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 . Claims included in prosecution are claims 1-12 and 16-22.
Previous Rejections
Applicants' arguments, filed 12/29/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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
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.
1. Claim(s) 1-5, 8-11, 16, and 18-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lechner et al. (DE 102018203838, Sep. 19, 2019) (hereinafter Lechner) in view of Scheunemann et al. (US 2019/0216713, Jul. 18, 2019) (hereinafter Scheunemann) and Softer Hair (Color Lock Hair Treatments for Vibrant and Lasting Hair Color, January 24, 2018) (hereinafter Softer Hair) as evidenced by Dow (DOWSIL™ AP-8568 Amino Fluid TDS) (hereinafter Dow - TDS).
Lechner discloses a method for dyeing human hair (Abstract). The method utilizes pretreatment agent (A) and a coloring agent (B) which are applied to the hair (¶ [0001]). Pretreatment agent (A) contains at least one reactive organic silicon compound of the formula (I) and/or (II) while coloring agent (B) contains at least one reactive organic silicon compound of the formula (I) and/or (II), and additionally at least one colorant compound from the group of direct dyes and/or pigments (¶ [0008]). Suitable organic silicon compounds of formula(i) include (3-Aminopropyl) trimethoxysilane, (3-Aminopropyl) triethoxysilane, (2-Aminoethyl) trimethoxysilane, (2-Aminoethyl) triethoxysilane, (3-Dimethylaminopropyl) trimethoxysilane, (3-Dimethylaminopropyl) triethoxysilane, (2-dimethylaminoethyl) trimethoxysilane, and/or (2-Dimethylaminoethyl) triethoxysilane (satisfies claim 2-3 & 5) (¶ [0037]). Suitable organic silicon compounds of formula(ii) include 3- (Trimethoxysilyl)-N-[3-(trimethoxysilyl) propyl ]-1-propanamine, 3-(Triethoxysilyl)-N-[3-(triethoxysilyl) propyl ]-1-propanamine, N-Methyl-3-(trimethoxysilyl)-N-[3-(trimethoxysilyl) propyl ]-1-propanamine, N-Methyl-3-(triethoxysilyl)-N-[3-(triethoxysilyl) propyl ]-1-propanamine, 2-[Bis [3-(trimethoxysilyl) propyl ] amino ] ethanol, 2-[Bis [3-(triethoxysilyl) propyl ] amino ] ethanol, 3-(Trimethoxysilyl)-N, N-bis [3-(trimethoxysilyl) propyl ]-1-propanamine, 3-(Triethoxysilyl)-N, N-bis [3-(triethoxysilyl) propyl ]-1-propanamine, N1, N1-bis [3-(trimethoxysilyl) propyl ] -1,2-ethanediamine, N1, N1-bis [3-(triethoxysilyl) propyl ] -1,2-ethanediamine, N, N-bis [3-(trimethoxysilyl) propyl ]-2-propen-1-amine, and/or
N, N-bis [3-(triethoxysilyl) propyl ]-2-propen-1-amine (satisfies claim 2, 4, & 16) (¶ [0037]). The pretreatment agent (A) and/or the colorant (B) may also contain anionic surfactants (¶ [0128]). The pretreatment agent (A) and/or the colorant (B) can also contain additional ingredients, such polysiloxanes having organofunctional groups, such as substituted or unsubstituted amines (amodimethicone) and styrene copolymers (satisfies component b1 and claim 18-29) (¶ [0130]). A further agent A’ may also be used (¶ [0151]). Agent A’ may contain an acid such as citric acid (satisfies component b1) (¶ [0181]).
Lechner differs from the instant claims insofar as not disclosing a third step that comprises applying a separate agent (c) which comprises at least one amino-functional polyorganosiloxane and at least one polyvalent metal salt such as magnesium citrate.
However, Scheunemann discloses hair treatment products which comprise from about 0.001 to about 50% by weight of at least one amino-functional silicone, which lead to improved structural reinforcement of keratin fibers and improved hair care, and which reduce or prevent color washout in dyed hair (Abstract). The agent may be applied to wet or dry hair (¶ [0014]). Hair treatment agents include hair dyes, hair conditioners, hair masks, etc. (¶ [0020]). Suitable amino functional silicones include amodimethicone (¶ [0051]). The hair treatment agents may contain at least one anionic surfactant (¶ [0091]). The hair treatment agents may contain at least one bivalent or trivalent metal salt which lead to improved washout prevention (¶ [0138]). Particularly preferred salts include magnesium citrate (¶ [0141]).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have modified the method of Lechner to further comprise a step of applying a composition comprising at least one amino-functional silicone and at least one bivalent or trivalent metal salt motivated by the desire to achieve the improved structural reinforcement of keratin fibers and improved hair care, and reduction or prevention of color washout in dyed hair as taught by Scheunemann.
