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 .
DETAILED ACTION
The amended claim set of 16 Aug 2024 has been entered and reviewed
Claims 5-10, 13, 15, and 16 have been amended.
Claims 1-16 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15, directed to a process for colouring the hair, in the reply filed on is acknowledged. Applicants also elected that the polycarbodiimide is of formula XIII and the silicone elastomer is compound 11 in response to the species election requirement.
Claims 2 and 16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1 and 3-15 are under consideration to the extent of the elected species, i.e., that the polycarbodiimide is of formula XIII and the silicone elastomer is compound 11. After further consideration, the examiner has further extended the species of polycarbodiimide to additionally include a compound of formula (II) where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy was filed in the instant application on 12 Jun 2024. Note that a translated version of the application was not provided and the foreign priority cannot be relied upon. The priority is thus the filing date of PCT/EP2022/085399, 12 Dec 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12 Jun 2024 is in compliance with the provisions of 37 CFR 1.97, except where noted. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1 and 3-15 are objected to because of the following informalities:
Claim 1 should recite the indefinite article “a” at the start of the claim, as in “a process for colouring…”
Claims 3-15 should recite the definite article “the” at the start of the claim, as in “the process according to claim 1.”
The word “Claim” does not need to be capitalized in claims 3-15.
Claim 10 and 12-14 recite the “silicone elastomer bearing carboxylic acid functions.” This should be “silicone elastomer containing carboxylic acid functions” for improved consistency with claim 1.
Claim 12 does not have a period at the end of the sentence.
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.
Claims 1 and 3-15 are 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 1 recites “colouring the hair” in the first line of the claim. This lacks proper antecedent basis as hair has not been previously referenced and the definite article “the” renders it unclear as to what hair is being referred to. Claims 3-15 are included in this rejection as they depend directly, indirectly, or include all the limitations of independent claim 1.
Claim 1 recites the limitation "composition C and/or composition D” in the next to last line. There is insufficient antecedent basis for this limitation in the claim. Claim 1 earlier recites “at least one composition C” and “at least one composition D”, which encompasses multiple C compositions and D compositions, and it is unclear whether “composition C and/or composition D” includes just one or more than one C composition or D composition. Claims 3-15 are included in this rejection as they depend directly, indirectly, or include all the limitations of independent claim 1.
Claim 9 recites the limitation "composition C.” There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites “at least one composition C,” which encompasses multiple C compositions, and it is unclear whether “composition C” includes just one or more than one C composition.
Claim 15 recites the limitation "composition D.” There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites “at least one composition D,” which encompasses multiple D compositions, and it is unclear whether “composition D” includes just one or more than one D composition.
Claims 3-9 recite the limitation "the (poly)carbodiimide compound(s).” There is insufficient antecedent basis for this limitation in the claim. Base claim 1 recites “one or more (poly)carbodiimide compounds”, which encompasses multiple (poly)carbodiimide compounds, and it is unclear whether “the (poly)carbodiimide compound(s)” includes just one or more than one (poly)carbodiimide compound. Amending the claim to recite “the one or more (poly)carbodiimide compounds” would overcome this rejection.
Claims 10-15 recite the limitation "the silicone elastomer.” There is insufficient antecedent basis for this limitation in the claim. Base claim 1 recites “at least one silicone elastomer”, which encompasses multiple silicone elastomers, and it is unclear whether “the silicone elastomer” includes just one or more than one silicone elastomers. Amending the claim to recite “the at least one silicone elastomer” would overcome this rejection.
Claim 14 recites “silicone elastomer active material.” This lacks proper antecedent basis as a silicone elastomer “active material” has not been previously recited and it is unclear if this refers to the “at least one silicone elastomer containing carboxylic acid functions” or to another silicone material.
Regarding claims 7 and 8 (last paragraph of each), the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 9, 10 and 13-15, the phrases "preferably,” “more preferentially,” “more preferably,” “even more preferentially,” and “better still" renders the claims indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 10 is indefinite as the image of formula (i’) is blurry and it is unclear what the superscript with the “W” is intended to be.
