DETAILED ACTION
Status of the Claims
Claims 1, and 4-21 are pending in the instant application. Claims 15-16 have been withdrawn based upon Restriction/Election as discussed below. Claims 1, 4-14 and 17-21 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.
Priority
The instant Application is a 371 of PCT/EP2022/057872 filed 03/25/2022, and claims priority to DE-10-2021-203918.9 filed 04/20/2021.
The U.S. effective filing date has been determined to be 03/25/2022, the filing date of PCT/EP2022/057872. Applicant's claim for a priority date of, 04/20/2021, the filing date of document DE-10-2021-203918.9, is acknowledged, however no English translation of the foreign priority document DE-10-2021-203918.9 has been provided such that the examiner can verify written description support (112(a)) therein. Accordingly, priority to DE-10-2021-203918.9 cannot be afforded at this time.
Information Disclosure Statement
The information disclosure statements submitted on 09/29/2023 and 02/26/2026 were filed before the mailing date of the first office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Specification
The instant Specification remains objected to because the Specification discloses that “The ready-to-use agents El and E2 produced beforehand were applied to hair strands” (p. 48, paragraph [0175]), however there is no disclosure of “The ready-to-use agents […] E2 […]” [emphasis added]. Applicant should amend the Specification as deemed appropriate to either include the ready-to-use agent E2 or delete the reference to the same. Appropriate correction is required.
The amendment filed 05/19/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Applicant has amended the Abstract to recite “The ratio of low molecular weight alkylene glycol to high molecular weight alkylene glycol may be greater than 1.” (Arguments filed 05/19/2026, p. 2). However, there is no support in the as-filed Application for the added limitation, and is therefore considered to introduce new matter into the Specification. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-14 and 17-21 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a New Matter rejection.
Scope of the Claimed Invention:
Applicants claims an agent for dying keratinous material, the agent comprising: (i) at least one low molecular weight alkylene glycol of formula (AG):(HO-[-CH2-CH2-O-]x-H (AG), wherein x is an integer from 1 to 100; (ii) at least on high molecular weight alkylene glycol of formula (AG), wherein x is an integer of from 101 to 10,000; (iii) at least one pigment; and (iv) at least one amino-functionalized silicon polymer, wherein the ratio of low molecular weight alkylene glycol to high molecular alkylene glycol by weigh % is greater than 1 (instant claim 1). Applicant further claims the agent of claim 1, wherein the at least one low molecular weight alkylene glycol is present in an amount of from 1.0 to 35.0% by weight, based on the total weight of the agent (instant claim 17).
The limitation “wherein the ratio of low molecular weight alkylene glycol to high molecular alkylene glycol by weigh % is greater than 1” is not supported in the as-filed Application. The examiner finds support for the range from 1.0 to 35.0% by weight, based on the total weight of the agent, for (a12) at least one allylene glycol of formula (AG-2), wherein x2 denotes an integer from 101 to 1000, which corresponds to “the at least one high molecular weight alkylene glycol of formula (AG)” in claim 1.
Disclosure of the Instant Application:
The examiner find no disclosure of “the ratio of low molecular weight alkylene glycol to high molecular alkylene glycol by weigh %” in the as-filed Application. Applicant has amended the Abstract to recite “The ratio of low molecular weight alkylene glycol to high molecular weight alkylene glycol may be greater than 1.” (Arguments filed 05/19/2026, p. 2). However, there is no support in the as-filed Application for the added limitation. Accordingly, the Amendment to the Specification (amended abstract) introduces new matter which has also been inserted into amended claim 1 which is rejected as introducing new matter.
