DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims included in the prosecution are claims 1, 3, 5 and 7-9.
Applicants' arguments, filed 09/18/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 fails to further limit the subject matter of claim 1 since claim 3 recites a viscosity of 120 mm2/s or more and 100,000,000 mm2/s or less, which is broader in scope than the 800 mm2/s to 40,000,000 mm2/s viscosity recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 3, 5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Allard et al. (US 2009/0074702, Mar. 19, 2009) (hereinafter Allard) in view of Pike (GB 2,105,754 A, Mar. 30, 1983) and Naito et al. (US 5,476,649, Dec. 19, 1995) (hereinafter Naito) and Sakai et al. (US 2004/0166084, Aug. 26, 2004) (hereinafter Sakai).
Allard discloses a method of preserving (i.e., treating) artificial color on keratin materials comprising applying to artificially colored keratin materials a composition containing at least one silicone film forming resin (i.e., component (A)) and at least one polysilicone polymer (i.e., component (B)) (abstract). Keratin material includes hair (¶ [0015]). The at least one silicone resin filing forming agent is present in an amount ranging from about 0.5% to about 60% (¶ [0163]). The silicone film former may be a polymethylsilsesquioxane film former. The polymethylsilsesquioxane film former is a polymer comprising polymerized repeating units of CH3SiO3/2 (T units) (i.e., component (A1)) (¶ [0158]). Suitable polysilicone polymers include polysiloxane liquids (¶ [0165]). Suitable polysiloxane liquids include polydimethylsiloxane (¶ [0166]). The polysiloxane liquids typically have a viscosity ranging from 200 to about 450,000 centipoise at 25°C (¶ [0168]). The polysilicone polymers are present in an amount of 0.1-80 percent by weight (¶ [0331]). The composition may be in any form, such as a solid (i.e., dry state) (¶ [0029]).
Allard differs from the instant claims insofar as not disclosing wherein the method is for the keratin material of a head decoration product.
However, Pike discloses a composition for use in the dyeing of keratinous fibres, particularly human hair (abstract). The composition is applicable to wigs and hair pieces made from human hair (page 1, lines 38-40).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have used the method of Allard on the keratin material for a head decoration product since the method would be applicable since the method preserves artificial color on keratin materials and head decoration products, such as wigs, were known in the art to be made of dyed human hair (i.e.., keratin material) as taught by Pike.
The combined teachings of Allard and Pike do not teach wherein the polydimethylsiloxane has a degree of polymerization of 300 to 4,000.
However, Naito discloses a hair cosmetic composition (abstract). The composition may comprise dimethylpolysiloxane with a polymerization degree of greater than 500 because it can give an exceptionally fine sensation to the hair (col. 12, lines 33-38).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated dimethylpolysiloxane with a polymerization degree of greater than 500 into the composition of Allard motivated by the desire to give hair a fine sensation as taught by Naito.
The combined teachings of Allard, Pike, and Naito do not teach wherein the polydimethylsiloxne has a viscosity at 25°C of 800 mm2/s to 40,000,000 mm2/s.
However, Sakai discloses a hair cosmetic composition (abstract). The composition may comprise dimethylpolysiloxane having a viscosity of from 5 mm2/s to 10 million mm2/s depending on the intended feeling to the touch (¶ [0045]).
Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed viscosity depending on the hair touch feeling desired as taught by Sakai. One of ordinary skill in the art would have had a reasonable expectation of success since Sakai discloses wherein the viscosity is optimized from 5 mm2/s to 10 million mm2/s.
In regard to instant claim 1 reciting wherein a mass content of the component (A) to a total mass content of the component (A) and the component (B) [(A)/{(A)+(B)}] is 10% or more, this limitation would have been obvious from Allard disclosing about 0.5% to about 60% silicone film forming resin (i.e., component (A)) and 0.1-80 polysilicone polymer (i.e., component (B)) and deriving at a mass content of component (A) to a total mass content of the component (A) and the component (B) that overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A.
In regard to instant claims 7-9, a composition without polysilicone-polyamide copolymer would have been obvious since Allard does not require the at least one silicone film forming resin to be a polysilicone-polyamide copolymer (see abstract, and summary of invention).
Response to Arguments
Applicant argues that as explained in the Declaration of Maekawa, Examples 1-7 and 12-20 afford significantly improved prevention of dirt adhesion as compared to Examples 8-11.
