DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Applicants' arguments, filed 09/09/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 1st ¶
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6, 8, 17-20, 27-30, 33-35, 40, 88 and 90, stand rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claims 1, 17 and 90 introduce new matter as the claims recite the limitations: composition does not include an emulsifier comprising a hydrophobic group selected from the group consisting of (a) an alkyl group of at least 16 carbon atoms; (b) an alkenyl group of at least 16 carbon atoms; and (c) an aralkyl or an aralkenyl group of at least 20 carbon atoms and that the composition does not include a thickener system comprising at least two emulsifiers. There is no support in the specification for this limitation. Applicants indicate support can be found in US Patent 6090395 which is incorporated by reference. 37 CFR 1.57 (c) indicates that an incorporation by reference must: (1) express a clear intent to incorporate by reference by using the rood words “incorporate” and “reference” and (2) clearly identify the referenced patent, application or publication. Here Applicants utilize the language of incorporate by reference and identifies the referenced patent. Essential material may be incorporated by reference but only by way of an incorporation by reference to a US Patent or US patent application publication. Here, the incorporation by reference is made to a US Patent clearly meeting the requirements of 37 CFR 1.57 (d). Pursuant to 37 CFR 1.57 (h) a clear intent to incorporate the information by reference must be present. “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents” Advanced Display Systems, Inc. v. Kent State Univ., 212 F.3d 1272, 54 USPQ2d 1673 (Fed. Cir. 2000). Here the instant specification indicates the material of the US Patent incorporated is the emulsifiers and polyethoxylated fatty acid surfactants. US Patent 6090395 teaches a thickener system comprising at least one emulsifier wherein the emulsifier comprises at least one hydrophobic group and at least one hydrophilic group, wherein: (i) the hydrophobic group is comprised of an alkyl group of at least 16 carbon atoms; an alkenyl group of at least 16 carbon atoms; or an aralkyl or an aralkenyl group of at least 20 carbon atoms; and (ii) the hydrophilic group is comprised of ethylene oxide/propylene oxide copolymers having 2-150 moles of ethylene oxide plus propylene oxide per mole of hydrophobe bonded to the hydrophobe through an ether or ester bond and optionally terminated by an alkyl or alkenyl group of 1 to 36 carbon atoms or an aralkyl of between 6 and 36 carbon atoms (column 2, lines 35-53). Preferably at least two emulsifiers are taught (column 6). However, the instant claims merely recite the hydrophobic group. The claims do not exclude the hydrophilic portion as well. Thus, the scope of the excluded emulsifiers is broader in scope than the scope of the emulsifiers taught in US Patent 6090395. Additionally, the recitation of the two emulsifiers includes the previously identified emulsifier (i.e. comprising both the hydrophobic and hydrophilic group). Instant claim 90 excludes any two emulsifiers. Thus, the scope of the claims is broader than the support provided by the reference incorporated. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Response to Arguments
Applicants again assert that the Written Description rejection is erroneous, where the Office should not require that the negative limitation use identical words from Asmus ‘395, and that the negative limitation should not have to exclude everything recited by Asmus ‘395. Applicants assert the Office Action disagrees with this point without establishing why Applicant’s limitation must be so constrained.
