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 .
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, 19, and 21 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, 17, and 21, Cope teaches dry powdered hair bleaching compositions (which therefore reads on the limitation of comprising less than 1 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 which read on claims 1 and 21, and 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, 19, and 21, Cope does not teach any examples wherein the component c) is mannitol, or specifically the now claimed combination of mannitol and xylitol, and is/are present in the claimed amounts or wherein the c) is mannitol or specifically the now claimed combination of mannitol and xylitol, though they clearly teach that c) can be mannitol and/or xylitol 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, and/or the combination of mannitol and xylitol for use in the compositions of Cope and then to optimize the amounts of mannitol and xylitol 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).
Regarding claim 21, Cope does not specifically teach using a blend/mixture of mannitol and xylitol as the humectants. However, as discussed above Cope teaches that xylitol and mannitol are useful as humectant agents and it would be obvious to use a combination of known mannitol and xylitol as humectant agents together in the claimed amounts based on the combined teachings of Cope and RD652044 in the formulation of Cope in order to form an effective powder bleaching formulation for use on the hair as discussed above. One of ordinary skill in the art would be motivated to do this because "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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, 19, and 21 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, 19, and 21 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, 19 and 21 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, 19, and 21 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, 19 and 21 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) and RD652044.
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 and xylitol, specifically mannitol. However, this deficiency is addressed by Cope and RD652044.
Regarding claims 1-3, 5-6, 8-13, 17, 19 and 21, Cope teaches dry powdered hair bleaching compositions (which therefore reads on the limitation of containing less than 1 wt% water) 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).
RD652044 (See English abstract) teaches bleaching powder for solutions for hair which comprise 0.1-5% sorbitol/humectant (English abstract).
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 and xylitol 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 0.1 wt% in their example, specifically 0.995 wt% and RD652044 teaches that it was known to use the claimed 0.1 wt% of sugar alcohol humectants in powdered hair bleaching compositions, and 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 and xylitol of Cope into the compositions of Pratt in the claimed amounts which are taught to be useful amounts of sugar alcohol humectants for use powdered hair bleaching compositions in RD652044 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).
It also would have been obvious to use blends of mannitol and xylitol as the humectants in the claimed amounts in the compositions of Pratt because Cope teaches that xylitol and mannitol are useful humectants for formulating dry powder bleaching compositions which comprise the same bleaching agents instantly claimed and RD652044 teaches using overlapping amounts of sugar alcohol humectants in their bleaching compositions for hair. Thus, it would be obvious to use a combination of known sugar alcohol humectant agents together in the claimed amounts based on the combined teachings of Cope and RD652044 in the formulation of Pratt in order to form an effective powder bleaching formulation for use on the hair with the peroxides of Pratt as discussed above. One of ordinary skill in the art would be motivated to do this because "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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, 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No. 12274772 (‘772) and Cope (as cited above). ‘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 1 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, and ‘772 does not claim wherein the composition contains xylitol with the mannitol. 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, and Cope teaches that xylitol and mannitol are useful as humectants in hair bleaching compositions (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) and as such it would be obvious to use a mixture of mannitol and xylitol for the composition C in ‘772 because it is known "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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) in view of Cope (as cited above).
Claims 1-6, 8-14, and 17-21 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) and RD652044. ‘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 and xylitol in the claimed amounts. However, this deficiency is addressed by Cope and RD652044.
Cope teaches dry powdered hair bleaching compositions (which therefore read on compositions containing less than 1 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).
RD652044 (See English abstract) teaches bleaching powder for solutions for hair which comprise 0.1-5% sorbitol/humectant, and sorbitol is a non-acetylated sugar alcohol like the claimed mannitol.
It would have been obvious to add the mannitol and xylitol taught by Cope in the claimed amounts as taught by RD652044 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) and RD652044 specifically teaches using amounts of sugar alcohol humectants which overlap those instantly claimed. 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 and RD652044 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.
Response to Arguments/Remarks
Applicant’s amendments to the claims have rendered moot the previous claim objections and have overcome the previous 112(b) rejections which are hereby withdrawn.
Applicant’s amendments to the claims have prompted the revised grounds of rejection presented herein. Applicant’s arguments insofar as they pertain to the revised grounds of rejection are addressed herein. Applicant’s first argue that in their invention they are not using mannitol as a humectant or conditioning agent. They argue that mannitol provides a distinct technical effect in the amounts instantly claimed with the substantially anhydrous persalt(s) and/or peroxy salt(s) containing bleaching systems. They argue that their concentrations are different from those of the prior art which are moisture retention, and that their concentration of mannitol does not function as a humectant. The examiner respectfully disagrees because for instance the prior art RD652044 (See English abstract) teaches bleaching powder for solutions for hair which comprise 0.1-5% sorbitol/humectant, and sorbitol is a non-acetylated sugar alcohol like the claimed mannitol. Thus, clearly contrary to applicant’s arguments mannitol is still functioning as a humectant at percentages which overlap those instantly claimed.
