DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 February 2026, has been entered.
Response to Amendments
Status of Claims
The amendment, filed on 3 February 2026, is acknowledged.
Claims 1-6, 8, and 13 have been amended.
Claims 7, 9-12, and 14-15 have been cancelled.
Claims 1-6, 8, and 13 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
water is the compatible medium of the pretreatment composition;
Dynasylan MTMO (3-mercaptopropyltrimethoxysilane) is the organosilicone small molecule in the pretreatment composition;
polyethylene imine is the amine polymer in the pretreatment composition;
isopropanol is the compatible medium of the film forming composition;
red 122 paste is the pigment of the film forming composition;
Belsil P1101 (a copolymer of crotonic acid, C8-23 isoalkyl vinyl ester, vinyl acetate, and bis(vinyl) dimethicone) is the binder in the film forming composition; and
PERMUTEX XR-13-554 (polycarbodiimide with in-chain carbodiimides and alkyl links) is the linker in the film forming composition.
NOTE: the species election requirement of the surfactant composition used to deep clean keratin fibers is withdrawn in view of Applicant’s amendment to instant claim 1 regarding their Fundamenta technique.
Objections Withdrawn
Objections to Claims
Applicant’s amendment to claim 1 has overcome the objection to the claim set forth in the Office Action mailed on 22 December 2025. Accordingly, the relevant objection is withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 103
The rejections of claims 1-6, 8, and 13 under 35 U.S.C. § 103 are withdrawn and made anew below in view of Applicant’s amendments to the claims.
New Grounds of Objection
Claim Objections
Claim 1 is objected to for the following informalities:
Line 1 of Fundamenta technique step (ii) recites “an aqueous solution a phase transfer tenside”. The word “comprising” seems to have been inadvertently omitted and should be inserted so the resulting phrase reads “an aqueous solution comprising a phase transfer tenside” (bold added for emphasis).
Line 1 of Fundamenta technique step (iv) recites “applying any combination (i), (ii) and (iii)”. The word “of” seems to have been inadvertently omitted and should be inserted so the resulting phrase reads “applying any combination of (i), (ii) and (iii)” (bold added for emphasis).
Appropriate correction is required.
New Grounds of Rejection
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 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Herrlein (WIPO International Publication Number WO 2020/114647 A1, published on 11 June 2020, provided by Applicant in IDS), Landa (U.S. Patent Application Publication No. US 2019/0350823 A1, published on 21 November 2019), and Dayin et al. (Proceedings of 2006 China International Wool Textile Conference 2006, 1, 618., hereafter referred to as Dayin).
Herrlein teaches a composition for coloration of materials, such as keratin fibers and material, comprising a carbodiimide (CDI) link compound, a polycarbodiimide, a polyamine, and optional additional components, and methods of its use (Abstract). Traditional treatments used to color keratin materials are taught to have a number of disadvantages, including irritating the scalp of users, altering hair structure, resisting removal, and producing uneven results, among others (para. [0002-0006]). As a result, Herrlein teaches that there is a clear need for improved compositions and methods “that not only make the hair coloring experience more pleasant, but also is user friendly, provides appropriate color and luster, and leaves the hair manageable, free flowing and capable of moving naturally and does not result in harm to hair protein” (para. [0007]).
To accomplish these goals, Herrlein teaches a method for coloring keratin material that comprises applying a composition, described as a “third component”, to keratin material to produce pretreated keratin material (claim 39). Subsequently, the pretreated keratin material is dried, followed by application of a coloring mixture to form a colored coating on the keratin material (claims 40-43). The coloring mixture is produced from a multicomponent composition which comprises a CDI link compound having at least two groups capable of linking with a CDI group, a compound with at least two CDI groups and inert or reactive termini, pigment microparticles, a small organic molecule with carboxylic acids, including a silicone polymer, and a nucleophilic molecule with at least two functional groups capable of linking with CDI groups (claims 1 and 10-15).
In Table 2, composition 2 contains the organic copolymer of crotonic acid, C8-23 isoalkyl vinyl ester, vinyl acetate, and bis(vinyl) dimethicone sold as Belsil P1101, the medium isopropanol, the linker polycarbodiimide with in-chain carbodiimides and alkyl links sold as PERMUTEX XR-13-554, and pigment paste mixture B, which contains pigment green 36. However, Herrlein teaches compositions with the pigment paste red 122 and that “[p]astes of different pigments can be mixed in order to achieve the desired color shade” (para. [00394]). In Table 3, compositions are taught as “third components” that produce pretreated keratin material, one comprising polyethyleneimine and the other the organosilicone small molecule (3-aminopropyl)triethoxysilane (APTES), and both in the compatible medium of water.
