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 1-22 are pending and currently under examination.
Priority
Applicant’s claim for the following priority is acknowledged:
PNG
media_image1.png
95
628
media_image1.png
Greyscale
Information Disclosure Statement (IDS)
Applicant has not filed an IDS in this application.
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
Claims 9, 19, and 21 are objected to for the following informalities:
Claims 9 and 19 recite ‘AMP-Acrylatescopolymer.’ It is assumed this is a typographical error for AMP-Acrylates Copolymer. Appropriate correction is required.
Claim 21 recites “[t]he hair cosmetic composition of claim 11, where said…” It is assumed ‘where’ is a typographical error for ‘wherein.’ Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 11-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed. The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the application. These include “level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention.” See MPEP § 2163.02.
The written description requirement for a claimed genus may be satisfied through
sufficient description of a representative number of species by actual reduction to practice, disclosure of drawings, or by disclosure of relevant identifying characteristics, for example, structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the Applicants were in possession of the claimed genus.
Claim 1: unsupported genus of “a colorant”
Claim 1 recites a method of preparing a hair cosmetic composition comprising treating a colorant with phytic acid. Claim 1 is not limited to an iron-based colorant, an iron oxide, a metal oxide, an inorganic pigment, or another defined class of colorants.
The specification, however, describes the invention almost exclusively in terms of iron-based colorants, iron oxides, phytic acid treatment of an iron-based surface, and improved dispersion allegedly resulting from modification of the iron-based colorant surface ([00003]-[00005]). This alleged mechanism and benefits are expressly tied to iron-based colorants ([00006], [00013], and [00019]).
The disclosure does not describe representative species spanning the full claimed genus of colorant. In particular, the specification does not describe treatment of materially different colorant classes such as soluble organic dyes, organic pigments, mica-based pigments, polymeric colorants, and botanical or other natural colorants. Nor does the specification identify structural or chemical characteristics common to all colorants that would cause them to interact with the phytic acid in the manner attributed to iron oxide.
The disclosure of iron-based colorants and iron oxides does not, without more, reasonably convey possession of the much broader claimed genus encompassing all colorants. Species of colorants have materially different chemical structures, solubilities, and properties which would affect interaction with phytic acid.
Claims 11-21: unsupported “additional hydroxyl groups” limitation
The specification states that treatment with phytic acid forms a chelate and causes the surface of the iron-based colorant to have multiple hydrophilic hydroxyl groups ([00005]). The specification, however, does not provide descriptive support demonstrating possession of a colorant having the claimed surface characteristic. In particular, the specification does not disclose:
Whether the phytic acid is covalently bonded, coordinated, adsorbed, or merely mixed with the colorant;
A chemical structure depicting the allegedly modified surface;
A comparison between treated and untreated colorant surfaces;
Any FTIR, XPS, NMR, titration, elemental, or other surface characterization data;
An analytical method for determining whether additional hydroxyl groups were created;
Treatment conditions shown to produce the asserted surface change; or
A representative species demonstrating that the alleged surface medication occurs throughout the claimed scope.
The mere assertion that phytic acid treatment creates additional hydroxyl groups does not, by itself, convey possession of a colorant having the claimed structural or surface property. The disclosure does not distinguish between: phytic acid merely being present in the mixture with the colorant; phytic acid being adsorbed on the colorant; phytic acid coordinating to iron atoms; displacement of preexisting surface hydroxyl groups; and an actual net increase in hydroxyl groups on the colorant surface. Those possibilities are each chemically and structurally different. The specification does not identify which structure was allegedly produced or provide information permitting a skilled artisan to recognize that the inventor possessed the claimed surface-modified product.
Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method for isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601, 1606 (CAFC 1993) and Amgen Inc. V. Chugai Pharmaceutical Co. Ltd., 18 USPQ2d 1016. In Fiddes v. Baird, 30 USPQ2d 1481, 1483, claims directed to mammalian FGF's were found unpatentable due to lack of written description for the broad class. The specification provided only the bovine sequence. University of California v. Eli Lilly and Co., 43 USPQ2d 1398, 1404. 1405 held that to fulfill the written description requirement, a patent specification must describe an invention and does so in sufficient detail that one skilled in the art can clearly conclude that "the inventor invented the claimed invention.” Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572, 41USPQ2d 1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description must clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.”). Thus, an applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, not that which makes it obvious,” and by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention.” Lockwood, 107 F.3d at 1572, 41USPQ2datl966.
An adequate written description of the claimed invention must include sufficient description of at least a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics sufficient to show that Applicants were in possession of the claimed genus. However, factual evidence of an actual reduction to practice has not been disclosed by Applicants in the specification; nor have Applicants shown the invention was “ready for patenting” by disclosure of distinguishing identifying characteristics sufficient to show that Applicants were in possession of the claimed invention at the time the application was filed.
Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that Applicant had possession of the claimed invention at the time the instant application was filed. Claims 12-21 depend directly or indirectly from claim 11, incorporate the limitation of claim 11, and do not cure the defect of claim 11. Therefore, these claims are included in this rejection.
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 1-21 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 1 and 21 are rejected under 35 USC 112(b) as indefinite for the following reason:
Claims 1 and 21 recite a method and composition comprising grinding a mixture using “an ultra-precision colloid grinding machine.” It is unclear what equipment would meet the limitations of an ‘ultra-precision’ colloid grinding machine as ‘ultra-precision’ is a relative designation and not a type of colloid mill. Although the Specification provides that “any ultra-precision colloid grinding equipment” known in the art may be used and gives a single specific model of ultra-precision colloid grinding machine ([00019]), the claims do not recite the disclosed speed, working fineness, rotor dimensions, mill gap, shear rate, or resulting particle-size distribution necessary to determine whether another colloid mill falls within the metes and bounds of the claim. Claims 2-10 are included in this rejection for depending on, including every limitation of, and failing to cure the defect recited in claim 1.
Claim 21 is further rejected as being indefinite for the following reason:
Claim 21, which depends from claim 11, recites “…where[in] said colorant treated with phytic acid is prepared in a mixture…” This is a product-by-process claim as claim 11 already recites a mixture of phytic acid, colorant, solvent, and adhesive component. It is unclear what is required by the mixture as recited in claim 21 beyond what was already recited in claim 11. Therefore, one of ordinary skill could not reasonably determine the metes and bounds of claim 21.
Claims 6 and 16 are rejected under 35 USC 112(b) as indefinite for the following reason:
Claims 6 and 16 recite “wherein a pH of the phytic acid is in a range from about 4.5 to about 7.5.” The claims do not identify whether the pH is that of pure phytic acid stock solution, the phytic acid treatment solution, the pigment treatment slurry, the pigment after treatment, or the mixture including phytic acid, colorant, and solvent. One of ordinary skill in the art could not reasonably determine the metes and bounds of this claim as currently recited.
Claim 11 is rejected under 35 USC 112(b) as indefinite for the following reason:
The language “used for attaching hair accessories” is intended use language. While it is not necessarily indefinite, it does not structurally distinguish the composition from an identical composition and therefore, not given patentable weight.
Claim 11 further recites “…wherein said colorant treated with phytic acid is configured to evenly disperse in said solvent before adding said adhesive component.”
‘Evenly’ is an undefined term of degree. No objective dispersion standard is given such as maximum agglomerate size, particle-size distribution, sedimentation rate, measurement time, etc. ‘Configured to evenly disperse’ is product-by-process claim language in a composition claim and it is unclear what configuration the colorant must take on to evenly disperse in the solvent before adding the adhesive component. One of ordinary skill in the art could not reasonably determine the metes and bounds of the claim. Claims 12-21 are included in this rejection for depending on, including every limitation of, and failing to cure the defect recited in claim 11.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Both claims 5 and 15 depend from claims 4 and 14, respectively. Claims 4 and 14 recite a range of iron oxide to phytic acid greater than 0 to about 100:10 (or 10:1), whereas claims 5 and 15 require a ratio of 46:4 or 24:1, which falls outside the range recite in the claims from which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The Hair Cosmetic Composition (claims 11-21):
Claims 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hong (WO2019/197646, published 12 April 2019 – Machine Translation relied upon).
