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 .
The examiner acknowledges receipt of request for extension of time and remarks filed 07/24/2026.
No claim is amended.
Claims 16-35 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 16-33, in the reply filed on 11/19/2024 is acknowledged. The traversal is on the ground(s) that group I is to a product and Group II is related to the use of said product and that based on this the unity of invention requirement is satisfied; the requirement election of species is also traversed. This is not found persuasive because the shared technical feature of natural dye is taught in the art so that the shared technical feature does not make contribution over the art as stated in the office action mailed 09/10/2024..
The requirement is still deemed proper and is therefore made FINAL.
Applicant elected cassia angustifolia powders as the specific natural dye; Basic Yellow 87 as the specific Azo cationic synthetic direct dye; benzyl alcohol as the specific aromatic compound; HC Blue as the specific additional synthetic dye; and microbial gum as the specific polysaccharide. While applicant has elected single disclosed components of composition in claim 16, the claims have not been amended to recite the elected species. Therefore, compositions containing components other than the elected species will be applied against the claims.
Claims 34 and 35 are examined with claims 16-33 because the prior art cited in this office action teaches applying composition comprising mixing anhydrous composition A and aqueous composition B to hair. The comprising language is open.
In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Priority
This application is a 371 of PCT/EP2020/068844 filed 07/03/2020 and which claims benefit of FRENCH application, FR 1907546 filed 07/05/2019.
Response to Arguments
In section A, applicant argues that the prior art does not recognize the variable being optimized is result effective variable, that is, one that achieves recognized result, citing MPEP 2144.05(II)(B); In re Antonie, 559 F.2d 618, 620 (CCPA 1977), and that a person of ordinary skill would not be motivated to optimize a parameter “if there is no evidence in the record that the prior art recognized that [that] particular parameter affected the result.” That an obviousness determination may not be rest on “hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention,” citing In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). That there may be no suggestion or motivation to make a proposed change where the proposed modification “would render the prior art invention being modified unsatisfactory for its intended purpose,” citing MPEP 2143.01(V), In re Gordon, 733 F.2d 900 (Fed. Cir. 1984).
Response: Applicant did not in this section mention which parameter is being optimized. However, because NOCKER did not teach amount of natural dye, and because a secondary reference was relied upon for how much natural dyes have been known to be used in coloring hair, the examiner interprets applicant’s argument about optimizing parameter to mean using acceptable amounts of natural dyes in hair coloring products for coloring hair. The effect of coloring agent such as henna and indigo natural dye is to color hairs and thus using henna and indigo dyes produces results of colored hair and thus using dyes for coloring hair is results effective and how much dye is in the composition and applied determines the level of color on the hair. Therefore, using amounts of natural dyes in NOCKER’s formulation does not violate the findings in In re Antonie, 559 F.2d 618, 620 (CCPA 1977) because natural dyes used in known amounts affect hair color, hence results effective. In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) instructs that patent examination process cannot use hindsight reconstruction to pick and choose isolated teachings from the prior art to deprecate the claimed invention. In the current case, there is no hindsight reconstruction because NOCKER’s composition A contains one or more hair direct dyes, namely cationic, anionic, nitro dyes and plant dyes (paragraph [0035]) and henna and indigo, logwood powder, rhubarb powder are specifically named plant dyes with the henna and indigo which are natural dyes. A prior art is considered for all that it teaches and NOCKER is not limited to the examples or preferred embodiments. Natural dyes in amounts of from about 75% to about 95% have been known in the prior art before the effective date of the invention (abstract, column 1, line 68; column 2, lines 10-15; examples I-IV, claims 1 and 8 of Bartuska) to be used in hair coloring and/or hair conditioning. Thus, composition containing natural dye has been known before the effective date of the instant invention. The rejection is based on what the prior art teaches and not based on applicant’s disclosure. There is therefore no hindsight reconstruction. In the instant case, In re Gordon, 733 F.2d 900 (Fed. Cir. 1984), MPEP 2143.01(V), using known amounts for the henna natural dye in the composition of NOCKER that comprises henna natural dye does not make the composition of NOCKER unsatisfactory. Using known amounts for henna natural dye in a composition containing natural dye does not violate the principles in In re Gordon, MPEP 2143.01(V).
