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 .
Information Disclosure Statements
Information Disclosure Statements (IDS) filed on 10/11/2023, 01/03/2025 and 02/26/2026 have been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Claims Status
Applicant's election with traverse of Group I, claims 21-36 and the species for composition of: hydrogen peroxide oxidant agent; sodium silicate as the silicate; ammonium bicarbonate as the bicarbonate; and potassium persulfate as the persulfate compound in the reply filed on 01/15/2026 is acknowledged.
The traversal is on the ground(s) that the method claims and composition claims are directed to a single inventive concept that can be examined together without imposing a distinct search or examination burden. Applicants argue that the Office has failed to show that Groups I and II do not have a special technical feature and that the search and examination would constitute as serious burden.
This is not found persuasive because per PCT Rule 13.1, the international application shall relate to a group of inventions so linked as to form a single general inventive concept or a “unity of invention” (see MPEP 1850). Per PCT Rule 13.2, “unity of invention” is fulfilled by defining a special technical feature that is shared amidst the claimed inventions. The Rule further specifies that “[t]he expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.” A lack of unity of invention determination begins with a consideration of the claims in light of the description and drawings. Lack of unity of invention may be directly evident “a priori,” or before considering any prior art when no special technical feature is common to each of the independent claims. Alternatively, lack of unity of invention may only become evident “a posteriori,” or after considering the claims in relation to the prior art. The technical feature defining groups I-III is to a composition comprising at least one oxidizing agent chosen from hydrogen peroxide, hydrogen peroxide generating systems other than peroxygenated salts or mixtures of two or more thereof, ammonium carbonate and at least one silicate present from 1-40% by weight of the total composition. This technical feature lacks novelty in the art as evidenced by Mintel Cream cited in the restriction requirement and Shinya et al. (JP2008143829) cited below. Based on the prior art, the common technical feature lacks novelty and since it is taught by the prior art the common technical feature does not rise to the level of a special technical feature. Accordingly, any subsequent patentably distinct invention lacks unity with the first group, see 37 CFR 1.1476(d).
Furthermore, per PCT rule 13.1 and 13.2 search burden is not a criterion for lack of unity of invention.
Regarding the species election Applicants argue that the Office has not shown that the disclosed species for chemical oxidizing agents silicates, bicarbonates, and persulfates lack unity of invention and the Office has not shown why a single general inventive concept does not exist among the alleged species from MPEP 1893.03(d). Applicants argue that the office has not shown that the cited species lack unity of invention.
This is not found persuasive because the species are deemed to lack unity of invention as they are not so linked as to form a single general inventive concept as per Rule 13.1. The species lack the same corresponding technical feature in view of the prior art which demonstrates that there is no novelty. Examiner has established that the species lack unity of invention in view of the cited refence to Mintel Cream bleach which discloses a combination of ammonium carbonate, sodium metasilicate and hydrogen peroxide thus demonstrating in view of the prior art that the species lack unity of invention.
Claim 25, 33, and 37-40 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/15/2026. The elected species is sodium silicate which is alkali metal silicate and not alkaline. Furthermore, magnesium carbonate is not elected as part of the invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 21-24, 26-32 and 34-36 are under current examination as directed to the elected species of a composition containing: hydrogen peroxide oxidizing agent; sodium silicate as the silicate; ammonium bicarbonate as the bicarbonate and potassium persulfate as the persulfate.
Claim Objections
Claim 36 is objected to because of the following informalities: Claim 36 should recite “further comprises” since the claim is adding at least one coloring agent. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 23 and 28 and 31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 23 recites “the total amount of chemical oxidizing agent(s) is from 1% to 12% by weight”. It is unclear if the claim refers to the at least one oxidizing agent of claim 1 or any oxidizing agent. Since claim 1 does not include peroxygenated salts it is unclear if peroxygenated salts can be present as the total amount of chemical oxidizing agents. For the purpose of examination, the claim will be interpreted as only the oxidizing agents of claim 1 which do not encompass peroxygenated salts. Similarly for claim 31, it is unclear if total amount of oxidizing agents is inclusive of peroxygenated salts or is meant to encompass just the oxidizing agents recited by claim 1 other than peroxygenated salts.