Claims 3 and 11 are indefinite as the images of the compounds are blurry and it cannot be readily discerned what the structures are. For example, the subscript after the CH in the molecules and the subscript for the segment length in compound 11 are not legible.
In claim 11, compounds 1-10 and 12 contain additional variables including a, b, X, W, Y, Z1, Z2, and Z3 which are unclear as the variables are not defined in the 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.
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 and 3-15 are rejected under 35 U.S.C. 103 as being unpatentable over Liard et al. (WO 2021/099515, published 27 May 2021, filed 19 Nov 2020) in view of Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
Liard teaches a process for treating keratin fibers comprising application to the keratin fibers a composition C comprising at least one polycarbodiimide compound, at least one aqueous dispersion of particles of polymer, at least one silicone, and at least one coloring agent chosen from pigments, direct dyes and mixtures thereof (abstract, [0001], [0014]). Liard teaches that the process for treating keratin fibers is a process for dyeing keratin fibers ([0027]) and teaches colored coatings are obtained on the hair ([0018]). Liard teaches at [00104] that the polycarbodiimide may be
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This teaching form Liard renders obvious the elected species of polycarbodiimide (Formula XII) as in claims 3-8 and the amounts as in claim 9.
Liard teaches a composition D comprising at least one silicone compound comprising at least one carboxylic group ([00400]). Liard teaches applying composition C and D to hair ([00518-00521]). Liard teaches at [00429]
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rendering obvious the amount of claims 14 and 15. Liard teaches that composition D comprises one or more oils such as isododecane ([00445]-[00446]) and that the composition may be in forms including a dispersion and a gel ([00395]), thus rendering obvious the dispersion of the silicone in gel form as in claim 13.
Liard does not teach the elected species of silicone elastomer compound 11. This deficiency is made up for in the teachings of Crofoot.
Crofoot teaches a long lasting cosmetic composition comprising silicone elastomer (title). Crofoot teaches the compositions comprise the elastomer, an additive, and at least one cosmetic component ([0004]). Crofoot teaches the cosmetic compositions include compositions for contact with the hair system with a view to changing the appearance ([0012]) and teaches the cosmetic component includes colorants and hair dyes ([0186]) and teaches the composition as a hair colorant ([0253]). Crofoot teaches that silicone elastomers are rheology modifiers which positively impact the sensory profile of cosmetic compositions ([0003]). Crofoot teaches that the carboxyl groups of the elastomer may interact with certain cosmetic components, providing delivery of such components to a subjects skin ([0244]). Crofoot teaches the elastomer is a carboxylic acid functional elastomer ([0014]). Crofoot teaches elastomers such as:
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which is understood to meet the limitations of the elected species of compound 11.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have a process for coloring hair comprising applying a composition with a polycarbodiimide of formula (XIII) as described above and a coloring agent and to also apply a composition comprising a silicone elastomer with the structure taught by Crofoot as described above. A process of treating keratin fibers and obtaining colored coatings on hair by applying a composition with a polycarbodiimide of formula (XII) and at least one coloring agent chosen from pigments, direct dyes and mixtures thereof and an additional composition with a comprising at least one silicone compound comprising at least one carboxylic group is known from the teachings of Liard. It is further known from Crofoot that cosmetic compositions of carboxylic acid functional silicone elastomers, such as the elastomer with the structure described above, may be used with colorants and hair dyes as part of hair colorant compositions. One would have a reasonable expectation of success as applying multiple compositions where one contains a polycarbodiimide and a coloring agent and another composition contains silicone with carboxylic acid groups is known from Liard and it is known from Crofoot that silicone elastomers as those described above are used in cosmetic compositions for coloring hair. Thus the silicone elastomer of Crofoot merely represents a specific type of silicone that may be used in the silicone composition of Liard as it is used in compositions for the same purpose, namely for coloring hair, thus rendering it obvious to one of ordinary skill in the art.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
The claims were rejected above where the elected species formula XII as in claim 8. The claims are alternatively rejected below where the polycarbodiimide functional groups are X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical.
