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 20-37 and 39, in reply filed on 09/05/2025 is acknowledged.
Claim 38 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/05/2025.
The traversal is on the ground(s) that the groups are directed to a product and device for using the product, and the use of said product, which applicant asserts satisfies unity of invention. Applicant also argues the groups do not present a serious burden of search or examination.
These arguments are not persuasive because even though the claims are directed to a product and device for using the product, and the use of said product, the claims still must be united by a shared technical feature which contributes over the prior art, i.e., special technical feature. As discussed in the restriction requirement mailed 07/11/2025, the claims share a technical feature but that technical feature does not make a contribution over the prior art, and so unity of invention is broken. Furthermore, the restriction analysis of the present application does not require a showing of a serious burden of search and examination, only that there is no unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The abstract of the disclosure is objected to because it is presented with information other than the abstract text (the WO cover page was filed as abstract). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 20-30, 32-37 and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allard et al. (FR 3026006 A1, publication date 03/25/2016; citing English machine translation).
Allard relates to an oxidation hair coloring composition [title]. In embodiment A3 on page 31 Allard discloses a composition comprising:
Component
Amount (wt. %)
Role with
[citation]
Ethanolamine
4.43
Alkaline agent
[instant claims 34 and 35]
EDTA
0.2
Sequestrant
[Instant Spec., p. 33, line 26]
2-(methoxymethyl)benzene-1,4-diamine hydrochloride
0.5
--
2-methyl-5-hydroxyethylaminophenol
0.11
Coupler
[Allard, p. 10, 1st half of para. 2]
4-amino-2-hydroxytoluene
0.7
Coupler
[Allard, p. 10, 1st half of para. 2]
Mineral oil
59.7
Liquid fatty substance
[Instant Spec., p. 11, lines 12 and 29]
Polyquaternium-67
0.2
Cationic cellulosic associative polymer according to instant claim 23 (which reads on instant claims 20-23)
[Instant Specification, p. 9, lines 19-25]
Polysorbate-21
2.4
Surfactant
[Instant Specification, p. 27, line 3]
Composition A3 does not comprise an oxidizing agent (i.e., free of any chemical oxidizing agent; instant claim 36).
Composition A3 anticipates instant claims 20-24, 26-30, and 32-36 insofar as it discloses a composition comprising an addition salt of 2-(methoxymethyl)benzene-1,4-diamine (2-(methoxymethyl)benzene-1,4-diamine hydrochloride), the cationic associative polymer of instant claims 21-23 (polyquaternium-67), a liquid fatty substance (mineral oil), at least one oxidation coupler (4-amino-2-hydroxytoluene), a surfactant (polysorbate-21), a sequestrant (EDTA), an alkanolamine alkaline agent (ethanolamine), and no chemical oxidizing agent, wherein each component is present in the composition in an amount entirely within the instantly claimed ranges of claims 20 and 26-29.
Allard also discloses the composition of A3 was combined with the composition of B3 at a wight ratio of 1 [p. 30, 2nd half of para. 1]. The composition B3 comprises hydrogen peroxide and cetearyl alcohol (i.e., a solid fatty substance according to the instant specification at line 28 of page 17; instant claim 25) and 20% w/w mineral oil [p. 32, B3 Table].
The composition resulting from combining A3 and B3 at a ratio of 1 would comprise about 40% w/w mineral oil. This composition, resulting from combining A3 and B3, therefore anticipates claims 20-24, 26-30, 32-35 and 37 insofar as it discloses a composition comprising an addition salt of 2-(methoxymethyl)benzene-1,4-diamine (2-(methoxymethyl)benzene-1,4-diamine hydrochloride), the cationic associative polymer of instant claims 21-23 (polyquaternium-67), a liquid fatty substance (mineral oil), a solid fatty substance (cetearyl alcohol), at least one oxidation coupler (4-amino-2-hydroxytoluene), a surfactant (polysorbate-21), a sequestrant (EDTA), an alkanolamine alkaline agent (ethanolamine), and a chemical oxidizing agent (hydrogen peroxide), wherein each component is present in the composition in an amount entirely within the instantly claimed ranges of claims 20 and 26-29.
