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 Status
Claims 1-19 are pending.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-18) in the reply filed 7/14/2026 is acknowledged. Applicant’s election without traverse of i) potassium peroxydisulfate (oxidizing agent) ii) trisodium methyl glycine diacetate (complexing agent) iii) arginine (amino acid) iv) potassium salts of C12-C24 monocarboxylic acids (alkali metal or alkaline earth metal salt of C12-C24 monocarboxylic acid) v) succinic acid (dicarboxylic acid) vi) magnesium hydroxide carbonates (inorganic alkalizing agent) in the reply filed 7/14/2026 is acknowledged.
In a phone call on 7/28/2026 with P. Scott Smith, Applicant elected the potassium salt of stearic acid (i.e. potassium stearate) as the monocarboxylic acid salt as in claim 15 without traverse.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/14/2026.
Claims 4 and 6-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable or linking claim. Election was made without traverse in the reply filed on 7/14/2026.
Consequently, claims 1-3, 5, and 8-18 are under consideration to the extent of the elected species, e.g. potassium peroxydisulfate (oxidizing agent), trisodium methyl glycine diacetate (complexing agent), arginine (amino acid), potassium salt of stearic acid (alkali metal or alkaline earth metal salt of C12-C24 monocarboxylic acid), succinic acid (dicarboxylic acid), and magnesium hydroxide carbonates (inorganic alkalizing agent).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-3, 5, 8-13, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Anderheggen et al. (US20170340549A1, published 11/30/2017) in view of Manneck et al. (US20170165161A1, published 6/15/2017) and Lim et al. (US6835213B2, published 12/28/2004).
Note: The terms peroxosulfuric and peroxysulfuric are understood to be synonymous. The terms trisodium methyl glycine diacetate and trisodium dicarboxymethyl alaninate are understood to be synonymous. The terms complexing agent and chelating agent are understood to be synonymous.
Anderheggen teaches a blonding agent and method of gentle oxidative hair lightening, wherein the blonding agent is a powder that comprises at least one oxidizing agent, at least one dicarboxylic acid having 2 to 10 carbon atoms, at least one amino acid, and water (specifically 0 to 8 wt. %) (see claim 1). Further, the invention relates to a kit of parts for lightening keratin fibers comprising a blonding powder and a separate oxidizing agent preparation (par. [0001]). Anderheggen teaches that the first essential component comprises at least one oxidizing agent, selected from the group including inorganic salts of a peroxosulfuric acid (par. [0023]). Peroxosulfuric acids are understood to mean either peroxodisulfuric acid and peroxomonosulfuric acid (par. [0025]). The disclosure continues to name potassium peroxodisulfate as a preferred embodiment (par. [0026]) (cf. claim 1a and 3). This oxidizing agent is present in a total amount of 5 to 85 wt. % based on the weight of the powder composition (par. [0027]) (cf. claim 2). Anderheggen continues to exemplify the second essential component of at least one dicarboxylic acid having 2 to 10 carbon atoms, and states that this component is preferably selected from the group including succininc acid (par. [0028]) and further that succinic acid is one such acid that is particularly preferred (par. [0030]) (cf. claim 17). A third essential component of the disclosure is at least one amino acid, said amino acid being selected from the group including arginine (par. [0068]) and present in an amount of 0.1 to 7 wt. % converted to the mass of free amino acid (par. [0069]) (cf. claim 1c, and 10-12) (In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Of note is the disclosure that a succinic acid and arginine combination in the composition is “exceptionally preferred” (par. [0070]). The powder according to the invention also has a low water content as a fourth and final requisite ingredient for the composition, stated to be 0 to 8 wt. % (par. [0074]) (cf. claim 1e). As these are the only required components of the composition, the composition can be said to be free of polymer that comprises acrylic acid, acrylic acid amides, acrylic acid esters, methacrylic acid, methacrylic acid amides, and/or methacrylic esters as monomers (See AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (“[A] reference need not state a feature’s absence in order to disclose a negative limitation.”); Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1004–05 (Fed. Cir. 2009) (affirming finding that reference disclosed “uncoated” film where it did not describe the film as coated and did not suggest necessity of coatings)).
