DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of Group I, claims 1-13, 15-19, and 23, and the species a polyhydroxyalkanoate (PHA) copolymer of Example 1’, 3-aminopropyltriethoxysilane, and red iron oxide in the reply filed on 1 June 2026, is acknowledged.
During a telephone conversation with Burt Amernick on 17 July 2026, at (240) 350-6686, a provisional election was made without traverse to prosecute the fatty substance species of isododecane. Affirmation of this election must be made by applicant in replying to this Office action.
Status of Claims
Claims 1-23 are pending in the instant Office Action.
Claims 14 and 20-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1 June 2026.
Claims 4-7 and 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Specifically, the PHA copolymer elected without traverse in the reply filed on 1 June 2026, is the PHA copolymer of Example 1’ which comprises two different polymer units as depicted below (reproduced from the instant spec.):
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The PHA copolymer recited in claim 4 comprises “three different repeating polymer units”, in claim 5 comprises “four different repeating polymer units”, and in claim 6 comprises “five different repeating polymer units” and the claims are therefore drawn to a nonelected species. Claim 7 recites a PHA copolymer in which the n-octenyl and n-hexyl side chains are replaced with groups as outlined in the tables. Claims 11 and 12 recite PHA copolymers with R1 groups which comprise more carbons than n-octenyl and n-hexyl and/or heteroatoms that are not present in the elected n-octenyl and n-hexyl groups.
Claims 1-3, 8-10, 13, 15-19, and 23 are under consideration in the instant Office Action, to the extent of the following elected species:
the specific PHA copolymer of Example 1’ (R1=n-octenyl group with 5% unsaturation, R2=n-hexyl group);
the specific crosslinking agent 3-aminopropyltriethoxysilane (APTES);
the specific fatty substance isododecane; and
the specific coloring agent red iron oxide.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent French Patent Application No. FR 2114050, filed on 20 December 2021, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 18 June 2024, was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code in para. [00156] (link to Polymers containing groups of biological activity, C.G. Overberger et al.), [00188] (link to polydimethylsiloxanes sold by Gelest), and [00248] (link to Polymers containing groups of biological activity, C.G. Overberger et al.). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The use of the terms Corning®, ATCC®, Whatman®, and Radiacid™, which are trade names or marks used in commerce, has been noted in this application. When appropriate, the terms should be accompanied by the generic terminology and be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1-2 and 8-10 are objected to because of the following informalities:
Claim 1 recites an extraneous “and” in line 12 of pg. 2 between i) and j) which should be removed.
Claim 1 ends with a semicolon which should be replaced with a period.
Claim 1 recites the R1 group of PHA copolymer a) to be substituted with one or more groups chosen from A) and B), wherein A) and B) possess X and X’ groups or 2X groups, respectively. X and X’ represent O, S, or N-Ra, wherein Ra is H or C1-4 alkyl. However, the elected PHA copolymer of Example 1’ has R1 groups that are n-octenyl and n-hexyl groups which do not contain O, S, or N atoms. The n-octenyl group only falls within the limitations set in instant claim 1 with R1 being substituted with A) R3’-C(X)-C(R4)(R5)-C(X’)-[Y]n-*, wherein R3’=C5 alkyl group (with unsaturation), X=X’=2 H atoms, R4=R5=H, and n=0. Similarly, the n-hexyl group only falls within the limitations set in instant claim 1 with R1 being substituted with A) R3’-C(X)-C(R4)(R5)-C(X’)-[Y]n-*, wherein R3’=C3 alkyl group, X=X’=2 H atoms, R4=R5=H, and n=0. The Examiner believes the Applicant mistakenly omitted the word “optionally” from line 13 of claim 1 and the phrase is intended to recite “said hydrocarbon-based chain being: optionally substituted with one or more groups…” (bold added for emphasis).
Claim 2 has been amended to recite “in which polymer units (A) and (B): it being understood that (A) is different from (B).” Clarity would be improved if the phrase were amended to recite “wherein polymer units (A) and (B) are different”.
