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 .
DETAILED ACTION
The Applicant’s reply filed on 1/26/26 is acknowledged. Claims 1, 6-8, and 11-26 are pending. Claims 21-26 are new. Claims 1, 6-8, 15, 17, 18, and 20- 26 are withdrawn as not being directed to the elections. Claims 11, 12, and 14 have been amended. Claims 11-14, 16, and 19 are under consideration.
Objections Withdrawn
The objections of Claims 11, 12, and 14 withdrawn in view of the amended claims.
Rejections Withdrawn
The rejection of Claims 11-14, 16 and 19 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite are withdrawn in view of the amended claims.
The rejection of Claims 11-14, 16, and 19 under 35 U.S.C. 103 as being unpatentable over Brun et al. (US 2010/0083446) in view of Reisacher et al. (US 2019/0031904) is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 11-14, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Brun et al. (US 2010/0083446; cited in IDS) in view of Nakamura et al. (US 4,698,099).
Brun et al. teach a cosmetic composition for treating hair, comprising, in a cosmetically acceptable medium, at least one organosilicon compound chosen from silanes and at least one pigment (e.g. abstract; Claim 1). Brun et al. teach the composition comprises:
3-aminopropyltriethoxysilane (i.e. elected species of C1-C6 alkoxysilane) (e.g. paragraph 0063; Examples); and
Pigments, including CI 12490, CI 740160 and CI 11680 (e.g. paragraph 0281).
Brun et al. teach that the composition may comprise a pigment dispersant or surface treatment, including lecithin (e.g. paragraphs 0297 and 0300), but do not teach that the dispersant is a phosphoric ester. This is made up for by the teachings of Nakamura et al.
Nakamura et al. teach a new pigment composition composed of a pigment and a dispersant wherein the dispersant is a phosphoric ester compound (e.g. abstract). Nakamura et al. teach that there has been a demand for a dispersant or flushing agent which is stabler and better than lecithin (e.g. column 1, lines 19-23). Nakamura et al. teach that the phosphoric ester is obtained by esterifying an alcohol, which may be octyl, decyl, dodecyl, tridecyl, hexadecyl, octadecyl, or octadecenyl alcohol (i.e. C8-C18 alkyl ester). Nakamura et al. teach that the phosphoric ester compound containing a polyester chain which is used in the present invention is not in danger of deterioration and putrefaction due to oxidation and rancidity, unlike lecithin as a natural phospholipid, which has been conventionally used as a pigment dispersant. It has good stability and produces an outstanding effect in the surface modification of pigments and the dispersion of pigments in a medium (e.g. column 5, lines 55-63). Nakamura et al. teach that the dispersant is 1-300 wt% of the pigment weight, which overlaps with the claimed range (e.g. column 4, line 62-column 5, line 6).
Regarding Claims 11-13, and 19, it would have been obvious to one of ordinary skill in the art at the time of filing to include the pigment dispersion comprising phosphoric ester of Nakamura et al. in the cosmetic composition of Brun et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of Brun and Nakamura are directed to compositions comprising pigments and dispersants, and one of ordinary skill would have been motivated in order to provide the benefits of good stability and outstanding effect in the surface modification of pigments and the dispersion of pigments in a medium, as taught by Nakamura et al.
Regarding Claims 14 and 16, Brun et al. teach that the ingredients, including the silane and the pigment, can be added in any order (e.g. Claim 14. Paragraph 0045), which indicates that the compounds are separately packaged (i.e. as in a kit). One of ordinary skill in the art would have included the phosphoric ester of Nakamura et al. with the pigments as they are taught as modifying components for the pigment dispersion.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 11-14, 16 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-14 of U.S. Patent No. 12,220,470.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant (Claim 11) and patented claim (Claim 11) recite, a cosmetic agent comprising: organic C1-C6 alkoxysilanes and/or condensation products thereof; and a pigment suspension, wherein the pigment suspension comprises a coloring compound a) selected from the group of pigments and a phosphoric ester b).
Instant dependent claims 12-14 are met by patented claims 12-14.
Instant dependent claim 16 is met by patented claim 14.
Instant dependent claim 19 is met by patented claim 11.
Claims 11-14, 16 and 19 are directed to an invention not patentably distinct from claims 11-14 of commonly assigned 12,220,470. 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 12,220,470, 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.
