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 .
Applicant's election with traverse of Group I, claims 30-48, and the species of ammonium bicarbonate and sorbitan oleate, in the reply filed on 05/26/2026 is acknowledged. The traversal is on the ground(s) that it has not been established that MINTEL discloses or renders obvious the combination with the additional claim limitations requiring that the total amount of silicate ranges from 1-40% by weight and that the composition comprises persulfates in a total amount of less than 5% by weight. This is not found persuasive because claim 49 does not require a wt% of silicate, does not appear to recite a limitation on persulfates, and the compound chosen from an ester, an amide, an imine, or mixtures thereof is an optional component of claim 49, and is therefore not required. Therefore, the shared technical features of Groups I and II are simply components i)-iii), which are disclosed by MINTEL. Accordingly, the shared technical feature is not a special technical feature and unity is broken. Purely arguendo, even if not, the combination of Iizaki and Au are discussed below, and appear to make obvious the composition of claim 30.
The requirement is still deemed proper and is therefore made FINAL.
Claims 34-36, 44, and 49, are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/26/2026.
Claim Status
Claims 30-49 are pending.
Claims 34-36, 44, and 49, are withdrawn.
Claim Objections
Claim 39 is objected to because of the following informalities: “bicarbonatechosen” should read “bicarbonate chosen”. Appropriate correction is required.
Claim 45 is objected to because of the following informalities: An “or” is missing from various lists of components in the claim. For example, “or” should be included between “-OCO-“ and “-COO-“ on page 6 line 6. An “or” should be included following “-COOAk1,” and “a (heterocyclic group” on page 6 line 7. Page 6 line 16 is missing “or” between “-OCOA’” and “(poly)(hydroxy)alkyl”. Page 6 line 25 is missing “or” between “-OCO-“ and “-COO-“. Page 6 line 26 is missing “or” between “(-OH)” and “-COOAk1”. Page 7 line 7 is missing an “or” between “(-OH)” and “(poly)(hydroxy)alkyl”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(d) or pre-AIA 4th ¶
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 41 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 41 fails to further limit claim 30, where claim 30 already recites the total amount of silicate ranges from 1 to 40% by weight relative to the total weight of the composition. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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 30-33, 37-43, and 45-48, are rejected under 35 U.S.C. 103 as being unpatentable over Iizaki et al (EP 2702894 B1, hereinafter “Iizaki,” cited on IDS dated 07/12/2024), in view of Au et al (US 20040098816 A1, hereinafter “Au”).
Iizaki recites Examples 1-1 through 1-5 with composition B comprising i) hydrogen peroxide at 9% by mass, composition A comprising ii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass, and composition C comprising iii) anhydrous sodium meta-silicate at 9.7% by mass, and 45 mass% persulfates (Examples 1-1 through 1-5). Tables 5-8 recite composition B comprising i) hydrogen peroxide at 9% by mass, composition A comprising ii) ammonium hydrogen carbonate, aka ammonium bicarbonate, at 14% by mass, and composition C comprising iii) anhydrous sodium meta-silicate at 11.5% by mass and 58.3 mass% persulfates (Tables 5-8). Table 9 recites mass ratios of mixture (A/B/C) of 36.5/59.5/4.0, for example, wherein it appears that the resulting amount composition appears to result in 5.11 mass% ammonium bicarbonate, 5.36 mass% hydrogen peroxide, 0.46 mass% anhydrous sodium meta-silicate, and 2.33 mass% persulfates, with a pH of 9.1 (Example 1-10). Table 9 also recites a mixture ratio wherein composition C, which comprises the persulfates at 0.34 mass%, thereby appearing to result in an amount of persulfate of 0.198 mass% in the mixed compositions (0.34% of 58.3 mass% = 0.198 mass%) (Comparative Example 1-4). Other embodiments comprise silicates at 0.92 mass% of the mixed compositions (Table 8). Nonionic surfactants are included at 0.5-15 mass% for improving the discharging property and the applying property of the composition (¶ 58). A direct dye may be used and is preferably contained in a content of 0.001 to 5% by mass, more preferably 0.01 to 3% by mass of composition A (¶ 64). The alkali agents may be included at 1 to 50 mass% of composition A, and includes sodium silicate, sodium meta-silicate, etc. (¶¶ 48, 49).
