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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 12, 2025 has been entered.
Status of Claims
Claims 1-2, 4-21, 23-26, 44-50, 52-54 and 57-62 are currently pending. Claims 61 and 62 are newly added. Claims 3, 22, 27-43, 51 and 55-56 are canceled. Claims 1, 15, 47-48 and 60 are amended.
Claims 44-50, 52-54 and 57-59 are withdrawn as being drawn to a nonelected invention. Claims 1-2, 4-21, 23-26 and 60-62 are examined on their merits.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claims 1-2, 4-7 and 9-26 under 35 U.S.C. 103 as being unpatentable over Knohl et al. US 3,997,659 (12/9/2020) is withdrawn.
In light of the amendments to the claims the rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Knohl et al. US 3,997,659 (12/9/2020) as applied to claims 1-2, 4-7 and 9-26 and further in view of Lim et al. US 2005/0005370 (1/13/2005) is withdrawn.
New Rejections
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.
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 1-2, 4-7, 9-21, 23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Knohl et al. US 3,997,659 (12/9/2020) in view of Larkin et al. US 6872228 (3/29/2005).
Claim Interpretation
Claim 1 is being interpreted to require the presence of all of metasilicate, ammonium hydroxide and ethanolamine.
Knohl teaches a hair care composition for bleaching hair that comprises hydrogen peroxide and an arginine compound. (See Abstract and claim 2). The composition also comprises 2% sodium metasilicate as called for in claims 2 and 16, which is a metasilicate as called for in instant claims 1, 9 and 15. (See Example 4). 2% falls within the about 1 to about 3% metasilicate called for in instant claim 1. Hydrogen peroxide is called for in instant claim 5 and it is an oxidizing agent as called for in instant claim 1. Hydrogen peroxide is present in an amount of 3% (See Examples 1-II). 3% falls within the about 0.1 to about 15% oxidizing agent as called for in instant claim 1. 3% falls within the about 3 to about 12% oxidizing agent as called for in instant claim 6.
Arginine carbonate can be the arginine compound (called for instant claims 1 and 17) as called for in instant claims 14 and 21. (See Example II). Arginine carbonate is an arginine salt as called for in instant claims 13 and 20. Arginine carbonate is present in an amount of 9%. (See Examples I-II). 9% falls within the about 0.1 to about 10% called for in instant claims 11 and 18. 9% also falls within the about 0.1 to about 10% called for in instant claim 1. Knohl also comprise ethanolamine and ammonium hydroxide as called for in claims 1, 15 and 25. (See col. 4 lines 45-50 and Knohl claim 3).
Knohl teaches that with the presence of the arginine, there is less damage to the hair and scalp and no irritation to the skin during the process of bleaching the hair. (See cols. 1-2) Thus, this is an amount that soothes the scalp during the coloring process as called for in instant claims 1, 12 and 19. Knohl teaches that its composition has pH of about 8 to about 11 which overlaps with the about 9 to about 12 called for in instant claim 1. (See col. 4, lines 45-60). Knohl teaches that peroxide containing hair bleaches are used in the basic pH range and pH adjustors such as the alkali metal hydroxides, ethanolamine and the like can be used to adjust the pH. (See col. 4, lines 46-50).
Knohl teaches a kit in which the solutions are kept separate for mixing just before using. (See col. 5, lines 25-47). Knohl teaches a dye as called for in instant claims 7 and 23, and a conditioning agent as called for in claims 10 and 26. (See col. 3, lines 1-27 and col. 5, lines 20-25). The composition is a liquid solution as called for in instant claim 4, and is used on the scalp while containing the arginine as called for in claim 19. (See Examples).
Knohl teaches ammonium hydroxide and monoethanolamine can be used in its composition. Specifically, Knohl teaches that peroxide containing hair bleaches are used in the basic pH range and pH adjustors such as the alkali metal hydroxides, ammonium hydroxide, ethanolamine and the like can be used to adjust the pH. (See col. 4, lines 46-50).
While Knohl teaches ammonium hydroxide and monoethanolamine, it does not teach specific amounts of ammonium hydroxide and monoethanolamine. This deficiency is made up for with the teachings of Larkin et al.
Larkin et al. (Larkin) teaches a hair care composition for bleaching hair with a rheology adapted to maintain the product in the reservoir or an applicator until application. (See Abstract). The composition comprises a peroxide based developer, a powder activator containing a persulfate oxidizing system and an alkalizing agent. (See column 1, lines 5-25). The alkalizing agent can be ammonium hydroxide and it can be monoethanolamine. (See Larkin claim 3). The alkalizing agent can be present in an amount of about 3 to about 15%. (See Larkin claim 4). 3 to about 15% ammonium hydroxide overlaps with the from about 2 to about 4% ammonium hydroxide called for in instant claims 1 and 15. 3 to about 15% overlaps with the from about 2 to about 5% monoethanolamine called for in instant claims 1 and 15.
With respect to claim 12 and claim 19’s language of “when the system is used on a scalp of a mammal having the keratin-containing fibers” this is language of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, as it is in this instance, then it meets the claim.
One of ordinary skill in the art before the earliest effective filing date would have followed the teachings of Knohl to combine 2% sodium metasilicate, 9% arginine carbonate, and ammonium hydroxide in one solution and 3% hydrogen peroxide in another solution so that they can be stable until they are combined and applied to the scalp for bleaching in order to have a bleaching composition that was not damaging on hair and scalp and that required less peroxide and ammonium hydroxide then previous bleaching compositions while still being effective.
One of ordinary skill in the art before the earliest effective filing date making the Knohl composition of 2% sodium metasilicate, 9% arginine carbonate, and ammonium hydroxide in one solution and 3% hydrogen peroxide in another solution would have make the amount of ammonium hydroxide about 3% to about 15% as taught by Larkin and would make the amount of monoethanolamine about 3% to about 15% as taught by Larkin in light of Larkin’s teachings that these were effective alkanizing amounts of ammonium hydroxide and monoethanolamine in a hair bleaching composition.
With respect to the increased lightening of the keratin-containing fibers called for in claim 1, the prior art references are silent with respect to the exact lightening properties. However, the prior art references teach all of the claimed components in the same amounts as those claimed (at the overlaps of the ranges) and the prior art teaches using these same components in the same method. Specifically, the prior art teaches 2% sodium metasilicate, 9% arginine carbonate, about 2 to about 15% ammonium hydroxide, about 2 to about 15% monoethanolamine in one solution and 3% hydrogen peroxide in another solution so that they can be stable until they are combined and applied to the scalp for bleaching.
Paragraph [0079] of the instant specification indicates that the combination of sodium metasilicate, ammonium hydroxide and ethanolamine when combined with 3% hydrogen peroxide consistently demonstrates keratin lightening. The combination of 2% sodium metasilicate, 9% arginine carbonate, ammonium hydroxide, ethanolamine being combined with 3% hydrogen peroxide is exactly what the prior art teaches. Since Applicants assert that the combination of sodium metasilicate, ammonium hydroxide and ethanolamine when combined with 3% hydrogen peroxide consistently demonstrates increased lightening, than the prior art teaches the same thing (same components in the same components being used in the same way) that Applicants assert consistently demonstrates increased lightening. Consequently, the prior art must have increased lightening too.
Claims 8, 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Knohl et al. US 3,997,659 (12/9/2020) as applied to claims 1-2, 4-7, 9-21, 23 and 26 in view of Larkin et al. US 6872228 (3/29/2005) and further in view of Lim et al. US 2005/0005370 (1/13/2005).
