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 .
Priority
The instant application is the national stage entry of PCT/EP2020/074202 filed 31 August 2020. Acknowledgement is made of the Applicant’s claim of foreign priority to application DE102019214463.2 filed 23 September 2019. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application. The effective filing date of the instant claims is 31 August 2020.
Examiner’s Note
Applicant's amendments and arguments filed 28 April 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 28 April 2026, it is noted that claims 1, 17, and 23 have been amended and no new matter or claims have been added. Support can be found in the specification at [0129].
Status of the Claims
Claims 1-7, 9-10, 13-20, and 23 are pending.
Claims 1-7, 9-10, 13-20, and 23 are rejected.
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.
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.
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 1-6, 9-10, 13-20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kerl et al. (US 2017/0172901) in view of Hoeffkes et al. (US 2004/0031108) in view of Goutsis et al. (US 2013/0042882).
Kerl teaches a method of coloring or lightening keratin fibers comprising the steps of 1) providing a kit with the agents and then providing and mixing a cosmetic agent M1 and an oxidizing agent preparation M2, 2) applying the mixture onto keratin fibers and leaving it there for 10-60 minutes and 3) rinsing the keratin fibers with water [0125-0129]. The M1 agent comprises an oxidation dye precursor, direct dye, or mixture thereof [0032]. The M1 agent further comprises an aminated silicone polymer of Formula (III), which comprises a secondary amino group and reads on the structure of instant claims 2-4 [0071]. The aminated silicone polymer can be present in amounts from 0.0001-15 wt% [0075] and the direct dye/pigment is present in amounts of 0.001-10 wt% [0068]. In addition, the M1 agent can comprise a cosmetic carrier selected from aqueous, alcoholic, or aqueous-alcoholic wherein the aqueous-alcoholic option can include as little as 10% water by weight [0028-0030]. It is noted that water is not required to be included in the carrier and in some embodiments the carrier can be 100% alcoholic, as taught by Kerl. Additionally, the M1 agent can comprise a solvent such as 1,2-propylene glycol [0031] and surfactants [0078]. Regarding the surfactant, one suitable choice is Ceteareth-12 which is nonionic [0093]. The M2 preparation can comprise isopropyl myristate (3-25 wt%) in the oxidizing preparation [0117] and can further comprise water (40-98 wt%) [0114]. In practice, the cosmetic agent and oxidizing agent are mixed in a 1:1 ratio [0143].
Kerl does not teach applying the composition to the hair for about 1 to about 5 minutes. Kerl does not teach the fatty ingredients of instant claim 17.
Hoeffkes teaches compositions and methods for coloring keratin fibers (abstract) and further teaches that a typical exposure time of the composition to the hair ranges from about 5 to 45 minutes [0210].
Goutsis teaches an oxidizing coloring preparation for hair [0002] wherein the composition can comprise an oxidizing agent preparation [0010]. The oxidizing agent preparation can comprise as a hydrophobic phase an ester selected from isopropyl myristate or isopropyl palmitate [0063].
It would have been prima facie obvious to prepare the kit/composition of Kerl for use in a method for coloring keratin. Kerl teaches all the claimed components throughout the disclosure. That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of silicone polymers, carriers, colorants, solvents, and surfactants from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.” To be sure, the selection of carrier can be 100% alcohol or as little as 10 wt% aqueous. Thus, it would have been obvious to use as little as no water in the composition of Kerl, as required in instant claim 1.
Regarding the agent in instant claim 17, it would have bene obvious to use isopropyl myristate in the oxidizing composition of Kerl and replace said agent with isopropyl palmitate, which is taught as being a suitable alternative in Goutsis. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
Regarding the ranges in claims 13, 18, and 20, the prior art teaches the fat in 2-25 wt%, wherein the upper limit reads on “about” 30 wt%. Kerl also teaches the total amount of polymer and dye present up to 25 wt% and then teaches using the cosmetic agent and oxidizing agent are mixed in a 1:1 ratio. That being said and in lieu of objective evidence of unexpected results, the amount of polymer and dye and the mixing ratio can be viewed as variables which achieve the recognized result of successfully coloring a keratin fiber. The optimum or workable range of agents and ratios can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellants provide no evidence of any secondary consideration such as unexpected results that would render the optimized amounts of agents as nonobvious.
