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, 2, 4-6, 9-11, 13-15, and 27-35 are pending, claims 3, 7, 8, 12, 16-26, and 36-39 are canceled in this application. This application is a national stage entry of PCT/EP2021/087400, filled on 12/28/2023. This application claims foreign priority to PCT/EP2021/067925, filed on 06/29/2021 in PCT, PCT/EP2021/067926, filed on 06/29/2021 in PCT, PCT/EP2021/067927 filed on 06/29/2021 in PCT, PCT/EP2021/067928, filed on 06/29/2021 in PCT.
Election/Restrictions
A telephone was made to Shawn Duckworth on 11/17/2025 on species election and elections were filed by Albin J. Nelson on 12/08/2025 for species MTMO (3-mercaptopropyl-trimethoxysilane, Cas 4420-74-0,
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) as the PTH group among claims 1, 4-6, 9, and 10, species 3-aminopropyl triethoxysilane (Cas 919-30-2,
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) as the further aminoorganoalkoxysilane compound among claims 13-15, and species of Silamine 2972, a polydimethylsiloxane with pendant/terminal organoamine group, (Cas 192888-42-9, Siloxanes and silicones, 3-aminopropyl Me, di-Me, [(3-aminopropyl)ethoxymethylsilyl]-oxy-terminate,
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, refer to as binder 1) AND Silmer OH ACR Di10, a polydimethylsiloxane with pendant/terminal α,β-unsaturated (meth)acryloxy groups (Cas 125455-52-9, Siloxanes and Silicones, di-Me,
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with [2-(hydroxy-3-[(1-oxo-2-propenyl)oxy]propoxy]propyl
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pendant/terminal, refer to as binder 2) as a combination of binders in claims 32 and 33 among claims 27-29 and 31-35. Affirmation of these elections being with or without traverse must be made by applicant in replying to this office action.
Claim 27-31 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to non-elected inventions and species.
Claims 1, 2, 4-6, 9-11, 13-15, and 32-35 will presently be examined to the extent they read on the elected subject matter of record.
Species Election
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1. Where a single claim defines alternatives of a Markush group, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, is considered met when the alternatives are of a similar nature. When the Markush grouping is for alternatives of chemical compounds, the alternatives are regarded as being of a similar nature where the following criteria are fulfilled:
(A) all alternatives have a common property or activity; AND
(B)(1) a common structure is present, that is, a significant structural element is shared by all of the alternatives; OR
(B)(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
The species are as follows:
the various PTH-alkoxysilane compounds within claims 1, 4-6, 9, and 10;
the various further aminoorganoalkoxysilane compounds within claims 13-15;
the various binders within claims 27-29 and 31-35.
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable.
Please elect species listed above in the following manner:
elect a single PTH-alkoxysilane compound within claims 1, 4-6, 9, and 10;
elect a single further aminoorganoalkoxysilane compound within claims 13-15;
elect a single binder or a combination of binders within claims 27-29 and 31-35.
The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise include all the limitations of an allowed generic claim as provided by 37 CFR 1.141. If claims are added after the election, applicant must indicate which are readable upon the elected species. MPEP § 809.02(a).
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
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/Second paragraph or (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 5 and 6 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.
R1 in formula IIIa in claim 5 and formula B in claim 6 is not defined by the claims. It is unclear what is encompassed and excluded by the limitation " R1”. Thus, it is unclear and indefinite as to how the “R1”, herein is encompassed.
Claim 5 is 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, claim 5 recites the broad recitation “1 to 20” and claim 5 also recites “preferably 1 to 12” and “more preferably 1 to 6” which are the narrower statements of the range/limitation. Claim 5 recites the broad recitation “C1-C4 alkyl” and claim 5 also recites “preferably C1-C3 alkyl” and “more preferably methyl or ethyl” which are the narrower statements of the range/limitation. Claim 5 recites the broad recitation “C1-C6 alkyl” and claim 5 also recites “preferably C1-C3 alkyl” which is the narrower statement of the range/limitation.
Claim 5 is 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.
The recitation of "ether thiol" renders the claim indefinite. The term “ether thiol” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and there is no commonly recognized definition, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what is encompassed and excluded by the limitation "ether thiol”.
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, 2, 4-6, 9-11, 13-15, and 32-35 are rejected under 35 U.S.C. 103(a) as being unpatentable over Gross et al. (WO 2020/008073 A2) in view of Herrlein et al. (WO 2020/007511 A1).