Respectfully, this argument is not persuasive. While the examiner agrees that the limitations do not have to use identical words from Asmus ‘395, as noted in the previous Office Action, the emulsifiers of Asmus ‘395 are presented both literally and in concept in a group of two components, in the form of options [(i)(A) or (i)(B) or (i)(C)] and (II). It appears that in every instance of the recitation in Asmus ‘395, the emulsifiers are present as a required combination of at least one hydrophobic group (ii) and at least one hydrophilic group (i) selected from (A) an alkyl group of at least 24 carbon atoms; (B) an alkenyl group of at least 24 carbon atoms; and (C) an aralkyl or an aralkenyl group of at least 24 carbon atoms. There appear to be no teachings or suggestions that one component can be excluded in the thickener system, as both appear to be required. Therefore, based on the groupings of Asmus ‘395, if a skilled artisan were to exclude a hydrophobic group (i), they would also exclude the hydrophilic group (ii). Applicants cite case law, reciting that negative claim limitations are adequality supported when the specification describes a reason to exclude the relevant limitation. But here, the support provided by Asmus ‘395 is the concept of [(i)(A) or (i)(B) or (i)(C)] and (II), which appears to support that both would need to be excluded. Thus, the specification, even with the reference incorporated by reference does not support the concept of excluding a single component. Applicants then recite an example in Santarus, however, this example is simply excluding a component from a list of alternatives that had disadvantages, which is not the case in Asmus ‘395. Both case law situations appear to support the examiner where they create a negative limitation where a single embodiment is disclosed and may be excluded, and the embodiment disclosed in the instant reference by incorporation teaches a combination that must be excluded together with no discussion or suggestion of a single component of that combination being singled out. Applicants are invited to point to a particular recitation in the instant specification or in the Asmus ‘395 reference that supports Applicants’ assertion that the reference provides adequate support for the negative proviso of excluding only an emulsifier comprising a hydrophobic group selected from (A), (B), and (C).
Claim Rejections - 35 USC § 112(b) or pre-AIA 2nd ¶
Claim 35 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 claim recites “selected from the group comprising,” which is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. The examiner recommends the following claim language: “…wherein the antimicrobial agent comprises chlorhexidine salts…” or “wherein the antimicrobial agent is selected from the group consisting of chlorhexidine salts…”. For purposes of examination, the claim will be interpreted as “…wherein the antimicrobial agent comprises chlorhexidine salts…”.
Claim Rejections - 35 USC § 103
Claims 1-3, 8, 88, and 90, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Samain et al (US 6039933), as evidenced by Ya Hu Chi (Silane Fluid Products, retrieved 2025).
Samain et al discloses cosmetic compositions capable of forming a foam, comprising at least one oxyalkylene silicone and a water-soluble solvent (abs). A styling foam is disclosed: comprising 43 g ethanol (component a) of the instant claims), 4 g FLUID DC 190 (component b) of the instant claims, oxyalkylenated silicone), and water q.s. to 100 g (ex 1). The resulting amount of ethanol in % v/v is calculated to be about 54.8% v/v (43 g ethanol = 54.77 ml; 54.8 ml/100 ml = 54.8 % v/v), the resulting amount of silicone-based surface-active agent is 4 wt% (4 g/ 100 g = 4 wt%). The water-soluble solvents, particularly ethanol, must be present in compositions of greater than or equal to 30 wt% (col 16 ln 11-20). As evidenced by Ya Hu Chi, FLUID DC 190 is PEG/PPG-18/18 Dimethicone (OFX-0190 product description). The oxyalkylenated silicone is used as the foaming agent (col 2 lines 28-33). Substituting the oxyalkylenated silicone for other conventionally used foaming agents did not produce a foam (comparative examples). 90 g of the composition of ex 1 are packaged in a conventional aerosol container (pg 17 lines 49-50).
Regarding the newly amended amount of alcohol of claim 1, it would have been obvious to adjust the amount of ethanol within the suitable range taught by Samain et al, such as greater than or equal to 30 wt%. Where 43 g of ethanol (i.e., 43 wt%) was calculated to be about 54.8% v/v, it would be expected that upon adjusting up the wt% of ethanol, that the % v/v will overlap the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 1, where the silicone-based surface-active agent is taught to be the foaming agent by Samain et al, it appears the silicone-based surface-active agent is the primary foaming agent.
Regarding the emulsifier of claim 1, there does not appear to be an emulsifier in the above disclosed example, therefore the negative limitation appears to be met.
Regarding claim 2, the claim is directed to a composition, and where the composition is made obvious above and is directed to a foaming composition, it would be expected that the composition would be capable of foaming when mixed with air at low temperature, which is simply an intended use limitation. Further, where the claim is directed to a composition, and the composition of example 1 is formulated prior to its addition to an aerosol container, the functional limitation of being mixed at “low pressure” is met.
Regarding claim 3, it appears FLUID DC 190, which is evidenced to be PEG/PPG-18/18 Dimethicone, is an ethoxylated silicone due to the presence of polyethylene glycol (PEG).
