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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/26/2025 has been entered.
Applicants' arguments, filed 08/26/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Rejections - 35 USC § 103--Previous
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.
Claim 31-32, 34, 36-38, 46, 48-51, 58-61 remain rejected under 35 U.S.C. 103 as being unpatentable over Knohl et al., (US 3,997,659, cited in IDS) in view of Deconinck (US 2015/0056151).
Knohl et al. teaches hair bleaching compositions containing arginine, a peroxide compound and a bleaching accelerator (Abstract).
The compositions comprise “from about 0.1 to about 20% by weight” of the arginine; “from about 1 to about 10% by weight of a water-soluble peroxide compound”; and “from about 1 to 10% by weight of a water-soluble hair bleaching accelerator”, wherein the composition has “a pH of from about 8 to about 11 in aqueous solution” (col. 2, lines 24-34).
The peroxide component “is preferably hydrogen peroxide” (col. 4, lines 11-12) and may “also include sodium perborate” (Id. lines 20-22), as per claims 32, 34.
Preferred bleaching accelerators include “[a]mmonium peroxydisulfate, the potassium and sodium peroxydisulfates and potassium peroxydiphosphate”, as well as “well-known hair bleaching accelerating agents” (col. 4, lines 28-45).
The compositions include peroxide-stable buffers for maintaining pH including “ortho-, meta-, tri-polyphosphate salts” (col. 4, lines 50-59), as per claims 40-45.
The prior art teaches a specific embodiment comprising arginine hydrochloride, 4% sodium tripolyphosphate (linear polyphosphate derivative) , 6% ammonium peroxydisulfate (peroxygenated salt), 3% hydrogen peroxide (oxidizing agent), and water (col. 5, Example I).
Here, the at least one oxidizing agent falls withing the claimed range of from 2% to 15% by weight, the at least one polyphosphorus derivative falls within the claimed range of from 2.5% to 10% by weight, and the at least one peroxygenated salt falls within the claimed range of from 0.1% to 10% by weight.
Concerning claims 48 and 58, Knohl et al. teaches, “it is an object of this invention to provide bleaching compositions which do not have an ammonia or amine odor and which are especially suited for use on growing hair” (col. 2, lines 10-13). Accordingly, it would have been obvious for the compositions to be free of ammonia, as per claims 48 and 58.
Knohl et al. does not teach a bicarbonate or a bicarbonate-generating system.
Deconinck teaches methods and compositions for “bleaching keratin fibers” comprising at least one basifying agent (Abstract).
Bleaching agents include mixtures of oxidizing agents selected from perborates, persulfates, and hydrogen peroxide (p. 3, para. [0072]), as per claim 34.
The compositions utilize “sodium bicarbonate” (p. 2, para. [0043]; clms. 36-38) as basifying agent for raising the pH of the compositions (see p. 1, para. [0003]). The basifying agents may be present “from 0.1% to 30% by weight” (p. 3, para. [0063]), as per claim 31.
The compositions further comprise “one or more water-soluble organic solvents, e.g. benzyl alcohol, which may be present from “0.1% and 35% by weight”, (p. 3, paras. [0068-0069]), as per claim 51 (benzyl alcohol has a Hansen solubility parameter δH value greater than 0 and less than 16 MPA½); stabilizers aqueous hydrogen peroxide, e.g. “alkali metal or alkaline-earth metal pyrophosphate” (p. 3, para. [0075]), which would have included sodium pyrophosphate, as per claims 40-46, present “from 0.0001% to 5% by weight” (p. 3, para. [0076]), as per claim 47; nonionic and anionic surfactants (p. 7, para. [0170]), as per claim 48, present from 0.1% to 50% by weight (p. 7, para. [0172]); fatty substances chosen from triglycerides, non-silicone waxes (p. 4, para. [0089]), present “in a content greater than or equal to 10% by weight” (p. 4, para. [0087]) as per claim 49-50.
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add a bicarbonate, e.g. sodium bicarbonate, to the compositions of Knohl et al. since the compositions of Knohl et al. have an alkaline pH, and sodium bicarbonate is used in the prior art as a basifying agent for increasing or maintaining an alkaline pH of compositions, as taught by Deconinck. The artisan would have had a reasonable expectation of success with the addition insofar as Knohl et al. teaches use of carbonates for modifying pH (col. 4, lines 54-57).
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use (see MPEP 2144.07). Also, established precedent holds that it is generally obvious to add known ingredients to known compositions with the expectation of obtaining their known function (see 2144.06).