Claim 28 recites or a (C1-C4) alkyl group optionally substituted with a hydroxyl group. The parenthesis renders the claim indefinite because it is unclear if the claim requires an alkyl group genus or a type of alkyl group having C1-C4. It is suggested that Applicants can remove the parenthesis to overcome this rejection.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claim(s) 21-24, and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shinya et al. (JP2008143829).
Shinya et al teach a three part composition that is mixable which comprises sodium metasilicate (also known as a sodium silicate, meeting an alkali metal silicate) at about 6.67% by weight, see Example 4 (sodium metasilicate at Example 4 is present at 20% by weight of a total three part composition making up 300%) and page 4. Example 4 teaches hydrogen peroxide at 6.3% by weight (hydrogen peroxide is present at 16% by weight per 300% total 3 part composition) and ammonium carbonate at 0.16% by weight (ammonium carbonate is present at 0.5% by weight making up a total of 300% 3 part composition). The total amount of sodium metasilicate at 6.67% by weight anticipates the claimed amount of from 1 to 40% by weight and total amount of from 2-35% by weight. The total amount of hydrogen peroxide oxidizing agent anticipates the claimed amount of 1-12% by weight. The total amount of ammonium carbonate being 0.5% by weight anticipates the claimed range of 0.01-20%.
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.
Claims 21-24, 26-32 and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Lechner et al. (U.S. PgPub 2017/0266086) in view of Clarke et al. (JP4801113).
Lechner et al. teach oxidizing colorant compositions comprising hydrogen peroxide present from 0.5-20% by weight, see paragraph [0011] and [0022]. This amount of the chemical oxidizing agent overlaps and therefore renders obvious the claimed range of from 1-12% by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The composition can further comprise at least one ammonium compound of ammonium carbonate present from 1-50% by weight, see paragraphs [0001], [0168] and claim 11.This amount overlaps and therefore renders obvious the claimed total amount of ammonium carbonate ranging from 0.01-20% by weight. The at least one ammonium compound can comprise ammonium carbonate alone or a mixture which includes ammonium bicarbonate (alkaline bicarbonate having a formula of NH4+ HCO3-), see paragraph [0168] and claim 11. The ammonium compounds which includes ammonium bicarbonate and ammonium carbonate are present at a total amount from 1-50% by weight. Since oxidizing agent can be present from 1-12% by weight and the ammonium carbonate from 1-50% by weight, the amount of hydrogen peroxide oxidizing agent to ammonium carbonate meets at least weight ratio of 1 where each can be present from 1% by weight. The composition can comprise at least one solid inorganic alkalizing agent including sodium silicate (an alkali metal silicate) present from 10-60% by weight, see paragraphs [0001], [0163] and claim 13. This amount overlaps and therefore renders obvious the claimed range of from 1-40% by weight (instant claim 1) and at total amount of silicate being from 2 to 35% by weight (instant clam 26). Since ammonium carbonate can be present from 1-50% by weight and the inorganic sodium silicate can be present from 10-60% by weight, this meets a weight ratio of 1 since both compounds can be present at 10% by weight. The ready to use composition contains a pH from 8-11.5, see paragraph [0163]. This pH range overlaps the claimed range of from 8 to 11. The composition further contains an oxidation dye precursor which colors the keratin fibers thus is considered a coloring agent, see paragraphs [0140] and [0143]. The oxidation dye precursor can be present from 0.0002 to 30% by weight overlapping and rendering obvious the claimed range of less than 0.1% by weight. Lechner et al. teach that sodium silicate can be used singularly as the inorganic alkalizing agent, ese paragraph [0163] and claim 13. Thus, Lechner suggests embodiments absent magnesium carbonate.
