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 .
Applicants' arguments, filed 06/17/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103--Previous
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) 1-14 remain 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). This rejection applies to newly added claim 16.
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” (phosphoric surfactant)(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, 6 and 16:
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.
Dye compounds include oxidation bases such as “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 claims 1-2.
Oxidation couplers, as per claim 4 include “meta-aminophenols, meta-phenylenediamines” (p. 7, para. [0107]).
“Fatty substances” such as “non-silicone oils”, “fatty alcohols” “comprising 6 to 30 carbon atoms”(p. 9, paras. [0152]-[0155]), as per claims 1, 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]). Accordingly, it would have been obvious to provide from 5% to 30% of the non-silicone oil, as per claim 1.
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.
Response to Arguments
i) Applicant argues, “Hashimoto and Nicou fail to teach or suggest incorporating such a phosphoric surfactant of formula (I) into a dying composition based on 2-γ-hydroxypropyl-para-phenylenediamine, for the purpose of obtaining more homogeneous hair dyeing with improved selectivity” (p. 10).
However, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair and Carroll Co. v. Interchemical Corp., 325 US 327, 65 YSPQ 297 (1945). See also In re Leshin 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Accordingly, in this instance it would have been obvious to have used 2-γ-hydroxypropyl-para-phenylenediamine, as a para-phenylenediamine oxidation base of Hashimoto et al., since that compound is recognized to be suitable for that intended purpose as taught by Nicou et al.
Additionally, no patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See In re Sussman, 1943 C.D. 518; In re Huell mantel 139 USPQ 496; In re Crockett 126 USPQ 186.
ii) Applicant argues “neither reference describes the claimed 5-30% by weight of at least one non-silicone fatty substance” and the teaching in Hashimoto at paragraph [0151] “is not directed specifically to the claimed non-silicone fatty substances selected from mineral oils, C8-C30 fatty alcohols, and mixtures thereof, as recited in claim 1” (p. 10).
The Examiner disagrees.
The compositions of Hashimoto et al. comprise “at least one fatty substance other than fatty acid” (p. 9, para. [0149]), which may be present in an amount of “at least 10% . . . by weight relative to the total weight of the composition” (Id. para. [0151]). Fatty substances are “chosen from . . . fatty alcohols” (Id. para. [0152]), which includes “cetyl alcohol” (Id. para. [0156]), which is a C16 fatty alcohol. Accordingly, it would have been obvious for the compositions of Hashimoto et al. to comprise from 5% to 30% C8-C30 fatty alcohol.
There is no conditional use associated with the fatty alcohols in Hashimoto et al. Therefore, the disclosure of silicones at paragraphs [0171]-[0195] is not restrictive of use of other fatty substances, as postulated by applicant.
iii) Applicant further argues that the specification provides evidence of unexpected results suitable to overcome the art of record (p. 11-13).
Initially, it is noted that terms like “unexpected” and “surprising” have not been recited in applicant’s specification, let alone associated with applicant data. Therefore, the only indication that applicant’s data constitute an unexpected result is naked attorney argument and these statements are not evidence.
Applicant postulates, that the results at table 3 showing a combination of 2-γ-hydroxypropyl-para-phenylenediamine and ceteth 10-phosphate provided a smaller change in color compared to comparative formulations (see p. 21-23).
However, the compositions of Hashimoto et al. are useful for improving hair color, i.e. “there is a real need to develop dyeing compositions with improved efficiency to yield minimum degradation of treated keratinous substrates while achieving improved levels of coloring in both conventional application time” (p. 1, para. [0008]).
The artisan would have reasonably expected different results from the combination of different chemical compounds, especially given the variation in hair color and texture of the patient.
Accordingly, the artisan would have been expected to optimize combinations of oxidation bases and in an effort of achieving improved levels of coloring, as taught by Hashimoto et al. See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of "a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree." Compare In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967) (differences in properties cannot be disregarded on the ground they are differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) ("we generally consider a discussion of results in terms of ‘differences in degree’ as compared to ‘differences in kind’ . . . to have very little meaning in a relevant legal sense").
In this case, applicant results, showing marked improvement over results with other combinations of para-phylenendiamine and surfactant constitute a difference in degree from what is expected from the combination rather than a difference in kind, as required for a demonstration of unexpected results.
iv) Applicant argues that the rejection is rooted in improper hindsight (p. 14).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case the notion of using 2-γ-hydroxypropyl-para-phenylenediamine as an oxidation dye stems from Nicou et al. Further, the notion of combining a para-phenlyenediamine oxidation dyes with ceteth 10 phosphate, stems from Hashimoto et al.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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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
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