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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated September 10, 2025 is acknowledged.
Claims 1-3, 20-23, 27-32, 39, 42-44, 47-50, 55 and 56 are pending.
Claims 4-19, 24-26, 33-38, 40, 41, 45, 46 and 51-54 are cancelled.
Claims 1, 20, 22, 23, 47 and 48 are currently amended.
Claims 55 and 56 are new. Claim 55 is grouped with Group I and claim 56 is grouped with Group II consonant with the Requirement for Restriction mailed February 5, 2020.
Claims 22, 23, 29-32, 43, 44, 47, 50 and 56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-3, 20, 21, 27, 28, 39, 42, 48, 49 and 55 as filed on September 10, 2025 are under consideration to the extent of the elected species, e.g., the bi-functional organic acid is maleic acid or/and itaconic acid and the bi-functional Bronsted base is 4,7,10-trioxa-1,13-tridecanediamine or 4,9-dioxa-1,12-dodecandiamine or 1,11-diamino-3,6,9-trioxaundecane or a mixture thereof.
This action is made FINAL.
37 CFR 1.121 – Manner of Making Amendments
With regard to claims 29-32, 43, 44, 47, 50 and new claim 56, as per MPEP § 714 II C (A) for any amendment being filed in response to a restriction or election of species requirement and any subsequent amendment, any claims which are non-elected must have the status identifier (withdrawn).
Withdrawn Objections / Rejections
In view of the amendment of the claims, all of the previous claim objections are withdrawn, all of the previous claim rejections under 35 USC 112(a) are withdrawn, and some of the previous claim rejections under 35 USC 112(b) are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claims 1 and 49 are objected to because of the following informalities:
Claim 1, 3rd and 4th lines from the end of the claim: a coordinating conjunction, e.g., or, should be inserted before propanol.
Claim 49 should presumably recite “wherein the fatty alcohol is selected from the group consisting of: capryl alcohol, lauryl alcohol, stearyl alcohol, cetyl alcohol, myristyl alcohol, palmitoleyl alcohol, and mixtures thereof.” in view of the amendment of claim 1 to require a fatty alcohol.
Appropriate correction is required.
New Grounds of Rejection Necessitated by Amendment
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 1-3, 20, 21, 27, 28, 39, 42, 48, 49 and 55 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 1 as currently amended recites the carrier of the formula of step (b) is ethanol, isopropanol, propanol. Applicant’s Remarks at page 10 reference paragraph [0038] of the specification in support. While paragraph [0038] recites ethanol, isopropanol and propanol, it does so in the context of alcohols suitable as the alcoholic component of an aqueous-alcoholic medium:
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There is no disclosure of a carrier comprising (or that is) an alcohol that does not also require water. Claims 2, 3, 20, 21, 27, 28, 39, 42, 48, 49 and 55 are included in this rejection because they depend from claim 1 and thus they also recite new matter.
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.
Claim 49 is 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.
Claim 49 recites the formulae of steps (a) and (b) further comprise a conditioning agent that is a fatty alcohol selected from a circumscribed group, however, claim 1 as currently amended and from which claim 49 depends recites the formula of steps (a) and (b) further comprise from about 1 to 5 wt% of a fatty alcohol as a conditioning agent. Because the conditioning agent of claim 49 is presumably the same conditioning agent as recited in claim 1, claim 49 appears to omit the range of 1 to 5 wt% required by claim 1.
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.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
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 1-3, 20, 21, 27, 28, 39, 42, 48, 49 and 55 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 pre-AIA the applicant regards as the invention.
Claim 1 as currently amended recites in the 3rd and 4th lines from the end of the claim ethanol, isopropanol, propanol. It is unclear whether the carrier of the formula of step (b) requires ethanol, isopropanol and propanol or whether the carrier of the formula of step (b) requires ethanol, isopropanol or propanol and the specification (e.g., paragraph [0038] as reproduced in part supra) fails to remedy the ambiguity. Claims 2, 3, 20, 21, 27, 28, 39, 42, 48, 49 and 55 are included in this rejection because they depend from claim 1 and also because they do not remedy the noted ambiguity. For purposes of applying prior art the broadest reasonable interpretation of recitation in the alternative has been employed.