Lechner et al. suggests an amount of ammonium carbonate from 0.01-20% by weight but does not teach a weight ratio of the total amount of ammonium carbonate to the amount of ammonium bicarbonate is from 0.06 to 20 or that the amount of ammonium bicarbonate is from 0.01 to 20% by weight.
However, Clarke et al. teach hair coloring compositions which comprise hydrogen peroxide as a source of oxidant present from 0.1-10% by weight, see abstract, pages 3, 8 and claim 1. A carbonate source which preferably includes ammonium carbonate can be present from about 0.1-15% by weight and an alkalizing source such as ammonium bicarbonate can be present from 0.1-10% by weight, see pages 3 and 8-9 and claim 1. The pH of the composition can be about 7.5-9.5, see claims 1 and page 3 and 10. A hair coloring composition having an oxidizing agent, source of carbonate and source of alkalizing agent and a radical scavenger including ammonium salts is taught by Clarke to provide low odor coloring that enables a reduced concentration of peroxides and reduction of hair fiber damage while delivering high lift, see pages 2 and 6. Clarke et al. teach that the composition is compatible with current dyes and dye precursor systems, as well as provides improved lift and lightning for blonde hues, superior dye adhesion and color, and improved gray hair A coating results, see page 2. Oxidizing hair coloring compositions with an oxidizing agent, source of carbonate ions and alkalizing agent with a radical scavenger which includes ammonia delivers low odor coloring composition that reduces the concentration of peroxide and reduces hair damage while delivering lift, see pages 2 and 6.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the ammonium carbonate of Lechner et al. at 0.1-15% by weight and the ammonium bicarbonate of Lechner et al. form 0.1-10% by weight as taught by Clarke et al. together with the hydrogen peroxide composition of Lechner et al. One of ordinary skill in the art would have been motivated to do so because Clarke et al. teach hair coloring compositions comprising 0.1-15% ammonium carbonate and from 0.1-10% ammonium bicarbonate with oxidizing agent and scavenger help provide low odor coloring compositions with reduction of hair damage.
Lechner et al. in view of Clarke et al. teach a composition having 0.1-15% by weight of ammonium carbonate and 0.1-10% by weight of ammonium bicarbonate. These amounts overlap and render obvious the claimed ratio of from 0.06 to 20 given each ingredient can be present at 0.1% by weight thus meeting a weight ratio of 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Lechner et al. (U.S. PgPub 2017/0266086) in view of Clarke et al. (JP4801113) as applied to claims 21-24, 26-32 and 35-36 above, and further in view of Schweinsberg et al. (United States Patent 8778032).
The teachings of Lechner et al. and Clarke et al. are discussed above.
Neither Lechner et al. nor Clarke et al. teach potassium persulfate as a persulfate which can be mixed with the hydrogen peroxide containing composition at less than 10% by weight.
Schweinsberg et al. teach that a combination of hydrogen peroxide with persulfate salts including potassium persulfate (also known as potassium peroxodisulfate) present from about 1-15% by weight, see column 23 lines 10-26 and column 24, lines 43-50. The persulfate salts are combined with hydrogen peroxide for hair that requires considerable lightening of very dark hair as hydrogen peroxide alone is insufficient for coloring that requires considerable lightening of very dark hair, see column 24, lines 43-55.
It would have been prima facie obvious to provide potassium persulfate with the hydrogen peroxide of Lechner et al. in order to provide sufficient lightening of very dark hair.
One of ordinary skill in the art would have been motivated to combine the hydrogen peroxide of Lechner et al. with potassium persulfate in order to lighten hair that is very dark.
There would have been a reasonable expectation of success because both Lechner et al. and Schweinsberg et al. teach hair coloring formulations which can comprise hydrogen peroxide.
