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 .
Priority
The instant application was filed 12 June 2024 and is the national stage entry of PCT/EP2022/084800 filed 07 December 2022. The Applicant claims priority to foreign application EP21214805.0 filed 15 December 2021. An English copy of the foreign document has been provided. Therefore, the effective filing date of the instant application is 15 December 2021.
Examiner’s Note
The Applicant's amendments and arguments filed 14 August 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections
not reiterated from previous office actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 14 August 2026, it is noted that claims 1 and 35 have been amended, claim 21 has been canceled, and claim 36 has been newly added. Support for the amendment(s) and/or new claim(s) can be found on pg. 3 of the specification. No new matter has been added.
Claim Rejections - 35 USC § 112
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.
Claim 20 recites the limitation "the ortho diphenol compounds.” There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-20, 22-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (WO 2016/100885 A1) in view of Niemagazine.com and Liu et al. (CN 107823078 A), as evidenced by healthshots.com.
Regarding claim 16, Shin teaches a hair cosmetic composition and method of using the hair composition (abs; entire teaching). The composition may comprise caffeic acid (para. 222) and water (para. 35), which is an ortho diphenol compound substituted at the para-position with an alkene with a Carbon length of 2-4 and substituted with a COOH group. In some embodiments, the pH of the formulation may be 8.58 or 8.73 (Formulas C and D; Examples). The hair may be treated with heat at a temperature ranging from 25-250°C before, during, or after the application of the hair cosmetic composition (claim 46). Shin teaches that the hair treatment may be left on for 1-60 mins (para. 254), where it is obvious that if heat is applied while the treatment remains for 1-60 mins, the period of time of heating the hair may also fall within this range of 1-60 mins, especially if the composition is applied to wet hair (para. 251). The treatment may be rinsed from the hair (para. 251). The composition is used for moisturizing, conditioning, and stylizing (para. 2), which is interpreted as the composition not having a dyeing or oxidizing effect and free of peroxides and persalts.
Regarding claims 17 and 31, Shin teaches some examples where the pH of the formulation may be 8.58 or 8.73 (Formulas C and D; Examples).
Regarding claims 18 and 19, the amount of caffeic acid may be 0.001-50% when used as an auxiliary agent (para. 227).
Regarding claim 20, the composition may comprise caffeic acid (para. 222).
Regarding claims 22 and 23, the composition may comprise monoethanolamine or triethanolamine (para. 141).
Regarding claim 24, The hair may be treated with heat at a temperature ranging from 25-250°C before, during, or after the application of the hair cosmetic composition (claim 46).
Regarding claim 25, the hair may be dried using a hair dryer (para. 253).
Regarding claims 26-28, the composition is used for moisturizing, conditioning, and stylizing (para. 2), which is interpreted as the composition not having a dyeing or oxidizing effect and free of peroxides and persalts.
Regarding claims 29 and 30, reducing agents are optional ingredients (para. 226).
Regarding claim 32, the amount of monoethanolamine or triethanolamine may be 0-3% (para. 141).
Regarding claim 33, Shin teaches that the hair treatment may be left on for 1-60 mins (para. 254), where it is obvious that if heat is applied while the treatment remains for 1-60 mins, the period of time of heating the hair may also fall within this range of 1-60 mins, especially if the composition is applied to wet hair (para. 251).
Regarding claim 34, Shin teaches using devices to heat the hair (para. 253), as well as suitable applicator devices (para. 256), which is interpreted as a kit.