The teachings of Knohl in view of Larkin are described supra. Knohl teaches that peroxide containing hair bleaches are used in the basic pH range and pH adjustors such as the alkali metal hydroxides, ethanolamine and the like can be used to adjust the pH. (See col. 4, lines 46-50). Knohl in view of Larkin does not teach ammonium carbonate. This deficiency is made up for with the teachings of Lim et al.
Lim et al. (Lim) teaches compositions for the oxidative dying of keratin fibers. (See Abstract). Lim teaches that pH modifiers can include ammonium hydroxides and ammonium carbonates and that ammonium carbonate is even a preferred pH modifier. (See [0088]). Lim thus teaches ammonium carbonate as called for in instant claims 8, 24 and 25.
One of ordinary skill in the art at the earliest effective filing date making the composition of Knohl in view of Larkin of 2% sodium metasilicate, 9% arginine carbonate, about 2 to about 15% ammonium hydroxide and about 2 to about 15% ethanolamine in one solution and 3% hydrogen peroxide in another solution would have added ammonium carbonate in light of Lim’s teaching that it is a preferred pH modifier for oxidative keratin dyes. There is a reasonable expectation of success in light of Knohl’s teaching that pH modifiers are useful in its invention.
Allowable Subject Matter
Claims 60, 61 and 62 contain allowable subject matter. The prior art does not teach or suggest a system in which the ammonium hydroxide is present in an amount of about 2.2 wt%, the monoethanolamine is present in an amount of about 2 wt% and the metasilicate is present in an amount of from about 1 to about 2 wt%.
Claims 60, 61 and 62 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
The comments and arguments dated October 24, 2025 have been reviewed and carefully considered.
Applicants note the amendments to the claims and point out where support for the amendments can be found. Support for 1% sodium metasilicate is found at [0076] in the specification. Support for about 2 to about 4% ammonium hydroxide can be found at [0072-0073, [0076] in Tables 5, 6 and 7. Support for about 2 to about 5% monoethanolamine can be found at [0072-0073, [0076] in Tables 5, 6 and 7.
Applicants assert that the inventors have found that the combination of a metasilicate, ammonium hydroxide and monoethanolamine allows for the preparation of an effective system useful for dying and/or lightening keratin-containing fibers in which the levels of unpleasant ammonia odor causing components are reduced.
Applicants assert that synergy is shown in the Examples which compares the preferred lightening composition to the individual components, specifically in Table 7, in which the combination is shown in comparison to each component. Applicants argue that as shown graphically in Figure 1, the addition of sodium metasilicate to ammonium hydroxide and MEA consistently showed synergistic lift over the same component when used alone. Applicants point to the higher ∆E values and disagree with the Examiner’s discussion of various L values and their failure to show synergy.
Applicants assert that Knohl does not disclose or make obvious a system that contains a metasilicate, monoethanolamine and ammonium hydroxide, not does it make obvious the surprising unexpected results in ∆ E values described in the specification. Applicants assert that Lim does not cure these deficiencies of Knohl, as Lim is merely cited as disclosing a composition that contains ammonium carbonate for the oxidative drying of keratin fibers.
Applicants assert that unexpected results exist as shown in the Examples in the specification which show that the addition of sodium metasilicate to an alkanizing system using monoethanolamine and ammonium hydroxide results in a synergistic increase in the L.A.B. value. This is not taught or suggested by Knohl.
Applicants note that they have addressed the assertion that the claims are not commensurate in scope with the Examples by amending claims 1 and 15 to specify amounts of metasilicate, ammonium hydroxide and monoethanolamine.
Applicants’ arguments have been carefully reviewed and in light of the amendments to the claims, specifically claims 1 and 15, are found to be persuasive in that Knohl does not teach an amount of ammonium hydroxide and monoethanolamine. The rejections have been withdrawn above.
