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 .
DETAILED ACTION
Status of the Claims
Claims 14-15 have been withdrawn. Claims 1, 10 and 12 have been amended. Claims included in the prosecution are claims 1-13 and 16-20.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) submitted on April 15, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, this IDS has been considered by the Examiner.
Withdrawn Objections/Rejections
The objections to claim 1 are withdrawn.
In light of the new amendments and/or upon further consideration, the rejection of claims 1 and 12 under 35 U.S.C. § 112(b) as being are withdrawn.
In light of the abandonment of application 17/731,712, the nonstatuatory double patenting rejection of claims 1-5, 7, 9 and 11 as being unpatentable over claims 1-2, 4-6, 9 and 11 of application 17/731,712 is withdrawn.
New Rejections
Applicant’s amendments have necessitated the following grounds of rejection:
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 (a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
1. Claims 1-13 and 16-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Dussaud et al. (US2018/0346653) with evidence from Kim et al. (Leveraging Multifaceted Polyphenol Interactions: An Approach for Hair Loss Mitigation. Adv. Mater. Interfaces 2025, 12 2400851), Badmus et al. (Environmental risks and toxicity of surfactants: overview of analysis, assessment, and remediation techniques. Environmental Science and Pollution Research (2021) 28:62085–62104) and Ferrari et al. (US2004/0170586).
Dussaud et al. disclose aqueous compositions comprising at least one polyorganosiloxane (A) and a surfactant selected from a group to include anionic surfactants and said composition has a pH less than 7.5 (abstract, [0009], claim 1).
Regarding element (a) of claim 1, Dussaud et al. disclose one or more tannins (i.e., polyphenols) present in the aqueous compositions (see tannin and diluent/solvent components K) and C) respectively; paragraphs [0187], [0207-0212], [0221], and [0233]; claims 17 and 19). Dussaud et al. teach tannins represent a class of polyphenol derivatives and are known for their structural diversity and structures of preferred tannins are provided clearly showing at least two different phenol groups ([0207], see Tannins numbered 1-4).
Regarding element (b), the preamble reciting “composition comprising” is understood to mean that other ingredients can be present in addition to the limitations. Following is the recitation of “consisting essentially of” is construed as “comprising of” because transitional phrase(s) link the preamble to the body of the claim. Thus, the surfactant system may comprise other compounds other than “at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y.” Similarly, the surfactant system of dependent claim 19 is not exclusionary.
Specifically, regarding compound Y in element (b) of claim 1, Dussaud et al. teach propylene glycol mono methyl ether as being used in the composition with Example 16 (F18) ([0300]). Looking to Applicants’ specification, paragraph [0082] establishes such compounds as a suitable compound Y. In addition, Dussaud et al. teach preferred examples for siloxane based nonionic emulsifiers are ethylene oxide (EO), propylene oxide (PO) and butylene oxide (BO) containing emulsifiers of the ABA type with EO/PO/BO moieties attached to the terminal ends of a silicone chain or emulsifiers having polyether moieties attached to the silicone chain in a comb-like arrangement ([0175]). Dussaud et al. disclose an embodiment in which hydrophilic polyether moieties as well as oleophilic alkyl chains are attached to the silicone chain ([0175]).
Regarding the surfactant system (i.e., claims 1), the Examiner notes that the instant specification is absent a description of “system.” Regarding nonionic compound Y, Dussaud et al. teach preferred nonionic surfactants to include ethylene oxide (EO), propylene oxide (PO) and butylene oxide (BO) containing more preferred C5-C24 fatty alcohol and fatty acid based emulsifiers; alcohol based ethoxylates having EO units ([0148-0162]).
Regarding element (c) (i.e., solvent system), Dussaud et al. teach diluents/solvents solvatize the at least one polyorganosiloxane A) ([0191]).
Regarding element (c)(i), the composition comprises water, preferably in an amount of more preferably at least 10 weight % based on the total weight of the aqueous compositions ([0012]; Example 22 [0309]).
Regarding element (c)(ii), the aforementioned diluents/solvents include mono alcohols wherein a preferred embodiment, water/ethanol (i.e., C2-C5 mono alcohol) mixture is used in the aqueous compositions ([0191]). And, the recitation, “an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application;” is a functionality of the ingredients. As such, this recitation does not add any structural value to the composition itself and thus, the recitation does not hold any patentable weight. MPEP § 2112.01 states that if a composition is physically the same, it must have the same properties.
