Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10 June 2026 has been entered.
Claim Status
Applicant’s claims and arguments in the response filed 10 June 2026 are acknowledged.
Claims 65-71 & 74-86 are pending.
Claims 1-64, 72 & 73 are cancelled.
Claims 68, 74, 78-82 & 84-86 are withdrawn.
No claims are amended.
Claims 65-67, 69-71, 75-77 & 83 are under consideration.
Examination on the merits is extended to the extent of the following species:
(A) amino acid - taurine;
(B) carboxylic acid - citric acid;
(C) surfactant - surfactant mixture of coco-betaine as an amphoteric surfactant and sodium C14-C16 olefin sulfonate as an anionic surfactant;
(D) coupler - 2,4-diaminophenoxyethanol HCI; and
(E) whether the composition further comprises one or more additional oxidative bases and/or additional couplers - no additional oxidation bases or couplers.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied and constitute the complete set presently being applied to the instant application.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
New & Maintained Objections/Rejections
Claim Objections
Claims 65, 85 & 86 objected to because of the following informalities:
Claim 65 recites “meta-aminophenol (1-hydroxy-3-aminobenzene)” which results in double inclusion of the same compound. Applicant may recite one chemical name or the other, but not both.
The status identifiers of claims 85 & 86 are incorrect. The status identifiers are “Previously Presented” when they should be “Withdrawn” (see pg. 2 of the Office action mailed 02/10/2026).
Appropriate correction is required.
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.
Claims 65-67, 69-71, 75-77 & 83 are rejected under 35 U.S.C. 103 as being unpatentable over Krueger [(WO 2009/062804; Published 05/22/2009; previously cited); as evidenced by Chembook; Published: 2023].
*Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. cocoamidopropyl betaine which is a species in the genera of amphoteric surfactants to which the elected species of coco-betaine belongs; 2,4-diaminophenoxyethanol which is a species in the genera of couplers to which the elected species of 2,4-diaminophenoxyethanol HCI belongs; sodium Laureth-6 carboxylate which is a species in the genera of anionic surfactants to which the elected species of sodium C14-C16 olefin sulfonate belongs) and in an effort to expedite prosecution, this art has been applied. The species election is still in effect.
** All references refer to the English language translation.
With regard to claims 65(a), 65(b), 65 ( c), 65(d), 65 ( e), 65 (f), 65 (g), 65 (h), 66, 69-71, 75, 77, 83 (a), 83 (b), 83 ( c), 83 (d), 83 ( e), 83 ( f), 83 (g) & 83 (h), Krueger in Example F5 teaches a coloring crème comprising 1.50% taurine, 0.1% ascorbinsaure (i.e. ascorbic acid), 6.3% 2-aminoethanol (i.e. monoethanolamine), 0.65% Eumulgin B1 (i.e. nonionic surfactant), 0.65% Eumulgin B1 (i.e. ceteareth -20; nonionic surfactant), Akypo Soft 45 NV (sodium Laureth-6 carboxylate; anionic surfactant), 7.15% Hydrenol D (i.e. cetylstearyl alcohol; fatty alcohol/fatty compound), 1.10% p-toluenediamisulfate (i.e. 2,5 toluene diamine salt), 0.07 of the coupler 2-amino-3-hydroxypyridine, water/solvent, 1.0 glycine (i.e. conditioning compound; pg. 110-112). With regard to claims 65 (b), 69, 70, 77 & 83 (b), Krueger teaches citric acid to a be a bleach booster, neutralizer, pH adjuster and edible acid which has at least one hydroxyl group (pg. 29, 48, 90 & 95). The ordinary skilled artisan, before the effective filing date, knew that ascorbic acid was edible. As evidenced by Chembook, ascorbic acid has the chemical structure of:
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and has four hydroxyl groups (pg. 1) It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Krueger’s Example F5 by substituting the ascorbic acid with citric acid as taught by Krueger because ascorbic acid and citric acid are both edible acids comprising at least one hydroxyl group taught as suitable by Krueger for practicing the invention. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to benefit from citric acid’s bleach boosting, pH adjusting, and neutralizing properties which were taught by Krueger. With regard to claims 65 (d), Krueger teaches a amphoteric and zwitterionic surfactants “leads to an increased deposition of the agents on the surface of the skin and the hair, which manifests itself in the overall cosmetic appearance of the skin and the hair” and that cocoamidopropyl betaine is particularly preferred and alkyl betaines are typical (pg. 36). Krueger in Example F4 teaches inclusion of Dehyton K (i.e. amphoteric surfactant) in an amount of 5.0% (pg. 110-112). With regard to claim 65(d), it would have been prima facie obvious to the ordinary skilled artisan at before the effective filing date to have modified Kruegar’s F5 coloring crème by adding 5.0% cocoamidopropyl betaine to the composition in order increase deposition of the agents on the surface of the skin and the hair as taught by Krueger. The ordinary skilled artisan would have been motivated to do so in order to manifest and provide an overall cosmetic appearance on the hair as taught by Krueger. With regard to claim 65 (g) & 83 (g), Krueger teaches 2,4-diaminophenoxyethanol as a “preferred coupler component” (pg. 16). With regard to claims 65 (g) & 83 (g), it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Krueger’s Example F5 composition by substituting the 2-amino-3-hydroxypyridine coupler with 2,4-diaminophenoxyethanol. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use a preferred coupler component. With regard to claims 67 & 83 (a), Krueger teaches inclusion of betaines that are not understood to betaine with surface active properties that are suitable for their invention as those having the formula AI in which taurine is taught for use (pg. 94 & 95). The amount of betaines, which include taurine, for use in the invention include 0.05 to 10 wt% and in Examples F1-F6 Kruegar teaches taurine in an amount of 1.0-1.5 (pg. 95 & 112). With regard to claims 67 & 83 (a), it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have adjusted the amount of taurine in Krueger’s F5 coloring crème to be between 0.05-1.0% because Krueger teaches this amount of taurine/non-surface active betaines as suitable. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use Krueger’s taurine in an amounts that are preferred and exemplified. With regard to claims 76 & 83 ( c), Krueger teaches 2-aminoethanol/monoethanolamine and L-arginine are alkalizing agents (pg. 105). Krueger in the coloring crème F2 teaches inclusion of L-arginine in an amount of 1.0 % (pg. 110-112). With regard to claims 76 & 83 ( c), it would have been prima facie obvious before the effective filing date to have looked to Kruegar’s teachings and adjusted the amount of 2-aminoethanol to be 1.0% because Kruegar teaches 2-aminoethanol/monoethanolamine and L-arginine are alkalizing agents. The ordinary skilled artisan would have been motivated to do so, with expectation of success, in order to reduce the alkalinity of the composition by reducing the amount of 2-aminoethanolamine.
With regard to the recited amounts of taurine/at least one amino acid, citric acid/at least one carboxylic acid, monoethanolamine, surfactant mixture/at least one surfactant, at least one fatty compound, toluene-2,5 diamine, 2,4-diaminophenoxyethanol/coupler, Krueger teaches these reagents in amounts which overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 65-67, 69-71, 75-77 & 83 are rejected under 35 U.S.C. 103 as being unpatentable over Charrier (US 2015/0202142; previously cited; previously cited), Ferrer (WO 2020/109859; previously cited) and Machover (US 2019/0201309; IDS: 08/24/2022; previously cited).
