Claims 1, 13 and 15-21 are pending in this application.
DETAILED ACTION
1 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on January 13, 2026 has been entered.
Claim Rejections - 35 USC § 102
2 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.
3 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 13 and 18 are rejected under 35 U.S.C. 102(a)1 as being anticipated by Database Registry.
The database registry teaches a compound having the following formula:
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Which is identical the formula of the claimed compound (ii) 2-(methoxymethoxy)benzene-1,3-diamine having the following formular:
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402
266
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as claimed in claims 1, 13 and 18 (see Database Registry).
Further, with regards to the limitations of claim 18, it has been held that the recitation that an element is "adapted to" perform or is "capable of” performing a function (dyeing hair) is not a positive limitation but only requires the ability to so perform. The recitation of a new intended use for an old product does not make a claim to that old product patentable, see In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). Database registry teaches all the limitations of the instant claims. Hence, the database registry anticipates the claims.
Claim Rejections - 35 USC § 103
4 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.
Claims 1, 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Database Registry.
Database Registry teaches a compound having the following formula:
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Which is similar to the claimed compound (iii) 2-(ethoxymethoxy)benzene-1,4-diamine having the following formula:
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308
388
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The difference between the claimed compound and the prior art compound is only one carbon atom (-CH2-). Therefore, compound which is differing regularly by the successive addition of the same chemical group, e.g., by –CH2- groups (homologs) is generally of sufficiently close structural similarity that there is a presumed expectation that such a compound possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1997). Further, the prior art structure does not have to be true homologs or isomers to render structurally similar compound prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979).
Further, with regards to the limitations of claim 18, the recitation of a new intended use (dyeing hair) for an old product does not make a claim to that old product patentable. (In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997).
Furthermore, the recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Therefore, a prima facie case of obviousness has been established.
Allowable Subject Matter
5 Claims 15-17 and 19-21 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art of record (Database Registry) does not teach or disclose a composition for dyeing hair comprising a compound of formula I and water or a compound of a formula I and coupling agent as claimed. The closest prior art of record (Database Registry) also does not teach or disclose a kit as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EISA B ELHILO whose telephone number is (571)272-1315. The examiner can normally be reached Monday-Friday, 7:00 AM to 3:30 PM.
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/EISA B ELHILO/Primary Examiner, Art Unit 1761
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