Claim 48 recites repetition on an ongoing basis. It is unclear what timeframe is encompassed by an ongoing basis and the specification fails to remedy the ambiguity.
Response to Arguments: Claim Rejections - 35 USC § 112(b)
Applicant’s argument at page 16 that the amendments resolve the rejections has been fully considered but is not persuasive with regard to claim 48.
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 of this title, 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 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.
Claims 1-3, 20, 48, 49 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Pressley et al. (US 2015/0034117, published February 5, 2015, of record) as evidenced by Sigma “Maleic acid” and “4,7,10-Trioxa-1,13-tridecanediamine,” of record in view of Kim et al. (KR 2003-0003970 A, published January 14, 2003, as evidenced by the Google translation, of record); Hawkins et al. (US 2011/0229430, published September 22, 2011, of record); and Flohr (WO 2017/096063, filed December 1, 2016 and claiming priority to December 1, 2015, of record) as evidenced by Sigma “Maleic acid” and “4,7,10-Trioxa-1,13-tridecanediamine,” of record.
Pressley teaches compositions that repair and/or strengthen damaged hair, the compositions (formula of step (b)) have a neutral pH (pH = 7) or a pH of about 3 to 12, preferably about 5 to 8 and comprise about 0.01 to 50 wt% of one or more binding agents (title; abstract; claims, in particular 1, 9, 10, 28-30; paragraphs [0012], [0014], [0021], [0045]-[0048], [0100]-[0101], [0201]-[0202], [0216]-[0217]), as required by instant claim 3. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. For example, the binding agent has the structure (claims 9, 29; paragraph [0101]):
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which is maleic acid / calcium salt thereof (as evidenced by Sigma) or maleic acid in combination with for example 4,7,10-trioxa-1,13-tridecanediamine (as evidenced by Sigma). The compositions may further comprise cosmetically acceptable excipients inclusive of water, humectants, carriers, pH adjusting agents, buffers or/and hair conditioning agents; in some embodiments, the compositions contain the binder and water (carrier) (claim 10; paragraphs [0104]-[0105], [0127], [0136]). Hair conditioning agents may be present from about 0.1 to 5 wt% (paragraph [0125]).
Pressley further teaches methods comprising a first step of applying a first formulation comprising a reducing agent inclusive of thioglycolic acid prior to application of the binding agent (claims 18-19; paragraphs [0189]-[0202]).
Pressley further teaches methods comprising a first step of applying a first formulation comprising a hair coloring agent prior to application of the binding agent (claims 24-27; paragraphs [0203]-[0217]). The hair dying process may be followed by a rinse; hair dyes include those sold by L’Oreal (commercially available) which may be left on the hair for about 35 to 40 minutes (waiting time) and usually comprise monoethanolamine as an alkalizing agent (paragraphs [0205], [0207]; Example 6), as required by instant claim 20. The binding agent is typically applied on the same day as the coloring treatment or may be applied later (paragraph [0210]). Alternatively, the binding agent may be added to the hair coloring agent prior to application (claim 24; paragraph [0209]).
Pressley further teaches the binding agent can be applied each time the hair is washed or daily or weekly (4 times per month) (paragraph [0019]), as required by instant claim 48. The binding agent can be applied to wet or dry hair and left on the hair for as little as 10 seconds or up to about 30 minutes (paragraphs [0181], [0186]).
Pressley does not teach applying a formula of pH > 7 comprising maleic acid or/and itaconic acid in a carrier consisting essentially of (construed as equivalent to "comprising" consistent with MPEP 2111.03 III) water and substantially free (meaning less than about 1% as defined in paragraph [0022] of the instant specification) of alcohol and further comprising about 1 to 5 wt% of a fatty alcohol and Pressley does not teach the carrier of formula (b) is ethanol, isopropanol, propanol as required by claim 1.
