DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ response to the Requirement for Restriction, filed 9 June 2026, in the matter of Application N° 18/549,841. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No additions, amendments, or cancellations have been made to the previously considered claims. No new matter has been added.
Election/Restrictions
Applicants’ election of Group III (claims 1-18), without traverse, is acknowledged.
Applicants’ election of Formula XII as the species for consideration, without traverse, is also acknowledged.
Applicants’ election is made FINAL. The claims of Groups: I and II (claims 19-21), as well as claims 4-7 embodying non-elected species limitations, are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim. Applicants timely traversed the restriction requirement between the composition and method.
Thus, claims 1-3 and 8-18 are presented and represent all claims currently under consideration.
Information Disclosure Statement
One Information Disclosure Statement (IDS) filed 8 September 2023 is acknowledged and has been considered.
Claim Objections
Claims 1-3 and 8-18 objected to because none of the claims begin with an article. The preamble of claim 1 should begin as: “A process for removing…” The preambles for dependent claims 2, 3, and 8-18 should each begin as: “The process according to claim…”.
Claims 12 and 14 are objected to over the recitation of “also comprises”. The Examiner suggests amending these limitations to recite “further comprises”.
Appropriate corrections are required.
Specification
The use of the terms: Pemulen TR1®, Pemulen TR2®, Carbopol 1382®, Coatex SX®, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
Claims 2 and 8-18 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.
Regarding claims 2 and 8-18, the phrases “preferably,” “such as,” “better still,” and “more preferentially,” each render the claims indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP §2173.05(d).
Claim 1 recites the limitation “said colour-removing composition” in line 7 of the claim. There is insufficient antecedent basis for this limitation in the claim because the claim earlier refers to this component as “at least one colour-removing composition”.
Claim 12 recites the limitation “the colour-removing composition” in line 5 of the claim. There is insufficient antecedent basis for this limitation in the claim because the claim earlier refers to this component as “at least one colour-removing composition”.
Claims 2, 3, 8, and 9 recite the limitation “the (poly)carbodiimide compound(s)” in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim because claim 1 presents the (poly)carbodiimide as comprising “at least one (poly)carbodiimide compound”.
Claim 10 recites the limitation “colouring agent(s)” in line 2 of the claims. There is insufficient antecedent basis for this limitation in the claim because claim 1 presents the colouring agent as comprising “at least one colouring agent”.
Claim 13 recites the limitation “the silicone compound(s)” in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim because claim 12 presents the colouring agent as comprising “at least one silicone compound”.
Claim 15 recites the limitation “the glycol ether” in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim because claim 1 presents the glycol ether as comprising “at least one glycol ether”.
Claim 16 recites the limitation “glycol ether(s)” in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim because claim 1 presents the glycol ether as comprising “at least one glycol ether”.
Claim 17 recites the limitation “the alkyl or alkylene carbonate” twice in lines 2-4 of the claim. There is insufficient antecedent basis for this limitation in the claim because claim 1 presents the limitation as “at least one alkyl or alkylene carbonate”.
Claim 18 recites the limitation “alkyl or alkylene carbonate” in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim because claim 1 presents the limitation as “at least one alkyl or alkylene carbonate”.
Claim 8 is additionally rendered indefinite with respect to definition of variables ‘n’ and ‘z’ within the elected species of Formula XII. Therein, the claim recites that “n and z denote an integer ranging from 1 to 20, with n+z ranging from 4-10…”. The Examiner submits that the combination of these limitations is impossible, particularly for n and z singularly. At most, either n or z would be limited to a value of nine.
Clarification of the claimed limitations is required.
Herein, for the purposes of consideration on the merits, where either or both of n or z is disclosed as being in a range of 1-20, the claim will be considered met with respect to this limitation.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 8-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Menzer et al. (WO 2022/189571 A1; of record).
The applied reference has a common assignee (L’Oreal) and two common inventors (Menzer and Liard) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The instantly claimed invention is directed to a process for removing hair color from hair fibers that have been previously colored with a composition comprising at least one (poly)carbodiimide compound; and at least one coloring agent chosen from pigments, direct dyes, and mixtures thereof. The composition that is applied to remove color from hair that has received this treatment is recited as comprising at least one glycol ether, and optionally, at least one alkyl or alkylene carbonate.
Menzer discloses a process for removing hair color from hair fibers that have been previously colored with a composition comprising at least one (poly)carbodiimide compound; and at least one coloring agent chosen from pigments, direct dyes, and mixtures thereof. The composition that is applied to remove color from hair that has received this treatment is recited as comprising at least one surfactant and at least one polyol (see e.g., claim 1). The color-removing composition is further defined as preferably containing a glycol ether compound in an amount ranging from 5% to 30% by weight and preferably from 5% to 15% by weight relative to the total weight of the color removing composition. A particularly preferred glycol ether compound is taught as being tripropylene glycol methyl ether (see pg. 83, line 22 to pg. 84, line 3). The foregoing discloses the limitations recited by instant claims 1, 15, and 16.
The limitations recited by instant claims 2, 3, and 8-14 are read on verbatim by the limitations disclosed by claims 2, 3, and 8-14 of the reference. The limitations of claims 20 and 21 read verbatim on the limitations of instant claims 17 and 18, respectively.
The reference is thus considered to anticipate the instantly claimed invention.
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615
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