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
Claims 1-16 are pending and under current examination.
All rejections not reiterated have been withdrawn.
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 1-16 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 3, 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 4, 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 aureas 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 as well as the declaration, both filed 12/09/2025, have been fully considered but they are not persuasive.
On page 5, Applicant asserts that the examiner has used impermissible hindsight to reconstruct the instant claims.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
On page 5, Applicant argues Kita-Tokarczyk et al. discloses shampoo compositions containing oligoester ammonium salts and optionally plant extracts, but it is directed exclusively to human cosmetic applications. Although paragraph [0145] contains a generalized reference to "animals, particularly mammals," the entire disclosure-including all working examples- is limited to formulations for human use. There is no veterinary-specific guidance, and no formulation or testing directed to the needs of non-human mammals. On page 6, Applicant points out several differences between human and nonhuman animal skin.
This argument has been presented previously and the examiner maintains the opinion exactly as set forth in the Office action mailed 06/09/2025:
This argument is not persuasive because treating non—human mammals is embraced by the broader disclosure. See MPEP 2123(II): Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Regarding Applicant’s argument that Kita-Tokarcyk does not provide guidance on treating non-human animals, it would have been within the ability of the artisan of ordinary skill, i.e. an individual with a Ph.D. in formulations science, to make minor adjustments to the formulation for optimal compatibility with skin of different species.
The examiner also notes that this argument is only relevant to method claims 12-15. 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., that Kita-Tokarcyk does not disclose a step of applying to a non-human animal) are 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). The product claims recite an intended use; however, absent evidence that the composition of Kita-Tokarcyk could not be used in the veterinary setting, the intended use does not patentably define over the cited prior art.
The examiner maintains the opinion that one having ordinary skill would have been aware of the differences between the skins of human and non-human animals and would have known how to adjust the formulation of Kita-Tokarczyk accordingly. For clarity of the record, the examiner does not rely on “interchangeability of formulations between species” as stated on page 6 of the remarks. The prior art is considered enabled for a “veterinary shampoo” for the same reasons as are the instant claims. It was well within the knowledge and ability of the person of ordinary skill, e.g. an individual with a Ph.D. in personal care formulations science, to adjust a shampoo formulation for optimal results on different skin types, including adjustments for veterinary use.
On page 7, Applicant argues that Kita-Tokarczyk’s human shampoos contain exactly the types of fragrances and plant extracts that are disfavored and often contraindicated in animal products. Applicant argues that one of ordinary skill would not start with a human shampoo composition that contains components known to be problematic for animals such as dogs.
The examiner disagrees that Kita-Tokarczyk requires the fragrances and botanical extracts pointed to by Applicant. While these may be present in example compositions, Kita-Tokarczyk clearly indicates that the composition may be formulated for use in cleansing animal hair (0145). See MPEP 2123(II): Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See also MPEP 2121(I): Prior art is presumed enabling. As stated above, the prior art is considered enabled for a “veterinary shampoo” for the same reasons as are the instant claims. It was well within the knowledge and ability of the person of ordinary skill, e.g. an individual with a Ph.D. in personal care formulations science, to adjust a shampoo formulation for optimal results on different skin types.
On pages 7-8, Applicant argues that Paufique teaches away from the claimed use by limiting its scope to atopic dermatitis.
This is not persuasive because the existence of alternative uses does not constitute a teaching away from the claimed use. Additionally, please see above regarding the limitations imparted by the intended use “veterinary shampoo” regarding product claims 1-11 and 16; the invention is considered suitable for veterinary use absent evidence to the contrary. Applicant also argues that Paufique does not teach any benefit to Ophiopogon japonicus extract on healthy skin. In response to applicant's argument that Paufique does not teach benefit to healthy skin, 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). Moreover, while Paufique discusses atopic dermatitis, the examiner notes that Kita-Tokarczyk states that their composition can contain antimicrobial agents and Paufique indicates that, inter alia, the product obtained from Ophiopogon japonicus provides such an effect. Finally, the artisan of ordinary skill would have recognized that the product described by Paufique as having reducing the inflammation of the skin cells, and/or regularizing the cohesion of the skin cells, and/or regularizing the differentiation of the skin cells, and/or encouraging the organization and conformation of the epidermal lipids, and/or encouraging epidermal construction, and/or restoring the integrity and resistance of the barrier function of the skin, and/or limiting the adhesion of bacteria to the skin (Paufique: 0051) would also be beneficial to healthy skin.
On page 8, Applicant describes the content of the declaration filed 12/09/2025 to support the assertion that the instant invention possesses certain unexpected properties.
Please see the “Response to Declaration” section that follows.
Response to Declaration:
The declaration filed 12/09/2025 presents data showing antimicrobial efficacy of a composition referred to as “DOUXO S3 PYO SHAMPOO” against several microorganisms. Declarant asserts that these studies render the instant invention non-obvious over the prior art cited in the rejection.
Insomuch as this may be an assertion of unexpected results, 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. Additionally, the ingredients and concentrations of the example composition according to the invention are not disclosed, therefore the examiner is unable to assess whether there may be other ingredients in the composition that contribute to its efficacy or whether this result would have been expected by one of ordinary skill. Finally, the examiner notes that the data are not commensurate in scope with the claims because the instant claims read on any veterinary shampoo composition containing any amount of Ophiopogon japonicus extract in any amount combined with any betaine surfactant in any amount.
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 1-15 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 12/09/2025 have been fully considered but they are not persuasive.
On page 10, Applicant argues that the double patenting rejection be re-considered in light of the arguments and the declaration under section 1.132. There is nothing in the claims of 17/780,764 making it obvious to use a hydrolysate of Ophiopogon japonicus and at least one betaine amphoteric surfactant.
This argument is not persuasive for the reasons detailed in the Response to Arguments section following the rejection under 35 USC 103 and also because it does not address the reasoning underlying the nonstatutory double patenting rejection. The claims of the ‘764 application embrace a composition comprising both Ophiopogon japonicus extract and a betaine surfactant.
Conclusion
All claims are rejected, none are allowed.
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