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 .
This office action is in response to applicant’s preliminary amendments filed March 21, 2025. Claims 1-14 are pending. Claims 3,5,6,8,9,1113 and 14 have been amended.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 11-13 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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 11-13 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 11-13 are 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. Claims 11 -13 are use claims which are not permitted. Claim 11 recites a use with no method steps. Claims 12-13 recite some method steps but are still directed to “use”. Applicant should amend the claims to be method claims not “use”.
Claim 10 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation of “2-amino-6-chloro-4-nitrophenol, 1,4-bis-(ß-hydroxyethyl)- amino-2-nitrobenzene, Basic Yellow 57, Basic Red 76, Basic Brown 16, Basic Brown1 17, Basic Blue 99, HC Blue 2, HC Blue 12, HC Blue 16 and Acid Violet 43” , and the claim also recites “preferably HC Blue 2”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 13 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. The term “slow and gentle” in claim 13 are relative terms which renders the claim indefinite. The term “slow and gentle” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Any manner suitable for coloring hair and stimulating keratinocytes was interpreted to meet the claimed limitation.
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 1,2 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Combs (WO 2013/052545).
Combs teaches hair care compositions including hair colorants (page 3, lines 5-8) comprising indole derivatives and xanthine compounds, preferably caffeine (page 13, lines 1-17 to delay the presence of gray hair (claim 15, page 3, lines 22-31, page 12, lines 26-30; page 16, lines 1-9). Accordingly, Combs the teachings of Combs are sufficient to anticipate the material limitations of the instant 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.
Claims 11,13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Combs (WO 2013/052545).
Combs is relied upon as set forth above.
It would have been obvious to one of ordinary skill in the art at the time the invention was made that when using the claimed indole and xanthine compounds, preferably caffeine, in hair dyes that the hair would be colored and the keratinocytes would be stimulated to produce more natural melanin as Combs teaches the hair care composition are used for coloring hair and delaying graying of colored hair already present on the person by melanin. Slow and gentle coloration are relative terms, applying to the hair for coloring and also for increasing natural melanin production is obvious as Combs emphasizes the benefits of the compositions ability to delay graying which is caused by a decrease in melanin. Applying the same caffeine and indole containing compositions with hair dyes to the human head and coloring would produce the same benefits of stimulation of natural pigment. The coloring must be done gently since otherwise the skin or hair will be damaged. Since applicant has not defined slow or gentle any hair coloring time period and method that does not damage the skin or hair meets the claimed limitations.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wiesche (DE 102006050650).
Wiesche teaches hair coloring cosmetics, particularly hair dyes (repigmenting, page 38, next to last paragraph) comprising xanthine compounds, preferably caffeine (page 20, last paragraph), direct hair dyes including Basic Brown 17, Basic Brown 16, Basic Blue 99, HC Blue 2 (page 38, last paragraph, page 39, paragraphs 1-5), indolines of claimed formula (II) such as 5,6-dihydroxyindoline and N-methyl-5,6-dihydoxyindoline, indole derivatives of claimed formula (I) such as 5,6-dihydroxyindole and N-methyl-5,6-dihydroxyindole and physiologically acceptable salts (page 44, last paragraph to page 45, paragraph 5), Wiesche teaches applying the dye to wet or dry hair for 0-45 min (page 56, paragraph 1-2, page 63, next to last claim.
Wiesche does not teach the claimed formulations, uses and methods in a single embodiment but one of ordinary skill in the art at the time the invention was made could arrive at the claimed invention by selecting from the broad teachings of Wiesche.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Wiesche by selecting the claimed indole, indoline, caffeine and direct dyes to provide hair coloring compositions and apply the compositions to wet or dry hair for the claimed 1-30 minutes to provide, permanent coloring, repigmenting and stimulation of keratinocytes in the hair roots to produce more natural pigment as Wiesche teaches the benefits of applying the same dye precursors, caffeins, direct dyes for the same amount of time to wet or dry hair to provide improved coloring, strength and elasticity. Combining known effective hair cosmetic and benefit components for is obvious to improved coloring, strength and elasticity. Regarding the repigmentation, the same compounds applied to the same hair by the same methods would produce the same repigmenting and stimulation of keratinocytes to produce hair pigment.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wiesche (DE 102006050650) in view of Combs (WO 2013/052545).
Wiesche is relied upon as set forth above.
Wiesche does not specify stimulating keratinocytes to produce more natural pigment again.
Combs is relied upon as set forth above.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to repigment hair with the compositions of Wiesche as Combs teaches similar compositions comprising similar indole compounds and caffeine combined with hair dyes are effective at producing hair colorants but also delay hair graying resulting from decreased melanin pigment production. Using known hair cosmetic components which are hair growth stimulating agents to increase melanin production in keratinocytes in hair roots is obvious as Wiesche further teaches indole and xanthine compounds stimulate hair growth (page 12, last paragraph) and hair care composition can comprise components to increase production of melanin (page 5, lines 1-11).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761
