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 .
DETAILED ACTION
The Applicant’s reply filed on 5/19/26 is acknowledged. Claims 1, 3-7, 9, 11-15 and 21-28 are pending. Claims 26-28 are new.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, drawn to a method of dyeing keratinous material, and the species of:
(a) combination of (3-Aminopropyl)triethoxysilane and methyltriethoxysilane, and
(b) coating B, of at least one highly refractive metal oxide having a refractive index of at least about 1.9,
in the reply filed on 12/2/25 is acknowledged.
Claims 15 is withdrawn as being drawn to a nonelected invention.
Claims 3, 6, and 7 are withdrawn as not being directed to the elected species of agent (a).
Claims 12, 14, and 21 are withdrawn as not being directed to the elected species of substrate platelet based pigment coating
Claims 1, 4, 5, 9, 11, 13 and 22-28 are under consideration to the extent that the method comprises the elected species.
Objections Withdrawn
The objection to the Specification is withdrawn in view of the amended abstract.
Rejections Maintained and New Grounds of 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, 4, 5, 9, 11, 13 and 22-28 are rejected under 35 U.S.C. 103 as being unpatentable over Brun et al. (US 2010/0083446; cited in IDS) in view of Kergosien et al. (US 9,962,327; 2018) and Schmid et al. (US 2020/0032067; priority 2010).
Brun et al. teach compositions and methods for dyeing keratin fibers comprising applying a composition to keratin fibers (e.g. paragraph 0039; Claim 14; Examples). Brun et al. teach the composition comprises:
an agent (a) comprising at least one organic silicon compound (e.g. abstract; Claim 1), which may include 3-aminopropyltriethoxysilane (e.g. paragraph 0063; Examples);
an agent (b1) comprising at least one colorant compound comprising a pigment (e.g. abstract; paragraphs 0275-0295; Claim 1), and
(b2) at least one film-forming polymer (e.g. Claim 1).
Brun et al. teach that, when applied to wet hair or in an aqueous composition, the at least one organosilicon compound can become hydrolysed and then condensed to form a hybrid prepolymer that promotes the adhesion of the at least one organosilane compound to the hair (e.g. paragraph 0027), but do not teach the inclusion of the elected species of methyltriethoxysilane. This is made up for by the teachings of Kergosien et al. Brun et al. also teach that the pigments may be metallic and effect pigments (e.g. paragraph 0294), but they do not teach that the colorant compound comprises at least one substrate platelet-based pigment comprising a vacuum metallized pigment. This is made up for by the teachings of Schmid et al.
Kergosien et al. teach cosmetic compositions of sol/gel type for making up and/or caring for keratin materials characterized in that it comprises the product resulting from the hydrolysis and condensation reaction of 3-aminopropyltriethoxysilane and methyltriethoxysilane (e.g. Claim 1, Examples). Kergosien et al. teach that the compositions exhibit both good reactivity and properties of stability before application thereof to keratin materials, and are capable of forming films or coatings which are long-lasting (e.g. column 1, lines 37-43).
Schmid et al. teach coated metal pigments, the production thereof, and the use thereof (e.g. abstract). Schmid et al. teach that the particles show an improved sparkle effect; in particular an attractive high sparkle intensity (e.g. abstract, Figs 1-8). Schmid et al. teach that the coated metal pigments are substrate platelet-based pigment comprising a vacuum metallized pigment (e.g. abstract, paragraphs 0093, 0113-0117, 0123). Schmid et al. teach that the pigments may be used in hair compositions, including hair color (e.g. paragraphs 0160 and 0177).
Regarding Claims 1, 4, 5, and 9, it would have been obvious to one of ordinary skill in the art at the time of filing to include both 3-aminopropyltriethoxysilane and methyltriethoxysilane as taught by Kergosien et al. for use as the at least one organic silicon compound in the method of Brun et al. One of ordinary skill in the art would have predicted success as Brun et al. teach that mixtures of organic silicon compounds can be used and one would have been motivated because Kergosien et al. teach that the combination of 3-aminopropyltriethoxysilane and methyltriethoxysilane exhibits both good reactivity and properties of stability before application thereof to keratin materials, and are capable of forming films or coatings which are long-lasting (e.g. column 1, lines 37-43). It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. It further would have been obvious to one of ordinary skill in the art at the time of filing to select the pigments of Schmid et al. for use in the compositions of Brun et al. in order to obtain the benefits of improved sparkle intensity. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claim 11, Schmid et al. teach that the substrate platelet-based pigment comprises aluminum (e.g. paragraphs 0029, 0123; Claim 1).
