DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed March 16, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claims 6, 9, 18, and 40 have been cancelled.
Claims 1, 14, and 36 are newly amended.
Claims 1, 2, 4, 7, 10 – 17, 36, 38, 39, and 48 are examined here-in.
Claim Rejections - 35 USC § 103 (Maintained)
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 non-obviousness.
Claims 1, 2, 4, 7, 10, 11, 36, 38, 39, and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Polonka (US 2007/0212323 A1, of record) and further in view of Sugino (US 7,820,613 B2, of record).
Polonka teaches a soap composition which contains particles that have a cationic polymer coating (abstract). Polonka teaches a combination of cationic polymer and anionic surfactant are critical for deposition of individual particles onto the skin from a particle-lather structure (paragraph 0005) which results in optical and moisturizing effects (paragraph 0020).
Polonka teaches the particles are mica (a silicate mineral) coated with titanium oxide in the amount of 0.1 to 15%, which is desirable for imparting color (paragraphs 0016, 0102, 0106). Further, Polonka teaches titanium oxide is an optical modifier to be included in the amount of 0.5 to 15% (paragraph 0094).
Polonka teaches Merquat polyquaternium polymers are preferred cationic polymers in the amount of 0.1 to 20% (paragraphs 0020, 0085). Polonka teaches suitable anionic surfactants are C10-C24 fatty acid soaps (paragraph 0083) and teaches fatty acid soaps make up 40 to 90% of the composition (paragraphs 0002 and 0040).
Polonka does not teach the fatty component is present in an amount ranging from about 94 to 98 wt. %.
Sugino teaches a missing element of Polonka.
Sugino teaches a powder soap composition made of a fatty acid alkali metal salt in the amount of 95 to 100 wt. % (column 2 lines 22 – 36). Sugino teaches that the alkali metal should be sodium and/or potassium (column 4 lines 3 – 5, lines 18 – 23).
Sugino teaches that soap compositions with high fatty acid content and low water content have favorable foamability, foam retention, solubility, and good feeling of the skin after washing as compared to compositions with lower fatty acid content and increased water content (Table 1, examples 1 – 3, comparative examples 1 - 4).
Sugino teaches that a powder soap composition with high fatty acid content is suitable for washing the face, body, and hands (column 3 lines 1 – 2, column 7 lines 43 and 57, column 8 lines 5 and 19, column 11 lines 34 - 36).
The combination of Polonka and Sugino’s teachings renders instant claims 1, 2, 4, 7, 10, 11, 36, 38, 39, and 48 prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results. A person of ordinary skill in the art would have been motivated to modify Polonka’s teaching for a soap composition which contains particles that have a cationic polymer coating (abstract) and are C10-C24 fatty acid soaps (paragraph 0083) in the amount of 40 to 90% of the composition (paragraphs 0002 and 0040) with Sugino’s teachings for a soap composition with fatty acid alkali metal salt in the amount of 95 to 100 wt. % (column 2 lines 22 – 36) because Sugino teaches that compositions with greater fatty acid content have favorable foamability, solubility, and a good feeling of the skin after washing (Table 1, examples 1 – 3, comparative examples 1 – 4). As such, the modification of Polonka’s teaching to include 95 to 100 wt. % fatty acid as taught by Sugino is prima facie obvious as combining prior art elements according to known methods in order to yield predictable results.
The combination of Polonka’s teaching for a soap composition which contains particles (mica) in an amount ranging from 0.1 to 15% (paragraphs 0016, 0102), a cationic polymer in the amount of 0.1 to 20% (Merquat polyquaternium polymer, paragraphs 0020, 0085), and a fatty acid (abstract, paragraphs 0002, 0016, 0020, 0040, 0083, 0085 0102, 0106) with Sugino’s teaching to include fatty acid alkali metal salt in the amount of 95 to 100 wt. % in a powdered soap composition (column 2 lines 22 – 36) reads on instant claims 1 and 36.
Polonka’s teaching to include mica particles in an amount ranging from 0.1 to 15% (paragraphs 0016, 0102) overlaps on the instantly claimed amount of 0.1 to 0.5 wt. % as recited in claims 1 and 36. Polonka’s teaching to include a cationic polymer in the amount of 0.1 to 20% (Merquat polyquaternium polymer, paragraphs 0020, 0085) overlaps on the instantly claimed range of 0.1 to 1 wt. % as recited in instant claims 1 and 36. Sugino’s teaching of fatty acid in the amount of 95 to 100 wt. % overlaps on the instantly claimed amount of 98.5 to 99.5 wt. % as recited in instant claims 1 and 36. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Polonka’s teaching that the particles are mica and that they should be included in the amount of 0.1 to 15% of the composition (paragraphs 0016, 0102) reads on instant claims 2, 4, 38, and 39. Polonka’s taught amount of 0.1 to 15% solid particulate overlaps on the instantly claimed amount of 0.25 wt. % as recited in instant claims 4 and 39.
