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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/10/2026 has been entered.
Claim Status
Applicants’ amendments and arguments filed 07/10/2026 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claims 1-4, 7-8, and 11 are canceled.
Claim 5 is amended.
Claims 18-21 are newly added.
Claims 5-6, 9-10, and 12-21 are examined on the merits.
Claims 5-6, 9-10, and 12-21 are free of prior art.
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 5-6, 10, 14-15, and 18-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 9-15, of U.S. Patent No. 12268768B2 in view of over Sonoda et al. (JP2002371000A, published 12/24/2002, English translation via Google, hereafter Sonoda). Although the claims at issue are not identical, they are not patentably distinct from each other.
US12268768B2 claims a detergent composition comprising (A) at least one N-unsaturated acyl acidic amino acid wherein the unsaturated acyl is a linear acyl having 8 to 20 carbon atoms; (B) at least one N-saturated acyl acidic amino acid wherein the saturated acyl is a linear acyl having 8 to 14 carbon atoms (claim 1; according to the claim limitations of the instant claim 5). Claim 1 further claims that at least one of the (A) N-unsaturated acyl acidic amino acid is an N-unsaturated acyl glutamic acid (according to the claim limitations of the instant claim 5). Claim 1 of US12268768B2 further teaches the weight ratio of said (A) to said (B), (A/B) is 0.01-0.8 and claim 7 of US12268768B2 further narrows the weight ratio of (A/B) to 0.02-0.6 (according to the claim limitations of the instant claim 11). Furthermore, the specification of US12268768B2 defines “N-unsaturated acyl acidic amino acids as the components (A)” to include N-monounsaturated acyl acidic amino acids (column 4, lines 19-21; according to the claim limitations of the instant claim 5). Claim 1 of US12268768B2 further claims component B – N-saturated acyl acidic amino acid to be N-lauroyl glutamate (according to the claim limitations of the instant claims 7 and 18-19). Claim 6 of US12268768B2 claims one of said at least one N-unsaturated acyl acidic amino acid is an N-unsaturated acyl glutamic acid, and one of said at least one N-saturated acyl acidic amino acid is an N-saturated acyl glutamic acid (according to the claim limitations of the instant claims 18-19). Claim 9 of US12268768B2 claims the pH of the composition to be 4.0-7.0 and claims 10 and 12 of US12268768B2 further narrows the pH range to 4.5-7.0 (according to the claim limitations of the instant claim 12). Claim 11 of US12268768B2 claims the detergent composition to be a cosmetic (according to the claim limitations of the instant claim 15). Claims 13 and 15 of US12268768B2 claims the detergent composition is applied and/or used to wash the skin or hair (according to the claim limitations of the instant claims 14-15 and 20-22). Claim 14 of US12268768B2 claims the method further comprising lathering and rinsing (according to the claim limitations of the instant claim 20).
US12268768B2 fails to teach the exact N-monounsaturated acyl acidic amino acid of component A as in instant claims 5-6.