Additional elements may also be present in the composition, though they are not required according to the disclosure. One such element is sodium hexametaphosphate, which is included in one example of the composition in an amount of 0.2 wt. % (par. [0168]) (cf. claim 16). Another such element is an inorganic alkalizing agent that is solid at 20˚C and 1013 mbar, which is present in a total amount of 1 to 60 wt. % (par. [0076]). Particularly preferred agents are selected from the group including magnesium hydroxide carbonates (par. [0076]) (cf. claim 18).
However, while Anderheggen does teach optional inclusion of complexing agents in a total amount of 0.1 to 3 wt. %, Anderheggen does not teach the inclusion of trisodium methyl glycine diacetate (AKA trisodium dicarboxymethyl alaninate) in particular. Further, Anderheggen does not teach the inclusion of polyquaternium-4.
These deficiencies are made up for by the teachings of Manneck and Lim.
Manneck teaches an oxidizing composition for coloring or blonding hair, as well as a method for said coloring or blonding (abstract). This composition comprises at least one dicarboxylic acid having 2 to 10 carbon atoms the salt of said acid, at least one amino acid, hydrogen peroxide, and water. Manneck teaches that said dicarboxylic acid may be selected from the group including succinic acid (par. [0079]) and said amino acid may be selected from the group including arginine (par. [0086]). Manneck teaches that the effect of the invention “can be enhanced when the oxidative treatment agent comprises at least one chelating agent” (par. [0101]). This agent is selected from the group including trisodium dicarboxymethyl alaninate (par. [0102]) in an amount of 0.01 to 2.5 wt. % (par. [0104]) (cf. claim 1b, 5, 8-9). Also included in this group is sodium hexametaphosphate, which could be included alongside said trisodium dicarboxymethyl alaninate, wherein the total amount of agent comprising sodium hexametaphosphate is 0.01 to 2.5 wt. % (par. [0102] and [0104]) (cf. claim 16). One example demonstrates the inclusion of sodium hexamethaphosphate in 0.20 wt. % (par. [0320]).
Lim teaches compositions for oxidative hair coloring comprising novel compounds as self-coupling intermediates or couplers or with other couplers and with additional intermediates in combination with one or more oxidizing agents (col. 1 lines 6-12). Lim teaches that an oxidative hair coloring composition such as this benefits from other additive ingredients (col. 9 lines 29-34). One such additional ingredient is a conditioner to promote the health and overall look of hair, and names polyquaternium-4 as one such conditioner ingredient (col. 11 line 25) (cf. claim 1d). Lim continues to disclose that conditioners, such as polyquaternium-4, are present in the composition from about 0.01 to about 5 wt. % of the composition (col. 11 lines 34-36) (cf. claim 13).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to produce an oxidative hair treatment comprising an oxidizing agent of potassium peroxysulfuric acid in 5-85 wt. %, a complexing agent of trisodium methyl glycine diacetate in 0.01-2.5 wt. %, an amino acid of arginine in 0.1-7 wt. %, a dicarboxylic acid of succinic acid in 0.03-7 wt. %, a conditioner of polyquaternium-4 in 0.01-5 wt. %, and water in 0 to 8 wt. %, as taught by Anderheggen modified by Manneck and Lim (cf. claim 1). As Anderheggen teaches, the oxidative hair treatment would comprise the four requisite components of potassium peroxysulfuric acid as oxidizing agent, succinic acid as the dicarboxylic acid, arginine as the amino acid, and water. Anderheggen also teaches the inclusion of complexing or chelating agents. It would have been obvious to substitute trisodium methyl glycine diacetate (AKA trisodium dicarboxymethyl alaninate) as the complexing/chelating agent as taught by Manneck into the composition as taught by Anderheggen One would be motivated to include said chelating agent as Manneck teaches that the overall invention can be enhanced when a chelating agent is included (par. [0101]). Further, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)). The inclusion of polyquaternium-4 as suggested by Lim in the capacity as a conditioner would have been obvious as well. Lim teaches that a conditioner would have a beneficial effect on the hair being treated by the oxidative hair treatment, so it would have been obvious to take this beneficial ingredient that is known to be effective in oxidative hair treatments and apply it to the teachings of Anderheggen. The resulting composition would comprise all the requisite components of the instant oxidative hair treatment. One would have reasonable expectation of success when combining these teachings, as they all relate to oxidative hair treatments wherein the composition is for coloration or dyeing of hair, and, further, share several of the same ingredients.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention, as evidenced by the references.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Anderheggen (US20170340549A1, published 11/30/2017), Manneck (US20170165161A1, published 6/15/2017), and Lim (US6835213B2, published 12/28/2004) as applied to claims 1-3, 5, 8-13, and 16-18 above, and further in view of Narasimhan et al. (US7189386B2, published 3/13/2007).