In section B, applicant argues that NOCKER does not recognize natural dye concentration as result effective variable to satisfy In re Antonie, 559 F.2d 618, 620, that NOCKER does not recognize naturally occurring dye concentrations as a variable and that NOCKER is a bleaching reference in which direct dyes including plant dyes are merely optional additives, that NOCKER treats persalt concentration as result-effective.
Response: Henna natural dyes is a known hair color/keratin agent (see abstract of Bartuska). Compositions have amounts/concentrations of the component ingredients in the composition. NOCKER is silent as to the amounts/concentration of the henna, hence a secondary reference was relied upon for known concentrations. Optional teaching in the prior art is teaching and not an exclusion. NOCKER teaches that plant dyestuff such as henna can be used alone or in combination with synthetic direct acting dyestuffs (paragraph [0039]). The comprising language of the claims is open. Therefore, using concentrations of natural dyes, known to be used in known hair care compositions, in NOCKER’s formulation does not violate the findings in In re Antonie, 559 F.2d 618, 620 (CCPA 1977) because natural dyes used in known amounts affect hair color, hence results effective. While the range in In re Aller and Peterson is narrower, henna has been known to be used in amounts of from 75 to about 95% in hair care product (abstract, column 1, line 68, column 2, lines 10-15, examples I-IV, claims 1, 8) with the disclosed range overlapping the claimed range. The artisan seeking to make the composition of NOCKER would look to the art, such as to Bartuska for concentrations of henna natural dyes that have been known in the art to be used in hair care compositions. Natural dyes in amounts of from about 75% to about 95% have been known in the prior art before the effective date of the invention (abstract, column 1, line 68; column 2, lines 10-15; examples I-IV, claims 1 and 8 of Bartuska). And, 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). In the instant case, the claimed range overlaps the disclosed range and the disclosed narrower range of 75% to 95% is a specific point range within the claimed range of 40% to 98%. NOCKER is silent as to the concentration of henna natural dye. NOCKER at paragraph [0040] teaches, “ the compositions A and/or C may comprise(s) one or more hair direct dye at a total concentration of 0.01 % to 10%, preferably 0.05% to 7.5% and more preferably 0.1 % to 5% by weight calculated to the total of each composition A or C.” This paragraph does not include the natural henna dyes. The examiner disagrees that it would be necessary to increase direct dye concentrations from 10% to 40% o0r 75% or 95% because direct dyes are not the natural henna dyes. The claimed composition does not exclude persalts. The composition of NOCKER includes direct dyes and natural dyes (see at least paragraphs [0039], [0040]).
In section C, applicant argues that NOCKER is a bleaching composition and as such cannot have natural dyes.
Response: The examiner disagrees with applicant because the composition of NOCKER, though intended as a bleaching composition, comprises natural henna dyes and direct/synthetic dyes (Paragraph [0039], [0040]). Claim 1 is a composition claim. The presence of dyes in the composition of NOCKER have coloring/dyeing effect on the hair when used on the hair.
In section D, applicant argues that the comprising language does not bridge the gap between NOCKER’s 0.01-10% direct dye teaching and the claimed amounts of natural dye.
Response: Direct dyes are not natural dyes
In section E, applicant raises the issue of direct dyes and the amounts of 0.01% to 10% citing paragraph [0040].
Response: Direct dyes are not henna natural dyes. NOCKER at paragraph [0040] teaches, “ the compositions A and/or C may comprise(s) one or more hair direct dye at a total concentration of 0.01 % to 10%, preferably 0.05% to 7.5% and more preferably 0.1 % to 5% by weight calculated to the total of each composition A or C.” This paragraph does not include the natural henna dyes in the direct dyes.
In section F, applicant argues that the office action failed to address the claimed combination. Applicant argues, for example, that claims 16 and 34 teach 3 elements together: 40% to 98% natural dyes, at least one dye chosen from hydrazono cationic synthetic direct dyes and/or azo cationic direct dyes and at least one aromatic compound of formula (I). NOCKER presents the components as separate optional ingredients and the office action combined these separate ingredients based on hindsight reconstruction forbidden by In re Fine, 837 F.2d 1071.