Schweinsberg et al. teaches concentrations inclusive of 10% by weight or less given Schweinsberg teaches 0.1-15% of total persulfates can be used. This range overlaps a range of 10% or less (i.e. 0-10% by weight) and In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
Note: The instant claims are under current examination as directed to the elected species of: a composition which does contain: hydrogen peroxide oxidizing agent; sodium silicate as the silicate; ammonium bicarbonate as the bicarbonate and potassium persulfate as the persulfate. Application 18/267,207 is noted however explicitly excludes persulfates whereas the instantly elected invention is to a composition which contains persulfates.
Claims 21-24, 26-32 and 34-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.12533303 in view of Lechner et al. (U.S. PgPub 2017/0266086) in and Schweinsberge et al. (United States Patent 8778032).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Both the instant claims and that of Patent ‘303 recite compositions which include hydrogen peroxide, carbonates and bicarbonates with at least one silicate in overlapping ranges as Patent ‘303 recites 4-20% which is inclusive of the amount of silicate instantly claimed. The amount of carbonate overlaps the instantly claimed range. The pH of both Applications overlaps. The amount of oxidizing agent of hydrogen peroxide instantly claimed overlaps the 3.5-8% claimed in Patent ‘303. Both the instant claims and that of Patent ‘303 contain a persulfate at less than 10% by weight. The ratio of hydrogen peroxide to bicarbonate and the ratio of carbonate to bicarbonate and bicarbonates to silicates overlaps in both Applications.
The difference between the instant claims and that of Patent ‘303 is the recitation of the elected sodium silicate, ammonium carbonate, ammonium bicarbonate and potassium persulfate.
Lechner et al. teach oxidizing colorant compositions comprising hydrogen peroxide present from 0.5-20% by weight, see paragraph [0011] and [0022]. The composition can further comprise at least one ammonium compound of ammonium carbonate present from 1-50% by weight, see paragraphs [0001], [0168] and claim 11.This amount overlaps and therefore renders obvious the claimed total amount of ammonium carbonate ranging from 0.01-20% by weight. The at least one ammonium compound can comprise ammonium carbonate alone or a mixture which includes ammonium bicarbonate (alkaline bicarbonate), see paragraph [0168] and claim 11. The ammonium compounds which includes ammonium bicarbonate and ammonium carbonate are present at a total amount from 1-50% by weight rendering obvious the claimed amount from 0.01-20% by weight. Since oxidizing agent can be present from 1-12% by weight and the ammonium carbonate from 1-50% by weight, the amount of hydrogen peroxide oxidizing agent to ammonium carbonate meets at least a 1:1 weight ratio where each can be present from 1% by weight. The composition can comprise at least one solid inorganic alkalizing agent including sodium silicate (an alkali metal silicate) present from 10-60% by weight, see paragraphs [0001], [0163] and claim 13. This amount overlaps and therefore renders obvious the claimed range of from 1-40% by weight (instant claim 1) and at total amount of silicate being from 2 to 35% by weight (instant clam 26). Since ammonium carbonate can be present from 1-50% by weight and the inorganic sodium silicate can be present from 10-60% by weight, this meets a weight ratio of 1 since both compounds can be present at 10% by weight. The ready to use composition contains a pH from 8-11.5, see paragraph [0163]. This pH range overlaps the claimed range of from 8 to 11. The composition further contains an oxidation dye precursor which colors the keratin fibers thus is considered a coloring agent, see paragraphs [0140] and [0143]. The oxidation dye precursor can be present from 0.0002 to 30% by weight overlapping and rendering obvious the claimed range of less than 0.1% by weight.
Schweinsberge et al. teach that a combination of hydrogen peroxide with persulfate salts including potassium persulfate present from about 0.1-15% by weight. The persulfate salts are combined with hydrogen peroxide for hair that requires considerable lightening of very dark hair as hydrogen peroxide alone is insufficient for coloring that requires considerable lightening of very dark hair.
It would have been obvious to provide the bicarbonate of Patent ‘303 as ammonium bicarbonate and the silicate as ammonium silicate together with ammonium carbonate and potassium persulfate.
