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 .
Priority
The instant application was filed 14 December 2023, is the national stage entry of PCT/JP2019/029459 filed 26 July 2019, and is a divisional of 17/263,397 filed 26 January 2021. The Applicant claims priority to foreign application JP2018-141495 filed 27 July 2018. An English copy of the foreign document has not been provided. Therefore, the effective filing date of the instant application is 26 January 2021.
Examiner’s Note
The Applicant's amendments and arguments filed 15 June 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections
not reiterated from previous office actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 15 June 2026, it is noted that claims 1, 2, 4, and 15 have been amended, claims 3 and 6 have been canceled, and no new claims have been added. The amendments have been made to narrow the range for % or ratios. No new matter has been added.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim recites “(B) a micelle formation inhibitor comprising” with no components listed. Appropriate correction is required.
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.
Claim(s) 1, 4, 5, 7-10 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Forgione et al. (EP 3281623 A1).
Forgione teaches a hair coloring agent and method of applying or treating the hair (entire teaching; para. 26) comprising a film-forming aminosilicone polymer that is a product of the reaction of a siloxane having at least two oxiranyl or oxetanyl groups and an aminosilane (claim 1). Forgione provides an example of 8% of Silsoft CLX-E (containing 15% by mass of polysilicone-29), 1.5% of ethanol, 2.0% of a preservative, and 81.85% of water (Example 2 in para. 149). The content of polysilicone-29 in Example 2 is 1.2% (8 x 0.15). The amount of film-forming aminosilicone polymer may also be 1-20% (para. 13) and the amount of ethanol may be 0.5-30% (para. 129) when ethanol is used as an anti-freeze agent, addressing the amounts in claim 1. Polysilicone-29 addresses the Applicant’s election of polysilicone-29 for Component (A). Ethanol is a micelle formation inhibitor, which addresses Applicant’s election of compounds from (b2) for Component (B). The species are also interpreted as addressing claims 3 and 10, as well as the reaction compounds of claims 5-9. In some examples, 1.0 g of the hair composition may be applied to 1.0 g of hair strands, addressing the ratio in claim 2. According to the aforementioned amounts of components, the amount of Component B may be 5% and the amount of Component A may be 1%, which is interpreted as fitting within the amended mass ratio range in claim 4. The composition may further include benzyl alcohol as a preservative (para. 132), addressing claim 15.
In regards to Applicant’s amendment of the mass of Component (A) in claim 1, since Forgione teaches 1-20% of a film-forming aminosilicone polymer (para. 13), such as Silsoft CLX-E (para. 68), it is interpreted that 1% of Silsoft CLX-E would result in 0.15% (1 x 0.15) of polysilicone-29.
In regards to Applicant’s amendment in claim 4, since the amount of Component (B), ethanol, may be 0.5-30% (para. 129), such as 20%, and the amount of polysilicone-29 in Silsoft CLX-E may be 1.5% (10 x 0.15 for 10% of film-forming aminosilicone polymer), the ratio of Component (B): Component (A) is interpreted as being roughly 13.3 (20:1.5).
In regards to Applicant’s amendment in claim 15, the composition may further comprise benzyl alcohol as a preservative (para. 132).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Forgione (EP 3281623 A1), as applied to claims 1, 4, 5, 7-10 and 15 above, in view of Woodland et al. (WO 2017108674 A1).
In regards to claim(s) 1, 4, 5, 7-10 and 15, Forgione et al., as applied supra, is herein applied in its entirety for its teachings of a hair coloring composition comprising aminosilicone, ethanol, and water.
Forgione does not teach a bath ratio of 0.001 to 0.5 in amended claim 2.
Woodland teaches a hair composition comprising polysiloxanes (pg. 3, ln. 35) and aminosilicones (pg. 1, lns. 18-20), ethanol (pg. 13, ln. 19), and water (pg. 16, ln. 16). The composition may comprise oxidizing agents and dyes (pg. 17, ln. 10), which is interpreted as a hair treatment composition capable of coloring or dyeing. Woodland teaches an example of a bath ratio of 0.5 (pg. 20, lns. 6-7).
Since Forgione does not teach a bath ratio of 0.001 to 0.5 in amended claim 2, one of ordinary skill in the art would have been motivated to use Woodland’s teaching of a bath ratio of 0.5. A skilled artisan would have been led to combine the teachings since both Woodland’s and Forgione’s composition are hair treatments that may be used for coloring. “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).”
Response to Arguments
Applicant's arguments filed 15 June 2026 have been fully considered but they are not persuasive.
The Applicant argues that amended claim 1 is allowable over Forgione (Remarks, pg. 5).
Applicant’s argument is not found persuasive. In regards to Applicant’s amendment of the mass of Component (A) in claim 1, since Forgione teaches 1-20% of a film-forming aminosilicone polymer (para. 13), such as Silsoft CLX-E (para. 68), it is interpreted that 1% of Silsoft CLX-E would result in 0.15% (1 x 0.15) of polysilicone-29.
The Applicant argues that amended claim 2 is allowable over Forgione (Remarks, pgs. 5-6).
Applicant’s argument is not found persuasive. Woodland teaches a hair composition comprising polysiloxanes (pg. 3, ln. 35) and aminosilicones (pg. 1, lns. 18-20), ethanol (pg. 13, ln. 19), and water (pg. 16, ln. 16). The composition may comprise oxidizing agents and dyes (pg. 17, ln. 10), which is interpreted as a hair treatment composition capable of coloring or dyeing. Woodland teaches an example of a bath ratio of 0.5 (pg. 20, lns. 6-7).
Since Forgione does not teach a bath ratio of 0.001 to 0.5 in amended claim 2, one of ordinary skill in the art would have been motivated to use Woodland’s teaching of a bath ratio of 0.5. A skilled artisan would have been led to combine the teachings since both Woodland’s and Forgione’s composition are hair treatments that may be used for coloring. “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).”
The Applicant argues unexpected results regarding the durability and longevity of the claimed composition (Remarks, pg. 6).
Applicant’s argument is not found persuasive. The Applicant refers to para. 151 of the instant specification. It is noted that the filed specification is absent of para. 151. Instead, Table 2 used as the reference for the present composition.
Table 2 recites epoxyaminosilicone copolymer (Polysilicone-29), ethanol in Examples 1-4, and water. Any evidence of better durability and longevity do not have a causal relationship with the merits and scope of the claimed invention, which is, broadly, an epoxyaminosilane copolymer formed from a reaction product of several different options. As such, the data are not commensurate in scope with the claims.
“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 [95 USPQ2d 1525] (Fed. Cir. 2010) (quotation omitted). Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 [97 USPQ2d 1673] (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”); Ormco Corp., 463 F.3d at 1312 (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”); In re Woodruff, 919 F.2d 1575, 1578 [16 USPQ2d 1934] (Fed. Cir. 1990).
Furthermore, the adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Accordingly, this type of modification (modifying the bath ratio from 1 to 0.5) would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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