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 .
Status of Claims
Applicant’s remarks and amendments of 07/22/2025 are acknowledged. Claims 1, 3-7, and 12-14 are amended. Claims 1-20 are currently pending and are examined on the merits herein.
Priority
The instant application filed 05/26/2022, is a 371 filing of PCT/EP2020/076481, filed 09/23/2020, which claims foreign priority to DE10 2019 218 230.5, filed 11/26/2019.
Withdrawn Rejections
Claims 1-20 were rejected under 35 USC 112(b) for being indefinite. Applicant’s amendments to the claims to change “dyed” to “colored” have overcome the rejection and the rejection is withdrawn.
The following grounds of rejection are 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, 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 1-2, 6-7, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kunz et al. (US 6,171,347 B1, Jan. 9, 2001) (hereinafter Kunz) and Herrlein et al. (US 2016/0235655 A1, Aug. 18, 2016) (hereinafter Herrlein).
Kunz discloses a method for reductively removing color from hair dyed with oxidative hair dye compounds, said method consisting of the steps of: a) providing an aqueous or aqueous-alcoholic reductive composition for removing color from hair dyed with oxidative hair dye compounds, said reductive composition comprising amphoteric surfactants and having a pH of from 1.8 to 6 (which reads on the decolorizing agent of claims 1, 11, and 13); b) applying an effective amount of said aqueous or aqueous-alcoholic composition for reductively removing color to hair dyed with said oxidative hair dye compounds; c) allowing the reductive composition applied in step b) to act on the hair for a period from 5 to 60 minutes and d) after the allowing of step c), rinsing the composition from the hair with water (claim 12), which reads on the decolorizing method of claims 1 and 12-13. The pH value of the reductive composition is in particular 2.5 to 4 (col. 10, line 55).
The teachings of Kunz differ from that of the instantly claimed invention in that Kunz does not teach wherein the colored keratin material is colored by application of a colorant comprising the at least one pigment as recited in claim 1, nor that the colorant is free of an oxidative dye as recited in claim 2.
Herrlein discloses a method for providing a film comprising pigment on keratin fibers comprising applying a composition to hair, wherein the composition comprises: an aminosilicone polymer and one or more pigments (abstract), which reads on the colorant of claims 1-2 and 13. The one or more pigments may be one or more colored pigments which impart color effects to the hair or luster effect pigments which impart desirable and aesthetically pleasing luster effects to the keratin fibers (¶ [0073]). The color or luster effects on the hair may be preferably temporary, i.e. they last until the next hair wash and can be removed again by washing the hair with customary shampoos (¶ [0073]). The color composition of Herrlein was applied to hair strands and distributed throughout with the help of a brush or sponge head until all hair fibers on the hair strand where completely and evenly colored (¶ [0236]), which reads on the “applying a colorant to the hair” method step of claim 13. Herrlein then teaches that hair strands treated with the color composition were washed for 30 seconds with water and then 30 seconds with 0.5 mL of Wella Professionals Brilliance Shampoo, and then 30 seconds with water (¶ [0243]), which reads on the “rinsing the colorant” method step of claim 13.
The one or more pigments may further be one or more colorants which are virtually insoluble in the composition, and may be inorganic or organic (¶ [0076]). Herrlein teaches that the one or more pigments may be selected from the group consisting of metal oxides, hydroxides and oxide hydrates, mixed phase pigments, sulfur-containing silicates, metal sulfides, complex metal cyanides, metal sulfates, chromates and molybdates, and the metals themselves (bronze pigments). The one or more pigments may be selected from the group consisting of are titanium dioxide (CI 77891), black iron oxide (CI 77499), yellow iron oxide (CI 77492), red and brown iron oxide (CI 77491), manganese violet (CI 77742), ultramarine (sodium aluminium sulfosilicates, CI 77007, Pigment Blue 29), chromium oxide hydrate (CI 77289), Prussian blue (ferric ferrocyanide, CI 77510), carmine (cochineal), and combinations thereof (¶ [0078]). The one or more pigments may be one or more pearlescent and coloured pigments based on mica which are coated with a metal oxide or a metal oxychloride, such as titanium dioxide or bismuth oxychloride, and optionally further color-imparting substances, such as iron oxides, Prussian blue, ultramarine, and carmine (¶ [0079]). The one or more organic pigments may be one or more synthetic organic pigments. The one or more synthetic organic pigments may be selected from the group consisting of azo pigments, anthraquinoids, indigoids, dioxazine, quinacridone, phthalocyanine, isoindolinone, perylene and perinone, metal complex, alkali blue, diketopyrrolopyrrole pigments, and combinations thereof (¶ [0081]).
