DETAILED ACTION
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/23/2026 has been entered.
Previous Rejections
Applicant’s arguments, filed February 23, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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, 3, and 5 are rejected under 35 U.S.C. 103 as being as being obvious over Sugino et al. (US 2007/0293412 A1).
Regarding claim 1, Sugino discloses a powdered soap composition to be used for personal care (for the skin) [0007] [0014] that contains particles with the alkali metal salt of a fatty acid having 12 to 16 carbon atoms (abstract) [0017]. Sugino discloses that the powder soap contains an alkali metal salt of a saturated fatty acid in an amount of at least 90 wt.% [0019]. Sugino also discloses that the composition further includes a cationic polymer [0028] and that the components of the particles are mixed to form the particles [0044]-[0096].
Sugino is not believed to be anticipatory because Sugino could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. Namely, one skilled in the art would need to choose to include a cationic polymer disclosed at [0028] within the particles.
Nevertheless, claim 1 is rendered prima facie obvious over the teachings of Sugino, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., ionic polymer, fatty component) were known in the prior art (e.g., Sugino) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a powdered soap composition) to one of ordinary skill in the art. MPEP 2143.A.
In regards to the amounts of the components, the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Further regarding claim 1, the limitations of the manufacturing process are interpreted as product-by-process limitations. Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior product was made by a different process. In the instant case, the powdered soap of Sugino reads on the claimed powdered soap and would be reasonably be expected to produce a particle where the components are uniformly distributed because components of the particles are mixed [0044]-[0096]. As such, the patentability of the instant formulation does not depend on its method of production, and the Applicant' s limitation regarding the method of production is not patentable, in view of Sugino.
Claim 3 is rendered prima facie obvious because Sugino discloses palmitic acid (C16 chains) in an amount of 5-20 wt.% [0019]. A prima facie case of obvious exists because of overlap, as previously discussed. Additionally, Sugino teaches that the amount of palmitic acid has an effect on foam retention, solubility, foamability, and feeling on skin after washing [0019]. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general condition of the amount of palmitic acid has been taught by the prior art (Sugino); and the amount of this component is recognized to be results effective (has an effect on foam retention, solubility, foamability, and feeling on skin after washing [0019]) as such, it would not have been inventive for the skilled artisan to have discovered the optimum amount of palmitic acid based on the total weight of the fatty component via routine experimentation.
Claim 5 is rendered prima facie obvious because Sugino discloses lauric acid (C12 chains) in an amount of 5-50 wt.% [0019]. A prima facie case of obvious exists because of overlap, as previously discussed. Additionally, Sugino teaches that the amount of lauric acid has an effect on foamability, foam retention, solubility, and blocking of the resultant powder [0019]. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general condition of the amount of lauric acid has been taught by the prior art (Sugino); and the amount of this component is recognized to be results effective (has an effect on foamability, foam retention, solubility, and blocking of the resultant powder [0019]) as such, it would not have been inventive for the skilled artisan to have discovered the optimum amount of lauric acid based on the total weight of the fatty component via routine experimentation.
Claim 2 rejected under 35 U.S.C. 103 as being as being obvious over Sugino et al. (US 2007/0293412 A1) in view of Nishina et al. (US 2015/0275150 A1).
The 35 U.S.C. 103 rejection over Sugino was previously discussed.
Sugino does not disclose a fatty component comprising C18 chains in an amount from about 15 wt.% to about 52 wt.% as recited in claim 2.
Nishina discloses a soap to be used for personal care applications (abstract) [0002] [0006] with stearic acid and isostearic acid (C18 chains) [0015]. Nishina teaches that the content of fatty acid soaps (such as stearic acid and isostearic acid) is 20 to 70 wt.% [0018] and specifically, in the basic formulation in Table 1, the content of C18 fatty acids based on the total weight of the fatty component is 29.41 wt.% [0061]. Nishina teaches that if that amount of fatty acid (such as stearic acid and isostearic acid) is less than 20 wt.% the solidifying point decreases; as a result, the surface may melt when stored for a long period of time. In addition, the transparency may decrease in the transparent solid soap; as a result, the commercial value may be lost, and the cleansing power is also insufficient. On the contrary, if the content exceeds 70 wt.%, the transparency may decrease in the transparent soap and a taut feeling may be generated after use [0018].