Applicants then argue that Cope teaches sugar alcohols in much higher percentages and that it would not be obvious to change the concentrations of Cope to the low percentages now claimed for the sugar alcohols. The examiner respectfully disagrees because as discussed above it was known to use humectants, specifically non-acetylated sugar alcohols in percentages which overlap those instantly claimed in powdered hair bleaching compositions as is taught by RD652044 as discussed above. Further the examiner notes that the rejection is not solely over Cope as it appears applicants are arguing the references singly and it is known that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s then argue that one of ordinary skill in the art would have understood the inclusion of a humectant in a persulfate bleaching powder in order to retain moisture and condition the hair, not to enhance bleaching performance. The examiner respectfully points out that the bleaching performance and the humectancy of the sugar alcohols are properties of the sugar alcohols themselves which are not separable from the claimed sugar alcohols. Additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). That is to say the fact that applicants have discovered an additional property of the claimed sugar alcohols when used in the claimed combinations does not mean that these properties were not happening in the prior art whether or not it was specifically recognized by the authors/inventors.
Applicants then again argue that because Cope teaches sugar alcohols in much higher percentages and that it would not be obvious to one of ordinary skill in the art to change the concentrations of Cope to the low percentages now claimed for the sugar alcohols. The examiner respectfully disagrees because as discussed above it was known to use humectants, specifically non-acetylated sugar alcohols in percentages which overlap those instantly claimed in powdered hair bleaching compositions as is taught by RD652044 as discussed above. Further the examiner notes that the rejection is not solely over Cope as it appears applicants are arguing the references singly and it is known that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, it would be obvious to optimize the amount of the sugar alcohols/mannitol to read on the claimed amounts because these amounts were already known to be useful in powdered hair bleaching compositions comprising the same active agents as is taught by RD652044, and it is known, 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, it does not appear that applicants have demonstrated any criticality of their ranges.
Applicants then further argue that Cope does not identify the concentration of mannitol as a result-effective variable for bleaching performance. The examiner respectfully points out that the claims are not to a method of improved bleaching performance, etc. they are to a bleaching composition itself which as long as it contains the claimed components in the claimed compound does not have to recite the components as being for the same purpose in the composition as applicant’s claimed components because if the components are the same then they should have the same properties. Especially since the rejection is not solely over Cope but is instead over Cope and the combined secondary references such as RD652044 which teaches that it was known to use sugar alcohols as humectants in amounts which overlap those instantly claimed which is contrary to applicants arguments. Thus, the examiner maintains that the above rejections still render the instantly claimed composition obvious for the reasons discussed above and herein. Thus, as discussed above merely because applicant’s have discovered yet another property provided by the mannitol/sugar alcohols does not make the instant composition patentable at this time because the courts have previously determined that, “…the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants then argue that the other secondary references do not teach various aspects of the claimed invention and applicant’s argue that because each of the secondary references do not teach all of applicant’s features or are directed to different types of bleaching compositions or directed to solving different problems than applicants are solving, etc. that this makes these references not applicable to their composition. The examiner respectfully disagrees because firstly the rejection is over the combined references together not each reference singly as discussed above and as such for instance RD652044 does not have to teach mannitol specifically or applicant’s specific substantially anhydrous composition which are taught by Cope. Secondly, they argue that Pratt teaches water rich systems, etc. The examiner respectfully points out that nothing in the instant claims excludes a separate liquid part of the bleaching composition that can be used in conjunction/addition to the powdered bleaching composition as applicant’s claims use comprising and do not exclude other compositions from being used with their powdered composition and again the rejection is not solely over Pratt it is over Pratt, Cope and RD652044 now due to applicant’s amendments as discussed above. Thus, this arguments with respect to Pratt is not persuasive at this time. Applicants then argue that Glenn and Neuba are not directed to trace sugar alcohol usage, non-humectant functionality, etc. The examiner respectfully points out that the prior art does not have to be directed to applicant’s express problem in order to be prior art for the claimed composition. The claimed compositions can be used for anything and their components can be included into the compositions for different reasons than applicant has found and in the claimed amounts for different reasons than applicant has found. In the instant case, the claimed composition remains obvious for all of the reasons discussed above which are incorporated herein, specifically because it was known to use the claimed non-acetylated sugar alcohols as humectants in powdered hair bleaching compositions in amounts which overlap the instantly claimed amounts. 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).
As applicants did not make any arguments with respect to the double patenting rejection the rejection is modified herein to address the new limitations in the amended claims and new claim(s), and is maintained.
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.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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/ERIN E HIRT/ Primary Examiner, Art Unit 1616
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