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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 30-44, and the species of a) ammonium bicarbonate and b) glutamic acid, in the reply filed on 5/27/2026 is acknowledged. The traversal is on the ground(s) that examination of all groups together would not impose a search or examination burden. This is not found persuasive because search burden is not a criteria for requiring a restriction under 371. The Examiner demonstrates that the distinct groups lacked unity of invention as the special technical feature of the groups did not make a contribution over the prior art, as such restriction is proper. Applicant traverses the species election as the Office has not established that the disclosed species for compound ii and iv fail to share a special technical features that defines a contribution over the prior art. This is not persuasive because the examiner established in the office action mailed 3/3/2026 that each compounds of ii and iv do not make contribution over the prior art as such unity between the species of compound ii and the species of compound iv lack unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 34, 40 and 45-49 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected groups and/or species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/27/2026.
Applicant states that claims 30-33 and 35-44 read on the elected species. The examiner has determined that claim 40 does not read on the elected species as it requires both a carbonate and bicarbonate system (i.e. a combination), however, Applicant elect ammonium bicarbonate (i.e. single species).
Drawings
The drawings are objected to because there is only one figure and the drawing refers to it as "Fig. 1". However, 37 CFR 1.84(u)(I) indicates when there is only one drawing, it must not be numbered and the abbreviation FIG must not appear. Therefore, the figure must be referred to as The Figure. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Page 4 of the specification recites “Fig. 1” this should recite “The Figure”.
Appropriate correction is required.
Claim Objections
Claim 41 is objected to because of the following informalities: Structures 16 and 26 in claim 41 have added lines that seem out of place, for example, :
PNG
media_image1.png
26
30
media_image1.png
Greyscale
or
PNG
media_image2.png
46
42
media_image2.png
Greyscale
.
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 32-33, 37-39, 42 and 44 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 32 recites the limitation "the total amount of chemical oxidizing agent," however the claim from which this depends recites “at least one chemical oxidizing agent” this it’s unclear if the total amount is limited to one, more than one or all oxidizing agents of claim 1, or if it include any and all oxidizing agents present in the composition. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination the claim will be interpreted as reciting “the total amount of the at least one chemical oxidizing agent is…” Claim 33 recites “the total amount of compound ii)” however the claim from which depends recites “at least one compound ii), this it’s unclear if the total amount is referring to the total amount of one, more than one or all compounds ii. For purposes of examination the claim will be interpreted as reciting “the total amount of the at least one compound ii)…”
Claim 37 and 38 recites “the total amount of silicate” however the claim from which depends recites “at least one silicate, this it’s unclear if the total amount is referring to the total amount of one, more than one or all silicates. For purposes of examination the claim will be interpreted as reciting “the total amount of the at least one silicate…”
Claims 38 and 39 recites the limitation "the weight". There is insufficient antecedent basis for this limitation in the claim.
Claim 39 recites “the total amount of chemical oxidizing agent” however the claim from which depends recites “at least one chemical oxidizing agent, this it’s unclear if the total amount is referring to the total amount of one, more than one or all chemical oxidizing agent. For purposes of examination the claim will be interpreted as reciting “the total amount of the at least one chemical oxidizing agent is…”.
Claim 42 recites “the total amount of amphoteric or zwitterionic compound” however the claim from which depends recites “at least one amphoteric or zwitterionic compound, this it’s unclear if the total amount is referring to the total amount of one, more than one or all amphoteric or zwitterionic compound. For purposes of examination the claim will be interpreted as reciting “the total amount of the at least one amphoteric or zwitterionic compound …”.
Claim 44 recites “the total amount of coloring agent” however the claim from which depends recites “at least one coloring agent, this it’s unclear if the total amount is referring to the total amount of one, more than one or all coloring agent. For purposes of examination the claim will be interpreted as reciting “the total amount of the at least one coloring agent …”.
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.
Claim(s) 30-33, 36-37 and 41-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anderheggen (US 2017/0340549), as evidenced by SciFinder. Anderheggen is cited on the 7/12/2024 IDS.
Anderheggen discloses a composition for oxidative hair lightening (title). The working examples teach a composition No.4 comprising a 1:2 mixture of a developer emulsion and a blonding powder formulation.
Regarding claim 30i and 31-32: The mixture comprises 3% hydrogen peroxide based on the total weight of the formulation.
Regarding claim 30iii and 36-37: The mixture comprises 12% sodium silicate (i.e. alkali metal silicate) based on the total weight of the formulation.
Regarding claim 30iv and 41-42: The mixture comprises .133% l-arginine (compound 12 as evidenced by SciFinder) based on the total weight of the formulation.
However, Example No 4 comprises 14% of persulfates (ammonium and potassium persulfate) as the oxidizing agent a of Anderheggen and not a carbonate as required by instant claim 30ii.
Anderheggen teaches that the oxidizing agent can be chosen from sodium percarbonates, ammonium peroxodisulfate (also known as ammonium persulfate), potassium peroxodisulfate (also known as potassium persulfate), etc. As such it would have been prima facie obvious to substitute the ammonium and potassium persulfate in example No. 4 with sodium percarbonate as its prima facie obvious to substitute one art recognized equivalent for another with a reasonable expectation of success.