Regarding claim 8, it appears that FLUID DC 190, which is evidenced to be PEG/PPG-18/18 dimethicone, is a polyether modified siloxane, where polyethylene glycol (PEG) is a polyether.
Regarding claim 88, the claims are directed to a composition, and where the composition is formulated by combining the ingredients (i.e., components are mixed) prior to being added to the aerosol container with the propellent, as discussed above, the composition is made obvious, where the propellant is tied to intended use of being used in a pressurized container.
Regarding the thickener system of claim 90, the composition disclosed by Samain et al does not appear to contain a thickener system comprising at least two emulsifiers, thereby meeting the claimed limitation.
Response to Arguments
First, Applicants assert Samain et al do not disclose any example of a foamable alcohol composition comprising the alcohol in an amount greater than about 60% v/v and asserts Samain et al’s compositions do not form foams without the addition of a propellant. Applicants assert that although Samain et al states the concentrations can be greater than or equal to 30 wt% alcohol, it provides no examples that support the scope of this statement, and these concentrations do not take the propellant into account. Second, Applicants assert that a skilled artisan would not have had a reasonable expectation of success in producing a foamable composition from Samain without a propellant. Applicants make reference to col. 1, lns. 53-59 of Samain et al, reciting that large amounts of ethanol do not allow compositions to be obtained in the foam form using the foaming polymers or surfactants conventionally used to form foams. Applicants cite Kimberly-Clark Worldwide (US 20090098067), which Applicants assert states that in the past, foamable hand sanitizers containing alcohols have been placed in aerosol containers that produce a pressure high enough to generate a foam and that alcohols are defoaming agents.
First, respectfully, this argument is not persuasive. While Samain et al teaches at least 30 wt% of the alcohol is suitable, wt% can be easily converted to % v/v with known densities. As discussed above, at 43 wt% ethanol, the resulting % v/v was calculated to be about 54.8% v/v, and where amounts greater than 30 wt% are taught by Samain et al, including those higher than 43 wt%, the % v/v appears to overlap the instantly claimed range of greater than about 60% v/v. See MPEP 2144.05(I). Regarding the argument of the propellant, the examiner again notes that the foamable composition is formed prior to being packaged in an aerosol container with a propellant, and as such, the inclusion of the propellant is simply tied to the intended use of the foamable composition, where the composition itself does not require a propellant.
Second, respectfully, this argument is not persuasive. While Samain et al recognizes that the presence of large amounts of ethanol is difficult to produce foams with foaming polymers or surfactants typically used to form foams, the reference teaches that silicone based surfactants used in combination with at least 30 wt% ethanol form foams (col 2 ln 3-7). Applicants cite Kimberly-Clark Worldwide to support that compositions with alcohols are difficult to produce foams and have been placed in pressurized containers to produce a foam, however, there are no teachings or suggestions in Samain et al or in Kimberly-Clark Worldwide that suggest that the compositions made obvious by Samain et al are incapable of producing foams without a propellant. In fact, Kimberly-Clark Worldwide teaches foamable sanitizing compositions that can be contained in a non-aerosol dispensing container that mixes the compositions with air causing the composition to foam when dispensed (see abs), which appears to support the examiner’s position that compositions with high alcohol can produce foams without the use of a propellant. As discussed above, Samain et al already recognizes that high alcohol content makes it more difficult to produce foams but teach that this has been remedied by the inclusion of silicone based surfactants. As noted above, while Samain et al intends to use the compositions in an aerosol container, it would have been reasonably expected that the formulations which overcome the problems associated with high alcohol content, would also be capable of foaming under other conditions, and there are no teachings or suggestions in the reference that suggest non-propellant formulations will not produce foams. Applicants appear to be arguing intended use based on a property not previously recognized, however, the composition itself appears to be obvious for the reasons discussed above and of record.
Claims 2 and 88 stand rejected under pre-AIA 35 U.S.C. 102b as being anticipated by Samain et al (US 6039933), in view of Wivell (US 5439682).
