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 .
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.
Claim Status
Applicant’s amendment of 04/30/2026 is acknowledged. Claims 4-6, 8, 12, 16, and 19 are amended; claim 15 is cancelled; and claims 20-21 are new. Claims 1-14 and 16-21 are currently pending.
Election/Restrictions
An election of invention/species was required in the instant application as detailed in the Office action dated 11/28/2025. In Applicant’s amendment filed 04/30/2026, claim 15, which was drawn to the non-elected invention of Group II, was cancelled. New claims 20-21 are drawn to Applicant’s elected invention of Group I. Accordingly, claims 1-14 and 16-21 are examined on the merits herein.
Priority
The instant application is a 371 of PCT/EP2020/075597 filed on 09/14/2020 and claims foreign priority to DE102019218236.4 filed on 11/26/2019 as reflected in the filing receipt dated on 07/18/2025. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Previous Rejections/Objections
Applicant’s arguments filed 04/30/2026 have been fully considered. Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied as necessitated by Applicant’s amendment to the claims. They constitute the complete set of rejections and/or objections presently being applied to the instant application. Applicant’s arguments insofar as they pertain to the present grounds of rejections and/or objections are addressed herein.
Specification
The disclosure is objected to because of the following informalities:
In the first table on page 55 of Applicant’s instant specification, the parenthetical following “Dow Corning 2-8566” contains a typographical error wherein the parenthetical is closed with a quotation mark rather than a parenthesis.
In the second table on page 55 of Applicant’s instant specification, both the third and fourth exemplary compositions are labeled “NM-E3”, which appears to be a typographical error. Consistent with the table spanning pages 56-57, it appears that the fourth exemplary composition should be labeled “NM-E4”, as it differs in pH and is thus a distinct composition from the third exemplary composition labeled “NM-E3”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 21 recites the limitation “the hair fiber” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Claim 21 depends from claims 1, 16, 17, and 20, which do not recite a hair fiber. The scope of the claim is indefinite because it is unclear to which hair fiber the claim refers. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the term to mean “the keratin material”.
Claim Interpretation
Absent any limiting definition provided in Applicant’s instant disclosure, the Examiner is interpreting the limitation “allowing the post-treatment agent…to act on the human hair” to mean that any amount of time the post-treatment agent is left on the hair is sufficient to meet the claim.
In the Remarks filed 04/30/2026, Applicant notes that the Examiner’s previous rejection of the claims clearly references Hashimoto et al. (WO2012021577A1), referred to in the body of the rejection, rather than Herrlein et al. (US20160235653A1) cited in the initial statement of rejection. The Examiner affirms that the previous rejection of the claims over Schulze zur Wiesche was indeed in view of Hashimoto, as referenced throughout the body of the Examiner’s rejection. The typographical error in the statement of rejection has been corrected herein with no changes to the actual grounds of rejection set forth previously, other than to address new claims 20 and 21.
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, 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 1-14 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Schulze zur Wiesche et al. (US20170165160A1; published: 06/15/2017; effectively filed: 08/29/2014; PTO-892) in view of Hashimoto et al. (WO2012021577A1; published: 02/16/2012; IDS of 05/25/2022).
Schulze zur Wiesche teaches a method for reducing and/or preventing the bleaching and/or fading of artificially produced hair colors, including: a. applying a cosmetic composition to the colored hair, b. allowing the composition to act for a period of at least 5 seconds, and optionally rinsing the composition out using water (Abstract and Claims).
In at least two exemplary embodiments, the composition comprises: 2.50 wt.% cetearyl alcohol, 0.30 wt.% isopropyl myristate, Quaternium-87, and stearamidopropyl dimethylamine, among other ingredients, and about 90 wt.% water depending on the presence of preservatives, perfumes, etc.; and the composition has a pH of 4.3 (Paragraph 0256, Conditioners 1 and 2).
Regarding the after-treatment agent of claim 1: The water in the composition of Schulze zur Wiesche reads on the same as instantly claimed, and the pH of the composition lies within and thus reads on the instantly claimed pH range. The isopropyl myristate, which is an ester of isopropyl alcohol (i.e., an aliphatic monohydric C3 fatty alcohol) and myristic acid (i.e., a C14 fatty acid), and cetearyl alcohol, which is made from a combination of cetyl alcohol (i.e., a C16 fatty alcohol) and stearyl alcohol (i.e., a C18 fatty alcohol), of Schulze zur Wiesche each read on the at least one fat component, as evidenced by instant claims 10 and 11.
