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 .
Claim Status
Applicant’s claim amendments filed 02 April 2026 are acknowledged.
Claims 1-6 & 18-31 are pending.
Claims 7-17 are cancelled.
Claims 1, 3, 6, 18, 22-24 & 27 are amended.
Claims 28-31 are withdrawn.
Claims 1-6 & 18-27 are under consideration.
Examination is to the extent of the following species:
A) Lipophilic compound: mineral oil;
B) Thickening polymer: xanthan gum;
C) Type of composition A): aqueous;
D) Composition C-present or absent: Composition C is absent.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Withdrawn Objections/Rejections
The objection to claim 6 is withdrawn due to amendments which properly refer the claim back to claim 1 elements.
The rejection of claims 3, 18 and 22 under 35 USC 112(b) for lack of clarity regarding whether one or more is needed to satisfy the claim limitations is withdrawn due to claim amendments.
The rejection of claims 22-24 and 27 under 35 USC 112(b)-lack of antecedent basis is withdrawn due to claim amendments which provide antecedent basis.
The rejection of claims 1, 2, 4, 6, 19, 20, 22, & 24-27 under 35 U.S.C. 103 over Nocker in view of Elumen; claim 3 under 35 U.S.C. 103 over Nocker, Elumen and Picker; claim under 35 U.S.C. 103 over Nocker, Elumen, and Onitsuka; claim 18 under 35 U.S.C. 103 over Nocker, Elumen and Chuang; claim 21 under 35 U.S.C. 103 over Nocker, Elumen, Xanthan Gum and Seper; and claim 23 under 35 U.S.C. 103 over Nocker, Elumen and further Legrand is withdrawn due to claim 1 amendments which require the pH to be 7 to 12 and the at least one alkalizing agent to be selected from the “group consisting of ammonia…or alkanol amines salts according to general structure I”.
New & Maintained Objections/Rejections
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
The numerals for claim 1 are a mixture of Roman numerals and Arabic numerals. See “general structure (I)” and “(1)”. They should be the same font (i.e. either “I” or “1”).
Claim 1 is also not written in parallel. Claim 1, line 4, recites “one or more alkalizing agent(s)”. Claim 1, line 10, recites “the at least one alkalizing agent(s)”.
Applicant may wish to consider whether a claim 1, line 10, recitation of “one or more alkalizing agent(s)” would obviate the objection.
Claim 1 also needs the conjunction “and” to signal the end of a list for the “alkalizing agent(s)”. Applicant may wish to consider whether an amendment to recite “2-amino-2- hydroxymethyl-propane-1,3-diol, and organic alkyl or alkanol amines salts thereof according to general structure (1)…” would obviate the objection (emphasis added).
Claim 6 is not written in parallel to claims 1 & 18. Claim 1 recites “a) one or more guanidine compound(s) and/or its salts” (emphasis added) but claim 6 recites “the one or more compound(s) according to a) of composition B”.
Applicant may wish to consider whether a claim 6 amendment to be in parallel to claim 18 would obviate the objection.
Appropriate correction is required.
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, 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 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.
Claims 1, 2, 4, 6, 19, 20, 22 & 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Nocker [(EP 1366755; Published: 12/03/2003); as evidenced by Jijima (EP 1719498; Published: 11/08/2006)] in view of Pratt (EP 1398020; Published 03/17/2004).
Claim Analysis: Claim 27 recites “the compositions of the kit are mixed directly prior to application onto keratin fibers” which is a statement of intended use and does not further limit the composition.
With regard to claims 1 a), 1 b), 1c), 6, 19, 20, 22, & 24, Nocker in Example 5 teaches a composition for conditioning and/or repair purposes after colouring hair with direct acidic dyes comprising water (i.e. aqueous composition), 5.0 % guanidinium chloride (i.e. guanidine hydrochloride), 1.5% silicium/silicone oil (i.e. lipophilic compound), phosphoric acid (i.e. oxidizing agent), and cetrimonium chloride (surfactant; [0007]; [0049]). With regard to claim 2, the Example 5 composition is free of persalt and/or persulfate [0049]. With regard to claims 1, 25 & 26, Nocker teaches a pH in the range from 1.5 to 5 is found to be very effective to reduce bleeding of acidic dyes from hair and exemplifies a pH of 2.5 in the Example 2 conditioner ([0007]; [0046]). With regard to claim 26, it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Nocker’s Example 5 conditioner by adjusting the pH to 2.5 because this pH is taught as suitable by Nocker for the conditioners which reducing the bleeding of acidic dyes from the hair. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to the reducing the bleeding of acidic dyes from hair. With regard to claim 27, Nocker teaches “this type of composition [i.e. conditioner] can certainly be at the same time colouring composition when dyes are included into preparation” (i.e. the dye components/composition A are mixed with the conditioner/composition B prior to use; [0007]). Nocker teaches the coloring agent is Elumen RR which comprises acid red 52 and it is “used throughout the tests” of the Examples ([0040]; [0043]). As evidenced by Jijima, Acid Red 52 is a direct dye ([0017] & [0018]).
