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 .
New Examiner of Record
The new examiner of record, is Erin Hirt.
Election/Restrictions
Applicant's election with traverse of group I, claims 1-14, and 17-20 in the reply filed on 08/28/25 is acknowledged.
Claims 1-14, and 17-20 are being examined in this office action. The traversal is on the ground(s) that examining the two groups of invention would not be a serious search burden for the examiner. This is not found persuasive because firstly, the instant invention is a 371 invention and serious search burden is not a requirement for a 371 restriction. The requirement for a 371 restriction is lack of unity/special technical feature which links the groups of invention. Thus, applicant’s grounds of traversal are not persuasive and the restriction requirement is proper because Cope in view of RD65204 as Cope teaches the claimed composition comprising the claimed a, b, and c, and wherein the compositions contain the same less than 5 wt% water, and teaches wherein the claimed c can be mannitol. However, Cope teaches higher amounts of mannitol, but teaches these amounts can be optimized and RD65204 teaches bleaching compositions comprising overlapping amounts of humectants (E.g. sorbitol) and as such it would be obvious to optimize the amounts of mannitol to read on the claimed amounts since generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (group II, claims 15-16 drawn to a method for bleaching hair) there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/28/25.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 3 is objected to because of the following informalities: the claim should recite …selected from metasilicates, carbonates, bicarbonates, alkali salts, earth alkali salts, and mixtures thereof.
Claim 4 is objected to because of the following informalities: the claim is missing a space between agent(s)selected.
Claim 5 is objected to because of the following informalities: it recites one or more compound but should recite one or more compound(s).
Claim 11 is objected to because of the following informalities: the claim states “of 10” which is missing the word “claim” before the “10”. The claim should also recite compound(s) instead of compound since it appears to depend from 10. Rewriting the claim as follows would make the claim read better: The bleaching composition A of claim 10, wherein the compound(s) according to group d) is selected from…vegetable oils, silicones, hydrocarbon-based products, and mixtures thereof.
Claim 12 is objected to because of the following informalities: the claim should recite “the compound(s)” instead of compounds.
Claim 18 is objected to because of the following informalities: the claim should recite “the compound(s)” instead of the compounds.
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 3-4, 14, 17-18, and 20 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 3 has internal disagreement and as such is indefinite. Claim 3 recites the limitation "the compounds according to group b) of the bleaching composition A are inorganic alkalizing agent(s)." The term "the compounds according to group b)"means that there is more than one alkalizing agent and the term "inorganic alkalizing agent(s)" allows for one alkalizing agent. Thus, the terms are contradictory and it is unclear if applicants want only one or more than one alkalizing agent? To obviate this issue, it is suggested for the claim to recite the compound(s) according to group b)…
Claim 4 has internal disagreement and as such is indefinite. Claim 4 recites the limitation "the compounds according to group b) of the bleaching composition A are organic alkalizing agent(s)." The term "the compounds according to group b)"means that there is more than one alkalizing agent and the term "inorganic alkalizing agent(s)" allows for one alkalizing agent. Thus, the terms are contradictory and it is unclear if applicants want only one or more than one alkalizing agent? To obviate this issue, it is suggested for the claim to recite the compound(s) according to group b)…
Claim 4 as written does not make sense. The claim reads “are same or different H, from C1 to C4, C3 to C4 unsaturated alkyl…” Specifically, from C1 to C4 what? Is this supposed to go along with the unsaturated alkyl, the examiner suspects that it does not go with this group as you cannot have a C1 unsaturated alkyl group singly bound to nitrogen, but this is the next group listed and as such it is completely unclear what C1 to C4 is supposed to describe/claim. The examiner suggests rewriting this part of the part of this claim to read as follows and fixing the C1 to C4 language within this rewritten claim which together would overcome this rejection and make the claim read better.
…wherein R4, R5, and R6 are independently of each other selected from the group consisting of H, from C1 to C4 ??? (whatever this is supposed to be as it is missing from applicant’s claim as currently written, e.g. alkyl), C3 to C4 unsaturated alkyl, C3 to C4 branched alkyl, C1 to C4 hydroxyl alkyl, C3 to C4 unsaturated hydroxyl alkyl, C3 to C4 branched hydroxyl alkyl, with the proviso that at least one of R4, R5 or R6 is different from H.
