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 .
Election/Restrictions
Applicant's election with traverse of the composition of Claims 1-13 in the reply filed on 16 January 2026 is acknowledged. The traversal is on the ground(s) that the combined teachings of Lestrange and Au do not suggest the utility of ammonium carbonate as a carbonate salt for use in hair lightening compositions. This is not found persuasive for the reasons set forth previously.
The requirement is still deemed proper and is therefore made FINAL.
Status of the Claims
Claims 1-18 are pending.
Claims 14-18 are withdrawn from consideration as directed to non-elected inventions
Claims 1-13 are presented for examination and rejected as set forth in greater detail below.
Priority
The instant application is a National Stage entry of International application PCT/EP2022/070993 filed 26 July 2022.
The Examiner notes that the Application Data Sheet filed 25 January 2024 has erroneously indicated the filing date of the international application as 26 July 2023. Appropriate correction is required.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 pertaining to French national application FR2108161 filed 27 July 2021.
Claim Interpretation
Applicants Claims are directed to compositions containing a combination of peroxygenated salts, ammonium carbonate or bicarbonate, and a polyphosphorous derivative different from the peroxygenated salt. Dependent Claims 2 and 3 narrow the identity and amount of peroxygenated salt to be present. Claim 4 places limitations of the amount of ammonium compound present in the composition. Claims 5-10 limit the identity and quantity of polyphosphorous derivatives present in the composition. Claims 11 and 12 include a thickener in defined amounts in the composition, with Claim 13 indicating hydrogen peroxide is also to be included.
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.
Claims 1-13 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, each of the claims identify broad limitations (polyphosphorous derivatives in claim 1, peroxygenated salts in claim 2, concentrations of peroxygenated salts in Claim 3, etc.) concerning the identity or concentration of elements recited by the claims, while also indicating that subgenera, individual species, or narrower concentration ranges of the more broadly recited elements are “preferable,” “more preferable,” or represent species “such as” individually identified compounds. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The examiner notes that each of the claims under examination incorporate some version of these kinds of “nested” limitations which applicants need address.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over LaGrange (U.S. PGPub. 2020/0129392) in view of Au (U.S. PGPub. 2006/0137111).
LaGrange describes cosmetic compositions for use in lightening keratin fibers including hair that combine the hydrogen peroxide of Claim 13 with one or more carbonates or carbonate generating systems, polyphosphorous compounds, and a peroxygenated salt distinct from the polyphosphorous derivative. (Abs.). LaGrange indicates that the carbonates or carbo9nate-generating systems are to be included in concentrations of about 0.2-20% by weight, a range overlapping and therefore rendering obvious the concentration recited in Claim 4. [0034-44], See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Preferable polyphosphorous compound of the LaGrange compositions includes sodium pyrophosphate which addresses the limitations of Claims 5-9, which are to be included in the compositions in concentrations of 0.5-20% by weight, overlapping and therefore addressing the limitations of Claim 10. [0097-99], see Peterson, supra. Persulfates as are recited by instant Claim 2 represent a preferred peroxygenated salt per the teachings of LaGrange, advantageously when incorporated in concentrations of 0.01-50% of the composition, a range overlapping and therefore rendering obvious the limitations of Claim 3. [0108-09], See Peterson, supra. While LaGrange indicates that in certain preferred embodiments of the compositions, ammonium salts are not present, LaGrange does not go so far as to definitively exclude them from all compositions falling within the scope of their disclosure. [0120-21]. Adjuvants such as the thickeners of Claim 11 may be incorporated in concentrations of between 0.1-20% by weight of the composition as is recited by Claim 12. [0400-01].
So, the LeGrange disclosure describes cosmetic compositions for the lightening of hair which include hydrogen peroxide, persulfates, sodium pyrophosphate, carbonates, and thickeners in concentrations overlapping those of the present claims. LaGrange does not, however, enumerate an ammonium carbonate among the carbonates, or indeed among any of the myriad additional components which may be used in the compositions otherwise described.
This is cured by the teachings of Au, which indicates that ammonium carbonate, and in particular ammonium carbonate in combination with additional carbonates, provides hair colorant compositions having superior lift and dyeing properties, while additionally leaving the hair feeling soft and manageable while providing a surprisingly high conditioning benefit. [0032; 0048]. Total carbonate concentrations in excess of 10% are advocated. [0049].
It therefore would have been prima facie obvious to one of ordinary skill in the art at the time of the instant application to have utilized ammonium carbonate in the carbonate-containing compositions of LaGrange, owing to the fact the art recognized that such use provides hair colorant compositions having superior lift and dyeing properties, while additionally leaving the hair feeling soft and manageable while providing a surprisingly high conditioning benefit. After all, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95 (Fed. Cir. 1983).
Conclusion
No Claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M BASQUILL whose telephone number is (571)270-5862. The examiner can normally be reached Monday through Thursday, 5:30 AM to 4 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN M BASQUILL/Primary Examiner, Art Unit 1614