Regarding the process of claim 1: The method of Schulze zur Wiesche reads on the active method steps of applying an after-treatment agent to keratinous material which has been dyed and rinsing said after-treatment agent. Regarding the limitation “after a contact time”, Schulze zur Wiesche expressly teaches that the conditioner is allowed to act on wet, dyed hair for a period of from 5 seconds to 3 minutes before rinsing the conditioner out with water (Paragraphs 0030-0037) and, thus, meets the limitation.
Regarding claim 8: The amount of water in the composition of Schulze zur Wiesche lies within and thus anticipates the instantly claimed range.
Regarding claim 9: The pH of the composition of Schulze zur lies within and thus anticipates the instantly claimed range.
Regarding claim 10: The cetearyl alcohol of Schulze zur Wiesche reads on the C12-C30 fatty alcohol for the reasons discussed above regarding claim 1.
Regarding claim 11: The isopropyl myristate of Schulze zur Wiesche reads on the ester of a C12-C30 fatty alcohol and an aliphatic monohydric C1-C24 alcohol for the reasons discussed above regarding claim 1.
Regarding claim 12: The combined amount of cetearyl alcohol and isopropyl myristate in the composition of Schulze zur Wiesche is 2.80 wt.%, which lies within and thus anticipates the instantly claimed range.
Regarding claim 13: Quaternium-87 and stearamidopropyl dimethylamine are cationic surfactant, as evidenced by Schulze zur Wiesche (Paragraphs 0086-0089), and thus reads on the instantly claimed at least one cationic, nonionic, and/or anionic surfactant.
Regarding claim 16: The amount of water in the composition of Schulze zur Wiesche lies within and thus anticipates the instantly claimed range.
Regarding claim 17: The pH of the composition of Schulze zur lies within and thus anticipates the instantly claimed range.
Regarding claim 18: The cetearyl alcohol of Schulze zur Wiesche reads on the C12-C30 fatty alcohol for the reasons discussed above regarding claim 1.
Regarding claim 19: The combined amount of cetearyl alcohol and isopropyl myristate in the composition of Schulze zur Wiesche lies within and thus anticipates the instantly claimed range.
However, the Schulze zur Wiesche is silent as to the exact compounds and methods used to produce the colored hair. Thus, the reference does not expressly teach that the hair has been dyed by the application of at least one pigment as recited in claims 1 and 20, at least one amino-functionalized silicone polymer as recited in claims 2-5 and 20, method steps (1) to (3) recited in claim 14, or the further limitations of claim 21.
Hashimoto teaches a method for artificially coloring a keratinous substrate comprising applying a composition, which comprises at least one silicone amine, at least one anionic silicone, at least one colorant, and a cosmetically acceptable carrier, to hair and then rinsing the hair (Abstract and Claims). Hashimoto specifically discloses preferred embodiments wherein the at least one colorant includes a pigment (Claim 51) and wherein the silicone amine is trimethylsilylamodimethicone, which corresponds to the formula shown below (Claim 29 and Page 14, lines 1-7).
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Trimethylsilylamodimethicone reads on reads on the at least one amino-functionalized silicone polymer of instant claims 2-5 and 20 as evidenced by instant claim 5.
Hashimoto further exemplifies method steps wherein the coloring composition is massaged into the hair, allowed to stand for 5 minutes, and then rinsed with water for 15 seconds (Page 61).
Regarding the keratinous material recited in claims 1-5 and 20: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of Hashimoto, which comprises applying a coloring composition comprising a pigment and a silicone amine such as trimethylsilylamodimethicone to hair, allowing the hair to stand for 5 minutes, and then rinsing the hair, to produce the colored hair used in the method of Schulze zur Wiesche. An ordinarily skilled artisan would be motivated to use the coloring method of Hashimoto and would reasonably expect success because it is a well-known way to artificially color hair and affords several advantages such as increased color deposit, boosted colorant intensity, improved fade resistance, and highlighted hair (Hashimoto; Page 4, lines 25-28 and Page 5, lines 1-25). Further, as discussed above, Schulze zur Wiesche actually prefers that the colored hair is wet prior to application of the conditioner and, thus, one would be reasonably motivated to implement the specific coloring method of Hashimoto.
