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 .
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 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.
DETAILED ACTION
Information Disclosure Statement
The information disclosure statements (IDS’s) submitted on 09/25/2025 and 02/25/2026 were filed after the mailing date of the non-final rejection on 08/22/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of claims
The amendment filed on 11/20/2025 is acknowledged. New claims 12-20 have been added. Claims 1-20 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 11/20/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the claim objection of claim 9 from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of rejections necessitated by Applicant’s amendment
The new claims necessitate the following new ground of rejections.
Claim Rejections - 35 USC 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 15 and 16 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 15 and 16 introduce new matter as the claims recite the limitation of "the water-soluble organic solvent comprises malic acid, citric acid, and/or glycolic acid”. There is no support in the specification for this limitation. The limitation of "the water-soluble organic solvent comprises malic acid, citric acid, and/or glycolic acid” was not described in the specification as filed, and person skilled in the art would not recognize in the applicant’s disclosure a description of the invention as presently claimed. The specification discloses “the pH can be adjusted by using a pH adjuster, including an organic acid, such as malic acid, citric acid, or glycolic acid” in paragraph 24 but does not describe the instantly claimed limitation. From MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Claims 17 and 18 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 17 and 18 introduce new matter as the claims recite the limitations of "a blend ratio of the aminoalkyl (meth)acrylate copolymer to the water-soluble organic solvent is in the range of from 15:5 to 15:1” and "a blend ratio of the aminoalkyl (meth)acrylate copolymer to the water-soluble organic solvent is in the range of from 15:3 to 15:1”. There is no support in the specification for this limitation. The limitations of "a blend ratio of the aminoalkyl (meth)acrylate copolymer to the water-soluble organic solvent is in the range of from 15:5 to 15:1” and "a blend ratio of the aminoalkyl (meth)acrylate copolymer to the water-soluble organic solvent is in the range of from 15:3 to 15:1” were not described in the specification as filed, and person skilled in the art would not recognize in the applicant’s disclosure a description of the invention as presently claimed. The specification discloses “the blending ratio of the aminoalkyl (meth)acrylate copolymer to the pH adjuster in terms of mass ratio is desirably 15:5 to 15:1 and particularly preferably, desirably 15:3 to 15:1” in paragraph 25 but does not describe the instantly claimed limitation. From MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claims 15 and 16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The recitation of "the water-soluble organic solvent comprises malic acid, citric acid, and/or glycolic acid” in claims 15 and 16 and the disclosure of “the pH can be adjusted by using a pH adjuster, including an organic acid, such as malic acid, citric acid, or glycolic acid” in the instant specification paragraph 24 render claims 15 and 16 indefinite. It is confusing to one of ordinary skill whether malic acid, citric acid, and/or glycolic acid is a water-soluble organic solvent as recited in claims 15 and 16 or a pH adjuster as disclosed in the instant specification.
Claims 17 and 18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The recitation of "a blend ratio of the aminoalkyl (meth)acrylate copolymer to the water-soluble organic solvent is in the range of from 15:5 to 15:1” and "a blend ratio of the aminoalkyl (meth)acrylate copolymer to the water-soluble organic solvent is in the range of from 15:3 to 15:1” in claims 17 and 18 and the disclosure of “the blending ratio of the aminoalkyl (meth)acrylate copolymer to the pH adjuster in terms of mass ratio is desirably 15:5 to 15:1 and particularly preferably, desirably 15:3 to 15:1” in the instant specification paragraph 25 render claims 17 and 18 indefinite. It is confusing to one of ordinary skill whether the blend ratio is the aminoalkyl (meth)acrylate copolymer to the water-soluble organic solvent as recited in claims 17 and 18 or is the aminoalkyl (meth)acrylate copolymer to a pH adjuster as disclosed in the instant specification.
To expedite the prosecution "the water-soluble organic solvent” in claims 15-18 is given its broadest reasonable interpretations by the examiner in light of the specification in the 103 rejections as a pH adjuster.
Rejection maintained
The following rejection of the claims is remained for reasons of record and the following. New claims are hereby included in the rejection and the rejection is modified based on the amendments and new claims (newly underlined).
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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 1-18 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kajino et al. (US 5,254,333).