Regarding instant claim 17, the instant Specification1 discloses that: “Within the scope of another very particularly preferred embodiment, an agent according to the invention is characterized in that it contains: (a11) at least one first alkylene glycol of formula (AG-1 ), HO-[-CH2-CH2-O-]x1-H (AG-1), x1 denotes an integer from 1 to 100 […], and (a12)at least one second alkylene glycol of formula (AG-2), where HO-[-CH2-CH2-O-]x2-H (AG-2), x2 denotes an integer from 101 to 1000 […].” (pp. 9-10, paragraph [0034]). And that: “The agent according to the invention preferably contains - based on the total weight of the agent - (a12) one or more alkylene glycols of formula (AG-2) in a total amount of 1.0 to 35.0% by weight […].” (p. 10, paragraph [0038] through paragraph [0040]). Additionally, (a11) is described as having range of “a total amount of 20.0 to 99.0% by weight, preferably 40.0 to 95.0% by weight, particularly preferably 60.0 to 90.0% by weight.” (p. 10, paragraph [0037]; p. 11, paragraphs [0040], [0041], and [0042]). Additionally, Formula E1 (p. 48, paragraph [0174], Table – Ready-to-use coloring agent E1) clearly includes the “at least one high molecular weight alkyleneglycol” being PEG-6000 in an amount of 9.93 wt.%, based on the total weight of the agent, the “at least one low molecular weight polyalkylene glycol” being PEG-400 in an amount of 85.55 wt.% based on the total weight of the agent. Therefore, the Specification supports “the at least one high molecular weight alkylene glycol is present in an amount of from 1.0 to 35% by weight, based on the total weight of the agent.” and not the agent of claim 1, wherein the at least one low molecular weight alkylene glycol is present in an amount of from 1.0 to 35.0% by weight, based on the total weight of the agent (instant claim 17).
Discussion:
The examiner finds no support in the as-filed Application for the limitation of “the ratio of low molecular weight alkylene glycol to high molecular alkylene glycol by weigh %” in the as-filed Application. Applicant has amended the Abstract to recite “The ratio of low molecular weight alkylene glycol to high molecular weight alkylene glycol may be greater than 1.” (Arguments filed 05/19/2026, p. 2). However, there is no support in the as-filed Application for the added limitation. Accordingly, the Amendment to the Specification (amended abstract) introduces new matter which has also been inserted into amended claim 1 which is rejected as introducing new matter.
The amendment of claim 17 introduces the new matter “the agent of claim 1, wherein the at least one low molecular weight alkylene glycol is present in an amount of from 1.0 to 35.0% by weight, based on the total weight of the agent” because the as-filed Specification supports the wt.% range of 1.0 to 35.0 for the at least one high molecular weight alkylene glycol and not the at least one low molecular weight alkylene glycol, to which the disclosure throughout points to.
Claims 1 and 17 being properly rejected as introducing new matter and therefore as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 4-14, and 17-21 inherit the limitation of claim 1 and are rejected for the same.
Claim Rejections - 35 USC § 112(b)
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-14 and 17-21 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 1 read or added by amendment in relevant parts a limitation reciting "wherein the ratio of low molecular weight alkylene glycol to high molecular weight alkylene glycol”. However, claim 1 in preceding recitation claims “at least one low molecular weight alkylene glycol of formula (AG)” (line 3) and “at least one high molecular weight alkylene glycol of formula (AG)” (line 7), which encompass multiple low and high molecular weight alkylene glycols. Because of the multiplicity “at least one low molecular weight alkylene glycol of formula (AG)” (line 3) and “at least one high molecular weight alkylene glycol of formula (AG)” (line 7) entail, it is unclear whether the singular reference, i.e., "low molecular weight alkylene glycol" (line 11) and “high molecular weight alkylene glycol” (lines 11-12), are intended to refer to just one, more than one, or all of the low and high molecular weight alkylene glycols. Amending the claims to recite “wherein the ratio of the at least one low molecular weight alkylene glycol to the at least one high molecular weight alkylene glycol by weight % is greater than 1”, consistent with the preceding recitations in claim 1 would provide proper antecedent basis. Claims 4-14 and 17-21are rejected as depending from and therefore inherit the above discussed issue. Appropriate clarification is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-14 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over NGUYEN (US 2013/0129648 A1; published May, 2013) in view of RAFFERTY (US 2016/0015622 A1; published January, 2016).