Samain et al is discussed above, while teaching the composition is formed prior to the inclusion of a propellent, Wivell is cited for teaching that it was known that foaming compositions can be formulated and delivered as a foam by a non-aerosol pump container (col 7 line 55 – col 8 line 5), or by a pressurized aerosol delivery device (col 8 lines 30-35). The non- aerosol containers do not use any propellant, and create foam from almost any surfactant composition (col 8 lines 18-20). The composition is mixed with air, homogenized, and then discharged as a uniform, non-pressurized aerated foam (col 8 lines 21-29).
It would have been obvious to formulate the composition of Samain et al without a propellant, such as by including the composition into a non-pressurized, non-aerosol pump container, where it was known that these containers produce foams from almost any surfactant composition, and where the composition is mixed with foam, homogenized, and dispensed to produce a uniform foam, as taught by Samain et al.
Response to Arguments
Applicants assert the compositions of Wivell do not include C1-4 alcohol and the skilled artisan would not think Wivell’s teachings could be applied to alcohol-based compositions. Applicants assert the skilled artisan would not have modified Samain et al with Wivell so that it could be stored in an unpressurized dispenser, and that there would not have been any reasonable expectation of success.
Respectfully, this argument is not persuasive. Wivell was cited only for teaching that is was known that foaming compositions can be formulated and delivered as a foam by a non-aerosol pump container, and that these non-aerosol pump containers do not use any propellant and can create foam from almost any surfactant composition. As such, where Samain et al teach a foamable composition comprising surfactants, it would be reasonably expected that the compositions would be capable of forming a foam in a non-aerosol container without a propellant, where these containers were known to produce foams from almost any surfactant composition.
Claims 4, 6, 17, and 40, stand rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Samain et al (US 6039933).
Samain et al is discussed above and further teaches oxyalkylenated silicone denotes any silicone containing at least one oxyalkylene group of (-CxH2xO)a, in which x can vary from 2 to 6 and a is greater than or equal to 1 (col 13 lines 11-14). Examples of oxyalkylenated silicones are disclosed in formulae (VII), (VIII), (IX), (X), and (XI) (col 13 lines 29-30). Formula IX is reproduced below:
PNG
media_image1.png
107
386
media_image1.png
Greyscale
, where R1 and R2 are defined (see col 13 line 58 – col 14 line 41). For example, when R2 is –[CH2]-O-(C2H4O)[10-20]H, the resulting structure is a bis-PEG-[10-20] dimethicone. The compositions can contain foam stabilizing agents, fragrances, dyes (i.e., coloring matter), conditioning agents, sunscreens (i.e., ultraviolet absorbers), surface active agents, gums, etc. (col 16 lines 63 – col 17 line 15).
Samain et al is discussed above but does not teach a specific embodiment with the silicone agents of claims 4 and 6, an embodiment with surfactants for adjusting the properties of the foam, nor a specific embodiment further comprising the constituents of claim 40.
Regarding claims 4 and 6, it would have been obvious to select from suitable silicone-based foaming agents, such as bis-PEG-[10-20] dimethicones, etc., as taught by Samain et al.
Regarding claim 17, it would have been obvious to include foam modifying agents, as taught by Samain et al, which appears to read on a surfactant for adjusting properties of the foam produced by the composition, as recited in claim 17.
Regarding claim 40, it would have been obvious to further include fragrances, dyes (i.e., coloring matter), conditioning agents, sunscreens (i.e., ultraviolet absorbers), surface active agents, gums, etc., as taught by Samain et al, for desired properties and intended uses.
Response to Arguments
Applicants assert this rejection is erroneous for the reasons set forth above and assert the rejection should be withdrawn.
Respectfully, this argument is not persuasive. The claims stand rejected for the same reasons above and of record.
Claims 17-19, 27-30, and 33-35, stand rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Samain et al (US 6039933), in view of Hoang et al (US 5629006).
Samain et al is discussed above, and further teaches the compositions can include foam stabilizers, moisturizers, preservatives, etc. (col 16 lines 63-end).
