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 was filed 19 May 2022 and is the national stage entry for PCT/EP2020/082775 filed 19 November 2020. The Applicant claims priority to foreign application FR1913057 filed 21 November 2019. An English copy of the document has not been provided. Therefore, the effective filing date of the instant application is 19 November 2020.
Election/Restrictions
Claims 41 and 46 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (claim 46) and species (claim 41), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07 April 2025.
Applicant's election with traverse of Group I (claims 25-45) and Formula XII, amodimethicone, and Silicone X-22-3701E in the reply filed on 07 April 2025 is acknowledged. The traversal is on the ground(s) that the groups do not share a special technical feature and that there is no search burden to examine all the claims and species. This is not found persuasive because Herrlein teaches a kit composition and method for coloring hair (abs, claim 30) comprising polycarbodiimide (Table 3), hydroxyfunctional polyacrylic dispersion (Table 2), pigment (Table 1), in the form of an aqueous dispersion (para. 89). Further, the different options and combinations of variables for the species would require numerous search entries.
The requirement is still deemed proper and is therefore made FINAL.
Examiner’s Note
The Applicant's amendments and arguments filed 03 September 2025 and 10 November 2025 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 10 November 2025, it is noted that claims 25, 28-32, 38 have been amended, no new claims have been added, and claims 26, 27, 33, 36, 37 have been canceled. Support for the amendments can be found from newly canceled claims. No new matter has been added.
Claim Objections
Claim 25 is objected to because of the following informalities: the letters and variables of Formula (II) are small and difficult to read. Appropriate correction is required.
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.
Claim(s) 25, 28-32, 34, 35, 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herrlein et al. (WO 2019/211050 A1) and Tsukamoto et al. (US 2018/0371237 A1).
Herrlein et al. teach a multicomponent kit composition (claim 30) and method for coloring hair (abs, entire teaching). One component may be a catalyzing agent (abs, para. 141), such as a carbodiimide (para. 141) or polycarbodiimide (Table 3), another component may be an organic polymer (abs, para. 11), such as hydroxyfunctional polyacrylic dispersion (Table 2), and another component may be a pigment (abs, Table 1). The polymer may form a dispersion in neutral water (para. 89), which is interpreted as an aqueous dispersion, addressing claim 34 and partially claim 25. The polycarbodiimide amount may be 1.2% (Table 3) and the hydroxyfunctional polyacrylic dispersion may be 2.9% (Table 2), addressing claim 25. The organic polymer may comprise monomeric units of alkyl (meth)acrylate and (meth)acrylic acid (para. 145), addressing claim 35. Plasticizers, such as silicone (para. 94, 177) or amino silicone (para. 146), may be added to any composition in an amount of 0.1-20% (para. 180), addressing claims 25 and 38. Amino silicone is interpreted as addressing Applicant’s election of amodimethicone. The composition may optionally include crosslinking agents (para. 304).
Herrlein et al. do not teach an exact combination of a polycarbodiimide, hydroxyfunctional polyacrylic dispersion, and pigment in claim 25. Herrlein does not specifically teach a polycarbodiimide of instant formula XII in claims 25, 28-32.
In regards to selecting the combination of a polycarbodiimide, hydroxyfunctional polyacrylic dispersion, and pigment, “[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)). “When 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
combination of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Herrlein teaches a multicomponent kit composition and method for coloring hair comprising a polycarbodiimide (Table 3), hydroxyfunctional polyacrylic dispersion (Table 2), and a pigment (abs, Table 1), whereas the claimed invention is directed towards a method for dyeing hair comprising a polycarbodiimide compound, at least one aqueous dispersion of particles of polymers, and a pigment or dye. Since Herrlein teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Tsukamoto et al. teach a carbodiimide-based aqueous resin crosslinking agent (entire teaching; para. 3) that is used in fiber-treating agents (para. 2), which is interpreted broadly to include hair fibers, to enhance water resistance in aqueous resin (para. 2), as well as enhance the strength, water resistance, and adhesion of the agent formed from the aqueous resin (para. 3). The steps of synthesizing Polycarbodiimide (A) are given in Synthesis Example 1 (para. 134-137). The steps include mixing dicyclohexylmethane-4,4’-diisocyanate and 3-methyl-1-phenyl-2-phospholene-1-oxide (para. 134). The resulting mixture is then mixed with polyethylene glycol monomethyl ether (para. 136). The compound may be endcapped with structure a1: R1—O—(CH2—CHR2—O)m—H wherein, R1 may be an alkyl group having 1-4 carbons, R2 may be a Hydrogen, and m may be 7-30 (para. 37-40). The synthesis steps provided in Synthesis Example 1 are similar to the synthesis steps in the instant specification (para. 500-502) and are interpreted as resulting in similar compounds (formulas II and XII of instant claims 25, 28, 29 and 32). The polymerization degree may be 2-20 (para. 69). The synthesis example results in an isocyanate-terminated dicyclo-hexylmethane polycarbodiimide (para. 134).