Pressley does not teach 0.01 to 30% of maleic or/and itaconic acid as required by claim 2.
Pressley does not teach the fatty alcohol is inter alia stearyl or/and cetyl alcohol as required by claim 49.
Pressley does not teach drying with a device for 1 to 60 minutes as required by claim 55.
These deficiencies are made up for in the teachings of Kim, Hawkins and Flohr.
Kim teaches a hair dying composition obtained by blending a hair dying agent comprising oxidation dye precursors (carrier that is not identical) with 1 to 20 wt% of maleic acid, thereby reducing hair damage after dying (title; abstract; claims), as required by instant claim 2. The hair dye composition may further comprise monoethanolamine or/and conditioning agents (page 2, 5th full paragraph). The composition can have a pH ranging from weak acid to alkali (pH > 7) such as about 10 as exemplified (page 2, 6th full paragraph and examples). The composition is applied to the hair for 20 to 40 minutes (waiting time), and then is rinsed (page 2, 7th full paragraph).
Hawkins teaches cosmetic compositions and a method for extending the color retention of color-treated hair (title; abstract; claims). In example 2, grey hair was colored using a commercial hair color, allowed to develop for 25 minutes (waiting time), rinsed until the water became clear and either air dried for 30 minutes or damp dried with a paper towel prior to application of the cosmetic compositions; the hair was subsequently damp dried with a paper towel and blown dry for 10 minutes, as required by instant claim 55. The cosmetic compositions may further comprise humectants such as propylene glycol (paragraph [0072]) or/and conditioning agents such as cetearyl alcohol in amounts ranging from about 0.0001 to 40 wt% (paragraph [0073]), as required by instant claim 49.
Flohr teaches a method for treating hair comprising the application of a first composition that may have a pH from 7 to 14 comprising in a cosmetically acceptable carrier 0.1 to 25 wt% of one or more linkers inclusive of:
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(4,7,10-trioxa-1,13-tridecanediamine as evidenced by Sigma) and applying to the hair a second composition that may have a pH from 0 to 7 comprising in a cosmetically acceptable carrier 0.1 to 25 wt% of one or more electrophiles inclusive of:
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(maleic acid as evidenced by Sigma); all numerical amounts are understood to be modified by the word “about” (title; abstract; pages 3-4, 6 and 14-17; claims). Linkers comprising terminal amino groups can bond with carboxylic groups of the hair proteins (pages 12 and 15) linkers comprising carboxylic groups can bond with the amino groups of hair proteins (pages 12 and 17). The method prevents hair breakage (pages 45-48 and in particular paragraph bridging pages 48-49). Flohr further teaches the first and/or second composition may further comprise one or more solvents selected from the group inclusive of water, ethanol, propanol or/and isopropanol (pages 29-30). Flohr further teaches an aqueous carrier consisting essentially of water and substantially free of alcohol and an aqueous-alcoholic carrier comprising water and an alcohol selected from the group consisting of ethanol, isopropanol or/and propanol (page 35, 1st and 2nd full paragraphs). The first and/or second composition may further comprise 0.05 to 20 wt% conditioning agent inclusive of fatty alcohols (page 33, 3rd and 4th full paragraphs). The first and/or second composition may further comprise oxidative dye precursors (pages 20-23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Pressley comprising one or more binding agents to comprise solvents inclusive of ethanol, propanol or/and isopropanol as taught by Flohr in order to provide a carrier for the delivery of the binders. There would be a reasonable expectation of success because the compositions of Pressley may further comprise excipients inclusive of carriers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the hair dying composition of Kim comprising 1 to 20 wt% of maleic acid and having a pH ranging from weak acidic to alkali (pH > 7) for the first formulation comprising a hair coloring agent in the methods of Pressley in view of Flohr comprising a first step of applying the first formulation prior to the application of the binding agent because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. There would be a reasonable expectation of success because Pressley does not delimit the content of the hair coloring agents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair dying composition of Pressley in view of Kim to further comprise solvents inclusive of water or/and to further comprise a carrier consisting essentially of water and substantially free of alcohol as taught by Flohr in order to provide an appropriate carrier to deliver the dye. There would be a reasonable expectation of success because Flohr teaches such carriers are suitable for compositions comprising maleic acid in combination with oxidative dye precursors.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair dying composition of Pressley in view of Kim to further comprise 0.05 to 20 wt% of conditioning agents inclusive of fatty alcohols as taught by Flohr in order to impart conditioning benefits to the hair. There would be a reasonable expectation of success because Flohr teaches such conditioning agents are suitable for compositions comprising maleic acid in combination with oxidative dye precursors.
