DETAILED ACTION
Status of the Claims
Claims 1-17 are pending in the instant application. Claims 15-16 have been withdrawn based upon Restriction/Election as discussed below. Claims 1-14 and 17 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 .
Restriction/Election
Applicant's election without traverse of Group I drawn to compositions of matter, currently claims 1-14 and 17, in the reply filed on 03/06/2026 is acknowledged.
The requirement is deemed proper and is therefore made FINAL.
Claims 15 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/06/2026.
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 abstract of the disclosure is objected to because the abstract is 45 words.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts. Appropriate correction is required.
The instant Specification is further 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.
Claim Rejections - 35 USC § 112(b)
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.
Claim 7 is 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 7 contains the trademark/trade name Color Index numbers, that is numerous, CI numbers (e.g. CI 42090, CI 69800, […]). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe various color pigments and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 6-7, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by MINTEL “Nutri-Repairing Radiance”, 2007, pp. 1-3; D4 in the ISR; hereafter D4 (of record as cited by Applicant).
Applicant Claims
Applicant claims an agent for dyeing keratinous material, the agent comprising: at least one polyalkylene glycol of formula (AG): [see claim] wherein x is an integer of from 1-10,000, at least one pigment, and at least one amino-functionalized silicone polymer (instant claim 1). Applicant further claims x is an integer of from 1-100 (instant claim 2, e.g. PEG-400, PEG-15), or x is an integer of from 1-100 (instant claim 3, e.g. PEG-6000, PEG-150). Applicant further claims the inclusion of a pigment including color metal oxides, metal hydroxides, bronze pigments, mica-based color pigments (instant claim 6), and particularly including various color index number pigments (instant claim 7). Applicant further claims the amino-functionalized silicone polymer comprises at least one secondary amino group (instant claims 9-10).
Disclosure of the Prior Art
D4 discloses a Nutri-Repairing Radiance Mask formulation including PEG-150 (instant claims 1 & 3), PEG-8 (instant claims 1 & 2), amodimethicone (instant claims 9 & 10), and the pigments CI 15985 and CI 14700 (instant claims 6 & 7).
Claims 1-2, 6, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by MINTEL “Mouse Bronzer” 2008, pp. 1-3; D2 in ISR; hereafter D2 (of record as cited by Applicant).
Applicant Claims
Applicants claims are discussed above.
Disclosure of the Prior Art
D2 discloses a Mouse Bronzer including PEG-8 (instant claims 1 & 2), Amodimethicone (instant claims 9 & 10), and the pigments mica, titanium dioxide, iron oxide (bronze pigment)(instant claims 6).
Claims 1-2, 6-7, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by MINTEL “Pre-Shampoo Intensive Care Coconut Hair Cream,” 2009, pp. 1-5; D3 in ISR; hereafter D3 (of record as cited by Applicant).
Applicant Claims
Applicants claims are discussed above.
Disclosure of the Prior Art
D3 discloses a Pre-Shampoo Intensive Care Coconut Hair Cream composition including PEG-400 (instant claims 1 & 2), Amodimethicone (instant claims 9 & 10), and pigments CI 74160, CI 47000 (instant claims 6 & 7).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over KAPLAN (US 2008/0274071 A1; published November, 2008) in view of MINTEL “Nutri-Repairing Radiance”, 2007, pp. 1-3; D4 in the ISR; hereafter D4; and NGUYEN (US 2009/0070945 A1; published March, 2009).
Applicants Claims
Applicants claims are discussed above.
Determination of the scope
and content of the prior art (MPEP 2141.01)
KAPLAN teaches agents for the setting and styling of keratin fibers, in particular human hair (title, abstract, see whole document). KAPLAN teaches the inclusion of amino-silicone polymers such as Dow Corning 2-8566 amino fluid based on amine-functionalized polydimethylsiloxane ([0170] through [0712]) in an amount of 0.01 to 20 5 by weight ([0174])(instant claims 9-12).
KAPLAN teaches the inclusion of alkyl oligoglycosides ([0571] through [0573])(instant claim 14, alkyl(poly)glycoside).
KAPLAN teaches the inclusion of PEG encompassing molar masses from 200 to 5,000,000 g/mol, and formula (I) consistent with Applicants formula (AG) wherein (n ~5 up to > 10,000)([0754] through [0757]) in amounts of from 0.1% to 20% by weight ([0754])(instant claims 1-5 & 17).
KAPLAN teaches the inclusion of dyes including naturally occurring dyes ([0845]-[0851]), in an amount of 0.001 to 0.1% by weight ([0867]), and pigments ([0891])(instant claim 6).
KAPLAN teaches the inclusion of protic solvents such as water in an amount ranging up to 100 parts by weight, such as at least 30%, 50%, 75%, 85% by weight ([0872])(instant claim 13).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of KAPLAN is that KAPLAN does not expressly teach the specific pigments as recited in claim 7.
D4 discloses a Nutri-Repairing Radiance Mask formulation including PEG-150 (instant claims 1 & 3), PEG-8 (instant claims 1 & 2), amodimethicone (instant claims 9 & 10), and the pigments CI 15985 and CI 14700 (instant claims 6 & 7). The Nutri-Repairing Radiance Mask formulation for treating hair (§Product Description).
NGUYEN teaches methods of coloring hair including pigments such as lakes based on cochineal carmine ([0082]) in an amount of 0.5% to about 40% by weight ([0083])(instant claim 7, carmine – CI 75470).
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 polyethylene glycol, an amino-functionalized silicone polymer, and a pigment, as suggested by KAPLAN, the pigment being one such as carmine, as suggested by NGUYEN, and including two different PEG compositions such as PEG-150 and PEG-8, as described by D3.
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 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.
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 1-13 and 17 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); 18/290,546 (claims 1-16; hereafter ‘546); 18/843,322 (claim 20; hereafter ‘322); 18/785,831 (claim 14; hereafter ‘831); and 18/912,198 (claims 1-19; hereafter ‘198). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the copending Applications claim a at least one alkylene glycol consistent with instant claims 1-3, at least one pigment, and at least one amino-functionalized silicone polymer.
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 ‘546 claim 1 recites at least one divalent cation, and at least one pigment and at least one amino-functionalized silicone polymer. Claim 12 recites the inclusion of at least one polyalkylene glycol polymer consistent with instant formula (AG – instant claim 1).
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.
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 a 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, a pigment and an amino-functionalized silicone polymer. 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.
Citation of Pertinent Prior Art: The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2003/0086892 A1 is cited an teaching polyethylene glycols in cosmetic compositions (see whole documnent).
Conclusion
Claims 1-14 and 17 are pending and have been examined on the merits.
The abstract of the disclosure is objected to. Claim 7 is rejected under 35 U.S.C. 112(b); claims 1-3, 6-7, 9 and 10 are rejected under 35 U.S.C. 102(a)(1); claims 1-14 and 17 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; 18/290,546; 18/843,322; 18/785,831; and 18/912,198. No claims allowed at this time.
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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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619