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 Status
Applicant’s claim amendments and arguments filed 04 June 2026 are acknowledged.
Claims 1, 2, 4, 6-9, 11, 12 & 14-24 are pending.
Claims 1, 4, 7, 18, 19 & 22 are amended.
Claims 3, 5, 10, & 13 are cancelled.
Claims 19-24 are withdrawn.
Claims 1, 2, 4, 6-9, 11, 12 & 14-18 are under consideration.
Examination on the merits is to the extent of the following species:
A) the first amphoteric surfactant: disodium cocoamphodiacetate;-4-
BU.S. Application No. 17/008,135) the second amphoteric surfactant: cocamidopropyl betaine;
C) nonionic surfactant: caprylyl/capryl glucoside;
D) non-sulfate anionic surfactant: sodium C14-16 olefin sulfonate;
E) fatty amine: stearamidopropyl dimethylamine;
F) polysaccharide thickening agent: xanthan gum; and
G) cationic polymers: absent
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04 March 2026 has been fully considered by the examiner. A signed and initialed copy of each IDS is included with the instant Office Action.
Withdrawn Rejections
The rejection of claim 7 under 35 U.S.C. 112(b) is withdrawn due to Applicant’s amendment which cancels the recited ratio.
The rejection of claim 4 under 35 U.S.C. 112(d) is withdrawn due to Applicant’s amendment to recite the upper limit of the range is “about 15%”.
New & Maintained Objections/Rejections
Claim Objections
Claims 1 & 4 are objected to because of the following informalities: Claim 1, line 9, defines ethylene oxide as “EO”. Claim 1, line 11, recites “ethylene oxide (EO)”. Claim 1, line 11 should just recite “…having a number of EO units ranging from…”.
Also claim 1 (c), line 4, is missing a “(“ , reciting “[[or]] C8-C30)alkyl”.
Claim 4 has an errant “t” in line 3.
Appropriate correction is required.
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.
Claims 1, 2, 4, 6-9, 11, 12 & 14-18 are rejected under 35 U.S.C. 103 as being obvious over Ceballos (US Publication No. 2019/0365619; IDS-02/24/2025; previously cited).
* The instant specification states “[t]he term "about" is used herein to indicate a difference of up to +/- 10% from the stated number, such as +/- 9%, +/- 8%, +/- 7%, +/- 6%, +/- 5%, +/- 4%, +/- 3%, +/- 2%, or +/- 1 %” [00133].
** The instant specification states “As used herein, the term "substantially free" or "essentially free" as used herein means the specific material may be present in small amounts that do not materially affect the basic and novel characteristics of the compositions…For instance, there may be less than 2% by weight of a specific material added to a composition, based on the total weight of the compositions (provided that an amount of less than 2% by weight does not materially affect the basic and novel characteristics of the compositions according to the disclosure. Similarly, the compositions may include less than 2%, less than 1.5%, less than 1 %, less than 0.5%, less than 0.1%, less than 0.05%, or less than 0.01%, or none of the specified material”.
***Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. acyl isethionates which is a species in the genera of non-sulfate anionic surfactants to which the elected species of sodium C14-16 olefin sulfonate belongs) and in an effort to expedite prosecution, this art has been applied.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1).