For example, the Oxygen in the endcapped structure corresponds to X1 and X2 in claims 25, 28-31. Instant R1 and R2 as a hydrocarbon-based radical optionally interrupted with a heteroatom in claim 25, monoalkyl ethers of polyalkylene glycol with a hydroxyl group removed in claims 28 and 29, and formula VI wherein R13 is a C1-C4 alkyl group, R14 is a Hydrogen, and “q” is 4-30 in claims 30 and 31. Variables “n”, “z”, and “w” are addressed by the polymerization degree and the isocyanate-terminated dicyclo-hexylmethane polycarbodiimide product (para. 134) for claims 25, 28-32. Monomer A is addressed by the dicyclohexylmethane-4,4’diisocyanate reagent in claim 25. Instant L1 is interpreted as a cycloalkylene radical in claims 25, 28-32 (para. 101 of instant specification). E is O—R3—O wherein R3 is a linear/branched C1-C18 alkylene radical in claims 25, 28-31 or 4,4-dicyclohexylenemethane in claim 32. Varible “m” of 7-30 corresponds to instant “r” and “s” of claim 32 and instant “q” of claims 30 and 31.
Since Herrlein does not specify the polycarbodiimide of instant formula XII for claims 28-32, one of ordinary skill in the art would have been led to use Tsukamoto’s teaching of a carbodiimide-based aqueous resin crosslinking agent comprising the elements and variables of instant formula XII. Tsukamoto teaches a polycarbodiimide produced by reacting dicyclohexylmethane-4,4’-diisocyanate and 3-methyl-1-phenyl-2-phospholene-1-oxide, and subsequently polyethylene glycol monomethyl ether, which results in a compound that makes obvious the compound in claim 32. A person of ordinary skill in the art would have been motivated to combine the teachings because Tsukamoto teaches that this polycarbodiimide is well-known as a fiber-treating agent, which is interpreted broadly to include hair fibers, and may be used to enhance the strength, water resistance, and adhesion in these compositions. Since Herrlein teaches polycarbodiimide compounds in their hair composition and hair treatment method, as well as optional crosslinking agents, one of ordinary skill in the art would have been led to use Tsukamoto’s polycarbodiimide fiber-treating agent and crosslinking agent with a reasonable expectation of success.
Claim(s) 25, 28-32, 34, 35, 38-40, 42-45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herrlein et al. (WO 2019/211050 A1), Tsukamoto et al. (US 2018/0371237 A1), and Kitsuka et al. (WO 2016/084971 A1).
In regards to claim(s) 25, 28-32, 34, 35, 38, Herrlein and Tsukamoto, as applied supra, is herein applied in its entirety for its teachings of a multicomponent kit composition and method for coloring hair comprising a polycarbodiimide, hydroxyfunctional polyacrylic dispersion, and a pigment.
Herrlein teaches that plasticizers, such as silicone (para. 94, 177) or amino silicone (para. 146), may be added to any composition in an amount of 0.1-20% (para. 180), addressing claim 43. The components of Herrlein’s teaching may be applied sequentially or simultaneously (para. 318), addressing claims 44 and 45.
Herrlein does not specifically teach the silicone compounds with a carboxylic group in claims 39, 40, and 42.
Kitsuka et al. teach a cosmetic composition comprising a silicon oil (entire teaching, abs) to improve color uptake, such as an organomodified silicone like amodimethicone (pg. 7, ln. 19) or Shin-Etsu’s X-22-3701 E (pg. 6, ln. 41), which is interpreted as addressing claims 39, 40, and 42 based on the Applicant’s election.
Since Herrlein does not specify using the silicone compound comprising a carboxylic group in claims 39, 40, and 42, one of ordinary skill in the art would have been led to use Kitsuka’s teaching to improve color uptake for hair treatments in Herrlein’s teaching.
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 25-40, 42-45 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21, 23 of copending Application No. 18/549,692 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application recites a process for dyeing hair comprising a polycarbodiimide compound, an aqueous dispersion of acrylic polymers or polyurethanes, optionally a silicone, and pigments/dyes (instant claims 25-40, 42-45). The reference application recites a process for coloring hair comprising a polycarbodiimide compound, an associative polymer, pigments/dyes, and applied simultaneously/sequentially to the hair (claim 1), corresponding to instant claims 1, 44, and 45. Claims 2-8 recites a formula that corresponds to instant claims 26-32. Claim 9 recites an amount for polycarbodiimide, similar to instant claim 33. The associate polymers may be a silicone compound comprising a carboxylic group in claims 10-12 and 20, corresponding to instant claims 39-42. Claim 13 recites an aqueous dispersion of polyurethanes or acrylic polymers, corresponding to instant claim 1. Claim 14 is similar to instant claim 35. The amounts in claim 15 are similar to instant claim 36. The amounts in claims 16, 17, 19, 21 are similar to the amounts in instant claims 33, 36, 38, 43. The silicone oil in claim 18 corresponds to instant claim 37.