Samain et al does not teach the specific surfactants of claims 18 and 19, the foam stabilizing agents in amounts of to 10 wt% of claims 27-29, the specific moisturizers of claim 30, the amount of preservative of claim 33, nor the inclusion of an antimicrobial agent of claims 34 and 35.
Hoang et al teaches foaming formulations comprising an alcohol, a foaming surfactant, water, and a block copolymer (abs). The block copolymer is preferably polydimethyl siloxane-polyethylene oxide, such as SILWET surfactants (col 3 lines 6-11). The foaming surfactant enhances the foamability of the formulations; desirable foaming surfactants include lauramidopropyl betaine, amine oxides, etc. (col 4 lines 3-19). In embodiments, lauramidopropyl betaine is taught to be included in an amount from about 5 to about 25 wt% (claim 1). The compositions comprise a moisturizer including lanolin, propylene glycol, glycerin, etc., where the moisturizers soften and soothe the skin (claim 1, col 6 lines 9-24). Moisturizers and/or emollients are included from about 0.05 to about 5 wt% (col 1 lines 66-67). Preservatives are included to maintain stability under use and storage conditions (col 5 lines 18-20), in an amount from 0.01 to about 5 wt% (claim 3), and include chlorhexidine gluconate, etc. (column 5, lines 25-28). Antimicrobial agents or preservative agents include iodine, parachlorometaxylenol, hexachlorophene, and chlorhexidine gluconate (col 1 lines 26-31).
Regarding claims 17-19, it would have been obvious to include known foaming surfactants, including lauramidopropyl betaine (a betaine), amine oxides, etc., in order to enhance the foamability of the formulations, as taught by Hoang et al, where both are drawn to foaming compositions comprising a foaming agent, an alcohol, and water. Further, while the silicone agents of Hoang et al are taught as block copolymers, it was known that betaines and amine oxides, etc., where suitable for use in compositions comprising a silicone agent.
Regarding claims 27 and 28, it would have been obvious to include lauramidopropyl betaine (a quaternary ammonium compound), where it is taught by Hoang et al to enhance the foamability of the formulations. While not taught as a “foam stabilizing agent”, it would be expected that enhancing the foamability of the formulations would also act to stabilize the foam. Nevertheless, where the inclusion of a quaternary ammonium compound is obvious, the functional limitations are inherent. See MPEP 2112(II) and (III).
Regarding the amount, it would have been obvious to include known amounts suitable for foaming compositions, such as from about 5 to about 25 wt%, as taught by Hoang et al, overlapping the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 29, it would have been obvious to include glycerin (taught as a moisturizer), in order to soften and soothe the skin. With regards to the amount of less than about 10 wt%, it would have been obvious to include glycerin in the amount of moisturizer and/or emollients, such as from about 0.05 to about 5 wt%, as taught by Hoang et al. While glycerin is taught as a moisturizer, the functional properties of glycerin remain the same, whether recognized or not. See MPEP 2112(I) and (II).
Regarding claim 30, it would have been obvious to include moisturizers, such as lanolin, propylene glycol, glycerin, etc., where the moisturizers soften and soothe the skin, as taught by Hoang et al, and where Samain et al teaches moisturizers can be included.
Regarding the amount of moisturizers, it would have been obvious to moisturizers in amounts taught to be suitable, such from about 0.05 to about 5 wt%, as taught by Hoang et al.
Regarding claim 33, it would have been obvious to include preservatives, as taught by Samain et al, in amounts known to be used in foaming compositions, such as from 0.01 to about 5 wt%, as taught by Hoang et al.
Regarding claims 34 and 35, it would have been obvious to include chlorhexidine gluconate, etc., where it was known as both a preservative and an antimicrobial agent, as taught by Hoang et al, in order to provide stability of the formulation as well as disinfecting properties.
Response to Arguments
First, Applicants assert Samain et al teach that conventionally used surfactants were not effective in forming foams in the presence of large amounts of ethanol, and a skilled artisan would have no reason to disregard Samain et al’s teachings and choose to add known foaming surfactants. Second, Applicants assert the Office Action does not explain why a skilled person would take those materials from Hoang et al’s skin disinfecting formulations and use them in Samain et al’s hair styling compositions.
