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 of Claims
The arguments filed on 12/23/2025 are acknowledged and have been fully considered. Claims 16-20 have been withdrawn.
No new matter has been added.
Thus, claims 1-15 will be examined on the merits herein.
Rejections Maintained and Made Again
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.
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.
Claims 1,3-9 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bergstrom et al (US 5332570 A).
Bergstrom discloses hair composition comprising from about 1.0% to about 24% by weight of a reducing agent selected from a group consisting of salts and esters of thioglycolic acid, thiolactic acid, water in amount sufficient to total 100 percent of the solution (see entire document, for instance, abstract). Bergstrom teaches reducing solution may further contain a surfactant selected from anionic, nonionic or amphoteric surfactants may be used to make hair more hydrophilic and more easily penetrable (see entire document, for instance column 2, lines 52-57). Bergstrom discloses B-cyclodextrin in the amounts from about 0.5% to about 2% by weight of the solution (see entire document, for instance column 2, lines 61-66).
Instant specification discloses for purposes of the present disclosure, it should be noted that to provide a more concise description, some of the quantitative expressions given herein are not qualified with the term "about" ([0085]). It is understood that whether the term "about" is used explicitly or not, every quantity given herein is meant to refer to the actual given value, and it is also meant to refer to the approximation to such given value that would reasonably be inferred based on the ordinary skill in the art, including approximations due to the experimental and/or measurement conditions for such given value ([0085]).
Thus, the determination of the optimum or workable amounts given the guidance of the prior art would have been generally prima facie obvious to the skilled artisan. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (MPEP 2144.05). In the instant case, the ranges taught by Bergstrom close to the instantly claimed ranges such that a person of ordinary skill in the art would still have been motivated to use them in the practiced cosmetic composition. Absent of a clear showing of criticality, Bergstrom is considered to teach and suggest the instantly recited amounts of cyclodextrin in the instant claims.
Claims 1- 15 are rejected under 35 U.S.C. 103 as being unpatentable over Bergstrom et al (US 5332570 A) as applied to claims 1,3-9 and 11-15 above, and in view of Daubresse et al (FR2921380).
The teachings of Bergstrom have been set forth above. However, they do not expressly disclose including reducing agent chosen from sulfites, bisulfites, salts thereof. Daubresse et al remedy this deficiency.
Daubresse discloses a composition for dyeing in an appropriate cosmetic media. (see entire document, for instance, claim 11). Daubresse teaches the reducing agent such as: sulfites, bisulfites, borohydrides, ammonium salts, catecholborane, thiolactic acid, cysteine, homocysteine, and the salts of these thiols (see entire document, for instance, claims 10, 11, and 12). Daubresse discloses the medium suitable for dyeing, also called dyeing medium, is a cosmetic medium generally consisting of water or a mixture of water and at least one organic solvent (page 14). Daubresse teaches the dye composition may contain various adjuvants used in compositions for dyeing hair, such as amphoteric, zwitterionic surfactants, nonionic, zwitterionic polymers, cationic, and anionic (page 14). The adjuvants are present in an amount for each of them between 0.01 and 20% by weight relative to the weight of the composition (page 14).
Thus, 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 incorporate the composition as described by Bergstrom with the composition of Daubresse et al. One would be motivated to do so with a reasonable expectation of success in simple substitution of one known element for another to obtain predictable results. In the instant case to include reducing agent chosen from sulfites, bisulfites, salts thereof.
Claims 1-4,6-12, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over De La Mettrie (US 20050169862 A1).
De La Mettrie discloses a composition containing a reducing and/or oxidizing agent, and its use in the treatment of keratin fibers, particularly human keratin fibers such as hair ([0002]). De La Mettrie discloses reducing agent(s) such as ammonium sulphites and/or bisulphites, thiolactic acid and its esters (especially glycerol monothiolactate), thioglycolic acid and its esters ([0040]). De La Mettrie teaches cyclodextrin, (see entire document, for instance, [0045]). De La Mettrie disclose the reducing and oxidizing agent(s) of the invention can be used in a mixture with one or more solid or pasty adjuvants, preferably pulverulent adjuvants ([0045]). If one or more adjuvants are present, the reducing and/or oxidizing agent(s) of the invention is (are) present in an amount ranging preferably from 0.5 to 99% by weight, particularly preferably from 1 to 80% by weight and very particularly preferably from 2 to 60% by weight, based on the total weight of reducing and/or oxidizing agent(s) and adjuvant(s) ([0046]). De La Mettrie disclose apart from the reducing and/or oxidizing agent(s) and the component(s) of the fluid, namely the water and/or the cosmetically acceptable solvent(s) ([0048]). De La Mettrie teaches anionic surfactants can also be added to the invention compositions ([0059]).
