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 .
Response to Restriction
Applicant’s election without traverse of Group I in the reply filed on April 29, 2026 is acknowledged.
Claims 12-13 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 29, 2026.
Claims
Claim Rejections - 35 USC § 101/Claim Rejections - 35 USC § 112 – Use Claims
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 14 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility. Claim 14 is drawn to use of a mixture without reciting any method steps. "Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. See MPEP 2173.05(q). Therefore instant “Use” claim 14 is drawn to non-statutory subject matter under US practice.
Claim 14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Attempts to claim a process without setting forth any steps involved in a process generally raises an issue of indefiniteness. See MPEP 2173.05(q). Claim 14 provides for the use of a composition, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 112 - Indefiniteness
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 2-8 and 11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 2 recites the broad recitation “ranges from 3% to 15% by weight”, and the claim also recites “preferentially ranges from 3% to 10% by weight, more preferentially still ranges from 4% to 7% by weight” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 3 recites the broad recitation “chosen from monoethanolamine (MEA), diethanolamine, triethanolamine, monoisopropanolamine, diisopropanolamine, N,N-dimethylethanolamine, 2- amino-2-methyl-1-propanol, triisopropanolamine, 2-amino-2-methyl-1,3-propanediol, 3-amino- 1,2-propanediol, 3-dimethylamino-1,2-propanediol, tris(hydroxymethyl)aminomethane and mixtures thereof”, and the claim also recites “preferably monoethanolamine” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 4 recites the broad recitation “ranges from 5% to 40% by weight”, and the claim also recites “more preferentially from 6% to 30% by weight, better still from 8% to 20% by weight, even better still from 10% to 15% by weight,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 5 recites the broad recitation “fatty acids are chosen from solid fatty substances other than fatty acids”, and the claim also recites “preferably chosen from solid fatty alcohols and mixtures thereof”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 5 recites the broad recitation “one or more liquid fatty substances other than fatty acids”, and the claim also recites “preferably chosen from liquid fatty alcohols, and liquid fatty esters, and mixtures thereof, more preferentially from liquid fatty alcohols, preferably oleyl alcohol,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 6 recites the broad recitation “are chosen from solid fatty substances other than fatty acids”, and the claim also recites “preferably chosen from solid fatty alcohols and mixtures thereof, preferably cetearyl alcohol” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 7 recites the broad recitation “chosen from diglycerol, glycerol, propylene glycol, 1,3-butylene glycol, pentane-1,2-diol, octane-1,2-diol, dipropylene glycol, hexylene glycol, ethylene glycol, polyethylene glycols, sorbitol, sugars such as glucose, and mixtures thereof”, and the claim also recites “preferably from glycerol” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 8 recites the broad recitation “saturated or unsaturated, linear or branched, oxyalkylenated or glycerolated C8-C40 alcohols”, and the claim also recites “preferably comprising one or two fatty chains”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 8 recites the broad recitation “esters of saturated or unsaturated, linear or branched, C8 to C30 fatty acids and of sorbitol”, and the claim also recites “are preferably oxyethylenated”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 8 recites the broad recitation “esters of fatty acids”, and the claim also recites “notably C8-C24, and preferably C16-C22 fatty acids, and of (poly)oxyalkylenated, in particular oxyethylenated and/or oxypropylenated, glycerol ethers”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 11 recites the broad recitation “one or more chemical oxidizing agents”, and the claim also recites “preferably chosen from hydrogen peroxide, urea hydrogen peroxide, alkali metal bromates, persalts, such as perborates and persulfates, peracids and oxidase enzymes (with their optional cofactors), and mixtures thereof; preferably, the chemical oxidizing agent(s) are chosen from hydrogen peroxide, persalts, and mixtures thereof, more preferentially hydrogen peroxide” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103 - Obviousness
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Deconinck et al. (FR 2959127).
