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 .
DETAILED ACTION
Claims 1-20 are pending. Note that, Applicant’s response filed January 6, 2026, has been entered.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 6, 2026, has been entered.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 10/6/25 have been withdrawn:
None.
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.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al (US 2019/0105245) or Song et al (US 2019/0105247).
With respect to independent, instant claim 1, ‘245 teaches a compact shampoo compositions that contain a surfactant system and a cationic polymer that provides sufficient wet conditioning. The surfactant system can be substantially free of sulfate-based surfactants and can contain an amino acid based anionic surfactant, like sodium cocoyl glutamate, sodium cocoyl alaninate, sodium lauroyl glycinate and/or sodium lauroyl sarcosinate. See para. 23. The compositions have a viscosity from about 1 cP to about 6000 cP. See para. 26. The pH of the composition may have a pH from about 2 to about 10. See para. 32. The shampoo can appear clear and/or translucent wherein the neat shampoo composition can have a percent transmittance of at least 75%, alternatively at least 80%, 85%, 90%, etc. See para. 33. Suitable surfactants include anionic surfactants, amphoteric surfactants, etc., and mixtures thereof. Suitable surfactants that are substantially free of sulfates can include isethionates, sulfonates, sulfosuccinates, sulfoacetates, acyl glucosides, acyl glycinates, acyl sarcosinate, acyl glutamates, acyl alaninates, glucamide, glucose carboxylates, amphoacetates, taurates, other acyl aminoacids, betaines, sultaines, and/or phosphate esters. Suitable surfactants that are substantially free of sulfates can contain carboxylic acids. See para. 37. The surfactant system may further comprise one or more zwitterionic surfactants and the zwitterionic surfactant can be selected from the group consisting of lauryl hydroxysultaine, cocamidopropyl hydroxysultaine, coco-betaine, coco-hydroxysultaine, coco-sultaine, lauryl betaine, lauryl sultaine, and mixtures thereof.
Examples of betaine zwitterionic surfactants can include coco dimethyl carboxymethyl betaine, cocoamidopropyl betaine (CAPB), cocobetaine, lauryl amidopropyl betaine (LAPB), oleyl betaine, lauryl dimethyl carboxymethyl betaine, lauryl dimethyl alphacarboxyethyl betaine, cetyl dimethyl carboxymethyl betaine, lauryl bis-(2-hydroxyethyl) carboxymethyl betaine, stearyl bis-(2-hydroxypropyl) carboxymethyl betaine, oleyl dimethyl gamma-carboxypropyl betaine, lauryl bis-(2-hydroxypropyl)alpha-carboxyethyl betaine, and mixtures thereof. Examples of sulfobetaines can include coco dimethyl sulfopropyl betaine, stearyl dimethyl sulfopropyl betaine, lauryl dimethyl sulfoethyl betaine, lauryl bis-(2-hydroxyethyl) sulfopropyl betaine and mixtures thereof. The zwitterionic surfactant can comprise cocamidopropyl betaine (CAPB), lauramidopropyl betaine (LAPB), and combinations thereof. See paras. 58-64.
A cationic polymer may also be used in the compositions in amounts from 0.01% to about 2% by weight and include those having a molecular weight of from about 50,000 to about 1,200,000 g/mole and a charge density of from about 0.9 meq/g to about 7 meq/g and include Polyquaternium-6, guar hydroxypropyltrimonium chloride, etc. See paras. 65-78. Additionally, optional ingredients may be used such as buffers, pH adjusting agents, antidandruff agents, etc., wherein the individual concentrations of optional components can generally range from about 0.001% to about 10% by weight. See paras. 133-137. Suitable antidandruff agents include piroctone olamine, etc. See para. 148.
With respect to independent, instant claim 1, ‘247 teaches a personal care composition comprising: from about 3 wt % and from about 35 wt % of an anionic surfactant; from about 3 wt % to about 15% of an amphoteric surfactant; from about 0.01 wt % to about 2 wt % cationic polymer; from about 0 wt % to about 1.0 wt % of an inorganic salt; an aqueous carrier, wherein the composition is substantially free of sulfate based surfactant wherein the composition has a % T value of greater than about 80. See Abstract and claim 1. The composition is clear prior to dilution with water. See para. 19. The anionic surfactant is selected from the group consisting of sodium, ammonium or potassium salts of isethionates; sodium, ammonium or potassium salts of sulfonates; sodium, ammonium, or potassium salts of ether sulfonates; sodium, ammonium or potassium salts of sulfosuccinates; sodium, ammonium or potassium salts of sulfoacetates; sodium, ammonium or potassium salts of glycinates; sodium, ammonium or potassium salts of sarcosinates; sodium, ammonium or potassium salts of glutamates; sodium, ammonium or potassium salts of alaninates; sodium, ammonium or potassium salts of carboxylates; sodium, ammonium or potassium salts of taurates; sodium, ammonium or potassium salts of phosphate esters; and combinations thereof. The cationic polymer has a weight average molecular weight of from about 300,000 g/mol to about 3,000,000 g/mol. The cationic polymer is selected from the group consisting of cationic guars, cationic cellulose, cationic synthetic homopolymers, cationic synthetic copolymers, and combinations thereof. Specifically, the cationic polymer is selected from the group consisting of hyroxypropyltrimonium guar, Polyquaternium 10, Polyquaternium 6, and combinations thereof. See claims 1-4. The cleansing compositions can have a viscosity of from about 100 cps to about 20,000 cps. See para. 168. ‘247 exemplify compositions having a pH of 6. See table 5. Additionally, optional ingredients may be used such as buffers, pH adjusting agents, antidandruff agents, etc., wherein the individual concentrations of optional components can generally range from about 0.001% to about 10% by weight. See paras. 133-137. Suitable antidandruff agents include piroctone olamine, etc. See para. 138-172.