Similarly, the time of exposure, which is taught as ranging from 10-60 minutes, results in the desired level of coloration/lightening of the keratin fibers. That being said and in lieu of objective evidence of unexpected results, the exposure time can be viewed as a variable which achieve the recognized result of desired level of hair coloration. The optimum or workable range of exposure time can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellants provide no evidence of any secondary consideration such as unexpected results that would render the optimized exposure time as nonobvious. In addition, Hoeffkes teaches that for hair coloring, an exposure time as low as 5 minutes is suitable and well known in the art. That being said, it would have been obvious to optimize the exposure time of the hair composition of Kerl including lowering it to about 5 minutes, as required in the instant claims.
The resulting method wherein hair is colored by a two-part composition comprising amino silicone polymer and dye in the first part and isopropyl myristate and surfactant in the other, followed by hair treatment and washing, renders obvious instant claims 1-6, 9-10, 13-20, and 23.
Claims 1-7, 9-10, 13-20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kerl et al. (US 2017/0172901) in view of Hoeffkes et al. (US 2004/0031108) in view of Goutsis et al. (US 2013/0042882) in view of Kalbfleisch et al. (US 2007/0148102).
Kerl, Hoeffkes, and Goutsis, as applied supra, is herein applied in its entirety for its teachings of a method for coloring hair by a two-part composition comprising amino silicone polymer and dye in the first part and isopropyl myristate and surfactant in the other followed by hair treatment and washing.
Kerl does not teach wherein the colorant is an inorganic pigment.
Kalbfleisch teaches a hair coloring composition that can comprise, as the colorant, a direct dye or an inorganic pigment such as black iron oxide [0079].
It would have been prima facie obvious to prepare the composition and method of Kerl and substitute the direct dye with an inorganic pigment such as black iron oxide. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06). The resulting method and composition render obvious instant claims 1-7, 9-10, 13-20, and 23.
Response to Arguments
Applicant's arguments filed 28 April 2026 have been fully considered but they are not persuasive. The Applicant argues, on pages 7-8 of their remarks, that the instant claims require a content of water that is significantly less than the lowest amount of water possible in the disclosure of Kerl.
In response, the carrier of Kerl can be 100% alcoholic, which comprises 0% water. Alternatively, the carrier can comprise an alcohol in up to 98% and water in 2% by weight. As such, Kerl makes it clear that water is not required as the carrier and provides an alternative selection of alcohol.
The Applicant argues, on pages 8-9 of their remarks, that Kerl does not teach or suggest the fatty components of instant claim 17.
In response, Goutis has been applied above to address the Applicant’s amended claim 17.
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 1-7, 9-10, 13-20, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,771,641 in view of Hoeffkes et al. (US 2004/0031108).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘641 patent requires all the same limitations of the instant claims aside from the step of exposing the composition for about 1 to about 5 minutes. Hoeffkes teaches compositions and methods for coloring keratin fibers (abstract) and further teaches that a typical exposure time of the composition to the hair ranges from about 5 to 45 minutes [0210]. It would have been prima facie obvious to modify the method of ‘641 to limit the exposure time of the keratin to the composition to about 5 minutes based on the teaching of Hoeffkes.
Claims 1-7, 9-10, 13-20, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,029,808. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘808 patent requires the colorant in the second composition whereas the instant claims have it in the first composition. Rearrangement or duplication of parts is obvious, therefore it would have been obvious to include the colorant in the first (cosmetic) composition of ‘808, which reads on the instant claims.
Response to Arguments
This rejection is maintained since applicant has (effectively) not responded to the rejection in a substantive manner. See 37 CFR § 1.111(b) and MPEP § 714.02.
Conclusion
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 ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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