Notice of Pre-AIA or AIA Status
DETAILED ACTION
Status of the Claims
Claims 1-27, 34, 42, and 49 is cancelled. Claims 28-33, 35-41, 43-48 and 50 are pending in this application. Claim 48 remains withdrawn. Claims 28-33, 35-41, 43-47 and 50 are under examination.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/06/2025 has been entered.
Priority
The instant application, which is a national entry application of PCT/EP2017/083420 filed on 12/19/2017, which claims priority from the foreign application FR1662842 filed on 12/20/2016.
Rejections Withdrawn
The nonstatutory double patenting rejections over U.S. Patent Application No. 16/468,349, U.S. Patent Application No. 16/468,353, and US Patent 12064500 were previously withdrawn per Applicant’s filing of terminal disclaimers on 01/15/2025.
The 35 USC § 103 rejection over Richard B. Knohl and Arno Wahler is withdrawn per applicant’s arguments and amendments.
As these rejections are withdrawn, applicant’s arguments to these rejections are now moot.
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.
Scope of Enablement for polyphosphorous derivatives
Claims 28-33, 35-38, 41, 43-47 and 50 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for organic polyphosphorous derivative species phytic acid and the polyphosphonic acids (page 8 of specification) and the inorganic polyphosphorous derivative species that are inorganic alkali or alkaline metal salts of either polyphosphate or pyrophosphate, or polyphosphoric acid, does not reasonably provide enablement for all inorganic polyphosphorous derivatives and organic polyphosphorous derivatives even with the very broad definition provided on page 7 of the specification for “polyphosphorous derivatives”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. In claim 28, applicant provides a Markush group of inorganic polyphosphorous derivatives, and so, in regards to this only claim 50 is applicable as being open to a much wider range of possible compounds for all polyphosphorous derivatives. In claims 28 and 50, organic polyphosphorous derivatives is based on the specification definition on page 7. Note this definition only necessitates at least 2 phosphorous atoms bonded together by at least one linker that comprises at least one oxygen atom and/or at least one carbon atom. Further it states that if the linker of undefined type comprises at least one carbon atom then it may contain at least one nitrogen atom. The definition does not lay out how the various atoms are connected, limit the other types of atoms that could be present or define the types of groups that have to be present in the compound. This would allow a large number of diverse compounds having different properties/characteristics including oligo and polymeric DNA and RNA or a compound bound to two or more phospholipids to read on the claim as long as they contain at least two phosphorous atoms being linker by groups having at least one carbon and/or oxygen atom. There is no size or atom limit to the compounds as claimed. Claim 36 provides groups of the derivatives but not the compound as a whole. Claim 37 provides for a configuration with Y where it can be virtually any alkyl with phosphorous and other non-phosphorous atoms or a cyclic carbon-based radical without any indication of what types of cycles or how many (bicyclic, tricyclic, etc). Claim 38 utilizes the terms “organic polyphosphate derivatives” or “organic polyphosphonate derivatives” where “derivatives” would leave these compounds open to various other groups having additional structures, bonding patterns, and chemical makeup besides the multiple phosphate or phosphonate groups.
Allcock et al (The Journal of Organic Chemistry, 2020, volume 85, pages 14286-14297) teaches polyphosphazenes: phosphorous in inorganic-organic polymers (title). Allcock teaches “The methods of synthesis of these polymers allow access to property combinations not found in all-organic counterparts, and this provides pathways to new materials that are important in biomedical research, energy generation and storage, aerospace materials, and numerous other specialized applications (abstract). Allcock teaches in Future Trends that block copolymers that yield nanospheres with unusual shape are under development. Allcock teaches “However, from the viewpoint of phosphorus chemistry, it is clear that the unique properties imparted by this element (extraordinary side group diversity, a broad range of glass transition temperatures, ease of side group exchange, fire resistance, and many other unique characteristics) illustrate the role that phosphorus continues to play in advanced science and technology (Future Trends). Allcock teaches “the synthesis methods allow access to a broader range of applications than are typical of classical polymers. In this sense, the poly(organophosphazenes) comprise one of the fastest-growing classes of polymers based on any element in the periodic table” ( page 14286). Thus, novel phosphorous containing compounds are being made even beyond the date of applicant’s filing which have novel structures and properties.
Applicant’s own work does not provide compounds like polyphosphazenes. Although it does provide for the more known inorganic polyphosphate and pyrophosphates and their alkali or alkaline salts, and teachings of certain organic multi-phosphorous compounds which are phytic acid and the polyphosphonates, it does not provide for making various other compounds having different structures and properties that have yet to be made or where more work is recognized to be needed in the field.
One of skill in the art would be an inorganic or organic chemist.