Claims 8-10 recite two items from which radical R1 may be chosen, represented by numerals i) and ii). The word “and” should be inserted between the two numerals, e.g., the phrase in claim 8 should recite “chosen from i) (C5-C22)alkyl, linear or branched, and ii)…” (bold added for emphasis).
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.
Claim 13 is 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 13 recites R2 to represent a hydrocarbon-based group. There is insufficient antecedent basis for this limitation in the claims because claim 1, from which claim 13 depends, does not recite “R2”. Applicant may overcome this rejection by amending claim 13 to depend from claim 2 or 3.
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, 8-10, 13, 15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Portal et al. (WIPO International Patent Publication No. WO 2020/128050 A1, provided by Applicant in the IDS filed on 18 June 2024, hereafter referred to as Portal) in view of Sparks et al. (Biomacromolecules 2008, 9 (8), 2091., hereafter referred to as Sparks).
Portal teaches a cosmetic composition comprising a polyhydroxyalkanoate (PHA) copolymer and an oily medium for the treatment of keratinous substances (Abstract and para. [0001]). The PHA copolymer is taught to have 1-3 different polymer units, in one embodiment the units being A with the formula -[-O-CH(R1)-CH2-CO-]- and B with the formula -[-O-CH(R2)-CH2-CO-]-, which are identical to the polymer units A and B recited in instant claim 2 (para. [0009]). The mol percentage of the polymer units is taught to range from 0.5-97.5 mol%, such as 40-97.5%, 2-40%, or 0.5-20% (para. [0012]). Portal teaches that R1 is a linear C5-9 alkyl radical and R2 is a linear alkyl radical with 2 fewer carbon atoms than R1 (para. [0009]). In the embodiment that R1 is a C8 linear alkyl group, R2 is a C6 linear alkyl group. The oily medium in the composition is taught in one embodiment to be a branched nonpolar hydrocarbon with 8-14 carbons (para. [0009]), such as isododecane (para. [0029]). Portal further teaches their cosmetic composition to comprise colorants (para. [0036]) and that the resilience and appearance of the film that is produced by the PHA copolymer is important (Examples 11-12).
Portal does not teach the C8 alkyl side chain to have any degree of unsaturation. This deficiency is offset by the teachings of Sparks.
Sparks teaches the synthesis of the first cationic PHA copolymer via post-synthesis modification of a PHA copolymer produced by bacteria (Abstract). PHA copolymers are taught to be desirable for use in packaging and biomedical fields due to their biodegradability, biocompatibility, and recyclability, but are inherently hydrophobic and must be chemically modified to have water solubility (pg. 2091, Introduction, para. 1). Sparks teaches that chemical modifications and diversity can be achieved via functionalization of side chains that possess “chain-terminal vinyl groups” and utilized these groups to form chain-terminal epoxide and tertiary amine groups, the latter being “the first report of a cationic PHA” (pg. 2091, Introduction, para. 1). In Figures 1-2 and Scheme 1, Sparks teaches the functionalization of a 1-octenyl side chain of a PHA copolymer.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the invention of Portal with the teachings of Sparks to arrive at the claimed invention because the use of a known technique in similar copolymers to impart a known benefit produces predictable results. Portal teaches a composition comprising a colorant, isododecane, and a PHA copolymer that may have two polymer units which possess n-hexyl and n-octyl side chains. In view of the teachings of Sparks, one of ordinary skill in the art would be motivated to modify the n-octyl side chain to possess a chain-terminal vinyl group because Sparks teaches this modification to enable functionalization of the PHA copolymer, such as with an epoxide or amine group. Sparks teaches that this functionalization can add or change properties, such as making the PHA copolymer cationic and water-soluble. An ordinary artisan would recognize the utility of having the ability to chemically modify their PHA copolymer to add or change properties and would therefore desire the n-octyl groups of their PHA copolymer to have a chain-terminal vinyl group (i.e., a 1-octenyl group).