Regarding Claim 13, Schmid et al. teach that the substrate platelet-based pigment comprises a coating of at least one highly refractive metal oxide having a refractive index of greater than 1.65, which overlaps with the claimed range of “at least about 1.9” (e.g. paragraphs 0104, 0113-0117). 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) (MPEP 2144.05.I).
Regarding Claims 22, Schmid et al. teach that the coating has a thickness of 10-1000 nm, which overlaps with the claimed range of “at least about 50 nm” (e.g. paragraphs 0117, 0118). 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) (MPEP 2144.05.I).
Regarding Claim 23, Schmid et al. teach that the outermost coating has the high refractive index and does not contain an organic compound (e.g. paragraphs 0116 and 0123).
Regarding Claims 24, 25, and 27, Brun et al. teach that the composition comprises 0.1-40 wt% of the at least one organosilicone compound and 0.5-40 wt% of pigment, which overlap the claimed ranges (e.g. paragraph 0103). Brun et al. and Kergosien et al. are silent as to the breakdown between formulas (I) and (IV), however, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the concentration of 3-aminopropyltriethoxysilane and methyltriethoxysilane through routine experimentation in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. Brun et al. exemplify formulations comprising 2 wt% of (3-Aminopropyl)triethoxysilane having a pH of 10, which is within the claimed range. Brun et al. further teach that the composition comprises a solvent, which may be water, in an amount of 0.1-95 wt%, which overlaps the claimed range (e.g. paragraphs 0339, 0355, Examples). Brun et al. further teach that the film-forming polymer may be present in the compositions according to the disclosure in an amount ranging from 0.1% to 40% by weight, which overlaps the claimed range (e.g. paragraph 0236).
Regarding Claim 26, Brun et al. teach that the composition comprises a solvent, which may be water, in an amount of 0.1-95 wt%, which overlaps the claimed range (e.g. paragraphs 0339, 0355, Examples).
Regarding Claim 28, Brun et al. teach a pretreatment composition comprising the organosilicon compounds and a cosmetic composition comprising the film-forming polymer (e.g. Examples). Brun et al. teach that the leave-on time between the pretreatment composition and the cosmetic composition comprising the at least one hydrophobic film-forming polymer may range from a few seconds to 60 minutes (e.g. paragraph 0472), that the pretreatment composition is rinsed out (e.g. paragraph 0474), and the cosmetic composition is applied and drying may be performed immediately after the application or after a leave-on time that may range from 1 minute to 30 minutes (e.g. paragraph 0478), and once the drying is complete, a final rinse or shampoo wash may optionally be performed (e.g. paragraph 0484), which overlap with the claimed times.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4, 5, 9, 11, 13 and 22-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16-20 of U.S. Patent No. 11,504,319 in view of Schmid et al. (US 2020/0032067; priority 2010).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claims recite a method for dyeing keratinous material, comprising the following steps: - applying an agent (a) to the keratinous material, the agent (a) comprising at least one organic silicon compound and- applying an agent (b) to the keratinous material, wherein the agent (b) comprises: (bl) a colorant compound comprising a substrate platelet-based pigment comprising a vacuum metallized pigment, and (b2) a film-forming polymer. Patented claims 2, 7, and 9 claims compounds of Formulas (I), (IV) and the combination thereof. It would have been obvious to one of ordinary skill in the art at the time of filing to select the mixture of Formulas (I) and (IV) because their combination is recited in the dependent claims of ‘319.
Claim 1 is met by claims 2, 7, and 9.
Claim 4 is met by patented claim 2.
Claim 5 is met by patented claim 4.
Claim 9 is met by patented claim 8.
Claim 10 is met by patented claim 10.
Claim 11 is met by patented claim 11.
Claim 13 is met by patented claim 13.
