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 .
Status
Applicant’s response dated 25 February 2026 to the previous Office action dated 25 August 2025 is acknowledged. Pursuant to amendments therein, claims 19-38 are pending in the application.
A new rejection under 35 U.S.C. 112 is made herein in view of applicant’s claim amendments.
The rejections under 35 U.S.C. 103 made in the previous Office action are withdrawn in view of applicant’s claim amendments, but a new (modified) rejection under 35 U.S.C. 103 is made herein in view of applicant’s claim amendments.
Election/Restrictions
Claim 37 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07 July 2025.
Claims 19-36 and 38 are under current consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 26 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 26 fails to include all the limitations of claim 19 upon which it depends in that claim 19 limits the amount of water to an upper limit of up to 99% by weight whereas claim 26 includes no such upper limit on the water concentration range.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 19-25, 27-36, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoffkes et al. (WO 2007/006418 A1; published 18 January 2007; of record; citations herein to English machine translation made 21 August 2025; of record).
Hoffkes et al. discloses a composition for dyeing and/or whitening keratinic fibers comprising 0.01-85 wt% of at least one ionic liquid and 0-5 wt% water (claim 1) wherein the ionic liquid can be 1-ethyl-3-methyl-imidazolium tosylate (i.e., instant compound 4b, a salt/compound of formula (I)) (claim 7) wherein the composition can further comprise oxidizing agents such as hydrogen peroxide (page 109 paragraph 6) and persulfates or perborates (i.e., peroxygenated salts) (page 95 paragraph 1) wherein peroxo oxidizing agent is preferably present in the composition in amounts of 5-50 wt% (page 95 paragraph 3) wherein the composition can further comprise an alkalizing (i.e., alkaline) agent to adjust the pH (page 95 paragraph 4) in amounts of 5-30 wt% (page 95 paragraph 5) wherein the composition can further comprise a direct dye (page 102 last paragraph) in amounts of 0.01-25 wt% such as a particularly preferred cationic triphenylmethane dye such as Basic Violet 14 (i.e., encompassed by instant formula (IIa1)) (page 103 paragraphs 2-5) wherein the composition can have a pH of about 4-7 or 7-10 (page 110 paragraph 1) wherein the oxidizing agents can be separately packaged from the other components in a multi-component system (page 110 paragraphs 2-3, 5-6) in a kit (page 111 paragraph 1) wherein the composition preferably contains water in amounts of less than 5% by weight (page 3 paragraph 1).
Although Hoffkes et al. does not disclose a particular example combining all elements as discussed above, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Hoffkes et al. as discussed above and to combine all elements as discussed above, with a reasonable expectation of success.
Although Hoffkes et al. discloses that the composition has 0-5 wt% water, such concentration is so close to the claimed “greater than 5%” that a prima facie case of obviousness exists per MPEP 2144.05(I)(“a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”; “In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%)”). Furthermore, although Hoffkes et al. discloses that the composition preferably contains water in amounts of less than 5% by weight as noted above, such is merely a preference, and preferred embodiments do not constitute a teaching away from nonpreferred embodiments per MPEP 2123(II).
Regarding claim 21, the oxidizing agent amount of 5-50 wt% disclosed by Hoffkes et al. as discussed above overlaps the claimed amount of 0.1-40 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 23, the oxidizing agent amount of 5-50 wt% disclosed by Hoffkes et al. as discussed above overlaps the claimed amount of 0.1-50 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 25, the alkalizing (i.e., alkaline) agent amount of 5-30 wt% disclosed by Hoffkes et al. as discussed above overlaps the claimed amount of 0.1-40 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 33, the 0.01-85 wt% of at least one ionic liquid wherein the ionic liquid can be 1-ethyl-3-methyl-imidazolium tosylate (i.e., instant compound 4b, a salt of formula (A), a compound of formula (I)) disclosed by Hoffkes et al. as discussed above overlaps the claimed amount of 5-60 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 35, the direct dye in amounts of 0.01-25 wt% such as a particularly preferred cationic triphenylmethane dye such as Basic Violet 14 (i.e., encompassed by instant formula (IIa1)) disclosed by Hoffkes et al. as discussed above overlaps the claimed amount of 0.05-5 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 36, the pH of about 4-7 or 7-10 disclosed by Hoffkes et al. as discussed above overlaps the claimed pH of 5-11, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Response to Arguments
Applicant's arguments filed 25 February 2026 as they relate to the above rejections have been fully considered but they are not persuasive.
Applicant argues that Hoffkes et al. does not teach the heterocyclic salts of formula (I) (remarks page 19). In response, Hoffkes et al. teaches 1-ethyl-3-methyl-imidazolium tosylate, which is instant compound 4b as noted in instant claim 30, which is a salt/compound of formula (I).
Applicant argues that Hoffkes et al. teaches away from compositions having the claimed water content (remarks pages 19-20). In response, although Hoffkes et al. discloses that the composition has 0-5 wt% water, such concentration is so close to the claimed “greater than 5%” that a prima facie case of obviousness exists per MPEP 2144.05(I)(“a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”; “In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%)”). Furthermore, although Hoffkes et al. discloses that the composition preferably contains water in amounts of less than 5% by weight as noted above, such is merely a preference, and preferred embodiments do not constitute a teaching away from nonpreferred embodiments per MPEP 2123(II).
Applicant argues that the claimed compositions provide unexpectedly superior results per instant Examples 1-4 discussing inventive compositions 3, 6, 9, and 12 (remarks pages 20-23). In response, the asserted unexpected results are not commensurate in scope with the claimed subject matter in that the claims are not limited to the inventive compositions including all constituents and concentrations thereof. Applicant is reminded that the burden is on applicant to establish that results are in fact unexpected and unobvious and of both statistical and practical significance, per MPEP 716.02(b). Such evidence of unexpected results must be commensurate in scope with the claimed invention per MPEP 716.02(d), and must compare the claimed subject matter with the closest prior art (or closer) per MPEP 716.02(e).
Conclusion
No claims are 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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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