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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 28, 2025 has been entered.
Applicants' arguments, filed July 28, 2025, have been fully considered but they are not deemed to be fully persuasive. The following rejections and/or objections constitute the complete set presently being applied to the instant application.
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.
Claim(s) 1, 3, 4, 7, 12 – 16, 18 – 22 and 25 – 27 were rejected under 35 U.S.C. 103 as being unpatentable over Bakes et al. (US 2017/0000713) in view of Mathur et al. (US 2016/0120803). This rejection is MAINTAINED for the reasons of record set forth herein.
Bakes et al. discloses a personal care composition comprising zinc acetate that is applied to the skin, a keratin material, the personal care compositions suitable for various uses such as face or body cleansers, pre-shave preparations, moisturizers or lotions (¶¶ [0006] – [0007]). The personal care composition is used by applying the composition to a portion of the skin (e.g., ¶ [0073]). The physical form of the composition is not critical and can be, for example, shampoos, bath gels, hair conditioners, hair tonics (¶ [0070]). When the composition is a wash or cleansing composition, the carrier can comprise one or more lathering surfactants and preferably the surfactant or combination of surfactants should be mild (¶ [0059]). The lathering surfactants can be anionic, nonionic, amphoteric or mixtures thereof and cationic surfactants can also be used, provided that they do not negatively impact the overall lathering characteristics (¶ [0060]). The surfactant concentration can be about 2% to about 30% by weight of the composition, with weight ratios for the anionic to amphoteric and/or zwitterionic surfactant being given so as to avoid skin irritation issues (¶ [0061]). Among the preferred anionic surfactants are the carboxylate acylglutamate anionic surfactants sodium cocoyl glutamate, sodium myristoyl glutamate and mixtures thereof (¶¶ [0062] – [0064]). About 0.5% to about 20% of amphoteric or zwitterionic detersive surfactants can be present (¶ [0065]). Among the disclosed nonionic surfactants that are suitable for use are alkyl glucosides (¶ [0066]). ¶ [0068] discloses a list of preferred surfactants that come from the various classes and include the amphoteric surfactants disodium lauroamphodiacetate, sodium lauroamphoacetate, cetyl dimethyl betaine, cocoamidopropyl betaine, cocoamidopropyl hydroxy sultaine, and mixtures thereof. The carrier is preferably dermatologically acceptable one such as an oil-in-water or water-in-oil emulsion (¶ [0030] onward). While thickening agents can be included (¶ [0058]), they are not a required ingredient and thus compositions without thickening agents are disclosed. The post foam shave gel in example set D (¶ [0089]) comprises 1.94% glyceryl oleate.
A formulation with a ratio of carboxylate anionic surfactant (e.g., sodium cocoyl glutamate) to glyceryl ester (e.g., glyceryl oleate) falling within the claimed range is not disclosed.
Mathur et al. discloses a liquid composition for use with a non-aerosol pump that comprises about 1% to about 8% foam booster; about 0.4% to about 5% foaming agent; about 20% to about 98% solubilizer and optionally about 0.5% to about 5% emollient (whole document, e.g., abstract; all percentages are w/w). Liquid foams are used in many fields including the consumer product industry for products such as shaving foams or shampoo (¶ [0001]). Among the disclosed foam boosters are compounds that can also be called surfactants including sodium lauroyl sarcosinate, cocoamidopropyl betaine and lauryl amidopropyl betaine, with at least the first being acceptable for pharmaceutical applications (¶¶ [0033] – [0034]). The foaming agents can be surfactants that (typically in small amounts) reduces the surface tension of a liquid or increases its stability (¶ [0016]). Disclosed foaming agents include sodium cocoyl sarcosinate and disodium cocoyl glutamate (¶ [0035]), which latter reading on the carboxylate acylglutamate anionic surfactant of the instant claims, and sodium lauryl glucoside (¶ [0035]), an alkyl glucoside. Combinations of the foaming agents are also encompassed (last line of ¶ [0035]). The solubilizer can be cosmetically acceptable solvents such as water, ethanol, glycerine, propylene glycol or isopropyl alcohol (¶ [0037]). Emollients such as glyceryl oleate are an optional ingredient in the formulation (¶ [0046]). Additional components such as preservatives and pH modifiers can also be present (¶ [0068] onward).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to select the combination of surfactants and ingredients in the compositions of Bakes et al. and to optimize the amounts of each ingredient in the final composition. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because the prior art discloses that a variety of ingredients including different types of surfactants and combination of surfactant types including anionic surfactant(s) can be included in various personal care compositions such as shampoos or body cleansers. The selection and optimization of the amounts of the various ingredients that are disclosed in the prior art is within the skill of the person of ordinary skill in the art. Amounts and various examples of classes (e.g., non-ionic surfactants) are disclosed in the prior art such that person of ordinary skill in the art has a list of possible ingredients and amounts to work from when preparing a cleansing composition that can be applied to a keratin material such as skin. The amount of a specific ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results depending on the type of formulation and desired effect, e.g., mild skin cleansing or deep cleansing of hair with a shampoo product. There is no evidence of record reasonably commensurate in scope with the claims as to the criticality of the amounts and/or ratio of the various ingredients that are present in the claimed composition. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. While ingredients such as thickeners or surfactants with sulfates can be present in the compositions disclosed by Bakes et al. and Mathur et al., they are not required ingredients and the presence of such ingredients is not completely excluded by the instant claims that are only required to be substantially free of such ingredients (see definition of ‘substantially free’ at ¶ [0218] of the PGPub of the instant application) and therefore such compositions are rendered obvious by the prior art.
Applicants traverse this rejection on the grounds that the Office has not set forth a sufficient reason why one of ordinary skill in the art would have been motivated to combine Bakes and Mathur in the manner proposed. The motivation to combine is completely absent from [the] Office’s arguments. Other than simply asserting a general motivation to optimize the amounts, the Office continues to fail to provide reasoning as to why one of ordinary skill in the art, based on the disclosure of Bakes or Mathur, would select or modify the amounts of certain ingredients to arrive at the claimed invention.
These arguments are unpersuasive. Obviousness can be established by an explicit teaching, suggestion or motivation to combine but that is not the only means by which obviousness can be established. Here Bakes et al. discloses compositions that can comprise multiple surfactants and provides a range for the total amount of all surfactants, and additional information as to the amounts of amphoteric surfactants but not all other surfactants described as lathering surfactants. While lathering surfactants are not a required ingredient, the inclusion of such ingredients is clearly contemplated by Bakes et al. To prepare a lathering composition, the person of ordinary skill in the art would include such ingredients but would be in need of additional guidance as to suitable amounts of, for example, the anionic surfactants disclosed by Bakes. The formulations of Mathur are foams and the foam boosters and foaming agents of Mathur provide additional guidance to one of ordinary skill in the art as to the amounts of anionic surfactants to be used in the formulations of Bakes that can contain lathering surfactants. The evidence of record has not established the criticality of the particular carboxylate anionic surfactant and/or the amount of such ingredients sufficient to overcome this rejection. While evidence has been set forth for the combination of disodium cocoyl glutamate and sodium cocoyl glutamate, which fall within the genus of acylglutamates, and the ratio with glyceryl oleate, no evidence for species falling with the scope of the acylglycinates has been made of record. No arguments or evidence as to why one of ordinary skill in the art would reasonably expect the unexpected results on the viscosity arising from the ratio of carboxylate anionic surfactant to glyceryl ester is varied would also apply to another class of carboxylate anionic surfactants containing a different amino acid.
Applicants also argue that Bakes and Mathur fail to teach or suggest the claimed weight ratio of carboxylate anionic surfactants to glyceryl ester. The Office again offers nothing in support of the conclusion that independently optimizing the total amount of carboxylate surfactant and total amount of glyceryl ester would result in a composition having the claimed ratio. Even assuming arguendo motivation to choose carboxylate anionic surfactants and a glyceryl ester while optimizing the amounts, the Office has provided no explanation as to why or how the skilled artisan would have been motivated to optimize the relative amounts of these ingredients. Neither Bakes nor Mathur recognized this weight ratio as a results effective variable.