Since the art recognizes the need for more work to make additional compounds including multiple phosphorous residues and the applicant has only provided for certain types of compounds in their specification, one of skill in the art would have to conduct undue experimentation in order to make and test new compounds that would have the phosphorous and other atoms as presented in applicant’s definition of polyphosphorous derivatives. One of skill in the art would have to design various configurations of the compounds, attempt the syntheses, characterize the compounds to see if they were successfully made and further test them to see if they would be functional for use. For this reason, the applicant has enablement for items previously enabled by the art and due to the species that applicant presents in the specification (inorganic polyphosphates, inorganic pyrophosphates, polyphosphoric acid, phytic acid, polyphosphonates), but is not enabled for the large and diverse genus of compounds that would be covered by these claims.
Written Description of “bicarbonate generating system”
Claims 28-29, 35-41, 43-47 and 50 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation of “bicarbonate generating system” is only defined as a system that generates bicarbonate in situ with one example of carbon dioxide in water. Thus, the definition is based on function and not structure and applicant only provides one example of a generating system with carbon dioxide and water. This would not describe the various compounds, enzymes, catalysts and/or chemical reactions that could create bicarbonate in situ. Thus, applicant does not define how the bicarbonate generating occurs with all particular chemicals/structures that could accomplish it or does not provide a sufficient number of species of generating systems that would provide ownership to this genus. Applicant does have adequate written support for bicarbonates that it provides and also for the bicarbonate-generating system of carbon dioxide in water (carbon dioxide and water leads to carbonic acid formation which then dissociates into bicarbonate anion).
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 28-29, 35-41, 43-47 and 50 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.
Claims 28 and 50 are indefinite for “bicarbonate generating system” as the specification only defines this by function and then provides only one example of carbon dioxide and water. As there are potentially many combinations of reactants, enzymes and catalysts that could create bicarbonate, it is unclear what the necessary structure(s) and/or reactions are in considering this limitation. For the purpose of compact prosecution if there is a combination of items that has the ability to generate bicarbonate then it will read on the limitation.
Claims 29, 35-41, 43-47 are rejected as being dependent on an indefinite claim without repairing the issue of indefiniteness.
Claim 37 is indefinite for the recitation of compounds I and II where the claim introduces them as “organic polyphosphorous derivatives”, which would mean these compounds would have to contain a carbon atom(s). Compounds I and II only contain P, O and M, which is H, alkali metal or alkaline metal. Thus, it is unclear if applicant means this claim to cover either inorganic or organic polyphosphorous derivatives or if one would only select compound III as it is the organic polyphosphorous derivative.
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 41 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. The lower endpoint of 0.5% in claim 41 for “at least one polyphosphorous derivative” is below the lower endpoint of 0.7% in claim 28, on which claim 41 depends. Thus, the claim is not further limiting of the composition of claim 28 in this respect. 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.
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 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.
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 28, 30-33, 35-41, 43, and 46-47 are rejected under 35 U.S.C. 103 as being unpatentable over CN103643485A (with English translation) and CN1405400A (with English translation).
The preamble recitation of “for lightening keratin materials” is to the intended use of the composition in claim 28. If the composition is provided by the prior art, it will be presumed capable of such a use.
CN ‘485 teaches a hydrogen peroxide pretreatment process with 7-8 g/L (0.7-0.8 wt%) of sodium pyrophosphate, 3-4 g/L (0.3 to 0.4 wt%) of alkyl polyoxyethylene ether (a nonionic surfactant and also an alcohol ether), 4-5wt% of sodium carbonate to adjust pH to 10 and 35 g/L (3.5 wt%) of hydrogen peroxide (abstract, claim 1 of CN ‘485 and embodiments 1-3). CN ‘485 is to an anti-felting finishing process for a knitted woolen sweater and to improve brightness of colors (abstract).
CN ‘485 does not teach bicarbonate, however, it does teach sodium carbonate, which is related as a carbonate and used to adjust pH of the composition.
CN ‘400 teaches modification of wool with using hydrogen peroxide (abstract). CN ‘400 teaches making treated fabric bright and vivid (abstract). CN ‘400 teaches sodium carbonate and sodium bicarbonate to adjust the pH to 7-10 (claims 6-7 of CN ‘400). Also see examples 1-4 of CN ‘400. In example 1, there seems to be 5 kg of hydrogen peroxide in 100 kg of wash which is 5 wt% of hydrogen peroxide. The pH is adjusted to 9 in examples.