Allard further discloses “a device with at least two compartments comprising: a) in a first compartment, a composition (A). . . and b) in a second compartment, a composition (B) comprising at least one oxidizing agent chemical, preferably hydrogen peroxide” (emphasis added) [p. 5, first paragraph]. As discussed above, Allard discloses composition “A3” comprising 2-(methoxymethyl)benzene-1,4-diamine, a cellulosic associative polymer and at least 30% w/w of at least one fatty substance [p. 31] and composition “B3” comprising a chemical oxidizing agent (hydrogen peroxide) [p. 32].
Allard anticipates instant claim 39 because, upon reading the disclosure of Allard, one of ordinary skill in the art would have immediately envisaged a device (kit) with a first compartment comprising composition A3 (i.e., 2-(methoxymethyl)benzene-1,4-diamine, a cellulosic associative polymer and at least 30% w/w of at least one fatty substance) and a second compartment comprising composition B3 (i.e., chemical oxidizing agent).
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.
The factual inquiries 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.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Allard et al. (FR 3026006 A1, publication date 03/25/2016; citing English machine translation) as applied to claims 20-30, 32-37 and 39 above, and further in view of Nicou et al. (WO 2017/108841 A1, publication date 06/29/2017) and Sutton et al. (US 2013/0255004 A1, publication date 10/03/2013).
Allard, which is taught above, does not anticipate instant claim 31 because it does not disclose 6-hydroxybenzomorpholine, hydroxyethyl-3,4-methylenedioxyaniline, 2- amino-5-ethylphenol, addition salts thereof, solvates thereof, solvates of their salts thereof, or mixtures of two or more thereof.
Nicou “relates to a composition for dyeing keratin fibres, comprising an oxidation base, a 2-amino-5-ethyl-phenol coupler and at least 20% by weight of fatty substance relative to the total weight of the composition” (emphasis added) [abstract]. The composition disclosed by Nicou “makes it possible to produce particularly intense and sparingly selective colourations, i.e. colourations that are uniform along the length of the fibre. Moreover, the colourations obtained by means of the composition according
to the invention withstand well the various attacking factors to which the hair may be
subjected, such as light, bad weather, washing and perspiration” [p. 2, lines 23-28].
Nicou does not disclose 2-(methoxymethyl)benzene-1,4-diamine as a developer.
Sutton discloses a “[h]air colorant compositions comprising 3-amino-2,6-dimethylphenol and 1,4-phenylenediamine-type developers” [title]. The 1,4-phenylenediamine-type developers include 2-methoxymethyl-1,4-benzenediamine (i.e., 2-(methoxymethyl)benzene-1,4-diamine) [abstract]. Sutton disclose additional couplers which are suitable for the composition include 2-amino-5-ethylphenol [0037].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have simply substituted the 2-amino-5-ethylphenol coupler of Nicou for the couplers disclosed in Allard. One would have been motivated to make this substitution because Nicou teaches that compositions comprising an oxidation base and at least 20% w/w fatty substance, such as those compositions disclosed in Allard, may have more intense and uniform coloration when they comprise a 2-amino-5-ethyl-phenol coupler. One would have had an expectation of success because Sutton discloses the developer of Allard (i.e., 2-(methoxymethyl)benzene-1,4-diamine) and the 2-amino-5-ethyl-phenol coupler are compatible. The skilled artisan would have been motivated to have substituted the 2-amino-5-ethyl-phenol coupler of Nicou in place of the couplers of Allard as the oxidation coupler with a reasonable expectation of success. The simple substitution of one known element (e.g., 2-amino-5-ethyl-phenol coupler of Nicou) in place of another (e.g., the couplers of Allard) in order to achieve predictable results (oxidative hair dye) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the compositions according to Allard (i.e., A3) such that the oxidation coupler is 2-amino-5-ethylphenol.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
1) Claims 20-37 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-38 of copending Application No. 18/253,667 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152).