Claims 1, 3, and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gogineni et al. (WO 2017/117522, published 06 Jul 2017, listed on IDS filed 12 Jun 2024) in view of Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
Gogineni teaches a composition for treating keratinous substrates with a polycarbodiimide compound ([0002]). Gogineni teaches that the composition further includes additives such as dyes or pigments ([00305], [00417-00420]) and teaches dyeing the hair ([0023], [0040]). Gogineni teaches the polycarbodiimide is from about 0.25 to about 10.0 % by weight ([0021], [0022]), rendering obvious the amount of claim 9. Gogineni teaches that the actives may be in separate packaging ([0028]) and teaches that the individual components may be applied is a step-wise fashion to treat the substrate ([00426]).
Gogineni teaches polycarbodiimes as the following:
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These groups for the polycarbodiimide render obvious the polycarbodiimide of claim 3 where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical. Gogineni teaches oils such as isododecanes ([00294]) and teaches gel compositions ([00456]), rendering obvious the oil dispersion in gel form of claim 13. Gogineni teaches silicone polymers having at least one carboxylic acid group ([00356]).
Gogineni does not teach the silicone (compound 11) and its amounts (as in claims 14 and 15). These deficiencies are made up for in the teachings of Crofoot.
Crofoot teaches a long lasting cosmetic composition comprising silicone elastomer (title). Crofoot teaches the compositions comprise the elastomer, an additive, and at least one cosmetic component ([0004]). Crofoot teaches the cosmetic compositions include compositions for contact with the hair system with a view to changing the appearance ([0012]) and teaches the cosmetic component includes colorants and hair dyes ([0186]) and teaches the composition as a hair colorant ([0253]). Crofoot teaches that silicone elastomers are rheology modifiers which positively impact the sensory profile of cosmetic compositions ([0003]). Crofoot teaches that the carboxyl groups of the elastomer may interact with certain cosmetic components, providing delivery of such components to a subjects skin ([0244]). Crofoot teaches that the elastomer is in amounts such as from about 0.5 to about 25% by weight of the composition ([0023]), rendering obvious the limitation of claims 14 and 15. Crofoot teaches the elastomer is a carboxylic acid functional elastomer ([0014]). Crofoot teaches elastomers such as:
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which is understood to meet the limitations of the elected species of compound 11.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide of Gogineni as described above and a dye or pigment and to also apply a composition comprising a silicone elastomer with the structure taught by Crofoot as described above. A process of treating keratinous substrates and dyeing hair using a composition of polycarbodiimide and dye/pigment is known from Gogineni. It is further known from Crofoot that cosmetic compositions of carboxylic acid functional silicone elastomers, such as the elastomer with the structure described above, may be used with colorants and hair dyes as part of hair colorant compositions rendering it obvious to additionally apply a composition with the silicone elastomer in the hair dyeing process. The compositions of Gogineni and Crofoot are used for the same purpose, namely dyeing hair, rendering it obvious to use them both in a process of coloring hair. Further, it is known from Gogineni the actives may be in separate packaging and that individual components may be applied is a step-wise fashion to treat the substrate further rendering it obvious to have multiple compositions for the dyeing process and providing additional reason for an expectation of success in dyeing hair with a polycarbodiimide and pigment composition from Gogineni and a silicone composition of Crofoot.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
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 and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,931,449 in view of Liard et al. (WO 2021/099515, published 27 May 2021, filed 19 Nov 2020) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
Claim 1 of the patent recites a process for treating keratin fibers comprising applying at least one silicone comprising at least one carboxylic acid anhydride, an amino silicone, and a coloring agent such as pigment or direct dye, where the components may be applied together or separately. The silicone with at least one carboxylic acid is from 0.1 to 40% (claim 5).