It is noted that the recitation “for improving the grip of keratinous material which has been dyed by the application of at least one pigment” in claim 1 is an intended outcome of using the after-treatment agent as claimed. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the combination of Schulze zur Wiesche and Hashimoto teaches all limitations of the instant method and the structure of the prior art composition is capable of achieving the intended outcome when the method is carried out as claimed, then it meets the claim. Note: MPEP 2111.02.
Regarding claims 6-7: Hashimoto further teaches that the pigment in the coloring composition may be chosen from: inorganic pigments, exemplifying metal oxides such as titanium dioxide, zirconium oxide, zinc oxide, etc.; organic pigments, exemplifying lakes based on cochineal carmine; and nacreous pigments, exemplifying mica coated with titanium or with bismuth oxychloride (Pages 36-38). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify coloring composition in the method taught by Schulze zur Wiesche and Hashimoto by using an inorganic pigment such as a metal oxide and/or mica-based coated pigment and an organic pigment such as carmine because Hashimoto teaches these are particularly useful in producing temporary hair color and special effects (Page 4, lines 23-29).
Regarding claim 14: As discussed above in relation to claim 1, the combination of Schulze zur Wiesche and Hashimoto teaches a process for color hair comprising: (1) applying a colorant to hair, the colorant comprising at least one amino-functionalized polymer and at least one pigment; (2) allowing the hair to stand for 5 minutes; (3) rinsing the colorant out with water; (3) applying a composition comprising water, cetearyl alcohol, and isopropyl myristate and having a pH value of 4.3 to the colored hair; (4) allowing the composition to act on the hair; and (5) rinsing the composition out with water.
Regarding the limitation “human” hair, Schulze zur Wiesche explicitly teaches that its method is intended to provide consumers with quicker methods with which hair colors can be protected (Paragraph 0007). Thus, it would have been prima facie obvious to one of ordinary skill to perform the prior art process on human hair.
Regarding the instantly claimed step of exposing the colorant applied to the human hair, under broadest reasonable interpretation and consistent with Applicant’s instant specification, which states that the exposure step includes allowing the previously applied dye to the hair to act for relatively short periods, for example, 30 seconds to 60 minutes (Instant Specification, Paragraphs 0198-0201), the method taught by the combination of Schulze zur Wiesche and Hashimoto reads on the instantly claimed exposure step.
Regarding claim 21: Removal of excess silicone or excess mixture of pigment and amino silicone from the hair fiber is a mechanistic outcome that flows naturally from practicing the instant method as claimed. This is further evidenced by Applicant’s own specification, which states that the use of at least one fatty ingredient in the after-treatment agent results in removal of excess pigment/amino silicones from the colored keratin material (Instant Specification, Paragraph 0124). Since the combination of Schulze zur Wiesche and Hashimoto teaches all limitations of the instant method, and the structure of the prior art composition, which comprises the instantly claimed at least one fatty constituent, is capable of achieving the outcome when the method is carried out as claimed, then it meets the claim.
An ordinarily skilled artisan would reasonably expect success in modifying the prior art as proposed because the method of Schulze zur Wiesche requires color treated hair, preferably wet hair, as a substrate for applying its composition, and the method of Hashimoto is well-known for coloring hair. Further, Hashimoto’s coloring method provides several benefits, such as improved fade resistance, that are consistent with the goal of Schulze zur Wiesche to reduce and prevent the bleaching and fading of artificially produced hair colors.
Response to Arguments
Applicant’s arguments submitted on 04/30/2026 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but were not found to be persuasive.
Applicant argues that the Examiner’s obviousness rejection is overcome because a skilled person would not have reasonably expected to arrive at the instant claims based on the combined teachings of Schulze zur Wiesche and Hashimoto. Specifically, Applicant argues that a skilled person would not have been reasonably expected to apply a composition intended for application on hair primarily colored using permanent, semi-permanent, temporary, or oxidatively dyed hair to hair treated with a silicone-based hair coloring composition. This argument was not found to be persuasive. As acknowledged by Applicant on page 8 of the Remarks dated 04/30/2026, Schulze zur Wiesche teaches a method of increasing the wash resistance of artificially colored hair, e.g., any artificially colored hair. Contrary to Applicant’s assertion that the hair coloring technique of Hashimoto being well-known has “no bearing whatsoever” on whether a skilled person would combine the prior art teachings, Schulze zur Wiesche does not limit the technique used to artificially color hair in its method. Therefore, it would have been prima facie obvious use any technique known in the art, including that of Hashimoto, to produce the artificially colored hair used in the method of Schulze zur Wiesche with a reasonable expectation of success, especially in the absence of any objective evidence to the contrary.
