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 continued examination under 37 CFR 1.114 and remarks filed 02/12/2026.
No claim is amended.
Claims 16-35 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/12/2026 has been entered.
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 II on page 7 of the remarks filed 02/12/26, applicant argues that the anhydrous composition of NOCKER requires persalts at a total concentration of 10% to 80% (paragraph [0017]) and the composition requires alkalinizing agents at a concentration from 1% to 20% (paragraph [0020]); that these are not optional components but are mandatory components for the anhydrous composition; and that NOCKER expressly limits dyes to a total concentration of 0.01% to 10% and that there is no teaching or suggestion that the dye could be in amount of 40-98% range; that the working examples confirm anhydrous composition dominated by persalts with only trace amounts of optional dye.
Response: The rejection is not anticipatory. 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. Furthermore, natural dyes in amounts of from about 75% to about 95% have been known in the 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. While applicant stresses that persalts are mandatory in the anhydrous composition of NOCKER, the instant claims do not exclude persalts and the comprising language of the claims is open. The lower limit of the persalt is 10% and the composition of NOCKER is able to accommodate natural dyes in amounts that would predictably generate desired color to hair. A prior art is considered for all that it teaches and NOCKER is not limited to the examples or preferred embodiments.
In section II, A of the remarks, applicant argues that the skilled artisan would not have been motivated to make the combinations and modifications of the prior art to arrive at the claimed invention without employing hindsight using applicant’s specification, citing ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998); that the proposed amendment would render the prior art invention unsatisfactory.
Response: 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. The skilled artisan would reasonably expect that the composition of NOCKER modified to include natural dyes would predictably color hair. The combination of NOCKER and Bartuska does not render the composition of NOCKER unsatisfactory or inoperable and the combination does not violate the decision in ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998).
In section II B, applicant argues that the combination of NOCKER, Aeby and Bartuska would render NOCKER inoperable because NOCKER’S composition has mandatory structural requirements that are mathematically in compatible with the claimed natural dye amounts because of the amounts of the one or more persalts and alkalizing agents since claims 16 and 34 require from 40% to 98% natural dye by weight; that NOCKER’S working examples confirm the incompatibility because NOCKER’S dyeing is always combined with bleaching without an isolated dyeing system and the persalts in example 6 is 57% and that there is simply no room for 40% to 98%; and Bartuska and Aeby do not cure the deficiencies because Bartuska uses 75 to about 95% henna with Aeby relied upon as an evidentiary reference. Claims 17-28 and 30-35 depend directly or indirectly from claim 16 or claim 34 and are therefore allowable for the same reasons that claims 16 and 34 are allowable over the cited combination.
Response: The combination of NOCKER and Bartuska does not render the composition of NOCKER unsatisfactory or inoperable because the modified composition is predictably expected to color and condition hair. The comprising language of the claims is open and does not exclude persalts. The 40-98% natural dyes in the claims is a range making the range a variable open to routine optimization. NOCKER is not limited to the examples and the prior art teaches that natural dyes can be used in in amounts of from about 75% to about 95% (Bartuska at abstract, column 1, line 68; column 2, lines 10-15; examples I-IV, claims 1 and 8). This range is also a variable amenable to optimization. 75% lies between 40-98%. The composition of NOCKER is amenable to routine optimization where the composition can be optimized by adjusting the variable amount of the natural dye to arrive at a composition that would predictably produce desired color. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.
In section II S, applicant argues Constantine does not address the fundamental incompatibility NOCKER’S required persalt concentration and the claimed natural dye amounts and that there is no motivation or teaching that would enable a skilled artisan to incorporate 40-98% natural dye into NOCKER’S persalt bleaching system.
Response: 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). There is no known incompatibility between oils and natural dyes in hair care compositions for dyeing and/or bleaching hair. 40-98% natural dyes in the claims is a range making the range a variable open to routine optimization. NOCKER is not limited to the examples and the prior art teaches that natural dyes can be used in in amounts of from about 75% to about 95% (Bartuska at abstract, column 1, line 68; column 2, lines 10-15; examples I-IV, claims 1 and 8). This range is also a variable amenable to optimization. 75% lies between 40-98%. The composition of NOCKER is amenable to routine optimization where the composition can be optimized by adjusting the variable amount of the natural dye to arrive at a composition that would predictably produce desired color. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.
NOCKERS’s composition clearly contains plant dyes (paragraph [0035]) and henna is a named a specific plant dye (paragraph [0039]) and using specific amounts in the composition does not make it unsatisfactory. Paragraphs [0100], [0103] specifically teach that the hair can be bleached and dyed. Applicant’s argument is not persuasive.
No claim is amended. The rejections are maintained and reiterated herein below.
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 is/are 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 is/are 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).
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.
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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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613