Applicants Claims
Applicants claims an agent for dying keratinous material, the agent comprising: (i) at least one low molecular weight alkylene glycol of formula (AG): HO-[-CH2-CH2-O-]x-H (AG), wherein x is an integer from 1 to 100; (ii) at least on high molecular weight alkylene glycol of formula (AG), wherein x is an integer of from 101 to 10,000; (iii) at least one pigment; and (iv) at least one amino-functionalized silicon polymer, wherein the ratio of low molecular weight alkylene glycol to high molecular alkylene glycol by weigh % is greater than 1 (instant claim 1). Applicant claims the at least one low molecular weight alkylene glycol and the at least on high molecular weight alkylene glycol are present in a combined amount of from 20.0 to 99.0% by weight based on the total weight of the agent (instant claims 4-5). Applicant further claims the at least one pigment is present in an amount of from 0.01 to 10.0% by weight, based on the total weight of the agent (instant claim 8). Applicant further claims the at least one amino-functionalized silicone polymer is present in an amount of from 0.1 to 8.0% by weight, based on the total weight of the agent (instant claim 12). Applicant claims the agent of claim 1 further comprising water in an amount of 0.1 to 70.0% by weight based on the total weight of the agent (instant claim 13).
Determination of the scope
and content of the prior art (MPEP 2141.01)
NGUYEN teaches silicone based cosmetic compositions (title, see whole document), and particularly that: “The present disclosure also relates to silicone based hair coloring compositions comprising at least one silicone amine, at least one anionic silicone, at least one colorant, a cosmetically acceptable carrier; and optionally, at least one oxidizing agent. The compositions are useful for coloring hair.” (Abstract). NGUYEN teaches that: “The present disclosure also relates to silicone based hair coloring compositions comprising: (a) at least one silicone amine; (b) at least one anionic silicone; (c) at least one colorant; (d) a cosmetically acceptable carrier; and (e) optionally, at least one oxidizing agent. The hair coloring compositions may also optionally include a conditioning agent. The hair coloring compositions provide enhanced coloring effects to the hair such as greater color deposit, and more vibrant and intense color to hair than typical hair coloring methods. Thus, the hair coloring compositions can be used to (1) increase color deposit on artificially colored hair; (2) boost the intensity of a colorant in artificially colored hair; (3) improve the fade resistance of artificial color on hair; and (4) highlight hair.” ([0016] to [0023]).
NGUYEN teaches that: “Cosmetically acceptable carriers include water and/or other cosmetically acceptable solvents such as […] polyethylene glycols such as PEG-8 […].” ([0035], [0229])(PEG-8 syn. w/PEG-400). And that: “The cosmetically acceptable carrier is typically present in an amount of from about 0.1 % to about 90%, […].” ([0036], [0230]-[0231])(instant claim 1, “at least one low molecular weight alkylene glycol”; instant claims 17-19). NGUYEN also teaches the inclusion of water “The cosmetically acceptable carrier can be water and/or an organic solvent. Suitable organic solvents include […].” ([0228] & [0230]-[0232])(instant claim 13).
NGUYEN teaches “The polyalkylene glycols useful as conditioning agents include those which are soluble or dispersible in water, such as polyethylene glycols.” And that: “Polyalkylene glycols having a molecular weight of more than about 100 are also useful. Ethylene oxide polymers generally have good water solubility, dispersibility, and transparency.” ([0238]-[0239]).
NGUYEN teaches the inclusion of at least one surfactant such as “C6-24 alkyl monoesters of polyglycoside dicarboxylic acids […] polyoxyalkylenated (C6-24 alkyl) amido ether carboxylic acids alkyl glucoside citrates, alkyl polyglycoside tartrates, alkyl polyglycoside sulfosuccinates, alkyl sulfosuccinamates, their derivatives, their salts and mixtures thereof.” ([0258])(instant claim 14).
NGUYEN teaches the inclusion of silicone amines ([0061]), and particularly “Products corresponding to the group of silicone amines are in particular amodimethicone, […].” ([0072]-[0074])(instant claims 9-11). And that: “The cosmetic compositions can comprise from about 1 % to about 90%, from about 1 % to about 75%, from about 1 % to about 50%, from about 1 % to about 25%, or from about 1 %to about 15% by weight of the silicone amine based on the total weight of the cosmetic composition.” ([0078])(instant claim 12).
NGUYEN teaches the inclusion of pigments ([0214]) including lakes based on cochineal carmine ([0215]) and carminic acid ([0218])(instant claims 6-7, carmine – CI 75470). And “If present, the natural colorants may be present in the composition in a concentration ranging up to 50% by weight of the total weight of the coloring composition, such as from 0.05% to 40%, and further such as from 2% to 30%.” ([0219])(instant claim 8).