Hong discloses a pigment composition treated with phytic acid and a method of preparing such (title, abstract).
Regarding the composition of claim 11, Hong discloses a pigment composition, formed by: a) spraying onto at least one pigment, an aqueous solution of phytic acid; and b) optionally, grinding the pigment composition obtained in step a) (p. 3, claim 1).
With regards to the claimed hair cosmetic composition, Hong teaches the cosmetic formulation can be mascara, shampoo, or conditioner (p. 7).
With regards to the claimed addition of a solvent, Hong teaches the phytic acid in an aqueous solution comprising water (p. 7), which is a known solvent.
With regards to the claimed addition of phytic acid to a pigment, Hong teaches the phytic acid chelates the pigment, which allows the pigment to be easily incorporated into aqueous formulations and avoiding sedimentation (p. 4-5).
With regards to the claimed addition of an adhesive component to the mixture, Hong discloses the aqueous solution of phytic acid used in step a) may contain one or more additives chosen from polyacrylates or polyacrylic acids (p. 5), which are known adhesives in the cosmetic field.
The resulting composition produced by the method disclosed by Hong – a pigment treated with phytic acid evenly dispersed in a solvent, and an adhesive component – meets the limitations of claim 11. The language of claim 11, including the limitation “used for attaching hair accessories,” is intended use language and does not structurally distinguish the composition. See MPEP 2111.02.
Regarding claim 12, Hong discloses the preferred pigment is an iron oxide (p. 5).
Regarding claim 13, Hong discloses a working example containing yellow, black and red iron oxide pigments (CI77492, CI77499, and CI77491) at 1.72% w/w relative to the overall weight of the cosmetic composition (p. 14, Table 3). This amount falls within the claimed range. See MPEP 2144.05.
Regarding claims 14 and 15, Hong discloses the weight ratio of phytic acid solution to pigment is 0.1 to 20% (p. 5). Hong further discloses the mass proportion of phytic acid in the aqueous solution of phytic acid sprayed in step a) is 5 to 60% (p. 5). Equivalently, per 100 parts pigment, there are 0.0005 to 12 parts phytic acid and per 96 parts pigment, there are 0.0048 to 11.52 parts phytic acid. Thus, the ratio range in claim 4 overlaps with the ratio range taught by Hong and the ratio amount in claim 5 falls within the ratio range taught by Hong. See MPEP 2144.05.
Regarding claim 16, Hong discloses the method produces a composition of pH 5.5 (p. 8). This disclosure falls within the range claimed by applicant. See MPEP 2144.05.
The difference between the applied reference and the claimed invention is that the applied references may not teach the instantly claimed method 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). Hong discloses various embodiments of a hair cosmetic composition containing a colorant treated with phytic acid, an adhesive component, solvent, and adhesive component. The composition disclosed by Hong, apart from the product-by-process language, is substantially similar to the composition of claim 11. See MPEP 2113(II).
The applied reference discloses the elements 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.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hong as applied to claims 11-16 above, and further in view of Lueschen (US Pat. No. 9,492,363 B1, patented 15 November 2016).
Hong is discussed above as pertaining to instant claims 11-16. Regarding the limitations set forth in claims 17- 20, these limitations are made obvious further in view of Lueschen.
Lueschen teaches aerosol cosmetic compositions that include an oil soluble gloss enhancing film forming component, a solvent, an iron oxide colorant, a propellant, and useful application to hair or skin (abstract and col. 5, lines 18-30). Lueschen also teaches an aerosol dispensing system and a method of preparing an aerosol sprayable color composition (abstract).