Regarding the configuration of the formulae to react with amine and carboxylic acid groups on hair as required by claim 1, because the combined teaching of the prior art render obvious the same ingredients as instantly claimed, it is presumed that the compositions of the prior art are also “configured” as claimed. In further support of this presumption, Flohr teaches linkers comprising terminal amino groups can bond with carboxylic groups of the hair proteins (pages 12 and 15) and Flohr teaches linkers comprising carboxylic groups can bond with the amino groups of hair proteins (pages 12 and 17).
Regarding claim 20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a hair dye such as those sold by L’oreal (commercially available) as taught by Pressley for the oxidation dye component of the hair dying composition of Pressley in view of Kim and Flohr for the convenience thereof.
Regarding claim 48, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the methods of Pressley in view of Flohr and Kim each time the hair is washed or daily or weekly as taught by Pressley because the methods repair and/or strengthen damaged hair while also redepositing color.
Regarding claim 49, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the conditioning agent of the binder agent compositions of Pressley in view of Flohr and of the hair dying compositions of Pressley in view of Kim and Flohr to comprise conditioning agents such as cetearyl (mixture of cetyl and stearyl) alcohol as taught by Hawkins because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. There would be a reasonable expectation of success because Pressley teaches the compositions may further comprise hair conditioning agents and because Kim teaches the compositions may further comprise conditioning agents.
Regarding claim 55, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the methods of Pressley in view of Flohr and Kim to comprise the steps drying the colored hair after rinsing out the dye with a paper towel or with a blow drier for 10 minutes as taught by Hawkins in order to remove residual water prior to the application of the binding agent. There would be a reasonable expectation of success because Pressley teaches the binding agent need not be immediately applied, rather, it may be applied on the same day or even later and it may be applied onto wet or dry hair.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Pressley et al. (US 2015/0034117, published February 5, 2015, of record) as evidenced by Sigma “Maleic acid” and “4,7,10-Trioxa-1,13-tridecanediamine,” of record in view of Kim et al. (KR 2003-0003970 A, published January 14, 2003, as evidenced by the Google translation, of record); Hawkins et al. (US 2011/0229430, published September 22, 2011, of record); and Flohr (WO 2017/096063, filed December 1, 2016 and claiming priority to December 1, 2015, of record) as evidenced by Sigma “Maleic acid” and “4,7,10-Trioxa-1,13-tridecanediamine,” of record as applied to claims 1-3, 20, 48, 49 and 55 above, and further in view of Lechner et al. (WO 2016/058749 A1, published April 21, 2016, as evidenced by US 2017/0252291, of record).
The teachings of Pressley, Kim, Hawkins and Flohr have been described supra.
They do not specifically teach a method wherein prior to the application of (a) the hair is treated with a thioglycolic acid containing composition as required by claim 21.
This deficiency is made up for in the teachings of Lechner.
Lechner teaches a method for simultaneous permanent shaping and dyeing of keratin fibers in which first a waving is carried out by means of agent MI comprising at least one keratin reducing compound inclusive of thioglycolic acid and subsequently an oxidative dying is carried out by means of an agent M2; the process leads to only small or no damage to the hair (title; abstract; claims; paragraphs [0021]-[0022], [0100]-[0103], [0109]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the methods of Pressley in view of Kim, Hawkins and Flohr comprising a first step of applying the hair dying composition of Pressley in view of Kim and Flohr prior to the application of the binding agent of Pressley in view of Flohr to further comprise a pre-step of shaping the hair carried out by means of an agent comprising at least one keratin reducing compound inclusive of thioglycolic acid as taught by Lechner in order to simultaneously shape and dye keratin fibers and to reduce damage to the hair. There would be a reasonable expectation of success because Pressley contemplates a method wherein the binding agent is applied after a formulation comprising a reducing agent comprising thioglycolic acid.