NGUYEN teaches that: “It is possible to incorporate into the compositions
described above additional components such as […] thickeners and/or oils, viscosity modifiers, rheology-modifying agents, […].” ([0282]). And that: “Thickeners are typically present in concentrations ranging, for example, from about 0.05% to about 10% by weight, from about 0.2% to about 5% by weight, from about 0.2% to about 2% by weight based on the total weight of the composition.” ([0287]).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of NGUYEN is that NGUYEN does not expressly teach the inclusion of at least one high molecular weight polyalkylene glycol of formula (AG), wherein x is an integer of from 101 to 10,000” (instant claim 1), such as PEG-6000 (syn. PEG-135)(instant claims 20-21). Additionally, NGUYEN does not teach the ratio of low molecular weight alkylene glycol to high molecular weight alkylene glycol by weight % is greater than 1 (instant claim 1), or the combined weight of the low and high molecular weight polyalkylene glycols (instant claims 4-5).
RAFFERTY teaches surfactant and silicone containing compositions to mitigate the loss of silicone deposition from keratinous substrates (title, see whole document), and particularly “A conditioning and cleansing composition comprising at least one detersive surfactant, a silicone conditioning agent and a nonionic, amphiphilic polymer that mitigates the loss silicone deposition on keratinous substrates is disclosed.” (abstract). RAFFERTY teaches that: “The cleansing and compositions of the invention can be utilized in combination with an auxiliary rheology modifier (thickener) to enhance the yield value of a thickened liquid. In one aspect, the polymers of the invention can be combined with an auxiliary nonionic rheology modifier. In one aspect, an auxiliary nonionic rheology modifier to attain a desired yield stress value when a linear nonionic, amphiphilic polymer is utilized. Any rheology modifier is suitable including, but are not limited to, […] polyethylene glycols ( e.g., PEG 4000, PEG 6000, PEG 8000, PEG 10000, PEG 20000), […]. The rheology modifier can be utilized in an amount ranging from about 0.5 to about 25 wt. % in one aspect, from about 1 to about 15 wt. % in another aspect, and from about 2 to about 10 wt. % in a further aspect, and from about 2.5 to about 5 wt. % based on the weight of the total weight of the composition.” ([0175]).
It would have been prima facie obvious to include a “thickeners and/or oils, viscosity modifiers, rheology-modifying agents” in the compositions of NGUYEN, including those described by RAFFERTY including PEG-6000 in an amount suggested by NGUYEN: “Thickeners are typically present in concentrations ranging, for example, from about 0.05% to about 10% by weight, from about 0.2% to about 5% by weight, from about 0.2% to about 2% by weight based on the total weight of the composition.” ([0287])(instant claim 1, at least one high molecular weight alkylene glycol”; instant claims 20-21).
Regarding the claimed ratio of the ratio of low molecular weight alkylene glycol to high molecular weight alkylene glycol by weight % is greater than 1 (instant claim 1), given the amount of the carrier solvent is taught in a greater amount than the thickener, as would have been appreciated by one of ordinary skill in the art. And the low molecular weight alkylene glycol taught as a carrier solvent (NGUYEN – [0228]-[0229] – polyethylene glycols such as PEG-8), and the high molecular weight alkylene glycol taught as a thickener (viscosity modifiers, rheology-modifying agents). And the amounts are lower for the thickeners relative to the carrier solvent, the ratio of the low molecular weight alkylene glycol to high molecular weight alkylene glycol by weight % would have been greater than 1.
Additionally, the amount of the low molecular weight alkylene glycol and the amount high molecular weight alkylene glycol by weight % is clearly taught/suggested in an amount that overlaps with the combined amount claimed in instant claims 4-5 (see, e.g., NGUYEN: [0229]-[0231], [0282] & [0287]; as well as RAFFERTY: [0175]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
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 produce a hair treatment composition comprising low molecular weight polyethylene glycol, an amino-functionalized silicone polymer, an alkyl(poly)glycoside and a pigment, as suggested by NGUYEN, and to include a thickener/rheology/viscosity modifier as suggested by NGUYEN, the thickener/rheology/viscosity modifier a species such as being PEG-6000, as taught by RAFFERTY, for the same purpose (thickener).
