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 .
Status of Application
The Examiner acknowledges receipt of amendments filed 08/10/2026 wherein claims 1-4 and 7-14 have been amended, claims 5 and 6 have been cancelled, and claims 15-22 have been added.
Claims 1-4 and 7-22 are presented for examination on the merits. The following rejections are made.
Priority
Acknowledgement is made of applicant’s claim for foreign priority to DE102022200864.2 filed 01/26/2022, and it is further acknowledged that the application is a continuation of PCT/EP2022/084460 filed 12/05/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 08/10/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the references included have been considered by the examiner.
Claim Objections
Applicants’ amendments filed 08/10/2026 overcome the objection to claim 11 made by Examiner. This objection is withdrawn.
Response to Applicant’s Arguments
Applicant asserts the following:
The portion of Herrlein cited by the Office Action discloses C5-C32 alkyl alcohol ethers of polyethylene glycol. Herrlein's compounds are polyethylene glycol derivatives substituted with a C5-C32 alkyl group, while the independent claims require an alkylene glycol of Formula (AG). The Office Action does not identify any disclosure in Herrlein of an alkylene glycol of Formula (AG), nor does it provide any explanation as to why a person of ordinary skill in the art would have modified Herrlein's disclosed polyethylene glycol alkyl ethers to arrive at the specifically claimed alkylene glycol.
The Office Action repeated cites "Kerl (WO 2018130912 A1)", and Applicant notes that the publication number identified throughout the Office Action differs from that of Form PTO-892, which identifies WO 2016037803 A1 to Kerl. Applicant is unable to determine with certainty which reference is relied upon in the rejection.
Kerl (WO 2018130912 A1) does not teach the claimed alkylene glycol of Formula (AG) and therefore does not cure the deficiencies of Herrlein identified above. The same applies if WO 2016037803 A1 was intended to be relied upon.
The Office Action does not establish a prima facie case of obviousness with respect to claims 1 and 14 because the cited Herrlein/Kerl does not teach the alkylene glycol of independent claims 1 and 14. Further, claims 7, 11, and 13 depend on claim 1 and recite additional limitations. Cohen and Miyoshi do not cure the deficiencies of the underlying Herrlein/Kerl combination.
In response to arguments A, C, and D, Applicant is correct in that Herrlein does not teach the alkylene glycol of instant invention, and as such the prior rejections under 35 U.S.C. 103 under Herrlein in view of Kerl have been withdrawn. However, new rejections have been made under 35 U.S.C. 103, as described in detail below.
Regarding argument B, Applicant is correct in that the publication number of prior art Kerl was miscited throughout the Office Action, and the correct publication number should match that of Form PTO-892 (WO 2018130912 A1). This has been corrected in new rejections under 35 U.S.C. 103.
Examiner thanks Applicant for the amendments and following arguments.
NEW Rejections following Amendments
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.
Claim(s) 1-4, 7-10, 12-16, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Herrlein (US 20160235653 A1) in view of Kerl (WO 2016037803 A), in view of Cohen (US 20200376304 A1), as evidenced by Yu (Macromolecules, 1999, 32, 5186-5192).
Regarding claims 1, 9, and 14-15, Herrlein is directed to a cosmetic composition that dyes keratin fibers. Herrlein teaches a multicomponent composition that comprises an amino-functionalized silicone polymer (see claim 1) and a hair coloring agent (i.e. pigment, see para. [0103]). Herrlein further teaches that the solvent in the composition may be selected from ethanol or isopropanol (para. [0086]), and that the composition can be applied directly to the hair (see claim 14). While Herrlein teaches most elements of instant claim 1, 9, and 14-15, it fails to teach the alkylene glycol of formula (AG), or the percent composition of the alkylene glycol in the instant invention.
Regarding claims 1, 14, and 18, Cohen teaches a hair modification composition, specifically for the purpose of coloring hair. The composition comprises a rheology modifier, PEG-4000, which has the same chemical structure as the alkylene glycol described in instant invention and functions as a rheology modifier (para. [0073]). One of ordinary skill in the art at the time of the effective filing date would be motivated to incorporate the PEG-4000 rheology modifier of Cohen into the composition of Herrlein, to yield predictable results that would come with adding a rheology modifier, such as improved viscosity of the composition. MPEP § 2143(I)(a). As described in Yu, commercial PEG-4000 can have a varying molecular weight that averages between 4390 and 4500 g/mol (see Table 2). The molecular weight of the monomer of both PEG-4000 and that of instant claims 1 and 14 is 44.05 g/mol, as taught in Yu (see Table 4). As such, the number of repeating units (i.e. the integer of the alkylene glycol) of the PEG-4000 of Cohen can be between 100 and 102, which overlaps with the range described for the formula (AG) of instant claims 1 and 14. The number of repeating units for the PEG-4000 of Cohen further overlaps with the ranges disclosed for the alkylene glycol formulas (AG-1) and (AG-2) of instant claim 18.