One would have been motivated to do so because Lechner teaches such components are part of compositions which change color of hair by dying or lightening the hair. One of ordinary skill in the art would have been further motivated to provide potassium carbonate for hair that is especially dark and requires considerable lightening.
Claims 21-24, 26-32 and 34-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31- 45 of copending Application No. 18876432(reference application) in view of Lechner et al. (U.S. PgPub 2017/0266086) and Schweinsberge et al. (United States Patent 8778032).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Both the instant claims and that of Application ‘432 recite compositions which include hydrogen peroxide, carbonates and bicarbonates with at least one silicate all in overlapping ranges. Both Applications contain less than 10% of persulfates. The ratio of the bicarbonates to the silicates overlaps and the ratio of the bicarbonates to hydrogen peroxide oxidizing agents overlaps the instantly claimed ratios. The ratios of the carbonate to bicarbonate overlaps the instantly claimed ratios.
The difference between the instant claims and that of Application ‘432 is the recitation of the elected species of ammonium carbonate, ammonium bicarbonate, sodium silicate and potassium persulfate, wherein the pH is from 8-11.
Lechner et al. teach oxidizing colorant compositions comprising hydrogen peroxide present from 0.5-20% by weight, see paragraph [0011] and [0022]. This amount of the chemical oxidizing agent overlaps and therefore renders obvious the claimed range of from 1-12% by weight. The composition can further comprise at least one ammonium compound of ammonium carbonate present from 1-50% by weight, see paragraphs [0001], [0168] and claim 11.This amount overlaps and therefore renders obvious the claimed total amount of ammonium carbonate ranging from 0.01-20% by weight. The at least one ammonium compound can comprise ammonium carbonate alone or a mixture which includes ammonium bicarbonate (alkaline bicarbonate), see paragraph [0168] and claim 11. The ammonium compounds which includes ammonium bicarbonate and ammonium carbonate are present at a total amount from 1-50% by weight rendering obvious the claimed amount from 0.01-20% by weight. Since oxidizing agent can be present from 1-12% by weight and the ammonium carbonate from 1-50% by weight, the amount of hydrogen peroxide oxidizing agent to ammonium carbonate meets at least a 1:1 weight ratio where each can be present from 1% by weight. The composition can comprise at least one solid inorganic alkalizing agent including sodium silicate (an alkali metal silicate) present from 10-60% by weight, see paragraphs [0001], [0163] and claim 13. This amount overlaps and therefore renders obvious the claimed range of from 1-40% by weight (instant claim 1) and at total amount of silicate being from 2 to 35% by weight (instant clam 26). Since ammonium carbonate can be present from 1-50% by weight and the inorganic sodium silicate can be present from 10-60% by weight, this meets a weight ratio of 1 since both compounds can be present at 10% by weight. The ready to use composition contains a pH from 8-11.5, see paragraph [0163]. This pH range overlaps the claimed range of from 8 to 11. The composition further contains an oxidation dye precursor which colors the keratin fibers thus is considered a coloring agent, see paragraphs [0140] and [0143]. The oxidation dye precursor can be present from 0.0002 to 30% by weight overlapping and rendering obvious the claimed range of less than 0.1% by weight.
Schweinsberge et al. teach that a combination of hydrogen peroxide with persulfate salts including potassium persulfate present from about 0.1-15% by weight. The persulfate salts are combined with hydrogen peroxide for hair that requires considerable lightening of very dark hair as hydrogen peroxide alone is insufficient for coloring that requires considerable lightening of very dark hair.
It would have been obvious to provide the bicarbonate of Application ‘432 as ammonium bicarbonate and the silicate as ammonium silicate together with ammonium carbonate and potassium persulfate.