Sugino’s teaching that a powder soap composition should made of a fatty acid alkali metal salt in the amount of 95 to 100 wt. %, where the alkali metal (i.e. the ionic component) is sodium and/or potassium (column 2 lines 22 – 36, column 4 lines 3 – 5, lines 18 – 23) reads on instant claim 7.
Polonka’s teaching that the particles are coated with titanium oxide, an optical modifier, in the amount of 0.5 to 15% (paragraph 0094) reads on instant claims 10 and 11. Titanium oxide in the amount of 0.5 to 15% overlaps on the instantly claimed amount of 0.1 to about 0.5 wt. % as recited in claim 11.
Sugino’s teaching that a powder soap composition is suitable for washing the face, body, and hands (column 3 lines 1 – 2, column 7 lines 43 and 57, column 8 lines 5 and 19, column 11 lines 34 - 36) reads on the limitation that the personal care composition is in the form of hand soap or body cleanser as recited in instant claim 48.
Claims 12 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over Polonka (as cited above) and Sugino (as cited above), and further in view of Abbas (US 2005/0123574 A1, of record).
The teachings of Polonka and Sugino are discussed above.
The combination of Polonka and Sugino does not teach the particles have an average size of at least 600 microns (claim 12), or that the particles have a d77 value of 840 microns (claims 13 – 18).
Abbas teaches the missing element of the combination of Polonka and Sugino.
Abbas teaches a soap composition with disintegrable agglomerates for the skin and hair (abstract). Abbas teaches the disintegrable agglomerates are made up of particles of clays such as kaolin and bentonite (paragraph 0039) and that particle agglomerates have a diameter ranging from 0.1 to 20 mm (paragraph 0051). Abbas teaches that agglomerates with a diameter ranging from 0.3 to 1.0 mm have a fracture index of about 0.9, which is a preferred metric to illustrate the pressure necessary to break down agglomerates, i.e. the amount of pressure required during scrubbing to elicit the desired sensation (paragraphs 0027 – 0028).
The combination of Polonka, Sugino, and Abbas’ teachings is prima facie obvious as combining prior art elements according to known methods to yield predictable results (MPEP 2143(I)(a)). A person of ordinary skill in the art would have been motivated to modify the combination of Polonka and Sugino with the teachings of Abbas regarding particle size because Abbas teaches that agglomerates with a diameter ranging from 0.3 to 1.0 mm have a fracture index which is favorable to elicit the desired sensation (paragraphs 0027 – 0028).
The combination of Polonka and Sugino’s teachings for a soap composition which contains particles (mica) that have a cationic polymer coating (Merquat polyquaternium polymer), and a fatty acid in the amount of 95 to 100 wt. % (Polonka abstract, paragraphs 0002, 0016, 0020, 0040, 0083, 0085 0102, 0106 and Sugino column 2 lines 22 - 36) with Abbas’ teaching that particles should have a size of 0.3 to 1.0 mm (paragraphs 0027 – 0028) reads on instant claims 12 - 15. Abbas’ teaching of 0.3 to 1.0 mm, which is 300 to 1,000 microns, overlaps on the instantly claimed particle size of at least 600 microns as recited in instant claim 12 and overlaps on a d77 value of 840 microns as recited in instant claims 13 and 14. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Polonka’s teaching to include mica particles in an amount ranging from 0.1 to 15% (paragraphs 0016, 0102) overlaps on the instantly claimed amount of 0.1 to 0.5 wt. % as recited in claim 14. Polonka’s teaching to include a cationic polymer in the amount of 0.1 to 20% (Merquat polyquaternium polymer, paragraphs 0020, 0085) overlaps on the instantly claimed range of 0.1 to 1 wt. % as recited in instant claim 14. Sugino’s teaching of fatty acid in the amount of 95 to 100 wt. % overlaps on the instantly claimed amount of 98.5 to 99.5 wt. % as recited in instant claim 14. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Polonka’s teaching that the particles are mica and that they should be included in the amount of 0.1 to 15% of the composition (paragraphs 0016, 0102) reads on instant claims 15 and 16. Polonka’s taught amount of 0.1 to 15% solid particulate overlaps on the instantly claimed amount of 0.25 wt. % as recited in instant claim 16.