The claims of ‘667 and the instant application both disclose a composition comprising 2-(methoxymethyl)benzene-1,4-diamine (in amounts from 0.001% to 20% [instant claim 26; claim 26]), at least 30% w/w fatty substance (including liquid and solid [instant claims 24 and 25; claims 21 and 22]) [instant claim 20; claim 19], a coupler chosen from 6-hydroxybenzomorpholine, hydroxyethyl-3,4-methylenedioxyaniline, 2- amino-5-ethylphenol [instant claims 30-31; claim 30], at least one surfactant [instant claim 32; claim 31], at least one sequestrant [instant claim 33; claim 33] and at least one alkaline agent [instant claim 34-35; claim 34]. Wherein the composition is substantially free of an oxidizing agent [instant claim 36; claim 35] or comprises a chemical oxidizer [instant claim 37; claim 36]. The claims of ‘667 also disclose a kit as instantly claimed [instant claim 39; claim 38].
The claims of ‘667 do not specifically disclose the cationic associative polymer described in instant claims 20-23.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w (instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘667 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘667 to further comprise polyquaternium-67 within the instantly claimed amounts.
This is a provisional nonstatutory double patenting rejection.
2) Claims 20-37 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 18-30, and 32-35 of copending Application No. 18/253,820 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152).
The claims of ‘820 and the instant application both disclose a composition comprising 2-(methoxymethyl)benzene-1,4-diamine (in amounts from 0.001% to 20% [instant claim 26; claim 16]), at least one solid and liquid fatty substance [instant claims 20, 24 and 25; claim 19-23], a coupler chosen from 6-hydroxybenzomorpholine, hydroxyethyl-3,4-methylenedioxyaniline, 2- amino-5-ethylphenol [instant claims 30-31; claim 18], at least one surfactant [instant claim 32; claim 16], at least one sequestrant [instant claim 33; claim 25] and at least one alkaline agent [instant claim 34-35; claims 26-27]. Wherein the composition is substantially free of an oxidizing agent [instant claim 36; claim 28] or comprises a chemical oxidizer [instant claim 37; claim 29]. The claims of ‘820 also disclose a kit as instantly claimed [instant claim 39; claim 35].
The claims of ‘820 do not specifically disclose the cationic associative polymer described in instant claims 20-23.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w (instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘820 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a fatty substance within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the composition disclosed by the claims of ‘820 and Goh because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘820 to further comprise polyquaternium-67, wherein all the components are within the instantly claimed amounts.
This is a provisional nonstatutory double patenting rejection.
3) Claims 20-37 and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. US 12390408 B2 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152).
The claims of ‘408 and the instant application both disclose a composition comprising 2-(methoxymethyl)benzene-1,4-diamine [instant claim 20; claim 6] (in amounts from 0.001% to 20% [instant claim 26; claim 7]), at least one solid and/or liquid fatty substance [instant claims 20, 24 and 25; claims 11-12], a coupler chosen from 6-hydroxybenzomorpholine and 2- amino-5-ethylphenol [instant claims 30-31; claim 1], at least one surfactant [instant claim 32; claim 13], and at least one alkaline agent [instant claim 34-35; claim 14]. Wherein the composition is substantially free of an oxidizing agent [instant claim 36; claim 15] or comprises a chemical oxidizer [instant claim 37; claim 16]. The claims of ‘408 also disclose a kit as instantly claimed [instant claim 39; claim 18]. The claims of ‘408 disclose the composition comprises N,N-dicarboxymethyl glutamic acid [claim 1], which is a sequestrant according to the instant specification at line 5 on page 34 (i.e., instant claim 33).
The claims of ‘408 do not specifically disclose the cationic associative polymer described in instant claims 20-23.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w (instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘408 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a fatty substance within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the composition disclosed by the claims of ‘408 and Goh because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘408 to further comprise polyquaternium-67, wherein all the components are within the instantly claimed amounts.
4) Claims 20-37 and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Pat. No. US 12296035 B2 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152).