Regarding claims 1-2 and 11-13, it would have been obvious to combine the method of Kunz with the method of Herrlein before the effective filing date of the claimed invention by applying the color removal composition of Kunz, which comprises an amphoteric surfactant and a pH of from 1.8 to 6, onto hair colored by the composition of Herrlein, which comprises an aminosilicone polymer and one or more pigments, and rinsing the color removal composition of Kunz from the hair after a contact time as taught by Kunz. It would have been prima facie obvious to combine the methods of Kunz and Herrlein since one teaches a method of coloring hair and another teaches a method of removing color from hair. One of ordinary skill in the art would have had a reasonable expectation of success in decolorizing the hair colored by the method of Herrlein with the method of Kunz since the pigment film of Herrlein is temporary and the color removal composition of Kunz is used to remove more lasting dyes, meaning it should reasonably be able to remove lesser lasting dyes as well. Additionally, the color removal composition of Kunz contains the same components of instant claim 1 (i.e., an amphoteric surfactant and a pH from about 1 to about 4.3). As such, the composition for removing color of Kunz would inherently possess the same ability as the instantly claimed decolorizing agent to decolorize keratinous material which has been colored by the application of at least one pigment. When the composition taught by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594).
Regarding claims 6 and 7, it would have been further obvious when combining the methods of Kunz and Herrlein, to incorporate any one of the inorganic or organic pigments taught by Herrlein since it entails no more than simple substitution of one known element for another to obtain predictable results.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kunz et al. (US 6,171,347 B1, Jan. 9, 2001) (hereinafter Kunz) and Herrlein et al. (US 2016/0235655 A1, Aug. 18, 2016) (hereinafter Herrlein) as applied to claims 1 and 2 above, and further in view of Kerl et al. (US 2017/0172901 A1, June 22, 2017) (hereinafter Kerl).
The combined teachings of Kunz and Herrlein are discussed above.
The combined teachings of Kunz and Herrlein differ from that of the instantly claimed invention in that Kunz and Herrlein do not explicitly teach an amino-functionalized silicone polymer having at least one secondary amino group as recited in claim 3, nor do Kunz and Herrlein teach an amino-functionalized silicone polymer comprising the structural units of claims 4 and 5.
Kerl discloses a packaging unit (kit of parts) for dyeing keratin fibers wherein one container (C1), comprises a cosmetic agent (M1), which comprises at least one compound, selected from oxidation dye precursors, direct dyes and the mixtures thereof, and at least one aminated silicone polymer, comprising at least one structural unit of formula (I) and at least one structural unit of formula (II), where A denotes a linear or branched C4 to C8 alkyl group and n denotes integers from 1 to 4 (abstract).
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The direct dye of M1 may be pigment red 57:1 (¶ [0066]). It is particularly preferred according to the invention of Kerl if the cosmetic agent (M1) in the container (C1) further comprises at least animated silicone polymer of formula (III), which reads on the amino-functionalized silicone polymer of claims 3-5:
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wherein R1 and R2, independently of one another, denote a methyl group or a hydroxyl group; x denotes integers from 0 to 1999; y denotes integers from 1 to 200; and n denotes integers from 1 to 5 (¶ [0071]). The use of these specific aminated silicone polymers results in increased nourishment of the keratin fibers following the alteration of the color and/or in improved chroma of color nuances (¶ [0071]).