With regard to claims 1 & 18, Ceballos in Examples A-M teaches anti-dandruff shampoo compositions which are free of sulfate based surfactants (pg. 20 & 21). With regard to claims 1 (a), 6, & 18 (a), Ceballos teaches the total amount of “amphoteric surfactant(s)… may vary but is typically from about 1 to about 30 wt. %, based on the total weight of the anti-dandruff cleansing composition” [0091]. With regard to claims 1 (a), 1 (b), 6, 18 (a), & 18 (b), Ceballos teaches mixtures of betaines and alkyl amphoacetates/alkyl amphodiacetates are suitable useful amphoteric surfactants for inclusion in the composition ([0092] & [0102]). With regard to claims 1 (a), 6, & 18 (a), Ceballos teaches alkyl amphodiacetates with the R group having 8-18 carbon atoms (i.e. C8-18 alkyl amphodiacetates) are suitable amphoteric surfactants for inclusion with the alkyl amphodiacetates having two sodiums being present in an amount of about 1 to about 10 wt. % ([0102]-[0105]; Formula XVI). With regard to claims 1 (a), 6, & 18 (a), the ordinary skilled artisan would immediately envisage inclusion of about 10 wt% of disodium (C8-C18) amphodiacetates because Ceballos teaches this amount as suitable ([0102]-[0105]). With regard to claims 1 (b), 6, & 18 (b), Ceballos teaches “the total amount of betaines… is typically from…about 1 to about 10 wt. %“ and in Composition L teaches inclusion of 7.2% cocoamidopropyl betaine ([0097] & pg. 20 & 21). With regard to claims 1 (b), 6, & 18 (b), the ordinary skilled artisan would immediately envisage inclusion of about 1 to about 10% cocoamidopropyl betaine because Ceballos teaches this amount as suitable ([0097] & pg. 20 & 21). With regard to claim 4, Ceballos teaches another embodiment in which the alkyl amphoacetates and / or alkyl amphodiacetates is from about 3 to about 10 wt. % and as such teaches the total amount of the at least one first amphoteric surfactant and at least one second amphoteric surfactant is from about 10.2 wt.% when the ordinary skilled artisan follows Ceballos’s teaching of about 3 wt.% C8-C18 alkyl amphodiacetates and about 7.2 wt.% cocamidopropylbetaine (i.e. a total amount of about 10.2 wt% first and second amphoteric surfactant; [0105]). With regard to claim 7, Ceballos in the shampoo Examples A-M teaches the betaines are cocoamidopropylbetaine and/or coco-betaine (pg. 20 & 21). With regard to claims 1( c), 8, 9, & 18 ( c), Ceballos in Example L teaches the composition comprises 1.1 wt% lauryl and/or decyl glucoside (pg. 21). With regard to claims 1( c), 8, 9, & 18 ( c), more broadly, Cebello teaches octyl glucoside and decyl glucose to be suitable nonionic surfactants for inclusion in the invention (i.e. caprylyl and caprylyl glucoside; [0019]).With regards to claims 1 (d), 11, 12, & 18 (d), Ceballos in Example L teaches inclusion of the non-sulfate surfactants, sodium isethionate (i.e. sodium 2-hydroxyethyl sulfonate) and sodium cocoyl isethionate (i.e. acyl isethionate), in a combined amount of 4.6% with sodium cocoyl isethionate present in an amount of 4.4% (pg. 20). With regard to claims 1( e), 14, & 18 ( e), Ceballos in Example L teaches inclusion of brassicamidopropyl-dimethylamine in an amount of 7.0% (pg. 21). More broadly, Ceballos teaches stearamidopropyl dimethylamine and brassicamidopropyl dimethylamine as suitable amidoamines for inclusion in the composition [0268].With regard to claims 1 (f), 15, 16 & 18 (f), Ceballos teaches inclusion of thickening agents which may be xanthan gum in an amount of “from about 0.01 to about 5 wt. %” ([0213], [0214], [0229] & [0230]). With regard to claims 1 & 18, Ceballo teaches the total amount of amphoteric surfactant is present in an amount from about 2 to about 20 wt.% and the combined amount of non-ionic and non-sulfate anionic surfactants is 5.7 wt.% (i.e. 1.1 wt % lauryl and/or decyl glucoside and 4.6 wt. % sodium isethionate and sodium cocoyl isethionate (i.e. the total amount of amphoteric surfactants is greater than the combined amount of non-ionic and non-sulfate anionic surfactants; Ceballo-composition L-pg. 21; [0097]; [0102]-[0105]). With regard to claim 17, Ceballos in Examples A-M teaches the anti-dandruff shampoo compositions is free of cationic polymers (pg. 20 & 21). With regard to claims 2 & 18, Ceballos in Examples A-M teaches the anti-dandruff shampoo compositions which are free of silicone (pg. 20 & 21).
While there is not a single example comprising each of the claimed components, the at least one first amphoteric surfactant, at least one second amphoteric surfactant, at least one nonionic surfactant, at least one non-sulfate anionic surfactant, at least one fatty amine, and at least one polysaccharide thickening agent are included among short lists of reagents. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to the recited amounts of first amphoteric surfactant/ C8-C18 alkyl amphodiacetates, second amphoteric surfactant/cocamidopropyl betaine, the total amount of the at least one first amphoteric surfactant and the at least one second amphoteric surfactant, nonionic surfactant/caprylyl/capryl glucoside, non-sulfate surfactant/sodium cocoyl isethionate and sodium isethionate, fatty amine/stearamidopropyl dimethylamine and at least one polysaccharide thickening agent/ xanthan gum, Ceballo’s teachings suggest the recited reagents in amounts which overlap or fall within 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 1, 2, 4, 6-9, 11, 12 & 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ceballos as applied to claims 1, 2, 4, 6-9, 11, 12 & 14-18 above, and further in view of Varco (US Patent No. 5,047,177; Published: 09/10/1991; previously cited).
