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 .
Status of Claims
Claim amendment filed on 04/21/2026 is acknowledged.
Claims 1, 3, 5, 7, 10, and 13-17 are amended. Claims 6 and 19 are cancelled. Claim 21 is new.
Claims 1-5, 7-18, and 20-21 are pending and being examined on the merits herein.
Priority
The instant application 18294992, filed on 02/02/2024, is a 371 of PCT/EP2022/066692, filed on 06/20/2022, which claims foreign priority of Germany 10 2021 208 460.5, filed on 08/04/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 04/24/2026, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Withdrawn Objections/Rejections
All previous claim Objection(s)/ Rejection(s) as set forth in the previous Office action (mailed 02/06/2026) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 04/21/2026.
Claim Interpretation
Claims 1 and 2 are interpreted below:
Claim 1 is interpreted as an agent comprising at least one silicone polymer and at least one metallic pigment comprising aluminum with an oxidation state of 0, wherein the silicone polymer is amino-functionalized with at least one amino group. “Oxidation state of 0” is interpreted as inherent property of aluminum in elemental state, e.g., aluminum by itself as metal, not in compound state.
Claim 2 is interpreted as the agent of claim 1, wherein the silicone polymer is functionalized with at least two amino groups.
Claim Rejections - 35 USC § 102
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 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 1-5, 7, 9-18, and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Neuba et al. (DE102018222022, 06/18/2020, Machine translation relied upon below; in record of 02/06/2026).
Neuba throughout the reference teaches a method for coloring keratinous material comprising a coloring agent (e.g., Abstract).
Regarding instant claims 1, 4, and 18, Neuba teaches a method for coloring (or dyeing) keratin material, in particular human hair (corresponding to instant claim 18), comprising application of coloring agent comprising a1) at least one amino-functionalized silicone polymer, a2) at least one coloring compound, and a3) at least one non-ionic surfactant (e.g., Abstract), corresponding to instant claim 1.
Neuba exemplifies in a formulation of the dyeing agent comprising Dow Corning 2-8566 (Siloxanes and Silicones, 3-[(2-Aminoethyl)amino]-2-methylpropyl Me, Di-Me-Siloxane) and Colorona Bronze (Mica, CI77491 iron oxides) [0199]. As evidenced by instant specification Dow Corning 2-8566 is amino-functionalized silicone polymer with the structural unites Si-I and Si-II (see Neuba DE original copy [0039]). Neuba presents Si-I and Si-II structural units of the amino-functionalized silicone polymer [0037], which is identical to the structures Si-I and Si-II in instant claim 4. Therefore, Neuba formulation teaches the amino-functionalized silicone polymer in instant claims 1 and 4. Neuba teaches that the CI77491 in the formulation is mica-based pigment coated with metal oxide [0075], and this mica-based iron oxide CI77491 is a platelet-type metallic pigment as evidenced by instant specification [0123], corresponding to the platelet-type metallic pigment in instant claim 1, of which the metal is iron out of many other pigments with various metal types taught by Neuba (e.g., [0077]-[0078]). Neuba further specifies that the pigment particles can be inorganic substrates such as aluminum (e.g., [0084]), representing the metal aluminum with an oxidation state of 0 (not in compound state) as interpreted in instant claim 1.
Regarding instant claim 2-3, Neuba teaches the at least one amino-functionalized silicone polymer comprises at least one structural unit of the formula (Si-Amino) (see Neuba DE original [0027]; [0029]) with ALK1 and ALK2 independently representing a linear or branched, divalent C1-C20 alkylene group [0029] (corresponding to structural formula Si-amino in instant claim 3), indicating the secondary amino group can be located at different positions of the amino-functionalized silicone polymer [0027] (corresponding to more than one amino groups in instant claim 2 in light of claim interpretation).
Regarding instant claim 5, Neuba presents in the formulation discussed above, the agent comprising 2.0% Dow Corning 2-8566 amino-functionalized polymer (falling within the range 0.1 to 8.0% in instant claim 5), 2.0% CI77491 iron oxides ([0199], see original Neuba DE [0199] table). MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding instant claim 7, Neuba teaches that the pigment has a mean particle size D50 of 1.0 to 50 um, preferably of 5.0 to 45 um, preferably of 10 to 40 um, in particular of 14 to 30 um (e.g., [0086]), ranges falling within 0.5 um to 1 mm in instant claim 7. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding instant claim 9, Neuba specifies that the platelet-type metallic pigments, e.g., colored metal oxides, metal hydroxides, metal oxide hydrates, bronze pigments, and/or colored pigments based on mica or micaceous oxide, which are coated with at least one metal oxide and/or one metal oxychloride (e.g., Claim 7; [0071]). Direct dyes are used in the form of their salts, carboxylic acid groups or sulfonic acid groups [0098], such as aluminum salts of acid dyes [0100], which is apparently uncoated aluminum pigment.