It would have been obvious to modify the combined method of Kunz and Herrlein before the effective filing date of the claimed invention by replacing the aminosilicone polymer in the combined method of Kunz and Herrlein with the aminated silicone polymer (III) of Kerl. It would have been prima facie obvious to replace the aminosilicone polymer of the combined method of Kunz and Herrlein with the aminated silicone polymer of Kerl since it is simple substitution of one known element for another to obtain predictable results. One of ordinary skill in the art would have also been motivated to make this substitution since Kerl teaches that it’s specific aminated silicone polymer results in increased nourishment of the keratin fibers following the alteration of color and/or in improved chroma of color nuances. One of ordinary skill in the art would have had a reasonable expectation of success since the combined method of Kunz and Herrlein as well as Kerl teach the use of aminosilicone polymers (aka. Aminated silicone polymers) with pigments in compositions for coloring hair.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kunz et al. (US 6,171,347 B1, Jan. 9, 2001) (hereinafter Kunz) and Herrlein et al. (US 2016/0235655 A1, Aug. 18, 2016) (hereinafter Herrlein) as applied to claim 1 above, and further in view of the 2014 Cosmetic Ingredient Review (Safety Assessment of Alkyl Betaines as Used in Cosmetics) (hereinafter the CIR).
The combined teachings of Kunz and Herrlein are discussed above. Kunz further discloses wherein the amphoteric surfactant is an alkyl betaine (i.e., zwitterionic) (col. 10, lines 41-44).
The combined teachings of Kunz and Herrlein differ from that of the instantly claimed invention in that Kunz and Herrlein do not explicitly disclose the structure or chain length of the alkyl group on the betaine as defined in claims 8 and 9.
The CIR discloses the structures of 11 alkyl betaines as used in cosmetics (p. 2, introduction) wherein the “alkyl” is either methyl or a longer chain alkyl group ranging in length from about ten to about twenty-two carbons (p. 2, chemistry and Fig. 1), which reads on the (T-1) structure defined in claims 8 and 9.
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The eleven betaines were found to be safe in the present practices of use and concentration in cosmetics (p. 8, conclusion).
Thus, it would have been obvious to modify the combined method of Kunz and Herrlein with the teachings of the CIR before the effective filing date of the claimed invention by using one of the 11 alkyl betaines taught by the CIR as the alkyl betaine surfactant in the combined method of Kunz and Herrlein. 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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kunz et al. (US 6,171,347 B1, Jan. 9, 2001) (hereinafter Kunz) and Herrlein et al. (US 2016/0235655 A1, Aug. 18, 2016) (hereinafter Herrlein) as applied to claim 1 above, and further in view of Tian et al. (US 2003/0106168 A1, June 12, 2003) (hereinafter Tian).
The combined teachings of Kunz and Herrlein are discussed above.
The combined teachings of Kunz and Herrlein differ from that of the instantly claimed invention in that Kunz and Herrlein do not explicitly disclose wherein the decolorizing agent comprises the one or more amphoteric and/or zwitterionic surfactants (a) in a total amount of from about 1.0 to about 15.0 wt. %, based on the total weight of the decolorizing agent as recited in claim 10.
Tian discloses a color removal composition that is a shampoo containing cleansing surfactants such as anionic, amphoteric, or zwitterionic surfactants (¶ [0081]). Suggested ranges of cleansing surfactant include 0.1-50% by weight of the total composition (¶ [0081]).
Therefore, it would have been obvious to modify the method of Kunz and Herrlein with the teachings of Tian before the effective filing date of the claimed invention by formulating the color removal composition used in the method of Kunz and Herrlein with 0.1-50% of amphoteric surfactant as taught by Tian. It would have been prima facie obvious to use 0.1-50% of amphoteric surfactant in the color removal composition of the combined method since this is a known and effective amount of amphoteric surfactant for a color removing composition as taught by Tian. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. One of ordinary skill in the art would have had a reasonable expectation of success in performing this modification since the combined method of Kunz and Herrlein as well as Tian teach the use of amphoteric surfactants in color removal compositions for hair.
Claims 14-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kunz et al. (US 6,171,347 B1, Jan. 9, 2001) (hereinafter Kunz) in view of Herrlein et al. (US 2016/0235655 A1, Aug. 18, 2016) (hereinafter Herrlein) and Kerl et al. (US 2017/0172901 A1, June 22, 2017) (hereinafter Kerl).
Kunz discloses a method for reductively removing color from hair dyed with oxidative hair dye compounds, said method consisting of the steps of: a) providing an aqueous or aqueous-alcoholic reductive composition for removing color from hair dyed with oxidative hair dye compounds, said reductive composition comprising amphoteric surfactants and having a pH of from 1.8 to 6 (which reads on the decolorizing agent of claims 14 and 20) (claim 12). The pH value of the reductive composition is in particular 2.5 to 4 (col. 10, line 55).
