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 .
Applicants' arguments, filed June 15, 2026, 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 § 112 – Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 4, 10, 12 – 16, 18, 23 – 25 and 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a written description rejection.
A generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention the achieves the claimed results and do so by showing that that the applicant has invented species sufficient to support a claim to a functionally-defined genus. The ingredients in the composition can have a variety of structures within the claimed genus for each ingredient that encompass a variety of formulations that must also have a particular functional property, namely viscosity. A description that merely renders a claimed invention obvious may not sufficiently describe the invention for the purposes of the written description requirement of 35 U.S.C. 112 (MPEP 2163 (I)).
Amended claim 1 requires that viscosity of the claimed composition is in the range of 50 – 70 seconds when measured using a Ford Cup with 6 mm orifice at 25°C. The limitations regarding the weight ratio of the total amount of carboxylate anionic surfactants to the total amount of glyceryl esters has been deleted from claim 1. A range in weight percent for total amount of carboxylate anionic surfactants is still present and a range in weight percent for the total amount of glyceryl esters has been added to claim 1. Taken together, the ranges in weight percents for these two ingredients results in a range for the weight ratio of these two ingredients of about 0.2 (1% total amount of carboxylate anionic surfactants, 5% total amount of glyceryl esters) to about 3 (3% total amount of carboxylate anionic surfactants, 1% total amount of glyceryl esters) which is broader than the previously recited range of about 0.50 to about 1.00.
Viscosity is something that is known to one of ordinary skill that can be varied by, for example, the amounts of various ingredients such as thickeners. Table 1 in the specification as filed sets forth one formulation with disodium and/or sodium cocoyl glutamate as carboxylate anionic surfactants, glyceryl oleate and coco-glucoside, an alkylpolyglucoside, and additional unspecified ingredients and the viscosity of this composition falls within the claimed range. The comparative composition in Table 1 is very different in composition from the inventive formulation as thus is not probative in showing the critical ingredients and/or concentrations of those ingredients that result in compositions having a viscosity falling within the claimed range. One additional inventive formulation is detailed in the declaration filed May 16, 2024 and here the comparative compositions are highly similar in ingredients and amounts to the inventive compositions. For all three compositions tested, the weight percents for the total amount of carboxylate anionic surfactants and total amount of glyceryl esters fall within the ranges set forth in amended claim 1 and have different ratios of carboxylate anionic surfactants to glyceryl esters given the different concentrations of glyceryl oleate. The viscosity of the inventive compositions falls squarely within the claims range (60 seconds) but the very similar comparative compositions have a dramatically different and lower viscosities, with either more or less glyceryl oleate significantly decreasing the viscosity to 8 and 14 seconds for the two comparative compositions.
Even within a very limited set of conditions, changing the concentration of the same glyceryl ester to 1.0% or 4.99% results in a dramatically different viscosity lying outside the claimed range than one with 2.5% of the exact same glyceryl ester. The composition in claim 1 can have one of 4 different glyceryl esters; any C6-C24 acylglutamate(s) as the carboxylate anionic surfactant, at least one alkylpolyglycoside and optional additional types of surfactants, which is much broader than the very specific formulation in which changes in the amount of glyceryl oleate within the claimed range for the absolute amount of these ingredients recited in claims had dramatic effects on the viscosity of the final formulations, which is now a required feature of the formulations of claim 1.
While one of ordinary skill in the art could, for example, add thickeners to formulations to increase the viscosity of the formulations to fall within the claimed range, that is insufficient to demonstrate possession of a reasonable number of species within the claim scope to fully satisfy the written description requirement given the evidence of the effects of varying amounts of glyceryl oleate on the viscosity of the formulation and the breadth of the claims. The disclosed formulations are highly similar to one another and the comparative formulations meet the structural limitations of claim 1 but do not have the requisite viscosity. The dependent claims fall therewith.
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, 12 – 16, 18, 21, 25, 28 – 31, 33 – 37 and 40 are 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 in the Office Action mailed December 15, 2025 and those set forth herein.
The 1.94% glyceryl oleate disclosed at ¶ [0089] of Bakes et al. falls within the range of amended claim 1. The physical forms such as liquids, hair conditioners, hair tonics, pastes and mousses disclosed by Bakes et al. at ¶ [0070] are of varying viscosities and one of ordinary skill in the art would optimize the viscosity of the composition depending on the final form and desired consistency of that form. As discussed in greater detail in the December 15, 2025 Office Action, one of ordinary skill in the art would routinely optimize the amount of each ingredient in the composition and there is no evidence of record as to the criticality of the claimed amounts of each ingredient.
As the method of use claim 28, the compositions disclosed by Bakes et al. can be applied to skin (¶ [0072] onward), a keratinous material and can be left on for various periods of time and removed by being washed away (¶ [0075]). This renders use of a composition rendered obvious by the combined teachings of Bakes et al. and Mathur et al. in the method of new claim 28 obvious as that is the intended use of the disclosed compositions.
New independent claim 29, from which all of new claims 30 – 40, requires an acylglycinate, rather than the acylglutamates of claim 1 as the carboxylate anionic surfactant but the other ingredients are the same as claim 1. While Bakes et al. does not disclose acylglycinates, Mathur et al. discloses a variety of foaming agents including disodium cocoyl glutamate and potassium cocoyl glycinate, an acylglycinate falling within the scope of claim 29, and combinations thereof. 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 are no limitations on the ratio of the total amount of carboxylate anionic surfactant to total amount of glyceryl ester as previously set forth in claim 1 or on the viscosity of the composition as set forth in claim 1 as currently presented. The ranges in claim 29 for the amount total amount of carboxylate anionic surfactant and total amount of glyceryl ester fully encompass the ranges of claim 1. While claim 1 does not contain any limitations on the amount of secondary surfactant, previously presented claims 14 and 15 related to the amounts of specific types of surfactants that are secondary surfactants were rendered obvious as discussed in the December 15, 2025 Office Action and Applicants have not presented any evidence as to the criticality of the claimed ranges.