First, respectfully, this argument is not persuasive. While Samain et al appears to suggest that conventional surfactants are difficult to produce foams in high alcohol compositions by themselves, Hoang et al teach that the addition of a foaming surfactant, such as lauramidopropyl betaine, amine oxides, etc., where known to enhance the foamability of compositions comprising silicone based surfactants and high alcohol content (50-80% alcohol). As such, it would have been obvious for the skilled artisan to modify Samain et al by including an additional surfactant that was known to enhance foamability of foaming compositions comprising a silicone based surfactant, in order to optimize the compositions for enhanced foamability.
Second, respectfully, this argument is not persuasive. Samain et al teach the compositions can further comprise additional agents including preservatives, foam-modifying agents, foam stabilizers, moisturizing agents, agents for combating dandruff, antiseborrhoeic agents, etc. (col 16 last ¶). Samain et al and Hoang et al are both broadly directed to high alcohol foaming compositions comprising surfactants that can be contacted to the skin. As such, it would have been obvious to use any known additive suitable for high alcohol foaming compositions, such as the additional foaming surfactants discussed above, moisturizers, preservatives, antimicrobial agents, etc., where the skilled artisan would recognize that it is desirable to have enhanced foaming, moisturizing properties to prevent drying feel, preservatives for composition stability, antimicrobial agents for disinfecting properties, etc., depending on the desired use of the foaming composition.
Claim 20 stands rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Samain et al (US 6039933) and Hoang et al (US 5629006), in view of Dufay et al (US 20050143277).
Samain et al and Hoang et al are discussed above but do not teach wherein the additional surfactant is an alkylglucoside.
Dufay et al teaches alkyl oligoglucosides are known surfactants that can foam and can be combined with other surfactants (¶ 3). Specifically, alkyl and/or alkenyl oligoglycosides, betaines, and alkyl ether sulfates are taught (¶¶ 8-10). These surfactants have optimized dermatological compatibility (paragraph 0012). The surfactants can be utilized in foams and hydroalcoholic solutions (paragraph 0031). Exemplified glucosides include cocoglucosides (an alkylglucoside) (table 2).
It would have been obvious to include known forming surfactants, such as an alkylglucoside, where it is known to be optimized for dermatological capability (i.e., skin, hair) and is used in foams and hydroalcoholic solutions, as taught by Dufay et al.
Response to Arguments
Applicants assert that the skilled artisan would have no reason to disregard Samain et al’s teaching and choose to add known foaming surfactants.
Respectfully, this argument is not persuasive. It would have been obvious to include additional surfactants for the same reasons discussed above by Samain et al and Hoang et al, such as alkyl oligoglucosides as taught by Dufay et al, which were known to form foams and be combined with other surfactants, in order to optimize the foaming properties of the foaming compositions.
Claims 27 and 29, stand rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Samain et al (US 6039933), in view of Lapidus (US 20020034455).
Samain et al is discussed above, while teaching the inclusion of foaming stabilizers, the reference does not teach the amount of claim 27, nor the specific foam stabilizing agents of claim 29.
Lapidus teaches stable foam compositions comprising a foam stabilizing agent, including glycerine, etc., in an amount ranging from about 0.10% to about 5% (abs, ¶ 24)
It would have been obvious to include foaming stabilizers, as motivated by Samain et al, such as glycerine in an amount ranging from about 0.10% to about 5%, as taught by Lapidus, falling within the claimed range.
Response to Arguments
Applicants assert Lapidus does not disclose foamable compositions comprising C1-4 alcohol, and a skilled person would have no reason or motivation to apply Lapidus’ teachings to Samain et al’s compositions.
Respectfully, this argument is not persuasive. Samain et al teach the compositions can further comprise foam stabilizers, etc. As such, it would have been obvious to further include known foam stabilizers suitable for foamable compositions, such as those taught by Lapidus above.
Double Patenting
Claims 1-4, 6, 8, 17-20, 27-30, 33-35, 40, 88 and 90 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of the U.S. Patent No. 8,679,516 B2.
