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.
Election/Restrictions
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06 January 2026.
Applicant's election with traverse of Species A (polysilicone-29) and B (compounds from (b2)) in the reply filed on 06 January 2026 is acknowledged. The traversal is on the ground(s) that there is no burden and the lack of unity requirement has not been met. This is not found persuasive because the different species for Species A and B would require multiple search queries and classification searches. Therefore, there is a serious search burden to search all of the claimed species.
Furthermore, Forgione (EP 3281623 A1) teaches 15% by mass of polysilicone-29 (pg. 4 of OA) or 1-20% of a film-forming aminosilicone polymer (para. 13), 0.5-30% of ethanol (para. 129), and water. Therefore, the groups lack unity of invention because the special technical feature does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
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) 1-10 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 1 and the amount of Component A may be 1, which fits within the mass ratio range in claim 4. The composition may further include benzyl alcohol as a preservative (para. 132), addressing claim 15.
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613