Regarding claim 35, Shin teaches some embodiments wherein the pH of the formulation may be 8.58 or 8.73 (Formulas C and D; Examples). The composition may comprise monoethanolamine or triethanolamine (para. 141). The composition is used for moisturizing, conditioning, and stylizing (para. 2), which is interpreted as the composition not having a dyeing or oxidizing effect and free of peroxides and persalts. The hair may be treated with heat at a temperature ranging from 25-250°C before, during, or after the application of the hair cosmetic composition (claim 46). Shin teaches that the hair treatment may be left on for 1-60 mins (para. 254), where it is obvious that if heat is applied while the treatment remains for 1-60 mins, the period of time of heating the hair may also fall within this range of 1-60 mins, especially if the composition is applied to wet hair (para. 251). The treatment may be rinsed from the hair (para. 251). Regarding the amended limitations, the composition used for controlling frizziness (abs) and providing smoothness or softness to the hair (para. 16) is interpreted as “reducing a combing force of hair.” Since the composition is applied to the untreated hair, the composition provides smoothness, softness, and controls frizziness to the treated hair, which is interpreted as the treated hair requiring less combing force than the untreated hair. The composition may also comprise olive oil (para. 214), which naturally contains hydroxytyrosol and provides nourishing benefits to hair (evidenced by healthshots.com, pg. 5).
Regarding new claim 36, Shin teaches a hair cosmetic composition and method of using the hair composition (abs; entire teaching). In some embodiments, the pH of the formulation may be 8.58 or 8.73 (Formulas C and D; Examples). The hair may be treated with heat at a temperature ranging from 25-250°C before, during, or after the application of the hair cosmetic composition (claim 46). Shin teaches that the hair treatment may be left on for 1-60 mins (para. 254), where it is obvious that if heat is applied while the treatment remains for 1-60 mins, the period of time of heating the hair may also fall within this range of 1-60 mins, especially if the composition is applied to wet hair (para. 251). The treatment may be rinsed from the hair (para. 251). The composition is used for moisturizing, conditioning, and stylizing (para. 2), which is interpreted as the composition not having a dyeing or oxidizing effect and free of peroxides and persalts. The composition used for controlling frizziness (abs) and providing smoothness or softness to the hair (para. 16) is interpreted as “reducing a combing force of hair.”
Shin does not teach using dopamine or hydroxytyrosol in their composition in claims 1, 35, and 36.
Niemagazine.com teaches hydroxytyrosol prevents the oxidation of keratin protein and makes hair soft, shiny, and lustrous (pg. 3).
Liu teaches a hair composition (abs) comprising dopamine that can accelerate hair growth and make hair softer and easier to comb (Table 1).
Since Shin does not teach using dopamine or hydroxytyrosol in their composition in claims 35 and 36, one of ordinary skill in the art would have been led to use Niemagazine.com’s teaching of hydroxytyrosol to prevent oxidation and make hair soft, shiny, and lustrous. Since Shin’s composition is used for moisturizing, conditioning, or stylizing the hair (para. 2), a skilled artisan would have been easily motivated to improve Shin’s composition by incorporating hydroxytyrosol for the added benefits of making hair soft, shiny, and lustrous. Hydroxytyrosol is interpreted as an auxiliary agent, where Shin teaches auxiliary agents in an amount of 0.001-50% (para. 227).
Since Shin does not teach using dopamine in their composition in claim 1, one of ordinary skill in the art would have been led to use Liu’s teaching of dopamine to make hair softer and easier to comb. Since Shin’s composition is used for moisturizing, conditioning, or stylizing the hair (para. 2), a skilled artisan would have been easily motivated to improve Shin’s composition by incorporating dopamine for the added benefits of making hair softer and easier to comb.
Response to Arguments
Applicant's arguments filed 14 August 2026 have been fully considered but they are not persuasive.
The Applicant argues that the cited teachings do not teach or suggest an aqueous composition comprising dopamine, as recited in amended claim 16 (Remarks, pg. 6).
Applicant’s argument is not found persuasive. Since Shin does not teach using dopamine in their composition in claim 1, one of ordinary skill in the art would have been led to use Liu’s teaching of dopamine to make hair softer and easier to comb. Since Shin’s composition is used for moisturizing, conditioning, or stylizing the hair (para. 2), a skilled artisan would have been easily motivated to improve Shin’s composition by incorporating dopamine for the added benefits of making hair softer and easier to comb.
