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 .
Information Disclosure Statements
Information Disclosure Statement (IDS) filed on 12/03/2024 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Claims Status
Applicant’s election without traverse of Group I (claims 1-10 14 and 15-18) and the species for composition of starch, modified starch and pullulan as the non-fully synthetic film forming agent, water as the carrier, shea butter care agent, CO2 propellant and form foam in the reply filed on 07/23/2026 is acknowledged.
Claims 5, 6, 11-13, 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/23/2026.
Claims 1-4, 7-10, and 14-17 are under current examination.
Claim Rejections - 35 USC § 112 indefinite
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 1-4, 7-10, 14-17 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 1 recites non-fully synthetic film forming agent. Paragraph [0016] of the specification discloses that non-fully synthetically produced film-forming agents are those which are based on a naturally occurring substance. According to the invention, said naturally occurring substance (natural substance) can be chemically modified. These film-forming agents based on natural substances are referred to, in the present case, as non-fully synthetically produced film-forming agents. However, it is unclear to what degree the natural polymers are present to constitute a non-fully synthetic polymer. The word “non-fully” is a relative term which renders the claim indefinite. The term “non-fully synthetic” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The metes and bounds of the claim are unclear as it is unclear how much the polymer can be natural to be considered a non-fully synthetic because chemical modification of natural substances would appear to make the product a synthetic however the phrase “non-fully” implies a term of degree for the polymer being natural. Dependent claims 2-4, 7-10, 14-17 do not rectify the indefinite issue for non-fully synthetic film forming agents.
Claim 1 recites the limitation "the care agent" in line 7. There is insufficient antecedent basis for this limitation in the claim because claim 1 earlier recites at leat one care agent. Therefore, it is unclear if the care agent is referring back to the one or more than one care agent earlier recited in view of the recitation “the at least one”. Claims 2-10 and 14-20 do not rectify this deficiency. It is suggested that claim 1 can recite the at least one care agent is selected from.
Claim 2 recites wherein the care agent is from 0.1 to 10 wt %. There is insufficient antecedent basis for this limitation in the claim because claim 1 recites at least one care agent. Therefore, it is unclear if the care agent is referring back to the one or more than one care agents earlier recited in view of the recitation “the at least one”. It is suggested that claim 2 can recite the at least one care agent.
Claim 4 depends from claim 3 requiring a saccharide and recites that the at least one non-fully synthetic agent further comprises a cellulose, a cellulose derivative, a starch, a modified starch, a pullulan and/or guar hydroxypropyltrimonium chloride. It is unclear if the saccharide of claim 4 must be different than a saccharide of claim 3 or if claim 4 includes the saccharide of claim 3. Each of the non-fully synthetic film formers in claim 4 are considered “a saccharide”. It is unclear whether these saccharides in claim 4 are meant to be different from “a saccharide” in claim 3 because starch and cellulose and modified starches and pullulan are all considered “a saccharide”. It is suggested that claim 4 can depend from claim 3 and recite wherein the saccharide is selected from the group consisting of a cellulose, a cellulose derivative, a starch, a modified starch, a pullulan, guar hydroxypropyltrimonium chloride or mixtures thereof. For the purpose of examination claim 3 and 4 will be interpreted in light of the species as a starch, a modified starch and pullulan.
Claim 7 recites that the cosmetic product is substantially free of a fully synthetic film forming product. The term “substantially free of” in claim 7 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Paragraph [0018] of the instant specification recites that substantially can comprise up to 5 wt. %, in particular up to 3 wt. %, preferably up to 2 wt. %, preferably 1 wt. % or less of fully synthetic polymers, which are film-forming agents in the conventional sense, in order to be “substantially” free from fully synthetic film-forming agents. However, the specification does not clearly define how much of the fully synthetic product can be present in order to be “substantially” free of it. The metes and bounds of claim 7 are unclear because it is unclear if the amount can encompass up to 5%, 3%, 2%, 1% or none.
Claim 9 recites the cosmetic product of claim 8 wherein the propellant comprises. There is insufficient antecedent basis for this limitation in the claim because claim 8 recites at least one propellant. Therefore, it is unclear if the propellant of claim 9 is referring back to the one or more than one propellant of claim 8 earlier recited in view of the recitation “the at least one”.
Claim 10 recites the amount of propellant is sufficient to generate a pressure. It is unclear if claim 10 is referring back to the one or more than one propellant of claim 8 because claim 8 recites “at least one” for propellant. It is suggested that claim 10 can recite wherein the amount of the at least one propellant is sufficient to generate a pressure of.
Claim 16 recites wherein the care agent is from 1.5 wt % to 3 wt. % of the total weight of the cosmetic product. There is insufficient antecedent basis for this limitation in the claim because claim 1 recites at least one care agent. Therefore, it is unclear if the care agent is referring back to the one or more than one care agents earlier recited in view of the recitation “the at least one” recited in claim 1.
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.
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.
Claims 1-4, 7, 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Schweinsberg et al. (United States Patent Publication 20120207695) in view of Benefits of Shea Butter (published July 15/2021) and Coulombel et al. (WO2020002524).
Schweinsberg et al. teach compositions for temporary deforming (i.e. shaping) keratin fibers composing at least one modified starch and a cosmetic carrier, see abstract. The carrier can comprise water. The composition can comprise foam form. Fats such as shea butter can be incorporated in amounts from 0.05-35% by weight of the composition. The composition can contain at least one propylene oxide modified starch and a further polymer present at 0.5-30% by weight, see claim 1 and paragraph [0036]-[0037]. Schweinsberg teaches that their composition is preferably free of film forming polymers that are synthetic, see paragraph [0032]. Schweinsberg teaches that further polysaccharide polymers may be included including starch, see claims 12-13.