Gross et al. teach a method for treating hair (abstract) comprising
preparing hair including bleaching with Blondor Multi-Blonde bleach powder from Wella Professionals (containing potassium persulfate, an acidic oxidant, the claimed acidic oxidation process in the wherein clause of the Fundamenta procedure in the activating step in the instant claims 1 and rinsing in water (the claimed cleaning process in the wherein clause of Praeparatur procedure in the activating step in the instant claims 1) (page 107, line 27 through page 108, line 12);
pre-applying to the keratin material a polyamine in water to form a pretreated keratin material (the claimed pretreatment step in the instant claims 1) (paragraph 17) and base compound including polyethyleneimine, tri and tetra mercapto (thiol) branched, dendritic, star or fullerene-like alkyl compounds wherein the mercapto groups are the termini and the branches are C3-10 methylenyl groups on a C3-10 polymethylenyl backbone (the claimed further thiol organic compound of formula V in the instant claim 11), and (CH3CH2O)3Si(CH2)2NH2 as 3rd component (3-aminopropyl triethoxysilane
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, the claimed further aminoorganoalkoxy silane compound among claims 13-15) (paragraph 163, 166, and 169); and
then applying to the pretreated keratin material a 1st component comprising a medium and a 1st compound according to Formula I; and a 2nd component comprising a medium and a 2nd compound according to Formula II; wherein the first and second components are applied sequentially or simultaneously to the pretreated keratin material (the claimed binder step in the instant claims 1) (paragraph 17);
wherein the 1st compound includes Silmer OH ACR Di10 (one of the two claimed binders, binder 2 in the instant claims 1 and 32-35) (paragraph 182 and figure 17) and the 2nd compound includes Silamine 2972 (one of the two claimed binders, binder 1 in the instant claims 1 and 32-35) (paragraph 183 and figure 17) and the 1st compound and the 2nd compound react to form Michael addition product (the claimed film forming composition → composite film → coating in binder step and the claimed 1st and 2nd components having complementary binder functional groups in the instant claim 1) (paragraph 187).
Gross et al. do not specify the same pretreatment compound (polyamine vs the claimed PTH-alkoxysilane compound in the instant claims 1, 4-6, 9, and 10).
This deficiency is cured by Herrlein et al. who teaches a method for coloring hair (abstract) comprising applying to the substrate material a 3rd component to form pretreated substrate material followed by applying combined a 1st and 2nd components to the pretreated substrate material and causing the coloring mixture to form a colored coating on the substrate material (claims 24 and 25); wherein the 3rd component includes polyethyleneimine and mercaptosilane KBE 803 (3-mercaptopropyl-triethoxysilane) (paragraph 155) and the rationale that chemical compounds having “very close” structural similarities and similar utilities.
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 Gross et al. and Herrlein et al. to replace polyethyleneimine 3rd component in the composition taught by Gross et al. with 3-mercaptopropyl-triethoxysilane. Both polyethyleneimine and 3-mercaptopropyl-triethoxysilane being suitable 3rd components for pre-treatment of hair was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replacing polyethyleneimine 3rd component in the composition taught by Gross et al. with 3-mercaptopropyl-triethoxysilane flows from both having been used in the prior art, and from both being recognized in the prior art as useful for the same purpose.
It would have been prime facie obvious at the time of the invention to a person of ordinary skill in the art to replace the C2 alkoxy in 3-mercaptopropyl-triethoxysilane taught by Herrlein et al. with C1 alkoxy (3-mercaptopropyl-trimethoxysilane). According to MPEP 2144.09 II.:
Compounds which are … homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
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, 2, 4-6, 9-11, 13-15, and 32-35 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 and 10 of U.S. Patent No. 11,766,394 B2, claims 1-15 of U.S. Patent No. 11,904,042 B2, and claims 1-5 of U.S. Patent No. 12,364,657 B2 in view of Gross et al. (WO 2020/008073 A2) and Herrlein et al. (WO 2020/007511 A1).
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent in view of Gross et al. and Herrlein et al. and the application are claiming common subject matter.
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 method.
Claims 1, 2, 4-6, 9-11, 13-15, and 32-35 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of copending Application No. 18/003,151, claims 1-15 of copending Application No. 18/003,148, and claims 1 and 22-38 of copending Application No. 18/359,021 in view of Gross et al. (WO 2020/008073 A2) and Herrlein et al. (WO 2020/007511 A1).
The subject matter claimed in the instant application is fully disclosed in the copending Application and is covered by the copending Application since the copending Application in view of Gross et al. and Herrlein et al. and the application are claiming common subject matter.
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 method.
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