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 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.
DETAILED ACTION
Status of claims
The amendment filed on 07/27/2026 is acknowledged. Claims 14 and 15 have been canceled and claims 2, 6, 7, and 22-26 have been withdrawn. Claims 1, 3-5, 8-13, and 16-21 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 07/27/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. The approval of Applicant’s terminal disclaimer has overcome the provisional nonstatutory obviousness-type double patenting rejection of claims 1, 3-5, and 8-21 over claims 1-23 of copending Application No. 18/549,711 from the previous Office Action. Applicant’s amendments have overcome the 35 U.S.C. 112(b) rejections of claims 9-21 and of claim 8 from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejection of the claims is remained for reasons of record and the following. The rejection is modified based on the amendments (newly underlined).
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1, 3-5, 8-13, and 16-21 are rejected under 35 U.S.C. 103(a) as being unpatentable over Dörr et al. (WO 2018/184993 A1 (US 2021/0186836 A1 as English translation) in view of Rughabi et al. (US 2019/0001161 A1).
Dörr et al. teach a cosmetic composition for hair such as hair coloring products containing
0.5-10% by weight of at least one compound containing polycarbodiimide (the instant claims 1 and 9) (abstract, paragraph 48, and claims 1 and 2),
0.01-3% by weight of pigment (the instant claims 1, 18, and 19) (paragraph 48 and 53),
0.01-1% by weight of a thickener such as ammonium acryloyldimethyltaurate/VP copolymer (the claimed non-carboxylic anionic thickener in the instant claims 1, 10, and 11), Pemulen TR1 (the claimed anionic associative polymer in the instant claim 12 according to the instant specification page 23, line 8),
0.1-30% and 1-10% by weight of methacrylic acid homo- or copolymers (the claimed compounds different from associated polymer in the instant claims 1, 16, and 17) (paragraph 114, 115, 130, 132, 134, and 229), and
0.01% to 10% by weight of silicone conditioners (the instant claims 20 and 21) (paragraph 107, 112, and 113).
Dörr et al. do not specify the same polycarbodiimide in the instant claims 3-5 and 8.
This deficiency is cured by Rughabi et al. who teach a polycarbodiimide
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with X being O, R1 and R2 being
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, L1 being 4,4′-dicyclohexylmethane, and E being O-R3-O with R3 being hydrocarbon radicals (the claimed polycarbodiimide in the instant claims 3-5 and 8), together with a carboxylic acid in a hair treatment composition to protect or repair hair during (i.e., in the same dyeing composition) dyeing hair using dyeing compositions (abstract and paragraph 15 and 68-73).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Dörr et al. and Rughabi et al. to specify or replace the polycarbodiimide in the composition taught by Dörr et al. with the polycarbodiimide taught by Rughabi et al. The polycarbodiimide taught by Rughabi et al. being incorporated in a hair treatment composition to protect or repair hair during dyeing hair using dyeing compositions was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying or replacing the polycarbodiimide in the composition taught by Dörr et al. with the polycarbodiimide taught by Rughabi et al. flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose with the advantages effect of protect or repair hair during dyeing hair using dyeing compositions.
Dörr et al. do not specify the same weight percentages of ammonium acryloyldimethyltaurate/VP copolymer thickener (non-carboxylic anionic thickener) in the instant claim 11 and Pemulen TR1 (anionic associative polymer) in the instant claim 13 (0.01-1% vs the claimed 0.05-15%).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed range of non-carboxylic anionic thickener and anionic associative polymer is 0.05-15% by weight, respectively, and the range of ammonium acryloyldimethyltaurate/VP copolymer thickener and Pemulen TR1taught in the prior art is 0.01-1% by weight and therefor, overlaps with the claimed range.
Dörr et al. do not specify the same weight percentage of methacrylic acid homo- or copolymers in the instant claims 1 and 17 (0.1-30% and 1-10% vs the claimed 3-35% and 3-25%).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with and/or lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of additional compounds is 3-35% and 3-25% by weight and the range of methacrylic acid homo- or copolymers taught in the prior art is 0.1-30% and 1-10% by weight and therefor, overlaps with and/or includes the claimed range.
Response to Applicants’ arguments:
Applicant’s arguments based on the amendments are addressed in the modified rejection above (newly underlined).
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