Nocker does not teach a composition A comprising one or more direct dyes and one or more alkalizing agents with composition A having a pH of 7 to 12.
In the same field of invention of dyeing hair with acid dyes, with regard to claim 1, Pratt teaches a composition comprising a direct dye and an alkalizing agent which include ammonia and alkanolamines such as monoethanolamine and isopropanolamine or salts thereof in an amount of “especially 0.5 to 5 wt%” (i.e. alkalizing agent including that of general structure 1; [0006] & [00058]). With regard to claim 1, “the direct dye (I) exhibits high storage stability within a wide pH range from 2 to 11 which is a pH range employed ordinarily for hair dyes…Use in a pH range of 5 or greater is however preferred from the viewpoint of dyeing property… owing to high stability of the direct dye against an alkaline agent, the hair dye composition can be used at a pH above 8, particularly 8 to 11 which permits a high dyeing power, and even after storage for a long period of time, it exhibits high dyeing power without decomposition of the direct dye” (i.e. the composition A can be stored at a pH of 2 to 11 and operate with acidic pH range/i.e. acid hair dye; [00058]). With regard to claims 1 & 4, Pratt teaches “typically, the first composition comprises the azo dye represented by the formula (I) and an alkaline agent in an aqueous medium with a pH of from 8 to 12. The second composition comprises hydrogen peroxide in a slightly acidic aqueous medium” [00068]. Pratt teaches the pKa of the some of the dyes are acidic with pKa values from 2.8 to 6.5 [0093]. With regard to claim 2, Pratt teaches compositions the one part composition and the two part composition are free of persulfates [00067].
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Nocker’s kit comprising Elumen RR and conditioning composition by substituting the generically taught Elumen RR dye composition with the Pratt’s alkaline direct dye composition having a pH of 2 to 11 and comprising any one of ammonia and alkanolamines such as monoethanolamine and isopropanolamine because both Elumen RR and Pratt’s composition are direct dye compositions which operate as acidic hair dyes and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, to provide different hair colors using a composition with “high dyeing power” due to the “high stability of the direct dye against an alkaline agent” as taught by Pratt.
With regard to the recited one or more guanidine compounds, lipophilic compounds, and the pH of composition B, the compositions suggested by the combined teachings of Nocker and Pratt teach these parameters with values that overlap or fall within the claimed ranges. 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).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nocker & Pratt as applied to claims 1, 2, 4, 6, 19, 20, 22, & 24-27 above, and further in view of Picker (EP 3,329,904; Published: 06/06/2018; previously cited).
Claim Analysis: As above.
The teachings of Nocker & Pratt are described above. In brief, the combined teachings of Nocker & Pratt suggest a kit comprising an alkaline direct hair dye and a conditioner which reduces the bleeding of acid hair dyes. The kit suggested by the combined teachings of Nocker and Pratt comprise direct hair dyes. Pratt teaches the azo dye of their formula (I) is an anionic dye (i.e. anionic direct dye; [0053]).
Neither Nocker nor Pratt teach inclusion HC Blue 18, HC Red 18, and HC Yellow 16.
In the same field of invention of improving the wash-fastness of artificially-colored keratin fibers, with regard to claim 3, Picker teaches acid black 1, Acid Red 52, Yellow 10/D&C Yellow No. 10, Ext. Violet 2/D&C Violet No. 2, Orange 4/D&C Orange No. 4, red 33/D&C Red No. 33, HC Blue 18, HC Red 18, and HC Yellow 16 are anionic direct dyes [0072].
Here, at least rationale (A) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the direct hair dye suggested by the combined teachings of Nocker and Pratt by adding any one of HC Blue 18, HC Red 18, and HC Yellow 16 to the composition as suggested by Picker’s teachings because the hair dye comprises anionic direct dyes and HC Blue 18, HC Red 18, and HC Yellow 16 are anionic direct dyes suitable for application to hair as taught by Picker. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to add blue, red, or yellow tones to hair.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nocker & Pratt, as applied to claims 1, 2, 4, 6, 19, 20, 22, & 24-27 above, and further in view of Onitsuka (US 6,206,935; Published: 03/27/2001; previously cited).