Regarding instant claim 10, Neuba indicates that the pigments can present in a total amount preferably 0.1 to 8 wt.%, more preferably 0.3 to 6 wt.% and most preferably 0.5 to 4.5 wt.% of the total weight of the agent (e.g., Claim 9), ranges falling within 0.01 to 10 wt.% of instant claim 10. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding instant claim 11, Neuba specifies that at least one inorganic pigment, preferably selected from the group of colored metal oxides, metal hydroxides, metal oxide hydrates, silicates, metal sulfides, complex metal cyanides, metal sulfates, bronze pigments and/or colored pigments based on mica or micaceous oxide, which are coated with at least one metal oxide and/or one metal oxychloride.
Regarding instant claim 12, Neuba teaches at least one organic pigment in the agent can be selected from the group consisting of carmine, quinacridone, phthalocyanine, sorghum, blue pigments with the color index numbers CI 42090, CI 69800, CI 69825, CI 73000, CI 74100, CI 74160, yellow pigments with the color index numbers CI 11680, CI 11710, CI 15985, CI 19140, CI 20040, CI 21100, CI 21108, CI 47000, CI 47005, green pigments with the color index numbers CI 61565, CI 61570, CI 74260, and orange pigments with the color index numbers CI 11725, CI 15510, CI 45370, CI 71105, red pigments with the color index numbers CI 12085, CI 12120, CI 12370, CI 12420, CI 12490, CI 14700, CI 15525, CI 15580, CI 15620, CI 15630, CI 15800, CI 15850, CI 15865, CI 15880, CI 17200, CI 26100, CI 45380, CI 45410, CI 58000, CI 73360, CI 73915 and/or CI 75470 [0083].
Regarding instant claim 13, Neuba teaches the agent can contain pigments at preferably an amount of 0.001 to 20 wt.%, more preferably 0.1 to 8 wt.%, even more preferably 0.6 to 6 wt.% and most preferably 1.0 to 4.5 wt.% of the total weight of the agent (e.g., [0087]), while an inorganic and/or organic dye different from the at least one platelet-type metallic pigment can be one or more direct dyes (e.g., [0090], [0093], [0106]), at an amount of 0.01 to 10.0 wt.%, preferably 0.1 to 8.0 wt.%, more preferably 0.2 to 6.0 wt.% and most preferably 0.5 to 4.5 wt.% (e.g., [0106]). It is anticipated that the ratio of platelet-type metallic pigment to the other pigment in the formulation can be within the range of 5.0 to 0.1 based on the various amount options to choose from Neuba.
MPEP 2131.03.I states “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated' if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)). For this instance, pigment weight amounts are taught in prior art, therefore, the claim of ratio is “anticipated”. Moreover, MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Regarding instant claim 14, Neuba exemplifies water amount in a formulation at 61% (calculated as 100-15-10-2.5-1.5-1.5-6.0-2.0-0.5 =61) [0139], falling within 0-70 wt.% amount range in instant claim 14.
Regarding instant claim 15, Neuba teaches using ethanol as non-ionic solvent in formulation example [0138], and specifies that the agent can contain solvents including glycerin, propylene glycol, fatty alcohol, and others (e.g., [0172]).
Regarding instant claim 16, Neuba teaches the agent can contain at least one non-ionic surfactant (e.g., [0112]), the non-ionic surfactant can comprise a polyol group, a polyalkylene glycol ether group, or a combination of polyol and polyglycol ether groups, for example, addition of products of 2 to 50 mol of ethylene oxide to linear and branched fatty alcohols with 6 to 30 carbon atoms (e.g., [0113]), and Neuba further presents ethoxylated polyalkylene fatty alcohol formula T1 and T2 (see Neuba original DE copy, [0121]; [0127]). For one person with ordinary skills of art, the polyalkylene glycol comprising 6 to 30 carbon atoms in the polyethylene oxide would obviously result in the formula AG as shown in instant claim, wherein x in prior art representing 3-15 integer resulted from each unit containing two carbon atoms in the formula. Neuba further teaches the non-ionic components can present at 80 wt.%, preferably 85 wt.%, further preferably 90 wt.% and most preferably 99 wt.% of the agent (e.g., [0135]), falling within the range of 10 to 99 wt.% in instant claim.