Applicant has not disclosed a method of determining the degree of unsaturation of their PHA copolymer. The commonly accepted simplified method of determining the degree of unsaturation (DoU) is DoU=(2C+2+N-X-H)/2, where C is the number of carbon atoms, N the number of nitrogen atoms, X the number of halogen atoms, and H the number of hydrogen atoms, as evidenced by Badertsher et al. J. Chem. Inf. Comp. Sci. 2001, 41 (4), 889. Using this method, the degree of unsaturation of a 1-octene side chain is ~1 and to represent 5% of the PHA copolymer the polymer unit comprising 1-octene would be ~5 mol% of the entire copolymer. Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The mol% value falls within the range taught by Portal is therefore considered obvious. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1-3, 8-10, 13, 15, and 17-18 in view of the teachings of Portal and Sparks.
Claims 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Portal (WIPO International Patent Publication No. WO 2020/128050 A1, provided by Applicant in the IDS filed on 18 June 2024) in view of Sparks (Biomacromolecules 2008, 9 (8), 2091.) as applied to claims 1-3, 8-10, 13, 15, and 17-18 above, and further in view of Herrlein et al. (U.S. Patent No. 12,364,657 B2, priority to 29 June 2021, hereafter referred to as Herrlein).
Portal and Sparks teach the above.
Portal and Sparks do not teach the cosmetic composition to comprise the crosslinking agent APTES nor the colorant to be red iron oxide. These deficiencies are offset by the teachings of Herrlein.
Herrlein teaches a film coating for keratin fibers, a composition comprising the components forming the film, and pigments to provide color (Abstract). To overcome issues with short-lived hair coloring that is not resistant to washing and to avoid the use of damaging oxidative dyes, Herrlein teaches the use of film forming compositions that comprise components that form a polymeric film on keratin fibers via long, cross-linked polymer chains (col. 1, line 23 - col. 2, line 37 and col. 3, line 39 - col. 4, line 7). Herrlein teaches that “irrespective of the kind or kinds of polymers forming the coating”, the physical and chemical properties of their coatings include wash-fastness, resistance to environmental attack, tensile strength, and flexibility to allow free movement of the coated keratin fibers (col. 2, lines 38-62).
To form the cross-linked film, Herrlein teaches the application of a “pre-treatment composition” to the keratin fibers prior to the film forming composition to avoid common application issues such as dripping, clumping, and unwanted spread (col. 2, line 63 - col. 4, line 16). The pre-treatment composition comprises one or more alkoxysilanes to cross-link with the polymer of the film forming composition, which are taught to combine following application (col. 32, lines 12-40). In a preferred embodiment, the alkoxysilane is taught to be 3-aminopropyltriethoxysilane (APTES) (col. 48, lines 4-26). Finally, Herrlein teaches that organic, inorganic, natural, or synthetic pigments can be used to provide a desired color (col. 48, line 32 - col. 49, line 9). Inorganic pigments are taught to have the advantages of excellent resistance to light, weather, and temperature, and in one embodiment the inorganic pigment is iron oxide red (col. 50, lines 48-57 and 66-67, col. 51, line 15, and col. 53, lines 34-38).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, to modify the invention rendered obvious by the teachings of Portal and Sparks with the teachings of Herrlein because combining prior art elements in similar inventions to impart known benefits produces predictable results. The teachings of Portal and Sparks rendered obvious a composition comprising a colorant, isododecane, and a PHA copolymer that may have two polymer units which possess n-hexyl and 1-octenyl side chains at a 5% degree of unsaturation. In view of the teachings of Herrlein, a person of ordinary skill would be motivated to use APTES to crosslink the PHA copolymer to keratin fibers to produce a film because Herrlein teaches the resulting film to be resistant to weathering, flexible, and washable while avoiding the drawbacks of traditional hair coloring compositions. The ordinary artisan would recognize these characteristics as desirable in a composition intended to be applied to keratinous substances and apply a color and would therefore be motivated to include the cross-linking alkoxysilane.