Iizaki, while teaching nonionic surfactants, does not specifically teach sorbitan oleate.
Au teaches hair coloring and hair bleaching compositions that comprise ammonium bicarbonate, hydrogen peroxide, sodium silicates, sodium metasilicates, etc., where it was known to include sorbitan oleate as a nonionic surfactant in a range from about 0.01 to about 20 wt% of the composition (abs, ¶¶ 63, 68, 72, 83). The inclusion of surfactants assist in maintaining the emulsion form, etc. (¶ 82).
Regarding claim 1, Iizaki discloses a composition comprising i) hydrogen peroxide, ii) ammonium bicarbonate, iii) anhydrous sodium meta-silicate, and comprises less than 5 wt% of persulfates.
Regarding sorbitan oleate, where Iizaki teaches nonionic surfactants can be included, and were they were known to improve the discharging and applying property of the composition, it would have been obvious to include nonionic surfactants that were known to be suitable for hair bleaching compositions, such as sorbitan oleate, as taught by Au, and where Au teaches sodium oleate assists in maintaining emulsion form, etc.
Regarding the amount of silicate, where the working embodiments of Iizaki comprise 0.46 mass% and 0.92 mass% anhydrous sodium meta-silicate, and where Iizaki teaches alkali agents, including sodium-metasilicate, can range from 1-50 mass% of composition A, it would have been well within the relative skills of the skilled artisan to adjust within the disclosed 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. See MPEP 2144.05(I). Further, it would have been well within the relative skills of the skilled artisan to have routinely optimize the amount of silicate in order to achieve desired and optimal properties, including desired pH, etc. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Where 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. See MPEP 2144.05(II)(A).
Note, since mass and weight are directly proportional under normal Earth gravity, the numerical values for mass% and wt% are the same.
Regarding claim 31, the composition made obvious above comprises hydrogen peroxide, thereby meeting the claimed limitation.
Regarding claim 32, the composition made obvious above comprises hydrogen peroxide at 5.36 mass% in the mixed composition, falling within the claimed range.
Regarding claims 33 and 38, the composition made obvious above comprises ammonium bicarbonate at 5.11 mass% of the mixed composition, falling within the claimed range.
Regarding claims 37 and 39, the composition made obvious above comprises ammonium bicarbonate.
Regarding claim 40, the composition made obvious above comprises anhydrous aluminum meta-silicate, which appears to read on an aluminum silicate.
Regarding claim 41, it would have been obvious to adjust the total amount of silicates within the ranges taught by Au, for the same reasons discussed above, overlapping 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. See MPEP 2144.05(I). Further, it would have been well within the relative skills of the skilled artisan to have routinely optimize the amount of silicate for the same reasons discussed above. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Where 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. See MPEP 2144.05(II)(A).
Regarding claim 42, the adjustment of particular conventional working conditions of alkali agents (e.g., determining results effective amounts of ammonium bicarbonate and silicates, especially within the ranges instantly claimed), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort optimize results, i.e., ensuring a pH within the ranges disclosed by Iizaki. Where 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. See MPEP 2144.05(II)(A).
Regarding claim 43, where the amount of ammonium bicarbonate appears to be 5.11 mass%, and the amount of hydrogen peroxide appears to be 5.36 mass%, the resulting weight ratio falls within those instantly claimed.
Regarding claim 45, the composition made obvious above comprises sorbitan oleate, as elected by Applicants.
Regarding claim 46, where Iizaki teaches nonionic surfactants are included in a range from 0.5-15 mass%, it would have been obvious to include sorbitan oleate within that range, and where Au teaches sorbitan oleate was known to be included in keratin bleaching compositions in an amount ranging from about 0.01 to about 20 wt%. Further, it would have been well within the relative skills of the skilled artisan to have routinely optimize the amount of sorbitan oleate in order to achieve optimal stability, discharging, and applying property. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Where 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. See MPEP 2144.05(II)(A).
