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 .
Claim Rejections - 35 USC § 112/101—Use Claim
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
Claim 15 constitutes an improper definition of a process insofar as it merely recites a use without any active, positive steps, delimiting how this use is actually practiced.
Claim 15 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
Claim Rejections - 35 USC § 112--Indefiniteness
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 2-12, 14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 2-4, 6-12, 14, the phrases "preferably", “preferentially”, “even better still” renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (US 2012/0325241) in view of Nicou et al., (WO 2017/108840).
Hashimoto et al. teaches “a composition and method for dyeing keratinous substrates containing: (a) at least one polyamine compound having at least three amino groups; (b) at least one nonionic surfactant; (c) at least one phosphate ester chosen from alkoxylated alkyl phosphate esters and alkyl phosphate esters; (d) at least one dye chosen from oxidation dye precursors and direct dyes” (Abstract).
Examples of phosphate esters include “Ceteth-10 phosphate” (p. 4, para. [0067]), which may be “present in the present composition in an amount of from greater than 0% to about 20% by weight” (Id. para. [0068]), as per claim 7.
Ceteth-10 phosphate has the following structure, as per claims 1, 5 and 6:
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.
Examples of oxidation bases include “para-phenylenediamines”, e.g., “para-phenylenediamine” . . . “N-(β-hydroxypropyl)-para-Phenylenediamine” (p. 4, para. [0078]), as per claims 1 and 3, wherein the “oxidation bases may be employed in amounts ranging from about 0.0001 to about 12% by weight” (p. 6, para. [0104]), a per claim 2.
Oxidation couplers, as per claim 4 include “meta-aminophenols, meta-phenylenediamines” (p. 7, para. [0107]).
“Fatty substances” such as “non-silicone oils” (p. 9, paras. [0152]-[0155]), as per claims 9-10, may also be included in the prior art compositions of “at least 10%. . . relative to the weight of the composition” (Id. para. [0151]).
Nonionic surfactants may be present “in the composition in an amount of from greater than 0% to about 70% by weight”, as per claim 12.
The prior art teaches a specific embodiment:
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(p. 17, Example 2, para. [0310]). Here, Ceteth-20 suffices as a phosphoric surfactant of formula (I) (see claim 6 and Specification, p. 12, lines 18-20). Note that the ratio of phosphoric surfactant to para-phenylenediamine compound is greater than 1, i.e. ~10.2, as per claim 8.
This composition was applied to keratin fibers, gray hair, (p. 17, para. [0310]), as per claim 13. The method also includes application of chemical oxidizing agents, such as, hydrogen peroxide (p. 16, para. [0274]), as per claim 14.
Hashimoto et al. does not teach where the para-phenylenediamine is 2-γ-hydroxypropyl-para-phenylenediamine.
Nicou et al. teaches, “Oxidation bases of the para-phenylenediamine type are commonly used in the field of hair dying”; and further, “It is known practice, for example to use 3-(2,5-diaminophenyl)-1-propanol (or 2-γ-hydroxypropyl-para-phenylenediamine) in oxidation dyeing” (p. 1, lines 32-35).
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use (see MPEP 2144.07). Also, established precedent holds that it is generally obvious to add known ingredients to known compositions with the expectation of obtaining their known function (see 2144.06).
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add to or substitute the paraphenyldiamines of Hashimoto et al. with 2-γ-hydroxypropyl-para-phenylenediamine of Nicou et al. based on the suitability for it intended use in compositions for dyeing keratin substrates, as taught by Nicou et al.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Walter E. Webb
/WALTER E WEBB/Primary Examiner, Art Unit 1612