Polonka’s teaching of Merquat polyquaternium polymers in the amount of 0.1 to 20% (paragraphs 0020, 0085) reads on instant claim 17.
Examiner’s Reply to Attorney Arguments Dated March 16, 2026
Applicant argues that Polonka’s Example 2 does not fairly teach or suggest the limitations of claims 1, 14, and 36 as a whole (Remarks page 6). As an initial matter, Polonka alone is not relied upon to reject all of the limitations of claims 1, 14, and 36. The combination of Polonka’s teaching for a soap composition which contains particles (mica) in an amount ranging from 0.1 to 15% (paragraphs 0016, 0102), a cationic polymer in the amount of 0.1 to 20% (Merquat polyquaternium polymer, paragraphs 0020, 0085), and a fatty acid (abstract, paragraphs 0002, 0016, 0020, 0040, 0083, 0085 0102, 0106) with Sugino’s teaching to include fatty acid alkali metal salt in the amount of 95 to 100 wt. % in a powdered soap composition (column 2 lines 22 – 36) reads on instant claims 1 and 36. Polonka’s teaching to include mica particles in an amount ranging from 0.1 to 15% (paragraphs 0016, 0102) overlaps on the instantly claimed amount of 0.1 to 0.5 wt. % as recited in claims 1 and 36. Polonka’s teaching to include a cationic polymer in the amount of 0.1 to 20% (Merquat polyquaternium polymer, paragraphs 0020, 0085) overlaps on the instantly claimed range of 0.1 to 1 wt. % as recited in instant claims 1 and 36. Sugino’s teaching of fatty acid in the amount of 95 to 100 wt. % overlaps on the instantly claimed amount of 98.5 to 99.5 wt. % as recited in instant claims 1 and 36. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I). Furthermore, the Examiner notes that the teachings of the prior art are not limited to the examples, but include the full disclosure of the prior art reference, including nonpreferred and alternative embodiments, according to MPEP 2123.
Applicant argues that Polonka fails to provide any motivation to modify Polonka (Remarks page 7). As discussed in the body of the rejection above, a person of ordinary skill in the art would have been motivated to modify Polonka’s teachings with Sugino because Sugino teaches that compositions with greater fatty acid content have favorable foamability, solubility, and a good feeling on the skin after washing (Table 1, examples 1 – 3, comparative examples 1 – 4).
As such, the combination of Polonka and Sugino teaches each of the claim limitations of claims 1 and 36 and Applicant’s argument that Polonka’s Example 2 does not fairly teach or suggest the limitations of claims 1, 14, and 36 as a whole (Remarks pages 6 and 7) is not persuasive.
Applicant argues that Sugino cannot remedy the deficiencies of Polonka because Sugino does not teach the mean particle size, or polyquat in an amount ranging from 0.1 to 1 wt. %, clay in the amount of 0.1 to 0.5 wt. % and fatty component in the amount of 98.5 to 99.5 wt. % as required by the instant claims (Remarks page 7). The Examiner disagrees because Sugino alone is not relied upon to teach each of the claim limitations recited above, the combination of Polonka and Sugino teaches the limitations of instant claims 1 and 36. Furthermore, the combination of Polonka and Sugino is not relied upon for the teaching of particle size.
Applicant argues that Abbas does not remedy the deficiencies of Polonka because Abbas teaches the inclusion of ingredients not required by the instant claims and because Abbas does not teach polyquat in an amount ranging from 0.1 to 1 wt. %, clay in the amount of 0.1 to 0.5 wt. % and fatty component in the amount of 98.5 to 99.5 wt. % as required by the instant claims (Remarks page 7). Abbas’ teachings are not relied upon for the recitation of polyquat, clay, and fatty components in the recited amounts. Abbas’ teachings are relied on for particle size: as discussed in the body of the rejection above, a person of ordinary skill in the art would have been motivated to modify the combination of Polonka and Sugino with the teachings of Abbas regarding particle size because Abbas teaches that agglomerates with a diameter ranging from 0.3 to 1.0 mm have a fracture index which is favorable to elicit the desired sensation (paragraphs 0027 – 0028). With regards to Applicant’s argument that Abbas teaches the inclusion of ingredients not required by the instant claims, according to MPEP 2111.03(i), the transitional term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements. Therefore, Abbas’ teachings of ingredients not recited in the instant claims does not necessarily conflict with the recitation of ingredients in claims 1, 14, and 36 because these claims include “comprising” language.
Applicant alleges unexpected results, stating “it has been surprisingly discovered that the addition of the cationic polymer with the clay to the soap composition results in a powder soap that exhibits not only desirable feel when washing skin but also superior dissolution rates” (Remarks page 8).
