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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 20-35, in the reply filed on 01/27/2026 is acknowledged. The traversal is on the ground(s) that “the Examiner merely identifies that Gross teaches a ‘fatty substance’ without addressing whether Gross discloses the claimed amount of ‘at least 25% by weight’ . . .” (p. 2-3). This is not found persuasive because the amounts of fatty substance taught within Gross et al. falls within claim scope. In particular, Gross et al. teaches that the fatty substances can fall within the range of “25% to 85%” (p.5, para. [0114]).
The requirement is still deemed proper and is therefore made FINAL.
Claims 36-39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 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.
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 is/are 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:
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208
344
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.
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 are 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 are 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 are 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 are 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 are 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 are 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.
Conclusion
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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