A person of ordinary skill would also be motivated to select the pigment iron oxide red in view of the teachings of Herrlein because Portal teaches the inclusion of a colorant but does not teach a specific species. Herrlein teaches that the pigment iron oxide red is suitable for use in a composition that contains a polymer and cross-linking agent and has the benefits of excellent resistance to light, weather, and temperature. The ordinary artisan would require the teachings of a specific colorant species to complete the invention of Portal, would desire a colorant that is compatible with their composition, and would recognize the benefits of the pigment as desirable. Therefore, in the case that the ordinary artisan desires a red colorant, they would find it obvious to use iron oxide red as the colorant in the composition rendered obvious above. As a result, there is a reasonable expectation of success in arriving at the invention of claims 16 and 19 in view of the teachings of Portal and Sparks and further in view of the teachings of Herrlein.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Portal (WIPO International Patent Publication No. WO 2020/128050 A1, provided by Applicant in the IDS filed on 18 June 2024) in view of Sparks (Biomacromolecules 2008, 9 (8), 2091.) as applied to claims 1-3, 8-10, 13, 15, and 17-18 above, and further in view of Herrlein (U.S. Patent No. 12,364,657 B2, priority to 29 June 2021) and Lechner et al. (U.S. Patent No. 11,504,319 B2, priority to 13 March 2020, hereafter referred to as Lechner).
Portal and Sparks teach the above.
Portal and Sparks do not teach a kit comprising components in different compartments. These deficiencies are offset by the teachings of Herrlein and Lechner.
Herrlein has been described above.
Lechner teaches a process for coloring keratinous material comprising the application of an organosilicone compound, one or more coloring compounds, and a film-forming polymer and a kit comprising the components above (Abstract and claim 15). Lechner found that the successive application of two separate compositions enabled “the production of very stable and washfast colorations on the keratinous materials” and designed a special type of packaging to separate the compositions (col. 3, lines 29-46). The kit of Lechner’s invention is taught to have two or three separate containers, with the organosilicone compound and film-forming polymer always being separated and a coloring compound being in one or both of the other containers or being separated into its own third container (col. 58, line 55 - col. 60, line 67). The kit is taught to provide users with all the required components in the form of a multi-component kit-of-parts and allow the user to use them comfortably (col. 58, lines 55-57). In a preferred embodiment, the organosilicone compound is taught to be 3-aminopropyltrimethoxysilane (col. 7, line 57 - col. 9, line 56). The coloring compound is taught, in some embodiments, to be iron oxide red (col. 46, lines, 6, 14, and 59).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Herrlein and Lechner with the invention rendered obvious by Portal and Sparks to arrive at the invention of claim 23 because the application of a known technique in similar products to impart a benefit produces predictable results. The teachings of Portal and Sparks rendered obvious a composition comprising a colorant, isododecane, and a PHA copolymer that may have two polymer units which possess n-hexyl and 1-octenyl side chains at a 5% degree of unsaturation. In view of the teachings of Herrlein, a person of ordinary skill would be motivated to use APTES to crosslink the PHA copolymer to keratin fibers to produce a film because Herrlein teaches the resulting film to be resistant to weathering, flexible, and washable while avoiding the drawbacks of traditional hair coloring compositions. The ordinary artisan would recognize these characteristics as desirable in a composition intended to be applied to keratinous substances and apply a color and would therefore be motivated to include the cross-linking alkoxysilane.
A person of ordinary skill would further be motivated to organize the composition into separate containers in a kit in view of the teachings of Lechner because Lechner teaches such a configuration to be appropriate for a hair coloring, film-forming polymer composition, to enable the production of a stable coloration on keratin fibers, and to enable the comfortable use of the product to an end user. In addition, Lechner teaches their configuration into a kit with multiple components to be appropriate for a film-forming polymer composition that will react with APTES, which an ordinary artisan would recognize as being relevant to the invention rendered obvious by Portal, Sparks, and Herrlein. Both Herrlein and Lechner teach that iron red oxide is a suitable colorant for use in their inventions, therefore, in the case that the ordinary artisan desires a red colorant, they would find it obvious to use iron oxide red as the colorant in the composition rendered obvious above and be assured that it would be compatible with the other components of their invention. As a result, there is a reasonable expectation of success in arriving at the invention of instant claim 23 in view of the teachings of Portal and Sparks and further in view of the teachings of Herrlein and Lechner.