Schweinsberg does not teach the additional polysaccharide polymer includes pullulan or that their shea butter is a skin benefit agent.
However, Benefits of Shea butter teaches that shea butter is added to hair to impart benefits such as to protect and repair hair while restoring moisture of the hair, see page 1. Therefore, the shea butter taught in Schweinsberg is necessarily a care agent as shea imparts beneficial properties to hair.
Coulombel et al. teach hair shaping compositions which comprise one or more sugars applied to hair comprising polysaccharides, see claims 1-4 and page 3, lines 33-37. Such polysaccharides include a mixture of modified starch unmodified starch and pullulan, see claims 1, 4, and page 5, lines 33-37 to page 6, lines 1-15. The composition is for shaping of hair, see entire document and claim 1 and page 2, lines 4-6.
It would have been prima facie obvious to incorporate pullulan and starch as the polysaccharide polymer with Schweinsberg’s hair shaping composition containing modified starch.
One of ordinary skill in the art would have been motivated to do so because Coulombel teaches that hair can be shaped with one or more sugars such as polysaccharides including pullulan and/or modified and unmodified starches.
There would have been a reasonable expectation of success because Schweinberg already teaches the inclusion of further polysaccharides inclusive of starch, see claims 12-13.
Claim(s) 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Schweinsberg et al. (United States Patent Publication 20120207695), Benefits of Shea Butter (published July 15/2021) and Coulombel et al. (WO2020002524) as applied to all claims above, and further in view of Birkel (United States Patent Publication 20040037786) and Batt et al. (United States Patent Publication 20120031419).
The modified Schweinsberg does not teach the presence of propellant such as carbon dioxide (CO2) wherein there is a generated pressure of 5-15 bar.
Birkel et al. teach aerosol foam products comprising carbon dioxide (CO2) propellant, see paragraph [0029]. The aerosol foam product is filled in a pressure-resistant aerosol container or package, which is provided with a device for foaming production (aerosol foam head). When a foam is produced with this aerosol container or can, it is worked gently into the hair and rapidly breaks up when it is worked into the hair, see paragraph [0057]-[0059].
Birkel does not teach generating a pressure of 5-15 bar using CO2.
Batt et al. teach aerosol hair products for shaping hair comprising a container for storing the product and a propellant, see paragraph [0109]. The aerosol container can be pressurized using propellants, see paragraph [0114]. Propellants include CO2 are utilized to provide a pressure of 6-12 bar, see paragraph [0104] and [0114]. Bratt further teaches that altering the pressure inside the container correlates with ejection flow wherein increased pressure correlates with faster ejection flow, see paragraph [0060].
It would have been obvious to provide the foam hair shaping composition of Schweinsberg et al. as an aerosol foam containing carbon dioxide propellant and to incorporate CO2 in a container as a propellant to achieve a pressure of 6-12 bar as taught by Batt et al. One of ordinary skill in the art would have been motivated to utilize propellants having a pressure of 6-12 bar to form an aerosol foam product with containers for ease of storage and application as the foam can be easily worked gently into the hair and rapidly breaks up when it is worked into the hair. One of ordinary skill in the art would have been motivated to adjust the pressure of the container using propellants in order to provide the desired ejection flow as increased pressure correlates to increased ejection flow.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7-10, and 14-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 12-16 and 21 of copending Application No. 18871415(reference application) in view of Schweinsberg et al. (United States Patent Publication 20120207695) and Benefits of Shea Butter (published July 15/2021).
Claims 1-4, 7-10 and 14-17 directed to an invention not patentably distinct from claim 1-8, 12-16 and 21 of commonly assigned Application 18871415.
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘415 claim a cosmetic product for temporarily shaping keratin fibers which comprise a propellant, and a non fully synthetic film forming agent wherein the product takes the shape of a foam. The non-fully synthetic film former can comprise starch, modified starch and pullulan. The composition in both applications can be free of fully synthetic film forming polymers. The non fully synthetic film forming agent in both applications can overlap in ranges. The propellent in both applications includes carbon dioxide wherein there is enough to provide a pressure of 5-15 bar.
The difference between the instant claims and that of Application ‘415 is the inclusion of shea butter from 0.1-10% by weight.
Schweinsberg et al. teach compositions for temporary deforming (i.e. shaping) keratin fibers composing at least one modified starch and a cosmetic carrier, see abstract. The carrier can comprise water. The composition can comprise foam form. Fats such as shea butter can be incorporated in amounts from 0.05-35% by weight of the composition. The composition can contain at least one propylene oxide modified starch and a further polymer present at 0.5-30% by weight, see claim 1 and paragraph [0036]-[0037]. Schweinsberg teaches that their composition is preferably free of film forming polymers that are synthetic, see paragraph [0032]. Schweinsberg teaches that further polysaccharide polymers may be included including starch, see claims 12-13.
According to Benefits of Shea Butter, Shea butter is taught to help treat breakage and repair damaged hair thus it advantageous for the repairing process as it restores moisture and protects hair, see page 1
Thus, it would have been obvious to incorporate 0.5-30% shea butter into the hair shaping composition of Application ‘415 in order to impart moisturization and protect hair from damage.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 18871415 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
Currently, no claims are allowed and claims 1-4, 7-10, 14-17 are rejected.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/ Primary Examiner, Art Unit 1619
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