Herrlein does not teach the organosilicone small molecule in the pretreatment composition to be 3-mercaptopropyltrimethoxysilane (MTMO) (i.e., C2-C6 mercaptoalkyl trimethoxysilane) nor deep cleaning keratin fibers with a technique that falls within the genus of Fundamenta techniques. These deficiencies are offset by the teachings of Landa and Dayin.
Landa teaches a method of coating mammalian hair comprising applying an oil-in-water emulsion to the surface of individual hairs which comprises a condensation-curable film-forming amino-silicone pre-polymer, said pre-polymer forming an elastomer following condensation curing, and pigment particles, as well as kits containing the composition (Abstract). Traditional hair coloring is taught to involve penetration of direct dye or oxidation dye deep into hair shafts, generally preceded by bleaching, which can severely damage the hair (para. [0007]). Landa teaches alternatives, such as temporary, semi-permanent, and demi-permanent coloring, but each has associated drawbacks as well, demonstrating a need for long lasting hair coloring that does not damage keratin (para. [0008-0013]).
The invention of Landa is taught to address the above drawbacks by using a pre-polymer, that is a material “that can be cross-linked to form larger macro molecules through cross-linkable groups, also termed reactive groups, by techniques known as curing processes”, which is determined to be analogous to the linking compounds taught by Herrlein (para. [0016]). To color hair, Landa teaches that pigment particles may be dispersed in the oil-in-water emulsion so that, following curing, the pigments are “entrapped” by a 3D-network of the amino-silicone film (para. [0108]). Alternatively, Landa teaches that a film-forming hair masking binder formulation may be applied to hair prior to the oil-in-water emulsion as a pretreatment to produce a polymeric film on the hair (para. [0183]). The hair masking binder formulation may comprise organic or inorganic pigment particles and/or metallic-looking particles and/or flakes, which allows for multiple colors to be applied (para. [0181] and [0184]). The pigment flakes in some embodiments are taught to be coated with at least one coupling agent to aid binding of the amino-silicone elastomer to the film-forming hair masking binder formulation (para. [0190]). The coupling agent is taught to be a thiol coupling agent in some embodiments, an example of which is mercaptopropyltrimethoxysilane (MTMO), which is equivalent to the elected Dynasylan MTMO (para. [0191-0193]).
Dayin teaches a method of modifying the surface of hair using cold gas plasma of ionized oxygen (Abstract and pg. 619, Experimental processes and methods). The use of cold gas plasma to modify hair is taught to be more environmentally friendly than other techniques and to effect primarily the top layers of the hair fibers, leaving “the bulk properties of [hair]…unchanged” (pg. 618, Introduction, para. 1-2). Dayin concluded that cold plasma treatment increased the dye uptake of the hair fibers (pg. 621, Dye uptake and pg. 622, para. 1).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Herrlein, Landa, and Dayin to arrive at the method of instant claims 1-6 and 8 because combining prior art elements according to known methods yields predictable results. In view of the teachings of Landa, an artisan would be motivated to use MTMO in the method of Herrlein as part of the “third component” to produce pretreated keratin fibers because the former reference teaches the organosilicone small molecule to aid coupling between layers of a hair treatment. The method of Herrlein comprises application of three different layers to keratin material and an artisan would desire that the layers adhere to each other, which Landa teaches will be aided by the inclusion of MTMO.
One of ordinary skill in the art would further be motivated to use a cold plasma of ionized oxygen to treat hair prior to coloring hair with the method rendered obvious by Herrlein and Landa in view of the teachings of Dayin because Dayin teaches the method to be environmentally friendly and prepare the hair to uptake more dye as compared to untreated hair. An artisan would recognize these properties as being beneficial for hair that will be colored and further would find it obvious to treat the hair prior to dyeing as part of a pretreatment because the cold plasma makes hair capable of uptaking more dye. As a result, there is a reasonable expectation of success in arriving at the method of claims 1-6 and 8 in view of the teachings of Herrlein, Landa, and Dayin.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Herrlein (WIPO International Publication Number WO 2020/114647 A1, published on 11 June 2020, provided by Applicant in IDS), Landa (U.S. Patent Application Publication No. US 2019/0350823 A1, published on 21 November 2019), and Dayin (Proceedings of 2006 China International Wool Textile Conference 2006, 1, 618.) as applied to claims 1-6 and 8 above, and further in view of Matz (European Patent Application Publication No. EP 1046390 A1, published on 25 October 2000).
Herrlein, Landa, and Dayin teach the above.
Herrlein, Landa, and Dayin do not teach the treatment of keratin fibers with a substantially non-conditioning or non-conditioning surfactant composition prior to the application of a Fundamenta technique. This deficiency is offset by the teachings of Matz.