Kajino et al. teach a hair treatment composition comprising
0.1-5% by weight of one or more water-soluble polymers selected from the group consisting of amphoteric polymers, etc., (abstract and column 8, line 29-38),
0.5-30% by weight of pH adjusters including hydrochloric acid (an inorganic acid) and organic acid including citric acid (the new claims 15 and 16) (column 8, line 39 through column 9, line 18);
0.0001-10% by weight of an acidic dye (abstract and claim 1) including Red No. 2 (the instant claims 2 and 12) (column 9, line 58-59),
ethanol (the instant claims 1 and 3-5) (column 11, line 1-6), and
water (column 9, line 11-13); and
exemplified 30% by weight of ethanol in example 4 (table 1);
wherein the amphoteric polymers are copolymer obtained by copolymerizing
45-55% by mol an acidic vinyl monomer or a salt thereof including methacrylic acid salt,
45-55% by mol of a basic vinyl monomer or a salt thereof including dimethylaminoethyl methacrylate, diethylaminoethyl methacrylate, etc., (the claimed group B in the instant claim 1, 6, and 7), and
≤60% by mol of another vinyl monomer including methacrylic esters such as methyl methacrylate, ethyl methacrylate, etc., (the claimed group A in the instant claims 1 and 9) (column 6, line 54 through column 7, line 55);
wherein the pH of the composition is 2-6 (the instant claim 1) (column 12, line 15-21).
The mass ratio between the pH adjuster and the amphoteric polymer ius calculated to be 10:1 (5%:0.5%=10) (within the claimed 15:1-5 → 3-15:1 and 15:1-3 → 5-15:1 in the instant claims 17 and 18).
With respect to the art rejection above, it is noted that the reference does not teach that the composition can be used in the manner instantly claimed, [marker for skin] in the instant claim 1; however, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
With molecular weight of 45-55% by mol an acidic vinyl monomer or a salt thereof, 45-55% by mol of a basic vinyl monomer or a salt thereof, ≤60% by mol of another vinyl monomer; a person of ordinary skill in the art can readily envisage 60% by mol of another vinyl monomer (ethyl methacrylate MW 114 g/mol) and rest of 40% by mol of acidic vinyl monomer (methacrylic acid sodium salt MW 108 g/mol) and basic vinyl monomer with a 55% by mol an acidic vinyl monomer and 45% by mol of a basic vinyl monomer (B, dimethylaminoethyl methacrylate MW 157 g/mol) ratio. Thus (40% x 1 mol x 45% x 157 g/mol) / (60% x 1 mol x 114 g/mol + 40% x 1 mol x 55% x 108 g/mol + 40% x 1 mol x 45% x1 57 g/mol) = 28.26 g / (68.4 g + 23.76 g + 28.26 g) = 28.26 g / 120.42 g = 23.5% by mass (B).
Kajino et al. do not teach the same weight percentage of acid dye (0.0001-10% by weight vs the clamed 1-5% by mass in the instant claim 1).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed range of acid dye is 1-5% by mass and the range of acid dye taught in the prior art is 0.0001-10% by weight and therefor, overlaps with the claimed range.
Kajino et al. do not teach the same mass percentage of group B (23.5% by weight vs the clamed 2-20% by mass in the instant claim 1 and 8-15% by mass in the new claim 14).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
The claimed range of group B is 2-20% by mass and the range of group B taught in the prior art is 23.5% and 8-15% by weight and therefor are close enough that one skilled in the art would have expected them to have the same properties.
Kajino et al. do not teach the same claimed pH (2-6 vs the clamed >4 and <7 in the new claim 13).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed range of pH is >4 and <7 and the range of pH taught in the prior art is 2-6 and therefor, overlaps with the claimed range.
Kajino et al. do not teach the same weight percentage of ethanol as a water-soluble organic solvent (30% by weight vs the clamed 40-80% by mass in the instant claim 20).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
The claimed range of water-soluble organic solvent is 40-80% by mass and the range of ethanol taught in the prior art is 30% by weight and therefor are close enough that one skilled in the art would have expected them to have the same properties as a solvent.
Kajino et al. do not specify the same group B in the instant claim 8.
chemical compounds having “very close” structural similarities and similar utilities, without more a prima facie case may be made.