Deconinck et al. disclose emulsion for treating hair comprising a particular solvent. The water-in-oil inverse emulsion comprising: (a) at least 30% by weight of one or more liquid fatty substances; (b) one or more polyols or polyol ethers having a Hansen δH parameter value less than or equal to 25 (MPa) 1/2 at 25 ° C different from the liquid fatty substances (c) one or more basifying agents. The emulsion is coupled with a composition comprising one or more oxidizing agent. The polyols may be used in combination and include propylene glycol, 1,3-butanediol, 1,4-butanediol, diethylene glycol, dipropylene glycol, hexylene glycol , triethylene glycol, tripropylene glycol, 1,3-propanediol and neopentyl glycol and preferably from propylene glycol or hexylene glycol. The polyol preferably comprises from 1 to 10% by weight of the composition. The liquid fatty substances include alcohols containing from 8 to 30 carbon atoms. The liquid fatty alcohols of the invention can be saturated or unsaturated and include oleyl alcohol. The composition may also comprise a solid fatty substance and include fatty alcohols having 6 to 30 carbons. Inorganic alkaline agents may be used and include alkanolamines such as mono-, di- or trialkanolamines comprising one to three identical or different C1-C4 hydroxyalkyl radicals. Examples of these compounds include monoethanolamine, diethanolamine, triethanolamine, monoisopropanolamine, diisopropanolamine, N-dimethylaminoethanolamine, 2-amino-2-methyl-1-propanol, triisopropanolamine, 2-amino -2-methyl-1,3-propanediol, 3-amino-1,2-propanediol, 3-dimethylamino-1,2-propanediol, tris-hydroxymethylaminomethane. The alkaline agents include 0.1 to 20% by weight. The compositions may also comprise surfactants. The emulsion comprises at least one oxidation dye, and/or at least one direct dye. The oxidation dyes are generally chosen from one or more oxidation bases optionally combined with one or more couplers. Oxidizing agents used include hydrogen peroxide.
Deconinck et al. differ from the instant claims insofar as they do not exemplify a composition comprising 1,3-propanediol but does disclose using polyols in combinations; and polyols with an oxidizing dye, a fatty substance, an alkanolamine and optionally a surfactant. Therefore it would have been obvious to one of ordinary skill in the art prior to filing the instant application to have made a composition comprising a combination of 1,3-propanediol in an amount greater than 3%, ethanolamine in an amount greater than or equal to 5%, octyldodecanol (fatty substance) and a combination of oxidation dyes (see Composition 1) because it is suggested by Deconinck et al. Further, it would have been obvious to have used 1,3-propandiol in the composition 1 of Deconinck et al. because it is a suitable polyol for the compositions.
In regards to the surfactant, the surfactant is optional and is not required to be present in the composition. Therefore, Deconinck et al. meet the limitations of instant claims 8-9.
In regards to the amounts, it is well-settled, however, that even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05.
Deconinck et al. disclose polyols comprise 1 to 10% by weight of the composition and alkanolamines comprise 0.1 to 20% by weight of the composition, whereas the instant claims recite 3 to 15% of the polyol (1,3-propanediol) and 5 to 40% alkanol amines. Accordingly, since an overlap plainly exists here, it would have been obvious to have selected values within the overlap.
Obvious-Type 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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
1) Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/573917 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as they recite a composition comprising 1,3-propandiol, a alkaline agent, a dye and a surfactant. The instant claims differ from the copending claims insofar as they define the alkaline agent and recite the surfactant as an optional component in the independent claim. However, the alkaline agent would encompass the alkanolamine of the instant claims and therefore the instant claims are obvious over the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2) Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,453,683. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as they recite a composition comprising 1,3-propandiol, a dye, a fatty substance and a surfactant. The instant claims differ from the patented claims insofar as they define an alkaline agent and recite the surfactant as an optional component in the independent claim. However, the patented claims recite an alkaline agent in a dependent claim and the alkaline agent would encompass the alkanolamine of the instant claims. Therefore the instant claims are obvious over the patented claims. .
3) Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,642,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as they recite a composition comprising 1,3-propandiol, a dye, a fatty substance and an alkaline agent. The instant claims differ from the patented claims insofar as they define an alkaline agent and patented claims define the oxidation dye. However, the alkaline agent would encompass the alkanolamine of the instant claims and the oxidative dye would encompass the oxidative dye of the patented claims. Therefore, the instant claims are obvious over the patented claims.
Claims 1-11 are rejected.
Claims 12-15 are withdrawn.
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEZAH ROBERTS whose telephone number is (571)272-1071. The examiner can normally be reached Monday-Friday 11:00-7:30.
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/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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