DETAILED ACTION
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 .
Applicants' arguments, filed 09/08/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Rejections - 35 USC § 103--Previous
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.
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.
Claim(s) 20-35 remain rejected under 35 U.S.C. 103 as being unpatentable over Gross et al., (US 2019/0224088, cited in IDS).
Gross et al. teaches, “The invention provides compositions for lightening or dyeing keratin fibers, in particular human keratin fibers such as hair, comprising a high concentration of fatty substances and a low concentration of oxidizing agent” (p. 1, para. [0002]).
Compositions for dyeing keratin fibers are taught to comprise: “at least 20% weight of fatty substances”; “at least one alkalizing agent”, “at least one surfactant”; “at least two oxidative dye precursors comprising one or more primary intermediates and one or more couplers and”; “at least one oxidizing agent, wherein the concentration of oxidizing agent in the composition is from 1.5% to 2.5% by weight relative to the total weight of the composition” (p. 2, paras. [0028]-[0033]).
The compositions further comprise “direct dyes ranging from 0.001% to 1%” (p. 7, para. [0144]; clm. 24), where suitable direct dyes include “HC Blue 16” (anthraquinone cationic direct dye) (p. 7, para. [0148]).
HC Blue 16 is a cationic dye of formula (I) and (I”), as per claim 21-23, as shown below:
PNG
media_image1.png
208
344
media_image1.png
Greyscale
.
In regard to claim 25, “the concentration of fatty substances free of carboxylic acid groups ranges from 25% to 85%” (p.5, para. [0114]).
Suitable fatty substances “are liquid at room temperature” (p. 5, para. [0112]), as per claim 26; include non-silicone fatty substances, i.e., “non-silicone oils of animal, plant, mineral or synthetic origin” (p. 3, para. [0062]), as per claim 27-28; “liquid petroleum jelly” (p. 3, para. [0067]), as per claim 29.
Suitable oxidizing agents include “hydrogen peroxide” (p. 11, para. [0224]) and may be present “in the composition from 1.5 to 2.5%”, as per claims 30-31.
Suitable alkalizing agents (basifying agents) include “monoethanolamine” (organic amine) (p. 5, para. [0118]), which may be present “from 0.01% to 10%” (p. 6, para. [0126]), as per claim 32-33
Suitable oxidation dye precursors include “bases” (p. 6, par. [0132]) and “couplers” (p. 6, para. [0130]), which may be present “ranging from 0.2 to 12%” (p. 11, para. [0236]), as per claim 34-35.
The prior art is not anticipatory insofar as the anthraquinine cationic direct dye is not required for the practice of the invention; however, it would have been obvious to add it to the compositions of Gross et al. given its plain enumeration in the prior art.
Nonstatutory Obvious-type 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
1) Claims 20-35 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 9,370,477 in view of Lagrange (US2004/0194228). Both applications claim compositions for dyeing or lightening keratin fibers comprising a fatty substance falling withing the claimed range, i.e., greater than 25% and an oxidizing agent. Note: the transitional phrase “comprising” is open ended and inclusive of additional elements. The compositions of the ‘477 patent may additionally comprise “at least one basifying agent” (col. 26, line 62) and “at least one direct dye” (Id. line 34). However, the ‘477 patent does not claim these ingredients or teach wherein the direct dye is anthraquinone.
Lagrange teaches keratin dye compositions comprising direct dyes, wherein the dyes include “anthraquinone” (p. 1, para. [0007]) and “basifying agents” (p. 14, para. [0366]). It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add anthraquinone and basifying agents to the claims of the ‘477 patent since these ingredients are suitable for use in keratin dyeing compositions.
2) Claims 20-35 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9,907,743 in view of Lagrange (US2004/0194228). Both applications claim compositions for dyeing or lightening keratin fibers comprising a fatty substance falling withing the claimed range, i.e., greater than 25%, at least one basifying agent, and an oxidizing agent. Note: the transitional phrase “comprising” is open ended and inclusive of additional elements. The compositions of the ‘743 patent may additionally comprise an anthraquinone direct dye (col. 1, lines 62-67). However, the ‘743 patent does not claim this ingredient.
Lagrange teaches keratin dye compositions comprising direct dyes, wherein the dyes include “anthraquinone” (p. 1, para. [0007]). It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add anthraquinone to the claims of the ‘743 patent since this ingredient is suitable for use in keratin dyeing compositions.
