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 preliminary amendment of 05/25/2022 is acknowledged. Claims 1-15 are amended, and claims 16-19 are new. Claims 1-19 are currently pending.
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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/25/2022 and XXX are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14 and 16-19, in the reply filed on 01/27/2026 is acknowledged. The traversal is on the ground(s) that Applicant believes that search and examination of claims 1-14 and 16-19 and 15 will not require different fields of search or result in inapplicable prior art across different groups, and that it is unlikely examination of the claims will raise different non-prior art issues that would otherwise impose a serious burden and prospective non-prior art issues were not articulated by the Office Action of 11/28/2025. This is not found persuasive because in national stage applications submitted under 35 U.S.C. 371, a showing of lack of unity under 37 CFR §1.475 is required for proper restriction of claims, and such a showing has been made. See MPEP 1893.03(d). There is no requirement that the Examiner must show that the search and examination of all pending claims would constitute a serious burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-19 are pending in the application. Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/27/2026. Accordingly, claims 1-14 and 16-19 are being examined on the merits herein.
Claim Objections
Claims 4-6, 8, 12, 16, and 19 are objected to because of the following informalities:
Claims 4 and 5 each recite structures comprising asterisks. Applicant’s instant specification states that positions marked with an asterisk (*) indicate the bond to further structural units of the silicone polymer (Paragraph 0037). While claims are interpreted in light of Applicant’s specification, the asterisks recited in the instant claims must also be defined in the claims.
Claim 7 inappropriately capitalizes the term “Color Index” at least five times in lines 5-9. To make clear that the acronym “CI” means “color index”, the Examiner recommends amending the claim to recite “color index (CI) numbers…”.
Claim 7 recites the term “C1 42090” in line 5, which is a typographical error and should read “CI 42090”.
Claim 7 recites four separate Markush groupings throughout lines 5-9, wherein the second-to-last pigment and last pigment recited in each list should be separated by a conjunction. For example, in lines 5-6, the Markush grouping should read “CI 42090, CI 69800, CI 69825, CI 73000, CI 74100, or CI 74160”.
Claims 8, 12, 16, and 19 each recite “- based on the total weight of the after-treatment agent -”, wherein the minus symbol (-) does not properly represent a hyphen symbol (–). Because the claims also recite numerical values, for clarity the Examiner recommends replacing each minus symbol with a comma.
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.
Claims 6, 9, and 13-14 are 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 6 recites the limitation “complex metal cyanides”, which is not defined in Applicant’s instant disclosure. As claimed, it is unclear whether the term means complex metal cyanide (i.e., metal ion coordinated or complexed to a metal ion), or whether the term means complex metal cyanide (i.e., a structurally intricate or complicated metal cyanide). If Applicant intends for the term to mean the former, the Examiner recommends amending the claim to recite “metal cyanide complexes”. If Applicant intends for the term to mean the latter, what constitutes a “complex” metal cyanide pigment versus, for example, a non-complex metal cyanide? The claim is indefinite because one of ordinary skill in the art could not readily ascertain the metes and bounds of the claimed invention.
Claim 9 recites “the post-treatment agent”. There is insufficient antecedent basis for this limitation in the claim. Claim 9 depends from claim 1, which only recites an after-treatment agent. Therefore, it is unclear whether the post-treatment agent refers to the after-treatment agent of the parent claim or to a new and separate agent. As such, the scope of the claim is indefinite. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the term to mean “the after-treatment agent”, for which sufficient antecedent basis is provided.
Claim 13 recites the limitation “after-treatment agent comprises at least one…surfactant”. The limitation lacks sufficient antecedent basis because the claim depends from claim 1, which does not recite a surfactant. The term “further” should be added to the claim so as to properly further limit claim 1. The Examiner recommends amending the claim to read “after-treatment agent further comprises…”.
Claim 14 recites “the dye”. There is insufficient antecedent basis for this limitation in the claim. The preceding portion of the claim only recites a colorant and a pigment. Therefore, it is unclear whether the dye refers to the colorant and/or pigment or to a new and separate ingredient. As such, the scope of the claim is indefinite. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the term to mean “the colorant”, for which sufficient antecedent basis is provided.
Claim 14 recites “the post-treatment agent”. There is insufficient antecedent basis for this limitation in the claim. The preceding portion of the claim only recites an after-treatment agent. Therefore, it is unclear whether the post-treatment agent refers to the after-treatment agent or to a new and separate agent. As such, the scope of the claim is indefinite. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the term to mean “the after-treatment agent”, for which sufficient antecedent basis is provided.
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.
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 16-19 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 Herrlein et al. (US20160235653A1; published: 08/18/2016; effectively filed: 02/17/2015; 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 anticipates 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 claim 1, at least one amino-functionalized silicone polymer as recited in claims 2-5, or method steps (1) to (3) recited in claim 14.
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 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: 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.
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.
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 16-19 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 claims of App. ‘892 recite all features of the instant claims except that the post-treatment agent comprises water and at least one fat component, and the copending claims are silent as to the pH of the agent. Further, the claims of App. ‘892 do not expressly recite the water content of instant claims 8 and 16 or the surfactant of instant claim 13.
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 claims of App. ‘892 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 claims of App. ‘892 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 claims of App. ‘892 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 claims of App. ‘892 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).
An ordinarily skilled artisan would reasonably success in modifying the claims of App. ‘892 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 16-19 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 claims of US ‘303 recite all features of the instant claims except that the post-treatment agent comprises at least one fat component. Further, the claims of US ‘303 do not expressly recite the water content of instant claims 8 and 16 or the surfactant of instant claim 13.
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 16-19 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 claims of US ‘304 recite all features of the instant claims except that the post-treatment agent comprises at least one fat component. Further, the claims of US ‘304 do not expressly recite the water content of instant claims 8 and 16 or the surfactant of instant claim 13.
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.
Conclusion
No claim is allowed.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616