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 .
Status of Application
Receipt of the Preliminary amendment dated September 26, 2024 is acknowledged.
Claims 74-93 are pending in this application.
Claims 1-73 have been cancelled.
Claims 74-93 are new.
All pending claims are under examination in this application.
Information Disclosure Statement
Receipt of the Information Disclosure Statement filed on May 5, 2025 is acknowledged. A signed copy is attached to this office action.
Claim Rejections - 35 USC § 102
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.
Claims 74-77, 79-87, and 88 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tan et al. (US 2012/0325252).
Tan discloses a composition for lifting color and/or imparting shine onto keratinous substrates comprising:
At least one fatty monoamine compound (component d);
At least one nonionic surfactant (component b);
At least one anionic silicone (component c); and
At least one oxidizing agent. The at least one oxidizing agent can be hydrogen peroxide (component a) (paragraphs 0064-0068).
The composition may optionally contain at least one thickening agent (component e), at least one alkaline agent, at least one fatty substances other than the fatty acid, and at least one salt (abstract).
It is noted components f-h are optional according to claim 74.
The composition can comprise cosmetically medium, such as water or a mixture of water and at least one cosmetically acceptable organic solvent (paragraph 0234).
The pH of the composition can range from about 2 to about 12 (paragraph 0103). When the pH of the ready-to-use composition is at least 7, lift or lightening of the color of keratinous substrates and/or shine on keratinous substrates is achieved when the composition is applied onto the keratinous substrates. Conversely, when the pH of the ready-to-use composition is below 7, only shine on keratinous substrates may be achieved (paragraph 0104).
After a resting time on the keratinous substrates, for example, ranging from about 1 to 60 minutes, the keratinous substrates are rinsed, optionally washed with shampoo and rinsed again, then dried (paragraph 0241).
Since the prior art discloses the same composition, it would necessarily have the same properties, including stability. Applicant’s attention is directed to MPEP 2112.01 II discloses products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Thickening agents including polymeric and non-polymeric thickeners in the amounts of from greater than 0% to about 15% by weight, based on the total weight of the composition (paragraphs 0069-0072).
Regarding claim 75, the hydrogen peroxide is present in the 0.05 to about 40% by weight, based on the total weight of the composition (paragraph 0068).
Regarding claim 76, the nonionic surfactant will typically be present in the composition in an amount of from about 0.1% to about 70% by weight, based on the total weight of the composition (paragraph 0035).
Regarding claim 77, examples of the nonionic surfactant include ethoxylated fatty alcohols (paragraph 0028).
Regarding claim 79, the at least one anionic silicone is used in the present composition in an amount of from about 0.5% to about 40% by weight, based on the total weight of the composition (paragraph 0063).
Regarding claim 80, examples of the silicone include dimethicone (paragraph 0062).
Regarding claim 81, the at least one fatty monoamine compound is used in an amount of from about 0.1% to about 20% by weight, based on the total weight of the composition (paragraph 0024).
Regarding claim 82, additional fatty substances, such as vegetable oils can be included (paragraph 0109).
Regarding claim 83, cationic polymers, including quaternary ammonium polymers can be added (paragraph 0174-0232).
Regarding claim 84, the cationic polymer is generally present in an amount of from greater than 0% to about 15%, based on the total weight of the composition (paragraph 0233).
Regarding claim 85, organic amines are chosen from amino acids. As non-limiting examples, the amino acids that may be used may be of natural or synthetic origin, in L, D, or racemic form, and comprise at least one acid function chosen from, for instance, carboxylic acid, sulfonic acid, phosphonic acid, and phosphoric acid functions (paragraph 0082-0083).
Regarding claim 86, sulfates and dyes are not disclosed as required components.
Regarding claim 87, as noted above, the pH of the composition can range from about 2 to about 12 (paragraph 0103).
Regarding claim 89, as noted above, the composition can comprise cosmetically medium, such as water or a mixture of water and at least one cosmetically acceptable organic solvent (paragraph 0234).
Tan, therefore, anticipates the rejected claims.
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 74-77 and 79-93 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (US 2012/0325252) in view of Rughani et al. (FR 3 134 719).
The teachings of Tan are discussed above.
Tan does not disclose the use of carbomer.
Rughani discloses compositions for treating hair before, during and/or after the hair has been subjected to a color changing process (abstract).
The composition can comprise thickening agents, including carbomers. The thickening agent can be present in the amount of about 0.01% to about 10% by weight of the total weight of the composition.
Regarding claim 88, the claim recites a combination of claims: 74-76, 79, and 82, as taught by Tan as discussed above and carbomer as taught by Rughani.
Regarding claim 90, hair treatment compositions can be adjusted to desired consistency and viscosity by the addition of oils and thickening agents. Therefore, since Tan and Rughani both disclose said additions, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have prepared a hair care formulation within the claimed viscosity. Applicant is reminded that where the general conditions of the claims are met, burden is shifted to applicant to provide a patentable distinction. Where 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 454 105 USPQ 233,235 (CCPA 1955).
Regarding claim 91, the claim recites a combination of claims 74-77, 79, and 86 as taught by Tan as discussed above and carbomer as taught by Rughani.
Regarding claim 92, the claim recites a combination of claims 74-75, 79-80, 82, 85, as taught by Tan as discussed above and carbomer as taught by Rughani. Additionally, additives that can be used, non-limiting mentions can be made of surfactants, antioxidants or reducing agents, penetrating agents, sequestering agents, perfumes, buffers, dispersants, conditioners, such as for example volatile or non-volatile, modified or unmodified silicones, film-forming agents, ceramides, preservatives, opacifiers, and antistatic agents (paragraph 0238).
Regarding claim 93, as noted above, the compositions is to be rinsed from the hair.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have used carbomer as the thickening agent as taught by Rughani in the method of Tan since polymeric thickening agents can be incorporated into the composition and carbomers are routinely incorporated into cosmetic formulations.
Claim 78 is rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (US 2012/0325252) as applied to claims 74-77, 79-87 and 88 above, and further in view of Grollier et al. (US 4,673,568).
The teachings of Tan are discussed above. Tan does not disclose including a cationic surfactant to the hair care composition.
Grollier discloses hair care compositions and hair treatment processes. This composition is a shampoo, a rinsed or non-rinsed lotion, a restructuring composition or a composition for blow-drying, or a composition for permanent-waving, which are in the form of dispersion, gel, or foam (abstract).
It is well known that hair is generally sensitized in various degrees by the action of atmospheric agents and by the action of treatments such as bleaching, permanent-waving and/or dyeing, with the result that hair is frequently difficult to disentangle and to style. One of the means generally employed for improving the disentangling and the softness of sensitized hair consists in using surfactants of a cationic nature (column 1, lines 10-17).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have included the cationic surfactant, as disclosed by Grollier into the composition as disclosed by Tan since by combining in a hair-care cosmetic composition a water-dispersible cationic surfactant with a water-soluble quaternised protein and a cationic silicone polymer, simultaneous deposition of these three components on hair was promoted, thereby providing a cosmetic composition markedly superior to those known hitherto in respect of the properties of disentangling, softness, shape-retention and liveliness. The hair was at the same time light, resilient, shiny and antistatic and its feel and its appearance was very silky (column 1, lines 49-58).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA S MERCIER whose telephone number is (571)272-9039. The examiner can normally be reached M-F 6:30 am to 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A Wax can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA S MERCIER/Primary Examiner, Art Unit 1615
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