Regarding Claims 22 and 23, the claims of patent ‘319 are silent. However, Schmid et al. teach coated metal pigments, the production thereof, and the use thereof (e.g. abstract). Schmid et al. teach that the particles show an improved sparkle effect; in particular an attractive high sparkle intensity (e.g. abstract, Figs 1-8). Schmid et al. teach that the coated metal pigments are substrate platelet-based pigment comprising a vacuum metallized pigment (e.g. abstract, paragraphs 0093, 0113-0117, 0123). Schmid et al. teach that the pigments may be used in hair compositions, including hair color (e.g. paragraphs 0160 and 0177). Schmid et al. teach that the coating has a thickness of 10-1000 nm, which overlaps with the claimed range of “at least about 50 nm” (e.g. paragraphs 0117, 0118). Schmid et al. teach that the outermost coating has the high refractive index and does not contain an organic compound (e.g. paragraphs 0116 and 0123). It would have been obvious to one of ordinary skill in the art at the time of filing to select the pigments of Schmid et al. for use in the compositions of ‘319 in order to obtain the benefits of improved sparkle intensity. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claims 24 and 25 the claims of patent ‘319 are silent. However, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the concentration of 3-aminopropyltriethoxysilane, methyltriethoxysilane, and pigment through routine experimentation in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. 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).
Claims 1, 4, 5, 9, 11, 13 and 22-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,826,586 in view of Schmid et al. (US 2020/0032067; priority 2010).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claims recite a method for dyeing keratinous material, comprising the following steps: - applying an agent (a) to the keratinous material, the agent (a) comprising at least one organic silicon compound and- applying an agent (b) to the keratinous material, wherein the agent (b) comprises a colorant compound comprising a substrate platelet-based pigment comprising a vacuum metallized pigment. Patented claim 14 recites a film-forming polymer. Patented claims 2 and 4 claims compounds of Formulas (I), (IV) and the combination thereof. It would have been obvious to one of ordinary skill in the art at the time of filing to select the mixture of Formulas (I) and (IV) because their combination is recited in the dependent claims of ‘586.
Claim 1 is met by claims 2, 4, and 14.
Claim 4 is met by patented claim 2.
Claim 5 is met by patented claim 3.
Claim 9 is met by patented claim 5.
Claim 10 is met by patented claim 6.
Claim 11 is met by patented claims 7 and 8.
Regarding Claims 13, 22 and 23, the claims of patent ‘586 are silent. However, Schmid et al. teach coated metal pigments, the production thereof, and the use thereof (e.g. abstract). Schmid et al. teach that the particles show an improved sparkle effect; in particular an attractive high sparkle intensity (e.g. abstract, Figs 1-8). Schmid et al. teach that the coated metal pigments are substrate platelet-based pigment comprising a vacuum metallized pigment (e.g. abstract, paragraphs 0093, 0113-0117, 0123). Schmid et al. teach that the pigments may be used in hair compositions, including hair color (e.g. paragraphs 0160 and 0177). Schmid et al. teach that the substrate platelet-based pigment comprises a coating of at least one highly refractive metal oxide having a refractive index of greater than 1.65, which overlaps with the claimed range of “at least about 1.9” (e.g. paragraphs 0104, 0113-0117). Schmid et al. teach that the coating has a thickness of 10-1000 nm, which overlaps with the claimed range of “at least about 50 nm” (e.g. paragraphs 0117, 0118). Schmid et al. teach that the outermost coating has the high refractive index and does not contain an organic compound (e.g. paragraphs 0116 and 0123). It would have been obvious to one of ordinary skill in the art at the time of filing to select the pigments of Schmid et al. for use in the compositions of ‘586 in order to obtain the benefits of improved sparkle intensity. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claims 24 and 25 the claims of patent ‘586 are silent. However, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the concentration of 3-aminopropyltriethoxysilane, methyltriethoxysilane, and pigment through routine experimentation in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. 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).
Claims 1, 4, 5, 9, 11, 13 and 22-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 13-18 of U.S. Patent No. 11,890,366 in view of Schmid et al. (US 2020/0032067; priority 2010).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claims recite a method for dyeing keratinous material, comprising the following steps: - applying an agent (a) to the keratinous material, the agent (a) comprising at least one organic silicon compound and- applying an agent (b) to the keratinous material, wherein the agent (b) comprises a colorant compound comprising a substrate platelet-based pigment comprising a vacuum metallized pigment. Patented claim 9 recites a film-forming polymer. Patented claims 2 and 4 claims compounds of Formulas (I), (IV) and the combination thereof. It would have been obvious to one of ordinary skill in the art at the time of filing to select the mixture of Formulas (I) and (IV) because their combination is recited in the dependent claims of ‘366.
Claim 1 is met by claims 2, 4, and 9.
Claim 4 is met by patented claim 2.
Claim 5 is met by patented claim 3.
Claim 9 is met by patented claim 5.
Claims 10 and 11 are met by patented claims 6 and 7.