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 1-3, 8-10, 13, 15-19, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
claims 2, 6, 8-9, 14-15, 17-18, 22-24, 26, and 28 of commonly assigned copending Application No. 17/794,708 (Notice of Allowance issued by the Office, patent pending);
claims 1-2, 6-7, 9, 16, 19, and 22 of commonly assigned copending Application No. 17/794,753 (Notice of Allowance issued by the Office, patent pending);
claims 1-2, 6, 9-11, 14, 19-20, and 22 of commonly assigned copending Application No. 18/707,648;
claims 24-25, 34, 39-40, and 42 of commonly assigned copending Application No. 18/723,188;
claims 25-26, 30, 32-33, 37, 41-42, and 44 of commonly assigned copending Application No. 18/723,216;
claims 24-25, 29, 31, 34, 36, 41, and 43 of commonly assigned copending Application No. 18/723,248; and
claims 24-25, 29, 31, 36, 40-41, and 43 of commonly assigned copending Application No. 18/723,263
in view of Portal (WIPO International Patent Publication No. WO 2020/128050 A1, provided by Applicant in the IDS filed on 18 June 2024), Herrlein (U.S. Patent No. 12,364,657 B2, priority to 29 June 2021), and Lechner (U.S. Patent No. 11,504,319 B2, priority to 13 March 2020).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. 17/794,708 recites a composition comprising one or more PHA copolymers of the same formula as elected above, one or more fatty substances, which may be a branched C8-16 alkane, and one or more coloring agents (claims 2, 6, 8-9, 14-15, 17-18, 22-24, 26, and 28).
Copending Application No. 17/794,753 recites a composition comprising one or more PHA copolymers of the same formula as elected above (claims 1-2, 6-7, 9, and 22) and one or more fatty substances which may be a branched C8-16 alkane (claims 1 and 16). The composition is further recited to comprise one or more coloring agents (claim 19).
Copending Application No. 18/707,648 recites a composition comprising one or more PHA copolymers of the same formula as elected above (claims 1-2, 6, 9-11, and 14) and one or more fatty substances which in one embodiment may be a hydrocarbon (claims 1 and 19-20). The composition is further recited to comprise one or more coloring agents (claim 22).
Copending Application No. 18/723,188 recites a composition comprising one or more PHA copolymers of the same formula as elected above (claims 24-25 and 34) and one or more fatty substances which in one embodiment may be a branched alkane (claims 24 and 39-40). The composition is further recited to comprise one or more coloring agents (claim 42).
Copending Application No. 18/723,216 recites a composition comprising one or more PHA copolymers of the same formula as elected above (claims 25-26, 30, 32-33, and 37) and one or more fatty substances which in one embodiment may be a hydrocarbon (claims 25 and 41-42). Application ‘216 additionally recites a method of applying the recited composition to keratin materials (claim 44).
Copending Application No. 18/723,248 recites a composition comprising one or more PHA copolymers of the same formula as elected above (claims 24-25, 29, 31, 34, and 36) and one or more fatty substances which in one embodiment may be a hydrocarbon (claims 24 and 41). Application ‘248 additionally recites a method of applying the recited composition to keratin materials (claim 43).
Copending Application No. 18/723,263 recites a composition comprising one or more PHA copolymers of the same formula as elected above (claims 24-25, 29, 31, and 36) and one or more fatty substances which in one embodiment may be a hydrocarbon (claims 24 and 40-41). Application ‘263 additionally recites a method of applying the recited composition to keratin materials (claim 43).
