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 .
Status of the Claims
Pursuant to the amendment dated 05/18/2026, claims 2-4 have been cancelled.
Claims 1 and 5-16 are pending and under current examination.
All rejections not reiterated have been withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities: In claim 1, lines 5-6, an end parenthesis is missing in “alkyl(C8-C20amidooalkyl(C1-C6)sulfobetaines”. Appropriate correction is required.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 5-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kita-Tokarcyk et al. (US20180353410A1; published 13 December 2018; of record) in view of Paufique (US20190060390A1; published 28 February 2019; of record).
Applicant Claims
A veterinary composition of the shampoo type, comprising an active ingredient obtained from Ophiopogon japonicus, and at least one amphoteric surfactant selected from the betaines.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Kita-Tokarcyk et al. is directed to a shampoo composition for topical application to the hair, skin or nails suitable for the cleansing of animal hair, preferably mammal hair (i.e., veterinary shampoo) [0145] (limitation of claim 1). Where the shampoo composition comprises a total amount of surfactant from 0.01 to 70 wt% including anionic, nonionic, glucosides, cocoamidopropyl betaine, sulfosuccinates, isethionates, glutamates, taurates, among others and combinations thereof [0102]. Kita-Tokarcyk et al. further discloses the shampoo compositions may comprise of additional components to provide for additional usage benefits including plant extracts [0157].
Regarding claim 1, Kita-Tokarcyk et al. disclose the composition may comprise amphoteric surfactants, including cocoamidopropyl betaine [0126-0127], an alkyl(C8-C20)amidoalkyl(C1-C6)betaines.
Regarding claim 1, Kita-Tokarcyk et al. disclose the composition may comprise amphoteric surfactants are present from 0.5-20 wt% of the composition [0128], which overlaps with the claimed range (See MPEP 2144.0.5(I)).
Regarding claim 5, Kita-Tokarcyk et al. disclose the composition may comprise mixtures of amphoteric surfactants [0127] (i.e., betaines and a further amphoteric surfactant) [0128], non-ionic surfactants [0116], and anionic surfactants [0106].
Regarding claim 6, Kita-Tokarcyk et al. discloses the composition may comprise of sulfosuccinate, isethionate, and taurate surfactants [0102] including compositions comprising disodium laureth sulfosuccinate [0273] and sodium methyl cocoyl taurate [0275].
Regarding claim 7, Kita-Tokarcyk et al. disclose the composition may comprise amphoteric surfactants sodium cocoamphoacetate [0127] and sodium cocoyl glutamate [0115].
Regarding claim 8, Kita-Tokarcyk et al. disclose mixtures of amphoteric surfactants may also be suitable, where the preferred mixtures are those of cocamidopropyl betaine and a further amphoteric is sodium cocoamphoacetate and the amphoteric [0127] surfactant from 0.5 to 20 wt% [0128], which overlaps with the claimed range (See MPEP 2144.0.5(I)). In addition, Example 39, shows cocamidopropyl betaine and an additional amphoteric surfactant sodium lauroyl glutamate present at 0.4% [0275].
Regarding claims 9 and 16, Kita-Tokarcyk et al. disclose the composition may comprise decyl glucoside or lauryl glucoside and mixtures thereof [0120].
Regarding claim 10, Kita-Tokarcyk et al. disclose the composition may comprise non-ionic surfactants from 0 to 5 wt% [0116], which overlaps with the claimed range (See MPEP 2144.0.5(I)).
Regarding claim 11, Kita-Tokarcyk et al. disclose the composition may comprise gelling or thickening agents including guar gum (i.e., a galactomannan gum) [0143].
Regarding claims 12-13, Kita-Tokarcyk et al. disclose a method for treating hair by applying the shampoo composition [0205], suitable for animal hair [0145] onto wet hair, washing the hair [0206] the then removing the shampoo from the hair (i.e., rinsing with water) [0207].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Kita-Tokarcyk et al. do not teach the veterinary composition, a shampoo, further comprises an active agent obtained from Ophiopogon japonicus and wherein such active ingredient is present in an amount of at least 0.1 wt% as required by claims 1-2. Kita-Tokarcyk et al. do not teach the method for reducing and/or preventing the formation and/or the adhesion of biofilms of pathogenic bacteria, or for reducing the presence of pathogenic bacteria on the skin or the coat, in a non-human mammal, in particular a dog or cat, by using the veterinary composition according to claim 1, and the method according to claim 14, characterized in that the pathogenic bacteria are selected from Staphylococcus aureus and/or Staphylococcus pseudintermedius, as required by instant claims 14-15. However, this deficiency is cured by Paufique.
