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 .
Claim Status
Applicants' amendments and arguments filed 10/16/2025 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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claims 7 and 10 are cancelled.
Claims 12-19 are withdrawn.
Claim 20 is newly added.
Claims 1-6, 8-9, 11, and 20 are under current examination.
Claim Objections
Claim 20 is objected to because of the following informalities: for readability of the claim, it is suggested that “a glycol ester of a fatty acid and one or more glycol selected from the group consisting of ethylene glycol propylene glycol and butylene glycol” in lines 3-6 should read “a glycol ester of a fatty acid and one or more glycols selected from the group consisting of ethylene glycol, propylene glycol and butylene glycol”, consistent with the specification as filed at pg. 3, lines 8-11.
Appropriate correction is required.
Rejections Maintained, Updated to Address Newly Added Claim 20
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.
Claims 1-6, 8-9, 11, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (WO 96/21424, published July 18, 1996, included on IDS submitted 10/06/2022), hereafter “Chen” in view of Anantaneni et al. (WO 2005/075623 A1, published August 18, 2005, included on IDS submitted 10/06/2022).
Regarding instant claim 1, Chen teaches an ultra-mild cold pearlizing concentrate that provides pearlescent personal hair and skin compositions such as shampoos and beauty soaps with added luster and sheen (abstract, claim 1).
Regarding 1(a), the concentrate of Chen comprises a suspending agent emulsifier (claim 1) which is selected from the group including ethylene glycol monostearate and ethylene glycol distearate (claim 2), which are glycol esters of the fatty acid stearic acid. The emulsifier is present from about 15 to 25 percent by weight (claim 6). Formulation C exemplifies ethylene glycol monostearate at 15.0 wt.%.
Regarding 1(b), the concentrate of Chen further comprises a surfactant selected from the group consisting of isethionates and N-methyl taurates (claim 1); the isethionates are of the formula:
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wherein R1 is a fatty alkyl group and M is a counterion selected from the group consisting of sodium, calcium, magnesium, ammonium, and triethanolamine (claim 2). The isethionate is further taught to be sodium cocoyl isethionate (claim 4). The isethionate is present from about 5 to about 25 weight percent (claim 6). Formulation C exemplifies sodium cocoyl isethionate at 10.0 wt.%.
Regarding 1(c), the concentrate of Chen further comprises a zwitterionic surfactant (claim 1), selected from the group consisting of betaines, amidobetaines, and sulfobetaines (claims 2-3). The zwitterionic surfactant is further taught as cocoamidopropyl betaine (claim 4). The zwitterionic surfactant is present from about 1 to about 10 weight percent (claim 6). Formulation C exemplifies sodium cocoamidopropyl betaine at 5.0 wt.%.
The concentrate of Chen further comprises a nonionic, emulsion stabilizer surfactant (claim 1) of a nonionic alcohol ethoxylate (claim 2); the nonionic alcohol ethoxylate is present from about 1 to about 20 percent (claim 6). Chen therefore contemplates pearlizing concentrates comprising a total of about 7 to about 55 weight percent of surfactants (components b-d of claim 6) with combined amounts of isethionates and zwitterionic surfactants totaling at least 75 wt% of the surfactants, overlapping the claimed range. As just one example, Chen contemplates in claim 6 concentrates comprising 1 wt.% nonionic alcohol ethoxylate surfactant, 5 wt.% isethionate surfactant, and 1 wt.% zwitterionic surfactant relative to the total weight of the pearlizing concentrate; this results in a combined 85.7 wt.% of isethionate and zwitterionic surfactant relative to the total amount of surfactants. Per MPEP 2144.05 I., “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Regarding instant claims 2-3, as noted above, the concentrate of Chen comprises a suspending agent emulsifier (claim 1) which is selected from the group including ethylene glycol monostearate and ethylene glycol distearate (claim 2), a monoester of stearic acid and a diester of stearic acid, respectively. The most preferred emulsifier is ethylene glycol monostearate (pg. 8, lines 11-13). The emulsifier is present from about 15 to 25 percent by weight (claim 6). Formulation C exemplifies ethylene glycol monostearate at 15.0 wt.%.
Regarding instant claims 5-6, as noted above, the concentrate of Chen comprises a surfactant selected from the group consisting of isethionates and N-methyl taurates (claim 1), which is further taught to be sodium cocoyl isethionate (claim 4). The isethionate is present from about 5 to about 25 weight percent (claim 6). Formulation C exemplifies sodium cocoyl isethionate at 10.0 wt.%.