The teachings of Kunz differ from that of the instantly claimed invention in that Kunz does not teach a kit-of-parts nor a colorant comprising at least one amino-functionalized silicone polymer and at least one pigment as recited in claim 14 nor the specific structure of the amino-functionalized silicone polymer as defined by claim 15.
Herrlein discloses a method for providing a film comprising pigment on keratin fibres comprising applying a composition to hair, wherein the composition comprises: an aminosilicone polymer and one or more pigments (abstract), which reads on the colorant of claim 14. The one or more pigments may be one or more coloured pigments which impart colour effects to the hair or lustre effect pigments which impart desirable and aesthetically pleasing lustre effects to the keratin fibres (¶ [0073]). The color or luster effects on the hair may be preferably temporary, i.e. they last until the next hair wash and can be removed again by washing the hair with customary shampoos (¶ [0073]).
The one or more pigments may further be one or more colorants which are virtually insoluble in the composition, and may be inorganic or organic (¶ [0076]). Herrlein teaches that the one or more pigments may be selected from the group consisting of metal oxides, hydroxides and oxide hydrates, mixed phase pigments, sulfur-containing silicates, metal sulfides, complex metal cyanides, metal sulfates, chromates and molybdates, and the metals themselves (bronze pigments). The one or more pigments may be selected from the group consisting of are titanium dioxide (CI 77891), black iron oxide (CI 77499), yellow iron oxide (CI 77492), red and brown iron oxide (CI 77491), manganese violet (CI 77742), ultramarine (sodium aluminium sulfosilicates, CI 77007, Pigment Blue 29), chromium oxide hydrate (CI 77289), Prussian blue (ferric ferrocyanide, CI 77510), carmine (cochineal), and combinations thereof (¶ [0078]). The one or more pigments may be one or more pearlescent and coloured pigments based on mica which are coated with a metal oxide or a metal oxychloride, such as titanium dioxide or bismuth oxychloride, and optionally further color-imparting substances, such as iron oxides, Prussian blue, ultramarine, and carmine (¶ [0079]). The one or more organic pigments may be one or more synthetic organic pigments. The one or more synthetic organic pigments may be selected from the group consisting of azo pigments, anthraquinoids, indigoids, dioxazine, quinacridone, phthalocyanine, isoindolinone, perylene and perinone, metal complex, alkali blue, diketopyrrolopyrrole pigments, and combinations thereof (¶ [0081]). These pigments read on the inorganic and organic pigments of claim 16.
Kerl discloses a packaging unit (kit of parts) for dyeing keratin fibers wherein one container (C1), comprises a cosmetic agent (M1), which comprises at least one compound, selected from oxidation dye precursors, direct dyes and the mixtures thereof, and at least one aminated silicone polymer, comprising at least one structural unit of formula (I) and at least one structural unit of formula (II), where A denotes a linear or branched C4 to C8 alkyl group and n denotes integers from 1 to 4 (abstract).
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The direct dye of M1 may be pigment red 57:1 (¶ [0066]). It is particularly preferred according to the invention of Kerl if the cosmetic agent (M1) in the container (C1) further comprises at least animated silicone polymer of formula (III), which reads on the amino-functionalized silicone polymer of claim 15:
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wherein R1 and R2, independently of one another, denote a methyl group or a hydroxyl group; x denotes integers from 0 to 1999; y denotes integers from 1 to 200; and n denotes integers from 1 to 5 (¶ [0071]). The use of these specific aminated silicone polymers results in increased nourishment of the keratin fibers following the alteration of the color and/or in improved chroma of color nuances (¶ [0071]).