Regarding Claims 13, 22 and 23, the claims of patent ‘366 are silent. However, Schmid et al. teach coated metal pigments, the production thereof, and the use thereof (e.g. abstract). Schmid et al. teach that the particles show an improved sparkle effect; in particular an attractive high sparkle intensity (e.g. abstract, Figs 1-8). Schmid et al. teach that the coated metal pigments are substrate platelet-based pigment comprising a vacuum metallized pigment (e.g. abstract, paragraphs 0093, 0113-0117, 0123). Schmid et al. teach that the pigments may be used in hair compositions, including hair color (e.g. paragraphs 0160 and 0177). Schmid et al. teach that the substrate platelet-based pigment comprises a coating of at least one highly refractive metal oxide having a refractive index of greater than 1.65, which overlaps with the claimed range of “at least about 1.9” (e.g. paragraphs 0104, 0113-0117). Schmid et al. teach that the coating has a thickness of 10-1000 nm, which overlaps with the claimed range of “at least about 50 nm” (e.g. paragraphs 0117, 0118). Schmid et al. teach that the outermost coating has the high refractive index and does not contain an organic compound (e.g. paragraphs 0116 and 0123). It would have been obvious to one of ordinary skill in the art at the time of filing to select the pigments of Schmid et al. for use in the compositions of ‘366 in order to obtain the benefits of improved sparkle intensity. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claims 24 and 25 the claims of patent ‘366 are silent. However, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the concentration of 3-aminopropyltriethoxysilane, methyltriethoxysilane, and pigment through routine experimentation in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. 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).
Claims 1, 4, 5, 9, 11, 13 and 22-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,896,701 in view of Schmid et al. (US 2020/0032067; priority 2010).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claims recite a method for dyeing keratinous material, comprising the following steps: - applying an agent (a) to the keratinous material, the agent (a) comprising at least one organic silicon compound and- applying an agent (b) to the keratinous material, wherein the agent (b) comprises a colorant compound comprising a substrate platelet-based pigment comprising a vacuum metallized pigment. Patented claim 9 recites a film-forming polymer. Patented claims 2 and 4 claims compounds of Formulas (I), (IV) and the combination thereof. It would have been obvious to one of ordinary skill in the art at the time of filing to select the mixture of Formulas (I) and (IV) because their combination is recited in the dependent claims of ‘701.
Claim 1 is met by claims 2, 4, and 9.
Claim 4 is met by patented claim 2.
Claim 5 is met by patented claim 3.
Claim 9 is met by patented claim 5.
Claims 10 and 11 are met by patented claims 6 and 7.
Regarding Claims 13, 22 and 23, the claims of patent ‘701 are silent. However, Schmid et al. teach coated metal pigments, the production thereof, and the use thereof (e.g. abstract). Schmid et al. teach that the particles show an improved sparkle effect; in particular an attractive high sparkle intensity (e.g. abstract, Figs 1-8). Schmid et al. teach that the coated metal pigments are substrate platelet-based pigment comprising a vacuum metallized pigment (e.g. abstract, paragraphs 0093, 0113-0117, 0123). Schmid et al. teach that the pigments may be used in hair compositions, including hair color (e.g. paragraphs 0160 and 0177). Schmid et al. teach that the substrate platelet-based pigment comprises a coating of at least one highly refractive metal oxide having a refractive index of greater than 1.65, which overlaps with the claimed range of “at least about 1.9” (e.g. paragraphs 0104, 0113-0117). Schmid et al. teach that the coating has a thickness of 10-1000 nm, which overlaps with the claimed range of “at least about 50 nm” (e.g. paragraphs 0117, 0118). Schmid et al. teach that the outermost coating has the high refractive index and does not contain an organic compound (e.g. paragraphs 0116 and 0123). It would have been obvious to one of ordinary skill in the art at the time of filing to select the pigments of Schmid et al. for use in the compositions of ‘701 in order to obtain the benefits of improved sparkle intensity. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claims 24 and 25 the claims of patent ‘701 are silent. However, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the concentration of 3-aminopropyltriethoxysilane, methyltriethoxysilane, and pigment through routine experimentation in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. 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).
