DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed July 22, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Claim Status
Claims 1 – 18 and 22 are cancelled.
Claims 24 – 26 are newly added.
Claims 19 and 20 are withdrawn.
Claims 21 and 23 – 26 are examined here-in.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 24 and 25 are rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 24 depends on independent claim 21. Independent claim 21 recites at least one complexing agent of the general formula (I) wherein R1 is a hydrogen atom, a carboxy-C1-C6 alkyl group or a physiologically acceptable salt thereof. Dependent claim 24 recites “wherein R1 of the at least one complexing agent (b) of the general formula (I), is a hydrogen atom, a carboxy-C1-C6 alkyl group or a physiologically acceptable salt thereof”. These limitations appears to define R1 in an identical manner, thus claim 24 does not further limit the recitation of independent claim 21.
Claim 25 depends on independent claim 21. Independent claim 21 recites at least one complexing agent of the general formula (I) wherein R2 and R3 are independently a hydrogen atom, a methyl group, a carboxymethyl group or a physiologically acceptable salt thereof. Dependent claim 25 recites “wherein the R2 and R3 in the at least one complexing agent (b) of the general formula (I) is independently a hydrogen atom, a methyl group, a carboxymethyl group or a physiologically acceptable salt thereof”. These limitations appears to define R2 and R3 in an identical manner as they are identified in claim 21, thus claim 25 does not further limit the recitation of independent claim 21.
The claims are shown below, with solid lines showing the non-limiting limitations of claim 24 to claim 21, and dotted lines showing the non-limiting limitations of claim 25 to claim 21.
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Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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 non-obviousness.
Claims 21 and 23 – 26 are rejected under 35 U.S.C. 103 as being unpatentable over Legrand (US 2005/0039270 A1, of record) in view of Hoeffkes (US 2006/0210499 A1, of record).
Legrand teaches a composition for bleaching keratin fibers that contains a complexing agent (abstract).
Legrand teaches complexing agents that are polycarboxylic acids, such as methylglycine diacetic acid and imminodisuccinic acid, to be included in the amount of 0.001 to 10% by weight (paragraphs 0023, 0035, 0038, 0039, 0041).
Legrand teaches that the composition should also contain at least one oxidizing agent such as hydrogen peroxide or a persulfate (also known as peroxydisulfate), among others (paragraphs 0040, 0041, 0189, Tables 1, 3-6, 8). Notably, potassium persulfate is the same compound as potassium peroxodisulfate and sodium persulfate is the same compound as sodium peroxodisulfate (instant specification page 5 lines 3 – 6).
Legrand teaches the inclusion of oleic, palmitic, or stearic acid salts (paragraph 0129) which are unsaturated organic compounds in the amount of 0.1 to 30% by weight of the composition (paragraph -139). Legrand teaches the inclusion of these unsaturated organic compounds as surfactants (paragraph 0042, 0124, 0129).
In Example 5, Legrand teaches a ready-to-use bleaching mixture which contains composition E in the amount of 80 grams and composition H in the amount of 40 grams (paragraphs 0272). Composition E contains methylglycine diacetic acid in the amount of 0.052 % by mass (0.13% by mass of a 40% solution), and hydrogen peroxide in the amount of 12% by mass (24% by mass of a 50% solution), as well as several unsaturated organic compounds including sodium lauryl sulfate and polyglyceryl oleyl alcohol in the approximate amount of 1.3% by mass (Table IV).
Composition H contains potassium persulfate in the amount of 35.8%, sodium persulfate in the amount of 6%, sodium disilicate in the amount of 15%, sodium metasilicate in the amount of 3%, sodium lauryl sulfate in the amount of 3.5%, and isopropyl palmitate in the amount of 22.5% (Table VI).
The ready-to-use bleaching mixture of Example 5 therefore has methylglycine diacetic acid in the amount of 0.035%, hydrogen peroxide in the amount of 8%, an unsaturated organic compounds of composition E in the amount of 0.86%, potassium persulfate in the amount of 11.9%, sodium persulfate in the amount of 2%, sodium disilicate in the amount of 5%, sodium metasilicate in the amount of 1%, sodium lauryl sulfate in the amount of 1.15%, and isopropyl palmitate in the amount of 7.43%. Based on these amounts the total persulfates in the composition is 13.9% (11.9% + 2%), the total unsaturated organic compounds in the composition is approximately 9.44% (0.86% + 1.15% + 7.43%), and the total alkalizing agent is in the amount of 6% (5% + 1%).
A simplified table showing the relevant ingredients of compositions E and H, as well as the amounts included in the ready-to-use bleaching composition is shown below.
