage the overlapping 5-10 mass% portion of the presently claimed range. Rather, Niwano expressly identifies concentrations falling within the claimed range as suitable for the second hair treatment agent.
Therefore, Applicant’s teaching away argument does not overcome the rejection.
Applicant further argues the claimed 4 to 10 mass% produces unexpected results based principally on the results reported for Examples 2-6 in the Specification. This evidence has been considered, but is not sufficient to overcome the prima facie case of obviousness.
First, the evidence does not establish unexpected results throughout the full scope of claim 1. Claim 1 encompasses a genus of polyalkylene glycol ethers in which R1 may be hydrogen or methyl, R2 may be an alkyl group having 1-5 carbon atoms, and n may range from 2-6. Claim 1 additionally permits the claimed 4-10 mass% total to include an alkylene glycol ether if present. The relied upon examples to demonstrate unexpected results only test a limited number of specific polyalkylene glycol ethers and do not demonstrate that the alleged improvement occurs across the full scope of the claimed chemical genus and across compositions containing the various permitted alkylene glycols.
Second, the principal comparison identifies improved results at 10 mass% relative to compositions containing 2 mass% and 20 mass%. A showing at or near a single endpoint of a considerably broader chemical genus is insufficient without additional supporting evidence or technical reasoning to establish unexpected results commensurate in scope with the claims.
Third, the alleged optimum concentration at 10 mass% falls within Niwano’s expressly disclosed concentration range for component (G) in the second hair treatment agent. Thus, Applicant has not established that the results would have been unexpected to a person of ordinary skill in view of Niwano’s express teaching that such concentrations of component (G) are useful in the second hair treatment composition.
Accordingly, the evidence of alleged unexpected results indicative of nonobviousness is insufficient to outweigh the evidence supporting the prima facie conclusion of obviousness.
Claims 5, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Niwano as applied to claims 1-4, 6-8, 13, and 15 above, and further in view of Lee (cited in previous office action as: US PGPub No. 2020/0206111 A1; published: 02 July 2020).
Niwano teaches the hair treatment method and composition as discussed above.
Regarding instant claim 5, Niwano does not expressly characterize the composition as a ‘leave-on formulation.’ However, this limitation is made obvious over Lee.
Lee teaches hair treatment compositions applied to wet or damp hair and expressly teaches such compositions may be used either as rinse-off products or leave-on products ([0014]). Lee expressly discloses the hair treatment compositions can be applied immediately after shampooing and conditioning the hair as a leave-on treatment ([0014]).
It would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to employ the hair treatment composition taught by Niwano in a leave-on treatment regimen where prolonged exposure of the treatment composition was desired because Lee teaches that leave-on treatment is a conventional alternative to rinsing a hair treatment composition and provides the predictable benefit of permitting the treatment composition to remain on the hair during styling.
Regarding instant claims 14 and 16, Niwano does not teach the particular alkylene glycol species of claim 14 in the concentration required by claim 16. However, this limitation is made obvious over Lee.
Niwano teaches the claimed polyalkylene glycol ether treatment method and teaches use of water as a solvent in its hair treatment compositions.
Lee teaches hair treatment compositions containing additional glycols, including ethylene glycol, butylene glycol, and 1,3-propanediol, and teaches that additional glycols may be present over ranges including 0.1 to 10 wt% based on the total composition ([0113] and [0189]). Lee further discloses the 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]).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to include one of Lee’s conventional humectant/solvent glycols in Niwano’s aqueous hair treatment composition because both references concern glycol-containing compositions applied to wet or damp hair and Lee specifically teaches additional glycols as suitable formulation ingredients in such hair treatment compositions. Selection of the glycol and its amount within Lee’s expressly disclosed range would have constituted routine formulation optimization.
The resulting composition would contain the polyalkylene glycol ether taught by Niwano, an alkylene glycol of the type recited in claim 14, and water, with the alkylene glycol in the range required by claim 16.
Accordingly claims 5, 14, and 16 are unpatentable over Niwano in view of Lee.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Niwano as applied to claims 1-4, 6-8, 13, and 15 above, and further in view of Smith (cited in previous office action as: US PGPub No. 2012/0145175 A1; published 14 June 2012).
Niwano teaches application of a hair treatment composition to wet or damp hair and manipulation of the treated hair, including by hand.
While Niwano does not expressly disclose the particular twisting and palm-lifting scrunching operations presently recited in claims 10 and 11, these limitations are made obvious in view of Smith.
Smith teaches shaping naturally textured or curly hair after application of a hair treatment composition by gathering or scrunching the hair in the palm of the hand and further teaches twisting the hair to facilitate curl formation.
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 employ Smith’s known scrunching and twisting techniques when manually shaping hair treated according to Niwano because Smith teaches those manipulations for the same purpose of forming or enhancing curls following the application of a hair treatment product. The substitution of one known manual curl-forming technique for another would have yielded no more than the predictable result of forming or defining curls.
Accordingly, claims 10 and 11 are obvious over Niwano in view of Smith.
Conclusion
Claims 1-8, 10-11, and 13-16 are rejected. No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Communication
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-Th 7:30-5:30 (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571)272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIA A. ROSSI/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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