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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 04/23/2026 is acknowledged. Claims 14, 15, 17, 18, 22, 23 have been canceled and claims 6 and 24-26 have been withdrawn. Claims 1-5, 7-13, 16, and 19-21 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 04/23/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 112(b) rejection of claim 13 from the previous Office Action. 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.
Rejections maintained
The following rejection of the claims is remained for reasons of record and the following.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), 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(a).
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:
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 1-5, 7-13, 16, and 19-21 are rejected under 35 U.S.C. 103(a) as being unpatentable over Sivik et al. (US 2012/0048769 A1).
Sivik et al. teach a water-soluble film (the claimed water-dissolvable in the instant claim 1) (claim 19) to be used by a human as a shampoo for hair care purposes (paragraph 36)
formed from a nonwoven web comprising a plurality of filaments by compression and heating the nonwoven web with the filaments no longer exist as filaments and no visible fiber to naked eye according to figure 2, i.e., the claimed film having non-fibrous body in the instant claim 1 since the claimed “non-fibrous” is not defined in the instant specification and is given broadest reasonable interpretation as “no visible fiber to naked eye”) (abstract, figure 2, and claims 1 and 8);
wherein the plurality of filaments comprise
>10 and <50% by weight of a polar solvent-soluble filament-forming material comprising hydroxypropylmethyl cellulose (HPMC) (the claimed viscoelastic polymer in the instant claim 1-4 with viscoelastic being semantic) (paragraph 111-115 and 129) and starch (the instant claim 21, the optional limitations are not required limitations of claim scope) (claim 11);
actives including
about 0.5-5% by weight of fabric softening agents including esterquat (substantially overlaps with the claimed 1.0-5.0% by weight and thus the claimed an amount suitable for using in the water-dissolvable film in a method for cleaning a body surface including human hair, skin and nail in the instant claim 1) (paragraph 137, 233, and 234),
about 0.01-2% by weight of a perfume microencapsulated by urea-formaldehyde and/or melamine-formaldehyde (the instant claims 1 19, and 20) (paragraph 137 and 185);
<10% by weight of plasticizer including propylene glycol (the instant claims 1 and 9-12) (claims 13 and paragraph 29, 30, and 394);
non-ionic surfactants (the instant claims 3 and 13, the optional limitations are not required limitations of claim scope) (paragraph 141 and 161);
colorant (the instant claim 16, the optional limitations are not required limitations of claim scope) (claim 24); and
<3% and ≥0% by weight of water (including 0% by weight of water → the claimed anhydrous in the instant claim 8) (paragraph 74).
Sivik et al. do not specify the same weight percentage of polymer (>10 and <50% vs the claimed about 30-55%, about 42.6%, and about 30-50% in the instant claims 1, 3, and 4).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with and/or lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed ranges of polymer are about 30-55%, about 42.6%, and about 30-50% by weight and the range of esterquat taught in the prior art is >10 and <50% by weight and therefor, overlaps with and/or includes the claimed ranges.
Sivik et al. do not specify the same weight percentage of esterquat (about 0.5-5% vs the claimed about 2.0-4.0% and about 3.3% in the instant claims 3, 5 and 7).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed ranges of esterquat are about 2.0-4.0% and about 3.3% by weight and the range of esterquat taught in the prior art is about 0.5-5% by weight and therefor, includes the claimed ranges.
Sivik et al. do not specify the same weight percentage of plasticizer (<10% vs the claimed about 2-7%, about 4.9%, about 3-6% in the instant claims 1, 3, and 12).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed ranges of plasticizer are about 2-7%, about 4.9%, about 3-6% by weight and the range of plasticizer taught in the prior art is <10% by weight and therefor, includes the claimed ranges.
Sivik et al. do not specify the same weight percentage of perfume (about 0.01-2% vs about 25-50%, about 36.2%, and about 30.0-50.0% in the instant claims 1, 3, and 20).
This deficiency is cured by the rationale that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
The claimed ranges of perfume are about 25-50%, about 36.2%, and about 30-50% by weight and the range of perfume taught in the prior art is about 0.01-2% by weight. Although both ranges are not close, the amount of perfume is a result effective parameter that a person of ordinary skill in the art would routinely optimize: the more perfume the stronger perfume effect and/or whether the composition is a concentrate or ready to use and/or total amount of composition to be used. Thus, a person of ordinary skill in the art would adjust the amount of perfume in order to achieve the desired perfume effect. Please refer to MPEP 2144.05.II.A:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
Response to Applicants’ arguments:
Applicant’s arguments based on the amendments are addressed in the modified rejection above (newly underlined).
Applicants argue that the claimed film has superior condition properties when incorporated into personal care product in paragraph 33, 63, 66 and table 2 in the instant specification.
However, this argument is not deemed persuasive.
First, the experiment for the unexpected benefits is not a true side-by-side comparison with the closest to prior art. In the prior art the film comprising fabric softening agents including esterquat; in the experiment the comparing composition is absent of esterquat fabric softening agent. Thus, the results from the experiment are not convincing. Please refer to 716.02(b) and (e).
Second, assuming – purely arguendo – there is unexpected results, the scope of the composition in table 1 (results in table 2) in the instant specification is much narrower than the scope of the instant claim 1. There is no adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the single tested composition. In other words, Applicant has not shown that based on this single example, it is reasonable to expect that other embodiments falling within the scope of the claims will behave similarly. Please refer to MPEP 716.02(b) III:
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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