DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ Request for Continued Examination (RCE), Amendments and Remarks, filed 4 June 2026, in the matter of Application N° 18/265,749. Said documents have been entered on the record. The Examiner further acknowledges the following:
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 4 June 2026 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No claims have been canceled. Claims 41-43 are newly added and supported by the originally-filed disclosure (see e.g., Spec., pg. 6, lines 5-8).
Claims 21, 28, 31, and 38-40 have been amended. Of particular note, are the amendments to claims 21 and 38 which add language to the claim defining the keratin fibers to be treated as having been “sensitized.” Applicants’ definition for the term “sensitized keratin fibers” is further added into the claims and is supported by the originally-filed disclosure (see e.g., Spec., pg. 3, lines 3-8).
No new matter has been added.
Thus, claims 21-23, 25-34, and 36-43 now represent all claims currently under consideration.
Information Disclosure Statement
No new Information Disclosure Statement(s) (IDS) have been filed for consideration.
Withdrawn Rejections
Rejection under Nonstatutory Double Patenting
Amendments to copending application 18/251,240 have been considered and are persuasive in overcoming the previously maintained rejection. Said rejection is withdrawn.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 4 December 2025 since the art that was previously cited continues to read on the amended and previously recited limitations.
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.
Claims 21-23, 26, 33, 36, and 37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-39 of copending Application No. 18/013,657 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims disclose a method of treating keratin fibers comprising administering a composition that comprises one or more amino acids selected from glycine, proline, methionine, serine, arginine, lysine, salts thereof, or mixtures of two or more thereof. The amount of the one or more amino acids present in the administered composition is taught as ranging from 5% to 20% by weight of the composition.
The reference claims additionally disclose including coloring agents and/or reducing agents in an amount/in amounts that total less than 0.1% by weight of the composition (see e.g., reference claims 27, 29-32).
Reference claim 26 recites administering a composition that also has a pH ranging from 2-11.
Reference claim 28 discloses that the composition comprises at least one organic solvent which is considered to encompass monoalcohols.
Reference claims 29-39 are considered to read on the limitations of instant claims 33 and 35-37; the key disclosures being directed to the added administration of oxidation dyes, direct dyes, etc., in the form of at least one chemical oxidizing agent. The reference claims also disclose the added step of further comprising applying a dyeing or bleaching composition, on which an oxidizing agent reads.
Were the copending application available as prior art, the Examiner submits that it would render the instantly claimed method prima facie obvious where it does not anticipate it.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-23 and 27-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 8, 9, 12, and 13 of Botto et al. (USPN 11,612,554 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims disclose the instantly recited method of treating keratin fibers comprising administering a composition comprising one or more such amino acids as arginine, lysine, and mixtures thereof. The practiced composition discloses containing at least 1% by weight of the amino acids within the composition, which is considered to read on and encompass the range recited by instant claim 23.
The practiced composition is also taught as comprising at least one silicone polymer, such as amino functional silicones, in an amount ranging from about 0.1% to about 10% by weight of the composition.
The reference lastly discloses that the applied composition comprises a conditioning agent in an amount ranging from about 0.01% to about 15% by weight of the composition. The “conditioning agent” is further defined by the reference as being embodied by such cationic polymers as polyquaternium-6 (aka “DADMAC”) (see e.g., col. 19, lines 53-59).
The reference patent is considered to teach and suggest the recited limitations of the above cited claims, and would thus, provide a person of ordinary skill in the art with a reasonable expectation of producing the instantly claimed method of treatment.
Claims 21 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Baghdadli et al. (USPN 10,772,819 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims disclose the instantly recited method of treating keratin fibers comprising administering a composition comprising one or more such amino acids as arginine, lysine, and mixtures thereof.
The reference patent is considered to teach and suggest the recited limitations of the above cited claims, and would thus, provide a person of ordinary skill in the art with a reasonable expectation of producing the instantly claimed method of treatment.
Claims 21 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of Voisin et al. (USPN 10,449,134 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims disclose the instantly recited method of treating keratin fibers comprising administering a composition comprising one or more such amino acids as glycine, serine, and mixtures thereof.
The reference patent is considered to teach and suggest the recited limitations of the above cited claims, and would thus, provide a person of ordinary skill in the art with a reasonable expectation of producing the instantly claimed method of treatment.
