DETAILED ACTION
Status of Claims
Claims 1-16 and 20-22 are currently pending. Claims 9-16 and 20-22 are currently under consideration and are the subject of this Office Action. This is the first Office Action on the merits of the claims. Non-elected claims 1-8 are withdrawn from consideration. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Non-Final.
Election/Restrictions
Applicant’s election of the claims of Group II (claims 9-16 and 20-22) in the response filed on July 28, 2026 (to the May 29, 2026 Requirement for Restriction) is acknowledged. In response to applicant’s election, the claims of Group I (claims 1-8) are withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant has elected the claims of Group II without traverse.
Accordingly, the May 29, 2026 Requirement for Restriction is made FINAL, and claims 9-16 and 20-22 are examined as follows.
Claim Objections
The following claims are objected to because of the following informalities:
A. Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
B. Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
C. Claim 16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 112 - Indefiniteness
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.
Claim 14 is 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 pre-AIA , that applicant regards as the invention.
Claim 14 is drawn to:
14. ([…]) The method of claim 9, wherein the nano-carbon structure is comprised at a concentration of 0.001 to 1,000 μg/mL.
wherein the recitation of a “concentration” is unclear since the instant method is drawn to applying a “nano-carbon structure,” and there appears to be no antecedent basis for a composition for applying the instant “nano-carbon structure.”
Further clarification is required.
Claim Rejections – 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claims 9-10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by PEREZ (Perez, F., Fabrication of ultra-thin graphene oxide films enhanced by bio-interfactants, July 2020, Dr. Ing. Thesis, University of Bremen; hereinafter, “Perez”).
Perez is directed to:
Fabrication of ultra-thin graphene oxide films enhanced by bio-interfactants
Anstract
Graphene-based materials have been emerging at a fast pace since the isolation of a single crystal in 2004 and the Nobel prize in physics for that in 2010. Due to the outstanding properties of graphene, new lines of research aim to address challenges in production and methods to strongly attach graphene onto surfaces. Addressing this challenge requires (i) efficient transport of graphene to surfaces where it, (ii) remains strongly attached and (iii) manifests the sought graphene-like properties. This thesis aims to address these points by exploring synergetic interactions between graphene oxide and biomolecules that act as linkers (here named “bio-interfactants”). A layer-by- layer method was devised, which allowed the formation of ultra-thin coatings that safeguarded the overlapping graphene oxide flakes. In order to characterize the attainment of graphene-like properties, a mild thermal reduction of these newly-devised materials was conducted. It was found that the choice of the bio-interfactant played a crucial role in the efficiency of achieving these properties. Besides that, the bio-interfactants allowed further verticals assemblies by repeating the layer-by-layer process. In that case, too, the bio-interfactants played a role in the scaling of coating properties and allowed the tailoring of thicknesses from ~5.5 nm to ~233 nm. After thermal reduction, the lowest coating thicknesses could be achieved with high degree of homogeneity, and the thicker coatings presented some level of expansion (puffing). Finally, the coating presented here was found to be a suitable material when employed as a hair cosmetic. A study case about the cosmetic benefits of this material and its potential role as a fundamentally new technology for hair cosmetics is presented in this thesis, too.
Perez, title & abstract.
Regarding claim 9 and the requirements:
9. ([…]) A method for scalp or hair care, comprising applying a nano carbon structure to a scalp or hair.
Perez clearly teaches “graphene oxide and biomolecules that act as linkers (here named ‘bio-interfactants’)” for “[l]ayer-by- layer method was devised, which allowed the formation of ultra-thin coatings that safeguarded the overlapping graphene oxide flakes” that is “employed as a hair cosmetic” (Perez, abstract), whereby it is noted:
“graphene oxide and biomolecules that act as linkers” applied as a “layer” (Perez, abstract) reads on:
a “nano carbon structure” of claims 9-10, and
a “nano-graphene oxide, a nano-graphene oxide variant” of claim 10:
10. ([…]) The method of claim 9, wherein the nano-carbon structure is at least one selected from the group consisting of nano-graphene oxide, a nano-graphene oxide variant and graphene quantum dots.
wherein a “graphene oxide and biomolecules that act as linkers” applied as a “layer” and “employed as a hair cosmetic” (Perez, abstract) reads on the active step requirements of claim 9 for “applying a nano carbon structure to a scalp or hair.”
Thus, Perez anticipates claims 9-10 obvious.
