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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 16, 2026 has been entered.
Status of Claims
Claims 1-19 are pending. Claim 19 is newly added. Claims 1, 9, 13-14 and 17-18 are amended.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
New Rejections/Rejections Maintained
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 of this title, 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.
The rejection of claims 1-18 and newly applied to claim 19 under 35 U.S.C. 103 as being unpatentable over Mama et al. GB 2513319 (10/29/2014) (10/26/2023 IDS) in view of Kerl et al. DE 102014218006 (3/10/2016)(5/25/2022 IDS), Gauche et al. WO 2009/112858 (9/17/2009) and Hoepfl et al. US 2005/0166938 (8/4/2005) is maintained.
Mama et al. (Mama) teaches a method for decolorizing oxidatively dyed hair. (See Abstract). Mama teaches a composition that is used for decolorizing containing anionic surfactants. (See page 8). The composition also has pH values of 2 to 6, with a most preferred range from 3 to 3.5. The presence of the anionic surfactant and the pH values range of 2 to 6 overlap with the pH value range claimed in claim 1 of 1.0 to 3.5. pH values of 2 to 6 also overlap with the from 1.5 to 3.3 called for in instant claim 11. pH values of 2 to 6 also overlap with the from 2.0 to 3.0 called for in instant claim 16. Mama also teaches a step of rinsing the composition from the hair as called for instant claim 1. (See page 13, lines 25-27). Mama teaches that any suitable surfactant or mixture of surfactants may be used. (See page 8). Mama teaches four different broad categories of surfactants, anionic, cationic, amphoteric or nonionic surfactants are suitable for use in its invention (See Mama pages 7-8).
Preferred surfactants are anionic surfactants such as sodium lauryl sulfate which falls within the formula in instant claim 8 when x has the value 0. (See page 10 lines 6-12). The surfactant is present in an amount of from 5 to 30 wt%. (See page 10, lines 14-15). 5 to 30% overlaps with the 1.0 to 15.0 wt% anionic surfactant called for in instant claim 10. 5 to 30% overlaps with the 6.0 to 11.0 wt% anionic surfactant called for in instant claim 15.
The composition is usually in contact with the hair for a period of from 30 seconds to 60 minutes. (See page 121, lines 15-24). 30 seconds to 60 minutes overlaps with the exposure time of 5 to 60 minutes called for in instant claim 12.
Mama also teaches a kit that contains the composition to decolorize hair that has been dyed using a variety of hair dyes. (See page 13, lines 32-38). Mama teaches that its process is to efficiently and safely remove color from dyed hair with a high degree of reproducibility. (See page 1).
Mama et al. (Mama) teaches a method for decolorizing oxidatively dyed hair. (See Abstract). Mama teaches a composition that is used for decolorizing containing anionic surfactants. (See page 8). The composition also has pH values of 2 to 6, with a most preferred range from 3 to 3.5. The presence of the anionic surfactant and the pH values range of 2 to 6 overlap with the pH value range claimed in claim 1 of 1.0 to 3.5. Mama also teaches a step of rinsing the composition from the hair as called for instant claim 1. (See page 13, lines 25-27).
Mama teaches that its method and composition can remove color from hair that has been dyed using a variety of different classes of hair dyes. (See page 13, lines 33-38). Mama suggests a variety of dyes but does not expressly teach hair that has been dyed with amino-functionalized silicone polymer containing dyes or pigment dyes. Mama does not expressly teach carboxylate surfactants. These deficiencies are made up for with the teachings of Kerl et al., Gauche et al. and Hoepfl et al.
Kerl et al. teaches a cosmetic agent with a specific aminate silicone polymer and an oxidizer preparation. (See Abstract). The oxidizer colorants produced form this packaging unit result in improved care of the keratinic fibers and an improved variety of color shades. Kerl also teaches a method of coloring keratinic fibers. (See Abstract). Kerl teaches an animated silicone polymer containing at least one structural unit of the formula (I) and at least one structural unit of the formula (II) where n is an integer from 1 to 4. (See Kerl claim 1).
