CTNF 18/704,717 CTNF 86481 DETAILED ACTION Claims 17-36 are currently pending. Claims 17-25 and 28-32 are currently under examination. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions 08-25 AIA Applicant's election with traverse of Group I in the reply filed on 04/10/2026 is acknowledged. The traversal is on the ground(s) that the ‘544 does not render obvious all four elements of claim 17 and does not teach 2,6-dipicolinic acid together with the other three elements . This is not found persuasive because the special technical feature does not require both etidronic acid and 2,6-dipicolinic acid, as claim 33 presents them in the alternative (or). Thus the ‘544 publication teaches the special technical features of oxidation base, etidronic acid and 6-hydroxybenzomorpholine ([0053], [0016]) . The requirement is still deemed proper and is therefore made FINAL. 08-05 AIA Claim s 33-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention , there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/10/2026 . 08-25 AIA Applicant's election with traverse of 6-hydroxybenzomorpholine, para-toluenediamine (toluene-2,5-diamine) and mineral oil (liquid fatty substance) in the reply filed on 04/10/2026 is acknowledged. The traversal is on the ground(s) that the office has shown that the species for each of (a), (b) and (c) lack unity of invention. For example, the Office has not explained why the recited i), ii), iii) and iv) would not be expected to share common proper activity or structure . This is not found persuasive because the ‘544 publication teaches the special technical features of oxidation base, etidronic acid and 6-hydroxybenzomorpholine ([0053], [0016]), thus breaking unity of invention . The requirement is still deemed proper and is therefore made FINAL. Priority The instant application is a national stage entry of PCT/EP2022/080139, filed 10/27/2022, which claims priority to FR2111575, filed 10/29/2021. Information Disclosure Statement Applicant’s Informational Disclosure Statement, filed on 07/11/2024, 05/09/2025, 02/06/2026 (3) has been considered. Please refer to Applicant's copy of the 1449 submitted herein. Claim Rejections - 35 USC § 112 (b) 07-30-02 AIA 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. 07-34-01 Claims 18 and 20-22 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 18 recites the limitation "total amount of oxidation coupler". There is insufficient antecedent basis for this limitation in the claim. Instant claim 17 recites “at least one oxidation coupler” and therefore “total amount of oxidation coupler” does not properly refer back to “at least one oxidation coupler”. Claim 20 recites the limitation "total amount of oxidation base(s)". There is insufficient antecedent basis for this limitation in the claim. Instant claim 17 recites “at least one oxidation base” and therefore “total amount of oxidation base(s)” does not properly refer back to “at least one oxidation base”. Claims 21-22 recites the limitation "total amount of compound(s)". There is insufficient antecedent basis for this limitation in the claim. Instant claim 17 recites “at least one compound” and therefore “total amount of compound(s)” does not properly refer back to “at least one compound”. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 17-22 and 28-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 1518544 (IDS 07/11/2024) in view of US 2015/0182441 (IDS 02/06/2026) and US 2017/0150800 . Regarding claim 17, the limitation of a composition comprising at least one oxidation coupler chosen from 6-hydroxybenzomorpholine of formula (I), at least one oxidation base, at least one etidronic acid is met by the ‘544 publication teaching dyeing composition comprising a secondary para-phenylenediamine base, a coupler and at least some etidronic acid ([0001], [0009]). Dyeing keratin fibers is taught. [0001]. The coupler is taught to be selected from a group including 6-hydroxybenzomorpholine [0016]. Etidronic acid is taught [0018]. Oxidation bases are taught to include para-phenylenediamines [0022]. The addition of acidifying agents is taught to include mineral or organic acid such as tartaric acid and citric acid [0042]. Regarding claim 18, the limitation of wherein the total amount of oxidation coupler(s) ranges from 0.005 to 15% by weight is met by the ‘544 publication teaching the coupler is taught between 0.001 to 10% by weight [0017]. Regarding claims 19-20, the limitation of wherein the at least one oxidation base is chosen from a group including para-phenylenediamines is met by the ‘544 publication teaching para-phenylenediamine [0022] present at 0.001-10% [0033]. Regarding claim 21, the limitation of etidronic acid from 0.001-15% weight is met by the ‘544 publication teaching 0.005-10% by weight ([0019]-[0020]). Regarding claim 28, the limitation of further comprising at least one surfactant chosen from anionic surfactants is met by the ‘544 publication teaching additives such as anionic surfactants [0038]. Regarding claim 22, the limitation of the total acid is from 0.001 to 15% by weight is met by the ‘544 publication teaching the acid may be adjusted to the desired value to obtain the desired pH ([0041]-[0042]). Regarding claims 29-31, the limitation of further comprising at least one alkaline agent, chosen from alkanolamine, such as triethanolamine is met by the ‘544 publication teaching alkalizing agents such as triethanolamine [0043]. Regarding claim 32, the limitation of further comprising at least one chemical oxidizing agent is met by the ‘544 publication teaching the