Claim Analysis: As above.
The teachings of Nocker & Pratt are described above. In brief, the combined teachings of Nocker & Pratt suggest a kit comprising a direct hair dye and a conditioner which reduces the bleeding of acid hair dyes. Pratt teaches the azo anionic direct dye of their invention is present in an amount of “0.0001 to 20 % by weight, based on the whole composition” (Pratt’s claim 4). Pratt teaches the pKa of the dyes of their invention and they are acidic [0093].
Neither Nocker nor Pratt teach the amount of direct dyes in composition A.
In the same field of invention of dyeing hair with direct dyes, with regard to claim 5, Onitsuka in Table 2 Formulation X teaches a direct hair dye comprising water, 16% propylene carbonate, 4.0% ethanol, sodium hydroxide and 0.47% direct dyes (i.e. Orange No. 205, Violet No. 401, and Red No. 106; col. 4, ll. 40-55). More broadly, with regard to claim 5, Onitsuka teaches inclusion of acid direct dyes in an amount of 0.2 to 5 wt.% (col. 2, ll. 10-20 & 35-45).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the direct hair dye suggested by the combined teachings of Nocker and Pratt by adjusting the amount of acid dyes to be between 0.2 to 5 wt.% as taught by Onitsuka because both Pratt’s hair dye and Onitsuka’s hair dye compositions comprise acid direct dyes and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success in order to use the direct dyes in an amount that is art recognized as suitable for dyeing hair.
With regard to the recited amounts of direct dyes/acid dyes, the combined teachings of Nocker, Pratt, and Onitsuka suggest the acid dyes in an amount which overlaps or falls within the claimed range. 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).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Nocker & Pratt as applied to claims 1, 2, 4, 6, 19, 20, 22, & 24-27 above, and further in view of Chuang (US 2012/0141398; Published: 06/07/2012; previously cited).
Claim Analysis: As above.
The teachings of Nocker & Pratt are described above. In brief, the combined teachings of Nocker & Pratt suggest a kit comprising an acidic direct hair dye containing anionic direct dyes and a conditioner which reduces the bleeding of acid hair dyes from hair dyed with Elumen. Nocker teaches the conditioning composition comprises guanidine chloride (i.e. guanidine hydrochloride; Example 5-[0049]).
Neither Nocker, nor Pratt teach the compound is guanidine sulfate.
In the same field of invention of hair dyes, with regard to claim 18, Chuang teaches guanidine salts such as guanidine hydrochloride and guanidine sulfate are organic alkali agents (title; [0042]). Chuang teaches the direct dyes of D&C Orange No. 4 (anionic direct dye), Ext. D& C Violet No. 2, D & C Yellow 10, and Acid Red 52 as a suitable cosmetic colors for their invention (Table 6-pg. 4 & 5).
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair conditioner suggested by the combined teachings of Nocker and Pratt by substituting the guanidine chloride with guanidine sulfate with a reasonable expectation of success because they are both suitable alkali agents for use in the hair dyes including those which contain the direct anionic dyes as taught by Chuang and simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. M.P.E.P. §2144.07 states "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Nocker & Elumen as applied to claims 1, 2, 4, 6, 19, 20, 22, & 24-27 above, and further in view of Xanthan Gum (https://www.beautycon.com/article/xanthan-gum-hair-gel; Published: 11/02/2011; previously cited) and Seper (US 5,935,560; Published: 08/10/1999; previously cited).
Claim Analysis: As above.
The teachings of Nocker and Pratt are described above. In brief, Nocker teaches a hair conditioner which improves the color fastness. Nocker’s Example 5 hair conditioner is reasonably an emulsion because it comprises the lipophilic agents, silicium/silicone oil and cetearyl alcohol; the surfactant, cetrimonium chloride; and water [0049]).
Neither Nocker nor Pratt teach inclusion of xanthan gum.
With regard to claim 21, Xanthan Gum teaches xanthan gum is useful in hair conditioners and it functions as a viscosity modifier to produce thermally stable creamy products; it is also an excellent emulsion stabilization agent which prevents phase separation (pg. 6).
With regard to claim 21, Seper teaches a composition for imparting durable conditioning properties to hair which may be applied to the hair as an emulsion or a conditioner (abstract; col. 1, ll. 15-25). Seper teaches thickening their compositions with xanthan gum in an amount from 0% to about 3% of the composition (col. 8, ll. 30-45).