One would have been motivated to do so because Lechner teaches such components are part of compositions which change color of hair by dying or lightening the hair. One of ordinary skill in the art would have been able to provide a pH of from 8-11.5 as Lechner teaches that ready to use compositions which comprise ammonium carbonate, ammonium bicarbonate and sodium silicate have this suitable pH range. One of ordinary skill in the art would have been further motivated to provide potassium carbonate for hair that is especially dark and requires considerable lightening.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-24, 26-32 and 34-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31- 45 of copending Application No. 18876564(reference application) in view of Lechner et al. (U.S. PgPub 2017/0266086) and Schweinsberge et al. (United States Patent 8778032).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Both the instant claims and that of Application ‘564 recite compositions which include hydrogen peroxide, carbonates and bicarbonates with at least one silicate all in overlapping ranges. Both Applications contain less than 5% of persulfates. The ratio of the bicarbonates to the silicates overlaps and the ratio of the bicarbonates to hydrogen peroxide oxidizing agents overlaps the instantly claimed ratios. The ratios of the carbonate to bicarbonate overlaps the instantly claimed ratios.
The difference between the instant claims and that of Application ‘564 is the recitation of the elected species of ammonium carbonate, ammonium bicarbonate, sodium silicate and potassium persulfate, wherein the pH is from 8-11.
Lechner et al. teach oxidizing colorant compositions comprising hydrogen peroxide present from 0.5-20% by weight, see paragraph [0011] and [0022]. The composition can further comprise at least one ammonium compound of ammonium carbonate present from 1-50% by weight, see paragraphs [0001], [0168] and claim 11.This amount overlaps and therefore renders obvious the claimed total amount of ammonium carbonate ranging from 0.01-20% by weight. The at least one ammonium compound can comprise ammonium carbonate alone or a mixture which includes ammonium bicarbonate (alkaline bicarbonate), see paragraph [0168] and claim 11. The ammonium compounds which includes ammonium bicarbonate and ammonium carbonate are present at a total amount from 1-50% by weight rendering obvious the claimed amount from 0.01-20% by weight. Since oxidizing agent can be present from 1-12% by weight and the ammonium carbonate from 1-50% by weight, the amount of hydrogen peroxide oxidizing agent to ammonium carbonate meets at least a 1:1 weight ratio where each can be present from 1% by weight. The composition can comprise at least one solid inorganic alkalizing agent including sodium silicate (an alkali metal silicate) present from 10-60% by weight, see paragraphs [0001], [0163] and claim 13. This amount overlaps and therefore renders obvious the claimed range of from 1-40% by weight (instant claim 1) and at total amount of silicate being from 2 to 35% by weight (instant clam 26). Since ammonium carbonate can be present from 1-50% by weight and the inorganic sodium silicate can be present from 10-60% by weight, this meets a weight ratio of 1 since both compounds can be present at 10% by weight. The ready to use composition contains a pH from 8-11.5, see paragraph [0163]. This pH range overlaps the claimed range of from 8 to 11. The composition further contains an oxidation dye precursor which colors the keratin fibers thus is considered a coloring agent, see paragraphs [0140] and [0143]. The oxidation dye precursor can be present from 0.0002 to 30% by weight overlapping and rendering obvious the claimed range of less than 0.1% by weight.
Schweinsberge et al. teach that a combination of hydrogen peroxide with persulfate salts including potassium persulfate present from about 0.1-15% by weight. The persulfate salts are combined with hydrogen peroxide for hair that requires considerable lightening of very dark hair as hydrogen peroxide alone is insufficient for coloring that requires considerable lightening of very dark hair.
It would have been obvious to provide the bicarbonate of Application ‘564 as ammonium bicarbonate and the silicate as ammonium silicate together with ammonium carbonate and potassium persulfate.
One would have been motivated to do so because Lechner teaches such components are part of compositions which change color of hair by dying or lightening the hair. One of ordinary skill in the art would have been able to provide a pH of from 8-11.5 as Lechner teaches that ready to use compositions which comprise ammonium carbonate, ammonium bicarbonate and sodium silicate have this suitable pH range. One of ordinary skill in the art would have been further motivated to provide potassium carbonate for hair that is especially dark and requires considerable lightening.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-24, 26-32 and 34-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31- 45 of copending Application No. 18876572(reference application) in view of Lechner et al. (U.S. PgPub 2017/0266086) and Schweinsberge et al. (United States Patent 8778032).
