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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/13/2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/26/2025 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Status of the Claims
This action is in response to papers filed 10/13/2025 in which claim 13 was canceled; claim 12 was withdrawn; claims 1, 3-7, 11, and 14-20 were amended; and claim 22 was newly added. All the amendments have been thoroughly reviewed and entered.
Claims 1-11 and 14-22 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Maintained Objection
Claim Objections
Claims 1, 8-9, and 15-21 objected to because of the following informalities: please amend said 1, 8-9, and 15-21 such that the unit of measurement for the amounts or ranges are consistent throughout all the claims. For example, 0.1% to 8% by weight. Appropriate corrections are required.
Response to Arguments
Applicant's arguments filed 10/13/2025 have been fully considered but they are not persuasive.
Applicant that the claims have been amended to address the issue raised by the Examiner (Remarks, page 12, section C).
In response, the Examiner disagrees. While the claims have been amended, said claims 1, 8-9, and 15-21 remained to not provide consistent unit of measurement for the amounts or ranges. For example, the range of “1 to 4% by weight” as recited in claim 1 should be amended to “1% to 4% by weight.” Please amend all amounts or ranges in claims 1, 8-9, and 15-21 so that the unit of measurements are consistent through all the claims. Accordingly, the objection to claims 1, 8-9, and 15-21 is maintained for the reason of record.
Claim Interpretation
In light of the following limitations:
“0.0 to 8% by weight of cocamidopropylbetaine,”
“0.0 to 8.0% by weight of nonionic surfactant,” and
“with the proviso that …the composition does not simultaneously comprise 0.01% by weight or more nonionic surfactant and 0.1% by weight or more cocamidopropyl betaine, and does not simultaneously comprise 0.0% by weight cocamidopropyl betaine and 0.0% by weight nonionic surfactant,”
claim 1 will be interpreted in respect to the above limitations, as follows:
i) the composition contains up to 0.01% nonionic surfactant and up to 0.1% by weight cocamidopropylbetaine; OR
ii) the composition contains 0.1% by weight or more cocamidopropylbetaine and 0.0% by weight nonionic surfactant; OR
iii) the composition contains 0.01% by weight or more nonionic surfactant and 0.0% by weight cocamidopropylbetaine; OR
iv) 0.0% - 0.1% by weight cocamidopropylbetaine and up to 8% by weight nonionic surfactant; OR
v) 0.0% - 0.01% by weight nonionic surfactant and up to 8% by weight cocamidopropylbetaine.
Furthermore, the limitation of “0 to 10% by weight glycerol” is also interpreted as the composition can contain no glycerol due to the lower limit of the range be 0%.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
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.
Claim(s) 1-9, 11, and 14-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carnali et al (WO 2019/011521 A1; published date: 17 January 2019 and filing date: 31 May 2018) in view of Loeffler (US 2009/0062406 A1).
Regarding claim 1, Carnali teaches an isotropic liquid composition comprising 5 to 20% by weight of a surfactant system comprising from 2 wt% to 7.5 wt% acyl isethionate such as sodium cocoyl isethionate and 2 wt% to 7.5 wt% methyl acyl taurate such as sodium methyl lauroyl taurate, 1.8 wt% to 5 wt% of amphoteric surfactant such as cocamidopropyl betaine, and water, wherein the ratio of isethionate to taurate is 1:1 (Abstract; page 1, lines 5-10; pages 5-8, 14-15, 17-23, 25, and 27; claims 1 and 4). It is noted that the amounts of the surfactant system, as well as, the amounts of the acyl isethionate and the methyl acyl taurate as taught in Carnali supra overlaps the claimed ranges of “the sum total of all surfactants is less than 15% by weight,” “1 to 4% by weight acyl isethionate comprising sodium lauroyl isethionate or sodium cocoyl isethionate” and “1 to 4% by weight methyl acyl taurate comprising sodium lauroyl methyl taurate.” Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the sum total of all surfactant, as well as, amounts of the acyl isethionate and the methyl acyl taurate in an isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. “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). See MPEP §2144.05 (I)-(II).
While Carnali teaches the isotropic liquid composition contains a high amount of glycerol, it would have been obvious to one of ordinary skill in the art to modify the composition of Carnali to contain a low amount of glycerol and maintain the isotropic property per guidance from Loeffler.