Here, at least rationale (A), may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the hair conditioner/composition B suggested by the combined teachings of Nocker and Pratt by adding 0-3% xanthan gum to the hair conditioner as suggested by the combined teachings of Xanthan Gum and Seper because the composition suggested by the combined teachings of Nocker and Pratt is reasonably an emulsion and xanthan gum has the beneficial property of stabilizing emulsions while providing a thick creamy consistency to the formulation as suggested by the combined teachings of Xanthan Gum and Seper. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the composition and stabilize the emulsion.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Nocker & Elumen as applied to claims 1, 2, 4, 6, 19, 20, 22, & 24-27 above, and further in view of Legrand (KR 20040036597; Published 04/30/2004; previously cited) and Gerstein (EP 0133905; Published: 03/13/1985; previously cited).
Claim Analysis: As above.
*All references refer to the English language translation.
The teachings of Nocker & Pratt are described above. In brief, the combined teachings of Nocker & Pratt suggest a kit comprising direct hair dye and a conditioner which reduces the bleeding of acid hair dyes. The conditioning composition comprises phosphoric acid (Nocker, Example 5-[0049]). Nocker teaches a pH in the range from 1.5 to 5 is found to be very effective to reduce bleeding of acidic dyes from hair and exemplifies a pH of 2.5 in the Example 2 conditioner (i.e. the hair conditioner is a low pH; [0007]; [0046]). Pratt teaches “hair dyeing and bleaching can be carried out simultaneously, which facilitates more vivid hair dyeing. Examples of the oxidizing agent include hydrogen peroxide…” [0059].
Neither Nocker nor Pratt teach the conditioning composition comprises hydrogen peroxide.
In the same field of invention of dyeing hair, Legrand teaches compositions for dyeing keratin materials (pg. 4). Legrand teaches that phosphoric acid is a oxidizing agent (pg. 9).
In the same field of invention, Gerstein teaches a low pH hair conditioner and neutralizer conditioning compositions comprising an oxidizing agent (title; abstract). Gerstein teaches hydrogen peroxide is an oxidizing agent (pg. 2, ll. 10-15). Gerstein teaches “the action of an oxidative agent, typically hydrogen peroxide, in the acidic preparation, provides an immediate and effective result in reconstructing the disulfide bonds. Both the acidity of the preparation and the presence of hydrogen peroxide serve to quickly restore the hair to its normal condition providing close to normal tensile strength and reducing the chance of accidental damage to it in its weakened state” (pg. 3, ll.5-20).
Here, at least rationale (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the conditioning composition/composition B suggested by the combined teachings of Nocker and Pratt by substituting the phosphoric acid with hydrogen peroxide as taught by Pratt and Gerstein because Nocker and Gerstein are both directed to conditioners comprising oxidizing agents including phosphoric acid and hydrogen peroxide as suggested by the combined teachings of Legrand and Gerstein and it is obvious to modify similar compositions in the same way. The ordinary skill artisan would have been motivated to do so, with an expectation of success, in order to restore the dyed hair to its normal condition by restoring disulfide bonds, providing close to normal tensile strength and reducing the chance of accidental damage through use of hydrogen peroxide as taught by Gerstein.
Response to Arguments
In the traverse of the rejection of claims 1-6 & 18-27 under 35 USC 103(a), Applicant argues claim 1 has been amended to recite specific options for alkalizing agents and a pH range of 7 to 12 for composition A (reply, pg. 7-8).
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues the Picker, Onisuka, and Cheung references individually (reply, pg. 9). Applicant argues Picker does not teach an alkaline direct-dye composition or use of the claimed alkalizing agents; Onitsuka’s direct dye composition itself is acidic, not alkaline; and Chuang uses oxidative dyes, not direct dyes (reply, pg. 9).