Claims 21-24, 26-32 and 34-36 are directed to an invention not patentably distinct from claims 31-45 of commonly assigned Application 18876572.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because:
Both the instant claims and that of Application ‘572 recite compositions which include hydrogen peroxide, carbonates and bicarbonates with at least one silicate all in overlapping ranges. Both Applications contain less than 5% of persulfates. The ratio of the bicarbonates to the silicates overlaps and the ratio of the bicarbonates to hydrogen peroxide oxidizing agents overlaps the instantly claimed ratios. The ratios of the carbonate to bicarbonate overlaps the instantly claimed ratios.
The difference between the instant claims and that of Application ‘572 is the recitation of the elected species of ammonium carbonate, ammonium bicarbonate, sodium silicate and potassium persulfate, wherein the pH is from 8-11.
Lechner et al. teach oxidizing colorant compositions comprising hydrogen peroxide present from 0.5-20% by weight, see paragraph [0011] and [0022]. The composition can further comprise at least one ammonium compound of ammonium carbonate present from 1-50% by weight, see paragraphs [0001], [0168] and claim 11.This amount overlaps and therefore renders obvious the claimed total amount of ammonium carbonate ranging from 0.01-20% by weight. The at least one ammonium compound can comprise ammonium carbonate alone or a mixture which includes ammonium bicarbonate (alkaline bicarbonate), see paragraph [0168] and claim 11. The ammonium compounds which includes ammonium bicarbonate and ammonium carbonate are present at a total amount from 1-50% by weight rendering obvious the claimed amount from 0.01-20% by weight. Since oxidizing agent can be present from 1-12% by weight and the ammonium carbonate from 1-50% by weight, the amount of hydrogen peroxide oxidizing agent to ammonium carbonate meets at least a 1:1 weight ratio where each can be present from 1% by weight. The composition can comprise at least one solid inorganic alkalizing agent including sodium silicate (an alkali metal silicate) present from 10-60% by weight, see paragraphs [0001], [0163] and claim 13. This amount overlaps and therefore renders obvious the claimed range of from 1-40% by weight (instant claim 1) and at total amount of silicate being from 2 to 35% by weight (instant clam 26). Since ammonium carbonate can be present from 1-50% by weight and the inorganic sodium silicate can be present from 10-60% by weight, this meets a weight ratio of 1 since both compounds can be present at 10% by weight. The ready to use composition contains a pH from 8-11.5, see paragraph [0163]. This pH range overlaps the claimed range of from 8 to 11. The composition further contains an oxidation dye precursor which colors the keratin fibers thus is considered a coloring agent, see paragraphs [0140] and [0143]. The oxidation dye precursor can be present from 0.0002 to 30% by weight overlapping and rendering obvious the claimed range of less than 0.1% by weight.
Schweinsberge et al. teach that a combination of hydrogen peroxide with persulfate salts including potassium persulfate present from about 0.1-15% by weight. The persulfate salts are combined with hydrogen peroxide for hair that requires considerable lightening of very dark hair as hydrogen peroxide alone is insufficient for coloring that requires considerable lightening of very dark hair.
It would have been obvious to provide the bicarbonate of Application ‘572 as ammonium bicarbonate and the silicate as ammonium silicate together with ammonium carbonate and potassium persulfate.
One would have been motivated to do so because Lechner teaches such components are part of compositions which change color of hair by dying or lightening the hair. One of ordinary skill in the art would have been able to provide a pH of from 8-11.5 as Lechner teaches that ready to use compositions which comprise ammonium carbonate, ammonium bicarbonate and sodium silicate have this suitable pH range. One of ordinary skill in the art would have been further motivated to provide potassium carbonate for hair that is especially dark and requires considerable lightening.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18876572 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 21-24, 26-32 and 34-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31- 45 of copending Application No. 188765914(reference application) in view of Lechner et al. (U.S. PgPub 2017/0266086) and Schweinsberge et al. (United States Patent 8778032).