Charrier teaches a dyeing composition (title). With regard to claims 65 (a), 66, 77, & 83 (a), Charrier teaches inclusion of amino acids, which may be taurine, in the compositions of their invention as one of the amine alkaline agents ([0322], [0332] & [0333]). With regard to claims 65 (b), 69, 77 & 83 (b), more broadly, Charrier teaches adjusting the pH of the composition through inclusion of an acidifying agent which may be citric acid (i.e. at least one carboxylic acid; [0422]). With regard to claims 65( c) & 83 ( c), Charrier in Composition 1 teaches inclusion of an alkaline agent (e.g. ethanolamine/-monoethanolamine) in an amount of 5% and more broadly teaches monoethanolamine as a “better still” alkaline agent ([0163], [[0343], & [0344]). With regard to claim 76 & 83 ( c), more broadly, Charrier teaches “[a]dvantageously, the composition has a content of alkaline agent(s), and preferably of organic amine(s), when it (they) is (are) present, ranging from 0.01% to 30% by weight… and better still from 1% to 10% by weight, relative to the weight of said composition” [0345].With regard to claims 65 (d)(i) & 83 (d), and the elected species, Charrier teaches a dyeing composition comprising at least one nonionic, anionic and amphoteric surfactant (title). With regard to claims 65 (d)(i) & 83 (d), Charrier in Composition 1 teaches the composition comprises the amphoteric surfactant, cocobetaine, in an amount of 3% [0446]. With regard to claims 65(d)(ii) & 83(d), more broadly, Charrier teaches inclusion of alpha-olefin sulphonates as the anionic surfactant for use in their invention (Charrier’s claim 12). With regard to claim 65 ( e), 71 & 83( e), more broadly, Charrier teaches inclusion of fatty alcohols having “at least one saturated or unsaturated and linear or branched hydrocarbon-based group which comprises from 6 to 30 and better still from 8 to 30 carbon atoms…”, including cetearyl alcohol”([0178]; Composition 2-[0447]; Charrier’s claim 14’ [0249]). With regard to claim 65 (f) & 83(f),Charrier in Composition 1 teaches inclusion of 2,5-toluenediamine oxidation base in an amount of 0.6732% [0446]. With regard to claim 65 (f) & 83(f), more broadly, Charrier teaches the oxidation base is “generally each present in an amount from 0.0001% to 10% by weight relative to the total weight of the composition of the invention, and preferably from 0.005% to 5% by weight“ [0043]. With regard to claims 65 (g)(I) & 83, Charrier in Composition 1 teaches inclusion of 2,4 diaminophenoxyethanol hydrochloride coupler in an amount of 0.019 % [0446]. With regard to 65 (g)(I) & 83(g), more broadly, Charrier teaches the coupler “generally represent[s] from 0.0001% to 10% by weight relative to the total weight of the composition and preferably from 0.005% to 5% by weight relative to the total weight of the composition” [0044]. With regard to claims 65 (h) & 83 (h), Charrier in Composition 1 teaches inclusion of water as the solvent [0446]. With regard to claim 75, Charrier in Composition 1 teaches inclusion of mineral oil (i.e. conditioning agent; [0446]). Charrier teaches the “pH of the composition according to the invention, if it is aqueous, generally ranges from 6 to 11 and preferentially from 8.5 to 11” [0421].
Charrier does not teach the anionic surfactant is sodium C14-C15 olefin sulphonate, the total amount of citric acid/carboxylic acids, or the amount of taurine for inclusion in the invention.
In the same field of invention, Ferrer teaches compositions for dyeing keratin fibers (title). With regard to claims 70 & 83 (b), Ferrer teaches the composition comprises an oxidation dye with oxidation bases and couplers (pg. 15, ll. 5-10). Ferrer teaches “[i]t may also be desirable to add small amounts of acids or buffering systems to adjust the pH of the dyeing compositions to the desired pH range of 7.1 to 11. Suitable acids include…citric acid, and the like. Suggested ranges of pH adjusters are from about 0.00001-8 wt.%, or about 0.00005-6 wt.%, or about 0.0001-5 wt.%, based on the total weight of the composition”. With regard to claims 65 (d)(ii) & 83(d), Ferrer teaches the composition comprises at least one anionic surfactant in an amount of “about 0.1 to about 25 wt.%, or about 0.3 to about 15 wt. %, or about 0.5 to about 10 wt.%” which may be olefin sulfonates and exemplifies sodium C14-C16 olefin sulphonate in an amount of 0.7% in Table 1 C2 (pg. 9, ll. 35-end to pg. 10, ll. 1-10).