Regarding claims 17 and 18, Lueschen expressly identifies useful solvents in the composition can include water and/or a non-aqueous solvent such as propylene glycol (col. 4, lines 30-63). Lueschen further teaches the amount of non-aqueous solvent in the composition is from about 1.5 wt% to about 80 wt% (col. 5, lines 5-10). This range overlaps with the instantly claimed range in claim 18. See MPEP 2144.05.
Regarding claims 19 and 20, Lueschen expressly identifies AMP-acrylates copolymer as a suitable film former (col. 4, lines 1-15). Because a film-forming polymer functions to form an adherent coating retaining deposited colorant on the application surface, the AMP-acrylates copolymer corresponds to the claimed adhesive component (col. 2, lines 21-24). Lueschen further provides a range of 0.03% to 30% (w/w/) relative to the overall weight of the composition is suitable and effective amount to include the film-forming polymer (col. 3, lines 53-63). The range disclosed by Lueschen encompasses the instantly claimed range in claim 20. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to employ the propellant, the propylene solvent in the claimed range, and the AMP-acrylates copolymer as a film-forming adhesive component in the claimed range as taught by Lueschen in the composition taught by Hong. One of ordinary skill would have reason to use Lueschen’s propellant, propylene glycol as a solvent, and AMP-acrylates copolymer as the polymer fixative in the phytic acid-treated pigment composition because –
1) the propellant would provide an alternate application method to Hong (aerosol hair spray product);
2) the solvent could be added to an aqueous system to improve wetting and dispersion of the iron oxide colorant; and
3) the polymer would perform its known film-forming and pigment-retention function –
as both the disclosures of Lueschen and Hong pertain to pigment compositions for hair application and methods of making such. Therefore, it would have been obvious to supplement Hong’s disclosed method with the components disclosed by Lueschen as providing additional benefits/properties to hair cosmetic compositions containing iron oxide colorants.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Hong as applied to claims 11-16 above, and further in view of Majka (US Patent No. 7,441,717 B1, patented 28 October 2008).
Hong is discussed above as pertaining to instant claims 11-16. Regarding the limitations set forth in claim 21, these limitations are made obvious further in view of Majka.
While Hong does not expressly teach grinding 3 to 5 times with an ultra-precision colloid grinding machine, this limitation is made obvious by Majka.
Majka teaches milling of pigment using a colloid mill (col. 16, Example 4). Majka also teaches the milling process requires as many passes as needed to achieve the desired particle size distribution (col. 4, lines 45-49). Thus, the number of passes was recognized in the art as a variable affecting the resulting particle-size distribution. It would have therefore been obvious for one of ordinary skill in the art to substitute a colloid mill in the grinding process disclosed by Hong because: 1) Hong teaches this process may be carried out by any known method in the art; and 2) Majka teaches colloid milling can be used to mill pigment. In addition, it would have been obvious to determine, through routine experimentation, the number of passes sufficient to obtain the desired degree of pigment deagglomeration and dispersion, including three to five passes, absent evidence that the claimed number produces an unexpected result.
The Method of Preparing a Hair Cosmetic Composition (claims 1-10):
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hong (WO2019/197646, published 12 April 2019 – Machine Translation relied upon) in view of Majka (US Patent No. 7,441,717 B1, published 28 October 2008) and Lueschen (US Pat. No. 9,492,363, published 15 November 2016).
Hong discloses a pigment composition treated with phytic acid and a method of preparing such (title, abstract). Hong further teaches a grinding step is carried out by any method known to the skilled person, and by any type of shredder (p. 7).
Regarding the method of claim 1, Hong discloses a method for preparing a pigment composition, comprising the steps of: a) spraying onto at least one pigment, an aqueous solution of phytic acid; and b) optionally, grinding the pigment composition obtained in step a) (p. 3, claim 1).
With regards to the claimed method directed to preparing a hair cosmetic composition, Hong teaches the cosmetic formulation can be mascara, shampoo, or conditioner (p. 7).
With regards to the claimed addition of a solvent, Hong teaches the phytic acid in an aqueous solution comprising water (p. 7), which is a known solvent.