Regarding instant claims 8-9, as noted above, the concentrate of Chen comprises a zwitterionic surfactant (claim 1), further taught as cocoamidopropyl betaine (claim 4). The zwitterionic surfactant is present from about 1 to about 10 weight percent (claim 6). Formulation C exemplifies sodium cocoamidopropyl betaine at 5.0 wt.%.
Regarding instant claim 11, as noted above, the concentrate of Chen further comprises a nonionic, emulsion stabilizer surfactant (claim 1). Chen further teaches that the pH of the compositions can be adjusted using a buffer (pg. 12, lines 13-15).
Regarding instant claim 20, as noted above, Chen teaches an ultra-mild cold pearlizing concentrate that provides pearlescent personal hair and skin compositions such as shampoos and beauty soaps with added luster and sheen (abstract, claim 1).
Regarding 20(a), the concentrate of Chen comprises a suspending agent emulsifier (claim 1) which is selected from the group including ethylene glycol monostearate and ethylene glycol distearate (claim 2), which are glycol esters of the fatty acid stearic acid and the glycol ethylene glycol. The emulsifier is present from about 15 to 25 percent by weight (claim 6). Formulation C exemplifies ethylene glycol monostearate at 15.0 wt.%.
Regarding 20(b), the concentrate of Chen further comprises a surfactant selected from the group consisting of isethionates and N-methyl taurates (claim 1); the isethionates are of the formula:
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wherein R1 is a fatty alkyl group and M is a counterion selected from the group consisting of sodium, calcium, magnesium, ammonium, and triethanolamine (claim 2). The isethionate is further taught to be sodium cocoyl isethionate (claim 4) which comprises coconut fatty acid residues as R1. The isethionate is present from about 5 to about 25 weight percent (claim 6). Formulation C exemplifies sodium cocoyl isethionate at 10.0 wt.%.
Regarding 20(c), the concentrate of Chen further comprises a zwitterionic surfactant (claim 1), selected from the group consisting of betaines, amidobetaines, and sulfobetaines (claims 2-3). The zwitterionic surfactant is further taught as cocoamidopropyl betaine (claim 4). The zwitterionic surfactant is present from about 1 to about 10 weight percent (claim 6). Formulation C exemplifies sodium cocoamidopropyl betaine at 5.0 wt.%.
The concentrate of Chen further comprises a nonionic, emulsion stabilizer surfactant (claim 1) of a nonionic alcohol ethoxylate (claim 2); the nonionic alcohol ethoxylate is present from about 1 to about 20 percent (claim 6). Chen therefore contemplates pearlizing concentrates comprising a total of about 7 to about 55 weight percent of surfactants (components b-d of claim 6) with combined amounts of isethionates and zwitterionic surfactants totaling at least 75 wt% of the surfactants, overlapping the claimed range. As just one example, Chen contemplates in claim 6 concentrates comprising 1 wt.% nonionic alcohol ethoxylate surfactant, 5 wt.% isethionate surfactant, and 1 wt.% zwitterionic surfactant relative to the total weight of the pearlizing concentrate; this results in a combined 85.7 wt.% of isethionate and zwitterionic surfactant relative to the total amount of surfactants. Per MPEP 2144.05 I., “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
While Chen teaches the inclusion of sodium cocoyl isethionate surfactant present in a wt.% range overlapping the ranges of the instant claims, Chen does not teach the limitation of instant claim 1 that the at least one acyl alkyl isethionate surfactant is of formula (I) wherein at least R2, R3, R4, and R5 is not hydrogen, of instant claim 4 that the acyl alkyl isethionate surfactant of formula (I) is selected from the group consisting of sodium lauroyl methyl isethionate, sodium cocoyl methyl isethionate and sodium oleoyl methyl isethionate, or of instant claim 20 that one of the groups R2, R3, R4, and R5 represents a C1-C4 alkyl group and the remaining groups are hydrogen. Chen further does not teach the limitation of instant claims 1 and 20 that the composition has a viscosity of from 1000 to 5000 cPs.
