DETAILED ACTION
Applicants' arguments, filed 10/02/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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 .
Priority
The instant application claims foreign priority to FR2013725 filed 12/18/2020 and FR2013722 filed 12/18/2020. The instant application is a 371 of PCT/EP2021/086225 filed 12/16/2021.
Information Disclosure Statement
The information disclosure statement filed 10/11/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Foreign Patent Document No 9 has no English translation. Non-Patent Literature Documents No. 9-11, 15, 20-21, and 23-24 have no English translation provided.
The information disclosure statement filed 10/11/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Foreign Patent Documents No 8-9 have no copy of the document provided. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 23-37, 39, and 41 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention.
Iizaki et al (EP2702894A1) recites Examples 1-1 through 1-5 with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 9.7 % by mass. Iizaki et al (EP2702894A1) recites Tables 5-8 with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 11.5 % by mass and a pH of 9.2. Iizaki recites Table 9 Comparative Example 1-4 which with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 11.5 % by mass and a pH of 9.5, wherein the total mixed composition end amount of persulfate is, to the best of the examiners understanding, 0.1972%. Iizaki recites the kit contains three compositions, that the 3 compositions of the kit are combined and then applied to hair (Iizaki at Example 1-1, [0077-0081]).
Response to Arguments
Applicant's arguments filed 10/02/2025 have been fully considered but they are not persuasive.
Applicant argues that Iizaki does not teach less than 1% persulfate and therefore the anticipation rejection should be withdrawn.
The Examiner does not agree. Iizaki recites Table 9 Comparative Example 1-4 which with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 11.5 % by mass and a pH of 9.5, wherein the total mixed composition end amount of persulfate is, to the best of the examiners understanding, 0.1972%. More, specifically persulfates combine to be 58% of Component C which is then used in the end composition at 0.34 which is approximately 0.1972% persulfate. As such, Iizaki does teach an example with less than 1% persulfate. Therefore, the Applicant’s arguments are not persuasive and the anticipation rejection stands.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 23-37 and 39-42 are rejected under 35 U.S.C. 103 as being unpatentable over Iizaki et al (EP2702894A1).
Iizaki et al (EP2702894A1) recites Examples 1-1 through 1-5 with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 9.7 % by mass. Iizaki et al (EP2702894A1) recites Tables 5-8 with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 11.5 % by mass and a pH of 9.2. Iizaki recites Table 9 Comparative Example 1-4 which with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 11.5 % by mass and a pH of 9.5, wherein the total mixed composition end amount of persulfate is, to the best of the examiners understanding, 0.1972%. Iizaki recites the kit contains three compositions, that the 3 compositions of the kit are combined and then applied to hair (Iizaki at Example 1-1, [0077-0081]). Iizaki recites A hair dyeing or bleaching method using a hair cosmetic article, the hair cosmetic article including: a composition A' including an alkali agent and a powdery oxidation assistant; a composition B including an oxidizing agent; and a hair cosmetic applicator including a container part in which a hair cosmetic material produced by mixing the compositions A' and B and having a viscosity of 3 to 30 Pa·s at 30°C is to be contained; an application part by which the hair cosmetic material is applied to a hair-bundle; and an extension part having a liquid-leading passage which communicates the container part to the application part, wherein the application part includes a discharge port and a comb part, and the comb part includes a plurality of comb teeth which are disposed substantially annularly so as to surround the discharge port, the method comprising the steps 1) to 3) of: 1) a step of mixing the compositions A' and B in the container part to produce the hair cosmetic material in the container part; 2) a step of supplying the hair cosmetic material to the application part from the container part through the liquid-leading passage in the extension part using the hair cosmetic applicator, the hair cosmetic applicator being in the state in which the container part in which the hair cosmetic material is contained, the application part, and the extension part are assembled; and 3) a step of applying the hair cosmetic material supplied to the application part to hair (Iizaki at claim 10).
Iizaki is discussed in the Anticipation Rejection supra. Iizaki differ from the instant claims in this rejection insofar as it does not teach the combination of the of the instantly recited components with sufficient specificity for anticipation. However, given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art at a time prior to the filing of the present patent application and following the teachings of Iizaki to have selected and combined known components for their established functions with predictable results. MPEP §2143 and §2144.06(I).
Regarding instant claim 37, Iizaki teaches the use of magnesium carbonate. Magnesium carbonate is not present in the Examples and is therefore at a total amount of less then 5% by weight of the composition. Iizaki teaches that carbonates are used in a range from 0.1% to 10% by mass (Iizaki at [0047]), which overlaps with the instantly claimed range of less than 5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 40, Iizaki teaches the use of dyes in a range of 0.01% to 3% by mass of the composition (Iizaki at [0064]), which overlaps the instantly claimed range of less than 0.1%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 42, Iizaki recites the kit contains three compositions, that the 3 compositions of the kit are combined and then applied to hair (Iizaki at Example 1-1, [0077-0081]). Iizaki teaches that the composition may comprise a hair cosmetic applicator, and is in a kit in which the elements are contained in one package. Alternatively, the hair cosmetic article includes at least three elements of (i') a composition A' including an alkali agent and a powdery oxidation assistant, (ii) a composition B including an oxidizing agent, and (iv) a hair cosmetic applicator, and is in the state of a kit in which these elements are contained in one package (Iizaki at [0013]). The composition would combine the sodium carbonate, ammonium hydrogen carbonate and the silicate in one container and the hydrogen peroxide in the other container. Iizaki recites Table 9 Comparative Example 1-4 which with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 11.5 % by mass and a pH of 9.5, wherein the total mixed composition end amount of persulfate is, to the best of the examiners understanding, 0.1972%.
