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 .
DETAILED ACTION
Claim Status
The amended claim set of 05 Feb 2024 has been entered and reviewed
Claims 1-13 and 15 have been amended.
Claims 1-15 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13, directed to a method for bleaching hair, in the reply filed on 10 Mar 2026 is acknowledged.
Claims 14 and 15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1-13 are under consideration.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05 Feb 2024 is in compliance with the provisions of 37 CFR 1.97, except where noted. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
The same reference number is used with two different meanings. Page 11 line 8 refers to reference character “7” as a longitudinal axis and page 11 line 15-22 refer to “7” as a coating.
Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “11, 12, 14 and 15” have been used to designate both method steps in figure 1 and device components in figures 3, 4, and 7.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “L” (eg. see page 12 line 10) and “W” (e.g. page 12 line 29).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “Y” in figure 3.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2 and 4 are objected to because of the following informalities: claim 2 unnecessarily capitalizes “Claim” and claim 4 repeats the word “method.” 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 1-13 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.
The preamble of claim 1 recites “a cosmetic method for bleaching the hair.” Use of the definite article “the” implies a specific hair but hair has not been previously mentioned in the claim. It is unclear what hair “the hair” is intended to refer to. Claims 2-13 are included in this rejection as they depend directly, indirectly, or include all the limitations of independent claim 1.
Claim 1 recites “applying a bleaching composition” and “the hair impregnated with bleaching composition.” It is unclear if the verbs “applying” and “impregnated” refer to the same method step or to different steps. For example, “applying” is a broader term that encompasses any type of delivery of the composition to the hair. Impregnating implies a more thorough soaking and saturating of the hair which may potentially reach the internal structure of the hair. Thus, it is unclear if the impregnated hair refers to the hair with the applied bleaching composition or if it refers to a more detailed soaking step not recited. Claims 2-13 are included in this rejection as they depend directly, indirectly, or include all the limitations of independent claim 1.
Claim 1 recites “exposing the hair” which has improper antecedent basis. The bleach composition in the line before was applied to “at least one lock of hair” and it is unclear if “the hair” refers to the “at least one lock of hair” or to some other hair. Claims 2-13 are included in this rejection as they depend directly, indirectly, or include all the limitations of independent claim 1.
Claim 6 recites “persulfates” which lacks proper antecedent basis as claim 1 recites “one or more persulfates” and it is unclear if “persulfates” refers to just one or more that one persulfate. Amending the claim to “the one or more persulfates” would overcome this rejection.
Claim 9 recites that the bleaching composition comprises an additional oxidizing agent. This is indefinite as an oxidizing agent has not been identified in the claims previously and it is unclear if the “additional oxidizing agent” is intended to indicate the one or more persulfates as an oxidizing agent or if this is intended to refer to some other oxidizing agent not specified in the claims.
Claim 10 recites “the lock to be treated” which lacks proper antecedent basis as claim 1 recites “at least one lock of hair” and it is unclear if “the lock” refers to just one lock or multiple locks of hair. Amending the claim to “the at least one lock of hair to be treated” would overcome this rejection.
Claim 13 recites “the lock of hair” which lacks proper antecedent basis as claim 1 recites “at least one lock of hair” and it is unclear if “the lock of hair” refers to just one lock or multiple locks of hair. Amending the claim to “the at least one lock of hair” would overcome this rejection.
Claim 13 recites “carried out before the step b” but there has not been a step identified as step b and it is unclear what this refers to.
Regarding claims 2-13, the use of the phrases "better still,” “even better still, “most preferentially,” “in particular,” “such as in particular,” “ most preferentially,” and “preferably” renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-3, 6 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Genain et al. (US 2013/0152959, published 20 Jun 2013).
Genain teaches a cosmetic hair treatment method comprising applying a mechanical tension to hair and exposing the hair under mechanical tension to microwaves ([0021-0023]). Genain teaches that the hair may be pretreated before application of the microwaves with a bleaching composition ([0212], [0247]), rendering obvious a method for bleaching hair. Genain teaches applying at least one fixing composition ([0082]), or oxidizing composition ([0190]), to the hair which may occur before the microwaving ([0084]) and where the composition may include at least one or more oxidizing agent such as persulphates and hydrogen peroxide ([0191]). Regarding claim 3, Genain teaches the oxidizing agent hydrogen peroxide as part of an aqueous composition ([0194]). The examiner notes that the limitation of at least 5% water is limited with “in particular” which is understood to be a preferable embodiment and not strictly required by the claim. Regarding claim 6, Genain teaches that the oxidizing agent is between 0.1% and 10% ([0193]). Regarding claim 2, Genain teaches that the microwaves are between 500 MHz and 300 GHz ([0029]). Regarding claim 10, Genain teaches an exposing the hair to microwaves in an enclosure that is impervious to microwaves ([0048]) and that microwaves are emitted from an antenna ([0044], [0066]). Regarding claim 11, Genain teaches variable power where the power of the microwaves is less than or equal to 500 W, preferably less than or equal to 200 W and greater than or equal to 10 W ([0031]) and that the enclosure may cover the hair over a length of greater than or equal to 5 cm ([0042]), rendering obvious the power density of the claim. Regarding claim 12, Genain teaches the duration of the microwave step may be between 1 s and 30 min, preferably between 1 s and 10 min ([0086]). Regarding claim 13, Genain teaches that the device for applying mechanical tension to the hair may comprise one or more rollers or other winding device ([0059]) and that applying the mechanical tension occurs before the microwave step ([0022-0025]).
Genain does not expressly teach bleaching the hair and applying the persulphates and hydrogen peroxide as part of the method of microwaving hair with sufficient specificity to rise to the level of anticipation.
However, 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 have a cosmetic hair treatment method of bleaching hair and to apply persulphates and hydrogen peroxide microwaves to the hair. One of ordinary skill in the art would have been motivated to do so as applying persuplphates and hydrogen peroxide and microwaves are taught by Genain as suitable in a method for treating hair. One of ordinary skill in the art would have a reasonable expectation of success in treating hair with persulphates and hydrogen peroxide and microwaves as taught by Genain since the modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions.
Accordingly, the instant claims are rendered prima facie obvious over the teachings of Genain.
Claims 3, 6 and 9 were rejected above and are rejected again below based on the teachings of the bleaching composition taught by Ascione.
Claims 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Genain et al. (US 2013/0152959, published 20 Jun 2013) as applied to claims 1-3, 6 and 9-13 and in view of Ascione et al. (WO 2012/159926, published 29 Nov 2012).
The teachings of Genain are described supra.
Genain does not teach the bleaching composition mixed from a plurality of compositions (claim 4), the specific persulfates of claim 5, the pH of the bleaching composition (claim 7) and the alkaline agents (claim 8). These deficiencies are made up for in the teachings of Ascione.
Ascione teaches a composition for bleaching keratin fibers such as hair comprising at least one persulfate, at least one ammonium salt and at least one alkaline agent (page 1 lines 4-6). Ascione teaches that the bleaching of the hair is performed by oxidation of the melanin pigment (page 1 lines 7-9). Regarding claims 3 and 4, Ascione teaches that the persulfate, ammonium salt, and alkaline agent is to be mixed directly at the time of use with an aqueous composition (page 2 lines 1-5). Regarding the at least 5% by weight of water as in claim 3 (currently understood to be an optional limitation), Ascione teaches an example where a tablet comprising the persulfate mixture was combined in a ratio of 1:1.5 with an aqueous hydrogen peroxide solution (page 22 lines 1-7), rendering obvious the at least 5% water. Regarding claims 5 and 6, Ascione teaches persulfates such as sodium and potassium persulfate between 10 and 80% by weight (page 4 lines 1-7). Regarding claim 8, Ascione teaches alkaline agents such as alkali metal or alkaline-earth metal carbonates (page 5 lines 5-8). Regarding claim 9, Ascione teaches including an oxidizing agent such as hydrogen peroxide (page 20 lines 18-21). Regarding claim 7, Ascione teaches that peroxygenated salts and hydrogen peroxide are relatively inefficient in acidic medium and it is often necessary to activate them at basic pH in order to obtain an adequate formation of active oxygen (page 1 lines 13-15).
Therefore, it would have been prima facie obvious to one of ordinary skill in then art, before the effective filing date of the claimed invention to have used a bleaching composition comprising sodium or potassium persulfate from 10-80%, alkali or alkaline earth metal carbonate and hydrogen peroxide as part of a bleaching composition with a basic pH and prepared by mixing a plurality of compositions in the method of bleaching hair rendered obvious over Genain. Applying bleaching compositions and microwaves is known from Genain and each of the features described above regarding the persulfates, carbonates, hydrogen peroxide, basic pH and mixing of compositions are known features of bleaching compositions as taught by Ascione. As it is known to use a bleaching composition in the method of Genain one of ordinary skill would have a reasonable expectation of success in incorporating these features of the bleaching compositions as they are known components and means of forming bleaching compositions from Ascione. Thus, each of these features merely represents incorporating known elements of hair bleaching compositions into a method that is known for use with bleaching compositions.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 8 of U.S. Patent No. 11,771,193 in view of Genain et al. (US 2013/0152959, published 20 Jun 2013) as applied to claims 1-3, 6 and 9-13 and in view of Ascione et al. (WO 2012/159926, published 29 Nov 2012).
The claims of the ‘193 patent recites a cosmetic process for treating hair with a device using microwave emission antenna where the hair has mechanical stress applied in a microwave proof chamber and the stress is carried out with a curler.
The claims do not recite applying a bleaching composition with the features of the instant claims and the specific microwave frequencies, power and application time. These deficiencies are made up for in the teachings of Genain and Ascione.
The teachings of Genain and Ascione are described supra.
Therefore, 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 have applied a bleaching composition as part of the microwave hair treatment process where the composition comprises 10-80% sodium or potassium persulfates, hydrogen peroxide, alkali metal or alkaline earth metal carbonates and is at a basic pH and is formed by mixing the persulfates with an aqueous composition and where the microwaves are applied between 1s-30min from 500 MHz and 300 GHz at a power of less than or equal to 200 W and greater than or equal to 10 W over a length of at least 5 cm. Applying bleaching compositions to hair prior to microwave treatment is known from Genain and a specific bleaching composition is known from Ascione. The microwave parameters and bleaching composition parameters described above are known from Genain and Ascione respectively. Thus it is obvious to apply a bleaching composition with microwave treatments based on the prior art and it would be obvious to use these parameters with the reference claims which recite applying microwaves to hair as each of the microwave and bleaching parameters merely represent known elements for treating hair with microwaves.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 9,775,419 in view of Genain et al. (US 2013/0152959, published 20 Jun 2013) as applied to claims 1-3, 6 and 9-13 and in view of Ascione et al. (WO 2012/159926, published 29 Nov 2012).
The claims of the ‘419 patent recite a cosmetic hair treatment method comprising applying mechanical tension to hair and exposing the hair to microwaves from 500 MHz to 10GHz between 1s and 30 min and with a power less than 500 W and application is in an enclosure impervious to microwaves.
The claims do not recite applying a bleaching composition with the features of the instant claims and the mechanical tension applied with curlers and the power density. These deficiencies are made up for in the teachings of Genain and Ascione.
Therefore, 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 have applied a bleaching composition as part of the microwave hair treatment process where the composition comprises 10-80% sodium or potassium persulfates, hydrogen peroxide, alkali metal or alkaline earth metal carbonates and is at a basic pH and is formed by mixing the persulfates with an aqueous composition and where the microwaves are applied over a length of at least 5 cm and where the hair is under tension from rollers. Applying bleaching compositions to hair prior to microwave treatment is known from Genain and a specific bleaching composition is known from Ascione. The microwave parameters and bleaching composition parameters described above are known from Genain and Ascione respectively. Thus it is obvious to apply a bleaching composition with microwave treatments based on the prior art and it would be obvious to use these parameters with the reference claims which recite applying microwaves to hair as each of the microwave and bleaching parameters merely represent known elements for treating hair with microwaves.
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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, David Blanchard can be reached on (571)272-0827. 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.
/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
Prosecution Insights