presence of an oxidizing agent [0045]. The ’544 publication does not specifically teach at least one compound chosen from 2,6-dipicolonic acid (claim 17). The ‘441 publication teaches compositions to treat keratinous fibers such as human hair comprising a dye (abstract). Hair treatment products contain at least one acid selected from the group including citric acid, tartaric acid and 2,6-dipicolinic acid as the inorganic and/or organic acid ([0031], claim 2). Oxidative coloring and/or lightening of hair in addition to the inorganic/organic acids [0098]. The ’800 publication teaches stabilized hydrogen peroxide formulations (title) for use in human hair. At least one stabilizer is taught to comprise 2,6-dipicolinic acid (abstract). HEDP is alternately called etidronic acid [0053] wherein the use of one or more stabilizers is taught to include 2,6-dipicolonic acid and HEDP ([0046], [0075]). It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use 2,6-dipicolonic acid in the formulation taught by the ‘544 publication because the ‘544 publication teaches the composition include organic acids and the ‘441 publication teaches 2,6-dipiclic acid is an organic acid. It would have been obvious to one of ordinary skill in the art to substitute a first organic acid, citric acid as taught by the ‘544 publication with a second organic acid, 2,6-dipicolonic acid, as taught by the ‘441 publication with a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. M.P.E.P. §2144.07 states "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp ., 325 U.S. 327, 65 USPQ 297 (1945).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout , 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06. One of ordinary skill in the art would have a reasonable expectation of success as the ‘441 publication teaches citric acid and 2,6-dipicolinic acid are taught to be used interchangeably as organic acids in a hair composition. One of ordinary skill in the art before the filing date of the claimed invention would have a reasonable expectation of success as the ‘544 publication teaches the use of an organic acid and etidronic acid and the ‘800 publication teaches the specific combination of etidronic acid and 2,6-dipicolinic acid in hair compositions, thus teach a known combination . 07-22-aia AIA Claim (s) 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 1518544 in view of US 2015/0182441 and US 2017/0150800 as applied to claim s 17-22 and 28-32 above, and further in view of US 2020/0247749 . As mentioned in the above 103 rejection, all the limitations of claims 17-22 and 28-32 are taught by the combination of the ‘544 publication, the ‘441 publication and the ‘800 publication. The combination of references does not specifically teach at least one fatty substance, is a liquid fatty substance, specifically mineral oil (claims 23-25). The ‘749 publication teaches keratin dyeing compounds (title) comprising oxidative hair dye (abstract). Suitable conditioning agents include mineral oils and other oils such as glycerin and sorbitol [0210]. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use mineral oil as taught by the ‘749 publication in the compositions of the ‘544 publication because the ‘544 publication teaches the compristion to include additives such as conditioning agent and the ‘749 publication teaches mineral oil is a specific conditioning agent. One of ordinary skill in the art before the filing date of the claimed invention would have a reasonable expectation of success in using the specifically taught mineral conditioning agent for the conditioning agents in the ‘544 publication because the ‘544 publication and the ‘749 publication are directed to hair dye compositions including conditioning agents, wherein the ‘749 publication provides specifically named conditioning agents known to be used in hair care compositions . Double Patenting 08-33 AIA 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. 08-35 Claim s 17-24 and 28-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17-36 of copending Application No. 18/704,688 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘688 publication teaches a composition comprising 6-hydroxybenzomorpholine as an oxidation coupler, para-phenylenediamine as at least one oxidation base, etidronic acid and 2,6-dipicolinic acid in overlapping amounts and comprising additionally liquid fatty substances, anionic surfactants, alkaline agent and chemical oxidizing agent, thus reading on the instant application . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion No claims are allowed. Examiner Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm. 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, Brian-Yong Kwon can be reached at 571-272-0581. 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. /LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613 Application/Control Number: 18/704,717 Page 2 Art Unit: 1613 Application/Control Number: 18/704,717 Page 3 Art Unit: 1613 Application/Control Number: 18/704,717 Page 4 Art Unit: 1613 Application/Control Number: 18/704,717 Page 5 Art Unit: 1613 Application/Control Number: 18/704,717 Page 6 Art Unit: 1613 Application/Control Number: 18/704,717 Page 7 Art Unit: 1613 Application/Control Number: 18/704,717 Page 8 Art Unit: 1613 Application/Control Number: 18/704,717 Page 9 Art Unit: 1613 Application/Control Number: 18/704,717 Page 10 Art Unit: 1613 Application/Control Number: 18/704,717 Page 11 Art Unit: 1613 Application/Control Number: 18/704,717 Page 12 Art Unit: 1613
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