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When n is 2, these structures read on the formula (Si-I and (Si-II)) in claim 5.
Gauche et al. (Gauche) teaches a method of coloring hair comprising applying a sulfur containing nucleophile and then applying to the material a composition containing a dye compound selected from a dye class other than the class of reactive dyes. (See Abstract). Gauche teaches that its hair color provides hair color that is durable to normal hair washing yet easily removable from the hair of desired. (See [001-002] on page 1). Gauche teaches a packaged hair product that contains its compositions, which may be separately packaged and include an implement for applying the compositions to the hair. (See page 19-20). Gauche thus teaches a method of coloring hair as called for in instant claim 13.
Gauche teaches a variety of dyes. These include pigment dyes (See claim 7) and phthalocyanine as called for in instant claim 7. (See Gauche page 10, lines 35-36).
Hoepfl et al. (Hoepfl) teaches a device for treating keratinic fibers which generates and transmits vibrations and can make the dying or bleaching of hair much more effective. (See Abstract and [0002]). Hoepfl teaches that suitable anionic surfactants are carboxylates and exemplifies the use of sodium laureth-6 carboxylate. Sodium laureth-6 carboxylate falls within the scope of the formula in T-2 in instant claims 1, 9, and 17-18. When M is sodium, y is 1 and R2 is linear saturated C12 group. Sodium laureth-6 carboxylate itself is called for in instant claim 19.
It would be prima facie obvious to one of ordinary skill in the art at the of the earliest effective filing date following the Mama process of decolorizing oxidatively dyed hair with a composition containing sodium lauryl sulfate having a pH value of 2 to 6 by applying it to hair and leaving it in contact with the hair for a period of from 30 seconds to 60 minutes to include a step of colorizing the hair with a specific animated silicone polymer of Si I and Si II and an oxidizer preparation as taught by Kerl in a packaging unit in order to have improved care of the keratinic fibers and an improved variety of color shades as taught by Kerl. They would be packaged separately in the kit of Mama since they are for the step of colorizing hair and complement the composition in the Mama kit to decolorize hair.
It would be prima facie obvious to one of ordinary skill in the art before the earliest effective filing date following the Mama process to use an anionic surfactant of sodium laureth-6 carboxylate in light of Hoepfl’s teaching that it is a suitable surfactant to use with hair dye and hair bleaching. They would be packaged separately in the kit of Mama since they are for the step of colorizing hair and complement the composition in the Mama kit to decolorize hair.
The person of ordinary skill in the art would have a reasonable expectation of success because Mama teaches that its process can efficiently and safely remove color from dyed hair with a high degree of reproducibility and Mama teaches that its method and composition can remove color from hair that has been dyed using a variety of different classes of hair dyes. The person of ordinary skill in the art would also have a reasonable expectation of success because Mama expressly teaches that four broad categories of surfactants are suitable for use within its composition, anionic, cationic, non-ionic and amphoteric surfactants.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
The provisional rejection of claims 1-18 and newly applied to claim 19 as being unpatentable over claims 1-20 of U.S. Patent Appn. No. 17/780432 in view of Mama et al. GB 2513319 (10/29/2014) (10/26/2023 IDS) and Hoepfl et al. US 2005/0166938 (8/4/2005) is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because in each case the claims recite a process of decolorizing keratinous material which has been colored by the application of at least one pigment wherein a decolorization agent comprising a pH value of about 1.0 to about 4.7 is applied to the colored/dyed keratin material and rinsed off after a contact time.
Additionally, the pending claims and copending claims both recite a method for dying and later decolorizing human hair comprising applying a colorant to the hair comprising at least one amino-functionalized silicone polymer and at least one pigment, allowing the colorant to act on the hair, rinsing the colorant form the hair, applying a decolorizing agent to the hair having a pH value of about 1.0 to about 4.7, allowing the decolorizing agent to act on the hair and rinsing the decolorizing agent from the hair.