Composition E
Composition H
Ready-to-use bleaching composition
(80g of “E”, 40 g of “H”)
Methylglycine diacetic acid
0.052%
Methylglycine diacetic acid
0.035%
Hydrogen peroxide
12%
Hydrogen peroxide
8%
Potassium persulfate
35.8%
Potassium persulfate
11.9%
Sodium persulfate
6%
Sodium persulfate
2%
Unsaturated organic compounds
1.3%
Unsaturated organic compounds
26%
Unsaturated organic compounds (E + H)
9.44% (0.86% + 8.58%)
Alkalizing agents
18%
Alkalizing agents
6%
Legrand does not teach a lecithin for inclusion in the composition.
Hoeffkes teaches the missing elements of Legrand.
Hoeffkes teaches a composition for lightening keratin-containing fibers (abstract). Hoeffkes teaches the composition may include lecithin which contributes to conditioning the hair (paragraph 0118).
The combination of Legrand and Hoeffkes teachings’ is prima facie obvious as combining prior art elements according to known methods to yield predictable results. A person of ordinary skill in the art would be motivated to include lecithins in the composition of Legrand because Hoeffkes teaches these ingredients are suitable for hair lightening compositions and provide the additional benefit conditioning hair (paragraph 0118). Therefore, a person of ordinary skill in the art would be motivated to combine Legrand and Hoeffkes’ teachings to yield predictable results which is prima facie obvious according to MPEP 2143(I)(a).
The combination of Legrand’s teaching for a composition that contains an oxidizing agent, a complexing agent, and unsaturated organic compounds (abstract, paragraphs 0040, 0041, 0129, Tables 1, 3-6, and 8) with Hoeffkes’ teaching to include lecithin in a hair lightening composition (paragraph 0118) reads on instant claim 21. A person of ordinary skill in the art would be motivated to include lecithin in Legrand’s composition because Hoeffkes teaches that lecithin is suitable for a hair lightening composition and provides the added benefit of conditioning hair (paragraph 0118).
With regards to the amounts of each ingredient recited in claim 21, Legrand’s ready-to-use bleaching mixture of Example 5 includes hydrogen peroxide in the amount of 8%, potassium persulfate in the amount of 11.9%, and sodium persulfate in the amount of 2% (Tables V, VI, paragraph 0272), overlapping on the instantly claimed ranges of 0.1 to 12 wt.% and 2 to about 40 wt.% of hydrogen peroxide and at least one persulfate, as recited in claim 21. Legrand’s taught amount of methylglycine diacetic acid in the range of 0.001 to 10% by weight (paragraphs 0035, 0038, 0039, 0041) overlaps on the instantly claimed range of 0.05 to 10.0 wt. % as recited in instant claim 21. Legrand’s teaching for the inclusion of an unsaturated organic compound such as an oleic, palmitic, or stearic acid salt (paragraph 0129) in the amount of 0.1 to 30% by weight of the composition (paragraph 0139) in combination with Hoeffkes’ teaching to include lecithin (which is an unsaturated organic compound) in a hair lightening composition (paragraph 0118) overlaps on the instantly claimed range of 0.01 to about 10 wt.% lecithin as recited in claim 21. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Legrand’s teaching for complexing agents that are polycarboxylic acids, such as methylglycine diacetic acid and iminodisuccinic acid (paragraphs 0023, 0035, 0038, 0039, 0041) reads on the claimed complexing agent of formula(I) with R1, R2, and R3 groups as described in claims 21, 24, and 25. Iminodisuccinic acid reads on R1, R2, and R3 as recited by claim 26.
Legrand’s composition H contains sodium disilicate and sodium metasilicate (Tables VI, V), reading on the requirement for at least one alkalizing agent as recited in claim 23 of the instant application.
Examiner’s Reply to Attorney Arguments Dated July 22, 2026
Applicant argues that not all complexing agents provide the desired effects, citing HEDP as an example (Remarks page 7). The Examiner notes that the complexing agents taught by Legrand specifically include methylglycine diacetic acid and iminodisuccinic acid (paragraphs 0023, 0035, 0038, 0039, 0041) which read on the claimed complexing agent of formula(I) with R1, R2, and R3 groups as described in claims 21, 24, and 25. Iminodisuccinic acid specifically reads on R1, R2, and R3 as recited by claim 26. As such, the cited prior art teaches complexing agents that read on the amended claims.
Applicant argues that “the particular formulation providing the desired results… are neither disclosed nor taught by Legrand or Hoeffkes, alone or in combination. Therefore one of skill in the art would not be motivated to use the particular oxidizer, complexing agent, and radical inhibitor as presently claimed” (Remarks page 8). In response to applicant's argument that the desired results of improved lightening performance while minimizing hair damage and allowing a reduction of the reaction temperature are neither taught or disclosed by Legrand or Hoeffkes, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP 2143(II). Furthermore, although Legrand and Hoeffkes do not specifically teach that the combination of the claimed ingredients will allow a reduction of reaction temperature (i.e., the rationale of Applicant), according to MPEP 2144(IV) rationale different from Applicant’s is permissible “it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant”. As discussed in the body of the rejection above, a person of ordinary skill in the art would be motivated to include lecithins in the composition of Legrand because Hoeffkes teaches these ingredients are suitable for hair lightening compositions and provide the additional benefit conditioning hair (paragraph 0118), thus the combination of Legrand and Hoeffkes teaches the combination of components (a), (b), and (c) as recited in the instant claims.