The remainder of Applicants’ arguments are not found to be persuasive. Applicants’ assertion of unexpected results is not persuasive because, respectfully, synergism has not been shown for the ∆ L or the ∆ E values. The Examiner apologizes for the statement that synergism was shown for the ∆ E values, since this was an inaccurate statement. Upon closer consideration, while the ∆ E values are high for the composition, technically, synergism is not actually demonstrated. In order to establish synergy, Applicants must show that the effect of the combination is greater than the sum of the individual components. Specifically, where the combined action of two or more agents is greater than the sum of the action of one of the agents used alone, “synergy” according to the legally accepted definition exists. In re Kollman, 201 USPQ 193 (CCPA 1979).
Applicants’ experimental results do not demonstrate synergy because the sum of the individual components is actually more than the combined action of the three agents. Specifically, Applicants have shown that 2.5% Ammonia alone has a 10.51 ∆ E value, 1% Sodium Metasilicate has a 31.5 ∆ E value and 11% Monoethanolamine has an 8.96 ∆ E value. This amounts to a total of approximately 50.97. (10.51 + 31.5 + 8.96 = 50.97) Even accounting for some variation with differences in amounts of these values due to differences in the amounts of the various components, this is still a significant difference from the values achieved with the combinations. Significantly, 50.97% (the sum of the individual components) is much larger than the value of the combined components (24.11 and 28.02). 1% Sodium metasilicate has a ∆ E of 31.5 whereas the combination of components has a ∆ E of 24.11 or 28.02. The ∆ E of 1% sodium metasilicate alone is more impressive and significant than the ∆ E of the combination of components.
Additionally, the evidence presented still does not show synergism on the L values. In order to establish synergy Applicants must show that the effect of the combination is greater than the sum of the individual components. Specifically, where the combined action of two or more agents is greater than the sum of the action of one of the agents used alone, “synergy” according to the legally accepted definition exists. In re Kollman, 201 USPQ 193 (CCPA 1979).
The data in Table 7 shows that the combined action of all of the agents is not greater than the sum of the action of one of the agents used alone. For example, L values for 2% Na2SiO3 is 27.98, MEA 11% is 23.03 and NH4OH 2.5% is 25.33. The sum of these values is approximately 76% but the L values for the combinations of Na2SiO3 is 27.98, MEA 11% is 23.03 and NH4OH is only 37.13 and 33.44. This is far from a showing that the effect of the combination is greater than the sum of the action of one of the agents used alone.
In light of the new rejections applied above, with the exception of claims 60-62, Knohl in view of Larkin does teach a system that contains about 1 to about 3% metasilicate, about 2 to about 4% monoethanolamine and about 2 to about 5% ammonium hydroxide and the motivations to combine these teachings. These motivations include the advantages to be achieved and are found in the Knohl and Larkin references. Namely, one of ordinary skill in the art before the earliest effective filing date would have followed the teachings of Knohl to combine 2% sodium metasilicate, 9% arginine carbonate, and ammonium hydroxide in one solution and 3% hydrogen peroxide in another solution so that they can be stable until they are combined and applied to the scalp for bleaching in order to have a bleaching composition that was not damaging on hair and scalp and that required less peroxide and ammonium hydroxide then previous bleaching compositions while still being effective.
One of ordinary skill in the art before the earliest effective filing date making the Knohl composition of 2% sodium metasilicate, 9% arginine carbonate, and ammonium hydroxide in one solution and 3% hydrogen peroxide in another solution would make the amount of ammonium hydroxide about 3% to about 15% as taught by Larkin and would make the amount of monoethanolamine about 3% to about 15% as taught by Larkin in light of Larkin’s teachings that these were effective alkanizing amounts of ammonium hydroxide and monoethanolamine in a hair bleaching composition.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
The element of ammonium carbonate is taught in Lim et al. as described in the new rejection applied above. One of ordinary skill in the art at the earliest effective filing date making the composition of Knohl in view of Larkin would have added ammonium carbonate in light of Lim’s teaching that it is a preferred pH modifier for oxidative keratin dyes. There is a reasonable expectation of success in light of Knohl’s teaching that pH modifiers are useful in its invention.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619