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 1-10, 13-17, and 19-23 are pending.
Priority
Receipt is acknowledged of certified copies of paper required by 37 CFR 1.55.
Restriction/Elections
Applicant’s election with traverse of Group I (claims 1-10, 13-17, and 20-23) in the reply filed 7/2/2026 is acknowledged. Applicant’s species election with traverse of i) hydrogen peroxide (oxidizing agent) ii) caffeine (formula (I) compound) iii) high-density polyethylene (polymeric material) iv) SiOx-Layer (barrier layer) v) through-hole (fastening means) vi) cetearyl alcohol (lipophilic compound) and vii) an aqueous composition B having a pH range of 7 to 12 and comprising one or more oxidative dye precursors and/or oxidative dye couplers (additional composition for kit-of-parts) in the reply filed 7/2/2026 is acknowledged.
The traversal is on the grounds that unity of invention does exist between groups I and II. Further, Applicant argues that there is no serious search burden. Applicant argues that the presently claimed composition of group I is ties to the presently claimed process of making said composition of group II via the makeup of the cosmetic composition. Applicant argues that, when taken as a whole, the composition and its ingredients make a contribution over the prior art.
This is not found persuasive, as the prior art suggests the claimed composition. As set forth in the restriction requirement mailed 5/6/2026, Applicant’s special technical feature is a cosmetic product comprising a flexible container and an aqueous oxidizing composition A contained in the flexible container. However, Nowottny et al. in view of Gassenmeier et al. reads on the claim, as explained in the restriction requirement mailed 5/6/2026 and described below. Hence, there is no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept. Applicant is reminded that search burden is not relevant to unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made with traverse in the reply filed 7/2/2026.
Claims 1-10, 13-17, and 20-23 are under consideration to the extent of the elected species recited supra.
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 9 and 13-14 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 9 recites the limitation “the dispensing means” in lines 4-8. There is insufficient antecedent basis for this limitation in the claim. In claim 9, line 3 "one or more dispensing means" encompasses multiple dispensing means. It is unclear whether just one, more than one, or all of the dispensing means must meet the claim limitation. The following language is suggested, “…the one or more dispensing means having an inner end and an outer end with respect to an outside of the flexible container, the one or more dispending means being fixed by a wall of the flexible container such that the inner end of the one or more dispensing means lies within the flexible container and contacts the aqueous oxidizing composition A when the flexible container is tilted or turned upside down, and the outer end of the one or more dispensing means extends outside of the flexible container.”
Claim 13 recites the limitation “the dispensing means” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. In claim 9, which claim 13 depends, “one or more dispensing means” encompasses multiple dispensing means. It is unclear whether just one, more than one, or all of the dispensing means must meet the claim limitation. The following language is suggested, “… the one or more dispensing means comprises an actuator configured to open the one or more dispensing means for dispensing aqueous oxidizing composition A upon a user’s request.”
Claim 14 recites the limitation “the oxidizing agent” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. In claim 1, which claim 14 depends, “one or more oxidizing agents” encompasses multiple oxidizing agents. It is unclear whether just one, more than one, or all of the oxidizing agents must meet the claim limitation. The following language is suggested, “… a concentration of the one or more oxidizing agents in the aqueous oxidizing composition A….”
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 1-9, 13-17, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nowottny et al. (US20200297593A1, published 9/24/2020) in view of Gassenmeier et al. (WO2009053180A1, published 4/30/2009) and Cox et al. (US20150122840A1, published 7/4/2017).