It would have first been obvious to combine the method of Kunz with the method of Herrlein before the effective filing date of the claimed invention by applying the color removal composition of Kunz, which comprises an amphoteric surfactant and a pH of from 1.8 to 6, onto hair colored by the composition of Herrlein, which comprises an aminosilicone polymer and one or more pigments It would have been prima facie obvious to combine the methods of Kunz and Herrlein since one teaches a method of coloring hair and another teaches a method of removing color from hair. One of ordinary skill in the art would have had a reasonable expectation of success in decolorizing the hair colored by the method of Herrlein with the method of Kunz since the pigment film of Herrlein is temporary and the color removal composition of Kunz is used to remove more lasting dyes, meaning it should reasonably be able to remove lesser lasting dyes as well. Additionally, the color removal composition of Kunz contains the same components of instant claim 1 (i.e., an amphoteric surfactant and a pH from about 1 to about 4.3). As such, the composition for removing color of Kunz would inherently possess the same ability as the instantly claimed decolorizing agent to decolorize keratinous material which has been colored by the application of at least one pigment. When the composition taught by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594).
It would have been further obvious to package the components of the above combined method of Kunz and Herrlein (i.e., the coloring composition and the color removing composition) in a kit of parts with discrete containers for separate components as taught by Kerl. One of ordinary skill in the art would have found it obvious to package the coloring composition and the color removing composition of the combined method of Kunz and Herrlein in a kit-of-parts since the components are used in the same method but for different purposes.
Regarding claim 15, it would have been further obvious to replace the aminosilicone polymer in the combined kit-of-parts with the aminated silicone polymer (III) of Kerl. It would have been prima facie obvious to replace the aminosilicone polymer of the combined kit-of-parts with the aminated silicone polymer of Kerl since it is simple substitution of one known element for another to obtain predictable results. One of ordinary skill in the art would have also been motivated to make this substitution since Kerl teaches that it’s specific aminated silicone polymer results in increased nourishment of the keratin fibers following the alteration of the color and/or in improved chroma of color nuances.
Regarding claim 16, it would have been further obvious to incorporate any one of the inorganic or organic pigments taught by Herrlein into the combined kit-of-parts since the replacement of a pigment entails no more than simple substitution of one known element for another to obtain predictable results.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kunz et al. (US 6,171,347 B1, Jan. 9, 2001) (hereinafter Kunz) in view of Herrlein et al. (US 2016/0235655 A1, Aug. 18, 2016) (hereinafter Herrlein) and Kerl et al. (US 2017/0172901 A1, June 22, 2017) (hereinafter Kerl) as applied to claim 14 above, and further in view of the 2014 Cosmetic Ingredient Review (Safety Assessment of Alkyl Betaines as Used in Cosmetics) (hereinafter the CIR).
The combined teachings of Kunz, Herrlein, and Kerl are discussed above. Kunz further discloses wherein the amphoteric surfactant is an alkyl betaine (i.e., zwitterionic) (col. 10, lines 41-44).
The combined teachings of Kunz, Herrlein, and Kerl differ from that of the instantly claimed invention in that Kunz, Herrlein, and Kerl do not explicitly disclose the structure or chain length of the alkyl group on the betaine as defined in claims 17 and 18.
The CIR discloses the structures of 11 alkyl betaines as used in cosmetics (p. 2, introduction) wherein the “alkyl” is either methyl or a longer chain alkyl group ranging in length from about ten to about twenty-two carbons (p. 2, chemistry and Fig. 1).
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The eleven betaines were found to be safe in the present practices of use and concentration in cosmetics (p. 8, conclusion).
Thus, it would have been obvious to modify the combined kit-of-parts of Kunz, Herrlein, and Kerl with the teachings of the CIR before the effective filing date of the claimed invention by using one of the 11 alkyl betaines taught by the CIR as the alkyl betaine surfactant in the combined kit-of-parts. 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 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kunz et al. (US 6,171,347 B1, Jan. 9, 2001) (hereinafter Kunz) in view of Herrlein et al. (US 2016/0235655 A1, Aug. 18, 2016) (hereinafter Herrlein) and Kerl et al. (US 2017/0172901 A1, June 22, 2017) (hereinafter Kerl) as applied to claim 14 above, and further in view of Tian et al. (US 2003/0106168 A1, June 12, 2003) (hereinafter Tian).
The combined teachings of Kunz, Herrlein, and Kerl are discussed above.
The combined teachings of Kunz, Herrlein, and Kerl differ from that of the instantly claimed invention in that Kunz and Herrlein do not explicitly disclose wherein the decolorizing agent comprises the one or more amphoteric and/or zwitterionic surfactants (a) in a total amount of from about 1.0 to about 15.0 wt. %, based on the total weight of the decolorizing agent as recited in claim 19.