Claim 14 is indefinite because it recites –a second aqueous oxidizing composition. However, by saying a second aqueous oxidizing composition appears to signal that there is a first aqueous oxidizing composition but no other oxidizing composition is named or disclosed in any of the claims. Thus, it is unclear if there is a first oxidizing composition or where this first aq. oxidizing composition is, in order to have a second aq. oxidizing composition or if applicants actually meant a second separate composition from the bleaching composition A of claim 1, since the kit also contains a third composition. The examiner believes applicants intend to have a first composition that is separate that comprises the bleaching composition, a second separate composition comprising the aqueous oxidizing composition B which comprises hydrogen peroxide having the claimed pH range, and a third separate composition comprising one or more dye(s) and as such this is how the claim is being interpreted, i.e. that the second is supposed to refer to a different separate composition that comprises an aqueous composition B, comprising hydrogen peroxide, not a second aqueous oxidizing composition which implies that there is a first aqueous oxidizing composition. The examiner requests applicant’s clarify this in their next response.
Claims 17-18, and 20 are also rejected because they depend from the above rejected claims and do not resolve the ambiguities of these claims.
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.
Claim(s) 1-3, 5-6, 8, 13, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cope et al. (US5294436), and further in view of RD652044.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claim 1-3, 6, 8, 13, and 17, Cope teaches dry powdered hair bleaching compositions (which therefore contain less than 5 wt% water as claimed) comprising applicant’s a) specifically potassium and ammonium persulfate salts, b) alkalizing agents, specifically sodium metasilicate, and c) sorbitol, mannitol, xylitol or sucrose as humectants, wherein the total concentration of c) is higher than instantly claimed, not specifically disclosed but in the example/Table A it is 0.995 wt% based on the total weight of the bleaching composition though Cope explicitly says the amount of the sorbitol (humectant) can be varied to bring the formulations to 100%, and wherein a) is present in amounts of ~60 wt% based on the total weight of the bleaching composition (See entire document; abstract; Table A; claims; Col. 3, ln. 58-Col. 5, ln. 27; Col. 1, ln. 53-57; Col. 1, ln. 60-Col. 2, ln. 37).
Regarding claim 5, Cope teaches wherein applicant’s b) is present in amounts of 12.94 wt% based on the total weight of the bleaching composition (See entire document; abstract; Table A; claims; see also sections cited above).
Regarding claim 13, as discussed above Cope teaches applicant’s claimed formulation A, and further teaches this is formulated a two part composition wherein the second phase B is an aqueous solution of the oxidant hydrogen peroxide which is applied separately from composition A, e.g. as a second step/part two of the hair bleaching process/part two of the bleaching composition wherein the aqueous hydrogen peroxide solution is sprayed onto the hair after the application of the composition A and Cope specifically teaches that it is intended to package the hydrogen peroxide/aqueous hydrogen peroxide and the dry powder composition A separately and sell them as units for use together(See entire document; abstract; Table A; claims; Col. 4, ln. 21-45; Col. 3, ln. 58-Col. 5, ln. 27; Col. 1, ln. 53-57; Col. 1, ln. 60-Col. 2, ln. 37; Col. 1, ln. 60-Col. 2, ln. 37; Col. 3, ln. 3-23; pg. 3, ln. 50-57).
Regarding claim 19, Cope does teach wherein the oxidizing agent/hydrogen peroxide composition pH is acidic (this is however a property of aqueous hydrogen peroxide solutions which typically have pH of 3-6, e.g. 4.5 depending on concentration of hydrogen peroxide) and as such would read on the claimed range of pH 1-6 which is activated by the base in the bleaching composition which raises the pH which is why the compositions are kept separately when sold, Cope does teach having their dry powder composition which renders obvious the composition of claim 1 as discussed above packaged separately from the hydrogen peroxide composition for selling, e.g. a kit (See abstract; claims; Table A; Col. 2, ln. 18-30; Col. 3, ln. 58-Col. 4, ln. 33).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)/Finding of prima facie obviousness Rationale and Motivation (MPEP 2142-2143)
Regarding the instant claims 1-3, 5-6, 8, 13, 17, and 19, Cope does not teach any examples wherein the component c) is mannitol and is present in the claimed amounts or wherein the c) is mannitol thought they clearly teach that c) can be mannitol as discussed above as they teach that mannitol, sorbitol and xylitol are alternatives for one another, and it would be obvious to optimize the amounts of mannitol in the composition of Cope because Cope teaches that the amounts of the humectant can be optimized. Especially since RD652044 (See English abstract) teaches bleaching powder for solutions for hair which comprise 0.1-5% sorbitol/humectant (English abstract). Thus, it would be obvious to firstly select mannitol for use in the compositions of Cope and then to optimize the amounts of mannitol used in the composition to be the instantly claimed amounts in order to afford the most moisturizing and effective bleach powder formulation for bleaching hair in order to provide the most effective bleaching of hair while reducing/limiting the damage to the hair done by the bleaching process based on the combined teachings of Cope and RD652044. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 4, 14, 18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cope et al. (US5294436), RD652044 as applied to claims 1-3, 5-6, 8, 13, 17, and 19 above and further in view of Glenn et al. (US20080087294).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the composition of claims 1-3, 5-6, 8, 13, 17, and 19 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 4 and 18, Cope does not teach wherein the alkalizing agent is other than sodium metasilicate, specifically the claimed amines, more specifically the claimed monoethanolamine. However, this deficiency in Cope is addressed by Glenn.