Regarding claim 7, Cohen teaches that the effective amount of PEG-4000 as a rheology modifier is 4-70 wt.% of the composition (para. [0077]). This narrower range falls within the range disclosed in present invention (10.0-99.0%), and as such a prima facie case of obviousness exists. MPEP § 2144.05(I). One of ordinary skill in the art would be motivated to utilize the concentration of the PEG-4000 of Cohen, into the composition of Herrlein, because Cohen teaches that this concentration is effective in a composition for the hair, before it is combined with the separate formulation comprising the amino-functionalized silicone polymer. MPEP § 2143(I)(b).
Herrlein and Cohen are considered to be analogous to the present invention because they are also pertaining to a composition that dyes keratinous fibers. Herrlein describes that the composition should have an optimized viscosity to prevent the composition from dripping onto clothes or surrounding material (para. [0100]). The range of the percent composition of alkylene glycol described in the present invention is 10.0-99.0%. The concentration of alkylene glycol is an optimizable parameter, inviting one skilled in the art to experiment. As such, a person of ordinary skill in the art be motivated to incorporate the PEG-4000 rheology modifier of Cohen, in an amount of 4-70 wt.% of the composition (para. [0077]), as Cohen teaches this specific modifier in this amount is effective in compositions that are applied to the hair. MPEP § 2143(I)(g).
While Herrlein teaches most elements of instant claim 1, 9, and 14-15 as shown above, it does not teach that the hair dye composition can have components that are packaged separately, to be mixed before applying to the hair. Kerl however, describes a multicomponent hair dye that specifically teaches this element. Kerl discloses a composition where one component consists of a dye, and the other consists of an amino-functionalized silicone polymer (see claim 1). Kerl teaches that these different compositions for the hair dye can be mixed, then applied to the hair and rinsed (see claim 12). The person of ordinary skill in the art would have had a reasonable expectation of success in packaging the dye, amino-functionalized silicone polymer, and polyethylene glycol taught in Herrlein separately for the purpose of them being mixed immediately before use, as taught in Kerl.
Herrlein, Cohen, and Kerl are considered analogous to the claimed invention because they are in the same field of a cosmetic composition for dying the hair. The person of ordinary skill in the art would have had a reasonable expectation of success in incorporating the polyethylene glycol of Cohen into the composition of Kerl. As above, Cohen teaches that the specific polyethylene glycol structure functions as an effective rheology modifier. Further, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to incorporate the concept of packaging different compositions separately (i.e. amino-functionalized silicone polymer, alkylene glycol, and pigment) as taught in Kerl with the hair dye taught in Herrlein for the benefit of improved durability, lengthened shelf-life of the dye, and enhanced color. MPEP § 2143(I)(g).
Regarding claims 2 and 3, Kerl teaches the specific amino-functionalized silicone polymers as disclosed in instant claims 2 and 3 (see Figures I, II, IV). The structure of instant claim 2 (Si-amino) is analogous to Kerl Figure II, (Si-I) of instant claim 3 to Kerl Figure I, and (Si-II) of instant claim 3 is the same as Kerl Figure III. (“An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties”) MPEP § 2144.09(I). The amino-functionalized silicone polymers in Kerl and the present invention have the same function of improving care of keratinous fibers as well as improving color intensity of dye for the hair. A person of ordinary skill in the art would have found it obvious to incorporate the specific amino-functionalized silicone structures from Kerl’s composition into the hair dye composition taught in Herrlein because of these compounds’ relevant function in hair dyes.
Regarding claim 12, Herrlein teaches that the composition can comprise diethylene glycol monobutyl ether (para. [0056]), which has the same structure as the formula (AA-I) of instant claim 12.
Regarding claim 13, Kerl teaches that the amino-functionalized silicone polymer (i.e. first agent of instant invention) can make up 0.0001-15 wt.% of the composition (para. [0074]). Cohen teaches that the percent composition of the polyethylene glycol (i.e. second agent of instant invention) can fall within the range of 4-70 wt.% (para. [0077]). It would have been obvious to combine the two components in Kerl and Cohen while maintaining the concentrations taught in both references. For instance, if the concentration of the first agent is 1%, as taught in Kerl, and the concentration of the second agent is 10% as taught in Cohen, this falls within the ratio described in claim 13 of the instant invention. The concentrations taught in Cohen and Kerl for the two compositions (analogous to the first and second agents) encompass the ratio of two agents described in claim 13, and thus a prima facie case of obviousness exists. MPEP § 2144.05(I).