Nowottny teaches a cosmetic product for modifying the natural color of keratinous fibers comprising a packaging material and a cosmetic composition contained in said packaging (abstract). Nowottny teaches that this packaging is made from at least two polymer layers and at least one barrier layer (abstract). The composition includes at least one oxidizing compound, at least one C8-C30 alcohol, and at least one non-ionic surfactant (abstract). Nowottny continues to state that the packaging should also be made of a flexible material (par. [0036]), resulting in a flexible container. This packaging as described by Nowottny is preferably in the form of a sachet, which is a small packaging in pocket of bag form (par. [0033]). It is interpreted that this is a synonym for pouch. Nowottny continues to teach that the pouch described may comprise at least one first polymer layer, at least one second polymer layer, and at least one barrier layer (par. [0035]). This barrier layer is taught to be formed from a polyester provided with a SiOx layer (par. [0057]). Nowottny teaches that, in total, the multilayer packaging has a total thickness of from about 28 micrometers to about 220 micrometers (par. [0036]). Nowottny also describes the composition contained in said packaging, as described supra. Nowottny teaches that the at least one oxidizing compound may be hydrogen peroxide, and is present in an amount from about 0.5 to about 20 wt. % based on the total weight of the cosmetic composition (par. [0086]). The composition has a pH value from about 1.5 to about 5.0 (par. [0104]). The composition further comprises at least one C8-C30 alcohol, and Nowottny discloses cetearyl alcohol as being “particularly advantageous” (par. [0088]). The inclusion of this component stabilizes the hydrogen peroxide in the composition (par. [0088]).
Nowottny continues to disclose a “preparation (B)” which is intended to be used in conjunction with the previously described composition (par. [0133]). This preparation B contains at least one oxidation dye precursor (par. [0135]), and has a preferable pH value between about 7 and 11 (par. [0140]).
However, Nowottny does not teach the inclusion of xanthine derivatives such as caffeine, nor does Nowottny teach high-density polyethylene (HDPE) as a material used for the packaging or a dispensing means comprising an actuator.
These deficiencies are made up for by the teachings of Gassenmeier and Cox.
Gassenmeier teaches a cosmetic agent comprising a cosmetically acceptable carrier, a purine and/or purine derivative, and hydrogen peroxide with the purpose of permanent deformation of keratin fibers, particularly human hair (abstract). Gassenmeier teaches that the inclusion of these derivatives brings about marked improvement in corrugation performance and resistance of the deformation result of treatment (pg. 3). Gassenmeier teaches that caffeine is one such derivative (pg. 5). Gassenmeier further describes the amount of caffeine present in the overall composition as being 0.03 to 10 wt. % (pg. 4).
Cox teaches self-supporting flexible containers with a valve mechanism to facilitate fluid dispensing (abstract). Cox states that these flexible containers may be useful for a variety of applications, including for human hair as a hair dye or colorant (par. [0228]). Cox teaches that the container comprises a bottom, middle, and top portion, where the bottom portion supports the rest of the body of the flexible container by resting on a horizontal support surface (par. [0127]). The underside of the package that rests on the horizontal surface is also shown to be flat (see Fig. 1D and par. [0127]). Cox continues to disclose that the self-supporting flexible container is in the form of a pouch or sachet (par. [0204]) and may comprise thermoplastic polymers as their main component, naming high density polyethylene as one such polymer (par. [0143]). Cox teaches that the polymeric material may also be layered (par. [0153]) and states that these layers may be made of HDPE (par. [0158]). Cox states that the container also comprises a valve for the release of the fluid contained inside the flexible container as a dispensing means (abstract). This valve has an “inlet” which is in direct contact with the fluid contained inside the container and an “outlet” for release outside of the container (par. [0181] and [0193]). This valve is flexible and is closed when below a critical squeeze force and open when the squeeze pressure is great enough to allow the valve to open and the fluid to be released (par. [0013]). The valve in this scenario acts as a dispensing means that also acts as an actuator, dispensing only when squeezed by a user.
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 Gassenmeier and Cox to the teachings of Nowottny. As Nowottny and Gassenmeier both relate to a hair treatment composition, and Gassenmeier discloses the benefit of adding a compound such as caffeine to the composition, it would have been obvious to include caffeine (motivated by the benefit it imparts as described supra) in a composition as taught by Nowottny, said composition being in the flexible container as taught by Nowottny. This flexible container could be modified by the teachings of Cox. As Cox also teaches a flexible container in the form of a sachet that may be useful in hair treatments, which is similar to Nowottny, the two references align in their art. The container as taught by Cox would also impart the benefit of greater control of fluid extrusion from the container, as the valve acts as an actuator to control to release of the composition from the container.