Regarding instant claims 17 and 20, Neuba teaches the method of applying the agent to keratin materials, e.g., human hair [0182-0183], for especially preferably 30 seconds to 2 minutes on the hair being proven to be particularly advantageous (e.g., [0183]), time falling within 30 seconds to 45 minutes in instant claim.
Regarding instant claim 21, Neuba teaches that the agent can contain ultramarine, sodium aluminum sulfosilicates, CI 77007, Pigment Blue 29 (e.g., Claim 8), which is another platelet-type metallic pigment different from pigment metal aluminum with oxidation state of 0.
MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). For this instance, aluminum (not in compound form) pigment has bene taught by Neuba, the oxidation state of 0 is the aluminum inherent property that is not separable from the material, therefore oxidation state of 0 is necessarily present in prior art.
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 1-5, 7-18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Neuba et al. (DE102018222022, 06/18/2020, English copy uploaded, PTO-892) as applied to claims 1-7 and 9-20 above, in view of Huber et al. (CN107567484, 01/09/2018, English copy uploaded, PTO-892).
Neuba teaches an agent for dyeing keratin material, e.g., human hair, the agent comprising at least one silicone polymer that is functionalized by at least one amino group, and at least one platelet-type metallic pigment, e.g., aluminum (not in compound state, known as oxidation state 0) as described above in great detail and incorporated herein.
Neuba does not teach the platelet-type metallic pigment can comprise at least one vacuum-metalized pigment as recited in instant claim 8.
Huber throughout the reference teaches pearlescent pigments and methods for producing same and use of such pearlescent pigments (e.g., Abstract; title; Claim 1).
Huber teaches pearlescent pigments are monolithically constructed substrate platelets composed of a metal oxide (e.g., Abstract; Claim 5), and glossy pigments especially metallic pigments are widely used in many fields including decorative cosmetic formulations (e.g., [0004]), while pigment based on flakes can be used for soft-focus effect in cosmetic formulations (e.g., [0010]). Huber teaches that vacuum metallized pigments (VMP) is preferably used in the formulation and VMP can be obtained by releasing aluminum from the metallized film (e.g., [0047]), having low substrate thickness ranging from 1 to 40 nm and exceptionally smooth surfaces with enhanced reflectivity [0047].
It would have been prima facie obvious for one person with ordinary skills of art prior to filing date to incorporate Huber’s teaching of vacuum-metallized pigment into the agent taught by Neuba to arrive at current invention. Because Neuba teaches using metallic and pearlescent pigments for the hair-dyeing agent, while Huber teaches that vacuum-metallized pigments can have exceptionally smooth surface with enhanced reflectivity, that would have motivated scientists in the field to implement this ingredient into the formulation for reasonable expectation of success. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Response to Arguments
Applicant’s remarks/arguments filed on 04/21/2026 have been fully considered.
35 U.S.C. 112 Rejections
Applicant points out the platelet-type metallic pigment explanation in specification, and believes that the rejections should be withdrawn.
Examiner finds the remark and explanation based on description in instant specification convincing, and the rejections are overcome.
Art Rejections
Applicant asserts that aluminum with oxidation state of 0 as shown in amended claims is not disclosed in prior art Neuba, therefore, art rejections should be withdrawn.
Neuba teaches pigment aluminum not in compound form, which constitutes oxidation state 0. As presented in office action (copied below for reference), oxidation state 0 is inherent property of the metal aluminum, not in compound form (e.g., oxide):
MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). For this instance, aluminum (not in compound form) pigment has bene taught by Neuba, the oxidation state of 0 is the aluminum inherent property that is not separable from the material, therefore oxidation state of 0 is necessarily present in prior art.
The argument is not persuasive, and the art rejections are maintained. Please take entire office action as presented above as a complete response to remarks/arguments.
Nonstatutory Double Patenting Rejections
Applicant requests the rejections be withdrawn or held in abeyance.
The nonstatutory double patenting rejection over copending Application No. 18290546 has been withdrawn, because Application No. 18290546 has been abandoned.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
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/DX.Z./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616
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