Matz teaches compositions and methods of cleaning hair to remove metals, minerals, dirt, and sebum (Abstract). Hair is taught to contain depositions of minerals, including metals, which bind strongly to keratin fibers and can cause issues with dyeing hair including uneven and unpredicted color variations (para. [0002-0006]). To remove the above undesirable components from the surface of hair, Matz teaches a method of cleaning the hair comprising application of a composition comprising 0.1-10% w/w of an anionic surfactant and optionally 0.1-10% w/w of an amphoteric surfactant (claims 1, 4, and 14-16). Para. [0145] of the instant spec. discloses that substantially non-conditioning or non-conditioning surfactant compositions comprise 2-30% w/w of an anionic, non-ionic, amphoteric, or zwitterionic surfactant and are free or substantially free of silicones, cetrimonium chloride, polyquaternium versions of cellulose, and guar gum derivatives. Therefore, as evidenced by para. [0145] of the instant spec., the composition taught by Matz is necessarily a substantially non-conditioning or non-conditioning surfactant composition.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Matz with the method rendered obvious by the teachings of Herrlein, Landa, and Dayin to arrive at the method of instant claim 13 because combining prior art elements according to known methods to impart a known benefit yields predictable results. The teachings of Herrlein, Landa, and Dayin rendered obvious a method for coloring hair that comprises cold plasma treatment of hair prior to application of a pretreatment composition comprising water, 3-mercaptopropyltrimethoxysilane, and polyethylene imine and a film forming composition comprising, isopropanol, red 122 paste, Belsil P1101, and a polycarbodiimide with in-chain carbodiimides and alkyl links.
In view of the teachings of Matz, one of ordinary skill in the art would be motivated to treat hair with the composition taught by Matz prior to performing the method rendered obvious above because Matz teaches their method to remove components from the hair that would cause uneven and unpredicted color variations in hair. The ordinary artisan would recognize that these variations are undesirable in a method for coloring hair and would therefore desire a process that removes these potential issues. As a result, there is a reasonable expectation of success in arriving at the method of claim 13 in view of the teachings of Herrlein, Landa, and Dayin and further in view of the teachings of Matz.
Response to Arguments
The Applicant’s arguments, filed on 6 October 2025, have been fully considered but are not persuasive.
In response to applicant's arguments against the references 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 para. 3 of pg. 8, Applicant argues that the Herrlein and Landa references do not teach application of composition comprising a silane monomer “ALONE as a prior step before adding Applicant’s film forming composition to keratin fibers”. This is interpreted as an argument that the Herrlein and Landa references do not teach sequential addition of the silane monomer as a pretreatment step followed by addition of the film forming composition. The Examiner disagrees and refers the Applicant to claims 39 and 41 of Herrlein, which respectively recite “applying first to the keratin material the third component of claim 36 to form pretreated keratin material” and “further comprising applying the in situ coloring mixture of claim 38 to the pretreated keratin material”, wherein the coloring mixture comprises the film forming components (vide supra) (bold added for emphasis). This is interpreted as equivalent to sequential addition of a pretreatment composition followed by a film forming composition and Applicant’s argument is not found persuasive.
If the argument is directed to the pretreatment composition comprising components other than an organosilicone small molecule, this is not found persuasive because claim 1 currently recites that the pretreatment composition of the instant invention comprises the succeeding components. Guidelines on the use and interpretation of transitional phrases is provided in MPEP § 2111.03. Regarding the phrase “comprising” or, in the instant case “comprises”, the MPEP states that the term “is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’” and “is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004)”. Because of the use of the transitional phrase “comprises” in claim 1 (i.e., “the pretreatment composition comprises an aqueous medium and an organosilicone small molecule”), the pretreatment composition is open-ended and does not exclude the inclusion of additional elements that are not MTMO.
In the para. that spans the bottom of pg. 8 and top of pg. 9, Applicant argues that Herrlein reference does not teach the organosilicon compound of the instant application or a silane comprising a mercapto group and that the Landa reference teaches coupling agents that “are nothing like Herrlein’s group of base compounds” such that “the Landa group does not by themselves suggest Herrlein’s base compounds to a skilled practitioner”. Regarding the arguments directed to the Herrlein reference, this was acknowledged in the Office Action mailed on 22 December 2025, and is not a persuasive argument. Regarding the argument directed to the Landa reference, the rejection above and in the previous Office Action did not assert that the Landa reference taught the compounds of the Herrlein reference. The rejections argued that the use of MTMO in the method of Herrlein would be prima facie obvious to a person of ordinary skill in the art in view of the teachings of Landa. This combination was argued to be motivated by the teachings of Landa that MTMO would aid coupling between layers of a hair treatment, which is part of the method of Herrlein. As a result, Applicant’s arguments are found to be unpersuasive.