Paufique is directed to a composition comprising the active ingredient obtained from a plant, Ophiopogon japonicus (limitation of claim 1), and a method for the treatment of atopic dermatitis [0016]. Where the compositions may be in the form of oil-in-water emulsions, water-in-oil emulsions, multiple emulsions (Water/Oil/Water or Oil/Water/oil) that may be microemulsions or nanoemulsions, or in the form of solutions, suspensions, hydrodispersions, aqueous gels or powders [0098] and shampoo [Claim 15], with additional adjuvants including surfactants, nonionic, anionic, cationic or amphoteric, and thickening or gelling agents, among others [0101-0113]. For the treatment of atopic dermatitis in animals, particularly dogs or cats [0116] (i.e., veterinary composition). Paufique disclose the composition comprises preferably between 0.05 and 1% of the active ingredient Ophiopogon japonicus [0100], which overlaps with the claimed range (See MPEP 2144.0.5(I)), that it acts on the skin microbiota [0047-0050], and limits the adhesion of Staphylococcus aureus to the skin [0068] (limitation of claims 14 and 15).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Both Kita-Tokarcyk et al. and Paufique teach shampoo compositions for the use on animals. Where Kita-Tokarcyk et al. teach said compositions for topical application to the hair, skin or nails suitable for the cleansing of animal hair, preferably mammal hair (i.e., veterinary shampoo) [0145] that comprises combinations of surfactants [0102] including amphoteric, betaines, and non-ionic, gelling agents, including guar gum, and may further comprise additional components to add additional usage benefits, including plant extracts [0157]. Paufique discloses a composition comprises the plant extract of Ophiopogon japonicus [0100], that may further comprise at least one dermatologically acceptable adjuvant including non-ionic, anionic, cationic, or amphoteric surfactants [0105], and thickening of gelling agents [0106], among others. Paufique discloses the composition is suitable for the treatment of atopic dermatitis in animals, particularly dogs or cats [0116], it acts on the skin microbiota [0047-0050], and limits the adhesion of Staphylococcus aureus to the skin [0068], and can be in the form of a shampoo [Claim 15].
Based on these teachings, it would have prima facie obvious to one skilled in the art, at the time of the invention, to substitute the plant extract of Kita-Tokarcyk et al. with the Ophiopogon japonicus extract of that Paufique discloses to prepare a veterinary shampoo. One would have been motivated to do such because Paufique discloses a plant extract with the additional usage benefit of acting on the skin microbiota [0047-0050], and limits the adhesion of Staphylococcus aureus to the skin [0068]. Furthermore, it is noted that Paufique teaches that the active ingredient obtained from Ophiopogon japonicus advantageously treats atopic dermatitis in animals and limits the adhesion of Staphylococcus aureus to the skin [0068].
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 05/18/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s comment on page 6 of the remarks that they maintain previously presented arguments, this comment is noted and the examiner maintains the opinion exactly as set forth in the prior Office actions.
On page 7, Applicant argues that Kita-Tokarczyk does not disclose O. japonicus and refers generically to optional inclusion of plant extracts with no direction to O. japonicus.
Regarding Applicant’s argument that Kita-Tokarczyk does not teach specifically O. japonicus, the examiner cited the teaching that plant extracts may be included in Kita-Tokarczyk’s invention to provide evidence of reasonable expectation of success in adding any plant extract. Kita-Tokarczyk was not relied upon to teach adding the specific plant extract, O. japonicus hydrolysate. 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).