The patent does not recite the species of silicone of compound 11 or the polycarbodiimide of formula XII and its amounts or an oil dispersion gel. These deficiencies are made up for in the teachings of Liard and Crofoot.
The teachings of Liard and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide of formula XII from 0.01-40% by weight and a pigment and a composition comprising a silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference patent recites a process of treating keratin fibers using a composition with silicone and coloring agents. The specific silicone and polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Below, the claims are alternatively rejected over US patent 11,931,449 using additional art.
Claims 1, 3, and 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,931,449 in view of Gogineni et al. (WO 2017/117522, published 06 Jul 2017, listed on IDS filed 12 Jun 2024) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
Claim 1 of the patent recites a process for treating keratin fibers comprising applying at least one silicone comprising at least one carboxylic acid anhydride, an amino silicone, and a coloring agent such as pigment or direct dye, where the components may be applied together or separately. The silicone with at least one carboxylic acid is from 0.1 to 40% (claim 5).
The patent does not recite the species of polycarbodiimide of claim 3 where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical or the silicone of compound 11 and its amounts or an oil dispersion gel. These deficiencies are made up for in the teachings of Gogineni and Crofoot.
The teachings of Gogineni and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide of formula II (as taught by Gogineni) where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical, in an amount from 0.25-10.0% by weight and a pigment and a composition comprising a silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference patent recites a process of treating keratin fibers using a composition with silicone and coloring agents. The specific silicone and polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claims 1 and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-19 of U.S. Patent No. 12,357,557 in view of Liard et al. (WO 2021/099515, published 27 May 2021, filed 19 Nov 2020) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
The patent recites a method for dyeing hair comprising applying a composition of at least one polycarbodiimide of the formula
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The patent thus renders obvious the polycarbodiimide of claim 3 with a coloring agent.
The patent does not recite the amount of polycarbodiimide or the polycarbodiimide of formula XII and the species of silicone of compound 11 and its amount or an oil dispersion gel. These deficiencies are made up for in the teachings of Liard and Crofoot.
The teachings of Liard and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide of formula XII from 0.01-40% by weight and a pigment and a composition comprising a silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference patent recites a process of dyeing hair using a composition with a polycarbodiimide and coloring agents. The specific silicone and polycarbodiimide of formula XII mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Below, the claims are alternatively rejected over US patent 12,357,557 using additional art.
Claims 1, 3, and 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,357,557 in view of Gogineni et al. (WO 2017/117522, published 06 Jul 2017, listed on IDS filed 12 Jun 2024) andCrofoot et al. (US 2020/0323765, published 15 Oct 2020).
The patent recites a method for dyeing hair comprising applying a composition of at least one polycarbodiimide of the formula
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The patent thus renders obvious the polycarbodiimide of claim 3 with a coloring agent.
The patent does not recite the amount of polycarbodiimide or the species of silicone of compound 11 and its amount or an oil dispersion gel. These deficiencies are made up for in the teachings of Gogineni and Crofoot.
The teachings of Gogineni and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide in an amount from 0.25-10.0% by weight and a pigment and a composition comprising a silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference patent recites a process of treating keratin fibers using a composition with polycarbodiimide and coloring agents. The specific silicone and the amount of polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions in the amounts known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claims 1 and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25, 34, 35, and 38-45 of copending Application No. 17/778,353 in view of Liard et al. (WO 2021/099515, published 27 May 2021, filed 19 Nov 2020) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
Claim 25 of the application recites a process for dyeing hair comprising applying 1-10% by weight a polycarbodiimide of formula
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and at least one coloring agent such as pigments and direct dyes. The application does not fully define the variables X, R1/R2, and w. The application recites applying a second composition with at least one silicone compound comprising at least one carboxylic acid group (claim 39).
The application does not recite the species and amount of silicone of compound 11 or the polycarbodiimide of formula XII or an oil dispersion gel. These deficiencies are made up for in the teachings of Liard and Crofoot.