With regards to the claimed grinding step, Hong teaches the homogenous dispersion of pigments in a formulation is ensured by a grinding step in one of the liquid phases of the formulation (p. 4). Hong teaches the grinding step of step b) can be carried out by any method known to the skilled person, and by any type of shredder (p. 7).
With regards to the claimed addition of phytic acid to a pigment, Hong teaches the phytic acid chelates the pigment, which allows the pigment to be easily incorporated into aqueous formulations and avoiding sedimentation (p. 4-5).
With regards to the claimed addition of an adhesive component to the mixture, Hong discloses the aqueous solution of phytic acid used in step a) may contain one or more additives chosen from polyacrylates or polyacrylic acids (p. 5), which are known adhesives in the cosmetic field.
Regarding claim 2, Hong discloses the preferred pigment is an iron oxide (p. 5).
Regarding claim 3, Hong discloses the production of a composition containing yellow, black and red iron oxide pigments (CI77492, CI77499, and CI77491) at 1.72% w/w relative to the overall weight of the cosmetic composition (p. 14, Table 3). This amount falls within the claimed range. See MPEP 2144.05.
Regarding claims 4 and 5, Hong discloses the weight ratio of phytic acid solution to pigment is 0.1 to 20% (p. 5). Hong further discloses the mass proportion of phytic acid in the aqueous solution of phytic acid sprayed in step a) is 5 to 60% (p. 5). Equivalently, per 100 parts pigment, there are 0.0005 to 12 parts phytic acid and per 96 parts pigment, there are 0.0048 to 11.52 parts phytic acid. Thus, the ratio range in claim 4 overlaps with the ratio range taught by Hong and the ratio amount in claim 5 falls within the ratio range taught by Hong. See MPEP 2144.05.
Regarding claim 6, Hong discloses the method produces a composition of pH 5.5 (p. 8). This disclosure falls within the range claimed by applicant. See MPEP 2144.05.
While Hong does not expressly teach grinding 3 to 5 times with an ultra-precision colloid grinding machine as recited in claim 1, this limitation is made obvious by Majka.
Majka teaches milling of pigment using a colloid mill (col. 16, Example 4). Majka also teaches the milling process requires as many passes as needed to achieve the desired particle size distribution (col. 4, lines 45-49). Thus, the number of passes was recognized in the art as a variable affecting the resulting particle-size distribution. It would have therefore been obvious for one of ordinary skill in the art to substitute a colloid mill in the grinding process disclosed by Hong because: 1) Hong teaches this process may be carried out by any known method in the art; and 2) Majka teaches colloid milling can be used to mill pigment. In addition, it would have been obvious to determine, through routine experimentation, the number of passes sufficient to obtain the desired degree of pigment deagglomeration and dispersion, including three to five passes, absent evidence that the claimed number produces an unexpected result.
While Hong does not expressly teach the addition of a propellant to the mixture, propylene glycol as a solvent, or AMP-Acrylates copolymer as an adhesive component, as recited in claims 1 and 7-10, these limitations are made obvious by Lueschen.
Lueschen teaches aerosol cosmetic compositions that include an oil soluble gloss enhancing film forming component, a solvent, an iron oxide colorant, and a propellant; useful application to hair or skin; and a method of manufacture (abstract; col. 5, lines 18-30; and col. 7, lines 30-39). Lueschen also teaches an aerosol dispensing system and a method of preparing an aerosol sprayable color composition (abstract).
Regarding claims 7 and 8, Lueschen expressly identifies useful solvents in the composition can include water and/or a non-aqueous solvent such as propylene glycol (col. 4, lines 30-63). Lueschen further teaches the amount of non-aqueous solvent in the composition is from about 1.5 wt% to about 80 wt% (col. 5, lines 5-10). This range overlaps with the instantly claimed range in claim 18. See MPEP 2144.05.