Claims 27, 28 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Pressley et al. (US 2015/0034117, published February 5, 2015, of record) as evidenced by Sigma “Maleic acid” and “4,7,10-Trioxa-1,13-tridecanediamine,” of record in view of Kim et al. (KR 2003-0003970 A, published January 14, 2003, as evidenced by the Google translation, of record); Hawkins et al. (US 2011/0229430, published September 22, 2011, of record); and Flohr (WO 2017/096063, filed December 1, 2016 and claiming priority to December 1, 2015, of record) as evidenced by Sigma “Maleic acid” and “4,7,10-Trioxa-1,13-tridecanediamine,” of record as applied to claims 1-3, 20, 48, 49 and 55 above, and further in view of Washington et al. (US 2015/0174027, published June 25, 2015, of record).
The teachings of Pressley, Kim, Hawkins and Flohr have been described supra.
They do not teach glycine / sodium hydroxide as required by claim 27.
They do not teach sodium carbonate / sodium hydrogen carbonate, sodium tetraborate / sodium hydroxide, sodium bicarbonate / sodium hydroxide or ammonium chloride / ammonia as required by claim 28.
They do not teach capryl alcohol as required by claim 42.
These deficiencies are made up for in the teachings of Washington.
Washington teaches a method for shaping keratin fibers using an amine or diamine (title; abstract; claims). The compositions may have a pH from about 6 to 10 and may comprise a buffering agent for controlling the pH selected from glycine/sodium hydroxide; sodium carbonate/sodium hydrogen carbonate, sodium tetraborate/sodium hydroxide; sodium bicarbonate/sodium hydroxide; ammonium chloride/ammonia (paragraph [0081]), as required by instant claims 27, 28. The compositions may further comprise a conditioning agent, or a hair conditioning agent; in at least one embodiment the conditioning agent is a fatty alcohol selected from the group consisting of capryl alcohol (C10), lauryl alcohol (C12), stearyl alcohol (C18), cetyl alcohol (C16), myristyl alcohol (C14), palmitoleyl alcohol (C16-C18), and mixtures thereof (paragraphs [0059], [0065], [0071]), as required by instant claim 42.
Regarding claims 27, 28, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the binder agent compositions of Pressley in view of Flohr and the hair dying compositions of Pressley in view of Kim and Flohr to further comprise buffering agents inclusive of glycine / sodium hydroxide or sodium carbonate / sodium hydrogen carbonate as taught by Washington in order to adjust the pH of the respective compositions. There would be a reasonable expectation of success because Pressley teaches the compositions may further comprise pH adjusting agents or/and buffers and because the pH ranges of both Pressley and Kim overlap the range of Washington.
Regarding claim 42, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the conditioning agent of the binder agent compositions of Pressley in view of Flohr to comprise conditioning agents such as capryl alcohol as taught by Hawkins simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. There would be a reasonable expectation of success because Pressley teaches the compositions may further comprise hair conditioning agents.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Pressley et al. (US 2015/0034117, published February 5, 2015, of record) as evidenced by Sigma “Maleic acid” and “4,7,10-Trioxa-1,13-tridecanediamine,” of record in view of Kim et al. (KR 2003-0003970 A, published January 14, 2003, as evidenced by the Google translation, of record); Hawkins et al. (US 2011/0229430, published September 22, 2011, of record); and Flohr (WO 2017/096063, filed December 1, 2016 and claiming priority to December 1, 2015, of record) as evidenced by Sigma “Maleic acid” and “4,7,10-Trioxa-1,13-tridecanediamine,” of record as applied to claims 1-3, 20, 48, 49 and 55 above, and further in view of Bonauer et al. (US 2015/0053228, published February 26, 2015, of record).
