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 .
Priority
The effective filing date of the instant application is 3 April 2024.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-10) in the reply filed on 2 July 2026 is acknowledged. The traversal is on the ground(s) that the method and composition claims are directed to a single inventive concept and a search burden does not exist. This is not found persuasive because Groups I and II are related as process and product wherein the product can be used in a materially different process, such as altering the color of nails. Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Status of the Claims
Claims 1-20 are pending.
Claims 11-20 are withdrawn.
Claims 1-10 are rejected.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites, “A method for method for…” which is assumed to be a typographical error. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Baker et al. (US 2003/0163877).
Baker teaches a coloring composition and a method of coloring hair using said composition comprising a clay [0001]. Clays are known for their use in hair colorant compositions [0008]. The composition of Baker comprises a clay, a coloring agent, and a perfume and/or surfactant [0016-0020]. The choice of clay can be a smectite clay such as hectorite [0035, 0041] and may be used singly or in combination with other clays [0050]. The amount of clay can range from 0.01-20% by weight [0124] and the composition can further comprise water [0134]. The method of coloring comprises applying the composition to the hair [0135] and rinsing it off after 30-60 minutes of application time [0136]. Baker cites that prior art compositions can be heated after application to the hair [0009].
It would have been prima facie obvious to prepare the hair coloring composition of Baker comprising hectorite clay as the only clay (0.01-20 wt%), surfactant, and water as the solvent wherein the composition is applied to the hair, allowed to sit for 30-60 minutes, and washed off after optionally heating the composition. That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of clay agents, surfactants, and solvents from within Baker, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
The resulting method renders obvious instant claims 1-3 and 5-10.
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Baker et al. (US 2003/0163877) in view of Naturally Drenched (30 August 2023).
Baker, as applied supra, is herein applied in its entirety for its teachings of a hair coloring composition comprising hectorite, surfactant, and water.
Baker does not teach the pH of the composition.
Naturally Drenched teaches that due to the protective outer layer of hair, called the cuticle, in order to change the color the cuticle needs to be opened to allow color molecules to penetrate the hair (pg 2). Alkaline substances help raise the cuticle and make it more receptive to color, thus a pH around 9-10 is preferred (pg 2).
It would have been prima facie obvious to prepare the composition of Baker and adjust the pH to 9-10 in order to provide a composition with improved hair coloring properties. The elevated pH would serve the purpose of opening the cuticles and permitting hair color to penetrate into the hair shaft. The resulting method of applying the composition to the hair and rinsing is after 30-60 minutes renders obvious instant claims 1-10.
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 1-3 and 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 5-11, and 13 of copending Application No. 18/626,306 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘306 claims are a method of altering the color of hair comprising applying a composition comprising an organic acid, solvent, and optionally a clay, wherein the acid is present in amounts of 10-80% by weight. This implies the clay can be present in amounts ranging from 20-90% by weight, thus overlapping with the range in the instant claims. The method steps also overlap in scope and thus render obvious instant claims 1-3 and 5-10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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