DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 (i.e., changing from AIA to pre-AIA ) 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.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/10/2025 has been entered.
Claim Status
Applicant’s amendment of 10/10/2025 is acknowledged. Claim 1 is amended; claims 2-4 and 13-16 are cancelled; and claims 17-18 are new. Claims 1, 5-12, and 17-18 are currently pending and are examined on the merits herein.
Priority
The instant application is a 371 of PCT/EP2020/087695 filed on 12/22/2020 and claims foreign priority to FR19 15668 filed on 12/27/2019 as reflected in the filing receipt dated on 09/19/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/04/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Withdrawn Objections and Rejections
In view of Applicant’s amendment and introduction of new claims, the previous rejections under 102 and 103 and on the grounds of nonstatutory double patenting have been withdrawn in favor of the new grounds of rejection presented below. Applicant’s arguments insofar as they pertain to the new grounds of rejection are addressed herein.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, lines 11 and 14 each recite a comma joining two “wherein” clauses. To remain consistent with other clauses recited in the claim, the comma in each line should be replaced with a semicolon.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 18 recites the limitation “wherein the quantity of C units of acrylamide…is between 0 and 50 mol %”, which allows for an embodiment wherein the polymer does not contain any C units of acrylamide. However, the claim depends from claim 17 which requires that the polymer further comprises C units of acrylamide. Therefore, the lower limit of the range recited in claim 18 broadens the scope of the claim upon which it depends. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the claim to mean that the lower limit of the range of C units is a quantity greater than 0 mol % but less than 50 mol % relative to the molar quantity of all units included in the polymer.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(b)
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 5-12, and 17-18 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 9 recite the limitation “molar ratio” followed by the recitation of a range comprising singular values rather than a range comprising defined ratios of A units to B units. The claim is indefinite because it does not define exactly what molar range of A units relative to the molar range of B units is permitted. For example, between 0.4:1 and 1.4:1.
Claims 5-12 and 17-18 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishii et al. (GB2104091A; published: 03/02/1983; PTO-892 of instant action).
Ishii, throughout the reference, teaches a detergent composition comprising 0.01 to 10 percent by weight of an amphoteric copolymer (Abstract and Claims).
In an exemplary embodiment, a composition comprises: 20 wt.% sodium straight-chain alkylbenzenesulfonate; 5 wt.% coconut fatty acid diethanolamide; 1 wt.% polymer of Synthesis No. 10; and water to balance (Page 5, Example 1, Table 2). The polymer obtained in Synthesis No. 10 comprises a 1:1 molar ratio of TMAPMAA cationic monomer and AAMPS anionic monomer (Pages 3-5, Synthesis Example 2, Table 1).
Regarding instant claim 1: TMAPMAA is dimethylaminopropylmethacrylamide quaternized with methyl chloride (same as methacrylamidopropyl trimethyl ammonium chloride), which reads on the instantly claimed A units, and AAMPS is 2-acrylamido-2-methylpropanesulfonic acid, which reads on the instantly claimed B units (Pages 4-5, abbreviations). The molar ratio of TMAPMAA to AAMPS lies within and thus anticipates the instantly claimed range. Because TMAPMAA and AAMPS are the only units included in the polymer, the quantity of A units and the quantity of B units relative to the molar quantity of all units included in monomer are each 50 mol %, which lies within and thus anticipates the respective instantly claimed ranges.
Regarding claim 5: Although Ishii is silent as to the exact molecular weight of the polymer obtained in Synthesis No. 10, Ishii explicitly teaches that the amphoteric copolymer most preferably has a molecular weight of 3,000 to 1,000,000 (Page 3, lines 1-8), which one of ordinary skill in the art would understand is most often expressed in g/mol. The endpoint molecular weight of 1,000,000 g/mol is a species which lies within and thus anticipates the instantly claimed genus of molecular weight. Note: MPEP 2131.03. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original).
Regarding claim 6: TMAPMAA is the same as methacrylamidopropyl trimethyl ammonium chloride as evidenced by its chemical structure (see Page 5), and AAMPS is 2-acrylamido-2-methylpropanesulfonic acid.
