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 .
Summary
Claims 1-25 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application filed on September 23, 2024 is a 371 of PCT/EP2023/057436 filed March 23, 2023, which in turn claims priority to French patent application FR2202634 filed on March 24, 2022.
Information Disclosure Statement
Receipt of the Information Disclosure Statement filed on September 23, 2024 is acknowledged. A signed copy of the form PTO/SB/08 is attached to this office action.
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.
Claims 10 and 18 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.
Claim 18 is an independent claim and should begin with the word, “The”; however, the first word of the claim is “A”.
Claims10 and 18 include the phrase, “such as”. This renders the claims indefinite because the scope is unclear – is the limitation following “such as” intended as an actual limitation to the claim or just an illustration of what might be within the scope of the claim?
Appropriate correction is required.
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.
Claims 1-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Swoboda, WO 2020144440 A1, published 16 July 2020. Since the WO document is in French, the teachings are taken from US 20220110840 A1, published 14 April 2022.
With regard to claims 1, 4, 5, 7 and 9, Swoboda teaches thickening compositions comprising poly(farnesene) polymer (hereinafter referred to as farnesene) and oil derived from a biological source. The farnesene has a number average molar mass ranging from 10,000 to 120,000 g/mol (paragraph [0017] and ranges within that range, paragraphs [0028] - [0029]; it can be partially or totally hydrogenated and functionalized with hydroxyl groups (paragraphs [0030] and [0206]).
The oil is described as a hydrocarbon oil selected from among non-cyclic isoparaffins comprising from 14 to 18 carbon atoms, see paragraphs [0019] - [0020].
The relative amounts of oil and farnesene are discussed in paragraph [0031] - [0033]: According to one embodiment, the thickening composition comprises, relative to the total weight of the thickening composition: [0032] from 10 to 90% by weight, preferably from 20 to 80% by weight, more preferably from 30 to 70% by weight, even more preferentially from 40 to 60% by weight, of oil(s) derived from biological sources; and [0033] from 10 to 90% by weight, preferably from 20 to 80% by weight, more preferably from 30 to 70% by weight, even more preferentially from 40 to 60% by weight, of poly(farnesene) polymer(s).
Example 8 of Swoboda teaches hair products comprising the farnesene and oil, as detailed in their example 6. The farnesene in example 6 does not have functionalized hydroxyl groups but the functionalized hydroxyls are taught in paragraph [0030] as outlined above.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to use the compositions of Swoboda on hair with the expectation of achieving improved nourishing properties, for example, as stated in paragraph [0292]. Swoboda does not teach that the composition will prevent and/or slow the appearance of unattractive effects on human hair following exposure to intense heat. However, it is well settled that "Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)," see MPEP 2145, Section II.
With regard to claims 2, 3 and 6, Swoboda teaches that Emogreen C 15-19 alkane is suitable as the oil; this product has ratios of alkanes that correspond to the numbers claimed.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Swoboda as applied to claims 1-7 and 9 above, and further in view of Cavailles et al.
Claim 8 recites C as an emulsion of A and G including surfactant S
The teachings of Swoboda are outlined above.
Cavailles et al. (US 20210346250 A1) teach cosmetic compositions for treating hair to improve combing comprising an emulsion of a gelled aqueous phase and an oil. Paragraphs [0015] and [0016] explain the reason why an emulsion form is preferable for such hair treating compositions. Paragraph [0029] teaches mixtures of alkanes, naming Emogreen L19 as suitable oil. It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to employ the emulsion form of instant component C to gain the advantages taught by Cavailles et al. Cavailles et al., paragraph [0021] teach, "fatty phase (A2) comprising at least one oil," which implies that a plurality of oils is contemplated. Paragraph [0036] says that the cosmetic composition may comprise a wax. One of ordinary skill in the art would have found it obvious to follow the teachings of the reference to obtain the desired mix of ingredients, with the expectation of achieving a useful hair composition.
Claims 10 - 15, 17 - 23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson (US 20140360522) in view of Swoboda.
Anderson teaches a process treating hair comprising the steps of shampooing and conditioning the hair; drying the hair and leaving the hair damp; adding oil and moisturizing solution to the hair and scalp; covering the with a permeable or non-permeable hair cap; removing the hair cap after about 6 to about 8 hours; moisturizing the hair and adding hair mousse to the top of the hair; blow drying the hair on low heat setting (claim 15).
The teachings of Swoboda are outlined above.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to use the composition of Swoboda as the oil and moisturizing solution of Anderson with the expectation of achieving improved nourishing properties, for example, as stated in paragraph [0292]. It would have been further obvious to let the oil and moisturizing composition sit on the hair for a selected time and then blow-drying (claim 10) or otherwise styling (claim 18) the hair because Anderson teaches these exact steps.
Swoboda does not teach that the composition will prevent and/or slow the appearance of unattractive effects on human hair following exposure to intense heat. However, it is well settled that "Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)," see MPEP 2145, Section II.
Examiner acknowledges that Anderson teaches more steps than the instant claims recite but none of those steps are excluded from the instant claims.
With regard to claims 11 and 12 Swoboda teaches that Emogreen C 15-19 alkane is suitable as the oil; this product has ratios of alkanes that correspond to the numbers claimed.
With regard to claims 19, 20 and 23; Swoboda teaches that Emogreen C 15-19 alkane is suitable as the oil; this product has ratios of alkanes that correspond to the numbers claimed.
Claims 16 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Swoboda as applied to claims 10 - 15, 17 - 23 and 25 above, and further in view of Cavailles et al.
Claims 16 and 24 recite C as an emulsion of A and G including surfactant S
Cavailles et al. (US 20210346250 A1) teach cosmetic compositions for treating hair to improve combing comprising an emulsion of a gelled aqueous phase and an oil. Paragraphs [0015] and [0016] explain the reason why an emulsion form is preferable for such hair treating compositions. Paragraph [0029] teaches mixtures of alkanes, naming Emogreen L19 as suitable oil. It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to employ the emulsion form of instant component C to gain the advantages taught by Cavailles et al. Cavailles et al., paragraph [0021] teach, "fatty phase (A2) comprising at least one oil," which implies that a plurality of oils is contemplated. Paragraph [0036] says that the cosmetic composition may comprise a wax. One of ordinary skill in the art would have found it obvious to follow the teachings of the reference to obtain the desired mix of ingredients, with the expectation of achieving a useful hair composition.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A. Wax whose telephone number is (571)272-0623. The examiner can normally be reached 8:00 AM -4:00 PM Monday - Friday.
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/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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