These arguments are unpersuasive. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. Here the amounts of the individual ingredients would be optimized, which necessarily alters the weight ratio between those ingredients even the optimization is not explicitly based on this ratio. As mentioned above and discussed in previous Office Actions, the evidence of record has presented persuasive evidence of unexpected results based on the weight ratio but that evidence is not reasonably commensurate in scope with the claims. No additional evidence has been made of record in this application in comparison to the parent application and the instant claims are broader. Even as amended, the anionic carboxylate surfactant can be an acylglutamate, a species of which was used in the data in the declaration that was filed on May 16, 2024, or an acylglycinate. No formulations with acylglyciantes were prepared in the disclosure as originally filed nor has any arguments or evidence been made of record regarding this class of surfactants. Applicants have not argued why one of ordinary skill in the art would expect the unexpected results arising from the weight ratio of the carboxylate acylglutamate anionic surfactant to glyceryl ester would then behave in an expected manner when acylglycinates are used as the carboxylate anionic surfactants. In the absence of evidence of unexpected results that are reasonably commensurate in scope with the claims, the instant claims are not patentably distinguished over the prior art.
Applicants also argue Bakes and Mathur fail to teach or suggest about 3% to about 18% alkylpolyglucoside nonionic surfactant as there is no motivation in the cited references to select alkylpolyglucosides as the lathering surfactants. The references do not criticize or actively teach away but avoiding improper hindsight requires an actual reason for one of ordinary skill in the art to make the proposed modification and not just that it was within the scope of the prior art. Regardless of whether the listed compounds in Bakes include nonionic surfactant chosen from alkylpolyglucosides, such ingredients are not emphasized or pointed out as preferred. Nonionic surfactants are also listed as penetration enhancers but alkylpolyglucosides are not among the exemplary nonionic surfactants that can be used. Therefore nothing in Bakes would have motivated including secondary alkylpolyglucoside nonionic surfactants in the claimed amounts.
These arguments are unpersuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP 2123). Furthermore, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). MPEP 2123, emphasis added. Prior art is relevant for all that is disclosed and is not limited to the examples or what maybe be preferred. That alkylpolyglucosides are not preferred does not rise to the level of teaching away from the use of alkylpolyglucosides in the formulations that can contain a total of 2 - 30% of all types of surfactants present in the formulation. While there is no explicit motivation to select alkylpolyglucosides for inclusion in the disclosed formulation, alkylpolyglucosides are clearly exemplified as possible ingredients that one of ordinary skill in the art can select for use in the disclosed formulations. A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton (MPEP 2141(II)(C) and such a person can select different combinations of ingredients that are taught in applied prior art. No criticality for the claimed combination of (acylglycinate/acylgluatamate) carboxylate anionic surfactant and alkylpolyglucoside nonionic surfactants has been made of record that could weigh against the obviousness of the claimed composition.
Applicants also indicate disagreement with previous indication of the Office regarding the disclosure in Bakes of about 0.5 to about 20% amphoteric or zwitterionic surfactants providing with the disclosure of about 2% to about 30% total surfactants. Examples of anionic and multiple examples of nonionic surfactants are disclosed and only provides ranges for the concentration of total lathering surfactant (i.e., anionic, cationic and nonionic) and the ratio of the amount of anionic surfactant to amphoteric and/or zwitterionic surfactants, citing to ¶ [0061]. The disclosure of Bakes fails to sufficiently teach any specific amount or range. There is a long list of lathering surfactants in Mathur and various ranges for the total amount of foaming agents but similar to Bakes does not teach or suggest any amount or range specifically for carboxylate surfactants.
These arguments are unpersuasive. Applicants do not provide a citation for the exclusion of the amount of amphoteric or zwitterionic surfactants from the total amount of lathering surfactant in Bakes et al. as i.e. and not e.g. was used in their description of Bakes. Based on about 2% to about 30% of all surfactants with abour 0.5% to about 20% being zwitterionic and/or amphoteric surfactants, that would leave about 0.5 to about 10% for the remaining types of surfactants. While this range is broader than the claimed range for the amount of carboxylate anionic surfactant, Mathur et al. provides additional guidance to ranges for various surfactants that can be present in the prior art. Selection and optimization of the amounts of those ingredients from the information in the applied prior art is within the skill of the person of ordinary skill in the art. The evidence of record has not established the criticality of the claimed amount of total carboxylate anionic surfactant to patentably distinguish the claims over the prior art.
Claim(s) 10 and 12 were rejected under 35 U.S.C. 103 as being unpatentable over Bakes et al. and Mathur et al. as applied to claims 1, 3, 4, 7, 12 – 16, 18 – 22 and 25 – 27 above, and further in view of Rizk (US 2015/0157545).
