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 .
Response to Amendment
Applicant’s response of 08/10/2026 has been received and entered into the application file. Claims 1-9, 11, and 13-22 are pending in this application. New claims 21-22 are added.
Applicant’s amendments to the claims have overcome 112(b) rejection previously set forth in the Non-Final Office Action mailed 05/06/2026.
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.
Claim Interpretation
Claim 1 recites a process for treating human hair comprising the following steps: providing an agent (a) which includes at least one amino-functionalized silicone polymer, at least one cosmetic oil and agent (b) which includes water and/or an alkylene glycol of the formula (AG). This alkylene glycol formula includes 10,000 different variations, as indicated by the integer x.
Claims 1-16 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Constanze et al. (WO 2021058241 A1, Published April 1, 2021), Ahn et al. (KR 20200036342 A) and Jang et al. (Safety Evaluation of Polyethylene Glycol (PEG) Compounds for Cosmetic Use, Toxicol. Res, 2015) further evidenced by Wos et al. (Viscosity Approximation of PDMS Using Weibull Function, materials, 2021)
Constanze discloses kit and method for dyeing keratinous material, in particular human hair, comprising: providing at least one amino-functionalized silicone polymer, water, fatty oil (Abstract). Constanze discloses that the composition comprises fatty acid triglycerides (cosmetic oil) or mixtures (pg 13, 2nd paragraph). The composition also includes an alkylene glycol of the formula (AG) such as ethylene glycol (pg 20). Constanze claims a method for treating human hair comprising the following steps 1) providing agent (a) and (b), pigment. Preparing the mixture by mixing (a), (b), and pigment and applying the mixture on the keratinous material, allowing the mixture to act upon the keratinous material, then rinsing the mixture with water (claim 1). The amino-functionalized silicone polymer comprises at least one secondary amino group (claim 1). Constanze discloses the structure of (Si-amino) wherein ALK1 and ALK2 independently of one another represent a linear or branched, divalent alkylene group (claim 1) (pg 1). Constanze discloses formula (Si-I) and (Si-ii) (pg 2). Constanze discloses that the amino-functionalized silicone polymers in a total amount of 5 to 100 wt% (claim 5). Constanze discloses the composition comprises paraffin oils (pg 13). Constanze discloses the structure of oligoalkylsiloxane of the formula (OAS-I, also known as dimethicone) (claim 8 of instant application) (see pg 9).
Constanze does not explicitly mention the oligoalkylsiloxane of the formula (OAS-II) (also known as hexamethylcyclotrisiloxane).
Ahn discloses a composition for hair care. The composition has excellent spreadability and hair absorption (Abstract). Ahn discloses that silicone oil is routinely used in hair products such as dimethicone and trisiloxane (pg 4, 8th paragraph). Ahn discloses that the first silicone oil and the second silicone oil are dimethicone and hexamethylcyclotrisiloxane (pg 14, last paragraph).
Above references do not teach specific g/mol MW of PEGs.
Jang discloses PEG are products of condensed ethylene oxide and water that can have various derivative and functions (Abstract). PEG-150 (Mw ~6,000 g/mol) is used in baby shampoos, mild hair shampoos, shower shampoos (pg 125, Table 1). PEGs are routinely used in cosmetic products and one of ordinary skill in the art would consider using PEG in a hair treating composition.
Constanze discloses a composition and a method for treating human hair comprising the same ingredients and steps as discussed above. Therefore, it would have been obvious to one of ordinary person in the art before the effective filing date of the claimed invention to have created a method or process of using a product such as a hair care or hair dye composition. This is taking some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Regarding claim 2, secondary amino is discussed above.
Regarding claim 3, the structure is discussed above.
Regarding claim 4, the structure is discussed above.
Regarding claims 5-6, wt% is taught above.
Regarding claim 7, cosmetic oil is discussed above.
Regarding claim 8, structures of OAS-I and OAS-II are discussed above.
Regarding claims 9-10, polydimethylsiloxane (PDMS) also known as dimethicone is widely used in hair products as discussed by Ahn above. As evidenced by Wos et al. (Viscosity Approximation of PDMS Using Weibull Function, materials, 2021), Wos discloses that PDMS has a liquid or semi-solid form for large values of n. On the other hand, taking into account the kinematic viscosity of PDMS, there are fluids with low (0.65–20 cSt), medium (50–100 cSt) and high (5000–250,000 cSt) viscosity (see page 2). One of ordinary skill in the art would routinely experiment with different viscosities of PDMS.
