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 1-13 and 19-21.
Previous Rejections
Applicants' arguments, filed 7/15/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 19-21 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 claim 1 reciting a ”composition for the pretreatment of hair prior to dyeing”, this recitation is merely a recitation of the intended use of the claimed composition. Since the composition of Witte in view of Teboul is substantially the same as the claimed composition, comprising substantially the same active agents: at least one polyethylene glycol; at least one alcohol; at least one alkalizing agent; and water, one of ordinary skill in the art would reasonably conclude that the composition of Witte in view of Teboul would be useable for the pretreatment of hair, whether the prior art discloses such use or not.
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 claim 1 and 19 reciting the sum of PEG and at least one alcohol, 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, the composition of Witte in view of Teboul comprises the alcohol in an amount of 3-70% and the polyethylene in an amount of 1-30%. This would result in a sum that ranges from 4-100%. Accordingly, because the ranges recited in the instant claims lie inside the range disclosed by Witte in view of Teboul, the range disclosed by Witte in view of Teboul meets the instantly recited limitations.
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 20, the composition of Witte in view of Teboul does not require a composition comprising organosilicon compounds or peroxides. The composition of merely requires at least one emulsifier combination and at least one polymeric thickener (See Abstract and Claim 1). As such, a composition free of such components would have been obvious.
Regarding claim 21, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). Witte discloses that the total amount of the emulsifier combination in the agent according to the present specification firstly controls the flow behavior of the agent and the gel stability, and secondly has a positive influence on the solubility of the other ingredients in the agent, thereby reducing haze caused by dispersed ingredients (¶ [0038]). This makes the amounts of emulsifier components a result effective variable, since amounts directly impact the composition flow, stability, and ingredient solubility. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amounts of polyethylene glycol to yield the desired composition flow/stability and ingredient solubility as taught by Witte.
Therefore, the combined teachings of Witte and Teboul render obvious claims 1-12 and 19-20.
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.
3. Claim(s) 21 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 Hoeffkes et al. (EP 0868902, Oct. 7, 1998) (hereinafter Hoeffkes).
The teachings of Witte and Teboul are discussed above.
The combined teachings of Witte and Teboul do not specifically disclose wherein the PEG is used in an amount of 40-70%.
However, Hoeffkes discloses a hair color formulation (Abstract). The formulation may comprise polyethylene glycols in an amount of up to 50 wt. (¶ [0006]).
Accordingly, it would have been obvious for one of ordinary skill in the art to have modified the composition of Witte in view of Teboul to comprise polyethylene glycol in an amount of up to 50% by weight since this is a known and effective amount thereof for use in hair color formulations as taught by Hoeffkes.
Therefore, the combined teachings of Witte, Teboul, and Hoeffkes render obvious claim 21.
Response to Arguments
Regarding Applicant’s arguments that Witte in view of Teboul are drawn to hair dyeing compositions while the instantly claimed composition is one “for the pretreatment of hair prior to dyeing”, as discussed above, the recitation that the composition is ”for the pretreatment of hair prior to dyeing” is merely a recitation of the intended use of the claimed composition. Since the composition of Witte in view of Teboul is substantially the same as the claimed composition, comprising substantially the same active agents: at least one polyethylene glycol; one alcohol; one alkalizing agent; and water, one would reasonably conclude that the composition of Witte in view of Teboul would be suitable for the pretreatment of hair, whether the prior art discloses such use or not. The intended use of the instant composition does not negate the fact that one of ordinary skill in the art would have been logically led to combine the teachings of the Witte in view of Teboul.
Regarding Applicant’s arguments that the examples of Witte disclose limited amounts of PEG, the Examiner submits that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123 (II). While it is understood that Witte’s example’s disclose limited amounts of PEG, this constitutes an example/preferred embodiment that would not teach away from the broader disclosure of Witte in view of Teboul where Witte discloses that suitable emulsifiers for use include polyethylene glycols and Teboul discloses that polyethylene glycols are suitable emulsifiers for hair dyeing compositions and suitable amounts for use thereof are 1-30%.
Regarding Applicant’s argument that since Teboul teaches PEG as an emulsifier it is thus a minor additive, the Examiner submits that a reference is relied upon for all it teaches and suggests, even non-preferred embodiments. See MPEP § 2141.02 (VI). Where Witte discloses that suitable emulsifiers for use include polyethylene glycols and Teboul discloses that polyethylene glycols are suitable emulsifiers for hair dyeing compositions and suitable amounts for use thereof are 1-30%, it would have been obvious for one of ordinary skill in the art to have used polyethylene glycols in said amounts, regardless of their designation as a “major” or “minor” component.
Regarding Applicant’s argument that Witte provides no teaching or suggestion of the relationship between polyethylene glycol and alcohol (i.e., 60-95 wt%), the Examiner submits that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See MPEP § 7.37.13. As discussed above, claim 1 is rendered obvious over the combined teachings of Witte and Teboul, because it would have been obvious for one of ordinary skill in the art to modify the composition of Witte to comprise 1-30% polyethylene glycol since this is a known amount of emulsifier for use in hair dyeing compositions as taught by Teboul. Moreover, Applicant is reminded that a skilled artisan is not an automaton, but a person having ordinary skill in the art and is capable of fitting teachings of multiple prior art documents together like pieces of a puzzle. See MPEP § 2143.03. Therefore, a skilled artisan would be highly capable of combining the teachings of Witte and Teboul to arrive at the claimed cosmetic. Accordingly, where Witte in view of Teboul disclose that the alcohol may be contained in an amount of 3-70% and the polyethylene glycol may be present in an amount of 1-30%, the instantly claimed limitation is satisfied.
Regarding Applicant’s arguments that modifying the amounts of PEG would alter the compositions of the prior art since they are used as minor components by the prior art, the Examiner again submits that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123 (II). The amounts disclosed by Witte are all disclosed as preferred embodiments and/or examples. Witte does not specifically limit the content of the emulsifier outside of those preferred parameters. Furthermore, there is nothing in the cited prior art that suggests that utilizing PEG in the amounts disclosed by Teboul has a negative effect nor does it teach away from such an amount. As such, one of ordinary skill in the art would find sufficient motivation to utilize the PEG in the amount disclosed by the cited prior art.
Regarding Applicant’s arguments that Gebert does not cure the alleged deficiencies of Witte and Teboul, the Examiner submits that Gebert cures any alleged deficiencies of Witte in view of Teboul where Gebert discloses that hydroxide and/or potassium hydroxide are known alkalizers for use in agents for dyeing keratin fibers.
The Examiner notes that the teachings of Hoeffkes are applied to meet the requirements of the new limitation of “wherein the at least one polyethylene glycol is present in an amount of from 40 to 70 wt%, based on the total weight of the cosmetic composition”.
In light of the foregoing, the Examiner does not find Applicant’s arguments to be persuasive and the rejection is maintained.
Conclusion
Claims 1-13 and 19-21 are rejected.
Claims 15-18 are withdrawn.
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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