The Examiner does not find Applicant’s argument to be persuasive. The declaration does not provide objective evidence showing wherein the difference between the zirconia bead adhesion rate of Examples 1-7 and 12-20 and the zirconia bead adhesion rate Examples 8-11 is significant. The declaration merely provides declarant’s opinion, which is not persuasive when considering all the evidence provided. Page 55 of the instant specification discloses that when the adhesion rate is 25% or less, dirt is difficult to adhere, when the adhesion rate is 20% or less, dirt is more difficult to adhere, when the adhesion rate is 15% or less, dirt is still more difficult to adhere, and when the adhesion rate is 5% or less, dirt is even more difficult to adhere. Thus, it appears that an adhesion rate of 25% or less is desirable. Examples 8-10 have adhesion rates that are 25% or less. Applicant has not shown wherein an adhesion rate of 5% or less, which means dirt is even more difficult to adhere, is significantly different from an adhesion rate of 25% or less, which means dirt is difficult to adhere. Thus, Applicant has not shown wherein the difference in adhesion rate is significant. This is further supported by Example 4 having an adhesion rate of 13.6% and Example 9 having an adhesion rate of 16.0. Page 55 discloses that when the adhesion rate is 20% or less, dirt is more difficult to adhere and when the adhesion rate is 15% or less, dirt is still more difficult to adhere. Thus, it does not appear that Examples 4 and 9 are significantly different when it comes to adhesion. Although declarant argues that there’s an almost 18% increase in dirt adhesion for Example 9, as compared to Example 4, it is not clear how declarant arrived at an 18% increase. Example 9 and Example 4 have a difference of 2.4%, which does not appear to be significant. For these reasons, Applicant’s argument is unpersuasive.
Applicant argues that the claims have been amended to be commensurate in scope.
The Examiner does not find Applicant’s argument to be persuasive. As discussed above, Applicant has not shown wherein the claimed invention is unexpected. Even if Applicant had shown whereint he claimed invention is unexpected, the claims are not commensurate in scope. Each of the examples in the showing comprises isododecane. Applicant has not shown wherein the presence of isododecane does not affect adhesion of dirt. As such, Applicant’s argument is unpersuasive.
Applicant argues that Allard discloses that polysilicone polyamide copolymers are a preferred component and is a required component of claim 1 of Allard.
The Examiner does not find Applicant’s argument to be persuasive. A prior art reference is evaluated for all that it reasonably suggests and is not limited to preferred embodiments or working examples. As such, Applicant’s argument is unpersuasive.
Response to Declaration
Declarant’s argument has been addressed above and is unpersuasive.
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, 5 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application Nos. 17/999,905 and 18/872,603 (reference applications) in view of Allard et al. (US 2009/0074702, Mar. 19, 2009) (hereinafter Allard), Pike (GB 2,105,754 A, Mar. 30, 1983), Naito et al. (US 5,476,649, Dec. 19, 1995) (hereinafter Naito) and Sakai et al. (US 2004/0166084, Aug. 26, 2004) (hereinafter Sakai).
The pending claims differ from the copending claims insofar as reciting a method for treating an artificially colored or decolored keratin substance or fiber for a head decoration product and wherein the method comprises applying a composition with dimethylpolysiloxane having a degree of polymerization of 300 to 4,000 and a viscosity at 25°C of 800 mm2/s to 40,000,000 mm2/s. However, Allard discloses a method of preserving (i.e., treating) artificial color on keratin materials comprising applying to artificially colored keratin materials a composition containing at least one silicone film forming resin (i.e., component (A)) and at least one polysilicone polymer (i.e., component (B)) (abstract). Suitable polysilicone polymers include polysiloxane liquids (¶ [0165]). Suitable polysiloxane liquids include polydimethylsiloxane (¶ [0166]). The at least one silicone resin filing forming agent is present in an amount ranging from about 0.5% to about 60% (¶ [0163]). The polysilicone polymers are present in an amount of 0.1-80 percent by weight (¶ [0331]). Pike discloses a composition for use in the dyeing of keratinous fibres, particularly human hair (abstract). The composition is applicable to wigs and hair pieces made from human hair (page 1, lines 38-40).
Accordingly, it would have been obvious to have used the copending claimed composition in a method for treating an artificially colored or decolored keratin substance or fiber for a head decoration product since the copending claims recite a composition comprising a silicone film forming agent and an organopolysiloxane and such ingredients are used for preserving (i.e., treating) artificial color on keratin materials as taught by Allard. It would have been obvious to one of ordinary skill in the art to have used the method on the keratin material for a head decoration product since the method preserves artificial color on keratin materials and head decoration products, such as wigs, were known in the art to made of dyed human hair (i.e.., keratin material) as taught by Pike.