Claims 21-24, 26-32 and 34-36 are directed to an invention not patentably distinct from claims 31-45 of commonly assigned Application 188765914.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Both the instant claims and that of Application ‘914 recite compositions which include hydrogen peroxide, carbonates and bicarbonates with at least one silicate all in overlapping ranges. Both Applications contain less than 5% of persulfates. The ratio of the bicarbonates to the silicates overlaps and the ratio of the bicarbonates to hydrogen peroxide oxidizing agents overlaps the instantly claimed ratios. The ratios of the carbonate to bicarbonate overlaps the instantly claimed ratios.
The difference between the instant claims and that of Application ‘914 is the recitation of the elected species of ammonium carbonate, ammonium bicarbonate, sodium silicate and potassium persulfate, wherein the pH is from 8-11.
Lechner et al. teach oxidizing colorant compositions comprising hydrogen peroxide present from 0.5-20% by weight, see paragraph [0011] and [0022]. The composition can further comprise at least one ammonium compound of ammonium carbonate present from 1-50% by weight, see paragraphs [0001], [0168] and claim 11.This amount overlaps and therefore renders obvious the claimed total amount of ammonium carbonate ranging from 0.01-20% by weight. The at least one ammonium compound can comprise ammonium carbonate alone or a mixture which includes ammonium bicarbonate (alkaline bicarbonate), see paragraph [0168] and claim 11. The ammonium compounds which includes ammonium bicarbonate and ammonium carbonate are present at a total amount from 1-50% by weight rendering obvious the claimed amount from 0.01-20% by weight. Since oxidizing agent can be present from 1-12% by weight and the ammonium carbonate from 1-50% by weight, the amount of hydrogen peroxide oxidizing agent to ammonium carbonate meets at least a 1:1 weight ratio where each can be present from 1% by weight. The composition can comprise at least one solid inorganic alkalizing agent including sodium silicate (an alkali metal silicate) present from 10-60% by weight, see paragraphs [0001], [0163] and claim 13. This amount overlaps and therefore renders obvious the claimed range of from 1-40% by weight (instant claim 1) and at total amount of silicate being from 2 to 35% by weight (instant clam 26). Since ammonium carbonate can be present from 1-50% by weight and the inorganic sodium silicate can be present from 10-60% by weight, this meets a weight ratio of 1 since both compounds can be present at 10% by weight. The ready to use composition contains a pH from 8-11.5, see paragraph [0163]. This pH range overlaps the claimed range of from 8 to 11. The composition further contains an oxidation dye precursor which colors the keratin fibers thus is considered a coloring agent, see paragraphs [0140] and [0143]. The oxidation dye precursor can be present from 0.0002 to 30% by weight overlapping and rendering obvious the claimed range of less than 0.1% by weight.
Schweinsberge et al. teach that a combination of hydrogen peroxide with persulfate salts including potassium persulfate present from about 0.1-15% by weight. The persulfate salts are combined with hydrogen peroxide for hair that requires considerable lightening of very dark hair as hydrogen peroxide alone is insufficient for coloring that requires considerable lightening of very dark hair.
It would have been obvious to provide the bicarbonate of Application ‘914 as ammonium bicarbonate and the silicate as ammonium silicate together with ammonium carbonate and potassium persulfate.
One would have been motivated to do so because Lechner teaches such components are part of compositions which change color of hair by dying or lightening the hair. One of ordinary skill in the art would have been able to provide a pH of from 8-11.5 as Lechner teaches that ready to use compositions which comprise ammonium carbonate, ammonium bicarbonate and sodium silicate have this suitable pH range. One of ordinary skill in the art would have been further motivated to provide potassium carbonate for hair that is especially dark and requires considerable lightening.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 188765914 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
Currently, no claims are allowed and claims 21-24, 26-32 and 34-36 are rejected.
Correspondence
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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