Applicant alleges unexpected results, stating “the formulation including (a), (b), and (c), as currently claimed provides the improved lightening performance while simultaneously minimizing hair damage and reducing an undesired temperature during application” (Remarks pages 8 and 9). As an initial matter, the Examiner notes that a proper side-by-side comparison to the closest prior art as required by MPEP 716.02(e) does not appear to have been made. Applicant refers generally to the experiments in the application, which appears to include the mixture of a preparation A with a preparation B, and 10 comparative compositions C (instant specification pages 29 – 32). The table on page 32 appears to suggest that the mixture includes A, B, and comparative composition C. Therefore, it is unclear how the instant invention (mixture of A and B) is compared to comparative compositions C. The ”further formulation examples” of pages 35 – 37 are also not compared to any comparative compositions or the closest prior art.
Furthermore, Applicant has not fully explained the significance of the data in arriving at the conclusion that results are unexpected as required by MPEP 716.01(c)(II) and 716.02(b)(II). As such, it is not clear to the Examiner how Applicant’s argument is supported by the proffered evidence.
Applicant argues that “Legrand and Hoeffkes only broadly suggest components that could be used or may be used in lightening or bleaching hair, whereas the amended claims recite specific 3-component formulations and amounts with demonstrated performance benefits” (Remarks page 9). As discussed above, Legrand specifically teaches oxidizing agents such as hydrogen peroxide or a persulfate (also known as peroxydisulfate), among others in the claimed amounts (paragraphs 0040, 0041, 0189, 0272, Tables 1, 3-6, 8), reading on component (a) of the instant claims; methylglycine diacetic acid and iminodisuccinic acid as complexing agents (paragraphs 0023, 0035, 0038, 0039, 0041) which read on the claimed complexing agent of formula(I) component (b) with R1, R2, and R3 groups as described in claims 21, and 24 – 26.; and Hoeffkes teaches the inclusion of lecithin in a hair lightening composition (paragraph 0118) reading on component (c). A person of ordinary skill in the art would be motivated to include lecithin in Legrand’s composition because Hoeffkes teaches that lecithin is suitable for a hair lightening composition and provides the added benefit of conditioning hair (paragraph 0118).
Double Patenting
The judicially created doctrine for non-statutory double patenting rejections has been described in detail in the previous action.
Double Patenting over U.S. Patent No. 12,569,421
Claims 21 and 23 – 26 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 15 of U.S. Patent No. 12,569,421.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 21 is drawn to an agent for lightening keratin fibers comprising at least one oxidizing agent which includes hydrogen peroxide in the amount of 0.1 to 12 wt% and at least one persulfate in the amount of 2 to 40 wt%; at least one complexing agent of general formula I in the amount of 0.05 to 10 wt%; and at least one radical inhibitor selected from petroselinic acid, palmitoleic acid, oleic acid, elaidic acid, erucic acid, linoleic acid, linolenic acid, elaeostearic acid, arachidonic acid, or nervonic acid in the amount of 0.01 to 10 wt%.
Conflicting claim 1 is drawn to an agent for the oxidatively changing the color of keratin fibers, comprising at least one complexing agent of general formula I, at least one activator, and at least one oxidant.
The instant and conflicting claims differ because conflicting claim 1 recites the inclusion of at least one activator while instant claim 21 recites the inclusion of a radical inhibitor. Although the nomenclature of these claims differ, paragraph 0142 of the conflicting patent recites an activator may be an unsaturated fatty acid such as petroselinic acid, palmitoleic acid, oleic acid, elaidic acid, erucic acid, linoleic acid, linolenic acid, elaeostearic acid, arachidonic acid, or nervonic acid, which overlaps with the “radical inhibitor” of the instant claims.
Claims 23 – 26 of the instant application read on conflicting claims 2 – 15 with overlap in the recited oxidizing compounds, amounts for ingredients in the composition, and a compound of general formula II.
Examiner’s Reply to Attorney Arguments Dated July 22, 2026
Applicant does not present any arguments regarding the double patenting rejections and “defers filing [a terminal disclaimer] until such a time it is known which claims may be allowed” (Remarks page 9). According to MPEP 804(1), a complete response to a non-statutory double patenting rejection is either a showing that the claims subject to the rejection are patentably distinct from the reference claim or the filing of a terminal disclaimer. The Examiner notes that Applicant’s argument is not a showing that the claims are patentably distinct from the reference claims. As such, the non-statutory double patenting rejection of U.S. Patent No. 12,569,421 shown above is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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