Regarding claim 4, Herrlein, Cohen, and Kerl teach the claimed invention as above. Herrlein further teaches that the composition can contain amino-silicone polymers in a concentration of 1-15 wt.% (see claim 9). Kerl teaches that the cosmetic mixture of the first container (i.e. first agent, see claim 1) comprises the silicone polymer (of the same structure of instant claims 2 and 3 as above) in an amount of 0.0001-15 wt.% (see claim 6). Both Herrlein and Kerl teach a range that overlaps with the instant claimed range and as such it is obvious. (“A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness”) MPEP § 2144.05(I). Additionally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence that such concentration 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP § 2144.05(II).
Herrlein and Kerl are considered to be analogous to the claimed invention since they are in the same field of cosmetic compositions for the purpose of dying keratinous fibers. The claimed method of the instant invention requires a percent composition of amino-functionalized silicone polymers of 1-100 wt.%, which overlaps with the range disclosed in Herrlein and Kerl. Kerl teaches the lower limit of 1% while Herrlein teaches 1-15 wt.%. The concentration of silicone polymers is an optimizable parameter, inviting one skilled in the art to experiment. As such, a person of ordinary skill in the art would have found it obvious to optimize within the range taught by Herrlein and Kerl for the benefit of improving both care of hair fibers and the intensity of dye.
Regarding claims 8 and 19, Herrlein teaches that the composition that may contain more than one solvent, in a range of 0.1-15 wt.% solvent (para. [0086]). The instant invention claims a solvent concentration of 1-80 wt.%. (“A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness”) MPEP § 2144.05(I). The narrower range disclosed in Herrlein overlaps with the range in instant claim 8. Because the claimed range of solvent concentration overlaps with the range taught in Herrlein, a prima face case of obviousness exists. Additionally, it would be obvious to one of ordinary skill in the art to optimize the concentration of solvent in the composition, which could mean broadening a range taught in prior art. MPEP § 2144.05(II). Further, Kerl teaches that one of the containers can comprise an organic solvent such as 1,2-propylene glycol, and can make up 0.1-30 wt.% of the composition within the container (pg. 5, para. [0002]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to substitute the 1,2-propylene glycol solvent of Kerl into the composition of Herrlein to yield predictable results. Kerl teaches that this organic solvent can be combined with an amino-functionalized silicone polymer in a concentration of 0.1-30 wt.% to effectively treat the hair. MPEP § 2143(I)(b). The concentration of the 1,2-propylene glycol disclosed in instant claim 19 overlaps with that of Kerl, and as such is obvious.
Regarding claim 10, Kerl teaches a hair dye composition made up of multiple parts, comprising a dye and an amino-functionalized silicone polymer (see claim 1). These compositions are packaged separately then mixed before they are applied to the hair (see claim 12). While Kerl does not teach a third component, the polyethylene glycol, this is taught by Cohen as shown above. It would have been obvious to one of ordinary skill in the art to incorporate the polyethylene glycol disclosed in Cohen into the multi-component hair dye taught in Kerl. Each component is known in the art to be used in hair products for the purpose of conditioning and coloring hair. In this combination, both Cohen and Kerl’s hair compositions are performing the same functions they would have if they were separate. The person of ordinary skill in the art would have found it obvious to combine the elements, and would have further predicted that the combination would effectively dye and condition the hair. MPEP § 2143(I)(a). Further, it would have been obvious to one of ordinary skill in the art to package the three components described in Herrlein and Cohen (polyethylene glycol, dye, and amino-functionalized silicone polymer) separately where they can then be mixed prior to application to the hair, as taught in Kerl.
Regarding claim 16, Herrlein teaches that the composition can comprise a polydimethylsiloxane polymer (i.e. cosmetic oil and non-amino-functionalized silicone polymer, see claim 11).
Regarding claims 20 and 21, Kerl describes that after the different compositions in their containers are combined and mixed, the mixture can be applied to the hair for 10-60 minutes (see claim 12). The effective exposure time of instant claim 20 overlaps with that of Kerl, and as such is obvious. Kerl teaches that the mixture should then be rinsed out of the hair (see claim 12). One of ordinary skill in the art would be motivated utilize the method of application described in Kerl, for the composition of Herrlein, because Kerl teaches a method that is effective in both dying and conditioning keratin fibers when applying a composition with amino-functionalized silicone polymers. MPEP § 2143(I)(g).