Claims 1, 4, 5, 9, 11, 13 and 22-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16-20 of U.S. Patent No. 11,992,546 in view of Schmid et al. (US 2020/0032067; priority 2010).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claims recite a method for dyeing keratinous material, comprising the following steps: - applying an agent (a) to the keratinous material, the agent (a) comprising at least one organic silicon compound and- applying an agent (b) to the keratinous material, wherein the agent (b) comprises a colorant compound comprising a substrate platelet-based pigment comprising a vacuum metallized pigment. Patented claim 18 recites a film-forming polymer. Patented claims 2 and 7 claim compounds of Formulas (I), (IV) and the combination thereof. It would have been obvious to one of ordinary skill in the art at the time of filing to select the mixture of Formulas (I) and (IV) because their combination is recited in the dependent claims of ‘546.
Claim 1 is met by claims 2, 7, and 18.
Claim 4 is met by patented claim 2.
Claim 5 is met by patented claim 4.
Claim 9 is met by patented claim 8.
Claims 10 and 11 are met by patented claims 10 and 11.
Claim 13 is met by patented claim 13.
Regarding Claims 22 and 23, the claims of patent ‘546 are silent. However, Schmid et al. teach coated metal pigments, the production thereof, and the use thereof (e.g. abstract). Schmid et al. teach that the particles show an improved sparkle effect; in particular an attractive high sparkle intensity (e.g. abstract, Figs 1-8). Schmid et al. teach that the coated metal pigments are substrate platelet-based pigment comprising a vacuum metallized pigment (e.g. abstract, paragraphs 0093, 0113-0117, 0123). Schmid et al. teach that the pigments may be used in hair compositions, including hair color (e.g. paragraphs 0160 and 0177). Schmid et al. teach that the substrate platelet-based pigment comprises a coating of at least one highly refractive metal oxide having a refractive index of greater than 1.65, which overlaps with the claimed range of “at least about 1.9” (e.g. paragraphs 0104, 0113-0117). Schmid et al. teach that the coating has a thickness of 10-1000 nm, which overlaps with the claimed range of “at least about 50 nm” (e.g. paragraphs 0117, 0118). Schmid et al. teach that the outermost coating has the high refractive index and does not contain an organic compound (e.g. paragraphs 0116 and 0123). It would have been obvious to one of ordinary skill in the art at the time of filing to select the pigments of Schmid et al. for use in the compositions of ‘546 in order to obtain the benefits of improved sparkle intensity. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claims 24 and 25 the claims of patent ‘546 are silent. However, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the concentration of 3-aminopropyltriethoxysilane, methyltriethoxysilane, and pigment through routine experimentation in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. 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).
Claims 1, 4, 5, 9-11, 13 and 22-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16-18 of U.S. Patent No. 12,201,712 in view of Schmid et al. (US 2020/0032067; priority 2010).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claims recite a method for dyeing keratinous material, comprising the following steps: - applying an agent (a) to the keratinous material, the agent (a) comprising at least one organic silicon compound and- applying an agent (b) to the keratinous material, wherein the agent (b) comprises a colorant compound comprising a substrate platelet-based pigment comprising a vacuum metallized pigment. Patented claim 9 recites a film-forming polymer. Patented claims 2 and 6 claim compounds of Formulas (I), (IV) and the combination thereof. It would have been obvious to one of ordinary skill in the art at the time of filing to select the mixture of Formulas (I) and (IV) because their combination is recited in the dependent claims of ‘712.
Claim 1 is met by claims 2, 6, and 9.
Claim 4 is met by patented claim 2.
Claim 5 is met by patented claim 4.
Claim 9 is met by patented claim 7.
Claims 10 and 11 are met by patented claim 13.
Regarding Claims 13, 22 and 23, the claims of patent ‘712 are silent. However, Schmid et al. teach coated metal pigments, the production thereof, and the use thereof (e.g. abstract). Schmid et al. teach that the particles show an improved sparkle effect; in particular an attractive high sparkle intensity (e.g. abstract, Figs 1-8). Schmid et al. teach that the coated metal pigments are substrate platelet-based pigment comprising a vacuum metallized pigment (e.g. abstract, paragraphs 0093, 0113-0117, 0123). Schmid et al. teach that the pigments may be used in hair compositions, including hair color (e.g. paragraphs 0160 and 0177). Schmid et al. teach that the substrate platelet-based pigment comprises a coating of at least one highly refractive metal oxide having a refractive index of greater than 1.65, which overlaps with the claimed range of “at least about 1.9” (e.g. paragraphs 0104, 0113-0117). Schmid et al. teach that the coating has a thickness of 10-1000 nm, which overlaps with the claimed range of “at least about 50 nm” (e.g. paragraphs 0117, 0118). Schmid et al. teach that the outermost coating has the high refractive index and does not contain an organic compound (e.g. paragraphs 0116 and 0123). It would have been obvious to one of ordinary skill in the art at the time of filing to select the pigments of Schmid et al. for use in the compositions of ‘712 in order to obtain the benefits of improved sparkle intensity. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claims 24 and 25 the claims of patent ‘712 are silent. However, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the concentration of 3-aminopropyltriethoxysilane, methyltriethoxysilane, and pigment through routine experimentation in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. 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).