* The instant specification states “[t]he term "about" is used herein to indicate a difference of up to +/- 10% from the stated number, such as +/- 9%, +/- 8%, +/- 7%, +/- 6%, +/- 5%, +/- 4%, +/- 3%, +/- 2%, or +/- 1 %” [00133].
** The instant specification states “As used herein, the term "substantially free" or "essentially free" as used herein means the specific material may be present in small amounts that do not materially affect the basic and novel characteristics of the compositions…For instance, there may be less than 2% by weight of a specific material added to a composition, based on the total weight of the compositions (provided that an amount of less than 2% by weight does not materially affect the basic and novel characteristics of the compositions according to the disclosure. Similarly, the compositions may include less than 2%, less than 1.5%, less than 1 %, less than 0.5%, less than 0.1%, less than 0.05%, or less than 0.01%, or none of the specified material”.
***This rejection addresses the elected species of sodium C14-16 olefin sulfonate.
The teachings of Ceballos are described above. In brief, Ceballos teaches a sulfate-free shampoo comprising sodium isethionate (i.e. sodium 2-hydroxyethyl sulfonate), sodium cocoyl isethionate (i.e. acyl isethionate) and xanthan gum.
Ceballos does not teach inclusion of sodium C14-16 olefin sulfonate surfactant.
In the same field of invention which are shampoos, with regard to claims 11, 12, & 18, Varco teaches a shampoo composition in which the anionic surfactant may suitably be sodium cocoyl isethionate, sodium lauroyl isethionate, sodium isethionate or sodium C14-16 olefin sulfonate (col. 3, ll. 55-60; col. 4, ll. 5-20). Varco teaches inclusion of thickening agents to increase the viscosity of the shampoo product which may be natural gums which may be xanthan (col. ll. 35-40).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (B) may be employed in which it would have been prima facie obvious before the effective filing date to the ordinary skilled artisan to have modified Ceballos’ shampoo composition by substituting Ceballos’ sodium cocoyl isethionate and sodium isethionate anionic surfactants with sodium C14-16 olefin sulfonate as taught by Varco because Ceballos and Varco are both directed to shampoos comprising anionic surfactants and xanthan gum and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to adjust the detersivity/cleansing of the shampoo.
Claims 1, 2, 4, 6-9, 11, 12, 14, 15, 17 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Galleguillos (US Publication No. 2012/0213725: Published: 08/23/2012; previously cited).
* The instant specification states “[t]he term "about" is used herein to indicate a difference of up to +/- 10% from the stated number, such as +/- 9%, +/- 8%, +/- 7%, +/- 6%, +/- 5%, +/- 4%, +/- 3%, +/- 2%, or +/- 1 %” [00133].
** The instant specification states “As used herein, the term "substantially free" or "essentially free" as used herein means the specific material may be present in small amounts that do not materially affect the basic and novel characteristics of the compositions…For instance, there may be less than 2% by weight of a specific material added to a composition, based on the total weight of the compositions (provided that an amount of less than 2% by weight does not materially affect the basic and novel characteristics of the compositions according to the disclosure. Similarly, the compositions may include less than 2%, less than 1.5%, less than 1 %, less than 0.5%, less than 0.1%, less than 0.05%, or less than 0.01%, or none of the specified material”.
***Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. acyl isethionates which is a species in the genera of non-sulfate anionic surfactants to which the elected species of sodium C14-16 olefin sulfonate belongs and gums which are a species in the genera of polysaccharide thickening agents to which the elected species of xanthan gum belongs) and in an effort to expedite prosecution, this art has been applied.