Finally, the pending claims and the copending claims 1-20 of US Patent Appn. No. 17/780432 both recite a multi-component packaging unit for dying and decolorizing keratinous material comprising a separately packaged first container comprising a colorant with at least one amino-functionalized silicone polymer and at least one pigment and the second container comprising a decolorizing agent having a pH value of about 1.0 to about 4.7.
Claims 1-20 of US Patent Appn. No. 17/780432 differ from those of the instant application in that they do not teach anionic surfactants and do not teach sodium lauryl sulfate or sodium laureth-6 carboxylate. These deficiencies are made up for with the teachings of Mama and Hoepfl.
The teachings of Mama are described above. It would be prima facie obvious to one of ordinary skill in the art at the of the earliest effective filing date following the process of US Patent Appn. No. 17/780432 to use an anionic surfactant of sodium lauryl sulfate in the composition in light of Mama’s teaching that it is a preferred surfactant to use with hair decolorization.
It would be prima facie obvious to one of ordinary skill in the art at the of the earliest effective filing date following the process of US Patent Appn. No. 17/780432 to use an anionic surfactant of sodium laureth-6 carboxylate in the composition in light of Hoepfl’s teaching that it is a suitable surfactant to use with hair dye and hair bleaching.
This is a provisional nonstatutory double patenting rejection because the claims have not been patented yet.
The provisional rejection of claims 1-18 and newly applied to added claim 19 as being unpatentable over claims 1-18 of U.S. Patent Appn. No. 17/780369 in view of Hoepfl et al. US 2005/0166938 (8/4/2005) is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because in each case the claims recite a process of decolorizing keratinous material which has been colored by the application of at least one pigment wherein a decolorization agent comprising a pH value of about 1.0 to about 4.7 is applied to the colored/dyed keratin material and rinsed off after a contact time.
Additionally, the pending claims and copending claims both recite a method for dying and later decolorizing human hair comprising applying a colorant to the hair comprising at least one amino-functionalized silicone polymer and at least one pigment, allowing the colorant to act on the hair, rinsing the colorant form the hair, applying a decolorizing agent to the hair having a pH value of about 1.0 to about 4.7, allowing the decolorizing agent to act on the hair and rinsing the decolorizing agent from the hair.
Finally, the pending claims and the copending claims 1-20 of US Patent Appn. No. 17/780369 both recite a multi-component packaging unit for dying and decolorizing keratinous material comprising a separately packaged first container comprising a colorant with at least one amino-functionalized silicone polymer and at least one pigment and the second container comprising a decolorizing agent having a pH value of about 1.0 to about 4.7.
Claims 1-20 of US Patent Appn. No. 17/780369 differ from those of the instant application in that they do not teach sodium laureth-6 carboxylate. This deficiency is made up for with the teachings of Hoepfl.
It would be prima facie obvious to one of ordinary skill in the art at the of the earliest effective filing date following the process of US Patent Appn. No. 17/780369 to use an anionic surfactant of sodium laureth-6 carboxylate in the composition in light of Hoepfl’s teaching that it is a suitable surfactant to use with hair dye and hair bleaching.
This is a provisional nonstatutory double patenting rejection because the claims have not been patented yet.
Response to Arguments
Applicants’ remarks filed January 15, 2026 have been fully considered and are found to be unpersuasive for the following reasons.
Applicants note the amendments to the claims and new claim and where they can find support in the specification and the claims as originally filed.
With respect to the obviousness rejection Applicants argue that the obviousness rejection is overcome because a skilled person in the art would not reasonably have been expected to combine the teachings of Mama, Gauche, Kerl and Hoepfl in the manner necessary to arrive at the claimed subject matter. Specifically, a skilled artisan would not reasonably be expected to apply at least one anionic surfactant wherein the anionic surfactant is a carboxylate to decolorize keratinous material based on the combined teachings of the prior art references.
Although Mama does describe a composition for decolorizing hair, the composition of Mama works in an entirely different manner than the decolorization agent claimed. Mama describes suitable anionic surfactants include sulfates and sulfonated compounds, such as sodium laureth sulfate.