Similarly, reference application 18/549,555 recites a process for coloring hair comprising a polycarbodiimide compound, associate polymer, pigments/dyes, and applied simultaneously/sequentially to the hair (claim 1). Claims 1-10, 14, 20, 22, 25 corresponds to instant claims 25-33, 35, 37, 39. Claim 2 formula corresponds to instant claim 26. Claims 3-7 recites a formula that corresponds to the formula in instant claims 27-31. The formula in claim 8 corresponds to instant claim 32. The amounts in claim 9 are similar to the ones in instant claim 33. Claim 10 recites associate polymers that correspond to instant claim 34. Claim 14 recites acrylic polymer monomer units that correspond to the ones in instant claim 35. The silicones in claims 20 and 22 correspond to the ones in instant claims 37 and 39.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Double Patenting Arguments
Applicant's arguments filed 03 September 2025 have been fully considered but they are not persuasive.
The Applicant has requested the above double-patenting rejections be held in abeyance until patentable subject matter is identified. In response, in any future response the Applicant must address the double patenting grounds of rejection, either by presenting arguments why the rejection is not applicable or by the filing of a terminal disclaimer. The Applicant is required to reply to every ground of rejection in the prior office action per 37 CFR 1.111(b). It is noted that only claim objections or requirements as to form not necessary to further considerations of the claims may be requested to be held in abeyance until allowable subject matter is indicated. Applicant is cautioned that further requests to hold this rejection in abeyance will not be considered responsive; such a request does not comply with CFR 1.111 (b).
Response to Arguments
Applicant's arguments filed 03 September 2025 have been fully considered but they are not persuasive.
The Applicant argues that a skilled artisan would not have been motivated to combine the prior art teachings (Remarks, pgs. 15-16).
Applicant’s argument is not found persuasive. The Applicant is reminded that the teachings of KSR are actually an endorsement and expansion of the flexible and expansive approach to obviousness, which clearly invites continued reliance on such broad and flexible analyses concerning the utility of selecting alternative embodiments of components providing art-recognized utility, with no substantial change in the overall utility of a composition so formulated. See KSR International Co. v. Teleflex, Inc., 82 USPQ2d 1385, 1395-96 (U.S.2007) (“the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”; “When 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”; “a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions” exemplified by the holdings of cases such as Merck v. Biocraft.
The Applicant argues that Herrlein teaches away from using polycarbodiimide based on their Examples, and therefore a skilled artisan would not have been motivated to modify the teachings (Remarks, pgs. 17-18).
Applicant’s argument is not found persuasive. The Applicant is erroneously pointing to narrow embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments (see MPEP § 2123).
In response to the Applicant's argument that the references fail to show certain features of applicant’s invention, it is reminded that to properly teach away, the prior art reference must criticize, discredit, or otherwise discourage the solution sought. Merely teaching alternatives, where carbodiimide is recited as a preferable second compound (claim 57), does not do this (see MPEP 2145 (X)(D)).
The Applicant argues unexpected results regarding the presence of amino silicone leading to good cosmetic properties, such as softness, as described in Example 3 (Remarks, pgs. 18-19).
Applicant’s argument is not found persuasive. Any alleged evidence of superior cosmetic properties does not have a causal relationship with the merits and scope of the claimed invention, which is, broadly, a process for dyeing hair comprising a composition of polycarbodiimide, an aqueous dispersion of particles of polymers chosen from polyurethanes, acrylic polymers, or a mixture, and pigments, dyes, or a mixture. As such, the data are not commensurate in scope with the claims.
“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 [95 USPQ2d 1525] (Fed. Cir. 2010) (quotation omitted). Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 [97 USPQ2d 1673] (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”); Ormco Corp., 463 F.3d at 1312 (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”); In re Woodruff, 919 F.2d 1575, 1578 [16 USPQ2d 1934] (Fed. Cir. 1990).
Furthermore, amodimethicone is known in the art to provide conditioning and softening properties to hair products (ulprospector.com, pg. 1). Therefore, it is not unexpected or surprising that formulations comprising amodimethicone, such as Example 3, would provide more softness to hair than formulations without amodimethicone in comparative compositions.
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 Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613