Claim 40 is analogous to new claim 28, which as discussed above is rendered obvious by the teachings of Bakes et al. of application to the skin, a keratin material, that optionally can be washed away from the skin.
Applicants traverse this rejection on the grounds that nothing in either Bakes or Mathur teaches or suggests a composition with the recited components chosen to provide a composition having a viscosity in the range of 50 – 70 seconds when measured with a Ford Cup 6 at 25°C and are silent as to measuring or achieving viscosity in the compositions disclosed therein. The viscosity now recited in claim 1 is not due to routine optimization as the declaration demonstrates unexpected and beneficial results achieved by the instant claimed compositions with amounts of the various ingredients lying within the claimed ranges.
These augments are unpersuasive. Information which is well known in the art need not be described in detail in the specification (MPEP 2163 (II)(A)(2)). The compositions in the applied prior necessarily have viscosities and the various forms disclosed therein generally can have different viscosities. As discussed in greater detail in the written description rejection above, the absolute amounts of the various ingredients in the three formulations in the declarations all fall within the scope of claim 1 but have different viscosities. For example, thickeners can readily be added to compositions and the amount adjusted to vary the viscosity as would be known to one of ordinary skill in the art. Thickeners in any amount are not excluded from the compositions of any of the claims as claim 22 that required the compositions to be substantially free of thickeners was canceled in the claim amendments filed June 15, 2026. To achieve the various forms that are disclosed by the applied prior art, one of ordinary skill in the art can, for example, add thickeners to adjust the viscosity to values which are suitable for the various forms such as shampoos or liquids.
Claim(s) 10, 12 and 32 are 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, 12 – 16, 18, 21, 25, 28 – 31, 33 – 37 and 40 above, and further in view of further in view of Rizk (US 2015/0157545). This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed December 15, 2025 and those set forth herein.
The specific alkylpolyglucosides of claim 10 are the same as those recited in new claim 32 so claim 32 is rendered obvious for the same reasons set forth previously regarding claim 10.
Applicants argue that regardless of whether Rizk teaches the elements for which they are relied upon, the Office fails to allege that this reference remedies the deficiencies of Bakes and Mathur with respect to independent claim 1.
These arguments are unpersuasive. As discussed in greater detail above, Bakes et al. and Mathur et al. are not deficient as alleged by Applicants so Rizk need not teach the alleged deficiencies and therefore this rejection is maintained for the reasons of record.
Claim(s) 23, 24, 38 and 39 are 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, 12 – 16, 18, 21, 25, 28 – 31, 33 – 37 and 40 above, and further in view of Aoki et al. (US 2010/0280111). This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed December 15, 2025 and those set forth herein.
The pH ranges of new claims 38 and 39 are identical to those of previously presented claims 24 and 23 respectively. Therefore new claims 38 and 39 are rendered obvious for the same reasons as previously set forth regarding claims 23 and 24.
Applicants argue that regardless of whether Aoki et al. teaches the elements for which they are relied upon, the Office fails to allege that this reference remedies the deficiencies of Bakes and Mathur with respect to independent claim 1.
These arguments are unpersuasive. As discussed in greater detail above, Bakes et al. and Mathur et al. are not deficient as alleged by Applicants so Aoki et al. need not teach the alleged deficiencies and therefore this rejection is maintained for the reasons of record.
Terminal Disclaimer
The terminal disclaimer filed on June 15, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11,123,276 has been reviewed and is accepted. The terminal disclaimer has been recorded. Accordingly, the nonstatutory double patenting rejection based on this patent has been withdrawn.
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.
Claims 1, 3, 4, 10, 12 – 16, 18, 21, 23 – 25 and 28 – 40 are 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 in the Office Action mailed December 15, 2025 and those set forth herein.
Please see above as to how the new limitations in claims 1 and 28 and the acylglycinate limitation of claim 29 are rendered obvious by Bakes et al. and Mathur et al. in particular.
Applicants traverse this rejection on the grounds that that broad recitation in the claims of US’207 do not provide the requisite specificity to render the claims obvious even in view of the additional references.
These arguments are unpersuasive as the claims and the additional references render obvious the selection and optimization of the amounts of carboxylate anionic surfactants such as acylglutamates or acylglycinates as discussed in greater detail in the Office Action mailed December 15, 2025 and those set forth herein.
Claims 1, 3, 4, 10, 12 – 16, 18, 21, 23 – 25 and 28 – 40 are 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 in the Office Action mailed December 15, 2025 and those set forth herein.
Please see above as to how the new limitations in claims 1 and 28 and the acylglycinate limitation of claim 29 are rendered obvious by Bakes et al. and Mathur et al. in particular.
Applicants argue that this rejection is premature as allowable subject matter has not been indicated in either this or the reference application and requests that the rejection be held in abeyance until allowable subject matter is indicated, at which time the propriety of filing a terminal disclaimer will be considered.
This rejection is maintained for the reasons discussed in greater detail in the Office Action mailed December 15, 2025 and those set forth herein.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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
Prosecution Insights