On page 7, Applicant argues that Paufique discloses O. japonicus for treatment of atopic dermatitis and its antiadhesion effect is taught in the context of diseased atopic dermatitis state therefore Paufique’s mechanism is fundamentally different than the activity demonstrated for the instantly claimed composition. On pages 8-9, Applicant argues that Paufique discloses O. japonicus extract limits adhesion of S. aureus to skin and that anti-adhesion differs from the antimicrobial activity that Applicant reports in the Maubert declaration showing killing of bacterial cells and the yeast, M. pachydermatis. Applicant argues that Paufique does not disclose activity against this species of yeast. On page 9, Applicant argues further that a bactericidal/yeasticidal effect is mechanistically and clinically distinct from an anti-adhesion effect; antiadhesion prevents colonization; bactericidal compositions eliminate existing microbial populations and the two activities address different stages of infection. Applicant argues that this is a difference in kind, per MPEP 716.02(a).
Regarding Paufique, the examiner maintains the opinion that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant has not established on the record that it is the addition of the O. japonicus hydrolysate that provides the noted bactericidal and yeasticidal effect because the composition tested in the declaration contains another potent antimicrobial agent that confounds interpretation of the data. See further discussion below.
On pages 9-10, Applicant points out that the composition that was tested in the Maubert declaration is Douxo S3 Pyo Shampoo, corresponding to Table 3 of the instant specification. The composition comprises inter alia: cocamidopropyl hydroxysultaine, which is a member of the alkyl(C8-C20)amidoalkyl(C1-C6)hydroxysulfobetaine sub-genus recited in amended claim 1 (the specification identifies cocamidopropyl hydroxysultaine, marketed as Amonyl 675 SB by Seppic, as a representative species of this sub-genus); a hydrolysate of Ophiopogon japonicus (marketed by Ceva as Ophytrium); decyl glucoside as a nonionic surfactant; panthenol; and chlorhexidine digluconate. On page 10, Applicant argues that neither Kita-Tokarczyk nor Paufique discloses or suggests a veterinary shampoo containing the combination of Ophiopogon japonicus hydrolysate and a betaine amphoteric surfactant of the recited sub-genera in the recited amounts, irrespective of whether chlorhexidine is also present. Applicant argues that the relevant comparison for purposes of obviousness is between the claimed invention and the closest prior art. Paufique’s O. japonicus containing composition is taught to limit S. aureus adhesion not to achieve bactericidal kill across multiple species and yeasticidal kill against M. pachydermatis. The bactericidal and yeasticidal performance demonstrated in the Maubert declaration is therefore unexpected relative to the closest prior art regardless of the presence of any further co-formulated antimicrobial.
As an initial matter, the statement that table 3 of the instant specification represents the composition tested in the Maubert declaration, filed 12/09/2025, is noted; however this statement was not made in a declaration or affidavit and cannot constitute evidence on the record. In the interest of compact prosecution the information is fully addressed in the following paragraphs; however, in order to constitute evidence on the record, this statement must be made in an affidavit or declaration by an individual having knowledge of the facts at hand. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”).
The above arguments are not persuasive because the allegedly unexpected yeasticidal and bactericidal properties of the example according to the instant invention tested in the Maubert declaration filed 12/09/2025 does not establish that these properties are due to the O. japonicus extract or that they are an unexpected improvement over the cited prior art. Applicant has attributed the antimicrobial effects reported in the Maubert declaration to the presence of the O. japonicus hydrolysate and argued that the prior art does not recognize this benefit and rather only teaches anti-adhesion. However, the data fail to establish O. japonicus hydrolysate as the source of the antimicrobial effect. Applicant has argued that the composition tested in the experiments reported in the Maubert declaration is disclosed in table 3 of the instant specification, and contains inter alia O. japonicus and chlorhexidine digluconate, which is a powerful antimicrobial agent. Duvosin et al. (US 20170022455) teach that chlorhexidine has antifungal and antibacterial action, in addition to an extremely high capacity of disinfection, bacterial destruction and bacteriostatic action, thus inhibiting bacterial growth (colonies; 0024). Regarding the specific organism Malassezia pachydermatis, Cavana teaches compositions containing a cocktail of antimicrobial agents that includes chlorhexidine digluconate are effective against M. pachydermatis (title, abstract). Thus, the data do not appear to be unexpected and the also fail to establish a nexus between the limitation missing from Kita-Tokarczyk and the allegedly superior performance. Please refer to MPEP 716.01(b): To be of probative value, any secondary evidence must be related to the claimed invention (nexus required). If the evidence is to be given substantial weight in the determination of obviousness or nonobviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore the examiner must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42, 227 USPQ 657, 673-674 n. 42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). The term "nexus" designates a factually and legally sufficient connection between the objective evidence of nonobviousness and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988). See also Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1363, 2023 USPQ2d 667 (Fed. Cir. 2023). Here, because the data does not evaluate the contribution of the known antimicrobial chlorhexidine digluconate, the allegedly unexpected antimicrobial effects of Douxo S3 Pyo Shampoo described in the Maubert declaration cannot be clearly linked to the presence of the O. japonicus.
