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 .
Withdrawn Objections/Rejections
The objection to claim 23 is withdrawn in view of the claim amendments.
The rejections of claims 8 and 22 under 35 U.S.C. § 112(b) are withdrawn in view of the
claim amendments.
Claim Status
Applicants' amendments and arguments filed on 07/16/2026 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 11 is cancelled.
Claims 1-10 and 12-23 are pending and under current examination.
Rejections Maintained
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 1-10, 13-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nieendick et al. (US 2004/0037793 A1, published February 26, 2004, included on IDS submitted 05/17/2021), hereafter “Nieendick”.
Regarding instant claim 1, Nieendick teaches wax-based opacifier preparations (claim 1) that contain an alkylene glycol fatty acid ester present from 10 to 35% by weight (paragraph [0036]), with ethylene glycol distearate being particularly preferred (paragraph [0035], Table 1); Table 1 exemplifies 25 wt.% ethylene glycol distearate (Examples 1-4). The composition further contains at least one amphoteric surfactant (claims 1 and 4), and inventive example compositions 1-4 in Table 1 contain a total of 10.9-14.3 wt.% surfactants. Nieendick further teaches that “at least 85, preferably 90, more preferably 95 and most preferably 99.9% of the particles have a diameter of <15 μm. The mean particle diameter is preferably <15, more preferably <10, and most preferable < 7 µm” (paragraph [0039]), and inventive examples 1-4 set forth in Table 1 have mean particle diameters of 5.6-9.5 µm as measured by laser diffraction (paragraph [0150]). The composition of Nieendick is free from anionic surfactants (claim 1; Table 1, inventive examples 1-4); the specification of the instant invention defines “sulfate-free concentrate” as one that is devoid of any anionic surfactant which is a derivative of a sulfate (pg. 15, lines 34-36, pg. 16, lines 1-6). Additionally, the examples of Table 1 of Nieendick comprise water. Nieendick further teaches that the preparations produce a particularly intensive white opaqueness compared to the prior art, and that the white opaque effect is intensified by the particularly fine-particle preparations (paragraphs [0004], [0010], and [0040]).
The opacifier preparations of Nieendick require at least one alkyl and/or alkenyl oligoglycoside (claim 1), which are taught to be known nonionic surfactants (paragraph [0012]). The preparations may contain the alkyl and/or alkenyl oligoglycoside in quantities of 0.1 to 20 wt.% (paragraph [0016]), overlapping the range of the instant claim. Per MPEP 2144.05: “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).”
Regarding instant claim 2, as noted above, Nieendick teaches that ethylene glycol distearate is particularly preferred as an alkylene glycol fatty acid, and exemplifies ethylene glycol distearate in example preparations (paragraph [0035], Table 1).
Regarding instant claim 3, as noted above, Nieendick teaches “at least 85, preferably 90, more preferably 95 and most preferably 99.9% of the particles have a diameter of <15 μm. The mean particle diameter is preferably <15, more preferably <10, and most preferable < 7 µm” (paragraph [0039]), and inventive examples 1-4 set forth in Table 1 have mean particle diameters of 5.6-9.5 µm as measured by laser diffraction (paragraph [0150]).
Regarding instant claim 4, as described above, Nieendick teaches wax-based opacifier preparations (claim 1) that contain an alkylene glycol fatty acid ester present from 10 to 35% by weight (paragraph [0036]) and that ethylene glycol distearate is particularly preferred as an alkylene glycol fatty acid (paragraph [0035], Table 1). From MPEP 2144.05: “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).”
Regarding instant claim 5, as described above, Nieendick teaches inventive example compositions 1-4 in Table 1 containing a total of 10.9-14.3 wt.% surfactants.
Regarding instant claim 6, the inventive compositions 1-4 of Table 1 comprise water to 100 wt.%. The remaining ingredients comprise 41.4-44.8 wt.%, resulting in a water content of 55.2-58.6 wt.%.
Regarding instant claim 7, as described above, the composition of Nieendick contain at least one amphoteric surfactant (claims 1 and 4); inventive example 3 in Table 1 comprises 2.7 wt.% of the amphoteric surfactant cocoamidopropyl betaine.