It would have been prime facie obvious at the time of the invention to a person of ordinary skill in the art to replace the C2 alkyl in dimethylaminoethyl methacrylate taught by Kajino et al. with C3 alkyl. Furthermore, dimethylaminoethyl methacrylate is also claimed in the instant claims 1 and 7, thus the criticality of the claimed dimethylaminopropyl methacrylate over dimethylaminoethyl methacrylate is not established. Please refer to MPEP 2144.09 II:
Compounds which are … homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Kajino et al. do not specify the same copolymers in the instant claims 10 and 11.
It would have been prime facie obvious at the time of the invention to a person of ordinary skill in the art to replace part of the C2 alkyl in ethyl methacrylate in dimethylaminoethyl methacrylate-ethyl methacrylate copolymer taught by Kajino et al. with C8 alkyl (ethylhexyl) to form the claimed 2-(dimethylamino)ethyl methacrylate-2-ethylhexyl acrylate-ethyl methacrylate copolymer in the instant claim 10. Furthermore, dimethylaminoethyl methacrylate-ethyl methacrylate copolymer is also claimed in the instant claims 1 and 7, thus the criticality of the claimed2-(dimethylamino)ethyl methacrylate-2-ethylhexyl acrylate-ethyl methacrylate copolymer taught by Kajino et al. over dimethylaminoethyl methacrylate-ethyl methacrylate copolymer is not established.
It would have been prime facie obvious at the time of the invention to a person of ordinary skill in the art to replace part of the C1 alkyl in methyl methacrylate in dimethylaminoethyl methacrylate-methyl methacrylate copolymer taught by Kajino et al. with C4 alkyl (butyl) to form the claimed 2-(dimethylamino)ethyl methacrylate-methyl methacrylate-n-butyl methacrylate copolymer in the instant claim 11. Furthermore, dimethylaminoethyl methacrylate-methyl methacrylate copolymer is also claimed in the instant claims 1 and 6, thus the criticality of the claimed 2-(dimethylamino)ethyl methacrylate-methyl methacrylate-n-butyl methacrylate copolymer over dimethylaminoethyl methacrylate-methyl methacrylate copolymer taught by Kajino et al. is not established.
Please refer to MPEP 2144.09 II discussed above.
Response to Applicants’ arguments:
Applicants argue that Kajino et al. do not teach the effect of the claimed composition.
However, this argument is not deemed persuasive. Kajino et al. teach the claimed composition. Though Kajino et al. do not expressly teach the properties of the claimed composition disclosed in the instant specification, as a result of the composition having the same components as claimed, the composition would necessarily have the claimed properties, whether expressly recognized by Kajino et al. or not. MPEP 2112.I:
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”
Also, The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant’s own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Applicants argue that the claimed content of group B in the copolymer is critical as demonstrated in table 1 paragraph 88 (PGPUB) for water resistance.
However, this argument is not deemed persuasive. The examples and comparable examples in table 1 have many variables including the alleged varying mass% of B monomer in the copolymer, also varying mass% of the copolymer, varying mass% of the pH adjuster, varying mass% of acid dye which result in very mixed water resistance effect in all examples. A conclusion of the water resistance effect being the result of 2-20 mass% of B monomer in the copolymer can’t be drawn by the examiner. Furthermore, the scopes of the examples 1-3 are much narrower that that of the instant claim 1. There is no adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the single tested composition. In other words, Applicant has not shown that based on this single example, it is reasonable to expect that other embodiments falling within the scope of the claims will behave similarly. MPEP 716.02(b) III.:
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.
New ground of rejections necessitated by Applicant’s amendment
The new claim 19 necessitate the following new ground of rejection.
Claim 19 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kajino et al. (US 5,254,333), as applied to claims 1-18 and 20, in view of Schrott et al. (US 2019/0240133 A1).
The teachings of Kajino et al. are discussed above and applied in the same manner.
Kajino et al. do not specify the viscosity of a hair treatment composition in the new claim 19.
This deficiency is cured by Schrott et al. who teach a hair coloring composition having a viscosity of about 10-30 mPa·s (paragraph 102).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Kajino et al. and Schrott et al. to specify the viscosity of the hair treatment composition taught by Kajino et al. being about 10-30 mPa·s. A hair coloring composition having a viscosity of about 10-30 mPa·s was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 11/20/2025, have been fully considered but they are moot in view of new ground of rejections.
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614