CTNF 18/716,488 CTNF 89285 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. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. Claim Objections 07-29-01 AIA Claim 29 is objected to because of the following informalities: Claim 29 ends in the number 30 . Appropriate correction is required. Claim Rejections - 35 USC § 103 - Obviousness 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. 07-21-aia AIA Claim (s) 16-31 and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Simonet et al (US 2010/0154140 A1) . Simonet taught a composition for keratin fibers [abstract], comprising hydrocarbon oils of vegetable origin, such as liquid triglycerides of fatty acids having from 6 to 30 carbon atoms (e.g., reads on biodegradable liquid fatty material) [0027]; alkaline agents [0653, 0657, 0659]; at least one thickener [title]; and, water [0661, 0663]. The hydrocarbon oils were present in an amount of greater than, or equal to 25 % by weight, relative to the total weight of the composition; or, from 25 to 80 % [see claims 1-2; see also ¶ 0098]. Claim 16 is rendered prima facie obvious over the teachings of Simonet, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., biodegradable liquid fatty material, alkaline agent, thickener, water) were known in the prior art (e.g., Simonet) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results (e.g., a composition for keratin fibers) to one of ordinary skill in the art. MPEP 2143.A. Simonet reads on claims 16-21. The instant claim 16 recites at least 10 % by weight biodegradable liquid fatty material. The instant claim 20 recites 10 % to 80 % biodegradable liquid fatty material. The instant claim 21 recites 50 % to 70 % biodegradable liquid fatty material. Simonet taught hydrocarbon oils present in an amount of greater than, or equal to 25 % by weight, relative to the total weight of the composition; or, from 25 to 80 %. 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. Claims 22-25 are rendered prima facie obvious because Simonet taught alkanolamine [0653]; monoethanolamine [0658]; amounts of 0.01 to 30 %, such as from 0.1 to 20 % [0659]. The instant claim 24 recites 0.1 to 20 %. The instant claim 25 recites 1 to 10 %. Simonet taught alkaline agents present from 0.01 to 30 %, such as from 0.1 to 20 %. A prima facie case of obviousness exists because of overlap, as discussed above. Claim 26 is rendered prima facie obvious because Simonet taught polysaccharides [0039]. Claim 27 is rendered prima facie obvious because Simonet taught guar gums [0108, 0134-0139], and cellulose derivatives [0108, 0166, 0168]. Claim 28 is rendered prima facie obvious because Simonet taught hydroxyethylcellulose [0167]. Claim 29 is rendered prima facie obvious because Simonet taught thickeners, ranging in weight from 0.01 to 10 wt. %, relative to the total weight of the composition [see claim 9]. Claim 30 is rendered prima facie obvious because Simonet taught water, in amounts of 10 to 70 % [0663]. The instant claim 30 taught water ranging from 10 % to 50 %. Simone taught water from 10 to 70 %. A prima facie case of obviousness exists because of overlap, as discussed above. Claims 31 and 33 are rendered prima facie obvious because Simonet taught non-ionic surfactants [0669], in amounts of 0.5 to 30 wt. % [0701]. The instant claim 33 recites surfactants in amounts of 0.1 to 15 %. Simonet taught surfactants present in amounts of 0.5 to 30 %. A prima facie case of obviousness exists because of overlap, as discussed above. Claim 34 is rendered prima facie obvious because Simonet taught dyes [0660]. Claim 35 is rendered prima facie obvious because Simonet taught oxidizing agents, and kits therewith (e.g., reads on a first and second composition), at the abstract and title. See Simonet’s claim 23 reciting a multi-compartment kit, comprising a first and second compartment, with the oxidizing agent separated from the other components of the kit. The compositions of Simonet were easy to mix and apply (to keratin fibers) [see ¶ 0010] . 07-21-aia AIA Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Simonet et al (US 2010/0154140 A1), in view of Grit et al (US 2016/0213601 A1) . The 35 U.S.C. 103 rejection over Simonet was previously discussed. Simonet taught nonionic surfactant, generally; though, not liquid alkyl polyglucosides, specifically, as recited in claim 32. Grit taught compositions for treating hair, comprising nonionic surfactants [abstract], where the nonionic surfactants comprised decyl polyglucoside as a suitable nonionic surfactant (e.g., reads on liquid alkyl polyglucoside) [0019]. Since Simonet generally taught nonionic surfactants, it would have been prima facie obvious to one of ordinary skill in the art to include, within Simonet, decyl polyglucoside, as taught by Grit. The ordinarily skilled artisan would have been motivated to include a suitable nonionic surfactant. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, it is prima facie obvious to select decyl polyglucoside for incorporation into a composition for treating keratin fibers, based on its recognized suitability for its intended use as a suitable nonionic surfactant, as taught by Grit. Nonstatutory Double Patenting 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 16-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-19, 22, 24-33 and 36-37 of copending Application No. 18/251,240, in view of Simonet et al (US 2010/0154140 A1). Although the claims at issue are not identical, they are not patentably distinct from each other, because the instant claims require a thickener, which is not required of the copending claims. Simonet taught a composition for keratin fibers, comprising at least one thickener. It would have been prima facie obvious to one of ordinary skill in the art to include, within the copending claims, a thickener, as taught by Simonet. The ordinarily skilled artisan would have been motivated to form the composition. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CELESTE A RONEY whose telephone number is (571)272-5192. The examiner can normally be reached Monday-Friday; 8 AM-6 PM. 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, Sahana S Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CELESTE A RONEY/Primary Examiner, Art Unit 1612 Application/Control Number: 18/716,488 Page 2 Art Unit: 1612 Application/Control Number: 18/716,488 Page 3 Art Unit: 1612 Application/Control Number: 18/716,488 Page 4 Art Unit: 1612 Application/Control Number: 18/716,488 Page 5 Art Unit: 1612 Application/Control Number: 18/716,488 Page 6 Art Unit: 1612 Application/Control Number: 18/716,488 Page 7 Art Unit: 1612 Application/Control Number: 18/716,488 Page 8 Art Unit: 1612 Application/Control Number: 18/716,488 Page 9 Art Unit: 1612
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