3) Claims 20-35 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,808,409 in view of Lagrange (US2004/0194228). Both applications claim compositions for dyeing or lightening keratin fibers comprising a fatty substance falling withing the claimed range, i.e., greater than 25%, at least one basifying agent, and an oxidizing agent. Note: the transitional phrase “comprising” is open ended and inclusive of additional elements. The compositions of the ‘409 patent may additionally comprise an anthraquinone direct dye (col. 1, lines 49-54). However, the ‘409 patent does not claim this ingredient.
Lagrange teaches keratin dye compositions comprising direct dyes, wherein the dyes include “anthraquinone” (p. 1, para. [0007]). It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add anthraquinone to the claims of the ‘409 patent since this ingredient is suitable for use in keratin dyeing compositions.
4) Claims 20-35 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,179,097 in view of Lagrange (US2004/0194228). Both applications claim compositions for dyeing or lightening keratin fibers comprising a fatty substance falling withing the claimed range, i.e., greater than 25%, at least one basifying agent, and an oxidizing agent. Note: the transitional phrase “comprising” is open ended and inclusive of additional elements. The compositions of the ‘097 patent may additionally comprise a direct dye (col. 6, lines 38-39). However, the ‘097 patent does not claim this ingredient.
Lagrange teaches keratin dye compositions comprising direct dyes, wherein the dyes include “anthraquinone” (p. 1, para. [0007]). It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add anthraquinone to the claims of the ‘097 patent since this ingredient is suitable for use in keratin dyeing compositions.
5) Claims 20-35 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,314,773 in view of Lagrange (US2004/0194228). Both applications claim compositions for dyeing or lightening keratin fibers comprising a fatty substance falling withing the claimed range, i.e., greater than 25%, at least one basifying agent, and an oxidizing agent. Note: the transitional phrase “comprising” is open ended and inclusive of additional elements. The compositions of the ‘773 patent may additionally comprise a direct dye (col. 13, lines 39-45). However, the ‘773 patent does not claim this ingredient.
Lagrange teaches keratin dye compositions comprising direct dyes, wherein the dyes include “anthraquinone” (p. 1, para. [0007]). It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add anthraquinone to the claims of the ‘773 patent since this ingredient is suitable for use in keratin dyeing compositions.
6) Claims 20-35 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 10,130,575 in view of Lagrange (US2004/0194228). Both applications claim compositions for dyeing or lightening keratin fibers comprising a fatty substance falling withing the claimed range, i.e., greater than 25%, at least one basifying agent, and an oxidizing agent. Note: the transitional phrase “comprising” is open ended and inclusive of additional elements. The compositions of the ‘575 patent may additionally comprise a direct dye (col. 13, lines 22-28). However, the ‘575 patent does not claim this ingredient.
Lagrange teaches keratin dye compositions comprising direct dyes, wherein the dyes include “anthraquinone” (p. 1, para. [0007]). It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add anthraquinone to the claims of the ‘575 patent since this ingredient is suitable for use in keratin dyeing compositions.
Response to Arguments
i) Applicant argues the prior art fails to motivate the artisan to select the anthraquinone cationic direct dye, without hindsight (p. 9-10). Applicant postulates, “in view of the size of the genus or direct dyes, and particularly taking into consideration Gross’ preference against including a direct dye, Applicants respectfully submit that, absent hindsight, a skilled person would not have been motivated to include quinone dyes specifically, and from within that genus, the subgenus of anthraquinone dyes specifically, let alone the narrower anthraquinone cationic direct dyes, as claimed” (p. 10).
The Examiner disagrees.
It is well settled that it is obvious for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as the prior art teaches that the selection will result in the disclosed effect. See Merck & Co., v. Biocrafi Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious."); See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that "hydrated zeolites will work" in detergent formulations, even though "the inventors selected the zeolites of the claims from among 'thousands' of compounds").
In this case, the selection of the anthraquinone dye, taught by the prior art as a suitable direct dye for the compositions for dyeing or lightening keratin fibers, would have been obvious given its plain enumeration in the prior art, in theabsence of any unexpected results. The fact that anthraquinone dyes are part of a list of dyes does not make its selection less obvious.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
ii) In regard to the ODP rejections, Applicant postulates, “the rejections are premature as no allowable subject matter has been identified. Applicant’s will consider the filing of a Terminal Disclaimer once allowable subject matter has been identified.
Accordingly, the ODP rejections will be maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Walter E. Webb
/WALTER E WEBB/Primary Examiner, Art Unit 1612