Finally, the data are not commensurate in scope with the claims because the experimental compositions contain the antimicrobial agent chlorhexidine digluconate and the claims are broader because this substance is not required.
The relevant sections examiner’s explanation of the burden on Applicant to overcome an obviousness rejection with a persuasive showing of unexpected results, as stated in the Office action mailed 12/16/2025 is replicated here for convenience:
Please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
The data contained in the declaration are not sufficient to overcome an obviousness rejection with a persuasive showing of unexpected results. To date, no unexpected result has been made of record because the prior art teaches the antimicrobial effect of Ophiopogon japonicus extract (see Paufique). No comparison to the closest prior art has been made, therefore, the examiner is unable to ascertain whether the antimicrobial effect is surprisingly better than the effect attributed to the Ophiopogon japonicus extract disclosed by Paufique. Applicant has narrowed claim 1 to specific subgenera of ingredients; however, the claims remain broader in scope in terms of the active agents that may be present/absent (specifically chlorhexidine digluconate, as discussed supra).
Nonstatutory 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 and 5-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-14 of U.S. Application No. 17/780,764;
claims 1-14 of U.S. Application No. 19233177;
claims 1-15 of U.S. Application No. 19233249;
claims 1-14 of U.S. Application No. 19233347;
claims 1-15 of U.S. Application No. 19233386;
claims 1-15 of U.S. Application No. 19233425;
claims 1-15 of U.S. Application No. 19233573;
claims 1-15 of U.S. Application No. 19233632; and
claims 1-17 of U.S. Application No. 19233684
in view of Kita-Tokarcyk et al. (US20180353410A1; published 13 December 2018) and in view of Paufique (US20190060390A1; published 28 February 2019).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims embrace veterinary compositions comprise the following:
Ophiopogon japonicus preferably between 0.1 and 1 wt. %,
one or more surfactant(s) selected from the amphoteric surfactants of the betaine type (e.g., capryl/capraamidopropyl betaine which reads on alkyl(C8-C20)amidoalkyl(C1-6)betaine) in an amount from 0.1-10 wt% (overlaps with at least 3 wt%), the carboxylic anionic surfactants, caprylyl/capryl glucoside (i.e., alkyl(poly)glucoside nonionic surfactants), and the mixtures thereof,
wherein the composition further comprises cationic galactomannan gums,
A method for treating the skin and/or the coat of a non-human mammal, and in particular a dog or a cat, by applying the composition according to claim 1 to the skin and/or the coat of said mammal
A method for reducing and/or preventing the formation and/or the adhesion of biofilms of pathogenic bacteria, or for reducing the presence of pathogenic bacteria on the skin or the coat, in a non-human mammal, in particular a dog or cat, by using the veterinary composition, and
in that the pathogenic bacteria are selected from Staphylococcus aureus and/or Staphylococcus pseudintermedius.
