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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06 April 2026 has been entered.
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 been provided. Therefore, the effective filing date of the instant application is 21 November 2019.
Examiner’s Note
The Applicant's amendments and arguments filed 06 April 2026 have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and objections not reiterated from previous office actions are hereby withdrawn. The following rejections and 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 06 April 2026, it is noted that claim 25 has been amended, no new claims have been added, and claims 28-32 have been canceled. Support for the amendments can be found from the canceled claims and at least para. 93 of the instant specification. 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, unclear, 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, 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 claim 25.
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 (Formula XII of instant claim 25). The polymerization degree may be 2-20 (para. 69). The synthesis example results in an isocyanate-terminated dicyclo-hexylmethane polycarbodiimide (para. 134). Variables “n”, “z”, and “n+z” are addressed by the polymerization degree and the isocyanate-terminated dicyclo-hexylmethane polycarbodiimide product (para. 134) for claim 25. Monomer A is addressed by the dicyclohexylmethane-4,4’diisocyanate reagent in claim 25. Instant L1 is interpreted as a cycloalkylene radical in claim 25 (para. 101 of instant specification). E is O—R3—O wherein R3 is a linear/branched C1-C18 alkylene radical or 4,4-dicyclohexylenemethane in claim 25. Variable “m” of 7-30 corresponds to instant “r” and “s” of claim 25.
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.
Since Herrlein does not specify the polycarbodiimide of instant formula XII for claim 25, 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. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Claim(s) 25, 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, 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 organo-modified 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. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Response to Arguments
Applicant's arguments filed 06 April 2026 have been fully considered but they are not persuasive.
The Applicant argues that the Objection to claim 25 is moot.
Applicant’s argument is not found persuasive. The letters and variables of Formula (II) are still small, unclear, and difficult to read.
The Applicant argues that the combination of Herrlein and Tsukamoto relies on impermissible hindsight (Remarks, pgs. 13-14).
Applicant’s argument is not found 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).
The Applicant argues that Herrlein and Tsukamoto address different technical problems in different fields (Remarks, pg. 14).
Applicant’s argument is not found persuasive. 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.
The Applicant argues that the claimed process differs from Herrlein’s multicomponent system (Remarks, pgs. 14-15).
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). The polymer described in Herrlein’s teaching may form a dispersion in neutral water (para. 89), which is broadly interpreted as capable of forming an aqueous dispersion.
The Applicant argues unexpected results regarding the combination of amino silicone specifically with formula XII polycarbodiimide and acrylic polymer particles (Remarks, pgs. 15-16).
Applicant’s argument is not found persuasive. Example 2 shows a composition comprising amino silicone, which allegedly leads to more favorable properties. Example 3 compares a composition comprising amino silicone with a composition without amino silicone. The Applicant argues that Composition C (with amino silicone) provides superior properties than Composition C’ (without amino silicone). However, Table 6 allegedly shows that both Composition C+D and Composition C’+D result in good persistence with respect to shampoo washing (paras. 552-553 of instant specification).
Additionally, any evidence of superior softness, feel, and hair strand separation does not have a causal relationship with the merits and scope of the claimed invention, which comprises, broadly, any amino silicone. Table 2 (para. 509 of the instant specification) uses Amodimethicone (and) Trideceth-5 (and) Trideceth-10. 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).
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
Prosecution Insights