The combined teachings of Lechner and Scheunemann do not disclose wherein the maximum time between the application of agents (a) and (c) is 24 hours.
However, Softer Hair discloses that when color molecules are no longer protected within a sealed cuticle layer, color may fade quickly (Pg. 1). As such, colorists colorist may suggest some post-color treatments to seal lifted cuticles and prevent your new color from fading (Pg. 1). Color-lock treatments are intended for use immediately after coloring to complete the color service. Your stylist will apply the treatment to wet hair after rinsing out the dye (Pg. 2). Color-lock treatments help close the cuticle to lock in color, untangle knots, and make hair soft and glossy (Pg. 3).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to modify the method of Lechner in view of Scheunemann to ensure that the treatment agent of Scheunemann is applied immediately after rinsing out the dye of Lechner since such post color treatments are designed for such use and motivated by the desire to help close the hair cuticle to lock in color, untangle knots, and make hair soft and glossy as taught by Softer Hair.
Regarding claim 1 reciting wherein agent (b) contains no colorant compounds, claim also later recites “wherein at least one of the agents (a) or (b) further comprises at least one colorant compound selected from the group of pigments and/or direct dyes”. As such, the composition of Lechner in view of Scheunemann and Softer Hair satisfies the instant claim limitation.
Regarding claim 8, as discussed above agent (A) contains at least one at least one reactive organic silicon compound of the formula (I) and/or (II), meeting the recited limitation.
Regarding claim 9, as evidenced by Dow-TDS, the INCI name for DOWSIL AP-8568 Amino Fluid is amodimethicone. As noted by (¶ [0237]) of the instant specification, DOWSIL AP-8568 Amino Fluid is a suitable amino-functional polyorganosiloxane of the formula of formula (Si-I). As discussed above, suitable amino functional silicones for use in the hair treatment agent of Scheunemann include amodimethicone. As such, the prior art disclosure meets the instantly recited limitation.
Regarding claim 20, acidifying agents are not required by Lechner in view of Scheunemann and Softer Hair. Accordingly, a process free of such agents would have been obvious.
Regarding claim 21-22, as discussed above, Lechner in view of Scheunemann and Softer Hair disclose wherein color-lock treatments are intended for use immediately after coloring to complete the color service.
Therefore, the combined teachings of Lechner, Scheunemann, and Softer Hair render obvious claims 1-5, 8-11, and 16-22.
2. Claim(s) 6-7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lechner et al. (DE 102018203838, Sep. 19, 2019) (hereinafter Lechner) in view of Scheunemann et al. (US 2019/0216713, Jul. 18, 2019) (hereinafter Scheunemann) and Softer Hair (Color Lock Hair Treatments for Vibrant and Lasting Hair Color, January 24, 2018) (hereinafter Softer Hair) and further in view of Morita (US 2008/0138621, Jun. 12, 2008) (hereinafter Morita).
The teachings of Lechner, Scheunemann, and Softer Hair are discussed above.
The combined teachings of Lechner, Scheunemann, and Softer Hair differ from the instant claims insofar as not disclosing wherein agent (A) comprises or further comprises an organic silicone of formula (IV) such as methyltrimethoxysilane or ethyltrimethoxysilane.
However, Morita teaches a composite silicone rubber powder (Abstract). Suitable organic silicone compounds for use in the powder include methyltrimethoxysilane and ethyltrimethoxysilane (¶ [0025]). The powder may be used in cosmetic materials such as hair dyeing agents (¶ [0034]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Lechner in view of Scheunemann and Softer Hair discloses wherein the composition comprises organic silicon compounds. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Lechner in view of Scheunemann and Softer Hair to comprise methyltrimethoxysilane or ethyltrimethoxysilane, since they are known organic silicon compounds for use in hair dyeing agents as taught by Morita.
In regards to the composition comprising both methyltrimethoxysilane or ethyltrimethoxysilane and the organic silicones disclosed by Lechner above, since the use of various organic silicone compounds is known individually, the use of the individual species in combination would have been obvious since it is prima facie obvious to combine two compositions, each of which is taught to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea for combining them flows logically from their having been individually taught in the prior art. See MPEP 2144.06.
Therefore, the combined teachings of Lechner, Scheunemann, Softer Hair, and Morita render obvious claims 6-7 and 17.
3. Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lechner et al. (DE 102018203838, Sep. 19, 2019) (hereinafter Lechner) in view of Scheunemann et al. (US 2019/0216713, Jul. 18, 2019) (hereinafter Scheunemann) and Softer Hair (Color Lock Hair Treatments for Vibrant and Lasting Hair Color, January 24, 2018) (hereinafter Softer Hair) and further in view of Oguchi et al. (US 2010/0008875, Jan. 14, 2010) (hereinafter Oguchi).