Sonoda claims a skin care, specifically an external preparation for the skin, composition comprising one or more selected N-acyl amino acids and salts thereof (title and claim 1; according to the claim limitations of the instant claims 5 and 14-15). Sonoda further teaches that N-acylamino acids and salts thereof are widely used in external preparations for skin as hypoallergenic surfactants (page 2, paragraph 6, [0008]; according to the claim limitations of the instant claims 5). Sonoda teaches that the N-acyl amino acids are both unsaturated and saturated and provides the following examples: N-hexanoyl (caproyl) aspartic acid, N-octanoyl (capryloyl) aspartic acid, N-decanoyl (caprynoyl) aspartic acid, N-dodecanoyl (lauroyl)aspartic acid, N-tetradecanoyl (myristoyl)Aspartic acid, N-hexadecanoyl (palmitoyl)aspartic acid, N-octadecanoyl (stearoyl)aspartic acid, N-eicosanoyl (araquinoyl) aspartic acid, N-docosanoyl (behenoyl) aspartic acid, N-tetracosanoyl (lignocerinoyl) aspartic acid, N-hexacosanoyl (serotinoyl) aspartic acid, N-octenoyl aspartic acid, N-octenoyl aspartic acid Undecylenoyl) aspartic acid, N-dodecenoyl aspartic acid, N-tetradecenoyl aspartic acid, N-hexadecenoyl aspartic acid, N-octadecenoyl aspartic acid, N-coco oil fatty acid acyl aspartic acid, N-hexanoyl (caproyl) glutamic acid, N-octanoyl (capryloyl) glutamic acid, N-decanoyl (caprinoyl) glutamic acid, N-dodecanoyl (lauroyl) glutamic acid, N-tetradecanoyl (myristoyl) glutamic acid, N-hexadecanoyl (palmitoyl) glutamic acid, N-octadecanoyl (stearoyl) glutamic acid, N-eicosanoyl (araquinoyl) glutamic acid, N-docosanoyl (behenoyl) glutamic acid, N-tetracosanoyl (lignocerinoyl) glutamic acid, N-hexacosanoyl (serotinoyl) glutamic acid, N-octenoyl glutamic acid, N-undecenoyl (undecylenoyl) -glutamic acid, N-undecenoyl-glutamic acid Tetradecenoylglutamic acid, N-hexadecenoylglutamic acid, N-octadecenoylglutamic acid, N-coconut oil fatty acyl glutamic acid, and the like (page 2-3, paragraphs 12 and 1 respectively; according to the claim limitations of the instant claims 5-8). As defined by the instant specification, a water-soluble medium includes an aqueous solution ([00073]). Sonoda teaches the preparation to further comprise a aqueous ethanol solution with a mixture of water and ethanol (claim 3; according to the claim limitations of the instant claim 10). Lastly, Sonoda teaches the skin care composition as a cleansing cream (example 8, page 4, paragraph 11; according to the claim limitations of the instant claim 15).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a detergent composition comprising (A) at least one N-unsaturated acyl acidic amino acid wherein the unsaturated acyl is a linear acyl having 8 to 20 carbon atoms; (B) at least one N-saturated acyl acidic amino acid wherein the saturated acyl is a linear acyl having 8 to 14 carbon atoms as outlined by US12268768B2 with the simple substitution of a specific N-monounsaturated acyl acidic amino acid or combination of two N-monounsaturated acyl acidic amino acids, such as N-dodecenoyl glutamate (m=2 and l=2) and N-hexadecenoyl glutamate (m=6 and l=2) as outlined by Sonoda. Simple substitution of one or two N-monounsaturated acyl acidic amino acid for another is within the purview of the skilled artisan and would yield predictable results.
Response to Applicant’s Arguments
Applicant’s arguments filed on 07/10/2026 have been considered by the Examiner.
In regards to the Double Patenting Rejection over U.S. Patent No. 12,268,768 in view of Sonoda, Applicant argues that in the advisory action of June 4, 2026, it was stated that this rejection was overcome by the now-entered amendments.
However, upon further consideration and comparison of the instant claims with that of the patented in U.S. Patent No. 12,268,768 claims, it was determined that the non-statutory double patenting rejection must be made as outlined above. Specifically, when further comparing the weight ratio of (A) to (B) there is significant overlap. U.S. Patent No. 12,268,768 claims (A/B) is 0.01 to 0.80 which calculates to B=100A to B=1.25A and further claims (B) is at least 60% to the total content of (A), (B), and (C) (claim 1). The instant Application claims (A/(A+B)) is 0.001 to 1 which calculates to B=999A to approximately B=1/9A as A approaches 1 (claim 5). Therefore, both U.S. Patent No. 12,268,768 and the instant application have significant overlap in the concentration ratios of (A) and (B). This overlap confirms that the patents are not patentably distinct from each other. A call to applicant to file a terminal disclaimer was made on 09/29/2026 to advance prosecution. However, no agreement was reached and as such this office action is mailed to formalize the issue.
Conclusion
No claims are allowed.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./Examiner, Art Unit 1611