Claim(s) 11 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Herrlein (US 20160235653 A1) in view of Kerl (WO 2016037803 A), in view of Cohen (US 20200376304 A1), as evidenced by Yu (Macromolecules, 1999, 32, 5186-5192), and in further view of Miyoshi (US 20160122441 A1).
Herrlein, Cohen, and Kerl teach the claimed invention as above, but they do not teach the alkoxylated fatty acid ester with the general formula disclosed in claim 11.
Regarding claims 11 and 22, Miyoshi describes a cosmetic composition that is used to condition the hair. The composition contains ester oils, specifically PPG-3 benzyl ether myristate, which has the commercial name Crodamol STS (para. [0202]). The Crodamol STS of Miyoshi has the same chemical formula as the general structure in instant claim 11. Miyoshi teaches that ester oils, specifically Crodamol STS in this case, provide excellent moisturizing effects to the hair (para. [0188]).
Herrlein, Cohen, Kerl, and Miyoshi are in the same field as the current invention as they are all in the same field of cosmetic compositions that are applied to the hair. Though Herrlein, Cohen, and Kerl teach most elements of the claimed invention, they do not teach the fatty acid ester disclosed in instant claim 11. The person of ordinary skill would have had reasonable expectation of success in adding the ester oil described in Miyoshi to the hair compositions of Herrlein, Cohen, and Kerl because Miyoshi teaches that ester oils function to moisturize the hair. The skilled artisan would have been motivated to add the Crodamol STS (i.e. PPG-3 benzyl ether myristate) to a hair composition to further improve the conditioning benefits of the product.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Herrlein (US 20160235653 A1) in view of Kerl (WO 2016037803 A), in view of Cohen (US 20200376304 A1), as evidenced by Yu (Macromolecules, 1999, 32, 5186-5192), and further evidenced by Bourdin (FR2 968209 A1; see machine translation retrieved on 09/02/2026).
While Herrlein, Cohen, and Kerl teach the claimed invention as above, they fail to teach the viscosity of the polydimethylsiloxane in the composition, as recited in instant claim 17.
Regarding claim 17, as above, Herrlein teaches that the composition can comprise a polydimethylsiloxane polymer (see claim 11), but is silent on the viscosity of the polymer. Bourdin teaches a composition for conditioning keratin materials such as the hair (see abstract). Bourdin describes that the preferred polydimethylsiloxanes for the composition have a viscosity of greater than 350 mm2/s, but less than 500,000 mm2/s at 25º C (see claim 9). Further, Bourdin explains that the viscosities of the silicones were measured according to the standard “ASTM 445” (pg. 8, line 9). The range of the viscosity of the polydimethylsiloxanes of instant claim 17 overlaps with that of Bourdin, and as such is obvious.
Herrlein, Kerl, Cohen, and Bourdin are considered to be analogous to the claimed invention because they are in the same field of cosmetic compositions that can be applied to the hair for conditioning. One of ordinary skill in the art would be motivated to optimize the viscosities of the polydimethylsiloxanes described in Herrlein to have a viscosity within the range disclosed in Bourdin, because Bourdin teaches that this range is effective to condition the hair. MPEP § 2143(I)(g).
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 1-4, 7, 9, 14, and 18-21 are provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-5, 12, 15, 16, and 17 of co-pending -U.S. Application No. 18/294,992 (hereafter App’992) in view of Kerl (WO 2016037803 A).
Regarding claim 1, 9, and 14 of instant invention, App’992 claims a composition for dying keratinous fiber, containing at least one pigment and one amino-functionalized silicone polymer (see claim 1). Additionally, the composition contains one or more polyalkylene glycols of the same structure (see claim 16) described in instant invention. The solvents claimed in App’992 are 1,2-propylene glycol, 1,3-propylene glycol, 1-2 butylene glycol, dipropylene glycol, diethylene glycol monomethyl ether, phenoxyethanol, ethanol, isopropanol, glycerol, and benzyl alcohol (see claim 15).
App’992 does not explicitly teach packaging each component of the hair dye separately, to mix only before application. However, as discussed in detail above, Kerl does teach this element. Kerl teaches a hair dye composition where different components (amino-functionalized silicone polymers and pigments) are packaged separately before they are mixed and applied to the hair. The person of ordinary skill in the art would have had reasonable expectation of success in packaging each component of the hair dye taught in App’992 (amino-functionalized silicone polymers, polyalkylene glycol, and pigments) separately, as taught in Kerl, for the benefit of improved shelf-life and enhanced color of the dye. MPEP § 2143 (g).