Regarding claims 11-13, Ahn discloses that the weight ratio of the first and second silicone oil may be 1:3 to 1:7 (pg 5). Additionally, one of ordinary skill in the art would routinely experiment with various weight ratios of ingredients within a hair composition.
Regarding claim 14, Constanze discloses that alkylene glycols can be present in an amount of 1 to 80% by weight (pg 10).
Regarding claim 15, pigment is taught by Constanze.
Regarding claim 16, Constanze claims a method that comprises mixing amino-functionalized silicone polymer, alkylene glycol, and a pigment agent (see pg 2, claim 10).
Regarding claim 18, Constanze discloses compounds of ethoxylated fatty alcohol (Formula AA-I) and particularly good results were obtained when this agent was included in the composition (pg 18).
Regarding claim 19, weight ratio is discussed above. Furthermore, one of ordinary skill in the art would routinely experiment with various weight ratios of ingredients within a hair dye composition.
Regarding claim 20, Constanze discloses a kit that comprises amino-functionalized silicone polymers, fat component, and pigment agent (pg 22).
Regarding claim 21, PEG with specific molecular weight is taught by Jang above.
Regarding claim 22, Constanze discloses that in order to increase the user comfort, all the necessary means are preferably made available to the user in the form of multi-component packaging unit (pg 22). Likewise, one of ordinary skill in the art would routinely provide separate packages as a multi-component unit for cosmetic products.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Constanze et al. (WO 2021058241 A1, Published April 1, 2021), Ahn et al. (KR 20200036342 A), and Jang et al. (Safety Evaluation of Polyethylene Glycol (PEG) Compounds for Cosmetic Use, Toxicol. Res, 2015) further evidenced by Wos et al. (Viscosity Approximation of PDMS Using Weibull Function, materials, 2021) as applied to claims 1-16 and 18-22 above, and further in view of Pereira et al. (WO 2003/032919 A2).
Pereira discloses esters of aromatic alkoxylated alcohols and fatty carboxylic acids that are especially suitable as additives for personal care and cosmetic products (Abstract). In accordance with one preferred aspect, the present invention addresses these needs by providing esters of aromatic alkoxylated alcohols and fatty carboxylic acids, 5 which are excellent additives for cosmetic and personal care products. For example, they may be used as emollients, solubilizers/diluents and/or thickeners (page 3, first paragraph). Pereira discloses alkoxylated fatty acid esters, PPG-6 phenoxyl palmitate
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(pg 17). Additionally, any and all variations of alkoxylated fatty acid esters would be considered by one of ordinary skill in the art for cosmetic compositions. Constanze teaches that the process can include adding alkoxylated fatty acid alkyl esters (pg 17).
Therefore, it would have been obvious to one of ordinary person in the art before the effective filing date of the claimed invention to have used an alkoxylated fatty acid esters in a cosmetic composition for various purposes as taught by Pereira. This is taking some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Response to Arguments
Applicant’s arguments filed 08/10/2026 have been fully considered and a new reference is incorporated to teach MW of PEGs.
On pages 11-12 of remarks, applicant argues that references do not teach or suggest the preparation method “introducing the first agent into an applicator bottle prefilled with the second agent, the applicator bottle having a sealed applicator tip”. Applicant explains that difficulties can arise when a separately provided amino-silicone concentrate is added to a carrier formulation, including incomplete transfer of the concentrate and settlement of the amino-silicone in the applicator tip during shaking. On pages 60-61, the instant specification is as provided below.
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AWM 1 vs AWM 2 comparison is provided. The only difference between the two is in aE agent, hexamethyldisiloxane is included. The examiner does not understand how this experiment is commensurate in scope with claim 1. Claim 1 does not require hexamethyldisiloxane to possibly impart the characteristic of homogeneous mixture. Even still, the examiner cannot determine if this homogeneous mixture is only possible for the tested amino-functionalized silicon polymer – Dow Corning 2-8566. Or if it is only possible with alkylene glycol, PEG MW 6000 g/mol with 400 g/mol within the formulation. The argument and experimental data provided are not commensurate and scope with claim 1 and the unexpected improvement cannot be determined. As discussed above, Constanze discloses amino-functionalized silicone polymer with alkylene glycol of the formula (AG). Per MPEP 2145 (II), Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.
Therefore, claims remain rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN SEUNGJAI KWON whose telephone number is (571)272-7737. The examiner can normally be reached Mon - Fri 8:00 - 5:00.
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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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/JOHN SEUNGJAI KWON/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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