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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites the limitation "rinsed out again after an exposure time” although there is no other rinsing step in the claim. The claim is vague and indefinite as it is not clear if there should be another rinsing step or the claim is incomplete.
Claim 20 is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: an oxidation step with at least one oxidizing agent.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-6, 9-13, 16-18 and 20 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Monda et al. (US 12485076 B2, filed on December 24, 2019, US Equivalent of EP 394316, cited in IDS) (“Monda” hereunder) as evidenced by Sendyureva et al. (CN 117982355 A, published May 7, 2024) (“Sendyureva” hereunder).
Monda Table 10 discloses an oxidative dye formulation od-D comprising (a) developer-type oxidation dye precursors, which include p-phenylenediamine group (e.g., n-phenyl-p-phenylenediamine, etc) ; (b) coupler-type oxidation dye precursors, which include pyridines (e.g., 2,6-diaminopyridine,etc); and (c) isatin (2,3-indolien dione). 0.1 mass%. See present claims 1, 12 and 13; Sendyureva, translation, p. 8, last two paragraphs.
Regarding claims 4-6, the at least one developer-type dye precursor (a) in Table 10 includes N-phenyl-p-phenylenediamine, 2-Chloro-p-phenylenediamine, Methylimidazolium propyl p-phenylenediamine, 2,5,6-Triamino-4-pyrimidinol, Hydroxyethylamino pyrazolopyridine and 6-amino-m-cresol, which make up at 0.48 mass% of the dye agent.
Regarding claims 9 and 10, the at least one coupler-type dye precursor (b) includes the remaining components other than isatin (2,3-Indoline dione) make up 0.58 mass % of the composition.
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Regarding claim 11, no resorcinol-type precursor is present in Monda, Table 10.
Regarding claims 16 and 17, Formulation Example 13, in Table 18 of Monda, contains the combination of First part (Formulation ex I-A), Oxidation dye (For ex od-D), second part (For ex II-A) and Third part (For ex III-A). Since the second part, Formulation Example II-A in Table 12 contains 6 mass% of hydrogen peroxide, and the first, second and third parts are mixed at a mixing ratio of 1:1:0.2, see col. 23, lines 49-54, the mass% of the oxidation agent in Formulation Example 13 is about 2.73 % (6.0/220 ).
Regarding claim 18, since applicants include only nonionic fatty compounds in the meaning of the term “fatty components”, see published application, [0142], oleyl alcohol 5 %, lauramide DEA 10%, isostearyl glyceryl 10 %, and octyldodeceth-20 7 wt % in the first part composition and cetearyl alcohol 1.7% in the second composition should be accounted in the 220g of the total weight of Formulation Example 13. Thus, the total relative mass % of the nonionic fatty components is 15.32 % and meets the present limitation.
Regarding claim 20, the method of applying the dye composition of claim 1 is disclosed in [Method for Use]. See col.11, lines 10 – 40.
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.
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 2, 3, 7, 8, 14, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable Monda and Sendyureva as applied to claims 1, 4-6, 9-13, 16-18 and 20 as above, and further in view of Monda.
Regarding claims 2, 3, 7 and 8, although the oxidative dye formulation in Table 10 does not teach the specific precursors of the claims, Monda teaches these are well known oxidative dyes in the art. For example, N,N-bis-(2-hydroxyethyl)-p-phenylene diamine (Table 7), p-aminophenol (Table 9), 1-naphthol (Table7), etc are mentioned as suitable oxidative dyes; one of ordinary skill in the art before the effective filing date would have been motivated modify the teachings of Monda and use such known dyes to make a dye composition which impart a targeted shade, tone and color.
Regarding claims 14 and 15, the weight ratio of all of the developers of group (a) to the isatin (c) contained in the agent is 0.48: 0.1, or 4.8:1. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, Monda teaches that the amount of the oxidation dye precursors in the liquid mixture is most preferably in the range of 0.01 -2 mass%, and the amount should be based on the “viewpoint of obtaining a sufficient hair dyeability.” See col. 12, lines 54- 61. Although the reference does not specifically teach the presently claimed weight ratio of developer type precursors to isatin, it is viewed that manipulating the amount of color developers to obtain desired color, shade and tone would have been well within the skill in the art.