Note: The terms potassium peroxydisulfate and potassium persulfate are understood to be synonymous.
Anderheggen, Manneck, and Lim have been described supra.
However, Anderheggen, Manneck, nor Lim teach the inclusion of the potassium salt of stearic acid (i.e., potassium stearate).
This deficiency is made up for by the teachings of Narasimhan.
Narasimhan teaches a method and composition for bleaching hair, wherein the hair bleach mixture is obtained by combining an aqueous oxidizing agent composition and a persulfate composition comprising at least one hydrophobically modified particulate (abstract). This hydrophobically modified particulate is included in an effort to reduce migration and diffusion of the bleach mixture to hair that was not intended for the mixture (col. 2 lines 29-30). Narasimhan teaches that adding this hydrophobically modified particulate results in a more professional look (col. 2 lines 25-26). Narasimhan teaches that the bleach mixture is designed to be mixed from two separate compositions via a kit for bleaching or highlighting hair comprising 1) an aqueous oxidizing agent composition and 2) a persulfate bleach composition containing at least one hydrophobically modified particulate as the two required components, along with 3) an optional bleach oil composition (col. 2 lines 43-48). It is taught that the second component of a persulfate bleach composition comprises an oxidizing agent such as potassium persulfate (i.e. potassium peroxydisulfate) (col. 6 lines 57-58). This composition also further comprises an alkalizing agent, including magnesium salts of inorganic or organic acids (col. 7 lines 4-5). The composition also comprises a particulate filler in an amount of 5 to 60 wt. %, which is the key inventive concept of the disclosure. As described supra, Narasimhan teaches that this filler prevents migration of the overall composition. A variety of suitable fillers are presented in the disclosure, including soaps and alkyl sulfates (col. 8 line 30). Potassium stearate is included in the examples of such components (col. 8 line 36).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to apply the teachings of Narasimhan to the teachings of Anderheggen, Manneck, and Lim to develop a composition of an oxidative hair treatment comprising an oxidizing agent of potassium peroxysulfuric acid in 5-85 wt. %, a complexing agent of trisodium methyl glycine diacetate in 0.01-2.5 wt. %, an amino acid of arginine in 0.1-7 wt. %, a dicarboxylic acid of succinic acid in 0.03-7 wt. %, a conditioner of polyquaternium-4 in 0.01-5 wt. %, and water in 0 to 8 wt. %, as taught by Anderheggen modified by Manneck and Lim, further comprising potassium stearate in 5-60 wt. %. One would reasonably be motivated to apply these teachings as it imparts a benefit of reduced migration, and effectively, a more professional look as described supra. As the oxidizing agent as taught by Narasimhan is the same (i.e. potassium persulfate), one would have reasonable expectation of success to include a particulate filler such as potassium stearate to impart the benefit of reduced migration of bleach mixture in the composition as taught by Anderheggen, Manneck, and Lim. The resultant composition is therefore obvious, and reflective of the instant claims.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention, as evidenced by the references.