Naito discloses a hair cosmetic composition (abstract). The composition may comprise dimethylpolysiloxane with a polymerization degree of greater than 500 because it can give an exceptionally fine sensation to the hair (col. 12, lines 33-38).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated dimethylpolysiloxane with a polymerization degree of greater than 500 motivated by the desire to give hair a fine sensation as taught by Naito.
Sakai discloses a hair cosmetic composition (abstract). The composition may comprise dimethylpolysiloxane having a viscosity of from 5 mm2/s to 10 million mm2/s depending on the intended feeling to the touch (¶ [0045]).
Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed viscosity depending on the hair touch feeling desired as taught by Sakai. One of ordinary skill in the art would have had a reasonable expectation of success since Sakai discloses wherein the viscosity is optimized from 5 mm2/s to 10 million mm2/s.
In regards to the claimed mass content of component (A) to a total mass content of component (A) and component (B) [(A)/{(A)+(B)}] of 10% or more, this limitation would have been obvious from Allard disclosing about 0.5% to about 60% silicone film forming resin (i.e., component (A)) and 0.1-80 polysilicone polymer (i.e., component (B)) and deriving at a mass content of component (A) to a total mass content of the component (A) and the component (B) that overlaps with the claimed range.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 5 and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Nos. 12,144,883 and 12,064,505 in view of Allard et al. (US 2009/0074702, Mar. 19, 2009) (hereinafter Allard), Pike (GB 2,105,754 A, Mar. 30, 1983), Naito et al. (US 5,476,649, Dec. 19, 1995) (hereinafter Naito) and Sakai et al. (US 2004/0166084, Aug. 26, 2004) (hereinafter Sakai).
The pending claims differ from the copending claims insofar as reciting a method for treating an artificially colored or decolored keratin substance or fiber for a head decoration product and wherein the method comprises applying a composition comprising dimethylpolysiloxane having a degree of polymerization of 300 to 4,000 and viscosity at 25°C of 800 mm2/s to 40,000,000 mm2/s. However, Allard discloses a method of preserving (i.e., treating) artificial color on keratin materials comprising applying to artificially colored keratin materials a composition containing at least one silicone film forming resin (i.e., component (A)) and at least one polysilicone polymer (i.e., component (B)) (abstract). Suitable polysilicone polymers include polysiloxane liquids (¶ [0165]). Suitable polysiloxane liquids include dimethiconol (¶ [0166]). The at least one silicone resin filing forming agent is present in an amount ranging from about 0.5% to about 60% (¶ [0163]). The polysilicone polymers are present in an amount of 0.1-80 percent by weight (¶ [0331]). Pike discloses a composition for use in the dyeing of keratinous fibres, particularly human hair (abstract). The composition is applicable to wigs and hair pieces made from human hair (page 1, lines 38-40).
Accordingly, it would have been obvious to have used the copending claimed composition in a method for treating an artificially colored or decolored keratin substance or fiber for a head decoration product since the copending claims recite a composition comprising a silicone film forming agent and an organopolysiloxane and such ingredients are used for preserving (i.e., treating) artificial color on keratin materials as taught by Allard. It would have been obvious to one of ordinary skill in the art to have used the method on the keratin material for a head decoration product since the method preserves artificial color on keratin materials and head decoration products, such as wigs, were known in the art to made of dyed human hair (i.e.., keratin material) as taught by Pike.
Naito discloses a hair cosmetic composition (abstract). The composition may comprise dimethylpolysiloxane with a polymerization degree of greater than 500 because it can give an exceptionally fine sensation to the hair (col. 12, lines 33-38).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated dimethylpolysiloxane with a polymerization degree of greater than 500 motivated by the desire to give hair a fine sensation as taught by Naito.
Sakai discloses a hair cosmetic composition (abstract). The composition may comprise dimethylpolysiloxane having a viscosity of from 5 mm2/s to 10 million mm2/s depending on the intended feeling to the touch (¶ [0045]).
Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed viscosity depending on the hair touch feeling desired as taught by Sakai. One of ordinary skill in the art would have had a reasonable expectation of success since Sakai discloses wherein the viscosity is optimized from 5 mm2/s to 10 million mm2/s.
In regards to the claimed mass content of component (A) to a total mass content of component (A) and component (B) [(A)/{(A)+(B)}] of 10% or more, this limitation would have been obvious from Allard disclosing about 0.5% to about 60% silicone film forming resin (i.e., component (A)) and 0.1-80 polysilicone polymer (i.e., component (B)) and deriving at a mass content of component (A) to a total mass content of the component (A) and the component (B) that overlaps with the claimed range.
Response to Arguments
Applicant has not addressed these rejections. Therefore, the rejections are maintained.
Conclusion
Claims 1, 3, 5 and 7-9 are rejected.
Claim 6 has been withdrawn.
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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