Regarding claim 7: The amount of polymer in the composition of Ishii lies within and thus anticipates the instantly claimed range.
Regarding claim 8: Ishii teaches that alkylbenzenesulfonates are anionic surfactants and that fatty acid diethanolamides are nonionic surfactants (Page 3, lines 20-35). Therefore, the sodium straight-chain alkylbenzenesulfonate in the composition of Ishii reads on the instantly claimed at least one first surfactant, and coconut fatty acid diethanolamide reads on the instantly claimed at least one surfactant of a different nature to the first surfactant. Water in the composition of Ishii reads on the same as instantly claimed. The Examiner notes that the ingredients “at least one silicone agent” and “at least one active agent” are not required features of the claim.
Regarding claim 9: The molar ratio of TMAPMAA to AAMPS lies within and thus anticipates the instantly claimed range.
Regarding claim 10: The recitation “haircare and/or skincare” is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition of Ishii is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. As further evidence, Ishii explicitly teaches its detergent composition can be used as a shampoo base (Page 3, lines 40-45).
Regarding claim 11: The composition of Ishii is a detergent and therefore meets the claim.
Regarding claim 12: The recitation “household fabric softener” is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition of Ishii is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. As further evidence, Ishii explicitly teaches its detergent composition can be used for textiles and fibers (Page 3, lines 40-45).
While Ishii is silent as to whether its amphoteric polymer is water-soluble, as required by instant claim 1, Ishii clearly teaches a polymer comprising all structural features of the instantly claimed polymer, including the same monomer units in the same molar ratio and having the same molecular weight as claimed. Therefore, the prior art polymer necessarily has the same properties, including water solubility. Note: MPEP 2112.01(II). "Products of identical chemical composition can not 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.
While Ishii as silent as to the transmittance of its composition, as required by instant claim 1, because the prior art composition comprises the same ingredients in the same amounts as instantly claimed, an ordinarily skilled artisan would reasonably expect that the composition necessarily presents a transmittance of greater than or equal to 80%. As evidence, Applicant’s own disclosure clearly recognizes that obtaining a transparent composition is a mechanistic outcome that flows naturally from combining the amphoteric water-soluble polymer with an anionic surfactant, and defines a transparent composition as one having a transmittance value greater than or equal to 80% (Instant Specification, Page 2, lines 35-36, Page 3, lines 1-3, and Page 9, lines 18-21). Because Ishii teaches the formulation of a composition comprising the same water-soluble amphoteric polymer in the same quantity as instantly claimed, as well as an anionic surfactant, the resulting product would necessarily present the transmittance Applicant claims. Note: MPEP 2145. Mere recognition of latent properties present but not recognized in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991); see also In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (obviousness rejection affirmed where using claimed elements in the manner suggested by the prior art necessarily resulted in claim-recited effect). Although the composition of Ishii further comprises a nonionic surfactant, Applicant’s instantly claimed composition also comprises a second surfactant (e.g., instant claim 8), which can be nonionic as evidenced by Applicant’s instant specification (Page 10, lines 1-10). Since nothing in the instant claims or specification indicate how the composition of the prior art would differ from the instant claims, the instant claims are not distinguished from the prior art.
Response to Arguments
Applicant’s arguments submitted on 10/10/2025 with respect to rejections under 35 U.S.C. 102 have been fully considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 5-12, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (GB2104091A; published: 03/02/1983; PTO-892 of instant action), as applied to claims 1 and 5-12 above, and further in view of Shih-Ruey (EP0522756B1; published: 01/31/1996; PTO-892 of instant action).
Ishii teaches the invention(s) of claims 1 and 5-12 as discussed in detail above and further incorporated herein.
Ishii does not expressly teach that the polymer further comprises acrylamide as recited in instant claims 17-18.
Shih-Ruey, in the same field of endeavor, teaches the use of a nonionic acrylamide monomer component in the range of 10 wt.% to 50 wt.% to enhance the water solubility of ampholytic polymers comprising cationic and anionic components (Page 5, lines 29-37).
Regarding claim 17: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amphoteric polymer of Ishii by further including an acrylamide component because Shih-Ruey teaches that this modification can enhance water solubility of formulations wherein water-soluble, clear formulations are desired (Page 2, lines 40-45).
Regarding claim 18: While Shih-Ruey is silent as to the mol % of acrylamide units relative to the molar quantity of all units included in the polymer, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the quantity of acrylamide units through routine optimization in order to achieve a desired solubility because Shih-Ruey establishes that it is known in the art to vary the proportions and individual character of the nonionic, cationic, and anionic components to balance the hydrophobic and hydrophilic characteristics of the overall polymer, allowing for optimization of its properties (Page 2, lines 40-50).
An ordinarily skilled artisan would reasonably expect success in modifying the composition of Ishii with the prior art teachings as proposed because Shih-Ruey teaches that ampholytic polymers comprising acrylamide are compatible with methacrylamidopropyl trimethylammonium chloride as the cationic component and 2-acrylamido-2-methylpropanesulfonic acid as the anionic component (Page 5, lines 38-51 and Page 6, lines 25-37).
Response to Arguments
Applicant’s arguments submitted on 10/10/2025 with respect to rejections under 35 U.S.C. 103 have been fully considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 5-12, and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 14 of U.S. Patent No. US 11,634,664 B2 in view of Ishii et al. (GB2104091A; published: 03/02/1983; PTO-892 of instant action) and Shih-Ruey (EP0522756B1; published: 01/31/1996; PTO-892 of instant action).
The claims of US ‘664 recite a process for forming an inverse EMI 1 emulsion by mixing an aqueous solution of water-soluble (co)polymer A and an inverse EMI 2 emulsion of water-soluble (co)polymer B (Claim 1), wherein water-soluble (co)polymers A and B are synthetic (co)polymers obtained from at least one cationic monomer and at least one non-ionic monomer and/or of at least one anionic monomer (Claim 2). Claims 3-5 and 14 further limit the cationic monomer to at least one of quaternized dimethylaminoethyl acrylate (ADAME), quaternized dimethylaminoethyl methacrylate (MADAME), acrylamido propyltrimethyl ammonium chloride (APTAC), methacrylamido propyltrimethyl ammonium chloride (MAPTAC), and one other; the non-ionic monomer to at least one of acrylamide and ten others; and the anionic monomer to at least one of 2-acrylamido-2-methylpropane sulfonic acid (ATBS) and seven others, said anionic monomer being non-salified, partially or totally salified.
The claims of US ‘664 differ from the instant claims in that the claims of US ‘664 do not expressly recite an embodiment wherein ATBS is selected as the anionic monomer, that the quantity of ADAME, MADAME, APTAC, or MAPTAC is between 30 to 60 mol%, that the quantity of ATBS is between 30 and 70 mol%, or that the molar ratio between quaternized ADAME, quaternized MADAME, APTAC, or MAPTAC and ATBS is between 0.4 and 1.4 as recited in instant claim 1. Further, US ‘664 claims are silent as to the transmittance presented by the composition. The claims of U.S. ‘664 do not expressly recite the further limitations of instant claims 5-12 or 18.
The teachings of Ishii and Shih-Ruey are as set forth above and further incorporated herein.
Regarding instant claims 1, 6, 9, and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify either (co)polymer A or B recited in the claims of US ‘664 by selecting MAPTAC as the cationic polymer, ATBS as the anionic monomer, and acrylamide as the nonionic polymer. It would have been obvious and there is a reasonable expectation of success because U.S. ‘664 claims recite each monomer, respectively, as suitable cationic and anionic components for forming a water-soluble copolymer. One of ordinary skill in the art would reasonably expect that the combination of any cationic monomer with any anionic monomer selected from the lists recited in US ‘664 claims would behave similarly. Regarding the quantities of each monomer, it would have been obvious to one of ordinary skill in the art to adjust the concentrations of each monomer using 20 – 80 mol % MAPTAC and 20 – 80 mol % ATBS, wherein the quantities of each unit and the molar ratio between the two units all overlap and thus render obvious the ranges recited in instant claims 1 and 9, as a starting point for routine optimization to increase the deterging capacity of the emulsion as taught by Ishii (Page 1, lines 20-24). It would have been obvious and there is a reasonable expectation of success because Ishii teaches that these amounts are known in the art to form an amphoteric copolymer comprising a cationic component such as MAPTAC, an anionic component such as ATBS.