Applying the teachings of Gassenmeier and Cox to the teachings of Nowottny would result in a hair composition comprising hydrogen peroxide and caffeine (motivated by the benefit of caffeine outlined by Gassenmeier) with a pH of 1.5 to 5.0 contained in a valved flexible pouch comprising HDPE as the main polymer as taught by Cox with a SiOx barrier layer as taught by Nowottny. This composition in the described container reads on instant claim 1. Therefore, claim 1 is rejected.
Regarding claim 2, the flexible container would comprise HDPE (a thermoplastic polymer) and is in the form of a sachet. This is interpreted as a synonym for pouch. Therefore, claim 2 is rejected.
Regarding claim 3, Cox teaches a bottom portion, middle portion, and top portion of the container, wherein the container is made of HDPE. Therefore, claim 3 is rejected.
Regarding claim 4, Cox describes that the bottom portion of container rests on a horizontal support surface. This bottom portion “lies in a plane defined by the horizontal support surface” and is flat against the support surface with an “effective base contact area” (par. 0127). Therefore, claim 4 is rejected.
Regarding claim 5, Cox teaches that the container may be made of HDPE. Therefore, claim 5 is rejected.
Regarding claim 6, Nowottny teaches packaging of at least two layers with a SiOx barrier layer between the two. Applying the teachings of Cox to Nowottny would result in two layers of HDPE with a SiOx barrier layer in between the two. Therefore, claim 6 is rejected.
Regarding claim 7, Nowottny teaches the use of a SiOx barrier layer in the packaging. Therefore, claim 7 is rejected.
Regarding claim 8, Nowottny teaches the thickness of the container wall, stating that it is between 28 and 220 micrometers as described supra. Therefore, claim 8 is rejected.
Regarding claim 9, Cox teaches a valve dispensing component positioned at the top of the container, allowing flow of the interior components out of the container into the exterior environment. Therefore, claim 9 is rejected.
Regarding claim 13, the valve as described by Cox requires a certain amount or squeeze pressure to open and allow flow of the interior composition out. In this manner, the valve acts as an actuator. Therefore, claim 13 is rejected.
Regarding claim 14, Nowottny teaches the amount of oxidizing agent (i.e. hydrogen peroxide) as 0.5 to 20 wt. %, as described supra. This is inclusive of what is claimed in instant claim 14. Therefore claim 14 is rejected.
Regarding claim 15, Gassenmeier teaches the inclusion of caffeine into a composition for hair treatment. Therefore, claim 15 is rejected.
Regarding claim 16, Gassenmeier teaches the inclusion of caffeine in 0.03 to 10 wt. % as described supra. This is inclusive of the range in the instant claim 16. Therefore, claim 16 is rejected.
Regarding claim 17, Nowottny teaches the inclusion of cetearyl alcohol and describes its advantageousness in the composition for stabilization of the oxidizing agent as described supra. Therefore, claim 17 is rejected.
Regarding claim 20, Nowottny teaches the use of “preparation B” as described supra, which comprises at least one oxidation dye precursor and has a pH range of about 7 to 11. Therefore, claim 20 is rejected.
Regarding claim 21, Nowottny teaches the oxidizing agent as hydrogen peroxide. Therefore, claim 21 is rejected.
Regarding claim 22, Nowottny teaches hydrogen peroxide in 0.5 to 20 wt. %. This includes the range as claimed by instant claim 22. Therefore, claim 22 is rejected.
Regarding claim 23, Gassenmeier teaches caffeine inclusion in 0.03 to 10 wt. % relative to the weight of the overall composition. This includes the range as claimed by instant claim 23. Therefore, claim 23 is rejected.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nowottny et al. (US20200297593A1, published 9/24/2020) in view of Gassenmeier et al. (WO2009053180A1, published 4/30/2009) and Cox et al. (US20150122840A1, published 7/4/2017) as applied to claims 1-9, 13-17, and 20-23 above, and further in view of Thomsen (US5067635A, published 11/26/1991).