Regarding claims 9 and 10, Lueschen expressly identifies AMP-acrylates copolymer as a suitable film former (col. 4, lines 1-15). Because a film-forming polymer functions to form an adherent coating retaining deposited colorant on the application surface, the AMP-acrylates copolymer corresponds to the claimed adhesive component (col. 2, lines 21-24). Lueschen further provides a range of 0.03% to 30% (w/w/) relative to the overall weight of the composition is suitable and effective amount to include the film-forming polymer (col. 3, lines 53-63). The range disclosed by Lueschen encompasses the instantly claimed range in claim 20. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to employ the propellant, the propylene solvent in the claimed range, and the AMP-acrylates copolymer as a film-forming adhesive component in the claimed range as taught by Lueschen in the method of producing a hair cosmetic composition taught by Hong. One of ordinary skill would have reason to use Lueschen’s propellant, propylene glycol as a solvent, and AMP-acrylates copolymer as the polymer fixative in the phytic acid-treated pigment composition because –
1) the propellant would provide an alternate application method to Hong commonly used in hair cosmetic compositions (aerosol hair spray product);
2) the propylene glycol solvent could be added to an aqueous system to improve wetting and dispersion of the iron oxide colorant; and
3) the polymer would perform its known film-forming and pigment-retention function –
as both the disclosures of Lueschen and Hong pertain to pigment compositions for hair application and methods of making such. Therefore, it would have been obvious to supplement Hong’s disclosed method with the components disclosed by Lueschen as providing additional benefits/properties to hair cosmetic compositions containing iron oxide colorants.
The Hair Cosmetic Composition (claim 22):
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Lueschen (US Pat. No. 9,492,363, published 15 November 2016) in view of Battermann (US PGPub. No. 2020/0188255 A1, published 18 June 2020).
The disclosures of Lueschen are discussed above. Specifically, as pertaining to claim 22, Lueschen discloses an aerosol hair cosmetic composition comprising an oil soluble gloss enhancing film-forming component, a solvent, a colorant, and a propellant (abstract). Lueschen expressly provides the composition contains one or more solvents chosen from ethyl alcohol (col. 4, lines 54-58) and propylene glycol (col. 4, lines 58-60). Lueschen expressly provides the composition contains one or more propellants chosen from dimethyl ether and 1,1-difluoroethane (HFC-152a) (col. 6, lines 53-59). Lueschen expressly provides a working example containing the colorants red iron oxide (ci77491), yellow iron oxide (ci77492), and black iron oxide (ci77499) (col. 9, Example 2). Lueschen expressly discloses addition of a film-forming polymer to the composition that is AMP-acrylates copolymer (col. 4, lines 1-5). Lueschen expressly provides an example composition containing colorants, water (aqua), fragrance, and pathenol (col. 9, Example 2).
The composition of claim 22 differs from Lueschen in the addition of hydrolyzed keratin. However, this limitation is made obvious in further view of Battermann.
Similar to Lueschen, Battermann discloses an aerosol hair cosmetic composition containing iron oxide dyes (abstract and [0080]). Battermann further discloses proteins that provide a conditioning effect to the hair, benefitting the hair’s appearance or feel, are suitable for addition to the composition ([0070]). Battermann discloses a suitable protein for this purpose is hydrolyzed keratin ([0071]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to employ hydrolyzed keratin as disclosed by Battermann in the composition taught by Lueschen. One of ordinary skill would have reason to use Battermann’s hydrolyzed keratin because Battermann discloses this component as a suitable additive for aerosol hair cosmetic compositions containing dyes. Battermann further discloses the added benefit hydrolyzed keratin provides in conditioning the hair’s appearance and feel. Both the disclosures of Lueschen and Battermann pertain to pigment compositions for hair application. Therefore, it would have been obvious to supplement Lueschen’s disclosed composition with additives disclosed by Battermann as providing additional benefits/properties to hair cosmetic compositions containing iron oxide colorants.
Conclusion
Claims 9, 19, and 21 are objected to. Claims 1-22 are rejected. No claim is allowed.
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).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JULIA A. ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights