This Non-Final Rejection (NFR) is to replace the previous NFR submitted on 09/04/2026
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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 07/11/2024, 05/09/2025, 02/03/2026 and 02/03/2026 is/are acknowledged. The submission(s) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner. See attached copy(ies) of PTO-1449.
Response to Restriction
Applicants' election with traverse of Group I (claims 17-28 and 36) in the reply filed on 06/01/2026 is acknowledged. The traversal is on the grounds that the M.P.E.P. § 1850(11) states that "unity of invention only exists wherein there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features. The expression 'special technical features' is defined in PCT Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art.” Applicant argues that the Examiner has not established that Allard discloses or renders obvious the specific combination of all required elements recited in claim 17 since Allard teaches a, b and c, but does not teach part d, which recites at least one compound chosen from 2,6-dipicolinic acid, salts thereof, or mixtures of two or more thereof.
This is not found persuasive because a national stage application containing claims to different categories of invention can be considered to have unity of invention if the claims distinguishable over prior art are drawn only to a product and a process specially adapted for the manufacture of said product. The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: The groups lack unity of invention because even though the prior art only teaches a, b, and c, which are taught in the prior art, so they do not count as “special technical features or a single general inventive concept”. Without the common link of a, b and c, the remaining point d of claim 17, describe separate, distinct inventions, as the claim does not share a single inventive contribution over the prior art.
In accordance with 37 CPR 1.499, the claims must be restricted.
I. Claims 17-28 and 36, drawn to a composition.
II. Claim 29-35, drawn to methods.
The requirement is still proper and is therefore made FINAL. For examining purpose, Claims 17-28 and 36 of Group I are examined in this office action.
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 non-obviousness.
Claim(s) 17-19 20, 23-24 and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mignon et al. (US 20200085709 A1).
Claims 17 and 19,
Mignon et al. teach an anhydrous solid composition for dyeing keratin fibers, in particular human keratin fibers such as the hair. (Abs). The anhydrous solid dyeing composition according to the present invention comprises one or more oxidation bases. Preferably, the oxidation bases are chosen especially from heterocyclic bases and benzene-based bases, the addition salts thereof, the solvates thereof, and mixtures thereof. (0050). The oxidation bases that may be used in the composition of the invention are chosen especially from para-phenylenediamines, bis(phenyl)alkylenediamines, para-aminophenols, ortho-aminophenols and heterocyclic bases, the addition salts thereof, the solvates thereof, and mixtures thereof. (0050). One of the para-phenylenediamines that may be mentioned is 2-methoxymethyl-para-phenylenediamine. (0052). Optionally one or more oxidation couplers. (0083). Among these oxidation couplers, mention may be made in particular of meta-phenylenediamines, meta-aminophenols, meta-diphenols, naphthalene-based couplers and heterocyclic couplers, the addition salts thereof, the solvates thereof, and mixtures thereof. (0084). One of the oxidation couplers is 6-hydroxybenzomorpholine. (0085). When the composition capable of dissolving the article is an aqueous hydrogen peroxide solution, it preferably has a pH of less than 7. The acidic pH ensures the stability of the hydrogen peroxide in the composition. It may be obtained using acidifying agents, for instance etidronic acid. (0429). The anhydrous solid dyeing composition may also optionally comprise one or more additives, different from the compounds of the invention and among which mention may be sequestrants. (0183).
Mignon et al. teach sequestrants but do not teach a specific sequestrant Dipicolinic acid.
Dipicolinic acid (pyridine-2,6-dicarboxylic acid or PDC and DPA) is a chemical compound which plays a role in the heat resistance of bacterial endospores. Dipicolinic acid
acts as a chelating agent or sequestering agent. DIPICOLINIC ACID - Ataman Chemical
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to prepare a composition comprising one or more oxidation bases, specifically, 2-methoxymethyl-para-phenylenediamine, with one or more oxidation couplers, specifically, 6-hydroxybenzomorpholine, with acidifying agents, specifically etidronic acid and with other additives including sequestrants, taught by Mignon et al. and the sequestrant/chelating agent, which can be Dipicolinic acid, since it has been proven to be applicable to do so.
With regard to claim 18,
Mignon et al. teach the total amount of oxidation base(s) present in the anhydrous solid dyeing composition according to the invention preferably ranges from 0.1% to 45% by weight, relative to the total weight of the anhydrous solid dyeing composition. (0075). The total amount of oxidation base(s) present in the ready-to-use composition according to the present invention preferably ranges from 0.05% to 15% by weight, relative to the total weight of the ready-to-use composition. (0189).
With regard to claim 20,
Mignon et al. teach the total amount of oxidation coupler(s), when they are present in the anhydrous solid dyeing composition according to the invention, preferably ranges from 0.1% to 45% by weight, relative to the total weight of the anhydrous solid dyeing composition. (0089). The total amount of coupler(s), when they are present in the ready-to-use composition according to the invention, preferably ranges from 0.05% to 15% by weight, relative to the total weight of the ready-to-use composition. (0190).
With regard to claims 23-24,
Mignon et al. teach the composition capable of dissolving the envelope is an organic anhydrous composition or an aqueous composition comprising at least one liquid fatty substance (0425).
With regard to claim 26,
Mignon et al. teach the anhydrous solid dyeing composition according can optionally also comprise one or more surfactants, preferably chosen from anionic surfactants, amphoteric or zwitterionic surfactants, non-ionic surfactants, cationic surfactants and mixtures thereof. (0090).
With regard to claim 27,
Mignon et al. teach the anhydrous solid dyeing composition may optionally also comprise one or more alkaline agents. (0136).
With regard to claim 28,
Mignon et al. teach the anhydrous solid dyeing composition may optionally also comprise one or more chemical oxidizing agents. (0145).
Claim(s) 17, 21-22, 24-25, and 36, is/are rejected under 35 U.S.C. 103 as being unpatentable over Mignon et al. (US 20200085709 A1) in view of DeGeorge et al. (US 10,772,818 B2).
The teachings of Mignon et al. are described in claim 17 above.
Claims 21-22,
Mignon et al. do not teach the total amount of compound(s) chosen from etidronic acid, salts thereof, or mixtures of two or more thereof ranges from 0.001 % to 15% by weight, relative to the total weight of the composition.
DeGeorge et al. teach in one embodiment, the hair coloring base compositions of may include:
(i) about 0.1 to about 25 wt.%, of one or more oxidative dye precursors, for example, one or more N-substituted derivatives of the amines, and ethers of the phenols, ortho- or para-aminophenols, ortho- or para-phenylenediamines, double bases, heterocyclic bases, and the acid addition salts thereof; (Col. 12, lines 18-26).
(iii) about 0.0001 to about 12 wt.%, of one or more couplers, for example, aromatic meta-diamines, meta-aminophenols, meta-diphenols, heterocyclic compounds (indole compounds), and a mixture thereof; (Col. 12, lines 42-46).
Stabilizer, Tetrasodium Etidronate and/or Sodium Stannate: <1wt%. (Col. 25-28, Developer Composition Tables).
DeGeorge et al. do not teach chelating agent 2,6-dipicolinic acid.
DeGeorge et al. teach chelating agent, <3 wt% (Col. 24, Hair Coloring Base Composition Table).
Pentasodium Pentetate and/or Sodium Salicylate <1 wt% (Col. 25-28, Developer Composition Tables).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to prepare a composition comprising one or more oxidation bases, specifically, 2-methoxymethyl-para-phenylenediamine, with one or more oxidation couplers, specifically, 6-hydroxybenzomorpholine, with acidifying agents, specifically etidronic acidsalts thereof, or mixtures of two or more thereof ranges from 0.001 % to 15% by weight, relative to the total weight of the composition and with other additives including sequestrants, taught by Mignon et al. and the sequestrant/chelating agent, <1 wt%, can be Dipicolinic acid, and the since it has been proven to be applicable to do so.
With regard to claims 24-25,
DeGeorge et al. teach the hair coloring base composition may include additional components such as, for example, one or more fatty compounds. (Col. 9, lines 46-48). Fatty compounds include oils, mineral oil, fatty alcohols, fatty acids, fatty alcohol derivatives, fatty acid derivatives (Col. 9, lines 51-53), in which oils, mineral oils are liquids, but fatty alcohols, fatty acids, fatty alcohol derivatives, fatty acid derivatives can be either liquid or solid depending on carbon chain length.
Claim(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over DeGeorge et al. (US 10,772,818 B2).
DeGeorge et al. teach the various aspects of the invention shown in the drawings are not limited to the arrangements and instrumentality. (Col. 4, lines 18-20). Hair dyeing products for permanently altering the color of hair typically rely on a combination of compositions
containing oxidative dye precursors (also known as primary intermediates or oxidation bases) and compositions containing oxidizing agents such as peroxide and persulfate compounds. (Col. 1, lines 23-29). The methods of the instant disclosure include combining an antioxidant booster composition with a hair coloring composition shortly before applying the hair coloring composition to the hair. The multiple compositions used in the methods can therefore conveniently be provided in a kit. Kits according to the instant disclosure typically include: an antioxidant booster composition comprising one or more antioxidants, and optionally one or more fillers or carriers; and
A hair coloring base composition comprising one or more alkalizing agents and one or more oxidative dye precursors; wherein the antioxidant booster composition and the hair coloring composition are separately contained. (Col. 3, lines 46-60). 2-Methoxymethyl-para-phenylenediamine (ME-PPD) is a dye precursor (also known as a primary intermediate or oxidation base) used in permanent hair. (Col. 17, lines 19-39). The shades obtained with oxidative dye precursors may often be varied by combining them with at least one coupler. (Col. 8, lines 43-44).
The kits may further include a developer composition, a developer composition comprising one or more oxidizing agents and a cosmetically acceptable carrier. (Col. 3, lines 46-60); Stabilizer Tetrasodium Etidronate is included in the developer composition; also, the Cetearyl Alcohol (fatty surfactant), Ceteareth-25 (surfactant), and/or Trideceth-2 Carboxamide MEA (surfactant) and a chelating agent. (Col. 24, Developer Composition Table)-Col. 25).
DeGeorge et al. do not teach 2,6-dipicolinic acid.
Dipicolinic acid (pyridine-2,6-dicarboxylic acid or PDC and DPA) is a chemical compound which plays a role in the heat resistance of bacterial endospores. Dipicolinic acid
acts as a chelating agent or sequestering agent. DIPICOLINIC ACID - Ataman Chemical
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to prepare a device/kit comprising separated compositions; one of the kits comprising 2-Methoxymethyl-para-phenylenediamine (ME-PPD), a dye precursor, a primary intermediate or oxidation base) used in permanent hair, with at least one coupler; the other kit, developer composition comprising oxidizing agent, Stabilizer Tetrasodium Etidronate and the chelating agent, which can be Dipicolinic acid, and the since it has been proven to be applicable to do so. Also, kits containing medical components can be considered medical devices or convenience kits under regulatory frameworks like the FDA, therefor the device is considered as a kit. Also, general knowledge that the dyes and the oxidation agents should be separated.
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 17-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the following.
Claims 17-32 of copending Application No. 18/704717 (reference application): This application has the same etidronic acid, 2,6-dipicolinic acid and oxidation coupler chosen from 6-hydroxybenzomorpholine with the instant application and only changes the oxidation base. When one looks to the specification to determine what oxidation bases are included in the invention, one sees the instantly claimed 2-methoxymethyl-para-phenylenediamine on page 5, lines 21-22. It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to select one of the preferred oxidation bases of ‘717 as the oxidation base. This shows that the conflicting claims are directed to obvious variations of the same invention.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGOC-ANH THI NGUYEN whose telephone number is (571)270-0867. The examiner can normally be reached Monday - Friday 8:00 am.
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, Robert A Wax can be reached at 571-272-0623. 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.
/NGOC-ANH THI NGUYEN/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights