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 .
Claims 29-48 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 29-47 as well as the species cetyl alcohol in the reply filed on 06/29/2026 is acknowledged. The traversal is on the ground(s) that the Office’s characterization of the special technical feature omits claim features such as the total content of silicate(s) ranging from 1 -40%and persulfates of less than 5%. This is not found persuasive because when evaluating the shared technical feature, the Office does not consider limitations not present in all claims. As neither of the features noted above are required by all claims, the amounts of silicates and persulfates are not included in the shared technical feature. Moreover, the foregoing limitations do not make a contribution over the cited prior art as explained in the obviousness rejection below.
The requirement is still deemed proper and is therefore made FINAL.
Claim 48 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/29/2026.
Claims 29-48 are under current examination.
Claim Objections
Claims 34, 36, and 47 are objected to because of the following informalities:
Claims 34 and 36 recite (N+R1R2R3R4)2,∙CO32- and (N+R1R2R3R4)2,∙HCO3- respectively. The “,∙” between the two charged species of the salt compound should be deleted as the comma is unnecessary and unconventional in chemical notation, and the dot appears to indicate a radicle. This does not rise to the level of indefiniteness under 35 USC§112(b) in view of the remaining language of the claim and the specification, which indicates the formula above is defining a carbonate or bicarbonate salt.
In claim 47, line 2 the “(C)” is not bolded; however, the other letters in parentheses are in bold.
In claim 47, line 4, a space is missing between “a” and “hydrogen”. 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.
Claim 43 is 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 43 recites “hydrocarbon-based” in each of lines 7, 14, and 25. This phrase renders the claim indefinite because it is unclear the extent to which the substituent must resemble a hydrocarbon in order to fall within the scope of the claims.
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.
Claim 47 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pratt et al. (US 20120024309; publication date: 02/02/2012).
With regard to claim 47, Pratt discloses a method of lightening keratin fibers, especially human hair comprising mixing three compositions (abstract) followed by applying them to human hair. In example 2, one of the compositions contains sodium carbonate and sodium metasilicate (table following 0110; this corresponds to instant composition (B) as delimited in instant claim 47) and second composition contains hydrogen peroxide and does not contain a peroxygenated salt (table following 0111; this corresponds to instant composition (A) as delimited in instant claim 47). Pratt discloses mixing these two compositions with a composition comprising a dyestuff (0116). This third composition also contains cetearyl alcohol, which is a mixture of cetyl and stearyl alcohols. The composition disclosed after para 0116 corresponds to instant composition (C).
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 29-47 are rejected under 35 U.S.C. 103 as being unpatentable over Pratt et al. (US 20120024309; publication date: 02/02/2012).
With regard to claim 29, Pratt discloses a method of lightening keratin fibers, especially human hair comprising mixing three compositions (abstract) followed by applying them to human hair. In examples 2 and 3 on page 11, the Bleaching/Highlighting composition contains sodium carbonate and 10% wt sodium metasilicate (table following 0110) and the Oxidizing Lotion composition contains hydrogen peroxide (table following 0111). Pratt discloses mixing these two compositions together with a composition the Third Composition comprising a dyestuff, Basic Red 51 (i.e. a direct dye 0116; 0086 – 0088 list direct dyes, including basic red 51). This third composition also contains cetearyl alcohol, which is a mixture of cetyl and stearyl alcohols. Before applying to hair, the three compositions are mixed to form one composition thus, Pratt discloses a method of lightening keratin fibers comprising applying to the fibers a composition comprising hydrogen peroxide, sodium carbonate, sodium metasilicate in an amount falling within the claimed range and cetearyl (cetyl and stearyl) alcohol.
This method differs from the instant method in that the final composition contains persulfates in an amount greater than that permitted by the instant claims derived from the Bleaching/Highlighting composition.