Loeffler teaches an isotropic liquid composition that is transparent comprising a surfactant system containing 0.1% to 8.0% by weight acyl isethionate, 0.1% to 8.0% by weight methyl acyl taurate such as methyl lauroyl taurate, and 0.1 to 40% alkyl betaine such as cocoamidopropylbetaine, wherein the weight ratio of acyl isethionate to methyl acyl taurate is 1:1 (Abstract; [0021]-[0047, [0050]-[0056], [0070]-[0081], [0096]-[0106]; Examples 1-5, claims 1, 2 and 10). Loeffler teaches the isotropic liquid composition further contains glycerol in an amount from 0.1 to 50% by weight, particularly 2.0% by weight ([0045], [0072]; Example 3).
It would have been obvious to one of ordinary skill in the art to optimize the weight amount of glycerol in the isotropic liquid composition of Carnali to a low amount such as 2.0% by weight, and produce the claimed invention. One of ordinary skill in the art would have been motivation to do so because Loeffler provided the guidance to do so by teaching the isotropic liquid composition containing acyl isethionate, methyl lauroyl taurate, and cocamidopropyl betaine of Carnali can be optimize to contain a low amount of glycerol by teaching that the glycerol can be added to the composition in an amount as low as 0.1 to as high as 50% by weight, particularly a low amount of 2.0% by weight. It is noted that the range of 0.1 to as high as 50% by weight as taught in Loeffler not only overlaps the amounts disclosed in Carnali, but also overlap the claimed low amount range of “0 to 10% by weight” for glycerol. One of ordinary skill in the art would have reasonable expectation of success in optimizing the weight amount of glycerol in the isotropic liquid composition of Carnali to a low amount such as 2.0% by weight because Carnali showed that a low amount of less than 10% (<10%) by weight of glycerol can be added to composition (Carnali: pages 18, 20, and 22) and still maintain the isotropic property of the composition. Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of the amount of glycerol in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claims 2 and 7, Carnali teaches the pH of the isotropic liquid composition is in the range of 4.5 to 7.5, particularly 7.0 (page 15, lines 10-20; pages 21-25, Examples 3-5).
Regarding claim 3, Carnali teaches the isotropic liquid composition further contains alpha-hydroxy acid, panthenol, vitamin A, or vitamin E (pages 7-8 and 15).
Regarding claim 4, Carnali teaches the ratio of amphoteric surfactant to anionic surfactant (acyl isethionate and methyl acyl taurate) can be optimize to 1:1 or 2:1 (Carnali: pages 4, 7, and 18-22). Loeffler teaches the ratio of amphoteric surfactant to anionic surfactant (acyl isethionate and methyl acyl taurate) from 1:1 to 4:1 (Loeffler: [0028], [0096]-[0103]). Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight ratio of amphoteric surfactant to anionic surfactant in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claims 5-6, Carnali teaches the pH of the isotropic liquid composition is in the range of 4.5 to 7.5, particularly 7.0 (Carnali: page 15, lines 10-20; pages 21-25, Examples 3-5). Carnali teaches the composition further contains stearic acid (page 24). Carnali teaches the ratio of amphoteric surfactant to anionic surfactant (acyl isethionate and methyl acyl taurate) can be optimize to 1:1 or 2:1 (Carnali: pages 4, 7, and 18-22). Loeffler teaches the ratio of amphoteric surfactant to anionic surfactant (acyl isethionate and methyl acyl taurate) from 1:1 to 4:1 (Loeffler: [0028], [0096]-[0103]). Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight ratio of amphoteric surfactant to anionic surfactant in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 8, Loeffler teaches the weight amount of amphoteric surfactant can be as low as 0.1% by weight (Abstract; [0220]; claim 1), which is an amount that is close to claimed less than 0.1% by weight. Thus, it is noted a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997). In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Loeffler further teaches and provide guidance for including nonionic surfactant in the isotropic liquid composition at a weight amount of 2 to 10% by weight ([0050]-[0051]), which overlaps the claimed range of “0.02 to 8% by weight” as recited in claim 8. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight amounts of amphoteric and/or zwitterionic surfactant and nonionic surfactant in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. “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). See MPEP §2144.05 (I)-(II).
Regarding claim 9, as discussed above, Loeffler further teaches and provide guidance for including nonionic surfactant in the isotropic liquid composition at a weight amount of 2 to 10% by weight ([0050]-[0051]), which overlaps the claimed range of “0.001 to 7% by weight” as recited in claim 9. Absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight amount of nonionic surfactant in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. “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). See MPEP §2144.05 (I)-(II).