Response to Arguments
Applicants’ filed response to each of the above rejections on the grounds of nonstatutory double patenting over the copending/patented teachings has been fully considered, but is not persuasive.
A request to hold a rejection or rejections in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP §714.02 and 37 CFR 1.111(b)). Thus, the double patenting rejections of record have been maintained as no action regarding these rejections has been taken by Applicants at this time.
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 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 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. Applicants are 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.
Claims 21-23, 25-34, 36-41, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Mahadeshwar et al. (US Pre-Grant Publication Nº 2018/0116942 A1; IDS/ISR reference) in view of Legrand et al. (USPN 7,135,167 B2). [emphasis added to reflect newly added claims]
As amended, the instantly claimed invention is directed to a method of treating “sensitized” keratin fibers (hair) comprising applying to said fibers, a composition comprising: (a) at least one amino acid meeting the structural definitions for core formula (I1) (i.e., glycine, proline, methionine, serine, arginine, lysine, salts thereof, or mixtures of two or more thereof), and (b) from about 5% to about 20% of at least one monoalcohol, relative to the total weight of the composition. Said composition is applied as a pre-treatment for a process for dyeing or bleaching sensitized keratin fibers. The “sensitized” keratin fibers are chosen from keratin fibers embrittled by the action of chemical treatments including dyeing, bleaching, or permanent wave processes, keratin fibers embrittled by relaxing processes, and/or keratin fibers laden with metals, including copper.
Mahadeshwar discloses a method for treating the hair comprising: applying a chemical treatment composition to the hair (i.e., dyeing, bleaching etc.), and applying a composition to the hair before, during and/or after the chemical treatment. The applied composition is taught as comprising at least one amino acid (see e.g., claim 11). Claim 12 defines the amino acids as being selected from such residues as glycine, serine, proline, or mixtures thereof.
The applied composition is taught as further comprising at least one cationic polymer (see e.g., claim 11). Said cationic polymer is further defined as being chosen from homopolymers of diallyl dimethyl ammonium chloride (see e.g., claims 14 and 15). Paragraph [0064] discloses that the cationic polymer is most preferably present in an amount ranging from about 0.1% to about 3% by weight of the composition. Such is considered to teach the limitations recited by instant claims 27-29.
The pH of the resulting composition is further disclosed as ranging from about 2 to about 7, at its broadest, to most preferably ranging from about 5 to about 6.8. See ¶[0162]. The resulting formulation is also disclosed as conferring a pH value to the hair ranging from about 2 to about 7, at its broadest to about 4 to about 5, at its narrowest. See ¶[0032].
The limitations of claims 33 and 34 are also considered to be met in view of the applied composition of claim 11, since it contains no coloring agent, no reducing agent, and no anionic surfactant. The reference is acknowledged as disclosing that these ingredients are optional and in view of the disclosed composition, are considered to meet the recited limitation of being present in an amount of less than 0.1% by weight of the composition.
The limitations recited by claims 36 and 37 are considered to be met by ¶[0073] of the reference which discloses compounds defining the oxidizing agent, which are discussed further as functioning to lighten the color of the hair.
Paragraph [0030] is considered to disclose the limitations of claim 39 whereby application of the practiced composition, discussed above as being anticipated, is taught as having such improved effects as lightening the keratin fibers.
The limitations of claim 23 recite that the total amount of amino acid(s) is at least 5% by weight of the total composition (A). The reference discloses in ¶[0033] and ¶[0034] that the amino acid will be present in an amount ranging from about 0.01% to about 20% by weight at its broadest. At its narrowest, ¶[0034] discloses that the amino acid(s) will be present in an amount of less than about 10%, and in an amount greater than about 2%, thereby encompassing the range recited by claim 23 and recited by claim 40.
The limitations recited by claim 25 recite that the composition further comprises at least one monoalcohol chosen from C2 to C6, which is present in an amount of at least 5% by weight of composition (A). The administered composition of the method in claim 11, discussed above, also teaches optionally or further comprising a solvent (see e.g., claims 7 and 11). Paragraphs [0066]-[0068] further define the solvent as being an organic solvent which may be composed of such monoalcohols as ethyl alcohol, isopropyl alcohol, propyl alcohol, and so on. Paragraph [0068] discloses that the solvent may be present in amounts ranging up to about 90% and includes ranges such as about 5% to about 85%, from about 10% to about 80%, and from about 15% to about 75%, etc.