Regarding claim 47, it would have been obvious to formulate the pH of the compositions made obvious above, such as a pH of 9.1 as taught by Iizaki.
Regarding claim 48, it would have been obvious to further include at least one coloring agent chosen from a direct dye in an amount of 0.001 to 5% by mass, more preferably 0.01 to 3% by mass of composition A, as motivated by Iizaki, overlapping the claimed range.
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 30-33, 37-43, and 45-48, are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of:
U.S. Patent No. 7,399,319;
U.S. Patent No. 9,993,412;
U.S. Patent No. 10,010,495;
U.S. Patent No. 10,052,273;
U.S. Patent No. 10,524,992;
U.S. Patent No. 10,537,511;
U.S. Patent No. 10,524,996;
U.S. Patent No. 10,524,998;
U.S. Patent No. 10,716,744;
U.S. Patent No. 11,413,225;
U.S. Patent No. 12,472,136;
U.S. Patent No. 12,151,008;
U.S. Patent No. 11,911,636;
U.S. Patent No. 12,533,303;
in view of Iizaki et al (EP 2702894 A1, hereinafter “Iizaki”) and Au et al (US 20040098816 A1, hereinafter “Au”). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patents all teach a dye composition comprising a peroxide, a bicarbonate, and a silicate. The reference patents do not all require the use of persulfates. The claims of the reference patents are different insofar as they do not appear to disclose sorbitan oleate.
It would have been obvious to have combine the components of the reference patent with the components of Iizaki and Au for the predictable result of a hair dye. See MPEP 2155.06(I). One would have a reasonable expectation of success because both the reference patent and Iizaki and Au teach a hair dyeing compositions comprising a peroxide, a carbonate and/or bicarbonate, and a silicate and each component is used for its intended purpose in the art of hair dyeing. See MPEP 2144.07. It would have been obvious to include known nonionic surfactants suitable for hair dyeing compositions, such as sorbitan oleate, for the same reasons discussed above by Iizaki and Au. Additionally, it would have been obvious to modify the amount of the components, including the persulfates to those known to be suitable by Iizaki, overlapping the claimed ranges for the same reasons discussed above.
Claims 30-33, 37-43, and 45-48, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of:
copending Application No. 18/267,207;
copending Application No. 18/266,902;
copending Application No. 18/266,903;
copending Application No. 18/266,900;
copending Application No. 18/719,691;
copending Application No. 18/719,700;
copending Application No. 18/719,728;
copending Application No. 18/876,591;
copending Application No. 18/876,432;
copending Application No. 18/876,563;
copending Application No. 18/876,572;
copending Application No. 18/876,577;
copending Application No. 18/876,579;
copending Application No. 18/876,564;
copending Application No. 18/573,900;
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference applications all teach a hair dyeing composition comprising a peroxide, a carbonate and/or bicarbonate, and a silicate. The reference applications all do not require the use of persulfates. The claims of the reference patents are different insofar as they do not appear to disclose sorbitan oleate.
It would have been obvious to have combine the components of the reference patent with the components of Iizaki and Au for the predictable result of a hair dye. See MPEP 2155.06(I). One would have a reasonable expectation of success because both the reference patent and Iizaki and Au teach a hair dyeing compositions comprising a peroxide, a carbonate and/or bicarbonate, and a silicate and each component is used for its intended purpose in the art of hair dyeing. See MPEP 2144.07. It would have been obvious to include known nonionic surfactants suitable for hair dyeing compositions, such as sorbitan oleate, for the same reasons discussed above by Iizaki and Au. Additionally, it would have been obvious to modify the amount of the components, including the persulfates to those known to be suitable by Iizaki, overlapping the claimed ranges for the same reasons discussed above.
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 JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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