Regarding instant claim 5: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the weight-average molecular weight of the polymer taught by the combination of US ‘664 claims and Ishii within the range taught by Ishii, which overlaps and thus renders obvious the instantly claimed range, because the reference teaches that any molecular weight from about 3,000 g/mol to 1,000,000 g/mol is suitable for forming an amphoteric copolymer comprising a cationic monomer such as MAPTAC and an anionic monomer such as ATBS.
Regarding instant claim 7: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polymer taught by the combination of US ‘664 claims and Ishii within the range taught by Ishii, which substantially overlaps the instantly claimed range, because the reference teaches that any amount from 0.05 wt.% to 5 wt.% of the composition is suitable for forming a detergent composition (Ishii, Page 2, lines 19-20), which could reasonably be an emulsion, comprising an amphoteric copolymer comprising a cationic monomer such as MAPTAC and an anionic monomer such as ATBS.
Regarding instant claim 8: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aqueous emulsion composition taught by the combination of US ‘664 claims and Ishii by adding a surfactant and an additional surfactant (or more) of a different nature to the first surfactant, such as an anionic surfactant and a nonionic surfactant, along with water as a carrier with reasonable expectation of success because Ishii exemplifies this combination as useful for formulating detergent compositions comprising an amphoteric copolymer comprising a cationic monomer such as MAPTAC and an anionic monomer such as ATBS (Ishii, Examples 1 and 3).
Regarding instant claims 10-12: The recitations “haircare and/or skincare” in claim 10, “detergent” in claim 11, and “household fabric softener” in claim 12 are intended uses of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of US ‘664 and Ishii is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. As further evidence, Ishii explicitly teaches compositions comprising the same components can be used as detergents, as shampoo bases, on textiles, and on fibers.
Regarding instant claim 18: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polymer taught by the combination of US ‘664 claims and Ishii to adjust the quantity of acrylamide units through routine optimization in order to achieve a desired water solubility as taught by Shih-Ruey.
While the combination of US ‘664 claims, Ishii, and Shih-Ruey is silent as to the transmittance of the composition, as required by instant claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the proportions and individual character of the nonionic, cationic, and anionic components through routine optimization in order to improve compatibility of the components and thus achieve a clear formulation, which Shih-Ruey teaches as desirable (Page 2, lines 35-55).
An ordinarily skilled artisan would reasonably expect success in modifying the claims of US ‘664 with the prior art teachings as proposed because all components and concentrations are known in the art to produce useful compositions comprising water-soluble amphoteric polymers, and Shih-Ruey clearly establishes that it is routine in the art to optimize the proportions and individual character of the nonionic, cationic, and anionic components within the composition in order to achieve a more stable product.
Claims 1, 5-12, and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 10,758,885 B2 in view of Ishii et al. (GB2104091A; published: 03/02/1983; PTO-892 of instant action) and Shih-Ruey (EP0522756B1; published: 01/31/1996; PTO-892 of instant action).