Differences include instant claims 5-10 require the selection of east one additional amphoteric surfactant, anionic surfactants are selected from disodium laureth sulfosuccinate, sodium lauroyl methyl isethionate, sodium methyl cocoyl taurate, or a mixture thereof, amphoteric surfactant agent(s) in addition to those of the betaine type is (or are) selected from sodium cocoamphoacetate, sodium cocoyl glutamate, and a mixture thereof, at least one nonionic surfactant selected from the alkyl (poly)glucosides, and in particular decyl glucoside, lauryl glucoside, cocoyl glucoside, capryl/caprylyl polyglucoside, or a mixture thereof, where claims 8 and 10 specify the range of said additional amphoteric and non-ionic surfactants. However, Kita-Tokarcyk et al. disclose the composition may comprise mixtures of amphoteric surfactants [0127] (i.e., betaines and a further amphoteric surfactant) [0128] including sodium cocoamphoacetate [0127] and sodium cocoyl glutamate [0115], non-ionic surfactants [0116] including decyl glucoside or lauryl glucoside and mixtures thereof [0120], and anionic surfactants including disodium laureth sulfosuccinate [0273] and sodium methyl cocoyl taurate [0275].
Regarding instant claim 8, Kita-Tokarcyk et al. disclose mixtures of amphoteric surfactants may also be suitable, where the preferred mixtures are those of cocamidopropyl betaine and a further amphoteric is sodium cocoamphoacetate and the amphoteric [0127] surfactant from 0.5 to 20 wt% [0128], which overlaps with the claimed range (See MPEP 2144.0.5(I)). In addition, Example 39, shows cocamidopropyl betaine and an additional amphoteric surfactant sodium lauroyl glutamate present at 0.4% [0275].
Regarding instant claim 10, Kita-Tokarcyk et al. disclose the composition may comprise non-ionic surfactants from 0 to 5 wt% [0116], which overlaps with the claimed range (See MPEP 2144.0.5(I)).
Therefore, it would have been obvious to one skilled in the art to further incorporate the specific additional amphoteric, anionic and non-ionic surfactants in the ranges Kita-Tokarcyk et al. disclosed above into the ‘764 application. Since ‘764 and Kita-Tokarcyk et al. disclose compositions used for the same purpose, a shampoo for animals (i.e., veterinary shampoo), "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06(I).
An additional difference is that instant claim 13 requires an application to the non-human mammal, optionally after having dampened all or some of the non-human mammal with water, and in that the foam generated, optionally by massage or friction using the hands, is subsequently removed, after an optional dwell time, by rinsing with water. However, Kita-Tokarcyk et al. disclose a method for treating hair by applying the shampoo composition [0205], suitable for animal hair [0145] onto wet hair, washing the hair [0206] the then removing the shampoo from the hair (i.e., rinsing with water) [0207]. Therefore, it would have been obvious to one skilled in the art to use the method of removing the composition from the hair of Kita-Tokarcyk et al. with the composition of the ‘764 application. Since both compositions comprise identical or nearly identical compositions, it is considered obvious that they could both be used in the same method. MPEP 2112.01(II) states: "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Claims 5 of the ‘734 application have the limitation of the selection of the form a lotion, a gel, a cream, or a mousse. Where claims 10 and 14 further limit the selection to a mousse. Paufique discloses a composition comprising a hydrolysate of Ophiopogon japonicus composition may be in the form of shampoo, [Claim 15] a cream, a lotion, a milk, a serum, an ointment, a gel, a paste, a foam (i.e., mousse), or a solid [0098]. One of ordinary skill would have recognized “hydrolysate of Ophiopogon japonicus” to fall within the scope of “active ingredient obtained from Ophiopogon japonicus”. Moreover, although the instant application only discloses a shampoo, it is considered obvious to one in the art, that this type of composition, Ophiopogon japonicus with additional dermatologically acceptable adjuvants that Paufique [0101] and the ‘764 application discloses, could have one of these physical forms and used for the same purpose as the instant application. Since both compositions comprise identical or nearly identical compositions, it is considered obvious that they could both be used in the same method. MPEP 2112.01(II) states: "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Although Claims 1-3 of the ‘734 application may comprise of additional components, the instant claim set as written does not require the absence of said components due to the open-ended “comprising” claim language.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 05/18/2026 have been fully considered but they are not persuasive.
Regarding Applicant's argument that the double patenting rejections should be held in abeyance, the double patenting rejections apply to the claims as they are currently written, therefore these double patenting rejections are maintained. Further, Applicants’ request to hold the rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the rejection is maintained in the absence of a terminal disclaimer.
Conclusion
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
