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
Applicants’ amendments and arguments filed 12/31/2025 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claims 2-3, 5-7, 9-10, 12-13, 15-18, 20-28, 30-41, 43-45, 47-49, 51-53, 55-61, 63, 66-69, 72-90, and 95-103 are canceled.
Claims 91-94 remain withdrawn.
Claims 1, 4, 8, 11, 19, 29, 42, 46, 54, 62, 65, and 70-71 are amended.
Claims 2-3, 5-7, 9-10, 12-13, 15-18, 20-28, 30-41, 43-45, 47-49, 51-53, 55-61, 63, 66-69, 72-90, and 95-103 are cancelled.
Claims 1, 4, 8, 11, 14, 19, 29, 42, 46, 50, 54, 62, 64-65, and 70-71 are examined on the merits.
New Rejections Necessitated by Amendments
Claim Interpretation
In regards to claim 1, although the reference is silent about the artificial melanin material is formed while the solution is in contact with the hair, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. /n re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same hair coming in contact with the same hair dye solution by the same mode of administration in the same amount in both the instant claims and the prior art reference would result in the artificial melanin material forms while in contact with the hair. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, the references teaches, either expressly or inherently, each and every limitation of the instant claims.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 is dependent upon claim 1 which claims “a concentration of ammonia selected over the range of 1% to 10% (w/v)” while claim 19 recites the optional limitation of “the solution comprises ammonia at concentration less than or equal to 10%” thus further broadening the 1-10% range and failing to further limit the subject matter. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. For the purpose of moving prosecution forward, the examiner broadly interprets the 1-10% ammonia of claim 1 to meet the limitations of claim 19.
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.
Claims 1, 4, 8, 11, 14, 19, 29, 42, 46, 50, 54, 62, 64-65, 70 and 71 are rejected under 35 U.S.C. 103 as being unpatentable over Koike et al. (US7776105B2, published 08/17/2010, hereafter Koike) in view of Zhou et al. (Zhou P, Deng Y, Lyu B, Zhang R, Zhang H, Ma H, Lyu Y, Wei S. Rapidly-deposited polydopamine coating via high temperature and vigorous stirring: formation, characterization and biofunctional evaluation. PLoS One. 2014 Nov 21;9(11):e113087. doi: 10.1371/journal.pone.0113087. PMID: 25415328; PMCID: PMC4240549, hereafter Zhou), as evidenced by Lakshminarayanan et al. (Lakshminarayanan, R., Madhavi, S., & Sim, C. P. C. (2018). Oxidative Polymerization of Dopamine: A High-Definition Multifunctional Coatings for Electrospun Nanofibers - An Overview. InTech. doi: 10.5772/intechopen.81036, hereafter Lakshminarayanan), and as evidenced by You et al. (Inseong You, Hyejin Jeon, Kyueui Lee, Minjae Do, Young Chang Seo, Haesung A. Lee, Haeshin Lee, Polydopamine coating in organic solvent for material-independent immobilization of water-insoluble molecules and avoidance of substrate hydrolysis, Journal of Industrial and Engineering Chemistry, Volume 46, 2017, Pages 379-385, ISSN 1226-086X, https://doi.org/10.1016/j.jiec.2016.11.007., hereafter You).
As evidenced by Lakshminarayanan, catecholamines undergo oxidative polymerization under alkaline conditions and form adhesive nanocoatings on a wide variety of substrates (abstract). As further evidenced by Lakshminarayanan, dopamine undergoes oxidative polymerization under alkaline conditions, more specifically polydopamine (page 114, paragraph 1). Lastly, as evidenced by Lakshminarayanan, a smooth coating of polydopamine (pDA) can be achieved by the enzyme tyrosinase which catalyzes the oxidation of dopamine (page 117, paragraph 2).
As evidenced by You, polydopamine (pDA) coating exposes amine and catechol functional groups on the coated surface and supports chemical reactions with various functional groups that are reactive to the amine, thiol, and catechol group (page 379, introduction, paragraph 1).
Koike teaches a method of making a hair dye composition comprising a melanin precursor (claim 1; according to the claim limitations of the instant claim 1). Koike teaches the hair dye composition provides a one-part air-oxidative hair dye that can dye the hair easily only by taking it out of the container, applying it to the hair and leaving the resulting hair for awhile (column 10, lines 45-49; according to the claim limitations of the instant claims 1, 4, 8, 11, 14, 46, and 71). Koike teaches an oxidation step for converting, into the melanin precursor, a tyrosine or derivative thereof used as a starting substance with an enzyme (abstract; according to the claim limitations of the instant claims 1 and 54). Koike teaches the melanin precursor as used in the invention is a substance which undergoes oxidative polymerization (column 2, lines 1-5; according to the claim limitations of the instant claim 64). Koike claims 3-(3,4-dihydroxyphenyl)alanine(DOPA) or 3,4-dihydroxyphenethylamine (Dopamine) is used as the starting substance (claim 10 and 19; according to the claim limitations of the instant claims 1 and 54). Koike further teaches the substance that will be a polymer (melanin) is in the form of a monomer or oligomer (column 7, lines 45-48; according to the claim limitations of the instant claim 54). Furthermore, Koike teaches that when the hair is dyed to a dark (black) color (column 10, lines 61-62; according to the claim limitations of the instant claims 4 and 70). Koike claims the composition comprises a catechol oxidase enzyme to catalyze the oxidation and further claims the catechol oxidase to be tyrosinase (claims 1 and 4; according to the claim limitations of the instant claims 29). Koike teaches that catechol oxidases such as tyrosinase need coordination of a divalent copper ion in the catalyst active center so as to exhibit its activity and teaches the addition of a copper sulfate solution at about 0.1 to 2mM (column 4, lines 40-57; according to the claim limitations of the instant claims 46, 50, and 70). Koike teaches the hair dye composition is adjusted to the preferable pH of 6-11, more preferably 7 to 10.5, that is adjusted by using alkali agents such as sodium hydroxide or ammonia (claim 9 and column 11, lines 16-19; according to the claim limitations of the instant claims 1, 19 42, 46, 70, and 71). Furthermore, Koike teaches