Nowottny, Gassenmeier, and Cox have been described supra.
However, none of the previously described references teach a fastening means being a through-hole.
This deficiency is made up for by the teachings of Thomsen.
Thomsen teaches a dispenser pouch adapted to contain a liquid, wherein there is a valve at the lower end of the pouch to allow the dispensing of the fluid within (abstract). The pouch as described is particularly adapted for liquid soap, shampoo, and cosmetic products (col. 3 line 61). Thomsen further describes the pouch as having mounting holes in order to hang the pouch from a hook (col. 3 line 65-68). Thomsen states that this allows dispensing of the product with a single hand, making use easier (col. 3 line 68).
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 modify the flexible container with the teachings suggested by Thomsen. The inclusion of a through-hole as taught by Thomsen in a container as taught by Nowottny and Cox would have been obvious as it allows for hanging and use of the composition with one hand. Therefore, claim 10 is rejected.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before 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 1-10, 13-17, and 20-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-10 of U.S. Patent No. 11,737,959 in view of Cox et al. (US20150122840A1, published 7/4/2017) and Thomsen (US5067635A, published 11/26/1991).
Both the instant claim set and Pat. No. ‘959 comprise an aqueous oxidizing composition wherein the composition comprises hydrogen peroxide and caffeine. Further, both claim a supplemental dyeing composition comprising oxidative dye precursor(s) and/or couplers wherein the pH of this composition is in the range of 7 to 12.
The differences between No. ‘959 and the instant invention are that the instant invention requires a flexible container made of HDPE layers with a barrier SiOx layer in between, along with a dispensing means comprising an actuator. Further, there is no mention of a through-hole as a fastening means.
However, these deficiencies are rendered obvious over the teachings of Cox and Thomsen.
Cox and Thomsen have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to incorporate the flexible plastic pouch and valve as taught by Cox as a container for a composition as taught in Pat. No. ’959 as Cox teaches the container is useful for applications including human hair treatments. One would have been motivated to do so in view of the fact that the container as taught by Cox presents value as it can be less expensive to make, use less material, and can be easier to decorate compared to conventional rigid containers (par. [0012]). The inclusion of through-holes as suggested by Thomsen further allows easier use with one hand as described supra. Thus, it would have been obvious to combine the teachings of Cox and Thomsen with the composition as taught by No. ‘959, resulting in the instantly claimed invention.
Claims 1-10, 13-17, and 20-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 17-18, 22, and 31 of copending Application No. 17/773517 in view of Cox et al. (US20150122840A1, published 7/4/2017) and Thomsen (US5067635A, published 11/26/1991).
This is a provisional nonstatutory double patenting rejection since the conflicting claims have not yet been patented.
Both the instant claim set and App. ‘517 comprise an aqueous oxidizing composition wherein the composition comprises hydrogen peroxide and caffeine. Further, both claim a supplemental dyeing composition comprising oxidative dye precursor(s) and/or couplers wherein the pH of this composition is in the range of 7 to 12.
The differences between App. ‘517 and the instant invention are that the instant invention requires a flexible container made of HDPE layers with a barrier SiOx layer in between, along with a dispensing means comprising an actuator. Further, there is no mention of a through-hole as a fastening means.
However, these deficiencies are rendered obvious over the teachings of Cox and Thomsen.
Cox and Thomsen have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to incorporate the flexible plastic pouch and valve as taught by Cox as a container for a composition as taught in App. ’517 as Cox teaches the container is useful for applications including human hair treatments. One would have been motivated to do so in view of the fact that the container as taught by Cox presents value as it can be less expensive to make, use less material, and can be easier to decorate compared to conventional rigid containers (par. [0012]). The inclusion of through-holes as suggested by Thomsen further allows easier use with one hand as described supra. Thus, it would have been obvious to combine the teachings of Cox and Thomsen with the composition as taught by App. ‘517, resulting in the instantly claimed invention.
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
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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