While Applicant argues that the hair coloring compositions of Hashimoto are notably distinct from those of Schulze zur Wiesche, Applicant provides no objective evidence to support the notion that the after-treatment composition of Schulze zur Wiesche could not be reasonably applied to hair colored with the silicone-based hair coloring compositions of Hashimoto. Instead, Applicant asserts that the Examiner has proffered no explanation to support or explain why a skilled person would have thought to apply the after-treatments of Schulze zur Wiesche to the chemically different hair colorings of Hashimoto. The Examiner reiterates that Schulze zur Wiesche does not require its colored hair to have a specific chemistry. The proposed prior art combination, which provides a specific technique to a general method, does not change the process of Schulze zur Wiesche. Because Hashimoto’s coloring method provides several benefits, such as improved fade resistance, that are consistent with the goal of Schulze zur Wiesche to reduce and prevent the bleaching and fading of artificially produced hair colors, a skilled artisan implementing the method of Schulze zur Wiesche would be highly motivated to incorporate the hair coloring technique of Hashimoto and would reasonably expect success in preventing/reducing color fading.
Applicant further argues that new claim 20 is independently patentable and appears to suggest that the combined claim features result in allegedly superior results. This argument was not found to be persuasive. First, Applicant states that dependent claim 20 recites a pH (i.e., from 2.8 to 4.8), water, content, and coloring application that more closely matches the conditions and compositional features shown in the examples that yield the allegedly compelling results, yet example NM-E4, which has a pH of 10, also exhibits a dE value of 10.1 or less (i.e., 9.5) and same designated hair feeling. Clearly, conditions outside the scope recited in claim 20 are capable of producing the same superior results argued by Applicant. Because the only required features of the after-treatment agent recited in claim 20 are a particular amount of water, any fat component in any amount, and a particular pH, Applicant’s data are not commensurate in scope with the claims with which the evidence is offered to support. Further, the broad method encompassed by claim 20 allows for the after-treatment agent to be applied to any keratin material colored by application of any amino-functionalized silicone and any pigment in any amounts, whereas Applicant’s examples use only one amino silicone compound at a single concentration. Therefore, Applicant’s data are not commensurate in scope with the instant claims for at least these reasons and are insufficient to overcome the prima facie case of obviousness of record.
Regarding new claim 21, Applicant further argues that there is no suggestion that the after-treatment of Schulze zur Wiesche should be applied to hair with excess amino silicone or excess mixture of pigment and amino silicone removed from the hair. This argument was not found to be persuasive. Removal of excess silicone or excess mixture of pigment and amino silicone from the hair fiber is a mechanistic outcome that flows naturally from applying the after-treatment agent of Schulze zur Wiesche, which comprises the instantly claimed at least one fatty ingredient, to hair colored by application of at least one amino-functionalized silicone polymer and at least one pigment as taught by Hashimoto. This is explicitly evidenced by Applicant’s own disclosure (Instant Specification, Paragraph 0124). Applicant’s argument that removal of color-imparting material contravenes the aims of Schulze zur Wiesche is not persuasive. As evidenced by Applicant’s own examples, wherein artificially colored hair is treated with an after-treatment agent comprising the same components as Schulze zur Wiesche, the removal of excess coloring material does not preclude the composition’s ability to retain color. Any coloring material naturally removed from applying the after-treatment composition comprising a fatty component is indeed “excess”, e.g., not required and does not change the principle operation of the process of the prior art reference.
In view of the foregoing, a proper case of prima facie obviousness has been established by the Examiner, and the prior art rejections of record are maintained.
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 1-14 and 16-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 14-16 and 18-21 of copending Application No. 18/689,892 in view of Schulze zur Wiesche et al. (US20170165160A1; published: 06/15/2017; effectively filed: 08/29/2014; PTO-892).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite all features of the instant claims except that the post-treatment agent comprises water and at least one fat component, and the reference claims are silent as to the pH of the agent. Further, the copending claims do not expressly recite the water content of instant claims 8 and 16, the surfactant of instant claim 13, or the further limitations of instant claim 21.
The teachings of Schulze zur Wiesche are as set forth above and further incorporated herein.