In the same field of invention, Machover teaches compositions for altering the color of hair comprising oxidation bases and couplers [0066]. With regard to claims 65 (a), 65 (b), 83 (a) & (83 (b), Machover teaches “[a]dditionally, citric acid/or taurine may also provide protect the hair from damage when undergoing color alteration” [0040]. With regard to claims 65 (a), 67 & 83 (a) “[i]n some embodiments, the at least one amino acid or amino sulfonic acid and/or salt thereof is taurine and/or a salt thereof. In one or more embodiments, the composition comprises from about 0.01 wt. % to about 10 wt. % of the at least one amino acid or amino sulfonic acid and/or a salt thereof. In some embodiments, the at least one amino acid or amino sulfonic acid and/or a salt thereof is present in an amount of from about 0.01 wt. % to about 5 wt. %“ [0015]. With regard to claims 65 (b), 70 & 83 (b), Machover teaches the carboxylic acid, which may be citric acid, is present in “at least 0.01 wt. % to about 10 wt. %” [0015]. “In some embodiments, the at least one carboxylic acid and/or a salt thereof is present in an amount of from about 0.01 wt. % to about 7 wt. %. “[0015]. Machover in Example 1, Inventive Composition Ex. 3, teaches a composition in the form of cream comprising water, mineral oil, cetearyl alcohol, ethanolamine (i.e. monoethanolamine), 2.16% taurine and 3.31% citric acid [0233].
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (G) may be employed in which it would have been obvious to the ordinary skilled artisan at the time of filing the invention to have modified Charrier’s dye composition by adjusting the amount of Charrier’s taurine from about 0.01 wt. % to 2.16 wt % of the composition, the amount of Charrier’s citric acid to be about 0.0001-3.31 wt.% of the composition, and substituting Charrier’s generically taught alpha-olefin sulphonates anionic surfactants with sodium C14-C16 olefin sulphonate as suggested by the combined teachings of Ferrer and Machover because Charrier, Ferrer and Machover are all directed to hair dyes having oxidation bases and couplers and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to protect hair from damage through use of Charrier’s taurine and citric acid in amounts of 0.01 wt. % to about 2.16 wt % of the composition and about 0.0001-3.31 wt.% of the composition respectively as taught by Ferrer and Machover and use the art accepted olefin sulphonate anionic surfactant, sodium C14-C14 olefin sulphonate, in the composition as taught and exemplified by Ferrer.
With regard to the recited amounts of taurine/amino acid, citric acid/carboxylic acid/pH adjuster, monoethanolamine, toluene-2,5 diamine/oxidation base, 2,4-diaminophenoxyethanol/ coupler; length of the carbon chain in the fatty alcohols; and pH range, the combined teachings of Charrier, Ferrer and Machover teach these parameters with values that overlap or fall within the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
In the traverse of the rejection of the claims over Krueger, Applicant argues “ascorbinsaure” is German for ascorbic acid and that Krueger’s Example F5 does not contain citric acid (reply, pg. 9).
This is not persuasive. Krueger’s Example F5 comprises ascorbic acid which is an art recognized edible acid that is polyfunctional, having 4 hydroxyl groups (see Chembook). Krueger teaches inclusion of citric acid as an edible acid that is polyfunctional and having at least one hydroxyl group. Krueger teaches additional benefits to inclusion of citric acid including bleaching and neutralizing effects. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have substituted to Kreuger’s Example F5 ascorbic acid with citric acid because they are both polyfunctional acids, comprising at least one hydroxyl group, which are edible and taught by Krueger as suitable for use in their invention.