Copending Application Nos. 17/794,708, 17/794,753, 18/707,648, 18/723,188, 18/723,216, 18/723,248, and 18/723,263 do not recite the specific hydrocarbon to be isododecane, the presence of the crosslinking agent 3-aminopropyltriethoxysilane (APTES), nor a kit comprising parts of the composition in two compartments. Copending Application Nos. 17/794,708, 17/794,753, 18/707,648, and 18/723,188 do not recite the specific coloring agent to be iron oxide red and copending Application Nos. 18/723,216, 18/723,248, and 18/723,263 do not recite the composition to comprise a coloring agent. These deficiencies are offset by the teachings of Portal, Herrlein, and Lechner.
Portal, Herrlein, and Lechner have been described above.
Instant claims 1-3, 8-10, 13, 15-19, and 23 are obvious variations of the above cited inventions because it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to select the specific hydrocarbon isododecane, to include the crosslinking agent APTES, and to configure the composition as a kit with two compartments in view of the teachings of Portal, Herrlein, and Lechner.
One of ordinary skill would be motivated to modify the inventions recited above with the teachings of Portal to use isododecane as the specific hydrocarbon fatty substance because the copending applications do not recite a specific species and Portal teaches isododecane as a suitable hydrocarbon to be used in a composition alongside a PHA copolymer, providing information the ordinary artisan would need to complete their invention. In view of the teachings of Herrlein, a person of ordinary skill would be motivated to use the crosslinking agent APTES in their composition because Herrlein teaches that the film that results from APTES crosslinking polymers to keratin fibers is resistant to weathering, flexible, and washable while avoiding the drawbacks of traditional hair coloring compositions. The ordinary artisan would recognize these characteristics as desirable in a composition intended to be applied to keratinous substances and would therefore be motivated to include the cross-linking alkoxysilane. The ordinary artisan would further be motivated to configure the compositions recited above as two compartment kits in view of the teachings of Lechner because Lechner teaches such a configuration to be appropriate for a film-forming polymer composition that will be applied to keratin fibers, to enable the production of a stable coloration on keratin fibers, and to enable the comfortable use of the product to an end user. In addition, Lechner teaches their configuration into a kit with multiple components to be appropriate for a film-forming polymer composition that will react with APTES, which an ordinary artisan would recognize as being relevant to the invention rendered obvious above.
Copending Application Nos. ‘216, ‘248, and ‘263 do not recite their compositions to comprise a coloring agent. However, all three recite a method of applying their compositions to keratin materials. In view of the teachings of Portal, Herrlein, and Lechner, it would be obvious to an ordinary artisan to include a coloring material because the references teach that film-forming polymer compositions comprising cross-linking agents and fatty substances are useful for coloring hair. The person of ordinary skill would recognize an additional application of their invention to be desirable and would be therefore be motivated to include the coloring component. Both Herrlein and Lechner teach that iron red oxide is a suitable colorant for use in their inventions, therefore, in the case that the ordinary artisan desires a red colorant, they would find it obvious to use iron oxide red as the colorant in the compositions recited above and be assured that it would be compatible with the other components of their invention.
Claims 1-3, 8-10, 13, 15-19, and 23 are directed to an invention not patentably distinct from claims 2, 6, 8-9, 14-15, 17-18, 22-24, 26, and 28 of commonly assigned copending Application No. 17/794,708 (Notice of Allowance issued by the Office, patent pending); claims 1-2, 6-7, 9, 16, 19, and 22 of commonly assigned copending Application No. 17/794,753 (Notice of Allowance issued by the Office, patent pending); claims 1-2, 6, 9-11, 14, 19-20, and 22 of commonly assigned copending Application No. 18/707,648; claims 24-25, 34, 39-40, and 42 of commonly assigned copending Application No. 18/723,188; claims 25-26, 30, 32-33, 37, 41-42, and 44 of commonly assigned copending Application No. 18/723,216; claims 24-25, 29, 31, 34, 36, 41, and 43 of commonly assigned copending Application No. 18/723,248; and claims 24-25, 29, 31, 36, 40-41, and 43 of commonly assigned copending Application No. 18/723,263. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned copending Application Nos. 17/794,708, 17/794,753, 18/707,648, 18/723,188, 18/723,216, 18/723,248, and 18/723,263, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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