With regard claims 1 & 18, Galleguillos teaches personal care compositions which may be shampoos, body washes, shower gels (i.e. compositions for cleansing keratin materials [0005]. With regard to claims 1, 1 (a), 1 (b), 4, 6, 18, 18 (a) & 18 (b), Galleguillos teaches the co-surfactant is either an amphoteric or zwitterionic surfactant which can be included in an amount ranging from about 0.5 weight percent to about 8 weight percent and in the Example 13 sulfate free shampoo teaches inclusion of disodium cocoamphodiacetate in an amount of 2.77% and cocamidopropyl betaine (i.e. C6-C18 alkyl amphodiacetate; [0033]; [0221]). More broadly, with regard to claims 1 (b) & 18 (b), Galleguillos teaches the shampoo compositions comprise mixture of cocamidopropyl betaine with additional amphoteric or zwitterionic surfactants which include sodium cocoamphoacetate ([0034]-[0035]). As such, with regard to claims 1 (b), 7 & 18 (b), the ordinary skilled artisan would reasonably adjust the amount of cocoamidopropyl betaine to 5.23%, yielding a ratio of disodium cocoamphodiacetate to cocoamidopropylbetaine of 1:1.88 (Math: 8-2.77= 5.23; 1: 1.88). With regard to claims 1 ( c), 8, 9 & 18 ( c), Galleguillos teaches inclusion of nonionic surfactants which include alkyl polyglycosides in an amount from 1 weight percent to about 6 weight percent ([0037], [0038] & [0043]). More broadly, with regard to claims 1 ( c), 8, 9 & 18 ( c), Galleguillos teaches octyl glucoside and decyl glucoside as suitable (i.e. caprylyl and capryl glucoside; [0151]). With regard to claims 1 ( d) & 18 ( d), Galleguillos in Example 13 teaches inclusion of ammonium cocoyl isethionate, more broadly teaches the anionic surfactant can be sodium cocoyl isethionate and sodium lauryl isethionate, and “another embodiment” comprising sodium cocoyl isethionate ([0028], [0029] & [0222]). With regard to claims 1 ( d) & 18 ( d), Galleguillos teaches inclusion of “from about 0.5 weight percent to about 45 weight percent, or from about 1.5 weight percent to about 35 weight percent, or even from about 5 weight percent to about 20 weight percent, based on the total weight of the composition”, with individual numerical values, or limits, combined to form additional non-disclosed and/or non-stated ranges [0030]. With regard to claims 1 ( d), 11, 12 & 18 ( d), as such, the ordinary skilled artisan would immediately envisage inclusion of anionic surfactants in an amount of from about 0.5 weight percent to about 5 weight percent based upon Galleguillos’ teachings with sodium cocoyl isethionate, sodium lauryl isethionate being taught as typical anionic cleansing surfactant for the shampoo ([0028] & [0030]). With regard to claims 1 & 18, Galleguillos teaches amphoteric surfactant in an amount of 8%, the anionic surfactant a present in an amount of 0.5 weight percent, and nonionic surfactants in an amount of 1 weight percent, as such the total amount of amphoteric surfactant is greater than the combined amount of nonionic and non-sulfate anionic surfactants (8 wt% as compared to 1.5 wt%; [0030], [0033] & [0038]). These teachings are supported by Galleguillos’ teaching that the anionic surfactant and amphoteric surfactant may be present in an embodiment in an 1:10 ratio [0059]. With regard to claims 1(e), 14 & 18(e), Galleguillos teaches inclusion of stearamidopropyl-dimethylamine as a cationic surfactant to provide conditioning in 2 in one shampoos and that it is used in an amount from about 0.01 weight percent to about 10 weight percent ([0045], [0052] & [0055]). With regard to claims 1(f), 15 & 18 (f), Galleguillos teaches inclusion of gums as examples of pharmaceutical and cosmeceutical active ingredients, hair fixative and hair styling polymers and auxiliary rheology modifiers ([0102], [0113] & [0131]). With regard to claims 2 & 18, Galleguillos in the Example 13 sulfate free shampoo teaches the shampoo does not comprise silicones (i.e. silicone free; [0221]). With regard to claim 17, Galleguillos teaches cationic polymers to be an optional by stating “ If present, the one or more cationic polymers are present…” with no cationic polymer present in the Example 13 sulfate-free shampoo ([0086] & [0221]).
While there is not a single example comprising each of the claimed components, the at least one first amphoteric surfactant, at least one second amphoteric surfactant, at least one nonionic surfactant, at least one non-sulfate anionic surfactant, at least one fatty amine, and at least one polysaccharide thickening agent are included among short lists of reagents. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to the recited amounts of first amphoteric surfactant/disodium cocoamphodiacetate, second amphoteric surfactant/cocamidopropyl betaine, the total amount of the at least one first amphoteric surfactant and the at least one second amphoteric surfactant, nonionic surfactant/caprylyl/capryl glucoside, non-sulfate surfactant/sodium cocoyl isethionate, fatty amine/stearamidopropyl dimethylamine and at least one polysaccharide thickening agent/ gum, Galleguillo’ teachings suggest the recited reagents in amounts which overlap or fall within 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 1, 2, 4, 6-9, 11, 12 & 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Galleguillos as applied to claims 1, 2, 4, 6-9, 11, 12, 14, 15, 17 & 18 above, and further in view of Varco (US Patent No. 5,047,177; Published: 09/10/1991; previously cited).