The teachings of Pressley, Kim, Hawkins and Flohr have been described supra.
They do not teach malic, fumaric and citric acid as required by claim 39.
This deficiency is made up for in the teachings of Bonauer.
Bonauer teaches hair coloring compositions having a pH of 3 to 11 and comprising a pH reducing agent selected from the group inclusive of citric, fumaric or/and malic acids (title; abstract; claims, in particular 1, 7, 10, 11, 13; paragraphs [0014], [0027]-[0034], [0066]-[0069], [0108]-[0110]). It is believed that when the pH of a hair coloring composition comprising oxidative dyes is lowered, the reaction rate of color formation may become either lower or higher depending upon the nature of the dye precursors (paragraph [0031]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair dying compositions of Pressley in view of Kim and Flohr to further comprise pH reducing agents selected from the group inclusive of citric, fumaric and malic acids taught by Bonauer in order to adjust the pH. There would be a reasonable expectation of success because the pH ranges of both Pressley and Kim overlap the range of Bonauer. One would have been further motivated to do so in order to adjust / optimize the reaction rate of color formation of any particular oxidative dye precursor.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments at pages 18-24 of the Remarks have been fully considered but they are not persuasive. Applicant’s arguments at pages 24-29 drawn to withdrawn claims are moot.
Applicant’s position that Pressley does not anticipate a method as instantly claimed as articulated at page 18 is acknowledged.
Applicant’s position that Kim does not anticipate a method as instantly claimed as articulated at pages 18-19 is acknowledged. Applicant’s citation to the examples of Kim as comprising a different carrier than one consisting essentially of water and substantially free of alcohol as newly recited in claim 1 is acknowledged but unpersuasive because the compositions of Kim are not limited to the exemplary embodiments thereof (see MPEP 2123) and because claim 20 requires the composition of claim 1 to be combined with a coloring composition (which will comprise additional carriers). Nonetheless, the rejections of record have been updated as necessitated by Applicant’s amendments.
Applicant’s position that the newly claimed aqueous carrier is essential as articulated at page 20 is acknowledged but not found persuasive because Applicant has already noted that the exemplary hair coloring compositions of Kim comprise isopropanol. That US 7,803,198 allegedly discusses alcohols is irrelevant.
Applicant’s position that the combination of Pressley and Kim is arbitrary as articulated at pages 20-21 is acknowledged but not found persuasive because Pressley expressly teaches practice of the method thereof after coloring the hair and Kim teaches coloring the hair. The obviousness of the combination is self-evident.
Applicant’s position that one would not combine Hawkins and Flohr with Pressley and Kim as articulated at pages 21-22 is acknowledged but not found persuasive because Hawkins, like Pressly and Kim, is drawn to hair coloration and Flohr, like Pressley, is drawn to mitigating hair damage with maleic acid and diamines as instantly claimed.
Applicant’s position that Flohr does not disclose features of claim 1 at pages 22-23 is acknowledged but not found persuasive because Flohr in fact discloses a multitude of features of the generic method recited in claim 1. Applicant’s rehashed commentary regarding the pH values of Flohr remains unpersuasive for all of the many reasons of record. Applicant has already been apprised of how numerical ranges are treated as a matter of law.
Applicant’s position that Pressley does not disclose a fatty alcohol at pages 23-24 is acknowledged but not found persuasive because Pressley embraces the presence of conditioning agents and the selection of any art recognized agent is presumptively obvious. See MPEP 2144.07.
Applicant’s conclusion at page 24 that one must take all of the applied documents, in a joint aspect, to reach claim 1 is acknowledged and is correct. This is the basis for all obviousness rejections set forth in 35 USC 103. See at least MPEP 2141-2144. Therefore, the rejections over Pressley are properly maintained in modified form as necessitated by Applicant’s amendments.
Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which they believe they are entitled to the most detailed that they are willing to accept.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. 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.
/ALISSA PROSSER/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619