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 1-3, 5, and 8-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10 of U.S. Patent No. 11,033,477 B2 in view of Manneck (US20170165161A1, published 6/15/2017), Lim (US6835213B2, published 12/28/2004), and Narasimhan et al. (US7189386B2, published 3/13/2007).
Instant claims 1-3, 5, and 8-18 recite an oxidative hair treatment comprising an oxidizing agent of potassium peroxydisulfate in 5 to 85 wt. %, a complexing agent of trisodium methyl glycine diacetate in 1.0 to 2.0 wt. %, an amino acid of arginine in 0.1 to 3.0 wt. %, polyquaternium-4 in 0.01 to 3.0 wt. %, and 0.1 to 10 wt. % water. Further, the composition comprises potassium stearate in 0.05 to 1 wt. %, sodium hexametaphosphate in 0.05 to 0.5 wt. %, succinic acid in 0.2 to 4.0 wt. %, and magnesium hydroxide carbonates in 0.1 to 50 wt. %.
Claims 1-5, 7-8 and 10 of U.S. Patent No. 11,033,477 B2 recite a blonding agent and method of gentle oxidative hair lightening, wherein the blonding agent is a powder that comprises at least one oxidizing agent such as potassium peroxydisulfate in an amount of 5 to 85 wt. %, at least one dicarboxylic acid having 2 to 10 carbon atoms such as succinic acid in an amount of 0.03 to 7 wt. %, at least one amino acid such as arginine in an amount of 0.1 to 7 wt. %, and water in 0 to 8 wt. %. Further, the composition comprises an inorganic alkalizing agent such as magnesium hydroxide carbonates in an amount of 1 to 60 wt. %, and a complexing (AKA chelating) agent in an amount of 0.1 to 3 wt. %. Sodium hexametaphosphate may also be present in the composition in an amount of 0.20 wt. % as in formulation 1.2.
However, ‘477 does not recite the inclusion of trisodium methyl glycine diacetate (AKA trisodium dicarboxymethyl alaninate) as the complexing agent in the amount 0.1 to 3 wt. %, polyquaternium-4 in 0.01 to 3.0 wt. %, or potassium stearate in 0.05 to 1 wt. %.
These deficiencies are made up for by the teachings of Manneck, Lim, and Narasimhan.
Manneck, Lim, and Narasimhan have been described supra.
Instant claims 1-3, 5, and 8-18 are obvious variants of claims 1-5 of the ‘477 patent because it would have been prima facie obvious to one of ordinary skill in the art to include trisodium methyl glycine diacetate (AKA trisodium dicarboxymethyl alaninate) as described by Manneck. The inclusion would be motivated by the teaching that its inclusion results in an enhanced effect of the invention in its use as a hair lightener. One would have a reasonable expectation of success as Anderheggen already suggests the inclusion of a chelating agent, and the composition as taught by Anderheggen and Manneck share several of the same ingredients, suggesting that modification with a chelating agent such as trisodium methyl glycine diacetate would be successful and beneficial. Further, it would have been obvious to include polyquaternium-4 as suggested by Lim. One would be motivated to do so as Lim suggests its inclusion as a conditioning agent, which results in a healthier appearance of hair as a beneficial effect. One would have a reasonable expectation of success in doing so as Lim teaches oxidative hair treatments that align in use with the present invention. Finally, it would have been obvious to include potassium stearate as taught by Narasimhan, as this is taught to be included in hair treatments to improve the resulting look and appear more professional. One would have reasonable expectation of success as both compositions share ingredients and align in use.
The instant claims are patentably indistinct from the claims as outlined in Pat. ‘477 as the inventive concept of a hair treatment composition comprising potassium peroxydisulfate, trisodium methyl glycine diacetate, arginine, succinic acid, and potassium stearate is the same between the instant case and the patented case in view of Manneck, Lim, and Narasimhan.
Claims 1-3, 5, and 8-18 are directed to an invention not patentably distinct from claims 1-5, 7-8, and 10 of commonly assigned U.S. Patent No. 11,033,477 B2 . Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent No. 11,033,477 B2 , discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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