Thus, the determination of the optimum or workable amounts given the guidance of the prior art would have been generally prima facie obvious to the skilled artisan. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (MPEP 2144.05). In the instant case, the ranges taught by De La Mettrie close to the instantly claimed ranges such that a person of ordinary skill in the art would still have been motivated to use them in the practiced cosmetic composition
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant argue, “The unexpected and superior color-removal results described in the specification are directly attributable to the presence of cyclodextrin in combination with the reducing agent, as recited in independent claims 1 and 9. Specifically, the data demonstrate that inclusion of cyclodextrin produces durable color removal and prevents re-oxidation of previously reduced oxidative dyes-results that are not observed in otherwise identical compositions lacking cyclodextrin... Bergstrom mentions β-cyclodextrin, it discloses cyclodextrin solely as a chelating agent for odor reduction, not for removing artificial dye from previously-dyed hair.”
The Examiner respectfully maintains that the art is not required to teach the same reasoning for adding components as Applicant, MPEP 2144 (IV) states “the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 411 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).” In the instant case, Bergstrom discloses hair composition comprising reducing agent selected from a group consisting of salts and esters of thioglycolic acid, thiolactic acid, water, and β-cyclodextrin (see entire document, for instance, abstract). While Bergstrom mentions β-cyclodextrin (as a chelating agent), the applicant has indicated the unexpected and superior color-removal results is due to the presence of cyclodextrin in combination with the reducing agent (such as the required thiolactic acid, thioglycolic acid, sodium sulfite, potassium sulfite, ammonium sulfite, sodium bisulfite, ammonium bisulfite, sodium metabisulfite, or potassium metabisulfite). Therefore the composition of the prior art would also have the same properties.
Furthermore, MPEP 2112.01 states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Applicants argue, "steam percolation process (of De La Mettrie) is entirely different from the hair color-removing compositions recited by claims 1 and 9.“ The Examiner respectfully maintains the rejection and submits the instantly claimed invention is directed to a composition, and not the manner by which it is produced. As such the remarks are not considered persuasive.
Applicants argue, "De La Mettrie does not teach or suggest using cyclodextrin specifically to prevent re-oxidation of reduced oxidative dyes in a color-removing composition...Mettrie discusses reducing agents such as "alkali metal, alkaline earth metal or ammonium sulphites and/or bisulphites or, preferably, thiols" including "thiolactic acid and its esters" and "thioglycolic acid and its esters," it fails to teach the claimed combination with cyclodextrin or its unexpected benefits for color removal."
The Examiner respectfully maintains that the art is not required to teach the same reasoning for adding components as Applicant, MPEP 2144 (IV) states “the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 411 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).” In the instant case, De La Mettrie discloses a composition containing a reducing and/or oxidizing agent, and its use in the treatment of keratin fibers, particularly human keratin fibers such as hair ([0002]). De La Mettrie discloses reducing agent(s) such as ammonium sulphites and/or bisulphites, thiolactic acid and its esters (especially glycerol monothiolactate), thioglycolic acid and its esters ([0040]). De La Mettrie teaches cyclodextrin, (see entire document, for instance, [0045]). The applicant has indicated the unexpected and superior color-removal results is due to the presence of cyclodextrin in combination with the reducing agent (such as the required thiolactic acid, thioglycolic acid, sodium sulfite, potassium sulfite, ammonium sulfite, sodium bisulfite, ammonium bisulfite, sodium metabisulfite, or potassium metabisulfite). Therefore the composition of the prior art would also have the same properties.
Furthermore, MPEP 2112.01 states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANET JOSEPH whose telephone number is (571)270-1372. The examiner can normally be reached Monday and Thursday 0730-1730 Eastern.
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/JANET JOSEPH/Patent Examiner, Art Unit 1611
/TREVOR LOVE/Primary Examiner, Art Unit 1611