Bakes et al. and Mathur et al. are discussed above.
While Bakes et al. generally discloses alkyl glucosides as nonionic surfactants, specific alkyl glucosides such as those in claim 10 are not disclosed.
Rizk discloses a cleansing composition that comprises three different types of surfactants (nonionic, amphoteric and anionic) and a cationic silicone, cationic silane, cationic silane oligomer or mixture thereof (abstract). Alkyl polyglucosides are exemplified as nonionic surfactants useful in the composition (¶ [0037]) and specifically exemplified typical alkyl polyglucosides include lauryl glucoside, decyl glucoside and coco glucoside (¶ [0044]).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to use typical alkyl glucosides such as lauryl glucoside, decyl glucoside and coco glucoside in the compositions of Bakes et al. and Mathur et al. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because Bakes et al. discloses that the genus of alkyl glucosides can be present but does not provide specific examples. Rizk discloses a cosmetic cleansing composition that can contain multiple surfactants and discloses that lauryl glucoside, decyl glucoside and coco glucoside are suitable nonionic surfactants for use in cosmetic cleansing compositions. The selection of specific, known species of alkyl glucosides within the genus of nonionic surfactants from those that are known in the prior art as suitable for use in cosmetic compositions is within the skill of the person of ordinary skill in the art and there is no evidence of record of unexpected results arising from the other of these specific alkyl glucosides.
Regarding claims 10, 12, 23 and 24, Applicants argue that each of these claims depends from claim 1. Regardless of whether Rizk and/or Aoki teach the elements for which they are relied upon, the Office has not alleged how either of these references remedies the deficiencies of Bakes and Mathur in regards to claim 1 as discussed above.
These arguments are unpersuasive. Mathur et al. discloses sodium lauryl glucoside which is listed in claim 10. Claims 10 and 12 are rejected over Bakes in view of Mathur et al. further in view of Rizk. Claims 23 and 24 are rejected over Bakes et al. in view of Mathur et al. only but further in view of Aoki et al. as discussed below. As discussed in greater detail above, Bakes et al. and Mathur et al. are not deficient as alleged by Applicants so Rizk is not required to cure those alleged deficiencies.
Claim(s) 23 and 24 were rejected under 35 U.S.C. 103 as being unpatentable over Bakes et al. and Mathur et al. as applied to claims 1, 3, 4, 7, 12 – 16, 18 – 22 and 25 – 27 above, and further in view of Aoki et al. (US 2010/0280111).
Bakes et al. and Mathur et al. are discussed above.
The pH of the final composition is not disclosed.
Aoki et al. discloses skin external preparations with a branched acyl carnitine with excellent formulation stability (whole document, e.g., abstract). The types and form of the compositions are not particularly limited as long as they are used directly on the skin and include creams, cleansing foams, soaps, body shampoos, shampoos and hair creams (¶¶ [0112] – [0113]). The pH of the skin external preparation can be adjusted to be between 5.5 to 9 or 6.0 – 8.0 (¶¶ [0023] – [0024]). The skin external compositions can contain other components commonly used in general skin external preparations and cosmetics (¶ [0059] onward)). Such components include anionic surfactants (¶ [0075] onward), cationic surfactants such as betaines and nonionic surfactants including glyceryl oleate (¶ [0081] onward, ¶ [0085] and claims 7 - 10).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to optimize the final pH of the prepared composition. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because the pH of the compositions should be compatible with the skin of the final user and Aoki et al. discloses a pH range for the compositions that encompasses the claimed range as suitable for skin compositions. The composition can take a variety of forms and selection of the final form and optimization of the pH for that particular application within the general guidance provided by the prior art and the knowledge of the person of ordinary skill in the art would lead to optimization of composition properties such as the pH. There is no evidence of record as to the criticality of the claimed pH range.
Regarding claims 10, 12, 23 and 24, Applicants argue that each of these claims depends from claim 1. Regardless of whether Rizk and/or Aoki teach the elements for which they are relied upon, the Office has not alleged how either of these references remedies the deficiencies of Bakes and Mathur in regards to claim 1 as discussed above.
These arguments are unpersuasive. Claims 10 and 12 are rejected over Bakes in view of Mathur et al. further in view of Rizk as discussed above. Claims 23 and 24 are rejected over Bakes et al. in view of Mathur et al. only but further in view of Aoki et al. As discussed in greater detail above, Bakes et al. and Mathur et al. are not deficient as alleged by Applicant so Aoki et al. is not required to cure those alleged deficiencies.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Regarding the double patenting rejections, Applicants state they do not necessarily agree with the rejections but respectfully request that they be held in abeyance until allowable subject matter is indicated.
These arguments are unpersuasive. The nonstatutory double patenting rejections are maintained for the reasons set forth below. Applicant's failure to argue the rejection on the grounds of non-statutory double patenting over US Patent Nos. 11,123,276 and 11,376,207 is noncompliant with the regulations under 37 C.F.R. 1.111. The instant rejections are not provisional rejections as the claims of US Patent Nos. 11,123,276 and 11,376,207 have been issued. In the interest of compact prosecution, the Examiner has examined the instant application. However, in order for the response to the instant Office Action to be fully responsive and in compliance with the regulations under 37 C.F.R. 1.111, the Applicant should either file a terminal disclosure or traverse the rejection based on US Patent Nos. 11,123,276 and 11,376,207. Because applicant did not distinctly and specifically point out the supposed errors in the instant non-statutory double patenting rejection based on US Patent Nos. 11,123,276 and 11,376,207 and no Terminal Disclaimer has been filed, the rejection is maintained for the reasons set forth below.
Claims 1, 3, 4, 7, 10, 12 – 16, and 18 – 27 were rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 24 of U.S. Patent No. 11,123,276. This rejection is MAINTAINED for the reasons of record set forth herein.
The claims of US’276 recite a composition comprising at least one carboxylate anionic surfactant selected from the Markush group of claim 1, at least one secondary surfactant other than the at least one carboxylate anionic surfactant, at one glyceryl ester selected from the Markush group of claim 1 that includes glyceryl oleate (see also claim 15) and a cosmetically acceptable solvent, the composition having a weight ratio of the at least one carboxylate anionic surfactant to at least one glyceryl ester ranging from 0.5 – 1.00 (claim 1). The various secondary surfactants recited in claims 5 – 14 are the same as those of the instant claims and mixtures of different classes of surfactants (claim 5) and the claimed nonionic surfactants include lauryl glucoside, decyl glucoside, coco glucoside or mixtures thereof (claim 8). The range in claim 6 for the total amounts of secondary surfactants encompasses the claimed ranges while that in claim 7 matches the claimed range in instant claim 1. The composition can be substantially free of thickeners (claim 19) or sulfate-based anionic surfactants (claim 22). The pH of the composition can range from 7 – 9 (claim 20). A method of cleansing keratin materials by applying such as composition is also claimed (claim 24). These are the same compositions and method of use that are recited in the instant claims and therefore the claims of the instant application are not patentably distinguished over the claims of US’276.
Claims 1, 3, 4, 7, 10, 12 – 16, and 18 – 27 were rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 19 of U.S. Patent No. 11,376,207 in view of Bakes et al. (US 2017/0000713) and Mathur et al. (US 2016/0120803) optionally further in view of Aoki et al. (US 2010/0280111). This rejection is MAINTAINED for the reasons of record set forth herein.
The claims of US’207 recite a shampoo composition comprising carboxylate anionic surfactant(s), glyceryl ester(s), cationic guar compound(s) and polysaccharide gum(s) in a cosmetically acceptable solvent and method in which such a composition is applied to the hair, a keratin material, to cleanse the hair (claims 1 and 18). The carboxylate anionic surfactants can be disodium cocoyl glutamate and sodium cocoyl glutamate (claim 4) while various glyceryl esters are recited in claims 9 and 10. The composition can contain about 2% to about 13% of the carboxylate anionic surfactants and from about 2% to about 6% of the glyceryl ester(s) (claims 5 and 11). Thus the ratio of carboxylate anionic surfactant to glyceryl ester would range from 0.33 to 6.5, which encompasses the range of the instant claims. Additional non-carboxylate surfactants and mixtures thereof can also be present in the compositions such as decyl glucoside or lauryl glucoside in amounts of about 0.1 wt% to about 10 wt% (claims 14 - 16), a range which overlaps with the claimed range. The guar and gum components could read on thickeners, but based on the definition of substantially free in the instant application and the ranges for these ingredients in claim 8, the claimed compositions can still be substantially free of thickeners. The compositions can also be substantially free of sulfate-based anionic surfactants (claim 17).
The pH of the composition is not claimed in US’207.
Bakes et al., Mathur et al., and Aoki et al. are discussed above.
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to select and then optimize the amount of the various ingredients and the pH of the final composition. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because the selection and optimization of the amounts of the various ingredients is within the skill of the person of ordinary skill in the art. The selection and optimization of the amounts of the various ingredients that are disclosed in the prior art is within the skill of the person of ordinary skill in the art. Amounts and various examples of classes (e.g., non-ionic surfactants) are disclosed in the prior art such that person of ordinary skill in the art has a list of possible ingredients and amounts to work from when preparing a cleansing composition that can be applied to a keratin material such as skin. Combinations of surfactants can be used to prepare personal care compositions. The amount of a specific ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results depending on the type of formulation and desired effect, e.g., mild skin cleansing or deep cleansing of hair with a shampoo product. There is no evidence of record reasonably commensurate in scope with the claims as to the criticality of the amounts and ratio of the various ingredients that are present in the claimed composition. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05.
Claims 1, 3, 4, 7, 10, 12 – 16, and 18 – 27 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 3, 5 – 13, 15 – 23, 25 – 31, 33 and 34 of copending Application No. 16/204,591 in view of Bakes et al. (US 2017/0000713) in view of Mathur et al. (US 2016/0120803) optionally further in view of Rizk (US 2015/0157545) or Aoki et al. (US 2010/0280111). This rejection is MAINTAINED for the reasons of record set forth herein.
The claims of US’591 recite a composition comprising about 4 to about 20 wt% anionic surfactant(s), about 0.5 to about 3 wt% fatty alcohol(s), about 0.1 – about 5 wt% glyceryl ester(s), about 0.15 – about 1.2 wt% of cationic polymer(s) from the Markush group of claim 1, about 0.5 – about 10 wt% non-cationic polysaccharide(s) from the Markush group of claim 1 and water (reads on a cosmetically acceptable solvent) and methods of using such compositions (claims 1 and 21). The anionic surfactants can be non-sulfates (claim 2) such as acyl sarcosinates (claim 3). The anionic surfactants can be present in an amount ranging from about 4 to about 20%, so the ratio of carboxylate anionic surfactant to glyceryl ester would range from 0.8 to 200, encompassing the range of the instant claims. The glyceryl ester can be glyceryl oleate (claim 6). Additional (secondary) surfactants such as the amphoteric surfactants of claim 10 can also be present. The cationic polymers and non-cationic polysaccharides ingredients could read on thickeners, but based on the definition of substantially free in the instant application and the claimed ranges for these ingredients, such compositions can still be substantially free of thickeners. The compositions can also be essentially free of sulfate-based surfactants (claim 12) and can be in the form of a shampoo (claim 18). The methods in application of the claimed composition to the keratinous substrate (claim 21).
The use of acylglutamate carboxylate anionic surfactants and non-ionic secondary surfactants such as those of instant claim 10 and the pH of the composition is not claimed in US’591.
Bakes et al., Mathur et al., Rizk and Aoki et al. are discussed above.
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to select and then optimize the amount of the various ingredients such as acylglutamate carboxylate anionic surfactants and the pH of the final composition. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because the selection and optimization of the amounts of the various ingredients is within the skill of the person of ordinary skill in the art. Combinations of surfactants can be used to prepare personal care compositions. The amount of a specific ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results depending on the type of formulation and desired effect, e.g., mild skin cleansing or deep cleansing of hair with a shampoo product. There is no evidence of record reasonably commensurate in scope with the claims as to the criticality of the amounts and ratio of the various ingredients that are present in the claimed composition. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. Additional surfactants such as the non-ionic alkyl glucoside surfactants lauryl glucoside, decyl glucoside and coco glucoside can be included in the claimed compositions based on the teachings of Bakes et al. and Rizk.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nissa M Westerberg whose telephone number is (571)270-3532. The examiner can normally be reached M - F 8 am - 4 pm.
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, Michael Hartley can be reached at 571-272-0616. 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.
/Nissa M Westerberg/Primary Examiner, Art Unit 1618