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 .
Claim Status
Claims 1-20 are cancelled.
Claims 21-39 are new.
Priority
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Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The foreign priority document is not in English. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 8/2/24 and 2/12/26 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 21-39 are rejected under 35 U.S.C. 103 as being unpatentable over Schmenger et al. (EP2859880) and Consoli et al. (US20170258695; of record).
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
Applicant claims, for example:
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Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a hair dye research scientist who has knowledge of the reaction mechanism chemistry of how couplers react with oxidized intermediates to form colored dyes, use of alkaline environment to swell the hair cuticle to allow couplers and intermediates into the cortex, color theory, hair structure and morphology and safety concerns conventionally known in the art1.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 21-24, 27-29 and 32, Schmenger et al. teach hair treatment compositions, kits and methods thereof (Title; Abstract; [0002]; claims 1-17) where the composition can typically comprise mixtures of oxidative dyes up to 12% by weight of the composition including 6-hydroxybenzomorpholine and hydroxyethyl-3,4-methylenedioxyaniline [0024] and a phosphoric surfactant such as Crodafos™ CES [0016] which contains 72% to 77% cetearyl alcohol (a solid fatty alcohol at room temperature), and 23% to 28% dicetyl phosphate/ceteth-10 phosphate and 1.5% phosphoric acid [0059], which are within the scope of claim 27 and 1.5% is within the claimed range of 0.01% to 15% by weight. Phosphate esters and pegylated phosphates are also taught (Claims 4-5; [0016, 0043]).
Regarding claims 25-26, Schmenger et al. teach adding p-phenylenediamines, p-aminophenols, 2-hydroxyethyl-p-phenylenediamine, hydroxypropyl-
bis-(N-hydroxyethyl-p-phenylenediamine), 2-methoxymethyl-p-phenylenediamine, in an amount of up to 12% [0024].
Regarding claims 30-31, Schmenger et al. teach adding fatty substances such as silicone, oil derived materials, insoluble oils and liquid hydrocarbon mineral oils ([0032]; claim 1) and exemplifies paraffin oil at 15% [0054].
Regarding claim 32, Schmenger et al. teach adding solid fatty alcohols (cetearyl alcohol [0054]) and ceramides (Claims 1, 13; [0032, 0037]).
Regarding claim 33, Schmenger et al. teach adding at least one additional surfactant (Claims 11-13; [0033] teaches any suitable surfactant known in the art may be used including amphoteric and cationic surfactants).
Regarding claim 34, Schmenger et al. teach adding xanthan and guar gums and cellulose polymers such as methyl cellulose and ethyl cellulose [0029].
Regarding claim 35, Schmenger et al. teach adding alkanolamines [0027], ammonia [0028] and carbonates such as potassium hydrogen carbonate (Claim 1; [0030-0031]).
Regarding claim 36, Schmenger et al. teach adding a chemical oxidizing agent (Claim 1; [0008-0009, 0054] teaches hydrogen peroxide).
Regarding claims 37-38, Schmenger et al. teach a process for dying keratin fibers by applying the dye composition to the keratin fibers by providing the first and second components, mixing the components and applying to the hair (Claims 16-17; [0004, 0049]; see [0004]: “typically resulting from mixing an oxidative composition {also called developer and/or oxidizing composition/component) with a dye composition {also called tint, and/or dye composition/component”).
Regarding claim 39, Schmenger et al. teach a device with two compartments Claim 14; [0050-0051]). Schmenger et al. teach: “The present invention relates to a hair colouring and/or bleaching composition comprising a first aqueous component and a second aqueous component, said first and second aqueous components being mixed prior to application onto hair. The first aqueous component, also called developer component or oxidizing component, comprises, in a cosmetically acceptable carrier, one or more oxidizing agent(s) and optionally one or more fatty alcohol(s) and optionally one or more non-ionic surfactant(s) other than fatty alcohol(s). The second aqueous component, also called tint component or dye component, comprises, in a cosmetically acceptable carrier, one or more alkalizing agent(s) selected from the group consisting of ammonia, its salts and mixtures thereof and one or more fatty alcohol(s) and one or more nonionic surfactant(s) other than fatty alcohol(s).” [0005]. Thus, the first component contains the oxidizing agent and the second component contains the dye component. Schmenger et al. teach: “the present invention relates to a kit for colouring and/or bleaching hair comprising an individually packaged first component and an individually packaged second component. Individually packaged components
mean that they may be packaged in separate containers or in compartmented containers. The consumer mixes the first component and the second component together immediately before use and applies it onto the hair.” [0047]; and: “Typically, the hair colouring and/or bleaching compositions are contained within separate single or multicompartment containers so that the compositions can be stored separately from one another before use. The compositions are then mixed together by a mixing means and then dispensed from the device and applied to the consumer's hair by an application means.” [0051].
