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 .
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
Claims 1-26 are pending in this application. This application is a national stage entry of PCT/EP2022/056201, filled on 03/10/2022. This application claims foreign priority to FR 2102354, filed on 03/10/2021 in France.
Election/Restrictions
Applicants’ election without traverse of group I, claims 1-21, and subsequent species election of polycarbodiimide of formula XII in claim 8 among claims 2-8, anionic carboxylic acrylic associative polymer as an additional polymer such as methacrylic acid/ethyl acrylate/oxyalkylenated stearyl methacrylate terpolymer in claim 12 (construed as anionic carboxylic acrylic associative polymer since methacrylic acid/ethyl acrylate/oxyalkylenated stearyl methacrylate terpolymer is not claimed), and acrylic polymer comprising one or more units derived from methacrylic acid and C1-4 alkyl methacrylate such as Acrylates copolymer as an additional compound among claims 14-17 (construed as acrylic polymer comprising one or more units derived from methacrylic acid and C1-4 alkyl methacrylate since Acrylates copolymer is not claimed), filed on 01/07/2026 is acknowledged.
Claims 2, 6, and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group or species, there being no allowable generic or linking claim.
Claims 1, 3-5, and 8-21 will presently be examined to the extent they read on the elected subject matter of record.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claims 9-21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claims 9-21 recite the broad recitations of limitations, and claims 9-21 also recite limitations after “preferably” or “preferentially” which are the narrower statement of the range/limitation.
Claim 8 is 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 pre-AIA the applicant regards as the invention.
Claim 8 recites the phrase “such as” which renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
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, and 8-21 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), and methacrylic acid homo- or copolymers (the claimed additional compounds in the instant claims 14-17) (paragraph 64-74), 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, Pemulen TR1 (anionic associative polymer) in the instant claim 13, and methacrylic acid homo- or copolymers (additional compounds) in the instant claim 17 (0.01-1% vs the claimed 0.05-15% and 0.1-35%).
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.
The claimed range of additional compounds is 0.1-35% by weight and the range of methacrylic acid homo- or copolymers taught in the prior art is 0.01-1% by weight and therefor, overlaps with the claimed range.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 3-5, and 8-21 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-23 (dated 09/08/2023) of copending Application No. 18/549,711. Although the patent and instant claims are not identical, they are not patentably distinct from each other.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same composition.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Correspondence
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
Prosecution Insights