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 of the species listed below in the reply filed on 8/25/2025 and 1/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The following species were elected by Applicant:
First component -
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376
968
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,
Second component -
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210
994
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,
Third component -
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94
940
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, and
Fourth component -
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92
976
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.
Upon searching the elected species, these were deemed to be free of the prior art as such the search was expanded to the non-elected species which were also found to be free of prior art.
In view of this the restriction requirement mailed 7/25/2025 is fully withdrawn.
Information Disclosure Statement
No Information Disclosure Statement has been filed in the instant application. Applicants are reminded of their duty to disclose all information known to them to be material to patentability as defined in 37 C.F.R. 1.56.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “R2 as hydrogen or methyl” instead of “R2 is hydrogen or methyl”
Claim 1 recites “R3 as hydrogen or methyl” instead of “R3 is hydrogen or methyl”
Claim 31, line 17 (after the 4th structure) recites “and” this should be deleted as “and” is already recited at the end of the claim.
Claim 32, recite “Wherein x” instead of “wherein x”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1, 22-30, 32 and 34-38 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 recites “wherein the polyamine is a polyethyleneimine, a polyallylamine hydrochloride, a polydiallyldimethylammonium chloride, a polyvinyl amine, an aminopolysaccharide, an aminopolysilicone, and the aminoalkoxysilane is a monomeric aminoalkoxysilane” when listing the polyamines there is no conjunctions such as “and” or “or” and no language such as “selected from the groups…” thus it’s unclear is the polyamine is a mixture of all those listed above or is the list was meant to be in the alternative such as only 1 is required.
For purposes of examination the claim will be interpreted as reciting “wherein the polyamine is selected from the group consisting of a polyethyleneimine, a polyallylamine hydrochloride, a polydiallyldimethylammonium chloride, a polyvinyl amine, an aminopolysaccharide and an aminopolysilicone; and the aminoalkoxysilane is a monomeric aminoalkoxysilane”
Claims 22-30, 32 and 34-38 are rejected in view of their dependency of claim 1. These claims do not cure the deficiencies of claim 1 and this are deficient for the same reasons.
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 and 22-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,766,394. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1: US’394 teaches a method for treating keratin material, comprising:
pre-applying to the keratin material a polyamine in water to form a pretreated keratin material;
and then applying to the pretreated keratin material a first component comprising a medium and a first compound according to Formula I; and a second component comprising a medium and a second compound according to Formula II;
wherein the first and second components are applied sequentially or simultaneously to the pretreated keratin material;
wherein Formula I is
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300
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; x is an integer of from about 5 to about 500 and y is an integer of from about 1 to about 100; (i.e. elected species of the first component),
wherein Formula II is AM-Me2SiO—(SiMe2-O)x—(Si(MeAM)-O)y—(SiMe2-O)x′—SiMe2-AM; wherein
AM is R4a—NH2; wherein R4a is a divalent organic group bonded to Si and NH2 and is alkylenyl of 1 to 3 carbons or a di-alkyenyl amine group of 3 carbons in each alkyenyl group; y is at least 2; the sum of x and x′ is about 5 to about 10,000, this embraces the elected species of the second component; and
Wherein the polyamine is (CH3CH2O)3Si(CH2)3NH2 (i.e. elected species of the third component) (US’394 – claim 1).
Regarding claims 22: The elected species contains the olefinoyloxy group: —(CH2)nOCH2CH(OH)CH2OC(O)C(H)═CH2, wherein n=3 (US’394 – claim 1).
Regarding claims 23-30: US’394 anticipates the species elected by Applicant, as the structures listed and molecular weight is expected to fall within the claimed ranges.
Regarding claim 31: US’394 teaches that a suitable polyamine includes (CH3CH2O)3Si(CH2)3NH2 .
Regarding claim 32: As discussed above, US’394 teaches the 2nd structure claimed.