The Applicant argues that the cited teachings do not teach or suggest the amended limitations recited in claim 35 (Remarks, pg. 7).
Applicant’s argument is not found persuasive. Regarding claim 35, Shin teaches some embodiments wherein the pH of the formulation may be 8.58 or 8.73 (Formulas C and D; Examples). The composition may comprise monoethanolamine or triethanolamine (para. 141). The composition is used for moisturizing, conditioning, and stylizing (para. 2), which is interpreted as the composition not having a dyeing or oxidizing effect and free of peroxides and persalts. The hair may be treated with heat at a temperature ranging from 25-250°C before, during, or after the application of the hair cosmetic composition (claim 46). Shin teaches that the hair treatment may be left on for 1-60 mins (para. 254), where it is obvious that if heat is applied while the treatment remains for 1-60 mins, the period of time of heating the hair may also fall within this range of 1-60 mins, especially if the composition is applied to wet hair (para. 251). The treatment may be rinsed from the hair (para. 251). Regarding the amended limitations, the composition used for controlling frizziness (abs) and providing smoothness or softness to the hair (para. 16) is interpreted as “reducing a combing force of hair.” Since the composition is applied to the untreated hair, the composition provides smoothness, softness, and controls frizziness to the treated hair, which is interpreted as the treated hair requiring less combing force than the untreated hair. The composition may also comprise olive oil (para. 214), which naturally contains hydroxytyrosol and provides nourishing benefits to hair (evidenced by healthshots.com, pg. 5).
Since Shin does not teach using dopamine or hydroxytyrosol in their composition in claims 35 and 36, one of ordinary skill in the art would have been led to use Niemagazine.com’s teaching of hydroxytyrosol to prevent oxidation and make hair soft, shiny, and lustrous. Since Shin’s composition is used for moisturizing, conditioning, or stylizing the hair (para. 2), a skilled artisan would have been easily motivated to improve Shin’s composition by incorporating hydroxytyrosol for the added benefits of making hair soft, shiny, and lustrous. Hydroxytyrosol is interpreted as an auxiliary agent, where Shin teaches auxiliary agents in an amount of 0.001-50% (para. 227).
The Applicant argues that the cited teachings do not teach or suggest new claim 36 (Remarks, pgs. 7-8).
Applicant’s argument is not found persuasive. Regarding new claim 36, Shin teaches a hair cosmetic composition and method of using the hair composition (abs; entire teaching). In some embodiments, the pH of the formulation may be 8.58 or 8.73 (Formulas C and D; Examples). The hair may be treated with heat at a temperature ranging from 25-250°C before, during, or after the application of the hair cosmetic composition (claim 46). Shin teaches that the hair treatment may be left on for 1-60 mins (para. 254), where it is obvious that if heat is applied while the treatment remains for 1-60 mins, the period of time of heating the hair may also fall within this range of 1-60 mins, especially if the composition is applied to wet hair (para. 251). The treatment may be rinsed from the hair (para. 251). The composition is used for moisturizing, conditioning, and stylizing (para. 2), which is interpreted as the composition not having a dyeing or oxidizing effect and free of peroxides and persalts. The composition used for controlling frizziness (abs) and providing smoothness or softness to the hair (para. 16) is interpreted as “reducing a combing force of hair.”
Since Shin does not teach using dopamine or hydroxytyrosol in their composition in claims 35 and 36, one of ordinary skill in the art would have been led to use Niemagazine.com’s teaching of hydroxytyrosol to prevent oxidation and make hair soft, shiny, and lustrous. Since Shin’s composition is used for moisturizing, conditioning, or stylizing the hair (para. 2), a skilled artisan would have been easily motivated to improve Shin’s composition by incorporating hydroxytyrosol for the added benefits of making hair soft, shiny, and lustrous. Hydroxytyrosol is interpreted as an auxiliary agent, where Shin teaches auxiliary agents in an amount of 0.001-50% (para. 227).
Conclusion
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.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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