Tian discloses a color removal composition that is a shampoo containing cleansing surfactants such as anionic, amphoteric, or zwitterionic surfactants (¶ [0081]). Suggested ranges of cleansing surfactant include 0.1-50% by weight of the total composition (¶ [0081]).
Therefore, it would have been obvious to modify the combined kit-of-parts of Kunz, Herrlein, and Kerl with the teachings of Tian before the effective filing date of the claimed invention by formulating the color removal composition used in the kit-of-parts with 0.1-50% of amphoteric surfactant as taught by Tian. It would have been prima facie obvious to 0.1-50% of amphoteric surfactant in the color removal composition in the combined kit-of-parts since this is a known and effective amount of amphoteric surfactant for a color removing composition as taught by Tian. One of ordinary skill in the art would have had a reasonable expectation of success in performing this modification since the combination of Kunz, Herrlein, and Kerl as well as Tian teach the use of amphoteric surfactants in color removal compositions for hair.
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.
1. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, 17, and 18 of copending Application No. 17/780,369.
Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims and copending claims both recite a process for decolorizing keratinous material which has been colored by the application of at least one pigment wherein a decolorizing 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 (copending claim 1).
Furthermore, 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 (i.e., for a sufficient amount of time to give dyed hair), rinsing the colorant from 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 (i.e., a contact time sufficient to give decolorized hair), and rinsing the decolorizing agent from the hair (copending claim 17).
Lastly, the pending claims and copending claims both recite a multi-component packaging unit (kit-of-parts) for staining (i.e., dyeing) and decolorizing keratinous material, comprising a separately packaged: first container comprising a colorant, the colorant comprising at least one amino-functionalized silicone polymer and at least one pigment; and second container comprising a decolorizing agent having a pH value of about 1.0 to about 4.7 (copending claim 18).
Lastly, copending claim 12 recites wherein the decoloring agent further comprises at least one anionic and/or zwitterionic surfactant.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments, filed 07/22/2025 in regards to the claim rejections under 35 USC 103, have been fully considered but they are not persuasive.
(1) Applicant argues that Kunz does not disclose every limitation of the instant invention, nor do any of the other references remedy this deficiency. Applicant argues that Kunz teaches the removal of color from hair dyed with oxidative hair dye compounds, which is different from hair dyed with a pigment as instantly claimed (p. 9 of Remarks).
In response to applicant's arguments against the Kunz reference individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Herrlein is relied on for teaching the step of coloring keratinous material with a pigment.
(2) Applicant combats prima facie obviousness by arguing that if the oxidative dye of Kunz was substituted with a pigment, it would impermissibly change Kunz’s principle of operation and that Kunz’s entire invention would be different and unusable such that it would no longer serve its intended purpose. For example, Kunz’s composition would no longer reductively remove color from hair dyed with oxidative hair dye compounds (p. 9-10 of Remarks).
In response to the above argument, substituting the oxidative dye of Kunz with a pigment modifies the coloring composition and process only. This modification does not result in any structural changes in the color removal composition or process. As such, the step of removing color and the composition used in Kunz would remain structurally the same and would therefore still be operable in the context of Kunz’s invention and useful for the intended purpose of Kunz. Additionally, applicant has not demonstrated that the color removal composition of Kunz would be incapable of decoloring hair colored with a pigment, such as that of Herrlein. As discussed in the rejections above, the color removal composition of Kunz is identical to the decolorizing agent of the independent claims. Since the color removal composition of Kunz is identical to the instantly claimed decolorizing agent, the composition of Kunz must necessarily have the characteristics claimed as an inherent property (i.e., the ability to decolor hair colored with a pigment). It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594).
Applicant's arguments, filed 07/22/2025 in regards to Double Patenting, have been fully considered but they are not persuasive. Applicant argues that the copending Application requires at least one salt of a monovalent or valent cation, which is not claimed in the instant claims.
In response to this argument, it is noted that the instant claims do not explicitly exclude the use of a monovalent or valent cation. As such, the copending claims still fall within the scope of the instant claims along with disclosing every required component of the instant claims.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616