The claims of ‘035 and the instant application both disclose a composition comprising 2-(methoxymethyl)benzene-1,4-diamine (in amounts from 0.001% to 20% [instant claim 26; claim 6]), at least 30% w/w fatty substance (including liquid and solid [instant claims 24 and 25; claims 2-4]) [instant claim 20; claim 2], a coupler chosen from 6-hydroxybenzomorpholine, hydroxyethyl-3,4-methylenedioxyaniline, 2- amino-5-ethylphenol [instant claims 30-31; claim 1], at least one surfactant [instant claim 32; claim 11], at least one sequestrant [instant claim 33; claim 10] and at least one alkaline agent [instant claim 34-35; claim 15]. Wherein the composition is substantially free of an oxidizing agent [instant claim 36; claim 16] or comprises a chemical oxidizer [instant claim 37; claim 17]. The claims of ‘035 also disclose a kit as instantly claimed [instant claim 39; claim 20].
The claims of ‘035 do not specifically disclose the cationic associative polymer described in instant claims 20-23.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w (instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘035 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘035 to further comprise polyquaternium-67 within the instantly claimed amounts.
5) Claims 20-37 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-38 of copending Application No. 18/268,088 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152).
The claims of ‘088 and the instant application both disclose a composition comprising 2-(methoxymethyl)benzene-1,4-diamine [instant claim 20; claim 19] (in amounts from 0.001% to 20% [instant claim 26; claim 20]), at least one solid and/or liquid fatty substance [instant claims 20, 24 and 25; claims 26-29], hydroxyethyl-3,4-methylenedioxyaniline as a coupler [instant claims 30-31; claim 19], at least one surfactant [instant claim 32; claim 30], at least one sequestrant [instant claim 33; claim 33] and at least one alkaline agent [instant claim 34-35; claims 34-35]. The claims of ‘088 also disclose a kit with the instantly claimed composition separated from an oxidizing agent (i.e., instant claim 36), which is later combined with the second component which is an oxidizing agent (i.e., instant claim 37) [instant claim 39; claim 38].
The claims of ‘088 do not specifically disclose the cationic associative polymer described in instant claims 20-23.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w [instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘088 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a fatty substance within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the composition disclosed by the claims of ‘088 and Goh because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘088 to further comprise polyquaternium-67, wherein all the components are within the instantly claimed amounts.
This is a provisional nonstatutory double patenting rejection.
6) Claims 20-37 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-38 of copending Application No. 18/266,729 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152).
The claims of ‘729 and the instant application both disclose a composition comprising 2-(methoxymethyl)benzene-1,4-diamine [instant claim 20; claim 19] (in amounts from 0.001% to 20% [instant claim 26; claim 20]), at least one solid and/or liquid fatty substance [instant claims 20, 24 and 25; claims 26-30], 2-amino-5-ethylphenol as a coupler [instant claims 30-31; claim 19], at least one surfactant [instant claim 32; claim 31], at least one sequestrant [instant claim 33; claim 32] and at least one alkaline agent [instant claim 34-35; claims 33-34]. Wherein the composition is substantially free of an oxidizing agent [instant claim 36; claim 35] or comprises an oxidizing agent [instant claim 37; claim 36]. The claims of ‘729 also disclose a kit [instant claim 39; claim 38].
The claims of ‘729 do not specifically disclose the cationic associative polymer described in instant claims 20-23.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w [instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘729 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a fatty substance within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the composition disclosed by the claims of ‘729 and Goh because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘729 to further comprise polyquaternium-67, wherein all the components are within the instantly claimed amounts.
This is a provisional nonstatutory double patenting rejection.
7) Claims 20-37 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/257,841 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152) and Sutton et al. (US 20130255004 A1, publication date 10/03/2013).