Such is considered to teach the amended limitations of independent claim 21, claim 25, as well as the range recited by claim 40.
Where the teachings of Mahadeshwar are deficient is with respect to disclosing the inclusion of at least one silicone compound as recited in claims 30-32 and 40. Legrand is considered to bridge this gap.
Legrand, like Mahadeshwar, is directed to cosmetic compositions that are used to treat keratin (hair) fibers through direct application (see e.g., Abstract). Here, the applied compositions comprise at least one oxidizing agent and at least one aminosilicone. The aminosilicone compound is taught as being of formula (I) or (II), the latter and more specific of which reads on Formula (F) of instant claim 31:
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Variables: p, q, R1, and R2 are all defined by Legrand as instantly claimed. Claims 35-37 define the composition as comprising the aminosilicone in increasingly narrower ranges, with the most preferred (narrowest) range being from 0.5 to 10% by weight of the composition. The foregoing is considered to read on the limitations recited by instant claims 30-32.
Legrand additionally discloses including amino acids, such as arginine, that are present in amounts of 5% by weight or more (see e.g., Example 3), thereby teaching and suggesting the limitations of claims 21-23 and the amino acid component of claim 40.
The reference additionally discloses the use of a cosmetically acceptable medium which is defined as being an aqueous medium comprising an organic solvent such as ethanol (see e.g., Abstract; col. 6, lines 42-47). The at least one solvent is disclosed as being present in an amount ranging from 0.5% to 20% by weight of the total composition (see col. 6, lines 53-56).
Such is considered to teach and suggest the limitations of claim 25.
Legrand also teaches that the practiced composition may comprise a cationic polymer in an amount ranging from 0.01% to 10% by weight of the composition at its broadest, and at its narrowest, from 0.1% to 3% by weight, relative to the total composition (see e.g., col. 7, lines 13-18). The compositional definition of the cationic polymer includes homopolymers and copolymers of dimethyldiallylammonium chloride (e.g., Merquat 100 and Merquat 550) (see e.g., col. 10, line 51 to col. 11, line 35; especially col. 11, lines 29-35). Such is considered to teach and suggest the limitations of instant claims 27-29.
The foregoing is lastly considered to teach and suggest the limitations of the recited composition of claim 40.
Where the teachings of Legrand may be considered deficient is with respect to the administration of the amino acid composition being administered separately from the composition comprising the composition comprising the oxidizing agent and the aminosilicone.
Despite this deficiency, the Examiner advances that the combined teachings of the references, would have provided the requisite guidance to a person of ordinary skill in the art and presented them with a reasonable expectation of success at producing the instantly claimed composition and arriving at the recited method of treatment.
The teachings of Mahadeshwar, as mentioned above, are solely deficient in that they do not disclose the inclusion of the recited aminosilicone component. Legrand is considered to rectify this deficiency disclosing that the practiced compositions not only include it, but also teach and suggest incorporating the remaining ingredients in the amounts as instantly recited. MPEP §2144.06(I) states that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In the instant case, the Examiner has provided the disclosures of the aforementioned references, both of which are directed to methods of treating the hair with compositions comprising the recited ingredients and both of which encompass dyeing or bleaching the user’s hair.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Response to Arguments
Applicants’ arguments with regard to the rejection of claims 21-23, 25-34, 36-41, and 43 under 35 USC 103(a) as being unpatentable over the combined teachings of Mahadeshwar et al. and Legrand et al. have been fully considered but they are not persuasive.
Applicants traverse the rejection on the grounds that the amended invention is applied as a pretreatment for a process for dyeing or bleaching sensitized keratin fibers which have been embrittled by the action of chemical treatments including dyeing, bleaching, or permanent wave processes, and/or by relaxing processes, and/or keratin fibers are laden with metals, including copper.
Applicants’ position is that neither of the cited references of the rejection teach or suggest treating sensitized keratin fibers with composition (A) as a pretreatment for a process for dyeing or bleaching sensitized keratin fibers.
