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 .
Claim Status
Claims 4, 9, 11 and 16 are cancelled.
Claim 21 is new.
Claims 1-3, 5-8, 10, 12-15, 17-21 are pending.
Claims 14, 15 and 17-19 are withdrawn. Applicant’s amendments and IDS have necessitated a new ground of rejection. Accordingly, this Action is FINAL
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/11/25 was filed after the mailing date of the non-FINAL on 9/12/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn rejections
Applicant's amendments and arguments filed 12/11/25 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn. Claims 1-13 and 20 were rejected under 35 U.S.C. 103(a) as being unpatentable over Hundeiker et al. (WO0243671A2) in further view of Goddinger et al. (US20060251602). Applicant’s amendment and argument are persuasive.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 5-8, 10, 12-15 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Hundeiker et al. (WO0243673; English translation provided) and Nieendick et al. (US20050000390; IDS filed 9/25/25).
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
Applicant claims, for example:
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Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a cosmetic formulation research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetic formulations for hair and skin and cosmetic chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-3, 7-8, 10, 12-13 and 20, Hundeiker et al. teaches a shower bath preparation comprising:
0.01-10 wt% hydrogenated castor oil (component (a)), which overlaps the claims above 7 to 20 wt% and from 7.5-15 wt%;
1-30 wt% surfactants including alkyl polyglycosides (non-ionic surfactant sugar-based carbohydrate component (b)) and betaines (optional component (c)), which overlaps the claimed range of 20-60 wt%;
0.1-10 wt% Polyol, 0.01-2 wt% organic acid, 0.01-5 wt% preservative, 0.01-5 wt% perfume (optional other auxiliaries/additives component (d)); and
Water (aqueous suspension component (e)) (Page 8 of 14; lower half of page).
The sum of (a)-(d) is in the range of 30-80 wt%, does not require anionic surfactants and the remainder is water.
Since the shower bath preparation of Hundeiker et al. has the same components within the same amount instantly claimed then it is also a concentrate suitable as a stabilizer for waxes selected from the group consisting of mono- and/or di esters of mono- and/or di ethylene glycol and a wax comprising 90 to 100 wt% di ethylene glycol di fatty acid ester and 0 to 10 wt % diethylene glycol mono fatty acid ester, wt% based on the wax and having an average particle size d50, measured via laser diffraction, from 0.8 to 3.5 μm and wherein the waxes are in form of a dispersion in a personal care composition. The term “suitable for” does not impose any requirement that the composition actually perform the function. It is interpreted as an intended use of the composition. An intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Consequently, the prior art composition of Hundeiker et al. which recites the same components as instantly claimed is also suitable for the same function. The burden is properly shifted to Applicant to show that the preparation of Hundeiker et al. is not capable of the claimed function.
Further regarding claim 1, Hundeiker et al. teach numerous other non-ionic emulsifiers (Page 3 bottom through page 4 items (1)-(13)) and zwitterionic surfactants can also be used as emulsifiers including cocamidopropyl betaine (Page 5, 1st paragraph).
Regarding claim 5, from the amounts provided above, a quantity ratio of nonionic emulsifier (b) to hydrogenated castor oil (a) is in a range from 2:1 to 4:1 is readily derived from having 20% nonionic emulsifier and 10% hydrogenated castor oil (2:1) or from having 30% nonionic emulsifier and 10% hydrogenated castor oil (3:1) or even 30% nonionic emulsifier and 7.5% hydrogenated castor oil (4:1). Hundeiker et al. also teach broader ranges of 1:50 to 50:1 (Page 5, 5th paragraph).
Regarding claim 6, the additives above add up to a range of 0.13 to 22 wt% which overlaps the claimed range of from 0.1 to 15 wt%.
Regarding claims 1 and 21, Nieendick et al. teach low viscosity opacifiers free from anionic surface-active agents (Title) that are fine particle dispersions of a wax and suitable emulsifier [0003-0004] that have low viscosity with good flow and pumping properties [0012] with a viscosity from about 2000 to 6000 mPas (Claim 21) as measured by the Brookfield method (23° C., spindle 5, 10 r.p.m.), mPas [0146].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
The difference between the instant application and Hundeiker et al. is that Hundeiker et al. do not expressly teach a viscosity in the range of 2500-8000 mPas or 3000-7000 mPas as measured on Brookfield, RVT; spindle 4; 10 rpm; 20°C . This deficiency in Hundeiker et al. is cured by the teachings of Nieendick et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the viscosity of the shower bath preparation of Hundeiker et al. to a viscosity in the range of 2500-8000 mPas or 3000-7000 mPas as measured on Brookfield, RVT; spindle 4; 10 rpm; 20°C, as suggested by Nieendick et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because not only would the same components in the same amounts implicitly achieve the claimed viscosity ranges but also the artisan is motivated to optimize the viscosity to about 2000 to 6000 mPas (Claim 21) as measured by the Brookfield method (23° C., spindle 5, 10 r.p.m.), as suggested by Nieendick et al., because that viscosity range provides good flow and pumping properties to dispense the product. It is then desirable to achieve a viscosity of about 2000-6000 mPas for those properties and measure it on Brookfield, RVT; spindle 4; 10 rpm; 20°C with a reasonable expectation of success. It is merely a matter of selection of viscosity measuring parameters by the ordinary artisan to arrive at the claimed limitation.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined 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 art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Response to Arguments:
Applicant’s arguments are directed to a withdrawn rejection. Applicant’s assertions that the cited art does not teach or suggest a particular viscosity has been carefully considered but is not persuasive because Applicant supplied a reference on the IDS which teaches and suggests an overlapping viscosity range thus leading the ordinary artisan to the claimed range.
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.
Claim 1-3, 5-8, 10, 12-15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 12 and 13 of US Patent No. 12274770 in view of Hundeiker et al. (WO0243673). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are directed to, for example:
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The patented concentrate has a viscosity of 8000 mPas (Claims 4 and 13). The patented concentrate implicitly performs the claimed intended uses of claims 1, 12, 13 and 20. The patent does not expressly teach all the instantly claimed nonionic emulsifiers. However, the cosmetic artisan is well-aware of the types of nonionic emulsifiers, including those instantly claimed and sugar-based carbohydrates as suggested by Hundeiker et al., (The reference of Hundeiker et al. is discussed in detail above and that discussion is incorporated by reference.), and it is merely judicious selection of known nonionic emulsifiers for use in the composition and routine optimization to have a ratio of 2:1 to 4:1 nonionic emulsifier to hydrogenated castor oil.
The patent does not expressly teach above 7% to 20% or 7.5-15% hydrogenated castor oil. However, the patent teaches 7% hydrogenated castor oil that is close enough “above 7%”, which could be 7.01%, and to 7.5% that the ordinary artisan would expect similar effects, especially when the viscosity can be the same at 8000 mPas. See MPEP 2144.05(I): “Similarly, a prima facie case of obviousness exists where 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 the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).”
Please note that the optional components instantly claimed (c) and (d) are not required (See MPEP 2111.04(I): “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” Or MPEP 2103(C): “Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.”)
Accordingly, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Response to Arguments:
“Applicants believe it is premature to address this provisional rejection until it is known what, if any, claims are in condition for allowance in either this application or the copending application. It is requested the provisional rejection is held in abeyance until such time.” However, the rejection is over a patent; not a co-pending application. The rejection is maintained.
Conclusion
No claims are allowed.
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.
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 9/25/25 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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 Y 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.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613