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 .
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.
Election/Restrictions
Applicant’s election with traverse of Group I (claims 1-19) in the reply filed on 12/23/2025 is acknowledged.
The traversal is on the ground(s) that claim 20, as amended, recites a method claim which can only be practiced with the recited elements of claim 1.
The Examiner disagrees. The inventions of Groups I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product as claimed can be used in a materially different process of using that product. For example, the product as claimed can be used for moisturizing the skin (includes squalane (claim 3) which is known to act as a moisturizer for the skin; See Agarwal, Squalane for Skin - The Natural Moisturizer).
The requirement is still deemed proper and is therefore made FINAL.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 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 1-4 and 8-19 are rejected under 35 U.S.C. 103 as being as being obvious over Kitabata et al. (US 2002/0189034 A1) in view of Marsh (US 2009/0119852 A1).
Regarding claim 1, Kitabata discloses hair dyeing/bleaching compositions which comprise a primary agent containing an alkali agent, such as ammonia water, and a secondary agent containing an oxidizing agent (abstract). The compositions further include an oily component such as squalane [0050], a pH adjustor, such as arginine [0039], water [0053] [0060] [0087], and chelating agents [0049].
Kitabata does not teach the chelating agent is selected from the those recited in the instant claim 1, such as EDDS.
Marsh teaches a hair colorant composition (abstract) with the chelant EDDS [0096]. Marsh teaches that chelants, such as EDDS, are incorporated into hair colorant compositions as stabilizers and preservatives and that they provide hair fiber damage benefits [0096].
Since Kitabata generally teaches a hair coloring composition with chelating agents, it would have been prima facie obvious to one of ordinary skill in the art to include the chelant EDDS, within the teachings of Kitabata, because Marsh teaches EDDS in a hair coloring composition. An ordinarily skilled artisan would be motivated to use a chelant, such as EDDS, because Marsh teaches that they are incorporated into hair colorant compositions as stabilizers and preservatives and that they provide hair fiber damage benefits [0096].
Furthermore, generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, since Kitabata generally taught chelating agents, it is prima facie obvious to select EDDS for incorporation into a hair coloring composition based on its recognized suitability for the intended use as a chelant, as taught by Marsh [0096].
Claims 2-3 are rendered prima facie obvious because Kitabata discloses squalane [0050].
Claim 4 is rendered prima facie obvious because Kitabata discloses the oily component, such as squalane, is present in an amount of 0.1-50 wt.% in the primary agent [0050]. The mixing ratio of the primary agent and secondary agent is in the range of 1:0.5-1:3 [0061]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claim 8 is rendered prima facie obvious because Kitabata discloses arginine [0039].
Claim 9 is rendered prima facie obvious because Kitabata discloses the pH adjustor, such as arginine, is present in the primary agent in an amount of 0.1-10 wt.% [0039]-[0040]. The mixing ratio of the primary agent and secondary agent is in the range of 1:0.5-1:3 [0061]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 10 is rendered prima facie obvious because Kitabata discloses ammonia water as an alkali agent (abstract).
Claim 11 is rendered prima facie obvious because Kitabata discloses the content of the alkali agent in the primary agent is 1-25 wt.% [0036]. The mixing ratio of the primary agent and secondary agent is in the range of 1:0.5-1:3 [0061]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 12 is rendered prima facie obvious because Kitabata discloses hydrogen peroxide as an oxidizing agent [0057].
Claim 13 is rendered prima facie obvious because Kitabata discloses the content of the oxidizing agent in the secondary agent is 1-12 wt.% [0057]. The mixing ratio of the primary agent and secondary agent is in the range of 1:0.5-1:3 [0061]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 14 is rendered prima facie obvious because Kitabata discloses the content of water in the compositions is from around 62 wt.% to 67 wt.% [0087]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 15 is rendered prima facie obvious because Kitabata discloses the pH of the hair dyeing/bleaching composition is 9.0-12.0 [0028]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 16-17 are rendered prima facie obvious because it would have been prima facie obvious to include EDDS, as taught by Marsh, within the teachings of Kitabata, as previously discussed.
Regarding claim 18, while Kitabata does not teach the amount of chelating agent in the composition, it would have been prima facie obvious to include EDDS, as taught by Marsh, within the teachings of Kitabata as previously discussed, and Marsh teaches that EDDS is used in an amount of 0.5 wt.% [0096]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claim 19, Kitabata discloses a hair dyeing/bleaching kit with (i) the primary agent for a two-agent hair dyeing/bleaching composition and (ii) a secondary agent containing an oxidizing agent [0017]-[0019]. Kitabata discloses the primary agent includes an alkali agent, such as ammonia water (abstract) [0013]-[0016], an oily component, such as squalane [0049]-[0050], a pH adjustor, such as arginine [0039]-[0040], and a chelating agent [0049]. It would have been prima facie obvious to include EDDS, as a chelating agent, as taught by Marsh, within the teachings of Kitabata, as previously discussed.
Claims 5-7 are rejected under 35 U.S.C. 103 as being as being obvious over Kitabata et al. (US 2002/0189034 A1) in view of Marsh (US 2009/0119852 A1) and further in view of Heilmann et al. (WO 2021/084084 A1).
The 35 U.S.C. 103 rejection over Kitabata in view of Marsh was previously discussed.
Kitabata does not disclose the composition includes alanine, as recited in claim 5, glycine, as recited in claim 6, or valine, as recited in claim 7.
Heilmann discloses a hair bleaching and dyeing composition with amino acids selected from alanine, glycine, and valine (abstract; pg. 4, bottom – pg. 5, top). Heilmann teaches that adding the amino acids to the composition for hair leads to less damage of keratin fibers, thus, cosmetic properties of keratin fibers such as touch, feel, shire, and color evenness and bleaching power are improved (pg. 4, top).
Since Kitabata generally teaches a hair coloring composition, it would have been prima facie obvious to one of ordinary skill in the art to include alanine, glycine, and valine, within the teachings of Kitabata, because Heilmann teaches these amino acids in a hair coloring composition. An ordinarily skilled artisan would be motivated to use amino acids (such as alanine, glycine, and valine) because Heilmann teaches that adding amino acids to the composition for hair leads to less damage of keratin fibers, thus, cosmetic properties of keratin fibers such as touch, feel, shire, and color evenness and bleaching power are improved (pg. 4, top).
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,383,482 in view of Kitabata et al. (US 2002/0189034 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition except for a saturated acyclic terpane, such as squalane, and an amino acid, such as arginine.
Kitabata discloses hair dyeing/bleaching compositions which include an oily component such as squalane [0050] and a pH adjustor, such as arginine [0039].
It would have been prima facie obvious to one of ordinary skill in the art to include squalane and arginine within the claims. The ordinarily skilled artisan would have been motivated to formulate the composition, as taught by Kitabata [0039] [0050].
Conclusion
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612