The Examiner disagrees. Mahadeshwar not only discloses that its practiced compositions may be applied before, during or after chemical treatment, but also that the composition may be applied onto the hair as a pre-treatment composition before the hair is chemically treated (e.g., lightened, colored, and/or relaxed). See ¶[0181].
Applicants’ arguments, for the above reasons, are found unpersuasive. Said rejection is therefore maintained and extended to include newly added claims 41 and 43 which are directed to defining at least one of the amino acids of formula (I1) as glycine (see e.g., claims; ¶[0033]).
Claims 21-23, 25-34, 36-41, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US Pre-Grant Publication Nº 2009/0071494 A1; newly cited IDS reference). [emphasis added to reflect newly added claims]
The limitations of the amended claims are discussed above.
Nguyen discloses a method for inhibiting color fading in hair comprising applying a composition comprising at least one polyamine (a), a solvent (d), and at least one auxiliary component (e).
The polyamine is further defined as being selected from polylysine and as being present in a positive amount up to about 30% by weight of the composition (see e.g., claims 4 and 10). Solvent (d) is further defined as being present in an amount ranging from about 10% to about 90% of the composition (see e.g., claim 13). Paragraph [0070] further defines the solvent as typically including alcohols such as ethanol, propanol, and butanol, more specifically, ethanol or isopropanol.
Claims 15-18 are directed to the types and synchronicity of the color treatments of the hair with respect to the composition of claim 1. Therein, claim 15 discloses that the hair to which the composition of claim 1 is applied is naturally colored hair (i.e., applied before coloring/dye). Claim 16 discloses that the treated hair is colored (i.e., applied after coloring/dye). Claim 17 expressly discloses coloring/dyeing before treating with the composition of claim 1. Claim 18 discloses simultaneous treatment.
Claim 19 discloses that the administered dye may be an oxidative and/or direct dye.
Thus, in view of such disclosures as claim 15, the Examiner advances that the intended use of the administered composition of claim 21 as a “pretreatment” and the subsequent dyeing/bleaching step of claims 36 and 37 are met.
Further, in view of such disclosures as claims 16 and 17, the Examiner advances that the “sensitized keratin fibers” limitation of claim 38 is met. As defined by the instant specification (see pg. 3, lines 3-7) “sensitized keratin fibers” is inclusive of keratin fibers that have been subjected to such treatments as dyeing and/or bleaching.
Disclosure of polylysine in claim 4 meets the limitations of claim 22. Additional auxiliary components include amino acids such as glycine, proline, methionine, serine, arginine, and lysine. See ¶[0073].
Disclosure of the amount of polyamine in claim 10 meets the limitations of claim 23.
Regarding the limitations of claim 26, claim 2 additionally lists amongst the “at least one auxiliary ingredients” pH-adjusting agents. Suitable pH-adjusting agents are further defined in ¶[0119] as including potassium acetate, sodium carbonate, succinic acid, sodium citrate, etc., all of which have pH values that fall within the recited range of 2-11.
The limitations of claims 27-29 are considered to be met by the disclosure of diallyl dimethyl ammonium chloride as an auxiliary viscosity modifier (see e.g., claim 2 and ¶[0071] and ¶[0088]). Paragraph [0071] discloses that the at least one auxiliary ingredient may be present in a positive amount up to about 50% of the total composition.
The limitations of claims 30-32 are also met by claims 1 and 3 whereby the at least one polyamine is also defined as being inclusive of aminosilicone. Paragraph [0025] further defines the aminosilicone as being embodied by Dow Corning 2-8566 Amino Fluid, which is further defined by PubChem (pubchem.ncbi.nlm.nih.gov/compound/Amodimethicone-_3500-cst) as embodying the recited formula of instant claim 31. Paragraph [0071] again discloses that the at least one auxiliary ingredient is present in a positive amount up to about 50% of the total composition.
The limitations of claim 33 are considered to be met with the disclosure and definition of the dye component of claim 19, being an oxidative dye. As other dye components are provided as alternative options, the presence of a reducing agent or coloring agent in an amount of less than 0.1% as claimed is considered to be met since the reference does not require them.
A similar interpretation of the reference’s disclosure of the at least one auxiliary ingredient is considered to teach the limitations of claim 34. Since an anionic surfactant is taught as an option, it is also taught and suggested as not being required (i.e., 0% of the composition), thereby meeting the limitations of the claim.
