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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/06/2026 has been entered.
Status of claims
The amendment filed on 01/06/2026 is acknowledged. Claims 14, 15, 17, 18, 22, and 23 have been canceled and claims 6 and 24-26 have been withdrawn.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Rejections withdrawn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 01/06/2026 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 Any rejection and/or objection not specifically addressed below is herein withdrawn.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. 103(a) rejection of Claims 1-5, 7-13, 16, and 19-21 over Fossum et al. (US 2011/0023240 A1) 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.
New ground of rejection
Upon reconsideration the following new ground of rejection is applied.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claim 13 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 13 contains the trademark/trade name Tween. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe surfactant and, accordingly, the identification/description is indefinite.
Also, a trademark or trade name is used to identify a source of goods and the trademark or trade name in the parentheses raise the question as to which term is required by the claim because the subject matter in the parentheses is not identical in scope; thus, it is not clear whether Tween in the parentheses is a further limitation used to identify a source of polysorbate or not, i.e., polysorbate is limited to polysorbate with Tween trademark or not.
New ground of rejection necessitated by Applicant’s amendment
The amendments necessitate the following new ground 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.
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 polymer the instant claim 1-4) (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 claim 1 and 19) (paragraph 137 and 185);
<10% by weight of plasticizer including propylene glycol (the instant claim 9-12) (claims 13 and paragraph 29, 30, and 394);
non-ionic surfactants (the instant claim 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% and about 30-50% in the instant claims 1 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 the range disclosed in the prior art, such as in the instant rejection.
The claimed range of polymer are about 30-55% 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 the claimed range.
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 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 range of esterquat is 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 range.
Sivik et al. do not specify the same weight percentage of plasticizer (<10% vs the claimed about 1.0-8.0% in the instant claim 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 range of plasticizer is about 1.0-8.0% by weight and the range of plasticizer taught in the prior art is <10% by weight and therefor, includes the claimed range.
Sivik et al. do not specify the same weight percentage of perfume (about 0.01-2% vs about 30-50% in the instant claim 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 range of perfume is 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, filed on 01/06/2026, have been fully considered but they are moot in view of new ground of rejections.
Correspondence
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.
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/HONG YU/
Primary Examiner, Art Unit 1614