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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15, Species A, glycolipids of claims 4-8, Species A2 sophorolipid, claims 4 and 6-8 and Species A2(a): sophorolipid of Formula III, claim 6 as well as the ‘at least one biosurfactant is the only biosurfactant in the composition, claim 10, in the reply filed on 08/12/2024 is acknowledged. Thus, the elected invention is embraced by Claims 1-4, 6, 8, 10, 11, and 13-15 and are examined herewith
Claims 5, 7, 9, 12, 16, and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/12/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/01/2025 was filed after the mailing date of the Non-Final Office Action on 07/01/2025. The submission is in compliance with the provisions of 37 CFR 1.97 (1.17(p) fee was paid). Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 10/01/2025, has been entered. Claim 1 is amended, no claims are cancelled, and no claims are newly added. Claims 5, 7, 9, 12, 16, and 17 remain withdrawn as applied above. Accordingly, claims 1-17 are pending with claims 1-4, 6, 8, 10, 11, and 13-15 are considered in this Office Action.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-4, 6, 8, 10, 11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Schelges (U.S. 2017/0071846; Of Record).
Regarding claim 1, Schelges teaches a sustainable (Paragraphs 0006, 0011) exfoliating cosmetic cleanser (Paragraph 0012; meeting broadest reasonable interpretation of ‘polishing composition’ as claimed) that includes abrasive component such as silica (i.e. silicon dioxide), biosurfactant such as sophorolipid in an amount of 1 to 50% which overlaps the claimed range of 0.0001 to 4%, and water (i.e., “Misc” which is described to include water in Paragraph 0078) (Table 1). Summing the minimum and maximum values of the components in Table 1, the water would be approximately 27 to 98.8% of the composition which overlaps the claimed range of 75 to 99%.
Schelges further teaches that the composition may include pH regulators (Paragraph 0071; meeting claimed “at least one pH adjuster”.
Schelges teaches that the abrasive component has a particle size from 40 microns to 500 microns (Paragraph 0019; equivalent to 40,000 nm to 500,000 nm) and that the use of smaller or larger particles sizes “leads to an overall impaired effect of the cosmetic cleansers, since abrasive components…sometimes led to blocking of the skin pores” (Paragraphs 0019 and 0020). Considering the facts of the Schelges reference, the abrasive component is not described to have, nor would be expected to implicitly possess, a mean particle size of at least about 1 nm to at most about 1000 nm.
However, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984).
In the instant case, the composition disclosed by Schelges is compositionally the same as that claimed by Applicant and the only difference is that Schelges’ abrasive component is larger than that claimed because Schelges is particularly concerned with the use of the composition on the skin and does not want to block skin pores.
If the ordinary artisan was not intending to use the cleanser on skin but perhaps another surface, they would be interested in the teachings of Schelges because Schelges teaches at Paragraph 0037 that biosurfactants, just like conventional surfactants, are surface-active substances, can be produced under mild production conditions that require a low energy consumption, generally easily biologically degrade and are not toxic. Schelges also acknowledges that biosurfactants meet the requirements of sustainability and have been used both in domestic cleaning agents, detergents, and dishwashing detergents (Paragraph 0007), i.e. uses not limited to only application of such composition on skin.
It would be obvious to try to use smaller particles, such as those that are nanosized, instead of the larger micron-sized particles of Schelges for at least the reason that it is the normal desire of scientists or artisans to improve upon what is already generally known and making an abrasive component smaller or larger is routine and would yield a reasonable expectation of success that smaller sized particles may yield a lower propensity for gouges and/or scratches.
Additionally, there is no evidence of the criticality of the nanosized abrasive particles or a showing that nanosized particles produce unexpected results.
On balance, the change in the abrasive size appears to be an obvious difference from the prior art and so the claim is prima facie unpatentable.
In the interest of compact prosecution, it is noted that there are no presented limitations to what the claimed composition must ‘polish’. Applicant has not provided a special definition of polishing. Thus, all compositions that would be capable of and/or accomplishing the function of ‘polishing’ to any degree are currently embraced by Applicant’s claim scope.
Regarding claim 2, Schelges teaches the composition as applied to claim 1 above and further teaches that the abrasive can include silica (i.e. silicon dioxide) (Table 1).
