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 .
Claims 1-15 are pending. Claims 1-11 have been amended. Applicant's election with traverse of claims 1-11 in the reply filed on October 7, 2025 is acknowledged. The traversal is on the grounds that Group ! and V are intertwined methods. This is not found persuasive because the examiner argues Group V requires an additional step not present in Invention I and Invention I can be performed without the additional step in Invention V and searching additional method steps requires a divergent search. The requirement is still deemed proper and is therefore made FINAL. Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Objections
Claim 4 is objected to because of the following informalities: Claim 4 recites “SiMe2O units (dimethylsiloxane units)” which is redundant. Only SiMe2O units or dimethylsiloxane units needs to be listed Appropriate correction is required.
Claim 7 is objected to because of the following informalities: Claim 7 recites “abou1” in line 4 which should be “about 1”.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “deep”, “compatible” “small” and “associated” in claim 1 are relative terms which renders the claim indefinite. The terms “deep”, “compatible” “small” and “associated” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant has not defined these terms in the claims or specification as to define their scope. Dependent claims 5 and 11 also recite “small”. Dependent claims 8,10 and 11 also recite “deep”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “linear or branched”, and the claim also recites “preferably linear” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-11 are also rejected for being dependent upon claim 1 and inheriting the same deficiency.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “about 3 to about 200,000”, and the claim also recites “preferably up to about 150,000, more preferably up to about 100,000, most preferably up to about 50,000 and especially most preferably up to about 100, with exemplary sums of 10-50 and 10-20”” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Additionally the “up to” language includes any value from 0 to the upper limit. “Up to” should be replaced with the lower number 3 or another lower limit within the range. Claim 2 also recites “M-type” in the third from last paragraph, “type” is unclear as to what the scope is.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 4 recites “polydimethylsiloxane-type” in the next to last paragraph, the term “type” is unclear as to what the scope is.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 6 lists several variables and then recites they “may be” a particular number or species, for example r may be methyl or ethyl. The term “may be” is indefinite since it makes selection of the species optional. The “may be” should be changed to “is selected from” to clarify one or more of the species must be selected.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7, regarding the binder, recites the broad recitation “about 0.5KDa to about 10 KDa”, and the claim also recites “preferably about 0.5KDa to about 5KDa, more preferably about 1 KDa to about 5KDa, most preferably about 1 KDa to about 3 KDa”. Claim 7 also recites, regarding the linker, the broad recitation “about 5KDa to about 50 KDa”, and the claim also recites “preferably about 5KDa to about 30KDa, more preferably about 5 KDa to about 20 KDa, most preferably about 8 KDa to about 20 KDa”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “substantially” in claim 8 is a relative terms which renders the claim indefinite. The terms “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant has not defined these terms in the claims or specification as to define their scope.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 9 recites the limitation "the Praeparatur technique" in line 2. There is insufficient antecedent basis for this limitation in the claim since claim 1 from which claim 9 depends does not recite a Praeparatur technique.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 10 recites “F layer” and the examiner is unclear as to what is the “F layer”. Claim 10 also recites the limitation "the Fudamenta technique" in line 2. There is insufficient antecedent basis for this limitation in the claim since claim 1 from which claim 10 depends does not recite a Fundamenta technique.
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.
Claims 1,4,5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Brun (US 7,806,941) in view of Luukas (US 2007/0189987) and Zhao (US 2017/0165165)..
Brun teaches providing hair with optical effects by applying a pretreating composition comprising a cosmetically acceptable (compatible) medium and at least one organosilicone small molecule with at least one pendant and/or terminal alkoxylsilyl or organoamine group and a film forming composition comprising a cosmetically acceptable (compatible) medium with one or more microparticle pigments and/or color bodies with a dispersant (column 4, lines 33- column 5; column 24, lines 39-50; column 25). Brun teaches the film forming composition comprises silicone polymers having organoamine groups, which meets the claimed limitation of the linker of claims 1 and 4, (column 12, lines 35-56) and polydimethysiloxanes with polyalkyl(meth) acrylate type grafts (column 16, lines 1-3). Brun teaches the cosmetically acceptable medium for both the pretreatment and the film forming composition may be alcohol such as ethanol (C2 alkanol) and water is optional so it can be without water (0%; column 35, lines 4-21).
Brun does not teach deep cleaning or priming the keratin fibers or specify alkenoyloxy groups.
Luukas teaches the claimed compounds having pendant and/or terminal alpha, beta unsaturated alkenoyloxy groups and a binder comprising polymer having pendant and/or terminal organoamine or alkoxysilyl groups as effective components as polymers in hair colorants with optical effect properties when combined in a dispersion with pigment particles and film forming agents (paragraphs 0010, 0122, 0130, 0156-0159, 0163,0165, 0167,0168). Luukas teaches methacryloxypropyltris(trimethylsiloxy) silane which meets the claimed limitation of the binder with a terminal alpha,beta unsaturated alkenoyloxy group (paragraph 0130).
Zhao teaches that it is beneficial to deep clean hair with a composition comprising 5-40% detersive surfactants, particularly in example 11 of Table 3 a cleansing shampoo comprising 30% anionic sulfate surfactants, and pH adjusters (meets the claimed limitation of Preparatur technique, the shampoo is non-conditioning as no conditioning agents are present; paragraphs 0003-0009, and Table 3, example 11).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Brun by incorporating the methacryloxypropyltris(trimethylsiloxy) silane compounds into the film forming compositions as binders as Luukas teaches the claimed compounds having pendant and/or terminal alpha, beta unsaturated alkenoyloxy groups and a binder comprising polymer having pendant and/or terminal organoamine or alkoxysilyl groups as effective components as polymers in hair colorants with optical effect properties when combined in a dispersion with pigment particles and film forming agents Combining the claimed binders of Luukas with the compositions of Brun would be obvious to effectively create a coloring composition for applying optical effects to hair.
It would have been further obvious to one of ordinary skill in the art at the time the invention was made to modify the methods Zhao teach non-conditioning surfactant compositions are effective for deep cleaning hair and hair is frequently shampooed before the application of hair colorants.
Regarding the Fundamenta technique of claims 8 and 10, this is an optional step in claim 8 and if claim 10 were written in independent form it would still be optional.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,2,4-6 and 10-12 of copending Application No. 17/362414. Although the claims at issue are not identical, they are not patentably distinct from each other because they encompass the same deep cleaning, pretreatment and film forming steps with the same compounds.
Claims 1-8 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,13, and 33 of copending Application No. 18/574989. Although the claims at issue are not identical, they are not patentably distinct from each other because they encompass the same deep cleaning, pretreatment and film forming steps with the same compounds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2,3 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The claims would be allowable after correction of any 112 issues because the prior art do not teach or fairly suggest the claimed methods incorporating the compounds of Formulas I, IV and III.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761