Glenn teaches that various alkalizing agents are known in the art to be used in/with hair bleaching compositions. Glenn teaches that the claimed sodium metasilicate and the claimed monoethanolamine are both known effective alkalizing agents for hair among others and are alternatives for the same purpose and can be substituted for one another (See [0091-0092]).
Regarding claims 14 and 20, Cope does not specifically teach having their composition as a kit of parts, specifically as the claimed individually packaged 3 parts comprising the composition of claim 1 and a second composition with the hydrogen peroxide and a third composition comprising one or more dyes, specifically one or more oxidative dyes or direct dye(s), Cope does teach wherein the oxidizing agent/hydrogen peroxide composition pH is acidic (this is however is a property of aqueous hydrogen peroxide solutions which typically have pH of 3-6, e.g. 4.5 depending on concentration of hydrogen peroxide) and as such would read on the claimed range of pH 1-6 which is activated by the base in the bleaching composition which raises the pH which is why the compositions are kept separately when sold, Cope does teach having their dry powder composition which renders obvious the composition of claim 1 as discussed above packaged separately from the hydrogen peroxide composition for selling, e.g. a kit (See abstract; claims; Table A; Col. 2, ln. 18-30; Col. 3, ln. 58-Col. 4, ln. 33).
Glenn teaches that it is known to form kit of parts with hair treating compositions specifically compositions which comprise alkalizing agents which are separated from the hydrogen peroxide oxidizing agent, and wherein the kits can comprise various hair care compositions packaged separately for use, e.g. wherein the kit can comprise an individually packaged composition comprising an oxidizing agent and an individually packaged composition comprising an alkalizing agent. Preferably said oxidizing agent is hydrogen peroxide. More preferably, at least one of said individually packaged hair treatment composition comprises a persulfate salt. Or wherein the kit-of-parts may comprise at least one or more individually packaged hair treatment compositions comprising shampoo compositions, conditioning compositions, styling compositions, hair colourant compositions, hair bleaching, highlighting compositions or combination thereof. In one embodiment of the present invention, a first container may comprise an oxidative dye precursors and an alkalizing agent whereas a second container may comprise an oxidizing agent. In certain other embodiments of kit-of-parts, a first container may comprise an ammonium ion source and a second container may comprise an oxidizing agent. Additional containers may be present in the kit-of-part, such as individually packaged composition comprising additional components such as oxidising agents, conditioners, chelants, radical scavengers, solvents, direct dyes, shampoo, buffering agents, colouring agents thickeners, enzymes, anionic, non-ionic, amphoteric and cationic surfactants, carriers, antioxidants, stabilizers, perfumes, masking fragrances, herb and plant extracts, pearlescent, opacifiers, hair swelling agents and/or polymers, humectants, moisturizers, viscosity enhancers, gelling agents, chelators, UV filters, antimicrobials, preservatives, proteins or mixtures thereof (claims; [0134-0137]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed a kit comprising the bleaching composition separate from the oxidizing composition as is taught by Cope and to add the claimed direct dye or oxidative dye as a third composition in a kit for sale because Cope teaches wherein their powdered composition which renders obvious the composition of claim 1 as discussed above and incorporated herein can be/is packaged for sale separately from the hydrogen peroxide solution which is used to activate the powder so that the powder remains stable until applied to the hair and activated with the hydrogen peroxide. One of ordinary skill in the art would want to add a third composition, specifically the claimed direct dye or oxidative dye to the bleaching kit of Cope because Glenn teaches that it is known to form kits with dyes, specifically direct dyes and oxidative dyes and hair bleaching compositions, etc. and that it is known to provide containers of all needed ingredients for a given hair treatment within a kit of parts, e.g. one could provide the bleaching composition of claim 1 in one container and the hydrogen peroxide activation solution in a second container and then a direct dye for achieving the desired color after the bleaching process has been accomplished, e.g. for unnatural hair colors (e.g. purple, blue, etc.) it is routine to bleach the hair first and then follow the bleaching treatment with a direct dye with the desired color, e.g. purple, blue, etc. Thus, it would be obvious to package all of the necessary compositions for achieving a desired hair color, e.g. bleaching composition, activator and direct dye together for sale for ease of purchasing and that way the user knows they have all of the necessary components within the kit to achieve their desired hair color result.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cope et al. (US5294436), RD652044 as applied to claims 1-3, 5-6, 8, 13, 17, and 19 above and further in view of Neuba et al. (US20150272845).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the composition of claims 1-3, 5-6, 8, 13, 17, and 19 as discussed above and incorporated herein.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 10-12, The combined references, specifically Cope, do not teach wherein their bleaching compositions comprise the claimed lipophilic compounds, e.g. fatty alcohols in the claimed amounts. However, these deficiencies are addressed by Neuba.