One of ordinary skill in the art before the time of filing would have utilized sodium bicarbonate to adjust the pH of formulations having hydrogen peroxide to neutral to alkaline pH values by the teachings of CN ‘400 as an alternative or in addition to sodium carbonate as they are both seen for this purpose in CN ‘400 while CN ‘485 provides for sodium carbonate to adjust the pH also to an alkaline value of pH 10 in a composition that has hydrogen peroxide and sodium pyrophosphate in amounts of applicant’s claims. CN ‘485 provides for concentrations of sodium carbonate that one of ordinary skill in the art would apply to sodium bicarbonate based on the similar function in pH adjustment. Therefore, there was a reasonable expectation of success in combining the teachings of CN ‘485 and CN ‘400 to obtain formulations of hydrogen peroxide, a polyphosphorous compound (sodium pyrophosphate) and sodium bicarbonate pH adjuster with amounts corresponding to applicant’s claimed formulations and obtaining formulations useful to treat wool materials to increase brightness.
Claims 29 and 44-45 in addition to Claims 28, 30-33, 35-41, 43, and 46-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN103643485A, CN1405400A and Zaeska US20090317349A1.
CN ‘485 and CN ‘400 teach the claims as discussed above.
CN ‘485 and CN ‘400 do not teach the addition of an oil.
Zaeska teaches stabilized hydrogen peroxide compositions (abstract). Zaeska teaches a composition with 0.001 to 70% hydrogen peroxide, 0.005 to 75% of at least one lipophilic ingredient and at least one emulsifier (claim 12 of Zaeska, also paragraphs 15, 18-19). Zaeska provides for organic oil or fatty alcohol as a lipophilic ingredient (claims 13 and 14 of Zaeska). Zaeska provides for the use of phytic acid as an antioxidant (claim 16 of Zaeska). Zaeska teaches the form of oil in water emulsion (claim 17 of Zaeska). Zaeska example 1 provides for 6% hydrogen peroxide, 2.7% cetyl alcohol and 5% glyceryl stearate/PEG-100 stearate, which allows for 7.7% oils (lipophilic ingredient) (paragraph 27, see paragraphs 18-19). Zaeska teaches nonionic surfactant (claims 19 and 20 of Zaeska).
One of ordinary skill in the art before the time of filing would have seen stable formulations as in Zaeska as suitable forms for application of hydrogen peroxide and would have incorporated its ingredients/excipients into formulations motivated by CN ‘485 and CN ‘400 to make suitably stable hydrogen peroxide application forms for use as hydrogen peroxide is also the active ingredient in these references. The use of oil containing emulsion application forms of the formulations was provided in Zaeska as well as allowing for 6% or potentially up to 70% of hydrogen peroxide. Thus, there was a reasonable expectation of success in combining the teachings of the references to arrive at applicant’s claimed invention with 6% or more hydrogen peroxide and oils such as those in applicant’s claims with the expectation of a stable hydrogen peroxide formulation for use.
Claims 29, 44-45 and 50 in addition to Claims 28, 30-33, 35-41, 43, and 46-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN103643485A, CN1405400A and Tucker US 20050109981.
CN ‘485 and CN ‘400 teach the claims as discussed above.
CN ‘485 and CN ‘400 do not teach the separation of the hydrogen peroxide from the other ingredients, although the hydrogen peroxide is added last.
Tucker teaches a two part kit system that can have a pH in the range of 7-8 (abstract). Tucker’s products have hydrogen peroxide as an active (abstract and claims of Tucker). Tucker teaches “For example, hydrogen peroxide must be stored separately from the other ingredients prior to use, due to its high reactivity. This can be accomplished by packaging the formulation as a multi-part kit system (e.g., 2-part, 3-part or 4-part kits). For example, a two-part kit system can be used, comprising a relatively inert component (Part A), and an active component (Part B) that comprises the reactive compound.” (paragraph 9). Tucker teaches sodium bicarbonate and other bicarbonates as inorganic bases that may be used in addition to other options like potassium acetate (claim 16 of Tucker). Tucker teaches two containers that are pre-packaged (paragraph 9). Tucker teaches 0.5-60% hydrogen peroxide in formulations (claim 7 of Tucker, formulation 7 and paragraph 148 with two parts and paragraph 155). Tucker teaches fatty alcohol for part A, which is the formulation meant to be mixed with part B (claims 20 and 25 of Tucker). Fatty alcohol is noted to stabilize the foam (paragraph 74).
One of ordinary skill in the art before the time of filing would have considered keeping the hydrogen peroxide separate from the other ingredients due to its high reactivity by the combined teachings of Tucker with CN ‘485 and CN ‘400. Tucker also provides for the addition of fatty alcohols as foam stabilizers into such application formulations (allows for application of the composition for use) with hydrogen peroxide and allows for a range of hydrogen peroxide that overlaps with the applicant’s claims (MPEP 2144.05). Thus, there was a reasonable expectation of success in combining the teachings of the prior art to arrive at the claimed compositions and products with expectations of a deliverable form of hydrogen peroxide and a kit product where the hydrogen peroxide is kept from reacting with other ingredients until use.
Conclusion
No claims are allowed.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613