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 because it would have required no more than an ordinary skill in the art to produce a composition consistent with the teaching/disclosure of NGUYEN including a known thickener such as PEG-6000. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Response to Arguments:
Applicant's arguments filed 05/19/2026 have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4-14 and 17-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim of copending Application Nos. 18/286,344 (claims 1-17, 19 and 20; hereafter ‘344); 18/784,322 (claim 20; hereafter ‘322); 18/785,831 (claim 14; hereafter ‘831); and 18/912,198 (claims 1-19; hereafter ‘198) in view of NGUYEN (US 2013/0129648 A1; published May, 2013) in view of RAFFERTY (US 2016/0015622 A1; published January, 2016).
Instant claims are discussed above.
Copending ‘344 claim at 1 recites at least one alkylene glycol of formula (AG) consistent with instant formula (AG – instant claim 1) when y is 0, at least one pigment and at least one amino-functionalized silicone polymer.
Copending ‘322 claim 20 recites a multi-component packaging unit comprising at least one amino-functionalized silicone polymer, at least one pigment and water and/or at least one alkylene glycol polymer of formula (AG) consistent with instant formula (AG – instant claim 1).
Copending ‘831 claim 14 recites a multi-component packaging unit comprising at least one amino-functionalized silicone polymer, at least one pigment and water and/or at least one alkylene glycol polymer of formula (AG) consistent with instant formula (AG – instant claim 1).
Copending ‘189 claim 1 recites at least one amino-functionalized silicone polymer, at least one white pigment. Claim 12 recites the inclusion of color pigments consistent with instant claim 7, and claim 18 recites at least one alkylene glycol polymer of formula (AG) consistent with instant formula (AG – instant claim 1).
The difference between the instantly rejected claims and the claims of copending claims is that the claim of copending are not identical to the rejected claims however they include the same constituent components including at least one polyakylene glycol of structure (AG) wherein x is 1-10,000.
NGUYEN teaches silicone based cosmetic compositions, as discussed above and incorporated herein by reference.
RAFFERTY teaches surfactant and silicone containing compositions to mitigate the loss of silicone deposition from keratinous substrates, as discussed above and incorporated herein by reference.
It would have been prima facie obvious before the effective filing date of the claimed invention that the instantly rejected claims are an obvious variant of the claims of copending claims because they include the same constituent components, particularly at least one polyalkylene glycol polymer, a pigment and an amino-functionalized silicone polymer. The skilled artisan would have been motivated to modify the claims of copending claims and produce the instantly rejected claim because they include the same constituent components, particularly a polyalkylene glycol polymer carrier solvent (e.g. PEG-8) and a polyalkylene glycol thickener (e.g. PEG-600), a pigment and an amino-functionalized silicone polymer, as taught/suggested by NGUYEN and RAFFERTY. Furthermore, the skilled artisan would have had a reasonable expectation of success in producing the invention of the instantly rejected claims because they include the same constituent components, particularly a polyalkylene glycol polymer, a pigment and an amino-functionalized silicone polymer.
This is a provisional obviousness-type double patenting rejection.
Response to Arguments:
Applicant's arguments filed 05/19/2026 have been fully considered but are not convincing because applicant fails to address the obvious-type double patenting rejection, rather “requests that this matter be held in abeyance until allowable subject
matter has been identified.” (pp. 12-13).
Citation of Pertinent Prior Art: The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. DREHER (US 2004/0231071 A1) is cited an teaching polyethylene glycols in hair treatment compositions, particularly for limiting the penetration of dyes into the skin, including PEG-135 and PEG-150, in an amount of about 10% by weight (see whole document, particularly [0022] through [0032], [0037]-[0038], [0058]-[0066]).
Conclusion
Claims 1, 4-14 and 17-21 are pending and have been examined on the merits. The Specification of the disclosure is objected to. Claims 1, 4-14 and 17-21 are rejected under 35 U.S.C. 112(a)(New Matter); claims 1, 4-14 and 17-21 are rejected under 35 U.S.C. 112(b); claims 1, 4-14 and 17-21 are rejected under 35 U.S.C. 103; and claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim of copending Application Nos. 18/286,344; 18/843,322; 18/785,831; and 18/912,198. No claims allowed at this time.
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 IVAN A GREENE whose telephone number is (571)270-5868. The examiner can normally be reached M-F, 8-5 PM PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on (571) 272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
1 Referencing the clean copy filed 09/29/2023.
Prosecution Insights