Applicant argues a previously submitted declaration from 22 October 2025 (reply, pg. 9). Applicant argues Krueger isn’t the closest prior art because Krueger’s F5 does not exemplify citric acid. This is not persuasive for two reasons. The first is Krueger teaches citric acid as suitable for use in their invention. Krueger teaches benefits to selection of citric acid (i.e. bleach boosting and neutralization). It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have substituted Krueger’s Example F5 ascorbic acid with citric acid because both acids are edible and polyfunctional through multiple hydroxyl groups but citric acid has the added benefit of bleach boosting. With regard to Applicant’s argument pertaining to the declaration, the declaration states the results “demonstrate the importance of the combination of from about 0.05% to about 1.5% of toluene-2,5-diamine and from about 0.001% to about 1.5% of one or more couplers chosen from 2,4-diaminophenoxyethanol, meta-aminophenol… and 4-amino-2-hydroxy toluene…”. Krueger teaches 2,4-diaminophenoxyethanol is a suitable coupler for inclusion in their composition and it would have been obvious to the ordinary skilled artisan before the effective filing date to have substituted Krueger’s Example F5 2-amino-3-hydroxypyridine coupler with 2,4-diaminophenoxyethanol coupler taught by Krueger. Applicant hasn’t shown in their comparison that 2,4-diaminophenoxyethanol works better than 2-amino-3-hydroxypyridine. This is important because Applicant’s own specification at paragraph [000108] teaches the 2-amino-3-hydroxypyridine coupler as a suitable additional coupler.
Applicant argues the evidence submitted in the 22 October 2025 declaration is reasonably commensurate in scope with the claims because “ ‘nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof.’ Thus, it is not necessary to test every surfactant, every fatty compound, every solvent, every monoethanolamine concentration, or every point within each claimed range” (reply, pg. 10-11). Applicant argues their data show “a clear and technically meaningful trend” (reply, pg. 11). Applicant further argues “the Declaration explains why those components would not be expected to impact stability: fatty compounds and surfactants are used to provide structure to the mixture, fatty compounds provide conditioning benefits, and mono- ethanolamine is used as an alkalizer” (reply, pg. 11).
This is not persuasive. One of the features of the inventive composition is that it is stable and does not separate. Yet the claims are generic to the surfactant and/or their amounts (see claims 65 and 83). Surfactants and their amounts are known to affect stability and phase separation; Applicant has only evaluated ONE combination (i.e. sodium C14-15 olefin sulfonate, cocobetaine, and PPG-5-Ceteth-10 phosphate and Deceth-3). It was also known that fatty alcohols act as co-surfactants and provide stability and maintenance of a homogenous two phase compositions. However, the claims are generic to the kind of fatty alcohol and their amounts (see claims 65 and 83). With further regard to support for the ranges, the inventive compositions examined (i.e.1H, 1I and INV) are not commensurate with the scope of the claims. In particular, only two amounts of taurine or glycine were assessed and these were at the midpoint to upper end of the claimed range. Only one amount of citric acid (0.2 %) or malic acid (0.4%) was evaluated and these are at the lower end of the claimed range. These cannot simply be extrapolated as argued by Applicant’s representative because they change the pH of the composition which in turn affects stability. The claims are also generic to the amount of monoethanolamine and only one amount was evaluated (0.2%). The claims recite amounts of couplers as low as 0.001%, however the lowest amount of coupler evaluated was 0.06%. "[O]bjective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
With regard to Applicant’s argument that “the Declaration explains why those components would not be expected to impact stability: fatty compounds and surfactants are used to provide structure to the mixture, fatty compounds provide conditioning benefits, and monoethanolamine is used as an alkalizer” (reply, pg. 11), it is known that fatty compounds, such as fatty alcohols, and surfactants are co-surfactants and surfactants which provide stability to a composition. Stability is chemical species and concentration dependent. The declaration also examined pH as a function of stability (Declaration-pg. 4), and monoethanolamine has strong basicity and solvent properties which affect stability.