It would have also been obvious to add the organic solvents, surfactants, alkali metal pyrophosphates, and fatty substances of Deconinck to the compositions of Knohl, based on their recognized suitability for their intended use in hair bleaching compositions. The artisan would have had a reasonable expectation of success with the additions insofar as Knohl et al. teaches, “The present compositions can contain various other adducts to provide a more cosmetically acceptable product” (col. 5, lines 21-23).
Nonstatutory Obvious-type 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
1) Claims 31-32, 34, 36-38, 46, 48-51, 58-61 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 28-33, 35-48 of copending Application No. 16/468,351 in view of Knohl et al., (US 3,997,659, cited in IDS). Both applications claim composition for lightening hair or keratin comprising an oxidizing agent, e.g. hydrogen peroxide, bicarbonate or a bicarbonate generating system, a polyphosphorus derivative, e.g. polyphosphate, and a pH less than or equal to 11. The ‘351 application differs from the instant claims insofar as it does not claim a peroxygenated salt.
Knohl et al., discussed above, teaches hair lightening compositions comprising a “bleaching accelerator” in addition to peroxide (abstract) for improving the performance of the composition (col. 28-45), such as potassium peroxydiphosphate (Id.), which is a peroxygenated salt. Accordingly, it would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add a peroxygenated salt for the advantage of improving the performance of the compositions, as taught by Knohl et al.
This is a provisional nonstatutory double patenting rejection.
2) Claim 31-32, 34, 36-38, 46, 48-51, 58-61 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 30-36, 40-48 of copending Application No. 16/468,354 (now US Patent 12064500). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim composition for lightening hair or keratin comprising an oxidizing agent, e.g. hydrogen peroxide, bicarbonate or a bicarbonate generating system, a polyphosphorus derivative, e.g. polyphosphate, at least one peroxygenated salt, and a pH less than or equal to 11.
Response to Arguments
i) “Applicant reiterates that none of cited references recognize the unexpected lightening benefits of the claimed bicarbonates and/or a bicarbonate-generating systems in the claimed amounts” (p. 11). Applicant further continues reference the Declaration of Affiant Boris alleged to provide evidence of unexpected results. Applicant indicates that the claimed composition “synergistically provides good bleaching effects at pH values below those of traditional hair bleaching compositions” (p. 12)
However, as stated previously, Applicant’s results, demonstrating hair lightening effects, were not a difference in kind from what the prior art teaches insofar as the prior art compositions also demonstrate hair lightening effects. A demonstration of unexpected results requires the demonstration of a “difference in kind,” rather than a mere difference in degree. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005); See also In re Huang, 100 F.3d 135, 139 [40 USPQ2d 1685] (Fed. Cir. 1996) (holding that claimed ranges must “produce a new and unexpected result which is different in kind and not merely in degree from results of the prior art”).
Example 1 of Knohl et al. provides a composition wherein, the at least one oxidizing agent falls withing the claimed range of from 2% to 15% by weight, the at least one polyphosphorus derivative falls within the claimed range of from 2.5% to 10% by weight, and the at least one peroxygenated salt falls within the claimed range of from 0.1% to 10% by weight.
Affiant Boris postulated that the low quantities of peroxygenated salt provided an unexpected boost in bleaching power. However, affiant admits, “some improvement in bleaching would have been expected by the addition of a peroxygenated salt in a hair bleaching composition” (Declaration, p. 5, lines 1-3).
That peroxyganted salts function as booster for bleach would have reasonably been expected in view of Knohl et al. teaching, “The bleaching compositions disclosed herein can employ any of the well-known hair bleaching accelerating agents such as ammonium peroxydisulfate or alkali metal perxoydisulfates or any of the other commonly used in hair bleaching compositions . . .” (col. 4, lines 28-38). Because peroxygenated salts are known in the prior art as hair bleaching accelerating agents, the artisan would not have been surprised that Affiant’s peroxygenated salt boosted the bleaching of its compositions. Concerning amounts, Knohl et al. teaches a range of “about 1 to about 10%” for its bleaching accelerators (Id. lines 40-42), which is consistent with Affiant’s amounts of 0.9% and 4.38%.
Again, at the time of applicant’s filing, it was known that polyphosphates stabilize hydrogen peroxide (see Deconinck at p. 3, para. [0074]-[0075]). Accordingly, a boost in whitening from the addition of polyphosphate would have been expected.
Technological Background
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure Hansen et al., (US 2009/0108021). Hansen et al. is pertinent for teaching an “activated peroxide compound (such as hydrogen peroxide and a bicarbonate salt) (p. 1, para. [0011]). The reference teaches use of “sodium bicarbonate” as one of a group of “peroxide activators” (Id. at para. [0012]).
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Walter E. Webb
/WALTER E WEBB/Primary Examiner, Art Unit 1612