The rejection is recited in a previous Office Action.
The following are also rejected for the same reasons:
U.S. Patent No. 8313758 B2, the claims are directed to a method comprising the composition instantly claimed with overlapping ranges of components.
Response to Amendments
Applicant requests that the double patenting rejections be held in abeyance until the claims are deemed otherwise allowable.
The examiner acknowledges applicants request. Accordingly, the claims stand rejected for the same reasons above and of record.
Claims 1-4, 6, 8, 17-20, 27-30, 33-35, 40, 88 and 90 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 and 17-32 of the U.S. Patent No. 8,309,111 B2.
The rejection is recited in a previous Office Action.
Response to Amendments
Applicant requests that the double patenting rejections be held in abeyance until the claims are deemed otherwise allowable.
The examiner acknowledges applicants request. Accordingly, the claims stand rejected for the same reasons above and of record.
Claims 1-4, 6, 8, 17-20, 27-30, 33-35, 40, 88 and 90 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims of U.S. Patent No. 8685422 B2, hereinafter referred to as ‘422, in view of Samain et al (US 6039933) and Hoang et al (US 5629006). Although the claims are not identical they are not patentably distinct because the claims of ‘422 disclose a foamable alcohol composition comprising a C1-4 alcohol at greater than or equal to 60% v/v, a silicone based surface active agent for foaming in an amount of at least 0.01 wt%, and water (e.g., claim 1). The composition is mixed with air at low pressure (e.g., claim 1). The composition further includes an additional surfactant (e.g., claim 2-10), a foam stabilizing agent (e.g., claim 11, 12).
The claims of ‘422 do not disclose antimicrobial agents, moisturizers, etc., preservatives, nor the constituents of the instant claims.
Samain et al and Hoang et al are discussed above.
It would have been obvious to modify ‘422 based on the teachings above. It would have been obvious to include antimicrobial agents, moisturizers, etc., preservatives, and the constituents of the instant claims, for the same reasons above by Samain et al and Hoang et al.
Response to Amendments
Applicant requests that the double patenting rejections be held in abeyance until the claims are deemed otherwise allowable.
The examiner acknowledges applicants request. Accordingly, the claims stand rejected for the same reasons above and of record.
Claims 1-4, 6, 8, 17-20, 27-30, 33-35, 40, 88 and 90 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims of U.S. Patent No. 8691255 B2, hereinafter referred to as ‘255, in view of Hoang et al (US 5629006). Although the claims are not identical they are not patentably distinct because the claims of ‘255 disclose a method of producing a foam, the composition comprising a C1-4 alcohol in an amount of at least 60% v/v, a silicone based surfactant for foaming in an amount of at least 0.01 wt%, and water (e.g., claim 1, 18). The composition is unpressurized (e.g., claim 2). The composition further comprising an additional surfactant (e.g., claim 5, 6, 7, 8), constituents (e.g., claim 11), and a foam stabilizing agent (e.g., claim 14).
The claims of ‘255 do not disclose antimicrobial agents, moisturizers, etc., nor preservatives.
It would have been obvious to modify ‘255 based on the teachings above.
It would have been obvious to include the above missing components for the same reasons discussed above by Hoang et al.
The following are also rejected for the same reasons:
U.S. Patent No. 8,263,098 B2, the claims disclose are drawn to an alcohol composition, comprising: at least one C1-4 alcohol or mixtures thereof, a silicone-based surface active agent for foaming, and water, as instantly claimed, but does not disclose the inclusion of an antimicrobial agent. It would have been obvious to include an antimicrobial agent to ‘098, as taught by Hoang et al, in order to achieve desirable disinfection and antimicrobial properties.
Response to Amendments
Applicant requests that the double patenting rejections be held in abeyance until the claims are deemed otherwise allowable.
The examiner acknowledges applicants request. Accordingly, the claims stand rejected for the same reasons above and of record.
Double Patenting - Withdrawn
The nonstatutory double patient rejection over the claims of U.S. Patent No. 7683018 B2 is hereby withdrawn, as the status of the patent is now expired.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600