Applicant further argues the 22 October 2025 declaration stating statistical analysis is not required for pH and viscosity results because it does not rely on a lack of numerical difference in pH or viscosity as an unexpected result (reply, pg. 12). Applicant argues “the fact that the observed "changes in pH and viscosity observed over the study, as well as the appearance at the end of the study, are all within acceptable tolerance for a commercial hair dye composition," and that in view of such stability "hair color altering compositions according to the claims are commercially useful," is what the Declarant testified was surprising” (reply pg. 12).
This is not persuasive. The declaration states “the stability studies discussed above and in Example 4 of the '663 application also demonstrate the importance to stability of the amounts of amino acids, carboxylic acids, toluene-2,5-diamine, and couplers chosen from 2,4-diaminophenoxyethanol, meta- aminophenol (1-hydroxy-3-aminobenzene) and 4-amino-2-hydroxy toluene, in hair color altering compositions. As demonstrated, if the amounts of those components are outside the claimed ranges such as in comparative composition C3, the composition will be unstable and therefore unsuitable for commercialization. In contrast, however, as the data for compositions 1H, 1I, and INV demonstrate, by using amounts of those components within the claimed ranges, stability was surprisingly achieved” (Declaration-pg. 6). What the rejections above have shown is that Applicant is using reagents known for use in hair coloring and optimizing the amounts of these reagents within the range that art is recognized as being suitable for hair coloring. It is within the skill of an artisan to experiment within a known range for hair coloring composition to produce a stable hair coloring composition. The Federal Circuit concluded that “[g]ood science and useful contributions do not necessarily result in patentability.” Id. at 1364, 83 USPQ2d at 1304.(MPEP 2145).
In traversing the rejection of the claims under 35 USC 103(a) over the Charrier reference, Applicant argues that while a reference is presumed enabling, it does not mean that every composition disclosed in the reference inherently possesses an unstated property, such as storage stability (reply, pg. 12).
This is not persuasive. Charrier does not teach their compositions are unstable. Further, creation of an unstable composition is not a feature disclosed by Charrier. Compositional instability would be detrimental to the Charrier’s goal of creation of a hair dye composition and create an inoperable device. “Prior art is presumed to be operable/enabling” (MPEP 2121. I).
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.
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Claims 65-67, 69-71, 75-77 & 83 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,036,299 (hereinafter the ‘299; Patented: 07/16/2024; previously cited) in view of Charrier (US 2015/0202142; previously cited).
The instant application and ‘299 are both drawn to hair coloring toning compositions. The ‘299 recites a hair toning composition and a method of using a hair toning composition comprising an amino acid which may be taurine, at least one carboxylic acid which may be citric acid, monoethanolamine, a surfactant mixture comprising a mixture of surfactants which include (i) at least one amphoteric surfactant and (ii) at least one surfactant chosen from anionic or nonionic surfactants, at least one fatty compound which may be lauryl alcohol (i.e. a C12 fatty alcohol), a further conditioning agent, an oxidation base, an oxidation coupler, and a solvent. The ‘299 recites the amount of amino acids, which may be taurine, in an amount from about 0.1 to about 1% by weight; the amount of carboxylic acid, which may be citric acid, in an amount of about 0.01 to about 3% by weight; and monoethanolamine present in an amount from about 0.01% to about 3% by weight. The ‘299 does not teach the oxidation base is toluene 2,5-diamine, the amount of oxidation base, the oxidation coupler is chosen from “ 2,4-diaminphenoxyethanol…” or the amount of oxidation coupler. The teachings of Charrier are described above. In brief, Charrier teaches a dyeing composition comprising amphoteric and anionic surfactants; taurine; monoethanolamine; fatty alcohols; and citric acid. Charrier in Composition 1 teaches inclusion of 2,5-toluenediamine oxidation base in an amount of 0.6732% [0446]. More broadly, Charrier