As an initial matter, the Examiner notes that a proper side-by-side comparison to the closest prior art as required by MPEP 716.02(e) does not appear to have been made. Applicant argues that a greater than expected result is evidence of non-obviousness according to MPEP 716/02(a)1, however, for the reasons detailed below, the prior art of Polonka suggests that Applicant’s results are not unexpected.
The Examiner disagrees that the alleged “desirable feel” is significantly better than that shown in the prior art of Polonka (Example 8). Applicant reports that “the best feel and conditioning performance” was observed in Example 2 of the instant application, however, it is unclear how this parameter was objectively measured. The Examiner notes that Polonka also claims favorable skin feel following use of their composition (paragraphs 0019, 0064, 0115, Examples 7 and 8). As such, it is not clear to the Examiner that Applicant’s allegation of unexpected results regarding “desirable feel” is supported by the proffered evidence.
With regards to the alleged “superior dissolution rates” shown in Table 3, the metric of “Dissolution Approval Score” is not defined or described in the specification. The description for dissolution test and scoring is limited to paragraph 0052, and without a clear definition or description, it is unclear if a higher or lower dissolution approval score is associated with superior dissolution rates. The Examiner notes that Polonka describes soap particles as “individually dispersed/suspended” which indicates “good deposition efficiency” resulting from “lather contact” (paragraph 0148, figure 3), which may be interpreted to be synonymous with superior dissolution. As such, it is not clear to the Examiner that Applicant’s allegation of unexpected results regarding “superior dissolution rates” is supported by the proffered evidence.
Applicant argues that Example 2 of the instant application is just a representative “test point” which “should be able to support a reasonably broader range/amount of reasonably broader ingredients” (Remarks page 10). It is not clear what objective support this argument has. According to MPEP 716.01(c) arguments by applicant do not take the place of evidence, and any objective evidence should be supported by actual proof.
For the reasons discussed above, Applicant’s arguments are not persuasive and the 35 U.S.C. 103 rejections are maintained.
Double Patenting (Maintained)
The judicially created doctrine for non-statutory double patenting rejections has been described in detail in the previous action.
Double Patenting over 17/790,010
Claims 1, 2, 4, 7, 10 – 17, 36, 38, 39, and 48 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 12, 20-24 of copending Application No. 17/790,010 in view of Polonka (as cited above).
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a powdered soap composition comprising a plurality of particles with each particle comprising a polyquat, clay, and a fatty component.
Conflicting claim 1 is drawn to a powdered soap composition with a plurality of particles, each particle comprising an ionic polymer and a fatty component, wherein the particles are manufactured by a specific process. (Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps according to MPEP 2113. In other words, if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.)
The instant and conflicting claims differ because conflicting claim 1 recites the fatty component has C8 to C18 chains and is present in the amount of 85 to 95 wt. percent by the total weight of the particle. Conflicting claim 1 does not recite the inclusion of a clay.
Polonka teaches a soap composition of clay particles, a cationic polymer, and fatty acid soaps in the amount of 40 to 90% of the composition (abstract, paragraph 0016, 0102, 0106, 0083, 0002, 0040). Polonka teaches particles are integral to foam formation and that the particles have a moisturizing sensation and optical effects (paragraphs 0030, 0031). A person of ordinary skill in the art would have been motivated to include Polonka’s teachings of clay particles in conflicting claim 1 in order to provide the moisturizing sensation and optical effects. Furthermore, Polonka teaches fatty acid soap in an amount that overlaps on the claimed amount in conflicting claim 1. It would be prima facie obvious to apply the teachings of Polonka to conflicting claim 1 for a powdered soap composition with clay and fatty acid soap in the amount recited according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
Conflicting claim 20 recites the inclusion of titanium dioxide in the particle, which reads on instant claim 10.
Conflicting claim 21 recites titanium dioxide in the amount of 0.1 to 0.5 wt. percent based on the total weight of each particle, which reads on instant claim 11.
Conflicting claim 22 recites the average particle size is at least 600 microns, which reads on instant claim 12.
Conflicting claim 23 recites the d77 value of particles is 840 microns, which reads on instant claims 13 and 14.
Conflicting claim 24 recites the particles make up a personal care composition which is a hand soap, a body cleanser, a shampoo, a conditioner, or a scrub, which reads on instant claim 48.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Reply to Attorney Arguments Dated March 16, 2026
Applicant has requested the Examiner reconsider the provisional non-statutory double patenting rejection (Remarks page 10). The claims of the instant application remain patentably indistinct over copending Application No. 17/790,010 in view of Polonka. Therefore, the provisional non-statutory double patenting rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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