Anantaneni teaches acylalkylisethionate esters useful in consumer products (abstract). These acylalkylisethionate esters are highly water soluble, hydrolytically-stable, and non-irritating for use in non-aqueous consumer products such as personal care cleansers, and overcome the limitations of sodium cocoyl isethionate (SCI) such as low water solubility and hazy solutions that tend to separate on storage when combined with other surfactants (pg. 1, “Background of the Invention”-pg. 2 “Summary of the Invention”). Anantaneni further teaches that by substituting hydrogen with C1 to C6 alkyl groups on one or both of the carbon atoms of the ethane sulfonate portion of an acylalkylisethionate ester, hydrolytic stability and water solubility of the acylalkylisethionate ester is drastically improved (pg. 12, lines 6-9). They further teach that sodium cocoyl methyl isethionate (SCMI) concentrates form a white pearlescent solution that is easy to handle and can be used in personal cleansers; formulations produced using SCMI as the primary surfactant form a clear solution that is hydrolytically stable when stored compared to SCI which results in formulations that are cloudy and separate when stored (Example 10, Figure 1).
Anantaneni further teaches SCMI concentrates having a viscosity ranging from 3000-5000 cps; the concentrate is easy to handle and has physical properties similar to sodium laureth sulfate, allowing for its use in existing manufacturing facilities (Example 10, specifically pg. 32, lines 4-8).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute the sodium cocoyl isethionate in the pearlizing concentrates of Chen with the sodium cocoyl methyl isethionate taught by Anantaneni. As described above, both SCI and SCMI are known in the art as mild surfactants whose pearlescent concentrates are used in personal care cleansing compositions. From the teachings of Anantaneni, one of ordinary skill in the art would recognize that the substitution of SCMI for SCI would predictably result in a pearlizing concentrate with the improved properties of SCMI compared to SCI, such as improved hydrolytic stability during storage.
It would further have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the pearlizing concentrates of Chen to have a viscosity ranging from 3000-5000 cps, overlapping the range of the instant claims, as suggested by Anantaneni. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success in order to achieve an easy to handle concentrate with physical properties that allow for use in existing manufacturing facilities (Anantaneni pg. 32, lines 4-8). There is a reasonable expectation of success as Chen teaches that pearlizing concentrates can be used in compositions that include viscosity modifiers (pg. 11, line 17-pg. 12, line 5).
Response to Arguments
Applicant’s arguments filed 10/16/2025 have been fully considered, but they are not persuasive.
Regarding the claim rejections under 35 U.S.C. 103, Applicant argues that to arrive at the composition of pending Claim 1 from Formulation C of Chen would require the skilled person to reduce the proportion of the essential emulsion stabilizer; the person of ordinary skill in the art would clearly consider such a significant reduction in the amount of emulsion stabilizer to pose a substantial risk to the stability of the concentrate. Modifying Chen in this way ignores and is contrary to the explicit teaching of this document.
The Examiner respectfully maintains the position regarding the amounts of surfactant taught by Chen set forth in the Office Action mailed 07/15/2025. Particularly, the Examiner maintains that while Chen exemplifies a composition where 65 wt% of the surfactants would be provided by components (b) and (c), Chen, in claim 6, reasonably suggests to one of ordinary skill in the art a combined amount of isethionate and zwitterionic surfactants relative to the total amount of surfactants overlapping the range of the instant claims. There is no teaching in Chen which suggests that adjusting the amounts of exemplified surfactants within the claimed ranges would compromise the stability of the concentrates. Per MPEP 2123 I, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)”. Further, per MPEP 2144.05 I., “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Applicant further argues, regarding Anantaneni, that the pearlescent concentrate exemplified is not a pearlizing composition and that the pearlescent appearance of the concentrate formulation is not the same as having the technical effect of being a pearlizing composition. Applicant argues that the SCMI concentrate formulation exemplified by Anantaneni does not comprise a glycol ester of a fatty acid as required by pending claim 1. Applicant further argues that all of the compositions formulated using the concentrate of Anantaneni are clear solutions, and a person of ordinary skill in the art would recognize that the "pearlescent" appearance of the concentrate of Anantaneni is caused by residual fatty acids used in the prior synthesis of the SCMI, which are insoluble in the concentrate form, but soluble in the finished formulations, which is a different effect to the formulation of the invention which can be directly used to deliver the pearlizing agent into a finished formulation in order to provide it with a pearlescent appearance. Anantaneni does not teach the skilled person anything about pearlizing concentrates as currently claimed and would not be considered as relevant to the present invention by the skilled person to impart a pearlescent effect to end-use products.