teaches the oxidation base is “generally each present in an amount from 0.0001% to 10% by weight relative to the total weight of the composition of the invention, and preferably from 0.005% to 5% by weight“ [0043]. Charrier in Composition 1 teaches inclusion of 2,4 diaminophenoxyethanol hydrochloride coupler in an amount of 0.019 % [0446]. More broadly, Charrier teaches the coupler “generally represent[s] from 0.0001% to 10% by weight relative to the total weight of the composition and preferably from 0.005% to 5% by weight relative to the total weight of the composition” [0044]. It would have been prima facie obvious at the time of filing to have modified the hair toning composition recited by the ‘299 claims by selecting 2,5-toluenediamine as the oxidation base and adding it in an amount from 0.0001% to 10% by weight and selecting 2,4 diaminophenoxyethanol hydrochloride as the coupler and adding it in an amount of from 0.0001% to 10% as taught by Charrier because the ‘299 and Charrier are both directed to hair dying compositions comprising amphoteric and anionic surfactants, taurine, citric acid, monoethanolamine, solvent, fatty alcohols, and further conditioning agents and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to select art recognized couplers and oxidation bases suitable for a hair dye and use them in an amounts art recognized as suitable for the purpose of coloring/dyeing hair.
The instant claims are therefore an obvious variation of the ‘299 patent claims in view of the prior art.
Claims 65-67, 69-71, 75-77 & 83 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-8 & 11-15 of copending Application No. 19/376,692 (hereinafter the ‘692; Preliminary amendment filed -10/31/2025).
The instant application and ‘692 are both drawn to hair color compositions. The ‘692 recites a hair toning composition comprising an amino acid which may be taurine in an amount of about 0.05 to about 5%, at least one carboxylic acid which may be citric acid in an amount of about 0.01 to about 3%, monoethanolamine, a surfactant mixture comprising a mixture of surfactants which include (i) at least one amphoteric surfactant and (ii) at least one surfactant chosen from anionic or nonionic surfactants (i.e. at least one surfactant), at least one fatty compound which are chosen from C12-C22 fatty alcohols, a further conditioning agent, an oxidation base which may be toluene-2,5-diamine in an amount of about 0.001% to about 20%, an additional oxidation coupler which may be m-aminophenol (i.e. meta-aminophenol) and solvent. The ‘692 recites inclusion of at least one coupler in an amount of about 0.001% to about 20%. It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have looked to the ‘692 and adjusted the amount of the coupler, meta-aminophenol, to be about 0.001% to about 20%, as a function of routine optimization within prior art conditions because meta-aminophenol is a coupler used for hair color compositions and an amount of about 0.001% to about 20% is a suitable amount for other couplers as recited by the ‘692. The copending claims are therefore an obvious variant of the conflicting, copending claims.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant argues the present claims are patentable over Charrier which the office relies on the claimed combination of oxidation base and coupler (reply, pg. 13).
The Examiner notes the only specific arguments discussing the deficiencies of Charrier are in the traverse of the 35 USC 103(a) rejections in which Applicant argues “assuming…Charrier is operable for dyeing hair, there is no evidence of storage stability of any composition therein” (reply, pg. 12).
This not persuasive because the ‘299 recites the hair composition includes an oxidation base and an oxidation coupler. Charrier teaches the recited oxidation base and oxidation coupler in a hair composition in the recited amount. Charrier is in the same field of invention and teaches the suitability of the 2,5-toluenediamine oxidation base in an amount of 0.0001% to 10%, including 0.6732% ([0043] & [0446]). Charrier in Composition 1 teaches inclusion of 2,4 diaminophenoxyethanol hydrochloride coupler in an amount of 0.019 % and more broadly teaches the coupler “from 0.0001% to 10% by weight relative to the total weight of the composition” ([0044] & [0446]).
Conclusion
No claims are allowed.
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/LORI K MATTISON/
Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