Regarding claim 2 and 3, App’992 claims two structures (see claim 3 and 4) which are identical to those taught in instant invention. App’992 teaches an amino-functionalized silicone polymer (claim 3, [Si-amino]) which is analogous to instant claim 2 (Si-amino). Claim 4 of App’992 teaches structures identical to that of instant claim 3 ([Si-I] and [Si-II]). (“An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties”) MPEP § 2144.09(I).
Regarding claim 4, App’992 claims that the amino-functionalized silicone polymer can comprise 0.1-8.0 wt.% of the composition (see claim 5). While the instant invention claims a range of 1-100 wt.%, the range of App’992 touches the instant claimed range and as such it is obvious. MPEP § 2144.05(I). Additionally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence that such concentration is critical. MPEP § 2144.05(II). The concentration of the amino-functionalized silicone polymer is an optimizable parameter, and as such it invites one of ordinary skill in the art to experiment. As such, it would have been obvious to optimize within the range taught in App’992 for the benefit of improving care of hair fibers.
Regarding claim 7, App’992 claims a composition with a concentration of polyalkylene glycols from 10.0-99.0 wt.% (see claim 16). This overlaps entirely with the range taught in instant claim 7, therefore a prima facie case of obviousness exists. MPEP § 2144.05(I).
While App’992 discloses all elements of instant claims 1-7, 9, and 14, besides the separate packaging of components, it would have been obvious to one of ordinary skill in the art to incorporate the teachings of Kerl into the formulation of App’992 to arrive at the current invention. Both compositions taught in Kerl and App’992 have the same function, to dye keratinous fibers. As such, it would have been obvious to incorporate the hair dye disclosed in App’992 into the method of packaging the components separately, as taught in Kerl. One would have a reasonable expectation of success to combine teachings of App’992 with Kerl, for the benefit of increased durability and color of the dye. MPEP § 2143 (g).
Regarding claim 18, App’992 claims an alkylene glycol of the same structure (see claim 16) as disclosed in instant invention. Additionally, the number of repeating units in App’992 is 1-10,000, which encompasses the range taught in instant claim 18, and as such a prima facie case of obviousness exists. MPEP § 2144.05(I).
Regarding claim 19, App’992 claims a composition where the solvent can be 1,2-propylene glycol (see claim 15). As above, Kerl teaches a composition with 1,2-propylene glycol, where the solvent makes up 0.1-30 wt.% of the composition (pg. 5, para. [0002]). One of ordinary skill in the art would have a reasonable expectation of success in incorporating the concentration of 1,2-propylene glycol taught in Kerl, into the composition of App’992, because Kerl teaches that this organic solvent can be combined with an amino-functionalized silicone polymer in a concentration of 0.1-30 wt.% to effectively treat the hair. MPEP § 2143(I)(b).
Regarding claim 20, App’992 claims that the composition should be applied to keratin material for an exposure time of from 30 seconds to 45 minutes, overlapping with the exposure time claimed in instant invention. As above, Kerl teaches that after the hair is exposed to the composition, the composition should be rinsed out (see claim 12). One of ordinary skill in the art would be motivated to incorporate the rinsing step of Kerl into the method of application of the composition of App’992, as Kerl teaches this is a necessary step for applying conditioning and dying agents to the hair.
The conflicting claims of instant invention and App’992 differ only marginally in scope from claims 1-4, 7, 9, 14, and 18-21 of the present application. Claims 1 and 12 of Kerl, which is discussed above in the rejections under 35 U.S.C. 103, compensates for the deficiency in the conflicting claims concerning the multiple units for packaging the hair dye and the method of rinsing the composition out of the hair following application.
This is a provisional nonstatutory double patenting rejection because the conflicting claims have not yet been patented.
Response to Applicant’s Arguments – Double Patenting
Applicant asserts the following:
Terminal disclaimers would be premature at this stage in prosecution because the present claims have not yet been allowed, and thus, the final version of these claims is not yet known. The co-pending applications may also be amended during prosecution.
In response to argument A, Applicant is correct that both present application and App’992 can be amended, however the rejections under the nonstatutory double patenting are provisional and subject to change following amendments of claims of either application.
Examiner thanks Applicant for the amendments and following arguments, but the provisional non-statutory double patenting rejections of claims 1-4, 7, 9, 14, and 18-21 are maintained.
Conclusion
Claim(s) 1-4 and 7-22 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Makenna Miller whose telephone number is (571)272-9852. The examiner can normally be reached Mon-Fri 7:30-5:00 EST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/M.R.M./Examiner, Art Unit 1611
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