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.
Claims 15 and 16 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.
Claims 15 and 16 recite the limitation "one or more fatty components (F5)". There is insufficient antecedent basis for this limitation in the claim as they depend from claim 1. One or more fatty components (F5) is first seen as a limitation in dependent claim 14. Examiner suggests amending claims 15 and 16 to depend from claim 14.
Interpretation of Claim Language
“Shortly before” in claim 16 initially appears to be an indefinite term of degree. But the specification at paragraph 218 appears to define the phrase as it recites “was moistened shortly before administration, was moistened within a period of at most 30 minutes, preferably at most 10 minutes before administration.” (¶ 218). Therefore, Examiner interprets “shortly before” to mean at most 30 minutes before administration.
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.
Claims 1-4, 6-11, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Protat-Geradin (WO 2021/214055).
Protat-Geradin discloses a composition comprising 15% 3-aminopropyltriethysilane (APTES silsoft A-1100 solid) (organic alkoxysilane), 9.8% polydimethylsiloxanes (PDMS) with a trialkoxy end functional group (organic alkoxysilane), 2.86% red pigment (pigment), in ethanol q.s. (at least one solvent different from water) (¶ 244, Table 1). Ethanol is reasonably expected to contain some water, but as the primary solvent is ethanol, it appears the water content will be below 25%, preferably less than 2% by weight (¶ 188). The reference teaches hair is exposed to the composition, left at room temperature, followed by combing and drying with a hairdryer (¶¶ 245-254). As such, the keratinous material is dried without washing the colorant. The process can be applied to wet or dry keratin fibers (¶ 207).
Examiner notes that wet keratin fibers would require dampening before the treatment.
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 1-4 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Protat-Geradin (WO 2021/214055) in view of Stevant (FR 3117842).
With regards to claims 12-13, Protat-Geradin further teaches the coloring agent may be present up to 15% by weight, the pigments may be present up to 15% by weight, and direct dyes can be present up to 10% by weight. As the instant claims define the dye to include pigments and coloring agents (see instant claim 8), then Protat-Geradin explicitly teaches up to 40% dye. It would have been obvious to vary this amount based on the results provided. In other words, the proportions are so similar that one skilled in the art would expect the same properties for the compositions. As such, 40% dye content can reasonably make obvious 45% by weight absent evidence to the contrary. See MPEP 2144.05.
With regards to claims 14-16, Protat-Geradin further teaches the addition of hydrocarbon oils, such the fatty acids glycerol or diglyderol (paragraph 99).
With regards to claim 20, after the drying process, the hair will naturally be exposed to the environment. Given relative humidity can range from 0-100%, then the overlap makes obvious the claimed range for any given location which happens to have a relative humidity above 40%. See MPEP 2144.05.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Protat-Geradin (WO 2021/214055) in view of Stevant (FR 3117842).
Protat-Geradin is discussed above but does not teach the silicones of instant claim 5.
With regards to claim 5, Stevant teaches alkoxysilanes for keratin dye treatment include polyoxakylenes, such as methyltrimethoxyilane (¶ 47) and trimethyoxysilanes (¶ 69).
It would be obvious to use known obvious variants of alkoxysilanes suitable for hair dye processes, as taught by Stevant.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,471,393. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘393 is directed to the same method, but with limited number of species and an overlapping genus of alkoxy silanes.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,233,147. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘147 is directed to the same method, but with limited number of species and an overlapping genus of alkoxy silanes.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,737,967. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘967 is directed to the same method, but with limited number of species and an overlapping genus of alkoxy silanes.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,826,586. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘586 is directed to the same method, but with limited number of species and an overlapping genus of alkoxy silanes.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,697,292. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘292 is directed to the same method, but with limited number of species and an overlapping genus of alkoxy silanes.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,576,020. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘020 is directed to the same method, but with limited number of species and an overlapping genus of alkoxy silanes.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 17/998,438 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘438 is directed to the same method, but with limited number of species and an overlapping genus of alkoxy silanes.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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