Regarding claim 33: The above makes obvious a mixture comprising 14% sodium percarbonate.
Regarding claim 43: Anderheggen teaches the mixture of blonding powder and oxidation composition (i.e. composition comprising the hydrogen peroxide) to be prepared such that it has a pH in the range of 8-11.5 [0101].
Claim(s) 30-33 and 35-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bolton (EP 1669107) and Anderheggen (US 2017/0340549). Bolton is cited on the 3/2/2026 IDS.
Bolton teaches an oxidative hair coloring and bleaching composition comprising an oxidizing agent, a source of carbonate ions, an alkalizing agent, preformed dyes at a pH of 9.5.
Regarding claims 30i and 31-32: Example 6 of Boltons thickened aqueous solution formulation (pg. 15) comprises 5.95% hydrogen peroxide.
Regarding claims 30ii and 33: Example 6 of Bolton comprises 8% ammonium carbonate.
Regarding claims 30iv and 41-42: Example 6 of Bolton comprises 6% glutamic acid (elected species).
Example 6 of Bolton comprises 0% persulfates, which reads on “less than 10%” which embraces 0%.
Regarding claim 30iv and 35: As noted above Example 6 of Bolton teaches ammonium carbonate, however Bolton teaches that the source of carbonate is preferably chosen from ammonium carbonate, ammonium hydrocarbonate and ammonium hydrogen carbonate (i.e. ammonium bicarbonate, elected species). As such it would have been prima facie obvious to substitute the ammonium carbonate in example 6 with ammonium hydrogen carbonate as its prima facie obvious to substitute one art recognized equivalent for another with a reasonable expectation of success.
Regarding claim 43: Example 6 of Bolton has a pH of 9.
Regarding claim 44: Example 6 of Bolton teaches the use of performed dyes, including HC yellow 2 (i.e. direct dye), in amounts greater than 0.1%, however, Bolton teaches that the performed dyes can be used in amounts ranging from 0.01-10 [0041], thus a skilled artisan would recognize that the amount of dye used in example 6 isn’t limited to the exemplified amounts but could be used in any of the taught ranges.
Bolton teaches the composition to comprise a source of alkalizing agent and this is used in amounts of 0.1-10%. However, Bolton does not teach the composition to comprise a silicate as recited by instant claims 30iii and 36-37.
Anderheggen discloses a composition for oxidative hair lightening (title). The working examples demonstrate compositions comprising hydrogen peroxide, carbonates and amino acids (i.e. arginine).
Anderheggen teaches the composition to comprise an inorganic alkalizing agent in an amounts of 1-60%, a preferred alkalizing agent is sodium metasilicate [0076].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Bolton with those of Anderheggen. One of skill in the art would have been motivated to use 0.1-10% of sodium silicate as taught by Anderheggen as the alkalizing agent of Bolton as Anderheggen teaches that sodium silicate is a suitable alkalizing agent for use in composition comprising hydrogen peroxide, carbonates and amino acids and its prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability in the prior art.
Regarding claim 38: The above makes obvious a composition comprising 8% of a bicarbonate and 0.1-10% sodium silicate, this results in a weight ratio of bicarbonate to silicate of 8:0.1-10, which overlaps with the claimed ranges.
Regarding claim 39: The above makes obvious a composition comprising 8% of a bicarbonate and 5.95% hydrogen peroxide, this results in a weight ratio of bicarbonate to silicate of 8:5.95, which overlaps with the claimed ranges.
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, 35-39 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 31-49 of copending Application No. 18876564 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose compositions comprising an oxidizing agent such as hydrogen peroxide, an alkali metal silicate, an alkali metal bicarbonate and an amphoteric or zwitterionic compound such as glutamic acid. These are all present in overlapping amounts. The compositions also comprise less than 10% of persulfates.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 30-33, 35-39 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 31-48 of copending Application No. 18876572 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose compositions comprising an oxidizing agent such as hydrogen peroxide, an alkali metal silicate, an alkali metal bicarbonate and an amphoteric or zwitterionic compound such as glutamic acid. These are all present in overlapping amounts.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 30-33, 35-39 and 41-44 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25-41 of copending Application No. 18876577 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose compositions comprising an oxidizing agent such as hydrogen peroxide, an alkali metal silicate, an alkali metal bicarbonate, coloring agent such as direct dye and an amphoteric or zwitterionic compound such as glutamic acid. These are all present in overlapping amounts. The compositions also comprise less than 10% of persulfates. The compositions also comprise less than 5% of persulfates and have overlapping pH.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 30-33, 35-39 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 31-50 of copending Application No. 18876432(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose compositions comprising an oxidizing agent such as hydrogen peroxide, an alkali metal silicate, an alkali metal bicarbonate, coloring agent such as direct dye and an amphoteric or zwitterionic compound such as glutamic acid. These are all present in overlapping amounts. The compositions also comprise less than 10% of persulfates.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 30-33, 35-39 and 41-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 31-48 of copending Application No. 18876591 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose compositions comprising an oxidizing agent such as hydrogen peroxide, an alkali metal silicate, an alkali metal bicarbonate, coloring agent such as direct dye and an amphoteric or zwitterionic compound such as glutamic acid. These are all present in overlapping amounts. The compositions also comprise less than 5% of persulfates.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
Prosecution Insights