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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 29-48 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Database GNPD, Mintel, 2003, Londacolor Color Crème, XP055847971).
Londacolor Color Crème describes a permanent hair dye cream comprising a first coloring cream composition containing (ii) ammonium bicarbonate, (iii) sodium silicate, and oxidation dyes (toluene-2,5-diamine sulfate, 4-amino-2-hydroxytoluene, 2- amino-6-chloro-4-nitrophenol and 4-amino-m-cresol), as well as a second oxidizing lotion comprising (i) hydrogen peroxide and (iv) salicylic acid, falling within the definition of an organic acid (see the two sections related to "Product Description" and "Ingredients").
The two compositions are free of persulfates and it is reasonable expected that the content of sodium silicate (due to its position in the list) falls within the presently broad claimed range of from 1-40 wt. %. Similarly, the amount of hydrogen peroxide is reasonably exapted to fall within the range of from 1% to 12% by weight based on its location in the list.
These two compositions are mixed and the final composition resulting from the mixing is applied to the hair for simultaneously bleaching and dyeing it. Examiner notes that the method of claim 29 is not limited to only lightening, given dependent claim 30 includes a coloring agent. As such, the method of lightening the hair is inherent where the composition is applied, even if the hair is simultaneously colored.
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 29-48 are rejected under 35 U.S.C. 103 as being obvious over Database GNPD, Mintel, 2003, Londacolor Color Crème, XP055847971).
While Londa Color Crème is believed to be anticipatory as discussed above, if the ranges are not inherent based on the list of ingredients, it would have been obvious to optimize each component with their well-known function.
Claims 29-48 are rejected under 35 U.S.C. 103 as being obvious over Legrand (US 6,444,197).
Legrand teaches compositions for bleaching keratin fibers (abstract) by applying compositions comprising hydrogen peroxide (claim 10), uric acid (claim 23), metal carbonate and metal silicates (claim 45). The composition to be applied may also include direct dyes (¶ 34).
Examiner notes that while persulphates are disclosed, they are only one of the lists of persalts, which can include other compounds. Thus, where the persulphate is not chosen, it will not be included in the composition.
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 29-48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/873432 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘432 includes compositions for lightening keratin fibers comprising hydrogen peroxide, organic acids, carbonates, and silicates.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The following co-pending applications likewise teach compositions for treating keratin fibers with the same active agents instantly claimed:
U.S. Patent Application 18/876563
U.S. Patent Application 18/879128
U.S. Patent Application 18/876582
U.S. Patent Application 18/876577
U.S. Patent Application 18/876562
U.S. Patent Application 18/876591
U.S. Patent Application 18/719728
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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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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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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