The teachings of Liard and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide of formula XII from 0.01-40% by weight and a pigment and a composition comprising 0.5 to about 25% silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference application recites a process of dyeing keratin fibers using a composition of with polycarbodiimide and coloring agent and a composition of silicone with carboxylic acid. The specific silicone and polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
This is a provisional nonstatutory double patenting rejection.
Below, the claims are alternatively rejected over copending Application No. 17/778,353 using additional art.
Claims 1, 3, and 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/778,353 in view of Gogineni et al. (WO 2017/117522, published 06 Jul 2017, listed on IDS filed 12 Jun 2024) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
Claim 25 of the application recites a process for dyeing hair comprising applying 1-10% by weight a polycarbodiimide of formula
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and at least one coloring agent such as pigments and direct dyes. The application does not fully define the variables X, R1/R2, and w. The application recites applying a second composition with at least one silicone compound comprising at least one carboxylic acid group (claim 39).
The application does not recite the species and amount of silicone of compound 11 or the polycarbodiimide of claim 3 where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, and w represents 1 or an oil dispersion gel. These deficiencies are made up for in the teachings of Gogineni and Crofoot.
The teachings of Gogineni and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide of formula II (as taught by Gogineni) where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical, and a pigment and a composition comprising 0.5 to about 25% silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference application recites a process of dyeing hair using a composition with polcarbodidiimide and coloring agents and a composition of silicone with carboxylic acid. The specific silicone and polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24-27 of copending Application No. 18/549,711 in view of Liard et al. (WO 2021/099515, published 27 May 2021, filed 19 Nov 2020) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
The application recites a process for colouring hair comprising applying a composition with at least one polycarbodiimide compound and a colouring agent (pigments/direct dyes) and applying a composition comprising at least one silicone compound comprising at least one carboxylic group from 0.01-20% and an isododecane oil.
The application does not recite the species and amount of silicone of compound 11 or the polycarbodiimide of formula XII or gel form. These deficiencies are made up for in the teachings of Liard and Crofoot.
The teachings of Liard and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide of formula XII from 0.01-40% by weight and a pigment and a composition comprising 0.5 to about 25% silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference application recites a process of dyeing keratin fibers using a composition of with polycarbodiimide and coloring agent and a composition of silicone with carboxylic acid. The specific silicone and polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
This is a provisional nonstatutory double patenting rejection.
Below, the claims are alternatively rejected over copending Application No. 18/549,711 using additional art.
Claims 1, 3, and 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24-27 of copending Application No. 18/549,711 in view of Gogineni et al. (WO 2017/117522, published 06 Jul 2017, listed on IDS filed 12 Jun 2024) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
The application recites a process for colouring hair comprising applying a composition with at least one polycarbodiimide compound and a colouring agent (pigments/direct dyes) and applying a composition comprising at least one silicone compound comprising at least one carboxylic group from 0.01-20% and an isododecane oil.
The application does not recite the species of silicone of compound 11 or the polycarbodiimide of claim 3 where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical or gel form. These deficiencies are made up for in the teachings of Gogineni and Crofoot.
The teachings of Gogineni and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide of formula II (as taught by Gogineni) where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical, and a pigment and a composition comprising 0.5 to about 25% silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference application recites a process of dyeing hair using a composition with polcarbodidiimide and coloring agents and a composition of silicone with carboxylic acid. The specific silicone and polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 19/141,754 in view of Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
The application recites a process for dyeing hair comprising applying a composition with at least one polycarbodiimide compound and a colouring agent (pigments/direct dyes) where the polycarbodiimide is
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744
642
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Greyscale
and where the polycarbodiimide is
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584
605
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Greyscale
And recites that the polycarbodiimide is from 0.01-20%. The application recites that the process includes a step of applying a composition comprising at least one silicone compound from 0.01-20% by weight
The application does not recite the species of silicone of compound 11 or gel form. These deficiencies are made up for in the teachings of Crofoot.