* The instant specification states “[t]he term "about" is used herein to indicate a difference of up to +/- 10% from the stated number, such as +/- 9%, +/- 8%, +/- 7%, +/- 6%, +/- 5%, +/- 4%, +/- 3%, +/- 2%, or +/- 1 %” [00133].
** The instant specification states “As used herein, the term "substantially free" or "essentially free" as used herein means the specific material may be present in small amounts that do not materially affect the basic and novel characteristics of the compositions…For instance, there may be less than 2% by weight of a specific material added to a composition, based on the total weight of the compositions (provided that an amount of less than 2% by weight does not materially affect the basic and novel characteristics of the compositions according to the disclosure. Similarly, the compositions may include less than 2%, less than 1.5%, less than 1 %, less than 0.5%, less than 0.1%, less than 0.05%, or less than 0.01%, or none of the specified material”.
***This rejection addresses the elected species of sodium C14-16 olefin sulfonate and xanthan gum.
The teachings of Galleguillos are described above. Galleguillos teaches inclusion of gums as rheology modifiers.
Galleguillos does not teach the amount of gums suitable for inclusion in their shampoo composition or inclusion of sodium C14-16 olefin sulfonate surfactant.
In the same field of invention which are shampoos, with regard to claims 11, 12, & 18, Varco teaches a shampoo composition in which the anionic surfactant may be sodium cocoyl isethionate, sodium lauroyl isethionate, sodium isethionate and sodium C14-16 olefin sulfonate are taught as suitable (col. 3, ll. 55-60; col. 4, ll. 5-20). With regard to claim 16, Varco teaches inclusion of thickening agents to increase the viscosity of the shampoo product which may be natural gums which may be xanthan (col. ll. 35-40). With regard to claim 16, Varco teaches the viscosity agents are typically added in an amount preferably from about 0.1 to about 5 wt.% and the amount is selected to provide the desired viscosity (col. 7, ll. 35-50).
Here, at least rationale (B) may be employed in which it would have been prima facie obvious before the effective filing date to the ordinary skilled artisan to have modified Galleguillos’ shampoo composition by substituting Galleguillos’ sodium cocoyl isethionate and sodium isethionate anionic surfactants with sodium C14-16 olefin sulfonate as taught by Varco because Galleguillos and Varco are both directed to shampoos comprising anionic surfactants and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to adjust the detersivity/cleansing of the shampoo.
Here, at least rationale (G) may be employed may be employed in which it would have been prima facie obvious before the effective filing date to the ordinary skilled artisan to substitute Galleguillos’ generically taught gums with about 0.1 to about 5 wt.% xanthan gum as taught by Varco because Galleguillos and Varco are both directed to shampoos comprising gums and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use a natural gum that is suitable for shampoos (i.e. xanthan gum) in amounts which are art recognized as suitable for adjusting the viscosity of the shampoo.
Response to Arguments
In the traverse of the rejection of claims 1, 2, 4, 6-9, 11, 12, and 14-18 under 35 U.S.C. § 103(a) over Ceballos; and claims 1, 2, 4, 6-9, 11, 12, and 14-18 under 35 U.S.C. § 103(a) over Ceballos and Varco, Applicant argues Ceballos is not available as prior art because both the instant application and Ceballos were both owned by L’Oreal as of the effective date of the claimed invention (reply, pg. 8-10).
Applicant’s argument has been considered and is partially persuasive. The effective filing date of the instant application is 31 August 2020. Ceballos was published on 05 December 2019 and filed on 31 May 2018. As such, Ceballos is available as prior art under BOTH 35 USC 102(a)(1) and 35 USC 102(a)(2). Applicant’s statement addresses the 35 USC 102(a)(2) consideration. It does not address the 35 USC 102(a)(1) consideration. MPEP 717.02(b)(II) states: “The 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under 35 U.S.C. 102(a)(1) (disclosures publicly made before the effective filing date of the claimed invention). In other words, the prior art exception under 35 U.S.C. 102(b)(2)(C) only disqualifies the disclosure as prior art under 35 U.S.C. 102(a)(2). Thus, if the issue date of a U.S. patent or publication date of a U.S. patent application publication or WIPO published international application is before the effective filing date of the claimed invention, it may be prior art under 35 U.S.C. 102(a)(1), regardless of the fact that the subject matter disclosed and the claimed invention are commonly owned or resulted from a joint research agreement.” To overcome the 35 U.S.C. 102(a)(1) consideration, Applicant’s representative needs to file an affidavit or declaration under 37 CFR 1.130 (see MPEP 717.01).