Claim Rejections – 35 U.S.C. § 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. § 103(a) 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 C.F.R. § 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 9-10 and 12-14 are rejected under 35 U.S.C. § 103 as being unpatentable over PEREZ (Perez, F., Fabrication of ultra-thin graphene oxide films enhanced by bio-interfactants, July 2020, Dr. Ing. Thesis, University of Bremen; hereinafter, “Perez”).
The teachings of Perez, as set forth in the above rejection of claims 9-10 under 35 U.S.C. § 102 (a)(1) are hereby incorporated. However, to the extent that Perez DOES NOT EXPRESSLY TEACH the requirements of claims 12-14 for:
12. ([…]) The method of claim 9, wherein the nano-carbon structure has an average diameter of 1 to 100 nm.
13. ([…]) The method of claim 9, wherein the nano-carbon structure has a thickness of 0.1 to 5 nm.
14. ([…]) The method of claim 9, wherein the nano-carbon structure is comprised at a concentration of 0.001 to 1,000 μg/mL.
the requirements thereof would appear to be optimizable per Perez’s broader disclosure. In this respect, it is further noted, “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and also MPEP § 2144.05(II)(A). In the instant case, particle size is clearly a result-effective variable, which Perez discloses, “bio-interfactants played a role in the scaling of coating properties and allowed the tailoring of thicknesses from ~5.5 nm to ~233 nm,” and “[a]fter thermal reduction, the lowest coating thicknesses could be achieved with high degree of homogeneity, and the thicker coatings presented some level of expansion (puffing).” Perez, par. [0113]. Therefore, it would have been customary for an artisan of ordinary skill to select appropriate particle sizes and concentrations in optimizing a particular thickness of coating, thus rendering the range requirements of claims 12-14 obvious.
Thus, Perez renders claims 12-14 obvious.
Claims 20-22 are rejected under 35 U.S.C. § 103 as being unpatentable over PEREZ (Perez, F., Fabrication of ultra-thin graphene oxide films enhanced by bio-interfactants, July 2020, Dr. Ing. Thesis, University of Bremen; hereinafter, “Perez”), in view of SANTOS (Santos, A.C., et al., Evolution of Hair Treatment and Care: Prospects of Nanotube-Based Formulations, Nanomaterials 9 (2019) p. 913; on 09/13/2024 IDS; hereinafter, “Santos”).
Regarding claims 20-22 and the requirements:
20. ([…]) A method for treating a scalp disease, comprising administering a nano-carbon structure to a patient in need thereof with a scalp disease.
21. ([…]) The method of claim 20, wherein the scalp disease is at least one selected from the group consisting of psoriasis, seborrheic dermatitis, dandruff and alopecia.
22. ([…]) The method of claim 20, wherein the administering comprises applying the nano-carbon structure to a scalp or hair of the patient.
Perez clearly teaches “graphene oxide and biomolecules that act as linkers (here named ‘bio-interfactants’)” for “[l]ayer-by- layer method was devised, which allowed the formation of ultra-thin coatings that safeguarded the overlapping graphene oxide flakes” that is “employed as a hair cosmetic” (Perez, abstract), whereby it is noted:
“graphene oxide and biomolecules that act as linkers” applied as a “layer” (Perez, abstract) reads on a “nano carbon structure” of claims 20 and 22,
wherein a “graphene oxide and biomolecules that act as linkers” applied as a “layer” and “employed as a hair cosmetic” (Perez, abstract) reads on the active step requirements of claim 20 for “administering,” and claim 22 for “applying the nano-carbon structure to a scalp or hair of the patient.”
However, Perez DOES NOT TEACH a particular treatment population for a “patient in need thereof with a scalp disease” such as “dandruff” per the requirements of claims 20-21, which is well within the purview of the ordinarily skilled artisan.
Santo, for instance, is directed to the “Evolution of Hair Treatment and Care: Prospects of Nanotube-Based Formulations” (Santos, title & abstract), and discloses that “Hair care is an area of the cosmetic and pharmaceutical industries, which invest in formulations for appearance (hair color) and treatment of scalp and hair diseases (e.g., pediculosis and dandruff)” (Santos, p. 2, par. 1).
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to use Perez’s “graphene oxide and biomolecules that act as linkers (here named ‘bio-interfactants’)” (Perez, abstract) in treating dandruff per Santos (Santos, p. 2, par. 1). One would have been motivated to do so with a reasonable expectation of success in order to obtain the advantage of a suitable hair treating composition for treating dandruff, or delivering active agents in the treatment of dandruff. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the prior art renders claims 20-22 obvious.
Conclusion
Claims 9-10, 12-14 and 20-22 are rejected. Claims 11 and 15-16 are objected to. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611
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