Response: The examiner disagrees. First, claims 16 and 34 say hydrazono cationic synthetic direct dyes and/or azo cationic direct dyes. Thus, the dye is hydrazono dye or azo dye and NOCKER teaches azo dyes as was clearly stated in the office action mailed 03/25/2026. Further, NOCKER teaches anhydrous composition A containing basic Yellow 87 cationic dye (paragraph [0037]) meeting the elected azo cationic dye of claims 16, 19 and 20; direct dyes which include azo cationic dyes are present in amounts of 0.01% to 10% (paragraph [0040]) with this amount in the range disclosed anticipated the claimed range of 0.01% to 20% of claim 21. NOCKER’s anhydrous composition A also contains one or more organic solvent such as 2-phenoxyethanol, benzyl alcohol and 2-phenylethanol which is present at 0.1% to 15% (paragraph [0072]) meeting the elected aromatic compound of claims 16, 22 and the amount in the range of 0.1% to 20% in claim 23 is anticipated by the disclosed range of 0.1% to 15%; for claims 24 and 26. Therefore, there is no impermissible hindsight because the conclusion was reached on the basis of facts gleaned from the prior art and not from applicant’s specification, and the findings in In re Fine, 837 F.2d 1071 are not violated. The rejection showed the combination of direct dye, natural dye and benzyl alcohol and 2-phenylethanol which is compound of formula (I).
In section G, applicant argues that Bartuska, Aeby and Constantine do not cure the deficiencies of NOCKER because none of the art teach 40% to 98% natural dye and that the gap between NOCKER’s “0.01-10% dye” and the claimed amounts is not cured by the secondary references. Claims 17-28 and 30-35 depending from claim 16 or claim 34 and claim 29 depending on claim 28 are allowable.
Response: The “0.01-10%” in NOCKER (paragraph [0040]) is for direct dyes and not to henna natural dye. Bartuska was relied upon for teaching that henna natural dyes in amounts of from about 75% to about 95% have been known in the prior art before the effective date of the invention (abstract, column 1, line 68; column 2, lines 10-15; examples I-IV, claims 1 and 8 of Bartuska) to be used in hair coloring and/or hair conditioning. AEBY was relied upon as an evidentiary reference teaching that HC Blue 16 and HC Blue 17 are anthraquinone dyes. Constantine was relied upon teaching that jojoba oil, almond oil, avocado oil, castor oil, moringa oil and olive oil vegetable oils are known to have been used in compositions for hair care (see at least claim 21 of CONSTANTINE).
Applicant’s arguments filed 07/24/2026 are not persuasive as described above. The claims filed 07/24/2026 have not been amended. The rejection is maintained and reiterated below.
Maintained Rejections
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
Claim(s) 16-28 and 30-35 remain rejected under 35 U.S.C. 103 as being unpatentable over NOCKER et al. (US 20180353404 A1), as evidenced by AEBY et al. (WO 2014202252 A1) that HC Blue 16 and HC Blue 17 are anthraquinone dyes regarding claims 25, in view of Bartuska et al. (US 4183366) for reasons of record and reiterated herein below.
NOCKER discloses composition A that is anhydrous (see paragraphs [0007], [0017], claim 1); composition A contains one or more hair direct dyes, namely cationic, anionic, nitro dyes and plant dyes (paragraph [0035]) and henna and indigo, logwood powder, rhubarb powder are specifically named plant dyes with the henna and indigo meeting the limitation of natural dye of claim 16 and the specific natural dye henna/indigo of claim 17; the anhydrous composition A also contains basic Yellow 87 cationic dye (paragraph [0037]) meeting the elected azo cationic dye of claims 16, 19 and 20; direct dyes which includes azo cationic dyes are present in amounts of 0.01% to 10% (paragraph [0040]) with this amount in the range disclosed anticipated the claimed range of 0.01% to 20% of claim 21; the anhydrous composition A also contains one or more organic solvent such as 2-phenoxyethanol, benzyl alcohol and 2-phenylethanol which is present at 0.1% to 15% (paragraph [0072]) meeting the elected aromatic compound of claims 16, 22 and the amount in the range of 0.1% to 20% in claim 23 is anticipated by the disclosed range of 0.1% to 15%; for claims 24 and 26, the anhydrous composition A, contains HC Blue 2 as a nitro dye meeting the elected additional synthetic dye HC blue of claims 24 and 26; in an embodiment the anhydrous composition A contains cationic HC Blue 17 dye (paragraph [0037]) which is and anthraquinone dye (as evidenced by lines 18 and 19 of page 21 of WO 2014202152 A1) such that the anthraquinone HC Blue 17 cationic dye meets the requirements of claims 24 and 25; the nitro dyes are direct dyes (paragraph [0035]) and are present at amounts in the range of 0.01% to 10% (paragraph [0039]) meeting claim 27; the anhydrous composition A further comprises oil and the lipophilic vegetable oil is present at 0.1% to 20% (paragraphs [0042], [0063]) meeting claims 28 and 30; anhydrous composition A further comprises cationic polymers as conditioning and thickening agents and guar gum under the trade name JAGUAR is named as an cationic cellulose (paragraph [0064]) meeting the limitation of polysaccharide of claims 31 and 32 and the cationic polymer is present at 0.1-7.5% (paragraph [0067]) meeting claim 33.