Regarding claim 19, although there is no specific mention of a multi-component packaging unit for containing the dye formulations and the oxidation composition, the reference teaches making and keeping these formulations separately until the time of use, thus storing and keeping the products together for convenience would have been prima facie obvious. See col. 11, lines 20-62.
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.
U.S. Patent No. 12667531 B1
Claims 1-16, 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12667531 B1.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets are disclosed to an oxidative hair dyeing agent comprising (a) at least one oxidation dye precursor, (b) at least one oxidation dye precursor of the coupler type and (c) isatin. Reference claim 1 discloses a multicomponent packaging kit unit comprising the dyeing agent of present claim 1. See also claim 19.
Regarding claims 2, 3, 7 and 8, the specific compounds of the developer (a) and coupler (b) are disclosed in reference claim 1.
Regarding claims 4 -6, the amount of the at least one oxidation type precursor of the developer type (a) is disclosed in reference claims 2 and 3.
Regarding claims 9-11, the ranges of the amount of the at least one coupler type oxidation type precursor (b) are disclosed in reference claims 11-13.
Regarding claims 12-13, the amount of isatin in the agent is disclosed in reference claims 4 and 5.
Regarding claims 14-15, the weight ratio of all developers of group (a) to the isatin (c) in the agent is disclosed in reference claims 6 and 7.
Regarding claim 16, reference claim 1 discloses a second container containing an oxidizing agent composition comprising at least one oxidizing agent selected from hydrogen peroxide and its addition products to organic or inorganic compounds.
Regarding claim 18, reference claim 15 teaches that fatty components are present in the dyeing agent in the amount of less than 25 wt %.
U.S. Patent No. 12667530 B1
Claims 1-16, 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12667530 B1.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets are disclosed to an oxidative hair dyeing agent comprising, (a) at least one oxidation dye precursor of developer type, (b) at least one oxidation dye precursor of the coupler type and (c) isatin. Reference claim 1 discloses a multicomponent packaging kit unit comprising the dyeing agent of present claim 1. See also present claim 19.
Regarding claims 2, 3, 7 and 8, the specific compounds of the developer (a) and coupler (b) are disclosed in reference claims 1, 2 and 13.
Regarding claims 4 -6, the amount of the at least one oxidation type precursor of the developer type (a) is disclosed in reference claims 3-5.
Regarding claims 9-11, the amount of the at least one coupler type oxidation type precursor (b) is disclosed in reference claims 14-15.
Regarding claims 12-13, the amount of isatin in the agent is disclosed in reference claims 6-8.
Regarding claims 14-15, the weight ratio of all developers of group (a) to the isatin (c) in the agent is disclosed in reference claims 9 and 10.
Regarding claim 16, reference claim 1 discloses a second container containing an oxidizing agent composition comprising at least one oxidizing agent selected from hydrogen peroxide and its addition products to organic or inorganic compounds.
Regarding claim 18, reference claim 17 teaches that fatty components are present in the dyeing agent in the amount of less than 25 wt %.
U.S. Patent No. 12622856 B1
Claims 1-13 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12622856 B1.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets are disclosed to an agent for oxidatively dyeing keratinous fibers, the agent comprising (a) at least one oxidation dye precursor of developer type, (b) at least one oxidation dye precursor of the coupler type and (c) isatin. See reference claims 1 and 8; present claim 1.
Regarding claims 2, 3, 7 and 8, the specific compounds of the developer (a) and coupler (b) are disclosed in reference claims 1, 8 and 11.
Regarding claims 4 -6, the amount of the at least one oxidation type precursor of the developer type (a) is disclosed in reference claims 9 and 10.
Regarding claims 9-11, the amount of the at least one coupler type oxidation type precursor (b) is disclosed in reference claims 12 and 13.
Regarding claims 12-13, the amount of isatin in the agent is disclosed in reference claims 2 and 3.
Regarding claim 16, reference claim 14 teaches adding into the composition at least one oxidizing agent composition comprising at least one oxidizing agent selected from hydrogen peroxide and its addition products to organic or inorganic compounds.
Conclusion
No claims are allowed.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
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