In the traverse of the rejection of claims 1, 2, 4, 6-9, 11, 12, 14, 15, 17, and 18 under 35 U.S.C. § 103(a) over Galleguillos; and claims 1, 2, 4, 6-9, 11, 12, and 14-18 under 35 U.S.C. § 103(a) over Galleguillos in view of Varco, Applicant argues the previously submitted declaration of 21 October 2025 (reply, pg. 10-12). Applicant argues “the alkyl and polyalkyl esters or ethers of poly(ethylene oxide) in the claims have been amended to recite the number of carbon atoms (8-30) and ethoxide units (2-200 for esters, and 3-200 for ethers)” and that the data are commensurate with the scope of the claims because “two different nonionic surfactants were tested-one alkyl glucoside and one alkyl ether of poly(ethylene oxide)” (reply, pg. 11).
This is not persuasive. Claim 1 recites “at least one nonionic surfactant chosen from (C8-C30)alkyl and (C8-C30)polyalkyl esters of poly(ethylene oxide) having a number of ethylene oxide (EO) units ranging from 2 to 200, (C8-C30)alkyl and (C8-C30)polyalkyl ethers of poly(ethylene oxide) having a number of ethylene oxide (EO) units ranging from 3 to 200, alkyl or polyalkylglucosides, or mixtures of two or more thereof”. Ethylene oxide (EO) content is a primary factor controlling hydrophilic lipophilic balance of surfactants. A low ethylene content contributes to lipophilicity and is suitable for W/O emulsions while a high ethylene oxide content contributes to hydrophilicity and O/W emulsions. Applicant only evaluated 0 -6 wt.% of Laureth-23 which is an ether. Applicant’s claimed range goes from C8-C30 and Applicant did not evaluate the low end of the range (i.e. C8) and the upper end of the range (i.e. C30). With regard to Applicant’s argument pertaining to the alkyl glucoside, claim 1 recites alkyl or polyalkylglucosides but Applicant only evaluated coco-glucoside. The HLB of alkyl glucosides is dependent on the alkyl chain length. As such, the data are not commensurate with the scope of the claims. "[O]bjective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Applicant argues the tested range of non-sulfate anionic surfactant was 0.87-4.6% and the claimed range is 0.5-5% in which sodium cocoyl isethionate and sodium C14-16 olefin sulfonate were evaluated and points to composition A3 (reply, pg. 11-12).
This is persuasive in part. However the data are still not commensurate in scope because claim 1 generically recites “at least one non-sulfate anionic surfactant”. Claim 18 is also not commensurate reciting “alkyl sulfonates, acyl isethionates…”
Applicant argues the office’s conclusion that the claims aren’t commensurate with the scope of the data because only a single fatty amine and polysaccharide thickener were tested is incorrect because Applicant supplied opinion evidence stating “a person skilled in research and development regarding haircare would expect similar results with other types of those components within similar ranges” by Declarant who is the inventor of the instant application (reply, pg. 12).
This is not persuasive. Claim 1 is generic to the polysaccharide thickening agent and encompasses gums, celluloses, and starches. The thickening of starch is temperature dependent, while pH can influence cellulose thickening. They don’t thicken/function the same. With regard to the fatty amine, the claims are generic to the fatty amine and no “result” is recited in association with the fatty amine. Fatty amines are used in cosmetics to provide shine, manageability, lubricity, softening, and anti-agglomeration. Not all fatty amines function the same. As such, Applicant’s declaration is not commensurate with scope of the claims.
With regard to the opinion evidence, M.P.E.P. § 7.16.01(c) states "...factual evidence is preferable to opinion testimony...." “Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).” (emphasis added). In the instant case, the Examiner has shown why all fatty amines and all polysaccharide thickeners are not the same and are not expected to perform the same.
Conclusion
No claims are allowed.
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 LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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, David J Blanchard can be reached at 5712720827. 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.
/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
Prosecution Insights