Regarding element (d), Dussaud et al. teach sulfur-containing antioxidants that the hair treatment formulations may comprise ([0218]) many of which mirror those that are disclosed in Applicants’ specification (see Spec., [00122])
Regarding element (e), it is noted that limitations that appear after the term, “optional” are not required.
Regarding the limitations of a pH of 6.5 or less, Dussaud et al. teach compositions having a pH of less than 7 (claim 11), preferably less than 6, more preferably less than 5, and preferably more than 2 ([0010]). Notably, Dussaud et al. provide embodiments comprising tannic acid have a pH of 4.7 which is less than the pKa of tannic acid ([0247-0248]; [0300], Ex. 16).
Regarding the interaction between polyphenol compound X and (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y capable of forming a coating agent after application which is now followed by, “to keratinous material or to keratinous material to which a color coat has been previously applied,” while this functionality is tethered to the structure of the composition, by applying the broadest reasonable interpretation the claimed composition is a composition that does not allow for coating on keratinous material excluded. While Dussaud et al. teach emollients having the ability to coat ([0193]) forming a coating agent is not explicit.
However, one skilled in the art would reasonable expect forming a coating agent in the composition taught by Dussaud et al. As evidenced by the evidentiary reference, Kim et al., tannic acid, a polyphenol, can bind to keratin on the hair surface; tannic acid forms a stable coating on hair through hydrogen bonding, while its unbound phenolic sites sequester functional molecules, enabling their controlled release thereby delivering active molecules directly to hair follicles, enhancing hair, health and mitigating hair loss (abstract).
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to utilize the tannins, nonionic compounds, in the aqueous compositions taught by Dussaud et al. with evidence from Kim et al. with expected results. One would be motivated to do so with a high expectation of success because Dussaud et al. throughout the reference teach compositions for hair treatment that can be formulated into a form typical for hair treatment compositions, e.g., intensive hair treatments, e.g., intensive hair treatments, e.g., leave-on deep conditioners and liquid hair-setting preparations ([0247]). Dussaud et al. suggest that the addition of certain amounts of short chained alcohols (i.e., C2-C5) improves the homogeneity of the formulations and the penetration of the formulations into the hair ([0191]). Dussaud et al. provide formulation compositions comprising skin protecting ingredients ([0221], [0229]) that can particularly provide benefits that extend the life of previously applied hair treatments to include hair strengthening and shaping effects as well as conditioning effects ([0237]).
Regarding claim 2, Dussaud et al. teach hair care preparations can be in the form of an aerosol spray, foam, gel, and gel spray ([0247]).
Regarding claim 3, Dussaud et al. teach fatty acid sorbitane ester based ethoxylates having 10 to 18 carbon atoms in the alkyl chain and 5 to 50 EO units ([0157]) to meet the limitation of a molar mass greater than 200 g/mol.
Regarding claim 4, Dussaud et al. teach tannic acid as the most preferred tannin and provides a structure ([0212]).
Regarding claim 5, Dussaud et al. teach ethanol ([0191]).
Regarding claim 6, Dussaud et al. teach sulfite and bisulfite antioxidants ([0205], [0218]).
Regarding claim 7, claim 10, claim 13 (i.e., ≤ pH 6); claim 16 (i.e., ≤ pH 5.5); claim 17 (i.e., pH 4.0 – 6.0); claim 18 (i.e., pH 3.0 – 5.0), as stated above, Dussaud et al. teach compositions with a pH of less than 7 (claim 11), preferably less than 6, more preferably less than 5, and preferably more than 2 ([0010]). MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art.
Regarding claim 8 and claim 9, Dussaud et al. disclose film-forming polymers and gelling agents as auxiliaries ([0189], [0218], claim 17).
Regarding claim 11, Applicants describe “substantially free” as present in amounts not greater than 0.1% by weight (see Spec., [0031]). Dussaud et al. do not require coloring agents in the composition ([0244]).
Regarding the claimed ranges recited in claim 12, the MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. Regarding element (a), Dussaud et al. teach tannins (i.e., tannic acid) which contain at least two different phenol groups in an amount preferably from about 0.1% - 15% ([0212], [0221], see K)). Regarding element (b), Dussaud et al. teach nonionic surfactant in an amount from about 0 % - 15 % ([0162]). Regarding element (c), Dussaud et al. teach monoalcohols as suitable organic solvents in an amount from about 0.1 to about 95 weight % ([0221], see C)), and that water is present in an amount of at least 20 weight % ([0012]). Regarding element (d), Dussaud et al. teach sulfur containing antioxidants present from about 0.1 to 15 % ([0189], [0218], [0221]), claim 17).
Regarding claim 19, non-ionic surfactants can be used in addition to B1) and B2) surfactants in Dussaud ([0147]). One would be motivated to replace ionic surfactants and utilize a system that consists of nonionic surfactants because of the eco-friendliness properties of the nonionic surfactants. As evidenced by Badmus et al., alcohol ethoxylate (i.e., polyoxyalkylenated compound Y) has excellent biodegradability (page 62089, Table 1) to suggest improved safety for the environment and for the user.
Regarding claim 20, Applicants disclose the terms “cosmetic and dermatological active agents” in paragraph [00162] of the instant specification but do not disclose specific compounds thereof either by chemical name or in an embodiment but cite reference US2004/0170586 for a non-exhaustive listing of such ingredients. Looking to the Applicants’ cited reference, Ferrari et al., teach that cosmetic and dermatological active agents are emollients, moisturizers, vitamins, essential fatty acids, sunscreens, and mixtures thereof (see Ferrari [0455]). Dussaud et al. disclose compositions including emollients (see component E) in paragraphs [0181], [0193], [0221], [0227]; claims 17, 19). Further, Dussaud et al. teach compositions require at least one polyorganosiloxane (claim 1), and as such, siloxanes are well known emollients in the 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 1-5, 7, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7 and 9 of copending Application No. 17/731,733 in view of Dussaud '653. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (a) at least one polyphenol X comprising at least two different phenol groups; (b) a surfactant system consisting essentially of at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y; (c) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-CS monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application. The copending claims disclose composition in the form of a gel. The at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The polyphenol compound X is tannic acid. The at least one C2-CS monoalcohol is ethanol. The composition is substantially free of coloring agents. However, the copending claims do not explicitly teach at least one sulfur containing
antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of the copending claims with expected results. One would be motivated to do so with a reasonable expectation of success as Dussaud teaches that these antioxidants are "also well accepted in the food industry," ([0218]) which suggests that they are suitable and commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1-8, and 11 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-7 and 10 of copending Application No. 17/731,759. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a com position comprising (1) at least one polyphenol X comprising at least two different phenol groups; (2) at least one nonionic compound Y which is a surfactant having a hydrophilic-lipophilic balance (HLB) greater than or equal to 7, has at least one carbon chain having at least 8 carbon atoms, and has at least one (poly)glycerolated chain and/or polyoxyalkylenated chain; and (3) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-CS monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application. The copending claims disclose composition in the form of a gel. The (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The copending claims disclose the composition is substantially free of coloring agents. The polyphenol compound X is tannic acid. The C2-C5 monoalcohol is ethanol as well as the pH is less than 7. Copending claim 10 of '759 teaches at least one antioxidant selected from the group of sodium sulfite, sodium bisulfite.
Claims 1-5, 7-8, and 10-11 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-2, 5-8, and 10 of copending application No. 17/731,791 in view of Dussaud '653. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (a) at least one polyphenol X comprising at least two different phenol groups; (b) a surfactant system consisting essentially of at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y with a molar mass greater than 200 g/mol; (c) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application. The copending claims disclose composition in the form of a gel. The polyphenol compound X is tannic acid. The copending claims disclose at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The composition is substantially free of coloring agents. The C2-C5 monoalcohol is ethanol as well as the pH is less than 7.
However, the copending claims do not explicitly teach at least one sulfur containing antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of the copending claims with expected results. One would be motivated to do so with a reasonable expectation of success as Dussaud teaches that these antioxidants are "also well accepted in the food industry," ([0218]) which suggests that they are suitable and commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1, and 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 17/731,802 in view of Dussaud '653. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising: (a) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in a concentration by weight in the com position that is about 55% or less and wherein the at least one C2-C5 monoalcohol is present in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application; (b) at least one polyphenol X comprising at least two different phenol groups (c) at least one polyoxyalkylenated nonionic compound Y. The copending claims disclose the polyphenol compound X is tannic acid. The at least one C2-C5 monoalcohol is ethanol.