For claim 34, NOCKER teaches mixing immediately before use anhydrous composition A as described above comprising natural henna dye, basic yellow 87 azo cationic dye, direct dye, HC blue dyes as additional synthetic dye and benzyl alcohol as the aromatic compound (refer to the paragraph above) with aqueous composition B and composition C that comprises acid, the mixture is applied to hair to effectively bleach and dye hair (paragraphs [0100], [0102], claims 1 and 9). Components A, B and C are mixed at a ratio of 1:1:1 with this ratio anticipating the claimed ratio of 0.01 to 10 as this ratio goes through a 1:1 for components A and B.
For claim 35, composition B is aqueous meeting the water of claim 35, the comprising language of the claims is open.
For claims 16, 18 and 34, NOCKER does not teach the amount of the natural dye, such as henna. However, Bartuska teaches that henna powder is known to be used in amounts of from 75 to about 95% in hair care product (abstract, column 1, line 68, column 2, lines 10-15, examples I-IV, claims 1, 8). Therefore, before the effective date of the invention, the artisan would look to Bartuska to use henna powder in amounts of from about 75 to 95% in the composition of NOCKER that would enhance the color of hair while strengthening the hair and improving hair shine. Applicant has not presented evidence in the arguments or in the specification that the natural dye in amounts of 40-98% and 60-90% provides unusual results. The disclosed range of 75-98% overlaps the claimed range of 60-90% and 40-98% and the specific point of 85% in example IV of Bartuska is a point within the claimed ranges. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382).
NOCKER as evidenced by AEBY that HC Blue 16 and HC Blue 17 are anthraquinone dyes regarding claims 25, in view of Bartuska renders claims 16-28 and 30-35 prima facie obvious.
Claim(s) 16, 28 and 29 remain rejected under 35 U.S.C. 103 as being unpatentable over NOCKER et al. (US 20180353404 A1) in view of Bartuska et al. (US 4183366), as applied to claims 16 and 28, and further in view of CONSTANTINE et al. (US 20180110702 A1) for reasons of record and reiterated herein below.
NOCKER in view of Bartuska has been described above as rendering claims 16 and 28. Claim 28 depends of claim 16. Claim 29 depends on claim 28. For claims 16 and 28, NOCKER teaches anhydrous composition A that comprises oil/lipophilic vegetable oil that is present at 0.1% to 20% and jojoba oil is named as the vegetable oil (paragraphs [0042], [0063]). For claim 29, NOCKER does not name any of the specific vegetable/lipophilic oils recited in claim 29. However, jojoba oil, almond oil, avocado oil, castor oil, moringa oil and olive oil are vegetable oils known to have been used in compositions for hair care (see at least claim 21 of CONSTANTINE). Therefore, before the effective date of the invention, one having ordinary skill in the art, would have been motivated to use one vegetable oil in place of the other, in this case, avocado oil or olive oil can be used in place of the jojoba vegetable oil with the expectation of predictably conditioning the hair as the composition colors the hair.
Therefore, NOCKER in combination with Bartuska and in view of CONSTANTINE renders claim 29 prima facie obvious.
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Yong Kwon can be reached on 5712720581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613
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