Since Sugino generally teaches a soap for personal care applications, it would have been prima facie obvious to one of ordinary skill in the art to include a fatty component comprising C18 chains in the amount taught by Nishina because Nishina teaches that this amount of fatty component (such as stearic acid and isostearic acid) in a soap allows for storage stability, transparency which adds to commercial value, sufficient cleansing power, and less of a taut feeling [0018]. A prima facie case of obviousness exists because of overlap as previously discussed. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general condition of the amount of fatty component comprising C18 chains has been taught by the prior art (Nishina); and the amounts of these components is recognized to be results effective (has an effect on storage stability, transparency, cleansing power, and feel after use [0018]) as such, it would not have been inventive for the skilled artisan to have discovered the optimum amount of fatty component comprising C18 chains based on the total weight of the fatty component via routine experimentation.
Claims 4, 6-7, 12, 15-21, 24, and 28 are rejected under 35 U.S.C. 103 as being as being obvious over Sugino et al. (US 2007/0293412 A1) in view of Pan et al. (US 2015/0322388 A1).
Regarding claim 12, Sugino discloses a powdered soap composition to be used for personal care (for the skin) [0007] [0014] that contains particles with the alkali metal salt of a fatty acid having 12 to 16 carbon atoms (abstract) [0017]. Sugino discloses that the powder soap contains an alkali metal salt of a saturated fatty acid in an amount of at least 90 wt.% [0019]. Sugino also discloses that the composition further includes a cationic polymer [0028] and that the components of the particles are mixed to form the particles [0044]-[0096]. Sugino also discloses that the particles further include a fragrance and a pigment [0028].
Sugino does not disclose that the cationic polymer is polyquaternary ammonium.
Pan teaches a soap to be used for personal care (abstract) [0009] with cationic polymers such as Polyquaternium-6 and Polyquaternium-7 [0048]. Pan teaches that the polyquaternium ammonium compounds act as a skin conditioning ingredient in the soap [0041].
Since Sugino generally teaches a soap for the skin, it would have been prima facie obvious to one of ordinary skill in the art to include the polyquaternary ammonium compound, Polyquaternium-6 or Polyquaternium-7, within the teachings of Sugino, because Pan teaches these compounds in a soap to be used in personal care products. An ordinarily skilled artisan would be motivated to use a polyquaternary ammonium compound because Pan teaches that they act as a skin conditioning ingredient in the soap [0041].
Additionally, generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, since Sugino discloses that the soap includes a cationic polymer [0028], it is prima facie obvious to select Polyquaternium-6/Polyquaternium-7 for incorporation into the composition based on the recognized suitability for the intended use as a cationic polymer, as taught by Pan.
Further regarding claim 12, the limitations of the manufacturing process are interpreted as product-by-process limitations and in regards to the amounts of the components, a prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claims 4, 6-7, 16, and 18-19, Sugino does not disclose that the composition includes a fatty component comprising C14 chains in an amount of about 2.7-16.4 wt.% as recited in claims 4 and 16, C10 chains in an amount of about 3.6 wt.% as recited in claims 6 and 18, or C8 chains in an amount of about 4.5 wt.%, as recited in claims 7 and 19.
Pan teaches that the soap includes C8-C22 fatty acids in an amount of 0.01 to 8 wt.%. Pan teaches that the C8-C22 fatty acid in this amount improves dispersibility, minimizes the effect of reducing lather, and provides structure to the soap [0027]-[0028].