This is not persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Nocker teaches their formulation comprises direct dyes, Pratt’s invention comprises anionic direct dyes and Picker is used to teach the anionic direct dyes and HC Blue 18, HC Red 18, and HC Yellow 16; Onitsuka in the Table 2 Formulation X teaches a direct hair dye comprising sodium hydroxide; and Chuang teaches the direct dye, D&C Orange No. 4 which is an anionic direct dye.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-6 & 18-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,793,736 (hereinafter ‘736; Issued: 10/24/2023) in view of Nocker (EP 1366755; Published: 12/03/2003; previously cited), Chuang (US 2012/0141398; Published: 06/07/2012; previously cited), Onitsuka (US 6,206,935; Published: 03/27/2001; previously cited), Xanthan Gum (https://www.beautycon.com/article/xanthan-gum-hair-gel; Published: 11/02/2011; previously cited) and Seper (US 5,935,560; Published: 08/10/1999; previously cited). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘736 recites a two part dyeing composition/kit of parts comprising a first non-oxidizing aqueous composition having a pH in the range of 7 to 12 which comprises the direct dyes HC Red 18, HC Blue 18 and HC Yellow 16; alkalizing agent which may be ammonia, or alkyl or alkanolamines and/or their salts and/or mixtures; and benzyl alcohol. The amount of these alkalizing agent and benzyl alcohol overlap or fall within the claimed ranges. The ‘736 recites a second aqueous acidic composition. The pH of the composition is necessarily less than 7 because that is an acidic pH. The second aqueous acidic composition comprises an oxidizing agent, which may be hydrogen peroxide, and guanidine. The ‘736 recites the non-oxidizing is free of bleaching compounds; the ordinary skilled artisan recognized that persulfates and persalts are bleaching compounds. The ‘736 also does not recite/require use of bleaching compounds and/or persulfates or persalts. As such, the ‘736 kit is reasonably free of persulfates and persalts. The ‘736 does not recite the guanidine is guanidine sulfate and the amount of guanidine compounds; inclusion of lipophilic compounds and their amount, thickening compounds and their amounts, and surfactant; and amount of direct dyes. With regard to the surfactant; the lipophilic compound and its amount; and amount of guanidine compounds, the teachings of Nocker are addressed above. With regard to the species of guanidine being guanidine sulfate, the teaching of Chuang are addressed above. With regard to inclusion of thickening compounds in the acidic composition, the teachings of Xanthan gum and Seper are addressed above. With regard to the amount of direct dyes, the teachings of Onitsuka are addressed above. With regard to the guanidine sulfate, it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have substituted the ‘736’s generically recited guanidine with guanidine sulfate as taught by Chuang and adjusting the amount to be 5.0% as taught by Nocker because the ‘736, Chuang and Nocker are drawn to dyeing hair with acid dyes and guanidine sulfate is an organic alkali agent used with acid dyes with guanidine compounds used in an amount of 5.0%. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use an alkali agent, art recognized as suitable for dyeing hair in an art recognized suitable amounts. With regard to the lipophilic compounds, it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the composition recited by the ‘736 by adding 1.5% silicone oil as taught by Nocker because the ‘736 and Nocker are directed to dyeing hair. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to condition hair. With regard to the thickening agents/xanthan gum, it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the acidic composition recited by the ‘736 by adding xanthan gum/thickening agents in an amount of 0-3% as suggested by the combined teachings of Xanthan Gum and Seper because the ‘736, Xanthan Gum, and Seper are directed to hair care compositions and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the composition using amounts of reagents which are art recognized as suitable for hair compositions. With regard to the surfactant, it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the composition recited by the ‘736 application by adding cetrimonium chloride as taught by Nocker because the ‘736 and Nocker are directed to hair dyeing compositions. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to stabilize the formulation by suspending the reagents. With regard to the amount of direct dyes, it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the composition of the ‘736 by adjusting the amount of direct dyes to be between 0.2 to 5 wt.% as taught by Onitsuka because the ‘736 and Onitsuka are both directed to hair dyeing compositions have direct dyes and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success in order to provide the direct dyes in an amount art recognized as suitable for hair compositions having direct dyes. With regard to the recited pH range; amount of direct dyes in Composition A, guanidine compounds in the acidic composition, lipophilic components and thickening components/xanthan gum, the ‘736, Nocker, Chuang, Onitsuka, Xanthan Gum, and Seper teach these parameters with values which fall within or overlap with the recited ranges. 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).
Response to Arguments
In the traverse of the rejection of claims 1-6 and 18-27 for nonstatutory double patenting, Applicant argues the rejections are improper because one would not arrive at the presently claimed invention because Nocker is directed to a single conditioning composition applied after dyeing hair (reply, pg. 9-10). Applicant further argues hindsight reconstruction (reply, pg. 10).
This is not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, the ‘736 patent is a separately packed non-oxidizing composition having a pH range of 7 to 12 and a separately packed second aqueous acidic composition. Further, Nocker is a two-component kit using the acidic Elumen RR and Example 5 conditioner to dye hair ([0040] & [0049]).
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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/LORI K MATTISON/Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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