Response to Arguments and Declaration
Applicant's arguments filed 5/19/26 have been fully considered but they are not persuasive.
Applicant argues on page 12 that claims 3, 6, and 7 are not properly withdrawn as
directed to a non-elected species because although the method of claims 3, 6, and 7 requires that the agent (a) further comprises an organic silicon compound of formula (II), this still encompasses the elected species for (al) the organic silicon compound (a combination of (3- aminopropyl)triethoxysilane and methyltriethoxysilane) because the claims are written in open ended "comprising" format and do not exclude embodiments in which the agent (a) comprises additional organic silicon compounds in addition to the elected compounds for (al).
This is not found persuasive. As component (a) Applicant elected a combination of (3- aminopropyl)triethoxysilane and methyltriethoxysilane, and did not elect a combination of (3- aminopropyl)triethoxysilane, methyltriethoxysilane and a third organic silicon of Formula (II).
Applicant argues, beginning on page 14, that the at least one organosilicon compound of Brun is specifically "chosen from silanes comprising one, two and three silicon atoms, wherein the at least one organosilicon compound also comprises at least one basic chemical function and at least one group chosen from hydroxyl and hydrolysable groups per molecule." (Abstract of Brun, emphasis added). Brun does not suggest that any particular benefit would be achieved by further including an organosilicon compound that does not meet this description.
This is not found persuasive. It is not the Examiner's position that the methyltriethoxysilane of Kergosien replace the organosilicon compounds of Brun, but rather that methyltriethoxysilane be added to the organosilicon-containing composition of Brun. As described supra, it would have been obvious to one of ordinary skill in the art at the time of filing to include both 3-aminopropyltriethoxysilane and methyltriethoxysilane as taught by Kergosien et al. for use as the at least one organic silicon compound in the method of Brun et al. One of ordinary skill in the art would have predicted success as Brun et al. teach that mixtures of organic silicon compounds can be used and one would have been motivated because Kergosien et al. teach that the combination of 3-aminopropyltriethoxysilane and methyltriethoxysilane exhibits both good reactivity and properties of stability before application thereof to keratin materials, and are capable of forming films or coatings which are long-lasting (e.g. column 1, lines 37-43). It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Applicant further argues that Kergosien does not indicate that the makeup compositions impart a color on the keratin material that is long lasting after the composition is washed off. Therefore, a person of ordinary skill in the art would not have expected that the use of the combination of organosilicon compounds taught by Kergosien in the process of Brun would lead to improved wash fastness of a keratin fiber dyed through the resulting process.
This is not found persuasive. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, both Brun and Kergosien are directed to composition comprising 3-aminopropyltriethoxysilane for application to hair to form a film. Kergosien et al. teach that the combination of 3-aminopropyltriethoxysilane and methyltriethoxysilane exhibits both good reactivity and properties of stability before application thereof to keratin materials, and are capable of forming films or coatings which are long-lasting (e.g. column 1, lines 37-43).Kergosien et al. teach persistence on washing with water and with detergent (e.g. paragraph 0012).
Applicant further argues on page 15 and in the Declaration of Jürgen Schöpgens, that surprisingly improved performance is achieved in terms of both color intensity and wash stability of a hair strand dyed using a cosmetic agent when a cosmetic agent is used that includes an organic silicon compound of the formula (I) and an organic silicon compound of the formula (IV), as those formulas are defined in present claim 1.
This is not found persuasive. The claims are much broader than the tested compositions, both in terms of ingredients and amounts thereof. While the Examiner has based the office action on the elected species of 3-aminopropyltriethoxysilane and methyltriethoxysilane, the claims are not limited to this combination. It is unclear if the same effect would be seen for all concentrations and structures within the scope of the claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In addition, Kergosien et al. teach that the combination of 3-aminopropyltriethoxysilane and methyltriethoxysilane exhibits both good reactivity and properties of stability before application thereof to keratin materials, and are capable of forming films or coatings which are long-lasting (e.g. column 1, lines 37-43).
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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