DETAILED ACTION
Status of Application
Claims 1-17, filed 10/25/2024, are pending in this action. Claims 1-17 are currently under consideration.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Priority
This application is a 371 of PCT/KR2023/005775, filed April 27, 2023, which claims benefit of foreign priority to KR10-2022-0153749, filed November 16, 2022 and to KR10-2022-0052969, filed April 28, 2022. No English translations of the certified copies of priority applications have been received. Failure to provide a certified translation may result in no benefit being accorded for the non-English application. 37 CFR 41.154(b) and 41.202(e).
Inventorship
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 CFR 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.
Specification
The specification is objected to because of the following informalities:
The use of the trademarks/trade names/product names, e.g., “yak wool (Phoenix)”, Peptiskin (Pages 16, 17), Debon Charming shampoo, etc. (Pages 20, 22) has been noted in this application. Although the use of trademarks/trade names/product names is permissible in patent applications, the proprietary nature of the trademarks/trade names/product names should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks. The use of language such as “the product X (a descriptive name) commonly known as Y (trademark)” is not permissible since such language does not bring out the fact that the latter is a trademark. Language such as “the product X (a descriptive name) sold under the trademark Y” is permissible. MPEP §608.01(v). Further, it is noted that the trademarks/trade names/product names are used to identify a source of goods, and not the goods themselves. The formula or characteristics of the product may change from time to time and yet it may continue to be sold under the same trademark/trade name. Thus, a trademark/trade name does not identify or describe the goods associated with the trademark/trade name. Appropriate correction is required.
The specification comprises multiple acronyms without proper definition (e.g., Page 18, Table 4). The acronym should be given once in parenthesis after the first use of the full term, and then the acronym used alone thereafter if needed. Appropriate correction is required.
Information Disclosure Statement
The information disclosure statements, filed 10/25/2024 and 03/20/2025, are acknowledged and have been considered. Please see the attached initialed PTO-1449.
Foreign language references listed in the information disclosure statement(s), for which no English translation has been provided, have not been considered. If an English abstract has been provided or available for a foreign language document then only the English abstract has been considered.
The information disclosure statements do not include Certificate Statement and Privacy Act Statement (MPEP 609), and/or do not have a signature of the applicant or representative that is required in accordance with CFR 1.33.
Claim Objections
Claims 2-3, 6, 9-10, 12, 14-16 are objected to because of the following informalities: Claim 2 comprise the typographic error “is 0.0001 to 5 wt%” that needs to be corrected to “is from 0.0001 to 5 wt%”. Similar is applied to claims 3, 6, 9-10, 12, 14-16. Appropriate correction is required.
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.
Claim 7 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 the applicant regards as the invention.
Claim 7 recites the limitation “hair penetrating solvent includes one or more alcohols selected from the group consisting of…” that is not reasonably clear. Does this limitation imply that said solvent may include other constituents/liquids even in large amounts (i.e., including)? Clarification is required.
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen, US 2019/0091133 A1, in view of Mustafa, US 11,464,716 B1 and Florence et al., US 2015/0224049 A1 (hereinafter referred to as Florence).
Hansen teaches hair treatment compositions (Abstract; Para. 0012, 0119) that may include: (a) dyes (Para. 0012 as applied to claim 1); (b) polyquaternium-6, polyquaternium-7 (identified in the instant application as cationic polymers), e.g., in an amount of 0.1-15 wt% as conditioning agents (Para. 0143, 0146 as applied to claims 1, 3); (c) 3-50 wt of surfactants, e.g., amphoteric/cocamidopropyl betaine or cationic surfactants (Para. 0048-0050, 0123, 0125, 0127, 0130 as applied to claims 1, 4, 6); (d) less than 95 wt% of a liquid carrier such as ethanol, isopropyl alcohol, benzyl alcohol, propylene glycol, hexylene glycol, butylene glycol, dipropylene glycol, glycerin (Para. 0121-0122, 0141 as applied to claims 1, 7-8), identified in the present application as a hair penetrating solvent. Hansen further teaches that said compositions may include (e) plant extracts, e.g., Terminalia chebula Bark Extract or plant extract obtained by extracting fruits (Para. 0012, 0035, 0176 as applied to claim 1); and (f) amino acids, e.g., arginine, histidine, lysine (Para. 0012, 0141, 0144 as applied to claims 1, 13). Hansen also teaches the use of pH adjusting agent to provide pH of said compositions to 4-9 (Para. 0154 as applied to claim 16).