However, the copending claims do not explicitly teach at least one sulfur containing
antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of the copending claims with expected results. One would be motivated to do so with a reasonable expectation of success as Dussaud teaches that these antioxidants are "also well accepted in the food industry," ([0218]) which suggests that they are suitable and commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1, and 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 17/731,809 in view of Dussaud '653. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising: (a) a solvent system comprising (i) water in an amount of at least about 10% by weight with respect to the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in a concentration by weight in the composition that is about 55% or less and wherein at least one C2-C5 monoalcohol is present in an amount to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application; (b) at least one polyphenol X comprising at least two different phenol groups (c) at least one glycerolated nonionic compound Y. The copending claims disclose the at least one polyphenol compound X is tannic acid. The at least one C2-C5 monoalcohol is ethanol.
However, the copending claims do not explicitly teach at least one sulfur containing
antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of the copending claims with expected results. One would be motivated to do so with a reasonable expectation of success as Dussaud teaches that these antioxidants are "also well accepted in the food industry," ([0218]) which suggests that they are suitable and commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1, and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 8 and 10 of copending Application No. 17/731,863 in view of Dussaud '653. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a com position comprising (1) at least one polyphenol X comprising at least two different phenol groups; (2) a surfactant system consisting essentially of at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y; (3) a solvent system comprising at least one C2-CS monoalcohol in an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application; and optionally (4) at least one agent selected from the group consisting of (i) at least one chelating agent; (ii) at least one gelling agent; (iii) at least one antioxidant selected from the group consisting of ascorbic acid compounds, sulfur-containing antioxidants, and mixtures thereof, (iv) at least one nonmineral filler, and (v) mixtures thereof. The at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The copending claims disclose the at least one polyphenol compound X is tannic acid. The C2-C5 monoalcohol is ethanol. The composition has a pH that is less than 7.
However, the copending claims do not explicitly teach water in an amount of at least about 10% by weight with respect to the total weight of the composition.
Dussaud teaches a composition comprising water more preferably at least 10 weight % ([0012], Example 22 [0309]). MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to apply the amount of water used by Dussaud to the copending claims with expected results. One would be motivated to do so with a reasonable expectation of success as Dussaud teaches that said aqueous compositions having a certain pH can be synthesized in a straightforward and cost-efficient way, are easy to formulate and to use ([0007]).
Response to Arguments
Applicants’ arguments filed April 14, 2026 have been fully considered but they are not persuasive.
First, the rejection header in the previous Office action inadvertently excluded the claim number due to a typo. The rejection itself is found on paragraph 2 of page 17 of the Office action dated Dec. 15, 2025. And also, the conclusionary statement found on page 25 of the Office action encompasses instant claim 19.
Applicants argue the assertion that Zillich provides motivation to use compound Y as a solubilizer to allow for better skin penetration of active agent polyphenols (Remarks, bridging pages 6-7) does not provide evidence that the coating agents form from these interactions of surfactants with polyphenols (Remarks, page 7, paragraph 2).
Zillich is no longer used.
Applicants argue low carbon alcohols of Dussaud are optional ingredients and that Dussaud does not teach adding sufficient (Examiner’s emphasis) C2-C5 monoalcohol to inhibit the precipitation of compounds X and Y (Remarks, page 8, paragraphs 1-3).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “sufficient C2-C5 monoalcohol”) is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants argue too many choices from broad categories of optional ingredients in Dussaud would have to be made with no guidance as to how to obtain the desired functionality of all of the ingredients when combined together in a single composition (Remarks, page 10, paragraph 1).
The Examiner directs attention to Merck &Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Circ. 1989), which states with regards to its more than 1200 combinations: that the prior art “discloses a multitude of effective combinations does not render any particular formulation less obvious.” See In re Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that "hydrated zeolites will work" in detergent formulations, even though "the inventors selected the zeolites of the claims from among 'thousands' of compounds"); In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 425, 58 CCPA 1074 (1971) (obviousness rejection affirmed where the disclosure of the prior art was "huge, but it undeniably include [d] at least some of the compounds recited in appellant's generic claims and it is of a class of chemicals to be used for the same purpose as appellant's additives"). In a section 103 inquiry, "the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered." In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
For these reasons, Applicants’ arguments are found unpersuasive.
Conclusion
All claims under consideration remain rejected; 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 extension fee 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 Karen Ketcham whose telephone number is (571)270-5896. The examiner can normally be reached 0830-1630.
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/Karen A Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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