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 .
Claim Status
Applicants’ amendments and arguments filed 08/29/2025 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 are canceled.
Claim 5 is amended.
Claims 16-17 are newly added.
Claims 5-17 are examined on the merits.
Priority
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
New Rejections Necessitated by 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.
Claim 6 is 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.
Claim 5 is dependent upon claim 1 which recites “component (A): an N-monounsaturated acyl acidic amino acid(s) or a salt(s) thereof, wherein the N-monounsaturated acyl is a compound” which provides the limitation of the N-monounsaturated acyl acidic acid is a singular compound. Claim 5, however, recites that the component (A) comprises (A1) and (A2) compounds which further broadens the limitation of claim 5 thus rendering the claim unclear and indefinite.
For the purpose of moving prosecution forward, Examiner broadly interprets the limitations of claim 6 to be met by the limitations of claim 5.
Claims 16 and 17 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.
Claims 16 and 17 are dependent upon claim 1 which is cancelled. Therefore, it is unclear what constituents the surfactant from which the claims rely upon. Due to the remaining claims having no mention of a surfactant and therefore no possibility of broad interpretation, claims 16 and 17 will not be further examined by the Examiner due to their indefinite nature.
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.
Claim(s) 5-8, 10, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sonoda et al. (JP2002371000A, published 12/24/2002, English translation via Google, hereafter Sonoda).
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).
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5].
“[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. Therefore, it would be obvious to one in the art before the effective filing date of the claimed invention to a surfactant composition comprising an N-monounsaturated acyl acidic acid or comprising an N-monounsaturated acyl acidic acid and an N-saturated acyl acidic amino acid as claimed by the instant claims 1-8, 10, and 14-15.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sonoda et al. (JP2002371000A, published 12/24/2002, English translation via Google, hereafter Sonoda) in view of Babu et al. (Babu, R.J., Chen, L., Kanikkannan, N. (2015). Fatty Alcohols, Fatty Acids, and Fatty Acid Esters as Penetration Enhancers. In: Dragicevic, N., Maibach, H. (eds) Percutaneous Penetration Enhancers Chemical Methods in Penetration Enhancement. Springer, Berlin, Heidelberg. https://doi.org/10.1007/978-3-662-47039-8_9, hereafter Babu).
As outlined above, Sonoda teaches the skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as in the instant claim 5. Sonoda fails to teach the addition of an N-unsaturated fatty acid or a salt thereof as in instant claim 9.
Babu teaches that fatty acids with unsaturated carbon chains are reported as skin penetration enhancers and provides a list of unsaturated fatty acids, such as cis-9-Tetradecenoic acid (myristoleic acid) in Table 9.1 (page 134, paragraph 9.2).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to modify the skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as outlined by Sonoda by addition of a unsaturated fatty acid as outlined by Babu under TSM, see MPEP 2143(G). As outlined by Babu, adding an unsaturated fatty acid, such as myristoleic acid, to a improves skin penetration which would motivate someone skilled in the art to advantageously combine an unsaturated fatty acid with the composition of Sonoda as it would have a reasonable expectation of success.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sonoda et al. (JP2002371000A, published 12/24/2002, English translation via Google, hereafter Sonoda) in view of Tsubone et al. (JPH10237494A, published 09/08/1998, English translation via Google, hereafter Tsubone).
As outlined above, Sonoda teaches the skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as in the instant claim 5. Sonoda fails to teach the ratio of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as in instant claim 11.
Tsubone claims a detergent composition for the skin comprising an anionic surfactant containing (A) an acyl group having two long-chain bipolar groups, and (B) an anionic surfactant containing one chain and one polar group (abstract and claim 1). Tsubone claims the concentration of component (A) an acyl group having two long-chain bipolar groups to be 1-40% by weight and the concentration of component (B) an anionic surfactant containing one chain and one polar group to be 1-60% (claim 2). Tsubone further claims component (B) the anionic surfactant to comprise sodium N-dodecanoyl glutamate (page 3, examples 1-35).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as outlined by Sonoda with the ready for improvement with the known technique of adjusting the concentrations of N-dodecanoyl glutamate to be from 1-40%, and an anionic surfactant containing an acyl group having two long-chain bipolar groups, such as N-dodecanoyl (lauroyl) glutamic acid also known as N-lauroyl glutamate, to be from 1-60% as outlined by Tsubone. Adjusting the concentrations of forementioned components as claimed by instant claim 11 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sonoda et al. (JP2002371000A, published 12/24/2002, English translation via Google, hereafter Sonoda) in view of Satori Chemist (The Satori Chemist. (2019, October 6). A guide to skin ph and cleansers. https://satorichemist.com/a-guide-to-skin-ph-and-cleansers/, hereafter Satori).
As outlined above, Sonoda teaches the skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as in the instant claim 5. Sonoda fails to teach the composition to have a pH of 3-9 as in instant claim 12.
Satori teaches the ideal skin pH is between 4.0-7.0 (page 6). Furthermore, Satori teaches the recommended cleanser pH to be between 4.5-6.5 and teaches that this is beneficial as it reduces inflammatory responses, acne, barrier function recovery, and prevents epidermal hyperproliferation (page 7).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to modify the skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as outlined by Sonoda by adjusting the pH to a pH between 4.5-6.5 as outlined by Satori under TSM, see MPEP 2143(G). As outlined by Satori, adjusting the pH to 4.5-6.5 reduces inflammatory responses, acne, barrier function recovery, and prevents epidermal hyperproliferation which would motivate someone skilled in the art to advantageously adjust the composition of Sonoda as it would have a reasonable expectation of success.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Sonoda et al. (JP2002371000A, published 12/24/2002, English translation via Google, hereafter Sonoda) in view of Ahmed et al. (Ahmed, ARSHAD AYUB, and B. I. P. U. L. Nath. "Formulation and in vitro evaluation of poly-herbal anti-ageing face cream of Coriandrum sativum and rose hip oil." Int. J. Curr. Pharm. Res 9 (2017): 75-78., hereafter Ahmed).
As outlined above, Sonoda teaches the skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as in the instant claim 5. Sonoda fails to teach the composition to have a viscosity of 1.5 Pas (pascal second) or less as in instant claim 13.
Ahmed teaches an anti-ageing face cream that is useful as an oil-in-water, water based cleansing agent (page 75, paragraph 3). Furthermore, Ahmed teaches the viscosity of the cream is in a range of 500-1500 centipoise (cps) which is 0.5-1.5 Pas which indicates that the cream is easily spreadable (page 77, viscosity).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to modify the skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as outlined by Sonoda by adjusting the viscosity to 0.5-1.5 Pas as outlined by Ahmed under TSM, see MPEP 2143(G). As outlined by Ahmed, adjusting the viscosity to 0.5-1.5 Pas provides an easily spreadable cleansing product which would motivate someone skilled in the art to advantageously adjust the composition of Sonoda as it would have a reasonable expectation of success.
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 5-8, 10, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 9-13, and 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 claim 7). 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 used to treat to the skin or hair (according to the claim limitations of the instant claims 14 and 15).
US12268768B2 fails to teach the exact N-monounsaturated acyl acidic amino acid of component A as in instant claims 5-6.
As outlined above, Sonoda teaches the skin cleansing composition of N-monounsaturated acyl amino acids or salts thereof and N-saturated acyl acidic amino acids or salts thereof as in the instant claims 5-6.
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 08/29/2025 have been considered by the Examiner.
In response to Applicant’s arguments against the 35 USC § 103 rejections over Sonoda, Applicant first argues that Sonoda is not directed towards a surfactant composition having low viscosity, high handleability, neutral pH, and improved oil cleansing power as the instant application. Applicant further argues that Sonoda fails to teach the instantly claimed compound of Formula (A) in claim 5. Applicant further handpicks examples from Sonoda to further argue that Sonoda does not teach the composition, specifically the exact combination of components (A) and (B) of the instantly claimed invention. Lastly, Applicant argues that Sonoda is directed towards an extract of Pueraria root causing the improved effects and not the N-acyl amino acid and salts.
It is first noted that Applicant’s claims 5-15 are not directed towards surfactant, but instead a composition broadly. Further, it is noted that the limitations of low viscosity, high handleability, neutral pH, and improved oil cleansing powder are found in the independent claim 5 which is rejected over Sonoda alone. Additionally, in regards the limitation of pH and viscosity found in instant claims 12 and 13, it is noted that these are not rejected under Sonoda alone and Applicant has not provided reasoning as to the why the combination of references, specifically Sonoda in view of Satori Chemist and Sonoda in view of Ahmed, do not teach the limitations of the instant claims 12 and 13. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to Applicant’s argument against Sonoda stating that Sonoda does not teach the compound of formula (A), Applicant is encouraged to review Sonoda which teaches the use of many N-acyl amino acids that can be unsaturated or saturated then provides examples such as N-dodecanoyl (lauroyl) glutamic acid (page 2-3, paragraphs 12 and 1 respectively) which in its the unsaturated form meets the limitations of formula (A). Therefore, under 35 USC § 103 rejection it would obvious to claim formula (A) as a reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the composition of the instant claims with predictable results.
In response to Applicant’s reference to the specific examples of table 1 of Sonoda, Applicant is reminded that the instant claims are rejected over Sonoda under 35 USC § 103 and not 35 USC § 102. As outlined above, and reiterated here, a reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Therefore, Applicant’s argument against one example or table in Sonoda alone is an improper rebuttal to obviousness since obviousness is not limited to ‘preferred embodiments’, but instead the reference as a whole.
Furthermore, in regards to Applicant’s reference to specific examples within Sonoda and argument that Sonoda is directed towards a Pueraria root, Applicant is again reminded that the MPEP 2111.03(III) states “applicant has the burden of showing that the introduction of additional steps or specific components which would materially change the characteristics of the claimed invention.” In summary, Applicants have failed to properly demonstrate how and which additional components materially affect the basic and novel characteristics of the claimed composition as Applicant has failed to provide any reason demonstrating how Sonoda’s teaching are materially different from the instant claimed invention. Lastly, further in regards to Applicant’s argument that Sonoda is directed towards Pueraria root, Applicant is reminded that the claims currently recites the transitional term “comprising” which is inclusive or open-ended and does not exclude additional, unrecited elements or method steps per MPEP 2111.03(I), such as Pueraria root.
In summary Applicant’s arguments against the 35 USC § 103 rejection over Sonoda are not found persuasive and the rejection is updated to account for amendments.
In response to Applicant’s arguments against the 35 USC § 103 rejections over Sonoda in view of Tsubone, Sonoda in view of Satori, and Sonoda in view of Ahmed, Applicant argues against all three rejections as a whole stating that the above arguments against Sonoda demonstrate why these rejections should be overcome.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, as outlined above, Applicant’s arguments over Sonoda individually were not found persuasive by the examiner.
In summary Applicant’s arguments against the remaining 35 USC § 103 rejections of record are not found persuasive and the rejections are updated to account for amendments.
In response to Applicant’s arguments against the Non-Statutory Double Patenting rejections, Applicant’s amendments have necessitated new grounds of rejections.
Conclusion
No claims 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.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611