The claims of US ‘885 recite a method for preparing core-shell microcapsules comprising an ampholyte copolymer, among other ingredients (Claims 1-20). While the instantly claimed limitations are recited in more than one copending claim, as an example, US ‘885 20 recites wherein the ampholyte polymer comprises 30 to 95 mol % methacrylamidopropyltrimethylammonium chloride (MAPTAC), 5 to 70 mol % of (meth)acrylic acid or a water-soluble salt thereof, and acrylamide. US ‘885 claim 17 recites that the acrylic based monomer could alternatively be 2-acrylamido-2-methylpropane sulfonic acid (ATBS), among a limited list of others. Therefore, an ordinarily skilled artisan could at once envisage an embodiment wherein ATBS is the acrylic based monomer of choice rather than (meth)acrylic acid. One of ordinary skill in the art would reasonably expect that the combination of any cationic monomer with any anionic monomer selected from the lists recited in US ‘885 claims would behave similarly. The recited quantities of cationic and anionic units overlap and thus render obvious the instantly claimed quantities and molar ratio between the cationic and anionic units. US ‘885 claims 14 and 15 recite that the copolymer has a molecular weight of 100,000 g/mol or 500,000 g/mol, respectively, which each lie within and thus render obvious the instantly claimed molecular weight.
While the combination the claims of US ‘885 is silent as to whether the copolymer is water-soluble, the copending claims clearly teach a copolymer comprising all structural features of the instantly claimed polymer, including the same monomer units in the same molar ratio and having the same molecular weight as claimed. Therefore, the copolymer necessarily has the same properties as instantly claimed, including water solubility. Note: MPEP 2112.01(II). "Products of identical chemical composition can not 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 copending claims embody the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
The claims of US ‘885 differ from the instant claims in that the claims of US ‘664 do not expressly recite the transmittance presented by the microcapsules as required by instant claim 1. The claims of U.S. ‘664 do not expressly recite the further limitations of instant claims 7-8, 10-12, or 18.
The teachings of Ishii and Shih-Ruey are as set forth above and further incorporated herein.
Regarding instant claim 7: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polymer recited in the claims of US ‘885 within the range taught by Ishii, which substantially overlaps the instantly claimed range, because the reference teaches that any amount from 0.05 wt.% to 5 wt.% of the composition is suitable for forming a detergent composition (Ishii, Page 2, lines 19-20), which could reasonably be in the form of a microcapsule, comprising an amphoteric copolymer comprising a cationic monomer such as MAPTAC and an anionic monomer such as ATBS.
Regarding instant claim 8: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aqueous emulsion composition taught by the combination of US ‘885 claims and Ishii by adding a surfactant and an additional surfactant (or more) of a different nature to the first surfactant, such as an anionic surfactant and a nonionic surfactant, along with water as a carrier with reasonable expectation of success because Ishii exemplifies this combination as useful for formulating detergent compositions comprising an amphoteric copolymer comprising a cationic monomer such as MAPTAC and an anionic monomer such as ATBS (Ishii, Examples 1 and 3).
Regarding instant claims 10-12: The recitations “haircare and/or skincare” in claim 10, “detergent” in claim 11, and “household fabric softener” in claim 12 are intended uses of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of US ‘885 and Ishii is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. As further evidence, Ishii explicitly teaches compositions comprising the same components can be used as detergents, as shampoo bases, on textiles, and on fibers.
Regarding instant claim 18: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polymer taught by the combination of US ‘885 claims and Ishii to adjust the quantity of acrylamide units through routine optimization in order to achieve a desired water solubility when formulating the microcapsule as taught by Shih-Ruey.
While the combination of US ‘885 claims, Ishii, and Shih-Ruey is silent as to the transmittance of the microcapsules, as required by instant claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the proportions and individual character of the nonionic, cationic, and anionic components through routine optimization in order to improve compatibility of the components and thus achieve a clear formulation, which Shih-Ruey teaches as desirable (Page 2, lines 35-55).
An ordinarily skilled artisan would reasonably expect success in modifying the claims of US ‘885 with the prior art teachings as proposed because all components and concentrations are known in the art to produce useful compositions comprising water-soluble amphoteric polymers, and Shih-Ruey clearly establishes that it is routine in the art to optimize the proportions and individual character of the nonionic, cationic, and anionic components within the composition in order to achieve a more stable product.
Response to Arguments
Applicant’s arguments submitted on 10/10/2025 with respect to rejections on the grounds of nonstatutory double patenting have been fully considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claim is allowed.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616