Regarding claim 11, Carnali teaches the isotropic liquid composition is sulfate-free (page 4, lines 4-10 and page 8, lines 22-26).
Regarding claim 14, Carnali teaches the isotropic liquid composition contains 1.8 wt% to 5 wt% of amphoteric surfactant such as cocamidopropyl betaine (Carnali: page 1, lines 5-10; pages 5-8, 14-15, 17-23, 25, and 27). Loeffler teaches the weight amount of amphoteric surfactant can be as low as 0.1% by weight in an isotropic liquid composition (Loeffler: Abstract; [0220]; claim 1). Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight amount of amphoteric surfactant such as betaine in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. “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). See MPEP §2144.05 (I)-(II).
Regarding claim 15, Carnali teaches sodium lauroyl isethionate as a suitable acyl isethionate (page 6).
Regarding claim 16, as discussed above, Carnali taught sodium lauroyl methyl taurate as the methyl acyl taurate.
Regarding claim 17, as discussed above, Carnali teaches the isotropic liquid composition contains 1.8 wt% to 5 wt% of amphoteric surfactant such as cocamidopropyl betaine. Absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight amount of amphoteric surfactant such as cocamidopropyl betaine in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 18, as discussed above, Loeffler further teaches and provide guidance for including nonionic surfactant in the isotropic liquid composition at a weight amount of 2 to 10% by weight, which overlaps the claimed range as recited in claim 18. Absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight amount of nonionic surfactant in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 19, as discussed above, Carnali teaches an isotropic liquid composition comprising 5 to 20% by weight of a surfactant system comprising from 2 wt% to 7.5 wt% the acyl isethionate and 2 wt% to 7.5 wt% the methyl acyl taurate such as methyl lauroyl taurate, 1.8 wt% to 5 wt% of amphoteric surfactant such as cocamidopropyl betaine, and water, wherein the ratio of isethionate to taurate is 1:1 (Abstract; page 1, lines 5-10; pages 5-8, 14-15, 17-23, 25, and 27; claims 1 and 4). The total amounts of the surfactant system and the cocamidopropyl betaine, as taught in Carnali overlaps the claimed ranges of “from 2 to 15% by weight total surfactant” and “from 1 to 8.0% by weight cocamidopropyl betaine,” respectively. Carnali teaches the composition contains water (page 15). As for the claimed amount of glycerol, as discussed above, Loeffler provided the guidance to do so by teaching the isotropic liquid composition containing acyl isethionate, methyl lauroyl taurate, and cocamidopropyl betaine of Carnali can be optimize to contain a low amount of glycerol by teaching that the glycerol can be added to the composition in an amount as low as 0.1 to as high as 50% by weight, particularly a low amount of 2.0% by weight (Loeffler: [0045], [0072]; Example 3). It is noted that the range of 0.1 to as high as 50% by weight as taught in Loeffler not only overlaps the amounts disclosed in Carnali, but also overlap the claimed low amount range of “0.01 to 10% by weight” for glycerol. One of ordinary skill in the art would have reasonable expectation of success in optimizing the weight amount of glycerol in the isotropic liquid composition of Carnali to a low amount such as 2.0% by weight because Carnali showed that a low amount of less than 10% (<10%) by weight of glycerol can be added to composition (Carnali: pages 18, 20, and 22) and still maintain the isotropic property of the composition. Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of the amounts of total surfactant, methyl acyl taurate, acyl isethionate, cocamidopropyl betaine, and glycerol in the isotropic liquid composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 20, Loeffler provides guidance for optimizing the amount of cocamidopropyl betaine in an isotropic liquid composition from as low as 1% to as high as 10% by weight based on the finished composition (Loeffler: [0053]), which overlaps the claimed range of “from 6 to 8% by weight cocamidopropyl betaine,” as well as, overlaps the claimed range disclosed in Carnali for cocamidopropyl betaine. Thus, as discussed above, absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight amount of cocamidopropyl betaine in the isotropic liquid composition of Carnali to the claimed range would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II). Carnali teaches the composition further contains a preservative (Carnali: pages 13-14).