The claims of ‘841 and the instant application both disclose a composition comprising a para-phenylenediamines oxidation base [instant claim 20; claim 9], couplers such as 6-hydroxybenzomorpholine and hydroxyethyl-3,4- methylenedioxyaniline [instant claims 30-31; claim 1] at least one solid and/or liquid fatty substance [instant claims 20, 24 and 25; claim 11-13], at least one surfactant [instant claim 32; claim 14], and at least one alkaline agent [instant claim 34-35; claims 16]. The claims of ‘841 also describe a multi-component device which separates the dye composition from an oxidizing agent (i.e., composition free of and later comprising an oxidizing agent; instant claim 36 and 37), which reads on a kit [instant claim 39; claim 21]. The claims of ‘841 disclose the composition comprises N,N-dicarboxymethyl glutamic acid [claim 7], which is a sequestrant according to the instant specification at line 5 on page 34 (i.e., instant claim 33).
The claims of ‘841 do not specifically disclose the cationic associative polymer described in instant claims 20-23 and the 2-(methoxymethyl)benzene-1,4-diamine.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w [instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘841 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
The claims of ‘841 and Goh do not disclose the claimed oxidation base.
Sutton discloses a hair coloring composition comprising a developer such as 2-methoxymethyl-1,4-benzenediamine [abstract] and that suitable couplers include 6-hydroxybenzomorpholine and hydroxyethyl-3,4-methylenedioxyaniline [0037].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected 2-methoxymethyl-1,4-benzenediamine oxidation base desired by the claims of ‘841 because Sutton discloses it a suitable base for the two couplers disclosed by the claims of ‘841.
It also would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a fatty substance within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the composition disclosed by the claims of ‘841 and Goh because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘841 to further comprise polyquaternium-67, 2-methoxymethyl-1,4-benzenediamine, 2-amino-5-ethylphenol and a sequestrant, wherein all the components are within the instantly claimed amounts.
This is a provisional nonstatutory double patenting rejection.
8) Claims 20-37 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/257,983 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152).
The claims of the ‘983 and the instant application both disclose a composition comprising 2-(methoxymethyl)benzene-1,4-diamine [instant claim 20; claim 8] in amounts from 0.005% to 15% w/w [instant claim 26; claim 9], couplers such as 6-hydroxybenzomorpholine and hydroxyethyl-3,4- methylenedioxyaniline [instant claims 30-31; claim 1] at least one solid and/or liquid fatty substance [instant claims 20, 24 and 25; claim 10-12], at least one surfactant [instant claim 32; claim 1], at least one sequestrant [instant claims 33; claim 14] and at least one alkaline agent [instant claim 34-35; claims 15]. The claims of ‘983 also describe a multi-component device which separates the dye composition from an oxidizing agent (i.e., composition free of and later comprising an oxidizing agent; instant claim 36 and 37), which reads on a kit [instant claim 39; claim 20].
The claims of ‘983 do not specifically disclose the cationic associative polymer described in instant claims 20-23.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w [instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘983 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
It also would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a fatty substance within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the composition disclosed by the claims of ‘983 and Goh because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘983 to further comprise polyquaternium-67, wherein all the components are within the instantly claimed amounts.
This is a provisional nonstatutory double patenting rejection.
9) Claims 20-37 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-36 of copending Application No. 18/267,927 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152) and Sutton et al. (US 20130255004 A1, publication date 10/03/2013).
The claims of the ‘927 and the instant application both disclose a composition comprising 2-(methoxymethyl)benzene-1,4-diamine [instant claim 20; claim 17-18], at least one coupler [claim 17], at least one solid and/or liquid fatty substance [instant claims 20, 24 and 25; claim 28-31], at least one surfactant [instant claim 32; claim 32-33], and at least one alkaline agent [instant claim 34-35; claims 33]. The claims of ‘927 also describe a kit which separates the dye composition from an oxidizing agent (i.e., composition free of and later comprising an oxidizing agent; instant claim 36 and 37) [instant claim 39; claim 36]. The claims of ‘927 disclose the composition comprises N,N-dicarboxymethyl glutamic acid [claim 25], which is a sequestrant according to the instant specification at line 5 on page 34 (i.e., instant claim 33).