Since Sugino generally teaches a soap, it would have been prima facie obvious to one of ordinary skill in the art to include a fatty component comprising C14 chains, C10 chains, and C8 chains in an amount of 0.01 to 8 wt.%., because Pan teaches these fatty components in this amount in a soap. An ordinarily skilled artisan would be motivated to use the fatty component taught by Pan in this amount to improve dispersibility, minimize the effect of reducing lather, and provide structure to the soap [0027]-[0028]. A prima facie case of obviousness exists because of overlap as previously discussed. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general condition of the amount of fatty component comprising C14 chains, C10 chains, and C8 chains has been taught by the prior art (Pan); and the amounts of these components is recognized to be results effective (has an effect on lather and structure of the soap; Pan [0027]-[0028]) as such, it would not have been inventive for the skilled artisan to have discovered the optimum amount of these fatty components based on the total weight of the fatty component via routine experimentation.
Claim 15 is rendered prima facie obvious because Sugino discloses palmitic acid (C16 chains) in an amount of 5-20 wt.% [0019]. A prima facie case of obvious exists because of overlap and it would not have been inventive for the skilled artisan to have discovered the optimum amount of palmitic acid based on the total weight of the fatty component via routine experimentation as previously discussed.
Claim 17 is rendered prima facie obvious because Sugino discloses lauric acid (C12 chains) in an amount of 5-50 wt.% [0019]. A prima facie case of obvious exists because of overlap and it would not have been inventive for the skilled artisan to have discovered the optimum amount of lauric acid based on the total weight of the fatty component via routine experimentation as previously discussed.
Regarding claim 20 and 21, Sugino does not disclose that the colorant is titanium dioxide, as recited in claim 20, or that titanium dioxide is present in an amount of about 0.1 to about 0.5 wt.%, as recited in claim 21.
Pan discloses that titanium dioxide is added to the soap in an amount of 0.1 to 1 wt.% as an opacifying agent. Pan teaches that titanium dioxide in this amount results in opaque soap. [0053].
Since Sugino generally teaches a soap, it would have been prima facie obvious to one of ordinary skill in the art to include titanium dioxide, in the amount taught by Pan, within the teachings of Sugino, because Pan teaches titanium dioxide as an opacifying agent in a soap. An ordinarily skilled artisan would be motivated to use titanium dioxide in the amount taught by Pan to achieve an opaque soap [0053]. A prima facie case of obvious exists because of overlap, as previously discussed.
Claim 24 is rendered prima facie obvious because Sugino discloses the composition is a body cleanser [0007] [0014].
Claim 28 is rendered prima facie obvious because Sugino discloses the composition is applied to a keratinous surface (skin) to cleanse it [0007] [0014].
Claim 14 is rejected under 35 U.S.C. 103 as being as being obvious over Sugino et al. (US 2007/0293412 A1) in view of Pan et al. (US 2015/0322388 A1) and further in view of in view of Nishina et al. (US 2015/0275150 A1).
The 35 U.S.C. 103 rejection over Sugino in view of Pan was previously discussed.
Sugino does not disclose a fatty component comprising C18 chains in an amount from about 15 wt.% to about 52 wt.% as recited in claim 14.
Nishina discloses a soap to be used for personal care applications (abstract) [0002] [0006] with stearic acid and isostearic acid (C18 chains) [0015]. Nishina teaches that the content of these fatty acid soaps is 20 to 70 wt.% [0018] and specifically, in the basic formulation in Table 1, the content of C18 carbons based on the total weight of the fatty component is 29.41 wt.% [0061]. Nishina teaches that if that amount of fatty acid (such as stearic acid and isostearic acid) is less than 20 wt.% the solidifying point decreases; as a result, the surface may melt when stored for a long period of time. In addition, the transparency may decrease in the transparent solid soap; as a result, the commercial value may be lost, and the cleansing power is also insufficient. On the contrary, if the content exceeds 70 wt.%, the transparency may decrease in the transparent soap and a taut feeling may be generated after use [0018].
It would have been prima facie obvious to one of ordinary skill in the art to include a fatty component comprising C18 chains in the amount taught by Nishina, as previously discussed. As discussed above, a prima facie case of obviousness exists because of overlap and it would not have been inventive for the skilled artisan to have discovered the optimum amount of fatty component comprising C18 chains based on the total weight of the fatty component via routine experimentation.
Claims 22-23 are rejected under 35 U.S.C. 103 as being as being obvious over Sugino et al. (US 2007/0293412 A1) in view of Pan et al. (US 2015/0322388 A1) and further in view of Hart (J Chem Eng Process Technol, 2015, 6: 215).
The 35 U.S.C. 103 rejection over Sugino in view of Pan was previously discussed.
Sugino does not disclose the particles have an average particle size of at least 600 microns, as recited in claim 22 or that the particles have a d77 value of 840 microns, as recited in claim 23.
Hart discloses a powder for cleansing purposes (abstract; pg. 1), where it is taught that powders with size ranges from 710-1000 µM are easy flowing. Hart teaches that operations such as transportation and processing need reliable flowability to avoid stoppage, downtime and wastage (pg. 2, right column).
Since Sugino generally teaches a powder for cleaning purposes, it would have been prima facie obvious to one of ordinary skill in the art to use particles with a size from 710-1000 µM, within the teachings of Sugino, because Hart teaches that cleansing particles of this size are easy flowing. An ordinarily skilled artisan would be motivated to have particles that are easy flowing because Hart teaches that operations such as transportation and processing need reliable flowability to avoid stoppage, downtime and wastage (pg. 2, right column).
While Hart does not explicitly disclose that the plurality of particles has a d77 value of 840 microns, it is nevertheless, prima facie obvious to one of ordinary skill in the art to determine these values empirically. One of ordinary skill in the art would have a reasonable expectation of success, and without undue experimentation, in statistically determining the d77 value of the particles. It is prima facie obvious to design and optimize the particles as desired within the combined teachings of the prior art, especially as Sugino teaches that the particles of the disclosure can be suitably adjusted as necessary [0023] and Hart teaches the size of the particles is recognized to be results effective (has an effect on flowability; pg. 2, right column).
Response to Arguments
Applicant' s arguments with respect to claims 1-7, 12, 14-24, and 28 have been considered but are moot because the new ground of rejection does 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 1-7, 12, 14-24, and 28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 7, 10-17, 36, 38-39, and 48 of U.S. Patent Application No. 17/790,031, in view of Sugino et al. (US 2007/0293412 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition expect for the fatty component having C8 to C18 chains, a fragrance, and the components of the particles being uniformly distributed.
Sugino discloses a powdered soap composition that contains particles with the alkali metal salt of a fatty acid having 12 to 16 carbon atoms (abstract) [0017]. Sugino also discloses that the particles further include a fragrance [0028] and that the components of the particles are mixed to form the particles [0044]-[0096].
It would have been prima facie obvious to a person having ordinary skill in the art to use C8 to C18 chains as the fatty components, include a fragrance, and have the components of the particles be uniformly distributed, to formulate the composition, as taught by Sugino (abstract) [0017] [0028] [0044]-[0096].
The instantly claimed method of production is interpreted as a product by process limitation, as discussed above.
The amounts of the individual components as claimed would be achieved by one of ordinary skill in the art through routine experimentation. See MPEP 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Response to Double Patenting Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive.
Applicant requested the Examiner reconsider the provisional rejection for non-statutory double patenting in view of the amendments to the claims.
The Examiner responds that the claims of U.S. Patent Application No. 17/790,031 remain patentably indistinct from the instant claims in view of Sugino et al. (US 2007/0293412 A1). The provisional rejection for non-statutory double patenting is maintained.
Conclusion
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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