Regarding claim 21, as discussed above, Loeffler provided the guidance to do so by teaching the isotropic liquid composition containing acyl isethionate, methyl lauroyl taurate, and cocamidopropyl betaine of Carnali can be optimize to contain a low amount of glycerol by teaching that the glycerol can be added to the composition in an amount as low as 0.1 to as high as 50% by weight, which is a range that overlaps the claimed range of “from 0.01 to 1% by weight glycerol.” Thus, as discussed above, absent some demonstration of unexpected results from the claimed parameters, the optimization of the weight amount of glycerol in the isotropic liquid composition of Carnali to the claimed range would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 22, Carnali teaches the isotropic liquid composition further contains salicylic acid or phenoxyethanol (page 14).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carnali et al (WO 2019/011521 A1; published date: 17 January 2019 and filing date: 31 May 2018) in view of Loeffler (US 2009/0062406 A1), as applied to claim 1 above, and further in view of Kitko et al (US 2009/0221463 A1).
The isotropic liquid composition of claim is discussed above, said discussion being incorporated herein in its entirety.
However, Carnali and Loeffler do not teach the nonionic surfactant is cocoamidopropylamine oxide of claim 10.
Regarding the nonionic surfactant is cocoamidopropylamine oxide of claim 10, Kitko teaches an isotropic liquid composition comprising anionic surfactants such as acyl isethionate and methyl acyl taurate, amphoteric/zwitterionic surfactant, and nonionic surfactant, wherein cocoamidopropylamine oxide was taught as a suitable nonionic surfactant ([0010], [0015] and [0017]-[0056]).
It would have been obvious to one of ordinary skill in the art to include cocoamidopropylamine oxide in the isotropic liquid composition of Carnali and Loeffler, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Kitko provided the guidance to do so by teaching that cocoamidopropylamine oxide as a nonionic surfactant can be included in a isotropic liquid composition to provide enhanced lathering volume and texture (Kitko: [0047] and [0050]). Thus, an ordinary artisan seeking to improve the lathering volume or texture of the isotropic liquid composition of Carnali and Loeffler, would have looked to including cocoamidopropylamine oxide, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 10/13/2025 have been fully considered but they are not persuasive.
Applicant argues Carnali (‘521 reference) was directed to a wash composition where the amount of glycerol is maximized and the amount of amphoteric in the composition in reduced or minimized, notwithstanding, high, as shown in Tables 2 and 3. Applicant alleges that Carnali is not concerned with isethionate and taurate comprising wash systems that generate consumer desirable foam or lather. The primary reference is directed to taurate rich anionic systems in wash compositions that include about 33% cocamidopropyl betaine based on total weight of surfactant and high glycerol levels. Thus, Applicant alleges that Carnali teaches away from the claimed invention. (Remarks, pages 9-10).
In response, the Examiner disagrees. It is first noted that the claimed invention is not drawn to “a wash composition,” but rather “a isotropic liquid composition”. Second, the pending 103 rejection is based on the combined teachings of Carnali and Loeffler. As discussed in the 103 rejection, it was acknowledged that while the preferred embodiment of Carnali is drawn to using a high amount of glycerol, Loeffler provided the guidance to optimize the isotropic liquid composition containing acyl isethionate, methyl lauroyl taurate, and cocamidopropyl betaine of Carnali to contain a low amount of glycerol, by teaching that the glycerol can be added to the composition in an amount as low as 0.1 to as high as 50% by weight, particularly a low amount of 2.0% by weight. There is reasonable expectation of success of optimizing the weight amount of glycerol in the isotropic liquid composition of Carnali to a low amount as claimed because as discussed in the 103 rejection, Carnali does indicate and allow for the use of a low amount of glycerol, as Carnali showed that a low amount of less than 10% (<10%) by weight of glycerol can be used (Carnali: pages 18, 20, and 22) and still maintain the isotropic property of the composition.
It is further noted that Tables 1-2 from Carnali are drawn to showing “maximal” glycerol level for yielding a clear, isotropic solution, meaning that the data show in Tables 1-3 are to detailing how high the glycerol level can be with respect to the total amount of surfactants and relative to the weight ratio of isethionate/taurate amount of cocamidopropyl betaine. The data from Tables 1-3 of Carnali do not teach away from using lower amounts or to an isotropic liquid composition of the claimed invention, but rather teaches toward Applicant’s claimed invention. For example, Table 1, at 1:1 isethionate/taurate and 5%-20% cocamidopropyl betaine (CAPB), the glycerol level can be less than 10% to yield a clear, isotropic solution at 9% total surfactant. It is noted that 5%-20% of CAPB relative to the 9% total amount of surfactant is only 0.45%-1.8% by weight of CAPB that is used in the composition, which appeared to meet the claimed range of 0.0 to 8% by weight of cocamidopropyl betaine. Likewise, Table 2 also shows 1.25:1 isethionate/taurate, and 25% CAPB the glycerol level can be 10% or less to yield a clear, isotropic solution at 9% and 12% total amount of surfactant. It is noted that 25% CAPB relative to 9% and 12% of total amount of surfactant is 2.25% and 3% by weight of CAPB that is used in the composition. The data shown in Tables 1-2 from Carnali as described above are preponderance of evidence to render obvious Applicant’s claimed invention by routine optimization.