Neuba teaches that lipophilic components, specifically the claimed fatty alcohols, are useful for incorporating into solid (e.g. powder) and/or pasty hair bleaching compositions in amounts of 0.3-3.4 wt% based on the total weight of the bleaching agent which helps to reduce ammonia odor (see entire document; abstract; claims; [0009]; [0011]; [0019-0020]; [0024-0026]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have incorporate the claimed lipophilic compounds, specifically fatty alcohols in the claimed amounts into the bleaching powder formulations of Cope and the combined references in order to develop the instantly claimed composition because Neuba teaches that the claimed fatty alcohols in the claimed amounts are useful for reducing ammonia odor when using the bleaching compositions. Thus, it would be obvious to add the claimed fatty alcohols in the claimed amounts to Cope in order to provide compositions with reduced ammonia odor as is taught by Neuba.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 1-3, 5-6, 8-13, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pratt et al. (EP3040065) and further in view of Cope et al. (US5294436).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-3, 5, 8-13, 17, and 19, Pratt teaches a powdered and/or paste hair bleaching/oxidative compositions comprising a powder/paste phase comprising the claimed ammonium and sodium persulfates which read on applicant’s a), in amounts of 40% by weight of the oxidizing/bleaching composition, and sodium metasilicate which reads on applicant’s b) in amounts of 10% by weight, and paraffin oil which reads on the hydrophobic/lipophilic component, specifically hydrocarbon-based products of applicant’s d) in amounts of 28.5 wt% and they further teach more powdered examples which can contain 8.5% wt% of paraffin oil, and wherein they add sugars to the separate hydrogen peroxide solution composition prior to application to the hair and wherein the aqueous hydrogen peroxide solution has the claimed pH (See entire document; Examples 10-11, Example 3; claims; [0002]; [0010-0011]).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-3, 5-6, 8-13, 17, and 19, Pratt does not teach wherein their oxidizing composition comprises the claimed mannitol or xylitol, specifically mannitol. However, this deficiency is addressed by Cope.
Regarding claims 1-3, 5-6, 8-13, 17, and 19, Cope teaches dry powdered hair bleaching compositions (which therefore contain less than 5 wt% water as claimed) comprising applicant’s a) specifically potassium and ammonium persulfate salts, b) alkalizing agents, specifically sodium metasilicate, and c) sorbitol, mannitol, xylitol or sucrose as humectants, wherein the total concentration of c) is higher than instantly claimed, not specifically disclosed but in the example/Table A it is 0.995 wt% based on the total weight of the bleaching composition though Cope explicitly says the amount of the sorbitol (humectant) can be varied to bring the formulations to 100%, and wherein a) is present in amounts of ~60 wt% based on the total weight of the bleaching composition (See entire document; abstract; Table A; claims; Col. 3, ln. 58-Col. 5, ln. 27; Col. 1, ln. 53-57; Col. 1, ln. 60-Col. 2, ln. 37).
Regarding claim 5, Cope teaches wherein applicant’s b) is present in amounts of 12.94 wt% based on the total weight of the bleaching composition (See entire document; abstract; Table A; claims; see also sections cited above).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have formed the claimed paste hair bleaching compositions comprising the claimed a), b), c), and d) as claimed because Pratt teaches hair bleaching compositions which comprise the claimed a) and b) and d) in the claimed and/or overlapping amounts to those instantly claimed and it would have been obvious to add the claimed mannitol in the claimed amounts because Cope teaches that it was known to add a humectant to the bleaching compositions to provide moisture to the hair and wherein these humectants include the claimed mannitol and xylitol. Cope also teaches wherein the amount of humectant is higher than the claimed 0.5 wt% in their example, specifically 0.995 wt%. However, Cope further teaches that the amount of the humectant, e.g. sorbitol, mannitol or xylitol can be optimized by one of ordinary skill in the art.
