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 1-5.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5 in the reply filed on 06/03/2026 is acknowledged. The traversal is on the ground(s) that the proposed example of 10% silicone resin film forming agent (A) and 5% polysilicone polymer (B) does not exist in Allard et al. This is not found persuasive because Allard et al. disclose about 0.5 to about 60% silicone resin film forming agent and 0.1-80% polysilicone polymer, thus 10% silicone resin film forming agent and 5% polysilicone polymer is within the scope of the teachings of Allard et al.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claim 6 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-5 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), as evidenced by Nishizawa et al. (US 2006/0123564, Jun. 15, 2006) (hereinafter Nishizawa).
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 dimethiconol (¶ [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 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.
In regards 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 regards to instant claim 1 reciting an organopolysiloxane having a degree of polymerization of 100 or more, as evidenced by Nishizawa, dimethiconol has a degree of polymerization of 1000 or greater (¶ [0012]).
In regards to instant claim 3 reciting wherein component (B) has a viscosity at 25°C of 120 mm2/s or more and 100,000,000 mm2/s or less, Allard discloses wherein the polysiloxane liquids may have a viscosity ranging from 200 to about 450,000 centipoise. Thus, assuming a viscosity of 5,000 centipoise, dimethiconol would have a kinematic viscosity of 5,225 mm2/s (5000 (dynamic viscosity)/0.957 (specific gravity) = 5,225).
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 1-15 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) and Pike (GB 2,105,754 A, Mar. 30, 1983).
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. 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.
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 1-5 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) and Pike (GB 2,105,754 A, Mar. 30, 1983).
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. 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.
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.
Conclusion
Claims 1-5 are rejected.
Claim 6 is withdrawn.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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