The claims of ‘927 do not specifically disclose the cationic associative polymer described in instant claims 20-23, 6-hydroxybenzomorpholine, hydroxyethyl-3,4-methylenedioxyaniline, and 2- amino-5-ethylphenol.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w [instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘927 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
The claims of ‘927 and Goh do not disclose couplers such as 6-hydroxybenzomorpholine, hydroxyethyl-3,4-methylenedioxyaniline, and 2-amino-5-ethylphenol.
Sutton discloses a hair coloring composition comprising a developer such as 2-methoxymethyl-1,4-benzenediamine [abstract] and that suitable couplers include 6-hydroxybenzomorpholine and hydroxyethyl-3,4-methylenedioxyaniline [0037].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have 6-hydroxybenzomorpholine and/or hydroxyethyl-3,4-methylenedioxyaniline as the coupler desired by the claims of ‘927 because Sutton discloses them as suitable couplers for the oxidation base disclosed by the claims of ‘927.
It also would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a fatty substance within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the composition disclosed by the claims of ‘927 and Goh because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘927 to further comprise polyquaternium-67 and 6-hydroxybenzomorpholine and/or hydroxyethyl-3,4-methylenedioxyaniline, wherein all the components are within the instantly claimed amounts.
This is a provisional nonstatutory double patenting rejection.
10) Claims 20-37 and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of US Pat. No. US 12290586 B2 in view of Goh (Cosmetics Business, 2006 [retrieved 10/15/2025], https://cosmeticsbusiness.com/new-cationic-conditioning-polymers-for-hair-care-47152) and Sutton et al. (US 20130255004 A1, publication date 10/03/2013).
The claims of ‘586 and the instant application both disclose a composition comprising a para-phenylenediamines oxidation base [instant claim 20; claim 6], couplers such as 6-hydroxybenzomorpholine and hydroxyethyl-3,4- methylenedioxyaniline [instant claims 30-31; claim 1] at least one solid and/or liquid fatty substance [instant claims 20, 24 and 25; claim 9-11], at least one surfactant [instant claim 32; claim 12], at least one sequestrant [instant claim 33; claim 13] and at least one alkaline agent [instant claim 34-35; claims 14]. The claims of ‘586 also describe a multi-component device which separates the dye composition from an oxidizing agent (i.e., composition free of and later comprising an oxidizing agent; instant claim 36 and 37), which reads on a kit [instant claim 39; claim 19].
The claims of ‘586 do not specifically disclose the cationic associative polymer described in instant claims 20-23 and the 2-(methoxymethyl)benzene-1,4-diamine.
Goh discloses polyquaternium-67 was found to “provide enhanced aesthetic feel and good compatibility with surfactant systems without the complication of associative thickening” [para. 1] and was effective at 0.3% w/w [instant claim 27; p. 3, para 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the polyquaternium-67 of Goh with the composition disclosed by the claims of ‘586 to provide the improved effects disclosed by Goh. One would have had an expectation of success because Goh discloses the polyquaternium-67 has good compatibility. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
The claims of ‘586 and Goh do not disclose the claimed oxidation base.
Sutton discloses a hair coloring composition comprising a developer such as 2-methoxymethyl-1,4-benzenediamine [abstract] and that suitable couplers include 6-hydroxybenzomorpholine and hydroxyethyl-3,4-methylenedioxyaniline [0037].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected 2-methoxymethyl-1,4-benzenediamine as the oxidation base desired by the claims of ‘586 because Sutton discloses it a suitable base for the two couplers disclosed by the claims of ‘968.
It also would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a fatty substance within the instantly claimed amounts through routine optimization. It has been held that it is not inventive to discover the optimum workable ranges by routine experimentation where, as is here, the general conditions of the claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One of ordinary skill in the art would have been motivated to optimize the composition disclosed by the claims of ‘586 and Goh because of the “normal desire of scientists to improve upon what is already generally known”. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Please refer to MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the composition of the claims of ‘586 to further comprise polyquaternium-67, and 2-methoxymethyl-1,4-benzenediamine, wherein all the components are within the instantly claimed amounts.
Conclusion
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