Regarding claim 3, Schelges teaches the composition as applied to claim 1 above and further teaches that the abrasive is in an amount of from 0.1 to 20% (Table 1) which overlaps the claimed range of about 0.01% to about 50%.
Regarding claim 4, Schelges teaches the composition as applied to claim 1 above and further teaches a sophorolipid biosurfactant (Paragraphs 0046-0047 and Table 1).
Regarding claim 6, Schelges teaches the composition as applied to claim 4 above and further teaches that the sophorolipid biosurfactant (Paragraphs 0046-0047) meets Formula III.
Regarding claim 8, Schelges teaches the composition as applied to claim 4 above and further teaches a sophorolipid biosurfactant (Paragraphs 0046-0047) meeting Formula III and that the glycolipid can be sophorolipid (Paragraphs 0039, 0045-0051) wherein approximately 20 to approximately 60 wt% of the lipid is present as acid form (Paragraph 0048) which lies within the claimed range of at least about 5% to at most about 95%.
Regarding claim 10, Schelges teaches the composition as applied to claim 1 above and further teaches that the composition includes sophorolipid biosurfactant (Table 1). Specifically, Table 1 lists “Rhamnolipid, Sophorolipid, Fatty Acyl Glutamate and/or Fatty Acyl Glycinate”. While Schelges does not expressly state that only one biosurfactant is used in the polishing composition, the use of ‘and/or’ would reasonably indicate to the reader that each component biosurfactant could be used individually as well as in combination such that a selection of only one of the biosurfactants listed, such as sophorolipid, would be routine and prima facie obvious absent evidence to the contrary.
Regarding claim 11, Schelges teaches the composition as applied to claim 1 above and further teaches that the composition includes 1 to 50% (Table 1) which overlaps the claimed range of about 0.0001% to about 3%.
Regarding claim 13, Schelges teaches the composition as applied to claim 1 above but is silent to the amount of pH regulator to be included (Paragraph 0071). However, the determination of the appropriate amount of pH regulator to include in the asphalt composition would be routine and well known within the arts before the effective filing date of the invention such that the person of ordinary skill could readily determine the appropriate amount of pH regulator necessary to achieve the desired pH of the composition.
It has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Additionally, it is noted for the record that the claimed range of about 0.0001 to about 30% of pH regulator has not been shown to be critical or produce unexpected results.
Regarding claim 14, Schelges teaches the composition as applied to claim 1 above and further teaches at least one additive such as cellulose as a thickening agent (Table 1 and Paragraphs 0071 and 0072) wherein cellulose is a water soluble polymer.
Regarding claim 15, Schelges teaches the composition as applied to claim 1 above but is silent to the pH of the composition. However, it is noted that Applicant’s claim embraces nearly the entire pH scale (i.e., “about 1 to about 14” where pH scale is known to be 0 to 14). Thus, even without an express disclosure of the Schelges’ composition pH, this feature is met because the composition must necessarily have a pH and even if it were below 1, this would be embraced by the claimed modified “about” (i.e. “about 1”).
Furthermore, and considering the intended use of Schelges composition as a cosmetic cleanser for skin, it is unreasonable to expect that the composition would have such an extreme pH akin to battery acid (i.e. pH around 1).
Response to Arguments
Applicant’s amendment has necessitated the new grounds of rejection made over the teachings of Schelges. The Drakontis and Amin NPL reference is no longer applied.
Insofar as Applicant's arguments filed 10/01/2025 are applicable to the new single reference 103 rejection over Schelges, they have been fully considered but are not persuasive.
While the combination of Drakontis and Schelges is no longer applied, Examiner notes Applicant’s argument that the prior art references are not related to Applicant’s invention because Drakontis and Schelges are directed to cosmetics instead of CMP operations. It is respectfully recommended that Applicant amend the claims to further reflect Applicant’s invention such that the claimed invention is directed to CMP operations because, as it currently stands, there are no presented limitations to what the claimed composition must ‘polish’. Applicant has not provided a special definition of polishing. Thus, all compositions that would be capable of and/or accomplishing the function of ‘polishing’ to any degree are currently embraced by Applicant’s claim scope. The structural components of the compositions are the same, i.e. abrasive, water, pH regulator, and sophorolipid biosurfactant.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738