Hansen does not specifically teach the use of Terminalia chebula fruit extract (claim 1).
Mustafa teaches colorant compositions for hair (Title; Abstract) that may include: (a) basic dyes (Claim 2; Col. 5, Lns. 14-22); (b) polyquaterniums (Claim 9, Col. 4, Lns. 51-53, Col. 8, Ln. 14, Examples); (c) cocoamphodiacetate, cocamidopropyl betaine, behentrimonium chloride, (Claim 9; Col. 3, Ln. 58-Col. 4, Ln. 4; Col 4. Lns. 50-53; Examples) identified in the instant application as amphoteric or cationic surfactants; (d) ethanol, propylene glycol, benzyl alcohol, (Col. 6, Lns. 27-28; Col. 7, Ln.20), identified in the present application as a hair penetrating solvent; (e) Terminalia chebula fruit extract (Col. 7, Lns. 10-15).
Florence teaches topical compositions for the treatment of a skin and/or hair (Abstract; Para. 0007, 0041), wherein said compositions may include: (a) basic dyes (Para. 0324); (c) 0.00001-99 wt% of sodium cocoamphodiacetate/amphoteric surfactant (Para. 0020); (d) 0.00001-99 wt% of glycerin, butylene glycol, propylene glycol, hexylene glycol (Para. 0007, 0015-0018, 0328-0329); (e) 0.01-20 wt% of Terminalia chebula extract that can be an aquas extract from fruit (Para. 0007, 0021, 0054-0055, 0206-0208); and (f) amino acids, e.g., arginine (Para. 0328-0329).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use/try Terminalia chebula fruit extract as taught by Mustafa and/or Florence preparing hair treatment compositions as taught by Hansen, because it is prima facie obvious to combine compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a new composition to be used for the very same purpose. (MPEP 2144.06). In the present instance, the cited prior art teaches hair treatment compositions comprising plant extract(s), e.g., Terminalia chebula fruit Extract, wherein said plant extracts can be used as preservatives (e.g., Mustafa) and/or can provide additional therapeutic effects (e.g., Florence).
With regard to the concentrations and/or concentration ratios as instantly claimed, it is noted that differences in experimental parameters such as concentration of compounds in a solution/formulation will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical. The prior art teaches formulations comprising the same components. The determination of suitable or effective concentration/composition can be determined by one of ordinary skill in the art through the use of routine or manipulative experimentation to obtain optimal results, as these are variable parameters attainable within the art. Where 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. Applicant is advised to clarify the claimed language, the structure of the claimed compositions and clearly point out the patentable novelty, which the applicant thinks the claims present in view of the state of the art disclosed by the references cited, to place the application in condition for allowance.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2019/0183769 A1 – teaches hair dyeing compositions that include: (a) basic dyes (Para. 0040-0043); (b) cationic polymers, e.g. polyquaternium-6, polyquaternium-7 (Para. 0121); (c) an amphoteric surfactant(s), e.g., cocamidopropyl betaine, and/or cationic surfactants (Abstract; Para. 0025-0026, 0066-0068, 0084-0092); (d) such solvents as ethanol, propylene glycol, butylene glycol, diethylene glycol, benzyl alcohol (Para. 0109-0112); and also may include plant extracts and amino acids, e.g., arginine, lysine, histidine (Para. 0106).
US 2021/0378946 A1 – teaches cosmetic compositions for dyeing eyebrows, wherein said compositions may include: (a) basic dyes (Para. 0099-0101); (e) Terminalia chebula fruit extract (Para. 0044), and (f) amino acid salts e.g., a lysine salt (Para. 0157), and also may include ethanol, benzyl alcohol, propylene glycol, diethylene glycol, (Para. 0068, 0126).
Conclusion
No claim is allowed at this time
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA V. TCHERKASSKAYA whose telephone number is (571)270-3672. The examiner can normally be reached 9 am - 6 pm, Monday - Friday.
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.
/OLGA V. TCHERKASSKAYA/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights