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 . Claims included in prosecution are claims 1-14.
Restriction Requirement
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-14, drawn to a cosmetic composition, classified in A61K 8/19.
II. Claims 15-18, drawn to cosmetic method for pretreatment of keratin fibers, before a dyeing treatment of the keratin fibers, comprising applying the aforementioned cosmetic composition, classified in A61Q 5/004.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the process for using the product as claimed can be practiced with another materially different product. For instance, the process can be practiced with a hair dye pretreatment agent comprising at least one or more natural polysaccharides, protein hydrolysate, and an amphoteric polymer.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification;
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an 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.
The election of an invention may be made with or without traverse. To reserve 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. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
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 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Phillip Scott Smith on 1/20/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15-18 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
1. Claims 1-14 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.
Claim 1 recites “a. 20 to 90 wt.% of at least one polyethylene glycol, b. 20 to 90 wt.% of at least one alcohol, and c. 0.1 to 20 wt.% of at least one alkalizing agent.”. If the maximum amounts of the ranges recited were used they would add up to 200% which is well over the maximum of 100% which renders the claim indefinite.
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.
1. Claim(s) 1-12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Witte et al. (US 2014/0259453, Sep. 18, 2014) (hereinafter Witte) in view of Teboul (US 2015/0174041, Jun. 25, 2015) (hereinafter Teboul).
Witte discloses an agent for dyeing keratinic fibers (Abstract). The agent is characterized by a gel-like basis of a specific combination of emulsifiers and a polymeric thickener (¶ [0002]). The gel-like carrier includes at least one emulsifier combination which contains one or more polyethylene glycols having an average molecular weight between 100 and 100,000 grams per mole (satisfies component a. & claims 2-5 & 7) (¶ [0009]). The gel-like carrier is aqueous, alcoholic or aqueous-alcoholic. Suitable aqueous-alcoholic carriers include C1 -C4 alcohol, in particular, ethanol or isopropanol, which is included in an amount of 3 to 70% by weight of the mixture (satisfies component b. & claim 8-11) (¶ [0023]). Suitable polyethylene glycols include PEG 1500, PEG 3000, and PEG 6000 (satisfies claim 6) (¶ [0034]). Acidifiers and alkalizers are used to adjust the pH. The useable alkalizers for adjusting the pH of the agent to the preferred pH may be selected from the group formed from basic amino acids, amines, ammonia, alkali metal hydroxides, alkali metal metasilicates, alkali metal phosphates and alkali metal hydrogen phosphates (satisfies component c. & claim 12) (¶ [0122]). Examples contained ammonia in amounts ranging from 6 to 12 wt.% and water to add up to 100% (Table 1 and 2).
Witte differs from the instant claims insofar as not disclosing wherein the composition comprises 20% to 90% polyethylene glycol.
However, Teboul discloses a composition for dyeing keratin fibers comprising at least one aqueous dispersion (Abstract). The dispersion comprises at least one emulsifier (¶ [0062]). Preferred emulsifiers include polyethylene glycols and are generally included in amounts of 1 % to 30% by weight (¶ [0064]).
Accordingly, it would have been obvious for one of ordinary skill in the art to have formulated the composition of Witte to comprise the polyethylene glycol emulsifiers in an amount of 1 % to 30% by weight since this is a known amount for such emulsifiers for use in compositions for dyeing keratin fibers as taught by Teboul.
Regarding the amount of alcohol recited in instant claim 1, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Witte’s aqueous-alcoholic carriers include C1 -C4 alcohol, in particular, ethanol or isopropanol, which is included in an amount of 3 to 70% by weight of the mixture. Accordingly, because the range recited in the instant claim overlaps with the range disclosed by Witte, the range disclosed by Witte meets the instantly recited limitation.
Regarding the amount of alkalizing agent recited in instant claim 1, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Witte’s examples contained ammonia, an alkalizing agent, in amounts ranging from 6 to 12 wt.%. Accordingly, because the range recited in the instant claim overlaps with the range disclosed by Witte, the range disclosed by Witte meets the instantly recited limitation.
Regarding claims 2-5, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, Witte’s polyethylene glycols have an average molecular weight between 100 and 100,000 grams per mole. Accordingly, because the ranges recited in the instant claims lie inside the range disclosed by Witte, the range disclosed by Witte meets the instantly recited limitations.
Regarding claim 14, the composition of Witte in view of Teboul contains polyethylene glycols in amounts from 1-30%, aqueous-alcoholic carriers such as ethanol or isopropanol, in an amount of 3 to 70%, alkalizers such as ammonia in amounts ranging from 6 to 12 %, and water to add up to 100%. This would satisfy the limitations of the instant claim.
Therefore, the combined teachings of Witte and Teboul render obvious claims 1-12 and 14.
2. Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Witte et al. (US 2014/0259453, Sep. 18, 2014) (hereinafter Witte) in view of Teboul (US 2015/0174041, Jun. 25, 2015) (hereinafter Teboul) and further in view of Gebert et al. (US 2015/0209257, Jul. 30, 2015) (hereinafter Gebert).
The teachings of Witte and Teboul are discussed above.
The combined teachings of Witte and Teboul do not specifically disclose wherein the alkalizing agent is sodium hydroxide or potassium hydroxide
However, Gebert discloses agents for dyeing keratin fibers (Abstract). The composition may additionally comprise an alkalizer. Particularly preferred alkalizers include sodium hydroxide and/or potassium hydroxide (¶ [0221]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Witte in view of Teboul discloses wherein the composition may contain alkalizers. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Witte in view of Teboul to comprise sodium hydroxide and/or potassium hydroxide as the alkalizer, since they are known alkalizers for use in agents for dyeing keratin fibers as taught by Gebert.
Therefore, the combined teachings of Witte, Teboul, and Gebert render obvious claim 13.
Conclusion
Claims 1-14 are rejected.
Claims 15-18 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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