Regarding instant claim 8, as described above, the opacifier preparations of Nieendick require at least one alkyl and/or alkenyl oligoglycoside (claim 1), which are taught to be known nonionic surfactants (paragraph [0012]). The preparations may contain the alkyl and/or alkenyl oligoglycoside in quantities of 0.1 to 20 wt.% (paragraph [0016]), overlapping the range of the instant claim. From MPEP 2144.05: “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).”
Regarding instant claim 9, the compositions of Nieendick are taught to be free from anionic surfactants (claim 1).
Regarding instant claim 10, the instant specification provides glyceryl oleate as an example of an emollient (pg. 15, lines 30-34). The inventive compositions 2 and 4 of Table 1 of Nieendick comprise glycerol oleate at 1.8 wt.% and 1.25%, respectively.
Regarding instant claim 13, Nieendick teaches that when the inventive opacifier preparations are added to aqueous surface-active compositions, a white opaqueness is produced (paragraph [0040]).
Regarding claim 14, Nieendick teaches a composition that contains 1 to 3.5% by weight of the opacifier preparation in an aqueous surface-active composition (paragraph [0040]).
Regarding instant claim 16, as noted above, Nieendick teaches that ethylene glycol distearate is particularly preferred as an alkylene glycol fatty acid (paragraph [0035], Table 1).
Regarding instant claims 17-19, as noted above, Nieendick teaches “at least 85, preferably 90, more preferably 95 and most preferably 99. 9% of the particles have a diameter of <15 μm. The mean particle diameter is preferably <15, more preferably <10, and most preferable < 7 µm” (paragraph [0039]), and inventive examples 1-4 set forth in Table 1 have mean particle diameters of 5.6-9.5 µm as measured by laser diffraction (paragraph [0150]).
Regarding instant claim 20, the preparations of Nieendick have a solids content of 25 to 45% by weight (claim 7).
Nieendick does not teach an amount of ethylene glycol distearate of at least 30% by weight (instant claim 4) or an amount of non ionic surfactant of from 0 to less than 2% by weight (instant claim 1) or from 0 to less than 1% by weight (instant claim 8) with sufficient specificity to anticipate the claims. However, as described above, Nieendick teaches overlapping ranges of the claimed amounts, rendering the claimed amounts prima facie obvious to one of ordinary skill in the art. From MPEP 2144.05: “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).”
The limitations of instant claim 1 that “said aqueous concentrate has…a L* whiteness of at least 80, a covering effect of at least 90%” are measured properties of the claimed concentrates which do not further structurally limit the claimed concentrate. As described above, the structural components of the claimed aqueous concentrate are rendered obvious by the teachings of Nieendick. Nieendick further suggests their opacifier preparations produce an intense whiteness, and attributes this effect to the fine-particle size of mixtures based on waxes, which are preferably ethylene glycol distearate (paragraphs [0004], [0010], and [0035]). As Nieendick teaches opacifier particles consistent in composition and size with those instantly claimed, and the teachings of Nieendick arrive at the structural components claimed aqueous concentrate, absent evidence the contrary, the claimed L* whiteness and covering effect properties will be present. See also MPEP 2112.01 II, “A chemical composition and its properties are inseparable”.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Nieendick as applied to claims 1-10, 13-14, and 16-20 above, and further in view of Rhodia (“MACKADET® OPR-1 Liquid Opacifier Concentrate”, January 2011, https://glenncorp.com/wp-content/uploads/2014/12/Mackadet-OPR-1.PDS.01.01.11.pdf; of record).
The teachings of Nieendick are described above.
Nieendick does not teach the limitation of instant claim 21 that the aqueous concentrate has a pH ranging from 4 to 6.
Rhodia teaches a sulfate free liquid opacifier concentrate which comprises glycol distearate (synonym for ethylene glycol distearate) and cocamidopropyl betaine (“Product Description” and “INCI List of Ingredients”). They further teach that the pH is 6.0-7.5 (“Specifications”) and that the product has a shelf life of 24 months (“Shelf Life”).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the opacifier preparations of Nieendick with the pH range taught by Rhodia, overlapping the claimed pH range.
One would have been motivated to do so with a reasonable expectation of success to achieve a pH range that is known to be suitable for shelf stable sulfate-free opacifier concentrates comprising glycol distearate and cocamidopropyl betaine, as taught by Rhodia. There is a reasonable expectation of success as Nieendick similarly teaches opacifier preparations free from anionic surfactants which comprise ethylene glycol distearate and cocamidopropyl betaine. Further, Nieendick teaches the inclusion of water-soluble additives such as pH regulators (paragraph [0121]) and that the opacifier preparations have high stability to sedimentation in the event of prolonged storage (paragraph [0040]). Further, from MPEP 2144.05 I: “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 1-10 and 12-23 are rejected under 35 U.S.C. 103 as being unpatentable over Hatchman (WO 2004/028676, published April 8, 2004; included on IDS submitted 05/17/2021) in view of Nieendick et al. (US 2004/0037793 A1, published February 26, 2004, included on IDS submitted 05/17/2021), hereafter “Nieendick”.
Regarding instant independent claims 1 and 12, Hatchman teaches an aqueous amphoteric-based opacifier comprising water, 2 to 15% by weight of ethylene glycol monostearate, and 15 to 36% by weight of ethylene glycol distearate (abstract, claim 1). The opacifier can be suspended in liquids to provide an opaque, creamy, visual effect and conceal inhomogeneities, and comprises small crystals (particles) (pg. 1, paragraph 1). The opacifier of Hatchman comprises from 12 to 25% by weight of amphoteric surfactant and from 0 to 10% by weight of non-ionic or anionic surfactant (claim 1); Hatchman teaches that in further embodiments, a single surfactant is present (abstract, claim 1, pg. 3). Thus, Hatchman suggests opacifiers that are free from non-ionic and anionic surfactants (0%), and a total amount of surfactant (12 to 25% amphoteric surfactant) overlapping the total amount of surfactants instantly claimed. From MPEP 2144.05 I: “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)”. The specification of the instant invention defines “sulfate-free concentrate” as one that is devoid of any anionic surfactant which is a derivative of a sulfate (pg. 15, lines 34-36, pg. 16, lines 1-6).
Regarding instant claim 2, as noted above, the opacifier of Hatchman comprises ethylene glycol monostearate and ethylene glycol distearate (abstract, claim 1).
Regarding instant claim 4, as described above, the opacifier of Hatchman comprises 2 to 15% by weight of ethylene glycol monostearate, and 15 to 36% by weight of ethylene glycol distearate (abstract, claim 1), resulting in a total weight % overlapping that instantly claimed. From MPEP 2144.05: “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).”
Regarding instant claim 5, as noted above, the opacifier of Hatchman comprises from 12 to 25% by weight of amphoteric surfactant and from 0 to 10% by weight of non-ionic or anionic surfactant (claim 1). Thus, Hatchman teaches opacifiers that are free from non-ionic and anionic surfactants (0%), and a total amount of surfactant (12 to 25% amphoteric surfactant) overlapping the total amount of surfactants instantly claimed.
Regarding instant claim 6, Hatchman exemplifies a concentrate with a balance of water (pg. 13, Examples II and III). The remaining ingredients comprise 48.125-48.6%, resulting in a water content of 51.4-51.875%.
Regarding instant claim 7, as noted above, the opacifier of Hatchman comprises from 12 to 25% by weight of amphoteric surfactant, overlapping the claimed range.
Regarding instant claims 8-9, as noted above, the opacifier of Hatchman comprises from 0 to 10% by weight of non-ionic or anionic surfactant (claim 1), and thus Hatchman teaches opacifiers that are free from both non-ionic and anionic surfactants (0%).
Regarding instant claim 10, the opacifier of Hatchman does not require the presence of an emollient, and Hatchman exemplifies concentrates with no emollient present (pg. 13, Examples II and III).
Regarding instant claim 13, Hatchman teaches that opacifiers can be suspended in liquid to provide an opaque visual effect and conceal inhomogeneities (pg. 1, paragraph 1), interpreted as increasing the opacity of the liquid.
Regarding instant claim 16, as noted above, the opacifier of Hatchman comprises ethylene glycol distearate (abstract, claim 1).
Regarding instant claim 21, Hatchman teaches that the pH can be less than 7.5 and more than 4, particularly when amphoacetate is used as the amphoteric surfactant (pg. 8, paragraph 2).
Regarding instant claims 22-23, as noted above, the opacifier of Hatchman comprises from 0 to 10% by weight of non-ionic surfactant (claim 1), and thus Hatchman teaches opacifiers that are free from nonionic surfactants (0%).