From para. 3 of pg. 9 to para. 1 of pg. 11, Applicant argues that the Landa reference does not add their coupling agent prior to their reactive composition. The Landa reference was not argued to teach this, but instead was argued to motivate the inclusion of MTMO in the pretreatment composition of the method of Herrlein (vide supra). Applicant’s argument is therefore found to be unpersuasive.
From para. 2 of pg. 11 to para. 4 of pg. 13, Applicant presents two scenarios to support an argument that “a skilled practitioner would not make the Patent Office combination of Herrlein and Landa to substitute Landa’s [MTMO] for Herrlein’s base compound”. The rejection above does not argue that any compound in the method of Herrlein should be substituted with MTMO but that in view of the teachings of Landa MTMO would be obvious to use in the “third component” of the method of Herrlein. In addition, the two scenarios presented by the Applicant are not evidence and “argument does not replace evidence where evidence is necessary”. See MPEP § 716.01(c) and § 2145.I.
Finally, from the penultimate para. of pg. 13 to para. 3 of pg. 16, Applicant argues against the Dähne reference teaching the claimed limitations regarding the phase transfer tenside of Applicant’s Fundamenta technique. In view of Applicant’s amendments to instant claim 1, the grounds of rejection were made anew (vide supra) and do not rely on the teachings of Dähne, therefore this argument is considered moot.
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 1-6, 8, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 34-35 of copending Application No. 18/574,989 in view of Herrlein (WIPO International Publication Number WO 2020/114647 A1, published on 11 June 2020, provided by Applicant in IDS) and Landa (U.S. Patent Application Publication No. US 2019/0350823 A1, published on 21 November 2019).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. 18/574,989 recites a method for producing a color coating on keratin fibers comprising activating, pretreatment, and binder steps which, in turn, apply to the hair a cleaning process that is a Praeparatur and Fundamenta procedure, a pretreatment composition, and a film forming composition (claim 1). The Fundamenta procedure is recited as comprising cold plasma treatment of keratin fibers, the pretreatment composition is recited as comprising a medium and an alkoxysilane compound and forms pre-coated keratin fibers, and the film forming composition is recited as comprising a medium, a binder polymer, and at least one colorant (claim 1). Application ‘989 further recites in claim 1 that the Praeparatur technique comprises application of a non-conditioning surfactant composition to the hair.
Claim 34 of ‘989 recites a limitation that the binder polymer of the film forming composition comprises an organic, silicone, or organosilicone polymer and a small molecule, both comprising carboxylic acid and carbodiimide functional groups. Claim 35 further limits the polymer of claim 34 to comprise components of Formula I, Formula II, Formula X, and/or Formula XI.
Copending Application No. 18/574,989 does not recite the specific species water, MTMO, isopropanol, red 122 paste, Belsil P1101, PERMUTEX XR-13-554, and polyethylene imine. These deficiencies are offset by the teachings of Herrlein and Landa.
Herrlein and Landa have been described above.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Herrlein and Landa with the method recited in claims 1 and 34-35 of copending Application No. 18/574,989 to arrive at the method of instant claims 1-6, 8, and 13 because combining prior art elements according to known methods yields predictable results. Application ‘989 recites the genera of compounds used in the pretreatment and film forming compositions of the instant application, but does not recite specific species. Herrlein teaches specific examples, including composition 2 in Table 2, that comprises species that fall within the broad genera, which would motivate an artisan to try the composition. In view of the teachings of Landa, an artisan would be motivated to use MTMO in the method above because the former reference teaches the organosilicone small molecule to aid coupling between layers of a hair treatment. The methods of Application ‘989 and Herrlein comprise application of different layers to keratin material and an artisan would desire that the layers adhere to each other, which Landa teaches will be aided by the inclusion of MTMO. As a result, there is a reasonable expectation of success in arriving at the method of claims 1-6, 8, and 13 in view of claims 1, 13, and 34-35 of Application ‘989 and the teachings of Herrlein, Landa, and Dähne.
Claims 1-6, 8, and 13 are directed to an invention not patentably distinct from claim 1 and 34-35 of commonly assigned Application No. 18/574,989 in view of Herrlein and Landa. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned copending Application No. 18/574,989, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Arguments
Applicant’s arguments with respect to the provisional nonstatutory double patenting (NSDP) rejection in the remarks filed on 3 February 2026, have been fully considered but are not found to be persuasive. The Applicant states that they have filed a Terminal Disclaimer which obviates the NSDP rejection maintained in the Office Action mailed on 22 December 2025. However, the Terminal Disclaimer filed on 3 February 2026, has not been approved by the Office due to the filing date for copending Application No. 18/574,989 on the Terminal Disclaimer form PTO/AIA /25 (04-13) being incorrect. A corrected PTO/AIA /25 form has not been received, therefore the provisional NSDP rejection is maintained.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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