Response to Arguments
Applicant's arguments filed 10/02/2025 have been fully considered but they are not persuasive.
Applicant argues that Iizaki does not teach less than 1% persulfate and therefore the obviousness rejection should be withdrawn.
The Examiner does not agree. Iizaki recites Table 9 Comparative Example 1-4 which with i) hydrogen peroxide at 9% by mass ii) sodium carbonate at 0.9% by mass iii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass and iv) anhydrous sodium meta-silicate at 11.5 % by mass and a pH of 9.5, wherein the total mixed composition end amount of persulfate is, to the best of the examiners understanding, 0.1972%. More, specifically persulfates combine to be 58% of Component C which is then used in the end composition at 0.34 which is approximately 0.1972% persulfate. As such, Iizaki does teach an example with less than 1% persulfate. Therefore, the Applicant’s arguments are not persuasive and the obviousness rejection stands.
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.
Claim 23-37 and 39-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over;
claims 1-35 of U.S. Patent No. 7,399,319 B2;
claims 1-19 of U.S. Patent No. 9,993,412 B2;
claims 1-20 of U.S. Patent No. 10,010,495 B2;
claims 1-18 of U.S. Patent No. 10,052,273 B2;
claims 1-15 of U.S. Patent No. 10,524,992 B2;
claims 1-16 of U.S. Patent No. 10,537,511 B2;
claims 1-20 of U.S. Patent No. 10,524,996 B2;
claims 1-15 of U.S. Patent No. 10,524,998 B2;
claims 1-20 of U.S. Patent No. 10,716,744 B2;
claims 1-20 of U.S. Patent No. 11, 273,115 B2; and
claims 1-20 of U.S. Patent No. 11,413,225 B2;
in view of Iizaki et al (EP2702894A1).
The teachings of Iizaki et al, are discussed above. The reference patents all teach a method of dyeing hair by applying dye to hair. The reference patents all teach that the dye comprises a peroxide, a carbonate, a bicarbonate, and a silicate. The reference patents all do not require the use of persulfates.
It would be prima facie obvious to have combined the components of the reference patent with the components of Iizaki for the predictable result of a hair dye used in a method to dye hair. See MPEP 2144.06(I). One would have a reasonable expectation of success because both the reference patent and Iizaki teach a method of dyeing hair with a dye comprising a peroxide, a carbonate, a bicarbonate, and a silicate and each component is used for its intended purpose in the art of hair dyeing, See MPEP 2144.07.
Reference claims and prior art combine to produce a prima facie case of obviousness type non-statutory double patenting.
Claim 23-37 and 39-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over;
claims 25-44 of copending Application No. 18/267,207;
claims 21-40 of copending Application No. 18/266,903;
claims 25-26, 29-33, and 35-47 of copending Application No. 18/267,209;
claims 21-40 of copending Application No.18/266,900;
claims 29-48 of copending Application No.18/719,691;
claims 30-49 of copending Application No. 18/719,686;
claims 29-48 of copending Application No. 18/719,700;
claims 30-49 of copending Application No. 18/719,728; and
claims 31-49 of copending Application No. 18/876,591;
in view of Iizaki et al (EP2702894A1).
The teachings of Iizaki et al, are discussed above. The reference applications all teach a method of dyeing hair by applying dye to hair, The reference applications all teach that the dye comprises a peroxide, a carbonate, a bicarbonate, and a silicate. The reference applications all do not require the use of persulfates. More specifically, Application No. 18/267,209 requires less than 10% persulfates which overlaps the instantly claimed range of less than 1%. Application No.18/266,900 requires less than 5% persulfates which overlaps the instantly claimed range of less than 1%. Application No.18/719,691 requires less than 5% persulfates which overlaps the instantly claimed range of less than 1%. Application No. 18/719,686 requires less than 5% persulfates which overlaps the instantly claimed range of less than 1%. Application No. 18/719,700 requires less than 5% persulfates which overlaps the instantly claimed range of less than 1%. Application No. 18/719,728 requires less than 10% persulfates which overlaps the instantly claimed range of less than 1%. Application No. 18/876,591 requires less than 5% persulfates which overlaps the instantly claimed range of less than 1%.
It would be prima facie obvious to have combined the components of the reference applications with the components of Iizaki for the predictable result of a hair dye used in a method to dye hair. See MPEP 2144.06(I). One would have a reasonable expectation of success because both the reference applications and Iizaki teach a method of dyeing hair with a dye comprising a peroxide, a carbonate, a bicarbonate, and a silicate and each component is used for its intended purpose in the art of hair dyeing, See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
Reference claims and prior art combine to produce a prima facie case of obviousness type non-statutory double patenting.
Response to Arguments
Applicant requests the double patenting rejections be held in abeyance until allowable subject matter is indicated.
Since terminal disclaimers have not yet been filed, the non-statutory double patenting rejections are maintained.
Conclusion
No claims are presently allowable.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA MICHELLE PETRITSCH whose telephone number is (571)272-6812. The examiner can normally be reached M-F 08:30-17:00 EST ALT Fridays.
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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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/AMANDA MICHELLE PETRITSCH/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612