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 .
Status of Claims
Claims 1-20 are pending and under examination in this office action.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed December 13, 2024. The Examiner has considered the references cited therein to the extent that each is a proper citation. Please see the attached USPTO Form 1449.
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.
Claims 1-20 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1- 20 of U.S. Patent. 12109287. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
· The claims of the instant recites a method for altering the color of hair, comprising:(i) applying a treatment composition to the hair, the treatment composition comprising:a) at least one organic amine compound; b) at least one solvent; and c) optionally at least one additional component chosen from surfactants, fatty compounds, thickening agents, amino acids and/or salts thereof, amino-sulfonic acids and/or salts thereof, or combinations of two or more thereof, and (ii) applying a hair color-removing composition to the hair, wherein step (i) occurs before, during, and/or after step (ii) and the patented claims recites a composition for altering the color of keratin fibers comprising: (a) a bonding system comprising: (i) at least one first bonding agent chosen from lactic acid and/or salts thereof; and (ii) at least one second bonding agent chosen from amino acids and/or salts thereof; (b) at least one fatty alcohol; (c) at least one fatty acid; (d) at least one alkyl polyglucoside; (e) at least one alkalizing agent; and (f) at least one solvent comprising water; wherein the pH of the composition is greater than 7, and wherein the composition is essentially free of cationic polymers and a method for altering the color of hair comprising: applying to the hair a hair color-altering composition; and rinsing the hair color-altering composition from the hair after a leave-in period. The kit would have been used as it comprises the composition fort the method of altering and or removing the color of the hair The current application claims and the patented claims are obvious variations of each other
· Both sets of claims recite using the same compositions and/or derivatives thereof. The compositions recited in the claims can be used in the method claims of altering the color of the are anticipatory of each other.
· It would have been obvious to one of ordinary skill in the art to have used the patented claims composition and methods to practice the instant claim invention with a reasonable expectation of success that the composition and the methods of the patented claims and therefore are part of the obvious variation of the patented claims compared to the current application claims.
In view of the foregoing, the patented claims and the current application claims are obvious variations.
Claims 1-20 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1- 19 of U.S. Patent. 12409123. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
· The claims of the instant recites a method for altering the color of hair, comprising:(i) applying a treatment composition to the hair, the treatment composition comprising:a) at least one organic amine compound; b) at least one solvent; and c) optionally at least one additional component chosen from surfactants, fatty compounds, thickening agents, amino acids and/or salts thereof, amino-sulfonic acids and/or salts thereof, or combinations of two or more thereof, and (ii) applying a hair color-removing composition to the hair, wherein step (i) occurs before, during, and/or after step (ii) and the claims of the patent are directed to a method for removing color from oxidatively colored hair comprising: (I) applying a reducing composition to hair that has been colored with oxidation dyes etc
When the specification of the patent is used as a dictionary, it teaches that the composition for altering hair color or removing color comprises organic amines such as monothanolamine, a solvent, a pH from 9-12, thiol-based compounds etc. Therefore it would have been obvious to one of ordinary skill in the art would have been obvious to one of ordinary skill in the art to have used the patented claims in practicing the instant claimed invention with a reasonable expectation of success that altering and/or removing color from an artificially colored hair would have resulted from using the kit composition.
In view of the foregoing, the patented claims and the current application claims are obvious variations.
Claims 1-20 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1- 18 of U.S. Patent. 12458576. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
The patented claims disclose a composition for altering the color of hair comprising: (a) a bonding system comprising: (i) at least one first bonding agent chosen from citric acid and/or salts thereof; and (ii) at least one second bonding agent chosen from amino acids, amino sulfonic acids, salts thereof, or combinations of two or more thereof; (b) at least one fatty alcohol; (c) at least one fatty acid; (d) at least one alkyl polyglucoside; (e) at least one alkalizing agent; and (f) water; wherein the weight ratio of the first bonding agent(s) to the second bonding agent(s) ranges from about 1:1 to about 2:1, wherein the composition is essentially free of cationic polymers, and wherein the pH of the hair color-altering composition is greater than 7 and the instant a method for altering the color of hair, comprising:(i) applying a treatment composition to the hair, the treatment composition comprising:a) at least one organic amine compound; b) at least one solvent; and c) optionally at least one additional component chosen from surfactants, fatty compounds, thickening agents, amino acids and/or salts thereof, amino-sulfonic acids and/or salts thereof, or combinations of two or more thereof, and (ii) applying a hair color-removing composition to the hair, wherein step (i) occurs before, during, and/or after step (ii).
The hair altering composition of the patent would have been used in the instant claimed invention because when the patented specification is used as a guidiance it teaches the bonding system comprising (i) citric acid and/or a salt thereof, and (ii) at least one amino acid and/or an amino sulfonic acid etc. Therefore it would have been obvious to one of ordinary skill in the art to have used the instant claims in practicing the patented claims.
In view of the foregoing, the patented claims and the current application claims are obvious variations.
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.
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.
Claim(s) 1-6, 7-11, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Machover et al. (US 2019/0201309) in view of Cannell et al. (US 2008/0085249).
With regards to instant claim 1 and 10 i)0.01-10% comprising water, teach composition for color-altering hair (see abstract) comprising an organic amine (see 0015), solvent (see 0016), surfactant (see 0016) wherein the composition comprises applying the hair altering composition to the hair (see 0231), wherein the organic amine is from 0.01-10% (see 0015, as required by instant claim 3, 10), aminomethyl propanol (as required by instant claim 4 and 11 see 0140) and a pH above 7 to 12 (see 0146 and 0228, as required by instant claim 5, 13) wherein the treatment is left on the hair for a period from 5 mins to 60 mins (see 0231, as required by instant claim 6, 14). With regards to instant claim 10, the organic amines are from 0.01-10% (see supra) and water (see 0204). With regards to instant claim 9, intrinsically the composition applied will remove the oxidative color from the hair.
However Machover fails to teach to teach instant claim 2 wherein the hair-color removing agent comprises thiolactic acid.
Cannell et al. (US 2008/0085249) teaches a color-removing composition (see 0045) comprising thiolactic acid as the sulfur reducing agent (as required by instant claims 1, 2, 10, see claim 3), also teaches applying the composition to the hair can be done sequentially or after (see 0046, as required by instant claim 1, 10).
It would have been obvious to one of ordinary skill in the art to have modified the teachings of Machover by adding thiolactic acid as the color removing agent taught by Cannell with a reasonable expectation of success because Cannelle makes it obvious to do so.
Claim(s) 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Machover et al. (US 2019/0201309) in view of Cannell et al. (US 2008/0085249).
Matchover is applied here as above. However fails to teach a kit.
Cannell is applied here as above. Additionally Cannell teaches kits for color removal (see abstract)
Therefore it would have been obvious to one of ordinary skill in the art to combine the teachings to include a kit for altering hair color as taught by Cannell with a reasonable expectation of success if there is no novelty in a composition itself, then a patent cannot be properly granted on the article or composition, regardless of the use for which it is intended. The difficulty is not that there can never be invention in discovering a new process involving the use of an old article, but that the statutes make no provision for patenting of an article or composition which is not, in and of itself, new.
Claim 12 is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY V GEMBEH whose telephone number is (571)272-8504. The examiner can normally be reached M-F 9am-6pm.
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/SHIRLEY V GEMBEH/Primary Examiner, Art Unit 1615 1/8/26