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 .
Status of the Claims
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/04/2025 has been entered.
Claim 11 is cancelled.
Claims 22-23 are newly added.
Claims 1-10 and 12-23 are pending and under current examination.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Objections
Claim 23 is objected to because of the following informalities: for readability of the claim, it is suggested that Applicant recite “The aqueous concentrate according to claim 1 wherein the aqueous concentrate has an absence of non ionic surfactant”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 8 and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 8 recites “The aqueous concentrate according to claim 1 further comprising from 0 to less than 1% by weight of non ionic surfactant relative to the total weight of the aqueous concentrate.” Similarly, claim 22 recites “The aqueous concentrate according to claim 1 further comprising from 0 to less than 0.1% by weight of non ionic surfactant relative to the total weight of the aqueous concentrate.” Claim 1, from which claims 8 and depend, recites the limitation “said aqueous concentrate has from 0 to less than 2 % by weight of non ionic surfactant”.
It is unclear if the recitation of “further comprising” in claims 8 and 22 is intended to mean that a second nonionic surfactant is present in the recited amount in addition to the nonionic surfactant recited in claim 1, or if this is intended to limit the weight % of the nonionic surfactant recited in claim 1. It is suggested that Applicant can recite “wherein the aqueous concentrate comprises from 0 to less than 1% by weight of non ionic surfactant” and “wherein the aqueous concentrate comprises from 0 to less than 0.1% by weight of non ionic surfactant” in claims 8 and 22, respectively.
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) 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 09/04/2025 have been fully considered.
Regarding the claim rejections under 35 USC § 102 as being anticipated by Nieendick, Applicant argues that the independent claims have been amended to include claim 8’s requirement of from 0 to less than 2% by weight of nonionic surfactant, and thus the claims are not anticipated by Nieendick.
In response, the Examiner notes that as set forth above, the rejections under 35 USC § 102 have been withdrawn.
Regarding the claim rejections under 35 USC § 103, Applicant argues that Nieendick does not teach nor disclose Applicant’s claimed 0 to less than 2 wt.% nonionic surfactant in the aqueous concentrate, and that Nieendick teaches the opposite by requiring the presence of a nonionic alkyl and/or alkenyl oligoglycoside. Applicant argues that if one of ordinary skill were to modify Nieendick to have 0 to less than 2 wt.% of nonionic surfactants, it would render the concentrate unsatisfactory for Nieendick’s intended purpose. Applicant similarly argues that Nieendick does not teach from 0 to less than 1 wt.% of nonionic surfactant as required by amended claim 8. Applicant further argues that the claimed concentration may or may not have nonionic surfactants, and if they do, only in very low quantities; therefore, the resultant L* whiteness and covering effect are not known for Nieendick’s compositions and are not inherently the same as Applicant’s concentrate.
The argument that Nieendick does not teach nor disclose Applicant’s claimed 0 to less than 2 wt.% or 0 to less than 1 wt.% nonionic surfactant is unpersuasive. As set forth above, 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 it prima facie obvious. Per 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)”.
Regarding the claimed L* whiteness and covering effect, the Examiner maintains 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 further argues that the inventive concentrates show unexpected beneficial results. Applicant argues that the comparative examples in the specification of Mackadet OPR1 and Opulyn 301 are the closest comparison as Nieendick requires a nonionic surfactant, while these do not. Applicant argues that Example 3 shows that using the aqueous concentrates in personal care compositions yields unexpectedly beneficial results due to the claimed aqueous concentrates and is therefore relevant for purposes of secondary considerations. Applicant argues that inventive concentrates A and B both have high whiteness properties and demonstrate superior covering effect, referring to table of Example 3 on pg. 24 of the specification.
In response, the Examiner respectfully maintains the positions of the Office Actions mailed 10/15/2024 and 05/05/2025 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).
The Examiner continues to be unpersuaded by the argument regarding the results of Example 3. As noted by Applicant, these results are directed to “using the aqueous concentrates in personal care compositions”, which is a future intended use of the claimed concentrates. The claims are drawn to an aqueous concentrate and do not require that the concentrate be used in personal care compositions. The intended use of the claimed concentrates, particularly one which is not recited in the claim language, does not limit the structural components of the concentrates themselves. As noted above, the comparative tests of the concentrate itself do not demonstrate any statistically or practically significant differences over the comparative Mackadet OPR1. It is the aqueous concentrate that is instantly claimed, and not a personal care composition comprising the aqueous concentrate.
The Examiner further maintains 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).
The Examiner further notes that is not clear that the exemplified aqueous concentrates A and B fall within the scope of the instantly claimed aqueous concentrates. The instant independent claims recite that “the total amount of surfactants in said aqueous concentrate range from 0.5 to 15% by weight relative to the total weight of the aqueous concentrate”. However, aqueous concentrate A is prepared by adding 7.7 wt% cocamidopropyl betaine, milling, and adding a further 14.2 wt% of cocamidopropyl betaine (totaling 21.9% of surfactant). Similarly, aqueous concentrate B adds 10 wt% and a further 14.2 wt% of cocamidopropyl betaine (totaling 24.2% of surfactant). The total amounts of surfactant exemplified appear to be outside the range of the instant claims.
Regarding newly added claims 22-23, Applicant argues that Nieendick requires a nonionic alkyl and/or alkynyl oligoglucoside surfactant; Applicant’s claim 22 falls outside the scope of Nieendick’s entire range, and an absence of nonionic surfactant of claim 23 is the opposite of Nieendick.
In response, the Examiner submits that the newly added claims are addressed in the new rejections set forth above which do not rely on Nieendick for teaching a particular content of nonionic surfactant. The prior art of 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 of Hatchman is taught to comprise from 0 to 10% of non-ionic surfactants, and thus specifically contemplates an absence (0%) of nonionic surfactant, meeting the nonionic surfactant concentration limitations of the instant claims.
Conclusion
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611