The teachings of Lechner, Scheunemann, and Softer Hair are discussed above.
The combined teachings of Lechner, Scheunemann, and Softer Hair differ from the instant claims insofar as not disclosing wherein the composition comprises sulfated castor oil.
However, Oguchi teaches a composition for skin or hair (Abstract). The composition may comprise anionic surfactants (¶ [0043]). Suitable anionic surfactants include sulfated oils such as Turkey red oil (i.e., sulfated castor oil) (¶ [0053]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Lechner in view of Scheunemann and Softer Hair disclose wherein the washout prevention treatment agent may comprise anionic surfactants. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the treatment agent to comprise Turkey red oil (i.e., sulfated castor oil), since they it is a known anionic surfactant for use in hair compositions as taught by Oguchi.
Therefore, the combined teachings of Lechner, Scheunemann, Softer Hair, and Oguchi render obvious claim 12.
Response to Arguments
Applicant’s arguments with respect to claims 1-12 and 16-22 have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made. As discussed in the current rejections Lechner discloses a method for dyeing human hair which utilizes pretreatment agent (A) and an agent (B) which are applied to the hair; but does not expressly disclose wherein the method contains a third step of applying an agent (c) which comprises at least one amino-functional polyorganosiloxane and at least one polyvalent metal salt such as magnesium citrate. However, Scheunemann is relied upon for this teaching. Furthermore, Softer Hair’s teaching in reference to post-color treatments and their immediate use after coloring is applied to meet the requirements of the new limitation “wherein the time between the application of agents (a) and (c) is a maximum of 24 hours”.
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 1-12 and 16-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of U.S. Patent No. 12,201,712 B2 in view of Scheunemann et al. (US 2019/0216713, Jul. 18, 2019) (hereinafter Scheunemann).
Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose a method of dying keratinous material comprising applying organic silicon compounds (agent a) and sealing agents (agent b). The difference between the instant claims and the patented claims lies in the fact that the patented claims do not recite the use of at least one amino-functional polyorganosiloxane and at least one polyvalent metal salt.
However, Scheunemann discloses hair treatment products comprising at least one alpha-substituted aldehyde and at least one amino-functional silicon (Abstract). The use of said silicones lead to enormous improvements in the hair properties of treated hair and to greatly improved protection during oxidative treatment (¶ [0086]). Hair treatment agents are defined to include hair coloring shampoos and hair dyes (¶ [0020]). The hair treatment agents may contain at least one bivalent or trivalent metal salt which lead to improve washout prevention (¶ [0138]).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have incorporated amino-functional silicon and a bivalent or trivalent metal salt into the claimed invention motivated by the desire to achieve the improved hair properties and protection as we all as the improved washout prevention taught by Scheunemann.
The same rationale applies in rejecting the aforementioned claims over the following
U.S. Patents:
US 12090222 B2
US 11992546 B2
US 11957771 B2
US 11918665 B2
US 11883518 B2
US 11744789 B2
US 11654095 B2
2. Claims 1-12 and 16-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 7, 9-14, and 21-24 of copending Application No. 17/762,029 in view of Scheunemann et al. (US 2019/0216713, Jul. 18, 2019) (hereinafter Scheunemann).
Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose a method of dying keratinous material comprising applying organic silicon compounds (agent a) and sealing agents (agent b). The difference between the instant claims and the copending claims lies in the fact that the copending claims do not recite the use of at least one amino-functional polyorganosiloxane and at least one polyvalent metal salt.
However, Scheunemann discloses hair treatment products comprising at least one alpha-substituted aldehyde and at least one amino-functional silicon (Abstract). The use of said silicones lead to enormous improvements in the hair properties of treated hair and to greatly improved protection during oxidative treatment (¶ [0086]). Hair treatment agents are defined to include hair coloring shampoos and hair dyes (¶ [0020]). The hair treatment agents may contain at least one bivalent or trivalent metal salt which lead to improve washout prevention (¶ [0138]).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have incorporated amino-functional silicon and a bivalent or trivalent metal salt into the claimed invention motivated by the desire to achieve the improved hair properties and protection as we all as the improved washout prevention taught by Scheunemann.
This is a provisional nonstatutory double patenting rejection.
The same rationale applies in rejecting the aforementioned claims over the following
Applications (reference applications):
17/611,128
17/917,398
18/290,546
Response to Arguments
Regarding the rejection of claims 1-12 and 16-22 on the grounds of non-statutory double patenting, Applicants‘ arguments and the amendment have been fully considered and deemed unpersuasive for the reasons that follow. Applicants have not submitted arguments or documentation (i.e. terminal disclaimer) in response to the double patenting rejection(s). Therefore, the previous rejections of non-statutory double patenting are maintained.
Conclusion
Claims 1-12 and 16-22 are rejected.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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