These arguments are unpersuasive. The Examiner first notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Here, Chen teaches pearlizing concentrates where mono-and diesters of glycol and glycerol with C16-C22 fatty acids act as a pearlizing agent (pg. 2, lines 4-5; pg. 4, lines 19-21), betaine zwitterionic surfactants provide an enhanced pearlizing effect (pg. 9, lines 7-9), and an isethionate surfactant provides dispersing and stabilizing properties (pg. 11, lines 9-12). The concentrates of Chen are used for personal hair and skin compositions (abstract). Anantaneni teaches acylalkylisethionate esters that are hydrolytically stable and non-irritating for use as a surfactant in consumer products such as personal care cleansers, and that SCMI has improved properties over SCI in terms of hydrolytic stability and ease of handling (see particularly pg. 2, lines 4-15 and Figure 1). Anantaneni further contemplates the combination of such acylalkylisethionate esters with amphoteric and/or zwitterionic surfactants including betaines (see claim 21; Example 10) and opacifiers such as ethylene glycol distearate (pg. 21, lines 6-10).
When considering the combined teachings of the prior art as a whole, a skilled artisan would be motivated to substitute SCI with SCMI in the composition of Chen to impart the improved properties of SCMI compared to SCI, such as improved hydrolytic stability during storage, particularly as both Chen and Anantaneni teach isethionate surfactants for use in personal care compositions, and Anantaneni contemplates SCMI in combination with opacifiers such as ethylene glycol distearate, similar to the compositions of Chen.
Applicant further argues that the evidence of unexpected results shows that the "cold" preparation of "pearlescent concentrates" using acyl isethionates in the manner described by Chen have poor hydrolytic stability and water solubility and result in a thick, gooey paste having high viscosity. The evidence shows Composition 9 (inventive example) and 10 (comparative example) were prepared identically except that Composition 9 used an acyl alkyl isethionate and Composition 10 used an acyl isethionate. At 25 °C, Composition 9 was a thin, easily pourable, white liquid lotion while Composition 10 was a thick gooey paste; furthermore, Composition 9 rapidly dispersed upon mixing and provided a composition having an excellent pearl quality, while Composition 10 was very slow to disperse. Applicant argues that this evidence would clearly persuade a person of ordinary skill that the cold preparation of a pearlizing formulation using an acyl isethionate, rather than an acyl alkyl isethionate were the only factors causing the difference in the viscosity and dispersion between Compositions 9 and 10 and that the use of an acyl isethionate results in a composition that has a viscosity higher than the currently claimed range and is not readily pourable.
These arguments are unpersuasive. As set forth above, the prior art of Anantaneni teaches beneficial effects of substituting an acyl alkyl isethionate for an acyl isethionate which are similar to the beneficial effects observed in the cited examples. Particularly, Anantaneni teaches that the acyl alky isethionate of SCMI demonstrates improved hydrolytic stability, enhanced solubility, and improved ease of handling, storing, and compounding than the acyl isethionate SCI. Substitution of SCMI for SCI would predictably result in these improved properties. Per MPEP 716.02(c) II., “"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).”
The Examiner further respectfully maintains that the evidence of record regarding the alleged unexpected results in not commensurate in scope with the pearlizing concentrate of the instant claims which the evidence is offered to support. Particularly, the specification exemplifies only a single acyl alkyl isethionate surfactant of formula (I) (i.e., SLMI) in combination with only a single glycol ester of a fatty acid (i.e., ethylene glycol distearate). The acyl alkyl isethionate surfactant of formula (I) claimed in instant claim 1 is inclusive of a wide range of compounds (R1 ranging from C4 to C36 and between one and four alkyl substituents R2-5). From the exemplified compositions and evidence regarding composition 9, one of ordinary skill in the art would not be able to determine a trend that would reasonably extend to all combinations of any surfactant of formula (I) with any glycol ester of a fatty acid in the claimed wt. % ranges (see MPEP 716.02 (d)).
In view of the forgoing, and as further detailed in the above rejections, the Examiner maintains
that the instant claims are rendered obvious over the prior art of the modified Chen.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDITH M KAMM whose telephone number is (703)756-4575. The examiner can normally be reached M-F 8:00 am-4:30 pm EST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/J.M.K./Examiner, Art Unit 1611