The limitations of claim 39 are considered to be met by the foregoing disclosure wherein the practiced composition is applied to keratin fibers (see e.g., Abstract; claim 1). Further, ¶[0194] discloses that application of the practiced formulations improves hair properties such as color retention in both dyed and naturally colored hair.
The compositional limitations of claim 40 are considered to be met by the foregoing disclosure.
Based on the combined teachings of the reference, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the instantly claimed composition and arriving at the recited method of treatment. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Response to Arguments
Applicants’ arguments with regard to the rejection of claims 21-23, 25-34, 36-41, and 43 under 35 USC 103(a) as being unpatentable over the combined teachings of Nguyen et al. have been fully considered, but they are not persuasive.
Applicants’ initial traversal of the rejection is on the grounds that “[p]olylysine does not read on the amino acid of formula (I1) as recited in claim 21”.
The Examiner, in response, respectfully disagrees and maintains that the scope of composition (A) is such that it comprises at least one amino acid comprising formula (I1) is inclusive of polylysine. Therein, when p = 2, R may be represented by a (C1-C12) alkyl which is substituted with an amino group (i.e., lysine).
Applicants secondarily acknowledge the teachings of ¶[0073] (see also claim 2) which disclose individual amino acids such as glycine, lysine, etc. as auxiliary conditioning agents to the composition that is used to treat hair.
Applicants assert that the reference provides no teaching or suggestion select these specific amino acids in combination with a monoalcohol as a pretreatment composition for sensitized hair.
The Examiner disagrees and respectfully maintains the rejection for the reasons already of record. With regard to the amended “sensitized” limitation added to the keratin fibers already disclosed as being treated by Nguyen, the Examiner further submits that keratin fibers disclosed as being treated are inclusive of those that have already been dyed (see e.g., Abstract).
Applicants’ arguments, for the above reasons, are found unpersuasive. Said rejection is therefore maintained and extended to include newly added claims 41 and 43 which are both directed to defining formula (I1) as glycine.
New Rejections
Applicants’ amendments have necessitated the following ground(s) of rejection:
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 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 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. Applicants are 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.
Claims 21-23, 25, 26, and 38-43 are rejected under 35 U.S.C. 103 as being unpatentable over Lundmark et al. (USPN 6,365143 B1).
The limitations of the instantly claimed method are discussed above. Newly added claim 41 narrows the at least one amino acid defining formula (I1) to glycine and salts thereof or mixtures thereof. Claim 42 recites species of glycinate salts (e.g., sodium glycinate). Claim 43 narrows the formula to glycine.
Lundmark discloses an alkaline composition for use in the removal of mineral deposits from hair comprising an amino acetic acid and citric acid (see e.g., Abstract; claim 1). The amino acetic acid is further defined as being glycine (see e.g., claim 7).
Example 1 and 2 for instance, disclose the formation of a citrified sodium glycinate edetate complex (Ex. 1) and a clarifying shampoo containing a citrified sodium glycinate edetate complex (Ex. 2). The composition is further disclosed in Example 3 using the formula of Example 1 to treat damaged blonde hair. Green coloration is removed demonstrating copper mineral complex removal from the hair.
Regarding the administered composition recited by instant claim 21 and 40, the reference discloses that additional optional ingredients may be used in the formulation including benzyl alcohol (preservative) and ethyl alcohol (thickener/viscosity modifier). The amount of the optional ingredients used is taught as ranging from about 0.1-10 wt% of the composition and more preferably from about 0.5-5.0 wt% of the composition (see col. 9, lines 30-58).
Further regarding the recited composition of claim 40, the reference discloses using amounts of glycine such as 3.50% by weight of the composition, and more broadly from about 1.0-5.0 wt% of the composition (see e.g., Examples 1 and 2; claim 8). The practiced compositions are also taught as having a slightly alkaline pH, such as from about 7.01-8.5 (see e.g., claim 3).
The foregoing is considered to read on and teach the limitations recited by instant claims 21-23, 25, 26, and 38-43.
Based on the teachings of Lundmark, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the instantly claimed composition and arriving at the recited method of treatment. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615
Prosecution Insights