Regarding claims 21-24, 27 and 29, Consoli et al. teach compositions for dying keratin fibers comprising an oxidative dye, activator and phosphoric acid ester (Abstract) where the oxidation dyes include hydroxybenzomorpholine and hydroxyethyl-3,4-methylenedioxyaniline (Claims 1-2) in amounts between 0.001 and 20% by weight [0019-0020], hydrogen peroxide activator (Claim 4) and phosphoric ester in an amount of 0.1 to 20% by weight (Claim 5).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
The difference between the instant application and Schmenger et al. is that Schmenger et al. do not expressly teach an embodiment with 0.001% to 20% by weight 6-hydroxybenomorpholine, 0.001% to 20% by weight hydroxyethyl-3,4-methylenedioxyaniline, 0.001% to 20% by weight 2-methoxymethyl-para-phenylenediamine, 2-β-hydroxyethyl-para-phenylenediamine, 2-y-hydroxypropyl-para-phenylenediamine or their respective addition salts thereof, solvates thereof and/or solvates to be used in the process for dying keratin fibers. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the composition of Schmenger et al. with 0.001% to 20% by weight 6-hydroxybenomorpholine, 0.001% to 20% by weight hydroxyethyl-3,4-methylenedioxyaniline, 0.001% to 20% by weight 2-methoxymethyl-para-phenylenediamine, 2-β-hydroxyethyl-para-phenylenediamine, 2-y-hydroxypropyl-para-phenylenediamine or their respective addition salts thereof, solvates thereof and/or solvates, produce the instant invention. One of ordinary skill in the art would have been motivated to do this because not only does Schmenger et al. name those components for use in the composition and provide guidance on the amount to use, thus setting the general conditions for the composition, but also Consoli et al. teach using larger amounts of those dyes and phosphoric ester. It is then merely judicious selection of those components and routine optimization of the amount of each component to produce the desired composition with the same amounts of components. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Selection of a solvate or addition salt of any component is within the skill of the ordinary artisan. It is then obvious to perform the method of Schmenger et al. by mixing the dying composition with the oxidizing composition comprising the chemical oxidizing agent to form a mixture and applying the mixture to the hair of a subject with a reasonable expectation of success. It is obvious to store the chemical oxidizing agent in a separate compartment such that it does not prematurely react with the hair dye precursors in another compartment. Schmenger et al. teach: “The most common packaging device which can be used involves storing the developer component in a container such as a bottle, tube, aerosol, or a sachet and separately storing the dye component in an additional compartment within the developer container or more preferably in a separate container [0051]. Thus, a device with at least two compartments with a first compartment comprising the claimed dye composition and a second compartment comprising at least one chemical oxidizing agent is obvious in view of the teachings of Schmenger et al.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
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 21-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18258011. Although the claims at issue are not identical, they are not patentably distinct from each other because copending also teaches compositions and methods for dyeing keratin fibers (Claims 1-15) where the composition comprises a phosphoric acid surfactant in an amount of from 0.01-15% by weight (Claims 1 and 5-7), an oxidation base in an amount of 0.001% to 20% by weight (Claims 1-2) such as p-phenylenediamine, p-aminophenol (Claim 3), oxidation couplers hydroxytheyl-3,4-methylenedioxyaniline and 6-hydroxybenzomorpholine (Claim 4) fatty alcohols (Claims 9-10) additional surfactants (Claims 11-12) and hydrogen peroxide oxidizing agent (Claim 14).
The co-pending does not expressly teach the amount of oxidation couplers. However, it would be routine optimization of the oxidation coupler to achieve the desired degree of dye in the keratin fibers by the ordinary artisan.
The co-pending does not expressly teach mixing the components before application to the keratin fibers. However, it would be obvious to mix the components prior to application because the components would be in separate containers to prevent the oxidizing agent from prematurely reacting with the oxidation coupler dye component. Consequently, a device with a first compartment with the oxidation couplers claimed and a second compartment with the chemical oxidizing agent is obvious to the ordinary artisan in this art. The ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613
1 See for example: Morel et al. Current Trends in the Chemistry of Permanent Hair Dyeing. Chemical Reviews 2011, 111, 2537–2561.
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