Pratt teaches that persulfates provide a bleaching/highlighting effect to the composition and discloses further that other substances such as phtholimidoperoxyhexanoic acid (not a peroxygenated salt) also provide this effect (0011).
It would have been prima facie obvious to replace the persulfate containing substances with any of the other substances taught for the same purpose, to include the phtholimidoperoxyhexanoic acid (see MPEP 2144.06).
With regard to claim 30, as noted the final composition comprises a direct dye, therefore the method results in simultaneously dying the keratin fibers.
With regard to claim 31, as noted above, the composition contains hydrogen peroxide.
With regard to claim 32, the persulfate compounds make up over 50% of the Bleaching/Highlighting composition. It would have been a matter of routine for one of ordinary skill to optimize the amount of substituted oxidizing agent to achieve a desired degree of oxidation, particularly with the guidance in range provided by Pratt: total proportion of the compounds with bleaching and/or highlighting effect preferably ranges from 5% to 85% (0015; see MPEP 2144.05).
With regard to claim 33, sodium carbonate is present at 1 wt % of the Bleaching/Highlighting composition, which is then diluted by mixing with the Oxidizing Lotion and Dyestuff composition at a ratio of 25:35:2 (0104). This would result in a weight percentage of sodium carbonate falling within the scope of the claims. Moreover, carbonates and bicarbonates are disclosed as serving several purposes in the composition including attenuating heat release when present as a source of calcium (0025 teaches adding calcium carbonate), providing a source of ammonium (0012-0013), and adjusting pH (0094). It would have been obvious to optimize the quantity of carbonate or bicarbonate in the composition to achieve these goals (see MPEP 2144.05).
With regard to claims 34-37, Pratt teaches adding inter alia sodium carbonate, calcium carbonate, ammonium carbonate, ammonium bicarbonate.
With regard to claim 39, sodium metasilicate is an alkali metal silicate.
With regard to claims 40-42, the examiner considers it obvious to optimize the weight ratios of the silicate, carbonate, bicarbonate, and oxidizing agent to have been a matter of routine, as the properties each substance contributes to the final product were recognized at the time the instant invention was filed. "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. 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. "[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); see also In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."). See MPEP 2141.03 and 2144.05(II)(A).
With regard to claims 43 and 44, as noted above, Pratt discloses cetyl alcohol present in the composition in the form of cetearyl alcohol, which is a mixture of cetyl and stearyl alcohols. With regard to the amount, the fatty substances are present when the composition is to be an emulsion (0038, 0050,0061). The mixture “cetearyl alcohol” is present in the Oxidizing Lotion at 1.7% by weight, in the Third Composition with Dyestuff at 10% by weight, and Pratt teaches the concentration of fatty alcohol(s) is in the range from 0.5 to 20%, preferably 1 to 15% by weight, calculated to total composition prior to mixing with oxidizing and bleaching and/or highlighting composition (0062). This would give the artisan of ordinary skill a starting point for optimizing the amount of fatty substance in the final composition to provide a suitable emulsion (see MPEP 2144.05).
With regard to claim 45, Pratt teaches a final pH of 8-12 (0097), which overlaps with the range required by the instant claims (see MPEP 2144.05).
With regard to claim 46, the Basic red 1 is present at 0.5% by weight of the Dyestuff composition, and is then diluted at the 25:35:2 ratio (0104), i.e. 70:2, or 35:1, for approximately 0.014% by weight in the final composition, well below the upper limit required by the instant claims. Moreover, it would have been obvious to add the coloring agent in an amount required to achieve any particular desired color, which the artisan of ordinary skill could accomplish through routine testing. For this reason, the examiner does not consider the limitation on amount of coloring agent to patentably define over the prior art (see MPEP 2144.05).
With regard to claim 47, as noted above Pratt anticipates claim 47, "lack of novelty is the epitome of obviousness." May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974)). Moreover, the obviousness analysis for instant claim 29 above also renders obvious all the limitations of claim 47.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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