Thus, contrary to Applicant’s allegation, Carnali does not teach away from Applicant’s claimed invention because per MPEP §2123 II, [d]isclosed 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). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, "[t]he 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).
Applicant argues that ‘406 reference (hereafter as “Loeffler”) does not cure the deficiencies of Carnali, Loeffler is “concerned with compositions having over 20% by weight surfactant.” Applicant alleges that the Example 3 in Loeffler “describes compositions with 2% glycerol and laureth sulfate sodium salt. The primary reference is concerned with high glycerol in a sulfate-free surfactant system and the secondary reference is directed to high a surfactant containing system, with over 20% by weight surfactant.” Thus, Applicant alleges “[t]here is no teaching, suggestion or motivation whatsoever to modify the technology described in Loeffler with the teachings described in [Carnali], the former directed to high glycerol systems and the latter directed to concentrates with high levels of surfactant including those which are sulfate comprising.” (Remarks, page 10, 4th and 5th paragraphs).
In response, the Examiner disagrees. As discussed above, Loeffler was used for teaching and providing guidance on using a low amount of glycerol in a isotropic liquid composition containing acyl isethionate, methyl lauroyl taurate, and cocamidopropyl betaine of Carnali. As discussed above, Loeffler provided the guidance for optimizing the isotropic liquid composition containing acyl isethionate, methyl lauroyl taurate, and cocamidopropyl betaine of Carnali to contain a low amount of glycerol, by teaching that the glycerol can be added to the composition in an amount as low as 0.1 to as high as 50% by weight, particularly a low amount of 2.0% by weight. There is reasonable expectation of success of optimizing the weight amount of glycerol in the isotropic liquid composition of Carnali to a low amount as claimed because as discussed in the 103 rejection, Carnali does indicate and allow for the use of a low amount of glycerol, as Carnali showed that a low amount of less than 10% (<10%) by weight of glycerol can be used (Carnali: pages 18, 20, and 22) and still maintain the isotropic property of the composition.
Thus, Applicant’s argument attacking the composition of Loeffler as containing sulfate surfactants and thus, not combinable with Carnali, is a rebuttal that is not pertinent to the obviousness analysis in the 103 rejection drawn to Loeffler being used for providing guidance on optimizing the amount of glycerol to the amount as claimed. It is noted that “[i]t is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012). See also In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art."); In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures.").
With respect to Applicant’s argument drawn to Loeffler as teaching concentrates with high levels of surfactant, it is noted that Loeffler, like Carnali, teaches that the total amount of the surfactants used in the formulations comprising the surfactant concentrates according to the invention is preferably 1 to 20% by weight, particularly preferably 5 to 18% by weight, and especially preferably 10 to 15% by weight, based on the finished formulations (Loeffler: [0056]). Thus, contrary to Applicant’s allegation, the total amount of surfactants based on the final composition that used in Loeffler, like Carnali, is preferably less than 15%.
Accordingly, the combination of Carnali and Loeffler as in discussed in the pending 103 rejection is proper to render obvious Applicant’s claimed invention.
Applicant argues “[n]otwithstanding, the '463 reference (hereafter as “Kitko”) merely describes concentrated cleansing compositions with over 23% by weight surfactant.” Applicant alleges that the cleansing composition of Kitko “can comprise nonionic surfactant and cocamidopropyl amine oxide is one described in a long list of possibilities.” Thus, Applicant alleges “[n]owhere in the combination of references is there even remotely described a wash composition having the claimed surfactant system in a wash composition having 0 to 10% by weight glycerol where the wash composition surprisingly delivers excellent lather characteristics.” (Remarks, page 11).
In response, the Examiner disagrees. As discussed above, the combined teachings of Carnali and Loeffler were proper to render obvious Applicant’s independent claim 1. See pages 17-21 of this office action, said pages being incorporated herein in its entirety. Furthermore, Applicant’s alleged argument regarding surprising results of “excellent lather characteristics” is not persuasive because as discussed in the 103 rejection, Carnali showed that a low amount of less than 10% (<10%) by weight of glycerol can be added to composition (Carnali: pages 18, 20, and 22) and still maintain the isotropic property of the composition, as well as, the isotropic liquid composition of Loeffler was indicated as stable and isotropic, as well as, provide very good foam behavior (Loeffler: [0024] and [0079]-[0089]).
