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 .
Election/Restrictions
Applicant's election with traverse of Group 1, claims 21-37, in the reply filed on 05/12/2026 is acknowledged. The traversal is on the ground(s) that “the methods and composition claims are directed to a single inventive concept and can be examined together without imposing a distinct search or examination burden. This is not found persuasive because unity was lacking, i.e., the technical feature of the combination of an oxidizing agent (hydrogen peroxide), a silicate, and a bicarbonate, was not a special technical feature, meaning, the combination ingredients, i.e. hydrogen peroxide, sodium silicate and bicarbonate, shared amongst each group, was shown in the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 38-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/09/2024 and 10/10/2023 has been considered in part by the examiner. The information disclosure statement filed 09/02/2005 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because certain references lack publication dates and/or English translation of foreign reference. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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) 21-33, 35-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sabelle et al., (WO 2017/134132) in view of Simonet et al., (US 7,879,113).
Sabelle et al. teaches, “a process for treating keratin fibres using said particular polyamine compounds in the presence of chemical oxidizing agents, and to a multi-compartment device comprising same” (Abstract).
“Oxidation dyeing processes thus consist in using with these dye compositions a composition comprising at least one oxidizing agent, generally hydrogen peroxide, under alkaline pH conditions in the vast majority of cases” (p. 1, lines 30-34).
Chemical oxidizing agents, in addition to hydrogen peroxide, include “persulfates” (p. 5, lines 20-24). Hydrogen peroxide is “preferably represent from 0.1% to 50% by weight . . . relative to the weight of the composition expressed as hydrogen peroxide, relative with the total weight of the composition containing them” (p. 7, lines 1-4; clm. 22-23); and persulfates, “such as sodium persulfate, potassium persulfate or ammonium persulfate, and mixtures thereof . . . may range from 0.01% to 20% by weight, preferably from 0.1% to 5% by weight, relative to the total weight of the composition used in the invention” (p. 7, lines 7-10). Here it would have been obvious for the amount of persulfate(s) to be less than 5%, as per claim 21, and less than 1% by weight, as per claim 35.
“The process according to the invention may also use one or more basifying agents other than the polyamine compounds of formula (I) as defined previously”, wherein “mineral basifying agent(s) are preferably chosen from . . . metal carbonates or bicarbonates . . . and mixtures thereof” (p. 18, lines 10-15).
Additional alkaline agents are chosen from “alkali metal silicates such as sodium metal silicates” (p. 18, line 19-22) (alkali metal silicate; clm. 26).
“Preferably, the pH of the cosmetic composition comprising ingredients i) and ii) is basic of alkaline, i.e. it has a pH greater than 7, preferably between 8 and 12 and more particularly inclusively between 8 and 11” (p. 25, lines 14-16; clm. 36).
Concerning claims 25, 28-29, 32-33, the adjustment of particular conventional working conditions of basifying agents (e.g., determining result effective amounts of the bicarbonates, silicates, and carbonates, especially within the ranges/ratios instantly claimed), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results, i.e. ensuring a pH within the range of 8 to 11. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)).
In regard to adding a coloring agent, as per claim 37, the prior art teaches, “It is also possible to add to these compositions direct dyes, which are coloured and colouring molecules that have affinity for fibres” (p. 1, lines 24-29). Further, “When they are present, the direct dye(s) more particularly represent from 0.001% to 10% by weight and preferably from 0.005 to 5% by weight relative to the total weight of the composition” (p. 24, lines 17-19). Accordingly, it would have been obvious for the compositions to comprise less than 0.1% by weight coloring agent.
Sabelle et al. does not teach a total amount of silicate from 1% to 40% by weight.
Simonet et al. teaches compositions “for dyeing or lightening human keratin fibers” comprising “from 0.5 to 15% by weight of at least one silicate” (Abstract; see also col. 10). Basifying agents include “alkali metal carbonates or bicarbonates such as sodium carbonate or potassium carbonate and sodium bicarbonate or potassium bicarbonate . . . “(col. 14, lines 45-48; clm. 24, 27, 30-31).
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to provide silicate in Sabelle et al. within the claimed range of from 1% to 40% since amounts of 0.5 to 15% silicate was found to be suitable for use in hair dyeing or lightening compositions, as taught by Simonet et al.
The prior art is not anticipatory; however, in view of its teachings, it would have been obvious to a person having ordinary skill in the art to combine at least one chemical oxidizing agents, e.g. hydrogen peroxide, at least one bicarbonate, at least one silicate, and at least one persulfate, in a method for lightening keratin fibers, with silicates falling within the claimed range of from 1% to 40% by weight, and less than 5% by weight of persulfates, in view of the combination of Sabelle et al. and Simonet et al.
2) Claim(s) 25, 32, 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sabelle et al., (WO 2017/134132) in view of Simonet et al., (US 7,879,113) as applied to claims 21 and 30 above, and further in view of Wossene et al., (WO 2017/096005).
The combination of Samelle et al. and Simonet et al., which is taught above differ from claims 25, 32, 34 insofar as it does not teach a concentration range for bicarbonate and carbonate, nor the use of magnesium carbonate.
Wossene et al. teaches hair treating compositions comprising “at least one cosmetically acceptable ingredient selected from the group including but not limited to silicones, reducing agents, oxidizing agents, conditioning agents, humectants, pH adjusting buffers, petrolatum thickeners, mineral oils, emulsifiers, fragrances, and preservatives . . .” (p. 3, para. [0013]). The compositions have “a pH of about 5 to about 11” (Abstract).
In regard to pH maintenance, the compositions comprise “at least one organic or inorganic base in the concentration range of from about 0.1 to about 20 wt.% of the total composition”, wherein suitable bases include “organic or inorganic carbonates or bicarbonates selected from . . . magnesium carbonate . . .” (p. 9, para. [0047]).
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to use carbonates and/or bicarbonates of Samelle et al. within the claimed range of 0.01 to 20%, including having magnesium carbonate present in an amount of less than 5% by weight, since amounts of about 0.1 to about 20 wt%, for carbonates and bicarbonates, are recognized as suitable for maintaining hair care compositions within a pH range of 8-11, as taught by Wossene et al.
Nonstatutory Obvious-type 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
1) Claims 21-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-37, 39-41 of copending Application No. 18/266,902 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a method of lightening keratin fibers comprising applying at least one chemical oxidizing agent, at least one carbonate, bicarbonate, at least one silicate, and persulfate in an amount of less than 5%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2) Claims 21-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 37-39 of copending Application No. 18/266,903 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a method of treating keratin fibers comprising applying at least one chemical oxidizing agent, at least one carbonate, at least one silicate, and persulfate in an amount of less than 5%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
3) Claims 21-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,533,303. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a method of lightening keratin fibers comprising applying at least one chemical oxidizing agent, at least one carbonate, bicarbonate, at least one silicate, and persulfate in an amount of less than 5% (claim 12).
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
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