The teachings of Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with a polycarbodiimide a composition of silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference application recites a process of dyeing hair using a composition of with polycarbodiimide and coloring agent and a composition of silicone with carboxylic acid. The specific silicone compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22-25 of copending Application No. 18/549,858 in view of Liard et al. (WO 2021/099515, published 27 May 2021, filed 19 Nov 2020) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
The application recites a process for colouring hair comprising applying a composition with at least one polycarbodiimide compound and a colouring agent (pigments/direct dyes) and applying a composition comprising at least one silicone compound comprising at least one carboxylic group from 0.01-20% and an isododecane oil.
The application does not recite the species of silicone of compound 11 or the polycarbodiimide of formula XII and the amount or gel form. These deficiencies are made up for in the teachings of Liard and Crofoot.
The teachings of Liard and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with 0.01-40% polycarbodiimide of formula XII from 0.01-40% by weight and a pigment and a composition comprising silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference application recites a process of dyeing keratin fibers using a composition of with polycarbodiimide and coloring agent and a composition of silicone with carboxylic acid. The specific silicone and polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
This is a provisional nonstatutory double patenting rejection.
Below, the claims are alternatively rejected over copending Application No. 18/549,858 using additional art.
Claims 1, 3, and 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22-25 of copending Application No. 18/549,858 in view of Gogineni et al. (WO 2017/117522, published 06 Jul 2017, listed on IDS filed 12 Jun 2024) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
The application recites a process for colouring hair comprising applying a composition with at least one polycarbodiimide compound and a colouring agent (pigments/direct dyes) and applying a composition comprising at least one silicone compound comprising at least one carboxylic group from 0.01-20% and an isododecane oil.
The application does not recite the species of silicone of compound 11 or the polycarbodiimide of claim 3 where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical or the amount or gel form. These deficiencies are made up for in the teachings of Gogineni and Crofoot.
The teachings of Gogineni and Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a composition with 0.25-10% polycarbodiimide of formula II (as taught by Gogineni) where X1 and X2 -are an NH group, R1 and R-2 -are a monomethyl ether of polyethylene glycol, n, z and w represent 1, L-1 represents 4,4’-dicyclohexylmethane, and E represents -O-R3-O- where R3 is a hydrocarbon radical, and a pigment and a composition comprising silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference application recites a process of dyeing hair using a composition with polcarbodidiimide and coloring agents and a composition of silicone with carboxylic acid. The specific silicone and polycarbodiimide compounds mentioned above and isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions of each component and it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 19/136,152 in view of Gogineni et al. (WO 2017/117522, published 06 Jul 2017, listed on IDS filed 12 Jun 2024) and Crofoot et al. (US 2020/0323765, published 15 Oct 2020).
The application recites a process for dyeing hair fibers comprising applying a composition with at least one polycarbodiimide compound. The application recites that the polycarbodiimide may be
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774
649
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Greyscale
And
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577
623
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Greyscale
And recites that the polycarbodiimide is from 0.01-20% by weight
The application does not recite a colouring agent (pigment or direct dye) or an additional composition with species of silicone of compound 11 and the amount or gel form. These deficiencies are made up for in the teachings of Crofoot.
The teachings of Crofoot are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have a process for dyeing hair comprising applying a polycarbodiimide composition with pigment and a composition comprising silicone elastomer with the structure taught by Crofoot (meeting the limitation of compound 11) as described above. The reference application recites a process of dyeing keratin fibers using a composition of with polycarbodiimide and it is obvious to include coloring agents from Gogineni in hair coloring compositions. Silicone elastomer compositions (including the silicone on compound 11) are known from Crofoot for hair dyeing along with isododecane oils and gels are similarly known for use in treating keratin hair fibers in compositions. Thus, the silicones are know for a similar purpose of hair dyeing it is obvious to use compositions known for coloring hair together in a process for coloring hair as this merely represents combining known compositions with compounds known for the same purpose, namely coloring hair. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
Correspondence
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/EDWIN COLEMAN MITCHELL/Examiner, Art Unit 1619
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