Claims 11-14, 16 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 11 of U.S. Patent No. 12,048,756 in view of Nakamura et al. (US 4,698,099).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant (Claims 11 and 14) and patented claim (Claims 10 and 11) recite, a cosmetic agent comprising: at least one organic C1-C6 alkoxysilanes; and a pigment suspension, wherein the pigment suspension comprises a coloring compound a) selected from the group of pigments. Patent ‘756 does not teach the inclusion of a phosphoric ester b). This is made up for by the teachings of Nakamura et al.
Nakamura et al. teach a new pigment composition composed of a pigment and a dispersant wherein the dispersant is a phosphoric ester compound (e.g. abstract). Nakamura et al. teach that there has been a demand for a dispersant or flushing agent which is stabler and better than lecithin (e.g. column 1, lines 19-23). Nakamura et al. teach that the phosphoric ester is obtained by esterifying an alcohol, which may be octyl, decyl, dodecyl, tridecyl, hexadecyl, octadecyl, or octadecenyl alcohol (i.e. C8-C18 alkyl ester). Nakamura et al. teach that the phosphoric ester compound containing a polyester chain which is used in the present invention is not in danger of deterioration and putrefaction due to oxidation and rancidity, unlike lecithin as a natural phospholipid, which has been conventionally used as a pigment dispersant. It has good stability and produces an outstanding effect in the surface modification of pigments and the dispersion of pigments in a medium (e.g. column 5, lines 55-63). Nakamura et al. teach that the dispersant is 1-300 wt% of the pigment weight, which overlaps with the claimed range (e.g. column 4, line 62-column 5, line 6).
Regarding Claims 11, 14, 16 and 19, it would have been obvious to one of ordinary skill in the art at the time of filing to include the pigment dispersion comprising phosphoric ester of Nakamura et al. in the cosmetic composition of ‘756. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of ‘756 and Nakamura are directed to compositions comprising pigments and dispersions, and one of ordinary skill would have been motivated in order to provide the benefits of outstanding performance, high color strength and easy dispersibility in application media, as disclosed by Nakamura et al.
Instant dependent claims 12 and 13 are met by patented claims 8, 10, 11.
Claims 11-14, 16 and 19 are directed to an invention not patentably distinct from claims 10 and 11 of commonly assigned 12,048,756. 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 12,048,756, 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.
Claims 11-14, 16 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/002,041 in view of Nakamura et al. (US 4,698,099).
This is a provisional nonstatutory double patenting rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and patented claim recite, a cosmetic agent comprising: at least one organic C1-C6 alkoxysilanes; and a pigment suspension, wherein the pigment suspension comprises a coloring compound a) selected from the group of pigments. Copending ‘041 does not teach the inclusion of a phosphoric ester b). This is made up for by the teachings of Nakamura et al.
Nakamura et al. teach a new pigment composition composed of a pigment and a dispersant wherein the dispersant is a phosphoric ester compound (e.g. abstract). Nakamura et al. teach that there has been a demand for a dispersant or flushing agent which is stabler and better than lecithin (e.g. column 1, lines 19-23). Nakamura et al. teach that the phosphoric ester is obtained by esterifying an alcohol, which may be octyl, decyl, dodecyl, tridecyl, hexadecyl, octadecyl, or octadecenyl alcohol (i.e. C8-C18 alkyl ester). Nakamura et al. teach that the phosphoric ester compound containing a polyester chain which is used in the present invention is not in danger of deterioration and putrefaction due to oxidation and rancidity, unlike lecithin as a natural phospholipid, which has been conventionally used as a pigment dispersant. It has good stability and produces an outstanding effect in the surface modification of pigments and the dispersion of pigments in a medium (e.g. column 5, lines 55-63). Nakamura et al. teach that the dispersant is 1-300 wt% of the pigment weight, which overlaps with the claimed range (e.g. column 4, line 62-column 5, line 6).
Regarding Claims 11-14, 16 and 19, it would have been obvious to one of ordinary skill in the art at the time of filing to include the pigment dispersion comprising phosphoric ester of Nakamura et al. in the cosmetic composition of Copending ‘041. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of Copending ‘041 and Nakamura are directed to compositions comprising pigments and dispersions, and one of ordinary skill would have been motivated in order to provide the benefits of outstanding performance, high color strength and easy dispersibility in application media, as disclosed by Nakamura et al.
Claims 11-14, 16 and 19 are directed to an invention not patentably distinct from claims 1-20 of commonly assigned 18/002,041. 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 18/002,041, 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.
Response to Arguments
Applicant’s arguments with respect to claims 11-14, 16 and 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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