Hatchman does not teach the particle size limitations of claims 1, 3, 12, and 17-19. Hatchman further does not teach a composition comprising from 1 to 5% of the aqueous concentrate (instant claim 14) or a solids content of 20-90% solids (instant claim 20).
Nieendick teaches wax-based opacifier preparations (claim 1) that contain an alkylene glycol fatty acid ester present from 10 to 35% by weight (paragraph [0036]), with ethylene glycol distearate being particularly preferred (paragraph [0035], Table 1). The composition further contains at least one amphoteric surfactant (claims 1 and 4). Nieendick further teaches that “at least 85, preferably 90, more preferably 95 and most preferably 99.9% of the particles have a diameter of <15 μm. The mean particle diameter is preferably <15, more preferably <10, and most preferable < 7 µm” (paragraph [0039]), and inventive examples 1-4 set forth in Table 1 have mean particle diameters of 5.6-9.5 µm as measured by laser diffraction (paragraph [0150]). Nieendick further teaches that the preparations produce a particularly intensive white opaqueness compared to the prior art, and that the white opaque effect is intensified by the particularly fine-particle preparations (paragraphs [0004], [0010], and [0040]). Nieendick further teaches that, by virtue of their particle size, such opacifier preparations would be sufficiently stable, even at high temperatures (paragraph [0004]).
Nieendick further teaches adding opacifier preparations to compositions such as detergents, cosmetic, and pharmaceutical preparation, particularly in an amount of 1 to 3.5% by weight to impart a white opaqueness (paragraph [0040]). Nieendick teaches a preferable solids content of 25 to 45% by weight (paragraph [0038], claim 7).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the opacifier of Hatchman with the particle size suggested by Nieendick. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success to achieve an opacifier particle size that produces an intense whiteness and is stable in storage, as suggested by Nieendick (see particularly paragraph [0004]). There is a reasonable expectation of success as both Hatchman and Nieendick teach aqueous opacifier compositions comprising an ethylene glycol distearate opacifier and amphoteric surfactant. Modification of the ethylene glycol distearate opacifier particles of Hatchman with the particle size of Nieendick would predictably result in an aqueous opacifier composition with intense whiteness and sufficient storage stability.
It would further have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the opacifier of Hatchman with solids content of 25 to 45% by weight suggested by Nieendick, and to incorporate the opacifier into a composition in an amount of 1 to 3.5% by weight as suggested by Nieendick. One of ordinary skill in the art would be motivated to do so as Nieendick suggests that this solids content is preferable when incorporating opacifier preparations into commercial applications such as cosmetic preparations (paragraph [0038]) and that quantities of 1 to 3.5% are useful to impart a permanent, uniform, and intensive white opaqueness to such commercial compositions (paragraph [0040]). There is a reasonable expectation of success as the opacifiers of Hatchman are taught to be suspended in liquids to provide an opaque visual effect and conceal inhomogeneities (pg. 1, paragraph 1), and Hatchman teaches that it is known to add opacifying concentrates to products such as shampoo formulations (pg. 2, paragraph 1).
The limitations of instant claim 1 that “said aqueous concentrate has…a L* whiteness of at least 80, a covering effect of at least 90%”, of instant claim 12 that ““said aqueous concentrate has…a covering effect of at least 90%”, and of instant claim 15 that “the covering effect is at least 98%” are measured properties of the claimed concentrates which do not further structurally limit the claimed concentrates. As described above, the structural components of the claimed aqueous concentrate are rendered obvious by the teachings of Hatchman in view of Nieendick. Nieendick further suggests a fine-particle size opacifier preparation (preferably comprising ethylene glycol distearate wax) produces an intense whiteness (paragraphs [0004], [0010], and [0035]). As the teachings of Hatchman in view of Nieendick teach opacifier particles consistent in composition and size with those instantly claimed and arrive at the structural components of the claimed aqueous concentrates, absent evidence the contrary, the claim L* whiteness and covering effect properties will be present. See also MPEP 2112.01 II, “A chemical composition and its properties are inseparable”.
Response to Arguments
Applicant’s arguments filed 07/16/2026 have been fully considered.