the pH regulators in a concentrations of 0.01-20% or more preferably 0.1-10% of the whole composition (column 11, lines 29-31; according to the claim limitations of the instant claims 1, 19, 42, and 70). Koike teaches the addition of a chelating agent such as EDTA or a salt thereof (column 12,lines 30-33; according to the claim limitations of the instant claim 8). Koike teaches the substrate may be added to give a concentration of from about 1 to 10 mM, more preferably from about 3 to 6 mM and hydrogen peroxide twice the concentration of the substrate may be added as an electron donor (column 6, lines 53-56; according to the claim limitations of the instant claims 42 and 70). Koike provides an example composition for the hair dye which comprises 30g of melanin precursor solution, 0.2g xanthan gum, 0.5g aqueous ammonium (28%), 10g ethanol, 0.5 g “softanol 90”, a balance of water, and a sufficient quantity of antioxidant per the 100g total composition (columns 17-18, table and lines 37-46; according to the claim limitations of the instant claims 8, 11, 19, and 70). Koike provides a hair dying test utilizing a spectrophotometer to evaluate the color difference thus demonstrating the color of the original gray hair was 15 after the first dye, 28 after the third dyeing, and 38 after the fifth dying showing that the hair became black (column 18, lines 24-26; according to the claim limitations of the instant claim 1).
Koike fails to teach the temperature at greater than or equal to 30oC at the time of treating the hair as in instant claims 1, 14, 70, and 71. Although Koike teaches the hair dye results in grey hair turning black, it does not explicitly teach the melanin precursor is deposited on the hair as in instant claim 1.
Zhou teaches a deposited, polydopamine coating that has a slow self-polymerization and thus a preparation of rapid-forming PDA films becomes imperative for surface modification of biomaterials (title and abstract). Zhou demonstrated that the PDA films show marked surface augment with an increase in polymerization temperature between 25-60oC, indicating temperature has significant impact on polymerization and deposition (page 4, results and discussion). Furthermore, Zhou provides a graph demonstrating the deposition effects in the change in temperature (page 4, results and discussion). Lastly, Zhou teaches that according to the thermodynamic principle, higher temperature would promote the oxidation of dopamine as well as the deposition process of PDA onto substrate surface (page 4, results and discussion).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to modify the method of dying hair with a composition comprising dopamine, tyrosine, tyrosinase, and copper sulfate which results in polydopamine as outlined by Koike as evidenced by Lakshminarayanan and You by heating to composition to a temperature between 25 oC and 60 oC as outlined by Zhou under TSM, see MPEP 2143(G). As outlined by Zhou, heating polydopamine results in more oxidation of dopamine as well as better deposition onto the substrate which would motivate someone skilled in the art to advantageously combine ammonium sulfate with the composition of Yu as it would have a reasonable expectation of success. Further, it would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a the method of dying hair with a composition comprising dopamine, tyrosine, tyrosinase, and copper sulfate which results in polydopamine as outlined by Koike as evidenced by Lakshminarayanan and You with the ready for improvement with the known technique of the polydopamine precursor depositing onto the hair as a coating as outlined by Zhou. Adding the limitation to a hair dye composition utilizing polydopamine as claimed by instant claim 1 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Response to Applicant’s Arguments
Applicant’s arguments filed on 12/31/2025 have been considered.
In regards to the 35 USC § 103 rejection, Applicant argues that all claim limitations must be taught or suggested by the prior art and further argues by highlighting the claims have been amended to state “wherein the artificial melanin material comprises artificial melanin nanoparticles” and “and a concentration of ammonia selected over the range of 1% to 10% (w/v)”. Additionally, Applicant argues that the instant application is directed towards a permanent coloration and states that Koike describes a gradual color development requiring repeated applications.
In response to Applicant’s argument that the claims have been amended to include nanoparticles and ammonia at a desired concentration, it is first noted that Applicant has failed to provide any reasoning as to why the rejections of record fail to teach these limitations. Further, it is noted in the rejection above and reiterated here Koike teaches the hair dye composition is adjusted to the preferable pH of 6-11, more preferably 7 to 10.5, that is adjusted by using alkali agents such as sodium hydroxide or ammonia (claim 9 and column 11, lines 16-19) and Koike teaches the pH regulators in a concentrations of 0.01-20% or more preferably 0.1-10% of the whole composition (column 11, lines 29-31).
In response to Applicant’s argument that Koike is directed towards a gradual color development, it is first noted, 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). Further, it is noted that Applicant’s instant claims do not provide any limitation to the amount of applications to the hair, but instead claims “a method of treating hair” generically. Further, it is noted that Applicant’s instant claims recite the transitional phrase “comprising” which is inclusive or open-ended and does not exclude additional, unrecited elements or method steps per the MPEP 2111.03(I). Therefore, the instant claims allow for additional steps such as multiple applications.
In summary, the examiner is not persuaded by Applicant’s arguments and the rejections are updated to account for amendments.
In regards to the Double Patenting rejections, Applicant has filed a terminal disclaimer for both US Application 18/834,812 and US Patent 12377036, and the terminal disclaimer has been approved. Therefore, the double patenting rejections of record have been withdrawn.
Conclusion
No claims 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.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./Examiner, Art Unit 1611
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