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 the Claims
Claims 1-9 are pending and under current examination.
Claim Objections
Claims 2 and 6 are objected to because of the following informalities:
Claim 2 should be amended to recite “the cysteine” for proper antecedent basis.
Claim 6 recites “any one of claim 1”. This appears to be a typographical error and the examiner recommends deleting the phrase “any one of”.
Appropriate correction is required.
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 1-9 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.
Each of claims 1-9 do not recite an article at the beginning of the claim. The absence of the indefinite article "A" in claim 1 and the absence of the definite article “The” in dependent claims 2-9 introduces ambiguity as to whether the claim is intended to refer to the same composition as in the independent claim or to a different composition altogether, which is inconsistent with the dependent claim's intended purpose of further limiting the composition of the independent claim. To resolve this indefiniteness, each dependent claim should be amended to replace "compositions" with "the composition" to clearly and unambiguously refer back to the composition recited in the independent claim. The independent claim must recite “A permanent hair-coloring composition” as there is no antecedent basis for “Permanent hair-coloring compositions” recited in claim 1, line 1.
The phrase “characterized by” in claim 1, line 2 renders the claim indefinite because it is unclear whether the “combination of cysteine with azelaic acid esters” is required to be present in the claimed composition.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In this case, claim 4 fails to further limit the subject matter of the claim upon which it depends. The composition of claim 1 is interpreted under 35 USC 112 to contain only the method steps recited in the claims (i.e. the four substances expressly listed). Thus, claim 4 fails to further limit claim 1 because the composition delineated in claim 1 does not contain any further substances other than the substances expressly listed. Any claim that recites additional elements that must be present in a composition must recite the transitional phrase “further comprising” under 35 USC 112.
Amending the transitional phrase in claim 4 to recite “further comprising” in place of “comprising” would place the claims in proper dependent form.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki et al. (JP2005213232; publication date: 08/11/2005; citing the English machine translation; cited in the IDS filed 10/29/2024) in view of Hindley (US20180161258; publication date: 06/14/2018).
With regard to claims 1, 2 and 5, Iwasaki discloses a composition to provide hair dye comprising an aminophenol oxidative dyes (page 1), an aliphatic compound having an amino group that is preferably L-cysteine, L-arginine (a basic amino acid/alkalizer; page 2). The composition is considered to be a permanent dye because it contains the substances indicated in the instant specification to impart that property (see page 1). Iwasaki teaches that hair dying compositions can damage hair and that substances can be incorporated (e.g. vegetable oils) to mitigate the damage (page 1 describes hair dying as causing hair damage due to oxidative stress, and page 2 indicates that Iwasaki’s invention addresses damage due to the hair dying process).
The composition does not contain any azelaic acid esters.
Hindley teaches that diesters of C8 - C26 Guerbet alcohol and C4-C40 dicarboxylic acids provide silicone-free effective hair conditioning (abstract). Example compositions contain dioctyldodecyl azelate (e.g. example 3).
It would have been prima facie obvious to add a conditioning diester such as dioctyldodecyl azelate to Iwasaki’s composition. The artisan of ordinary skill would have been motivated to do so in order to reduce damage due to the harsh oxidizing conditions of the chemical dyes and had reasonable expectation of success because this would only require adding the dioctyldodecyl azelate to Iwasaki’s composition.\
With regard to claim 3, resorcinol is not required.
With regard to claims 6 and 7, nothing in Iwasaki’s disclosure indicates that the composition is not ready to use, therefore the examiner considers this limitation present in the prior art, and the composition can be combined with hydrogen peroxide.
With regard to claims 8-9, Iwasaki teaches a range of 0.01 to 1% for the aliphatic compound having an amino group (page 2) and Hindley teaches a range of up to 40% diester (0034). This would have given one of ordinary skill a starting point to optimize the conditioning effects of these two agents, and these ranges overlap with the ranges required by the instant claims. See MPEP 2144.05.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki et al. (JP2005213232; publication date: 08/11/2005; citing the English machine translation; cited in the IDS filed 10/29/2024) and Hindley (US20180161258; publication date: 06/14/2018) as applied to claims 1-3 and 5-9 above and further in view of Kalopissis et al. (US 3787174; issue date: 01/22/1974).
The relevant disclosures of Iwasaki and Hindley are set forth above.
Neither reference specifically mentions a direct dye.
Kalopissis teaches that dyes include aminophenols and direct dyes (claim 4).
It would have been prima facie obvious to add a direct dye to Iwasaki’s composition because it was known for the purpose of dying hair as of the instant effective filing date.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
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