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 11/13/25 is acknowledged. Claims 1, 4-7, 9, 11-17, 20, 22, 24-36 are pending. Claims 1, 7, 9, 11, 27-30 and 34 have been amended.
Amended claims 27-30 are amended to be directed to the composition of claim 1 and not the withdrawn method. Accordingly, claims 27-30 are rejoined.
Claims 16, 17, 20, 22, 24-26, 31-33, 35 and 36 are withdrawn.
Claims 1, 4-7, 9, 11-15, 27-30 and 34 are under consideration.
Objections Withdrawn
The objection to the Abstract is withdrawn in view of the amendments.
Rejections Withdrawn
The rejection of Claims 2 and 8-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13 and 28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 13 recites that the polymer and crosslinker are maintained in a first and second compartment. However, Claim 1 appears to require that the polymer and crosslinker are already combined and reacted. The language of claim 13 does not appear to be consistent with the requirement of claim 1.
Claim 28 recites " at a concentration of from about 2 wt% to about 30 wt% preferably from about 10 wt% to about 25 wt%”. A preferred embodiment may be set forth in another dependent claim; when stated in a single claim, preferences lead to confusion over the intended scope of the claim. Since it is not clear whether the claimed preferred embodiment is a claim limitation, the metes and bounds of the claim cannot be determined and the claim is indefinite. For the purposes of examination, it will be understood that the preferred embodiments are optional.
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 1, 4-7, 9, 11-15, 27-30 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Brun et al. (US 2005/0268405) in view of Bowker (WO 2018/234530; cited in IDS).
Brun et al. teach compositions for dyeing keratin fibers comprising at least one pigment, at least one polymer PA bearing at least one functional group A, and at least one polymer PB bearing at least one functional group B, wherein the functional groups A and B can form covalent bonds together (e.g. abstract).
Brun et al. teach the composition comprising:
an aqueous medium (e.g. paragraphs 0029, 0176);
at least one bio-based polymer (i.e. polysaccharides) (e.g. paragraph 0058; Claim 6);
at least one crosslinker comprising amine-functional groups (i.e. polyethyleneimine) (e.g. paragraph 0070; Claim 8);
and one or more pigments dispersed in the aqueous medium (e.g. paragraph 0002; Claim 1).
Brun et al. do not teach that the bio-based polymer comprises (meth)acryloyl- functional groups. This is made up for by the teachings of Bowker.
Bowker teaches a composition comprising an aqueous medium (e.g. page 8, lines 5-10), at least one bio-based polymer comprising olefinoyl- functional groups wherein the at least one bio-based polymer is selected from proteins and polysaccharides (i.e. methacrylated gelatin), at least one crosslinker (i.e. Irgacure 2959), and one or more pigments (e.g. Example 10).
Regarding Claims 1, 4-7, 9, 11, 15, and 34, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the compositions of Brun and Bowker. 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 the compositions are useful as hair dye compositions. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In addition, one of ordinary skill in the art would have been motivated to obtain the benefits of excellent surface reflection, intense colours, contrast between different colours and responsive colour change and adherence to the substrate, as taught by Bowker (e.g. page 2, lines 11-15). In combining the compositions comprising the claimed ingredients the aza-Michael reaction would necessarily occur. The instant Specification examples only require the mixture of components for reaction to occur. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 12, Brun et al. teach that the one or more pigments including Yellow CI 21108 (e.g. paragraph 0113).
Regarding Claims 13 and 34, Brun and Bowker are silent as to the container(s). However, Brun et al. describe that the polymers may be applied separately (e.g. paragraph 0170 and 0173). In this case the bio-based polymer and crosslinker (i.e. polymers A and B) would necessarily be maintained in a first and second compartment.
Regarding Claim 14, Brun et al. further teach the inclusion of a thickener, preservative, a fragrance, and/or dyes (e.g. paragraph 0148).
Regarding Claims 27-30, the limitations are directed to the hair fibers to which the composition of claim 1 will be applied and do not further limit the composition itself. The claims and election are directed to a composition for coloring hair. The composition for coloring hair does not depend on the state of the hair intended to be treated. Accordingly, the claims are met by Brun and Bowker as with claim 1.
Response to Arguments
Applicant's arguments filed 11/13/25 have been fully considered but they are not persuasive.
Argument related to the restriction requirement are unpersuasive and the requirement is still deemed proper and FINAL. Claims 27-30 have been amended to recite a composition and depend from claim 1 and have been rejoined.
Applicant further argues that Bowker uses Irgacure 2959 as a photoinitiator with these olefinoyl groups (methacrylate groups) and UV light to cause these olefinoyl groups to form -C02-CH2-CH2-CH2-CH2-02C- linkages between Bowkers methacrylated gelatin molecules. Irgacure is not incorporated into Bowker's example 10 cured gelatin product and no other compound is covalently bonded to Bowker's cured methacrylated gelatin. This olefinic irradiation is not a chemical addition reaction such as the aza-Michael addition reaction as Applicant's amended claims recite.
This is not found persuasive. As described supra, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the compositions of Brun and Bowker. One of ordinary skill in the art would have predicted success as both of the compositions are useful as hair dye compositions. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In addition, one of ordinary skill in the art would have been motivated to obtain the benefits of excellent surface reflection, intense colours, contrast between different colours and responsive colour change and adherence to the substrate, as taught by Bowker (e.g. page 2, lines 11-15). In combining the compositions comprising the claimed ingredients the aza-Michael reaction would necessarily occur. The instant Specification examples only require the mixture of components for reaction to occur. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Conclusion
No claim is allowed.
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.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619