Regarding claim 33: US’394 teaches that a suitable polyamine includes (CH3CH2O)3Si(CH2)3NH2.
Regarding claim 34: US’394 teaches the first and/or second component further comprises pigment microparticles and the keratin material is hair. US’394 teaches treating hair by forming a colored coating on the hair, this reads on treating keratin fibers by hair coloring (US’394 – claims 6 and 9).
Regarding claim 35: US’394 teaches the structure of the first and second components, as such the molar ratio between these compounds is expected to fall within the molar ratio claimed. As mentioned above, the method forms a colored coating on hair.
Claims 1, 22-35 and 36-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,766,394, as applied to claims 1 and 22-35 above, and further in view of Steigerwald (US 2007/0151047).
US’394 teaches the limitations of claims 1 and 22-35, but does not teach the pigment microparticles to be those listed in claims 36-37.
Steigerwald teaches method of coloring hair which comprise inorganic colored pigments such as iron oxides, ultramarines, etc. (Abs).
It would have been prima facie obvious to formulate the microparticle pigments of US’394 with inorganic compounds such as iron oxide as Steigerwald teaches that inorganic compounds such as iron oxide is suitable for coloring hair and its prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended purpose.
Claims 1, 22-35 and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,766,394, as applied to claims 1 and 22-35 above, and further in view of WO2011128255.
US’394 teaches the limitations of claims 1 and 22-35, but does not teach mediums of claim 38.
US’394 does teach that suitable mediums for the 1st and 2nd component include protic or aprotic organic solvent or combinations thereof, thus it would also be obvious to use these as medium for the 3rd component as they are taught to be suitable medium for use.
WO’255 teaches a hair dyeing process comprising the following steps: a) a first composition comprising one or more silicone or non-silicone, amino polymers is applied, b) a second cosmetic composition comprising one or more pressure-sensitive adhesive silicones, one or more volatile solvents and one or more pigments is applied (Abs). WO’255 teaches water to be suitable medium for dispersing silicone polymers for coloring hair.
It would have been prima facie obvious to use a mixture of water and/or protic or aprotic organic solvents in the 1st, 2nd and 3rd component of US’394 as WO’394 teaches water to be a suitable medium for coloring hair and its prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended purpose.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
WO2011128255 teaches process of dyeing or coloring keratin fibers by pretreating the fiber and then coloring steps involving two steps, a step of applying first composition comprising one or more silicone or non-silicone amino polymers, and a step of applying second composition comprising pressure sensitive adhesive silicone, one or more volatile solvents and one or more pigments (Abs). WO’255 mentions pretreating the keratin fibers before applying the first and second compositions (see the title, page 1, line 2, page 30, line 37), but does not teach the cosmetic composition used to pretreat the keratin and does not teach the 1st and 2nd composition to have silicones compounds such as those recited by the instant claims.
US9949542 teaches hair coloration method involving step i) applying a first composition comprising at least one cationic polymer to a first portion of the hair; and step ii) applying a second composition comprising at least one anionic polymer to a second portion of the hair, wherein the first and the second portions have at least one common area (See the whole document with emphasis on column 3, lines 11-19); and these steps are repeated (column 3, lines 28-67). US’542 teaches that the hair may be pretreated prior to step i) (column 5, lines 25-39 and claim 7). US’542 is silent to the composition that makes up the pretreatment composition and does not teach the 1st and 2nd composition to have the claimed silicone compounds.
Siltech Corporation (Silmer OH ACR Series) discloses polymers that fall within the structure of Formula I, but is silent to the use of these polymer for treating hair.
Siltech Corporation (Silmer NH Di-50) discloses polymers that fall within the structure of Formula II, but is silent to the use of these polymer for treating hair.
While the prior art teaches general methods of treating hair by using pretreatment compositions and subsequently applying 1st and 2nd compositions containing silicones, there is no motivation or suggestion in the prior art to use the specifically claimed 1st, 2nd and 3rd components to perform the claimed method.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
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