Applicants assert that a skilled artisan would not refer to Hoepfl for a decolorizing agent used to bring hair back to its original color because Hoepfl only describes hair coloring formations - changing the color of hair to something different than the original color.
Applicants assert that there is an unexpected benefit when using the carboxylates as a decolorizing agent in that the carboxylate decolorant returns the hair color closer to the original color. This would be unexpected because the sulfate and carboxylate compounds have similar structures.
Applicants ask that the obviousness type double patenting rejections be held in abeyance.
Applicant’s arguments have been fully considered and are found to be unpersuasive.
Mama teaches a kit that contains the composition to decolorize hair that has been dyed using a variety of hair dyes. (See page 13, lines 32-38). Mama teaches that its process is to efficiently and safely remove color from dyed hair with a high degree of reproducibility. (See page 1).
Applicants’ argument that because they work in different manners, one skilled in the art would not use the surfactant of Hoepfl in the composition of Mama for a decolorizing agent is not found to be persuasive because this would simply not discourage a person of ordinary skill in the art. The manner in which a decolorizing agent works would not discourage a skilled artisan, as long as the method did in fact work. Applicants still have not asserted that the process would not work. Applicants are asserting what would be in the mind of a person of ordinary skill in the art without providing an Affidavit or Declaration to that effect. Applicants also cannot point to any teaching away or discouraging or cautioning teaching in the cited prior art itself or any contemporaneous prior art.
Applicants’ argument also appears to be contradicted by the Mama reference itself. Mama expressly states prior to the Example that the Example is not meant to be limiting. (See Mama page 14). Mama teaches that any suitable surfactant or mixture of surfactants may be included, for example anionic, cationic, amphoteric or nonionic surfactants. (See Mama pages 7-8). Mama expressly teaches that four different broad categories of surfactants are suitable for use in its invention, yet Applicants are asserting that a different type of anionic surfactant, the same type of surfactant taught by Mama as preferred (sodium lauryl sulfate) would be discouraging to a skilled artisan. Respectfully, this is not persuasive.
Rather, the person of ordinary skill in the art would have a reasonable expectation of success because Mama teaches that its process can efficiently and safely remove color from dyed hair with a high degree of reproducibility and Mama teaches that its method and composition can remove color from hair that has been dyed using a variety of different classes of hair dyes. Thus, it would not deter a skilled artisan that Hoepfl only describes hair coloring formations - changing the color of hair to something different than the original color, but Hoepfl does not mention or suggest hair color removal. Mama teaches that its process can efficiently and safely remove color from dyed hair with a high degree of reproducibility and can remove color from hair that has been dyed using a variety of different classes of hair dyes. Thus, Hoepfl does not need to make a mention of decoloring hair because Mama teaches this.
Applicants’ assertion that a skilled artisan would not refer to Hoepfl for a decolorizing agent used to bring hair back to its original color because Hoepfl only describes changing the color of hair to something different than the original color is not persuasive because Mama expressly teaches that its process can efficiently and safely remove color from dyed hair and bring it back to its original color and that four broad categories of surfactants are suitable for use within its composition.
Applicants arguments that although Mama does describe a composition for decolorizing hair, the composition of Mama works in an entirely different manner than the decolorization agent claimed are also unpersuasive because the claim is directed to a method of using a composition. The steps of this method and the components of the composition are all taught in the prior art and there is motivation to combine their teachings. The instant claims do not contain any limitations directed to the manner in which the decolorization works.
Applicants’ assertion of unexpected results is not found to be persuasive because they are still not commensurate in scope with the claims. Claim 1 still covers a broad range of carboxylate anionic surfactants that fall within the scope of formula T2. However, all of Applicant’s examples use the sodium salt of laureth-6-carboxylate.
"[O]bjective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Applicants request to hold the double patenting rejection in abeyance until there is an indication of allowability of claims is noted, however, Applicant is reminded that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejection is maintained for reasons of record as no action regarding this rejection has been taken by applicants at this time.
Conclusion
Claims 1-19 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619