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 .
Claim Status
Claims 1-9 and 20 are pending.
Claims 1-9 and 20 examined on the merits herein.
Claims 10-19 are withdrawn.
Election/Restrictions
Applicant's election with traverse of 1-9 and 20 in the reply filed on 02-Jun-2026 is acknowledged. The traversal is on the ground(s) that the product and process claims are directed to a single inventive concept, the process is adapted for use of the claimed emulsion, and that the examination of both groups would not impose a serious search or examination burden because the claims can be searched and examined together. This is not found persuasive because the claimed inventions remain distinct as present, with Group I directed to a hair color change emulsion, while Group II is directed to a method of alter hair color.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 13-Dec-2024m 21-Mar-2025, 08-May-2025, 06-Jan-2026, and 30-Mar-2026 has been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
Paragraph 49, “behenalkonium chloride chloride” should be behenalkonium chloride.
Table 1A, 1B, and inconsistent spelling of thiosalycylic acid verses thiosalicylic acid in specifications
Appropriate correction is required.
The use of the term “Colorshot MS”, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 20 objected to because of the following informalities:
Claim 20, “at least one fatty compounds” should be at least one fatty compound.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 4, and 8 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.
Claim 2 recites “comprising at least one hair-color removing agent chosen from”. However, claim 1, which claim 2 depends from, already recites “at least one hair-color removing agents as a component. Because claim 2 uses the transitional phrase “comprising” rather than specifying that the hair-color removing agent of claim 1 is further limited, the relationship between the components between these components is ambiguous. It is unclear whether the agents listed of thiosalicylic acid, thiolactic acid, etc. represents a further limitation of the specific hair color removing agent in claim 1, or if they are entire separate , additional hair color removing agents added in addition to those already recited in claim 1.
Claim 4 recites “comprising at least one keto acid”. However, claim 1, which claim 4 depends from, does not recite a keto acid. Claim 4 does not recite “further comprising one keto acid”. Therefore, it is not clear if this an additional ingredient to be added to those already recited in claim 1 or if keto acids are a limitation of one of the ingredients already recited in claim 1. Because the limitations of the claim scope is unclear, the claim is indefinite.
Claim 8 recites “comprising at least one organic amine compound”. Claim 8, which depends from claim 6, which depends from claim 1. Neither claim 1 or claim 6 recites an organic amine compound, and claim 8 does not recite “further comprising”. It is unclear if the organic amine is intended to be a separate component added to the composition or meant to be an internal limitation of one of the previously recited components.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 7, 9, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biato et al. (US20180369082A1, Publication Date: 27-Dec-2018).
In regards to Claim 1, Biato teaches an emulsion composition (Page 4, paragraph 119) in Example 1 comprising of thiolactic acid as a hair color removing agent, surfactants, fatty compounds, and water (Example 1, Page 18, paragraph 459).
In regards to Claim 2-3, Biato teaches thiolactic acid at 8 wt% (Example 1, Page 18, paragraph 459).
In regards to Claim 5, Biato teaches PPG-5-ceteth-20 and ceteth-10 phosphate at 3 wt% and 1.75 wt% (Example 1, Page 18, paragraph 459).
In regards to Claim 7, Biato teaches ethanolamine at 3 wt% (Example 1, Page 18, paragraph 459).
In regards to Claim 9, Biato teaches the composition pH ranges from 2 to less than 7 (Page 4, paragraph 118).
In regards to Claim 20, Biato teaches an emulsion composition (Page 4, paragraph 119) in Example 1 comprising of thiolactic acid, surfactants, fatty compounds, water, and ethanolamine (Example 1, Page 18, paragraph 459).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 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 pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 1, 4, 6, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biato as applied to claim 1 above, and further in view of Kunz et al. (US006106579A Patent Published 22-Aug-2000).
Biato teaches the emulsion composition comprising of thiolactic acid, surfactants, mineral oil, fatty compounds, and water as applied to claim 1 discussed above.
In regards to Claim 4, Biato teaches an emulsion composition comprising of thiolactic acid, surfactants, mineral oil (Page 4, paragraph 119 and Example 1, Page 18, paragraph 459).
In regards to Claim 6, Biato teaches both 43.1% mineral oil at 43.1 wt% and cetearyl alcohol at 8.25 wt% (Example 1, Page 18, paragraph 459).
In regards to Claim 8, Biato teaches ethanolamine at 3 wt% (Example 1, Page 18, paragraph 459).
However, Biato does not teach a keto acid of claim 4. Biato does not teach the total amount of fatty compounds in the range of 0.1 wt% to 15 wt%. For this reason, Kunz is added.
Kunz teaches a decolorization emulsion composition Example 5 comprising cetylstearyl alcohol at 4.5 wt% with a pH of 2.5 (Col 29, Example 5), and can include 0.1 wt% to 10 wt% of an ɑ-oxocarboxylic acid such as ɑ-ketocarboxylic acid (Col 10, line 54-61).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair altering emulsion composition of Biato by incorporating the emulsion forming fatty compound system, selecting a total fatty compound concentration within the range, and the keto acid taught by Kunz. Biato teaches a hair emulsion composition comprising thiolactic acid, surfactants, mineral oil, fatty compounds, and water, while Kunz teaches that decolorization compositions may be formulated in the form of emulsions containing cetylstearyl alcohol, and further teaches the inclusion of ɑ-oxocarboxylic acid such as ɑ-ketocarboxylic acid.
A person having ordinary skill in the art would have been motivated to combine the teachings of Biato and Kunz because both references are directed to compositions for removing, altering, or decolorizing hair and discloses compatible cosmetic formulation components. Incorporating the emulsion forming fatty compounds of Kunz into Biato’s hair emulsion composition would have represented the predictable use of prior art elements according to their established functions to obtain an emulsion based hair color altering composition resulting in improved formulation flexibility. Such a combination represents the substitution and incorporation of known cosmetic ingredients into a known hair color removal composition and would have yielded predictable results with a reasonable expectation of success. For the forgoing reasons, Claims 1, 4, 6, and 8 are rendered obvious by the teachings of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENHAN LI whose telephone number is (571)272-9143. The examiner can normally be reached Monday-Friday 7:30 am-5 pm EST.
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 at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/W.L./Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
Prosecution Insights