Regarding the water of instant claims 1, 8, 14, and 16: It would have been obvious to one of ordinary skill in the art to modify the post-treatment agent recited in the reference claims by including water and using 90 wt.% as a starting point for routine optimization, which lies within and thus renders obvious the instantly claimed range, because Schulze zur Wiesche teaches that this amount is known in the art to be useful as carrier to deliver nourishing ingredients to colored hair.
Regarding the at least one fat component recited in instant claims 1, 10-12, and 18-19: It would have been obvious to one of ordinary skill in the art to modify the post-treatment agent recited in the reference claims by further including one or more fatty substances—wherein fatty alcohols having C12-C22 carbon atoms and ester oils such as isopropyl myristate are particularly preferred—in an amount of 0.05 to 5 wt.%, which overlaps and thus renders obvious the claimed range, because Schulze zur Wiesche teaches that fatty substances in this amount are particularly useful for creating nourishing compositions to be applied to colored hair (Abstract and Paragraphs 0159-0169).
Regarding the pH recited in instant claims 1, 9, 14, and 17: It would have been obvious to one of ordinary skill in the art to modify the post-treatment agent recited in the reference claims by adjusting the pH to lie within 4.0 to 4.8 because Schulze zur Wiesche teaches this pH allows the user to achieve nourishing effects while preventing color fading (Claims and Paragraphs 0009-0016).
Regarding the at least one surfactant recited in instant claim 13: It would have been obvious to one of ordinary skill in the art to modify the post-treatment agent recited in the reference claims by further including at least one anionic surfactant and/or cationic surfactant and/or nonionic surfactant because Schulze zur Wiesche teaches that these impart various desirable effects, such as improving the chroma of hair, and advantageous properties, such as hair cleaning (Claims, Paragraphs 0006 and 0206).
Regarding claim 21: Removal of excess silicone or excess mixture of pigment and amino silicone from the hair fiber is a mechanistic outcome that flows naturally from practicing the instant method as claimed. This is further evidenced by Applicant’s own specification, which states that the use of at least one fatty ingredient in the after-treatment agent results in removal of excess pigment/amino silicones from the colored keratin material (Instant Specification, Paragraph 0124). Since the combination of the reference claims and Schulze zur Wiesche teaches all limitations of the instant method, and the structure of the composition taught by the combination, which comprises the instantly claimed at least one fatty constituent, is capable of achieving the outcome when the method is carried out as claimed, then it meets the claim.
An ordinarily skilled artisan would reasonably success in modifying the reference claims as proposed because all ingredients, concentrations, and conditions are known in the art to be useful in formulating nourishing compositions which reduce bleaching and fading when applied to artificially colored hair.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 and 16-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,529,303 B2 in view of Schulze zur Wiesche et al. (US20170165160A1; published: 06/15/2017; effectively filed: 08/29/2014; PTO-892).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite all features of the instant claims except that the post-treatment agent comprises at least one fat component. Further, the reference claims do not expressly recite the water content of instant claims 8 and 16, the surfactant of instant claim 13, or the further limitations of instant claim 21.
The claims of US ‘303 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1-12, 14-16 and 18-21 of copending Application No. 18/689,892 in view of Schulze zur Wiesche et al. (US20170165160A1; published: 06/15/2017; effectively filed: 08/29/2014; PTO-892), which is discussed in detail above.
Claims 1-14 and 16-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,529,304 B2 in view of Schulze zur Wiesche et al. (US20170165160A1; published: 06/15/2017; effectively filed: 08/29/2014; PTO-892).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite all features of the instant claims except that the post-treatment agent comprises at least one fat component. Further, the reference claims do not expressly recite the water content of instant claims 8 and 16, the surfactant of instant claim 13, or the further limitations of instant claim 21.
The claims of US ‘304 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1-12, 14-16 and 18-21 of copending Application No. 18/689,892 in view of Schulze zur Wiesche et al. (US20170165160A1; published: 06/15/2017; effectively filed: 08/29/2014; PTO-892), which is discussed in detail above.
Response to Arguments
Applicant’s arguments submitted on 04/30/2026 with respect to rejections on the grounds of non-statutory double patenting have been fully considered in so far as they apply to the new or modified rejections of the instant Office action. Applicant states that upon indication of allowable subject matter, the Applicant will consider filing terminal disclaimers if appropriate. As there is no allowable subject matter indicated, the rejections are maintained.
Conclusion
No claim is allowed.
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 SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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