Regarding the claim rejections under 35 USC § 103, Applicant argues that Nieendick teaches the opposite of the claimed invention by requiring the presence of a nonionic alkyl and/or alkenyl oligoglycoside. Applicant argues that Nieendick's compositions necessarily have non ionic surfactants; Applicant's claimed concentrates may or may not have non ionic surfactants, and if they do, only in very low quantities (0 to less than 2 wt.%). Therefore, Nieendick's compositions are different from Applicant's concentrates and the resultant L * whiteness and covering effect are not known for Nieendick's compositions, and are not inherently the same as Applicant's concentrate. Applicant argues that the focus on the allegedly overlapping ranges of the nonionic surfactant is not sufficient to establish obviousness. The claimed invention has multiple performance requirements and Applicant teaches that such high particle loads and optical performance are achievable without needing additional nonionic/anionic surfactants.
These arguments are unpersuasive. The Examiner respectfully maintains the position that Nieendick renders obvious all of the structural limitations of the concentrate of instant claim 1, which recites “from 0 to less than 2 % by weight of non ionic surfactant”. Nieendick provides a clear teaching that their opacifier preparations can contain the nonionic alkyl and/or alkenyl oligoglycosides in quantities of 0.1 to 20% by weight (paragraph [0016]), which overlaps the claimed ranges of instant claims 1 and 8, rendering the ranges prima facie obvious per the guidance of MPEP 2144.05 I. This range cannot be “opposite” to the claimed invention as the ranges overlap. The Examiner notes that, per MPEP 2144.05 III. A., “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range”, but no evidence of record is found which demonstrates such criticality.
Regarding the claimed L* whiteness and covering effect, the Examiner respectfully maintains the position that these are measured properties of the composition that do not further structurally limit the composition. The structural components of the claimed aqueous concentrate are rendered obvious by the teachings of the prior art. Nieendick further suggests that opacifier preparations comprising ethylene glycol distearate wax produce an intense whiteness and attributes this effect to the fine-particle size (paragraphs [0004], [0010], and [0035]). The prior art teaches opacifier particles consistent in composition and size with those instantly claimed, and the teachings of the prior art arrive at the structural components claimed aqueous concentrate. The Examiner maintains that, absent evidence the contrary, the claimed L* whiteness and covering effect properties will be present. See also MPEP 2112.01 II, “A chemical composition and its properties are inseparable”. MPEP 2112.01 I. states that, “the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.” However, there is no evidence of record that the compositions of Nieendick do not possess the claimed L* whiteness or covering effect.
Applicant continues to argue the position that the inventive concentrates show unexpected beneficial results over the commercial Mackadet OPR1 and Opulyn 301. Applicant argues that inventive formulations A and B containing the respective concentrate (i.e., concentrate A and B, respectively) demonstrate far superior covering effect, especially against a black background. Applicant argues that the amount of total surfactant in Examples A and B do in fact fall within the claimed range as the amphoteric surfactants were added as aqueous products, and the amount of CAPB surfactant is substantially lower than the percentages listed in the specification, citing to Exhibits A and B.
In response, the Examiner respectfully maintains the positions of the Office Actions mailed 10/15/2024, 05/05/2025, and 02/19/2026 regarding the alleged unexpected results, with particular emphasis on the points below.
The Examiner respectfully maintains that the prior art of Nieendick is considered to be the closest prior art as Nieendick teaches ethylene glycol distearate opacifier particles with sizes consistent with those of the instant invention, while the comparative Mackadet OPR comprises larger particle sizes. The prior art of Nieendick teaches a correlation between the fine particle size of ethylene glycol distearate and an intensive white opaqueness, indicating that compositions with this particle size are a closer comparison. There is no comparison of record between the claimed invention and those of Nieendick such that any superior or unexpected properties can be concluded.
The Examiner further maintains that comparisons to OPULYN 301 are unpersuasive as OPULYN 301 is an anionic styrene/acrylic copolymer (see specification pg. 22, “Example 2”), a completely different material to the ethylene glycol distearate particles of the inventive examples; use of ethylene glycol distearate particles in opacifier preparations is known in the prior art, and the prior art is thus a closer comparison. Even assuming that Mackadet OPR1 is the closest comparison, no statistically or practically significant differences in L* whiteness or covering effect are observed in comparing the inventive aqueous concentrates to Mackadet OPR1 (see Table on pg. 23 of the specification).