It also would be obvious to optimize the amount of paraffin oil in the composition of Pratt in order to read on the amounts of instant claim 12 because Pratt teaches powdered compositions which comprise 8.5 wt% paraffin oil and they teach a paste example which comprises 28.5 wt% paraffin oil and they further teach wherein the lipophilic components can be present in amount of 0.1 to 25 wt% ([0019-0020]). Thus, it would be obvious to optimize the amount of the lipophilic agent of Pratt to read on the claimed amounts in effort to form the most effective bleaching composition with good humectancy and moisturizing effects for the hair thereby providing the most effective bleaching while providing conditioning/moisture to the hair to limit/reduce damage caused by the effects of bleaching.
It would be obvious to optimize the amounts of the other components of the bleaching composition of Pratt to read on the claimed amounts and ranges and to include the mannitol of Cope into the compositions of Pratt for the reasons discussed above in order to form the most effective bleaching compositions which cause the least dryness/damage to the hair, especially since the courts have previously determined, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[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.’” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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 1-6, 8-14, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No. 12274772 (‘772). ‘772 and the instant application both claim compositions and kit-of-parts comprising the same ingredients in the same and/or overlapping amounts to those instantly claimed for the same purpose of bleaching hair and wherein the composition/kit of parts further comprises the claimed lipophilic agents and the claimed less than 5 wt% water. ‘772 merely separates their mannitol which is part of the instant bleaching composition A into a separate container, and still provides for the separated aqueous hydrogen peroxide solution that is claimed in instant claims 13 having the pH claimed in instant claim 19. However, whether or not it is packaged separately it is still part of the dry portion of the bleaching composition and as such still renders obvious the instantly claimed bleaching composition and the claimed amounts of mannitol. Thus, one of ordinary skill in the art would conclude that the instantly claimed composition is an obvious variant of the kit claimed in US Patent No. 12274772 (‘772).
Claims 1-6, 8-14, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, 10-17 of copending Application No. 17771671 (‘671), in view of Cope (as cited above). ‘671 teaches similar bleaching compositions and kits as those instantly claimed which comprise the same a), b) and d) which is instantly claimed and in the same amounts which are instantly claimed and wherein the kit of parts has the same separate compositions and wherein the separate aqueous hydrogen peroxide composition has the same pH as instantly claimed and is a separate formulation and can form part of a two part bleaching composition. ‘671 does not teach wherein the bleaching composition comprises the claimed mannitol in the claimed amounts. However, this deficiency is addressed by Cope.
Cope teaches dry powdered hair bleaching compositions (which therefore contain less than 5 wt% water as claimed) comprising applicant’s a) specifically potassium and ammonium persulfate salts, b) alkalizing agents, specifically sodium metasilicate, and c) sorbitol, mannitol, xylitol or sucrose as humectants, wherein the total concentration of c) is higher than instantly claimed, not specifically disclosed but in the example/Table A it is 0.995 wt% based on the total weight of the bleaching composition though Cope explicitly says the amount of the sorbitol (humectant) can be varied to bring the formulations to 100%, and wherein a) is present in amounts of ~60 wt% based on the total weight of the bleaching composition (See entire document; abstract; Table A; claims; Col. 3, ln. 58-Col. 5, ln. 27; Col. 1, ln. 53-57; Col. 1, ln. 60-Col. 2, ln. 37).
Cope teaches wherein applicant’s b) is present in amounts of 12.94 wt% based on the total weight of the bleaching composition (See entire document; abstract; Table A; claims; see also sections cited above).
It would have been obvious to add the mannitol taught by Cope to the composition of ‘671 as it is a humectant that helps to provide moisture to the hair that is being bleached to help reduce damage from bleaching, etc. It also would have been obvious to optimize the amount of mannitol to use in the bleaching composition with the persulfate salts, etc. in order to form the most effective bleaching composition which also provides reduced damage to the hair, especially since Cope recognizes that the amounts of the humectant (e.g. sorbitol, mannitol, xylitol can be optimized). Further, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, one of ordinary skill in the art would conclude that the instantly claimed bleaching composition is an obvious variant of the composition of copending Application No. 17771671 (‘671) in view of Cope especially since the instant claims use comprising language which is open-ended and does not exclude the caffeine of ‘671.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/ERIN E HIRT/ Primary Examiner, Art Unit 1616