It is noted that Kitko was used for teaching and rendering obvious the nonionic surfactant is cocamidopropylamine oxide of dependent claim 10. Contrary to Applicant’s allegation, Kitko does not teach cocamidopropylamine oxide in a “long list of possibilities” rather a short list containing only a handful of suitable nonionic co-surfactants (Kitko: [0050]). Accordingly, dependent claim 10 remains rejected as being obvious and unpatentable for the reason of record, as discussed on pages 15-16 of this office action, said pages being incorporated herein in its entirety.
Applicant argues that data provided in the application as originally filed showed the “compositions made according to the present invention are able to lather appreciably, are stable and have a micellar (isotropic) microstructure, even when formulated free of sulfate-based surfactants” and that such data are unexpected results. (Remarks, page 11, last paragraph).
In response, the Examiner disagrees. Applicant’s argument and evidenced of unexpected results shown in the specification (application as originally filed) are considered, but found insufficient to obviate the pending 103 rejection of Carnali and Loeffler because the isotropic liquid composition of Loeffler was indicated as stable and isotropic, as well as, provide very good foam behavior (Loeffler: [0024] and [0079]-[0089]). Additionally, as discussed in the 103 rejection, Carnali showed that a low amount of less than 10% (<10%) by weight of glycerol can be added to composition (Carnali: pages 18, 20, and 22) and still maintain the isotropic property of the composition. Furthermore, Carnali is also a formulation that is free of sulfate-based surfactants (Carnali: page 8).
Furthermore, the data shown in the Examples on pages 20-25 of the specification, are drawn to the criticality of the ratio of amphoteric to anionic being 2:1 or 1:1, in providing maximum lather boosting synergy. As discussed in the 103 rejection, the ratio of amphoteric to anionic has been taught in Carnali (see pages 8 and 10 of this office action), as well as, Loeffler also teaches the same ratio (see pages 8 and 10 of this office action). Thus, Applicant’s alleged unexpected results shown in the specification is not unexpected as both Carnali and Loeffler teaches isotropic liquid compositions, and Loeffler established that the isotropic liquid composition is stable and have very good foam behavior (Loeffler: [0024] and [0079]-[0089]). As such, it is noted that "[e]xpected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
Furthermore, claim 1 remained broader than the formulations in Examples A and B, as well as, the compositions of Tables 1-7 that were allegedly used in providing the alleged unexpected data. Thus, claim 1 remained not commensurate in scope with the composition used for providing the alleged unexpected results. It is noted that MPEP 716.02(d) states: [w]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
As a result, for at least the reasons discussed above, claims 1-11 and 14-22 remain rejected as being obvious and unpatentable over the combined teachings of cited prior arts in the pending 103 rejections as set forth in this office action.
New Rejections
Necessitated by Applicant’s Claim amendments
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 and 14-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the recitation of “and” at the end of the claim after glycerol renders claim 1 indefinite because it is unclear if the “and” is a typographical error or is denoting an incomplete or missing limitation. Thus, it is not clear what is meant by “and,” as there is no other component or limitation after the recitation of “and.” Clarification in form of an amendment to claim 1 is required. Claims 2-11 and 14-22 are also rejected as they depend directly or indirectly from indefinite claim 1.
As a result, claims 1-11 and 14-22 do not clearly set forth the metes and bounds of patent protection desired.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 is not further limiting from claim 1 because claim 1 already recites that the methyl acyl taurate contains sodium lauroyl methyl taurate and thus, reciting the methyl acyl taurate is sodium lauroyl methyl taurate in claim 16 is redundant.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
New Objections
Claim Objections
Claim 1 is objected to because of the following informalities: please amend “A isotropic liquid composition” in line 1 of claim 1 to “An isotropic liquid composition”. Appropriate corrections are required.
Claim 4 is objected to because of the following informalities: please amend “are” in line 3 of claim 4 to “is”. Appropriate corrections are required.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOAN THI-THUC PHAN whose telephone number is (571)270-3288. The examiner can normally be reached 8-5 EST Monday-Friday.
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, Brian Kwon can be reached at 571-272-0581. 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.
/DOAN T PHAN/ Primary Examiner, Art Unit 1613