Regarding the arguments that total amount of surfactant of Examples A and B are consistent with the instant claims, the Examiner notes that while pg. 16 and 17 of the remarks are labeled “Exhibit A” and “Exhibit B”, respectively, the pages are otherwise blank. Regardless, the Examiner maintains the position that the evidence of alleged unexpected results is not commensurate in scope with the claims, and one of ordinary skill in the art would not be able to determine a trend to reasonably extend to the full scope of claimed opacifier particles at any concentration of at least 25% or any amphoteric or zwitterionic surfactant (see MPEP 716.02(d)). The only compared inventive concentrates A and B comprise ethylene glycol distearate as the opacifier particle (added at 34.5 wt% and 45 wt%, respectively) and cocamidopropyl betaine as the only surfactant (Examples 1a and 1b in the instant specification).
Regarding the claim rejections under 35 USC § 103 over Hatchman in view of Nieendick, Applicant argues that the proposed combination lacks a reasonable expectation of success as Nieendick’s particle size is inseparable from its mandatory nonionic surfactant system. Applicant’s fine particle size that the Examiner borrows from Nieendick is not a freestanding result that can be transplanted into any opacifier system. Nieendick expressly and unambiguously attributes its fine particle size to a specific, mandatory emulsifier combination: a nonionic surfactant, combined with at least one fatty acid partial glyceride, in a defined ratio. The mere fact that both references employ ethylene glycol distearate and an amphoteric surfactant does not establish that Nieendick's particle size result, which Nieendick itself attributes to its nonionic oligoglycoside/partial glyceride emulsifier system, would be achieved in a composition that lacks that system.
These arguments are unpersuasive. The Examiner notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, Nieendick provides motivation to the skilled artisan to employ a small ethylene glycol distearate opacifier particle size in the composition of Hatchman as such particle sizes are correlated to an intense whiteness. One of ordinary skill in the art would recognize that particle size can be affected in a number of ways including via processing techniques such as grinding or milling. The Examiner respectfully maintains that the balance of evidence suggests that the claimed invention is rendered prima facie obvious by the teachings of the prior art.
Applicant further argues that the covering effect limitations are not inherent in the prior art, and Applicant’s comparative data rebuts the Examiner’s inherency position. Applicant argues that they have provided rebuttal evidence that the prior art products do not necessarily possess the characteristics of the claimed product. Particularly, Applicant argues that Example 2 of the specification characterizes commercially available aqueous opacifier concentrates that are structurally analogous to the compositions the Examiner contends are rendered obvious by the combined teachings of Hatchman and Nieendick. Specifically, Mackadet OPR-1, a commercially available sulfate-free aqueous concentrate containing ethylene glycol distearate and cocamidopropyl betaine as its principal components, fails to meet the covering effect threshold of at least 98% required by claim 15 (97% less than 98%). Applicant further argues that the prior art does not disclose, measure, or even mention covering effect or L* whiteness as defined and measured in the present application, and the qualitative, unquantified descriptions of white opaqueness are insufficient to establish that any specific covering effect threshold is inherently achieved.
These arguments are unpersuasive. This evidence does not establish that the prior art products do not necessarily possess the characteristics of the claimed product because they do not compare the prior art product to the claimed product. As set forth above, the Examiner maintains the position that while the commercial Mackadet OPR-1 shares some characteristics with the claimed invention, the composition of the prior art of Nieendick is closer as Nieendick teaches ethylene glycol distearate opacifier particles with sizes consistent with those of the instant invention, while the comparative Mackadet OPR comprises larger particle sizes. Further, the prior art of Nieendick teaches a correlation between the fine particle size of ethylene glycol distearate and an intensive white opaqueness, indicating that compositions with this particle size are a closer comparison, and that the effect of particle size cannot be disregarded.
The Examiner agrees with the position that the cited prior art does not measure covering effect or L* whiteness as defined and measured in the present application. However, properties of a chemical composition are a result of its structure (MPEP 2112.01 II. “A chemical composition and its properties are inseparable”). As the Examiner has established that the structural components of the claimed compositions are prima facie obvious, the burden shifts to the Applicant to establish that the prior art products do not necessarily possess the claimed characteristics. As noted above, the Applicant does not compare the claimed invention to that of the prior art, and thus this burden has not been satisfied.
Conclusion
Applicant’s arguments are considered unpersuasive. Accordingly, 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 JUDITH M KAMM whose telephone number is (703)756-4575. The examiner can normally be reached M-F 8:00 am-4:30 pm EST.
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, Bethany Barham can be reached at (571)272-6175. 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.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611
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