‘245 or ‘247 does not teach, with sufficient specificity, a clear composition containing an anionic surfactant, an amphoteric surfactant, a cationic polymer, a hydroxamic or hydroxamic acid derivative, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a clear composition containing an anionic surfactant, an amphoteric surfactant, a cationic polymer, a hydroxamic or hydroxamic acid derivative, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of ‘245 or ‘247 suggest a clear composition containing an anionic surfactant, an amphoteric surfactant, a cationic polymer, a hydroxamic or hydroxamic acid derivative, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-20 of copending Application No. 17/961142 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 and 11-20 of 17/961142 disclose the claimed invention with sufficient specificity to constitute anticipation; claims 1-9 and 11-20 of 17/961142 anticipate the material limitations of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using Song et al (US 2019/0105245) or Song et al (US 2019/0105247), Applicant states there is no guidance in '245 or ‘247 for the skilled person of how to provide a cleansing composition that is clear and with no in situ coacervate prior to dilution by decreasing the amount of inorganic electrolytes from 0 wt.% to 1 wt.% and, for these reasons, the present invention is not taught or suggested by ‘245 or ‘247. Additionally, Applicant states that ‘245 exemplifies compositions which comprise 10 wt.% of disodium cocoyl glutamate supplied as Eversoft USS-50SG, wherein the purity of disodium cocoyl glutamate is 48-52 wt%, and wherein 10 wt.% of disodium cocoyl glutamate has been added from 20 wt.% of the liquid material. The technical data sheet of this material from Sino Lion shows that such liquid material has 6-8 wt.% sodium chloride. Thus, the 20 wt.% of the liquid material added in Examples B, E, and F includes 1.4 wt.% of sodium chloride and for at least this reason, such examples cannot comprise from 0 wt.% to 1.0 wt.% of inorganic salts as recited by the instant claims. Also, Applicant states that a similar data sheet has been provided with respect to sodium cocoyl alaninate which, when calculated, would provide 1.5% by weight of sodium chloride to the examples as taught by ‘245.
In response, note that, the Examiner asserts that the teachings of a reference are not limited to the preferred embodiments and that the broad teachings of ‘245 suggest compositions having the same properties and containing the same components in the same amounts as recited by the instant claims. Note that, the fact that a specific embodiment is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the disclosed alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); See MPEP 2123(II). The fact that a reference discloses a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, 874 R.2d 804, 808 (Fed. Cir. 1989). See also, In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations even though “the inventors selected the zeolites of the claims from amount thousands of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was huge, but it undeniably included at least some of the compounds recited in appellant’s generic claims and was a class of chemicals to be used for the same purpose as appellant’s additives).
For example, ‘245 clearly teaches the use of surfactants such as sodium lauroyl sarcosinate (See para. 23 of ‘245), salts of isethionates, etc., which would clearly suggest anionic surfactants that fall within the scope of the instant claims and overlap with anionic surfactants as recited by instant claim 2. Additionally, ‘245 does not require the use of inorganic salts such that ‘245 clearly suggests embodiments which contain 0%, for example, of inorganic salts. Also, ‘245 clearly teaches compositions that that are clear and have a percent transmittance, for example, of 75% or 80%, wherein these features clearly fall within the scope of the instant claims.
With respect to the rejection of the instant claims under 35 USC 103 using Song et al (US 2019/0105247), ‘247 clearly teaches that the composition is substantially free of sulfate based surfactant, wherein the composition has a % T value of greater than about 80% (See Abstract and claim 1 of ‘247), the level of inorganic salt is from about 0% to about 1% by weight, and the composition is clear prior to dilution with water (See Abstract and para. 19 of ‘247), such that ‘247 clearly teaches the critical features of the instant claims. Additionally, ‘247 clearly teaches and exemplifies compositions which have no coacervate prior to dilution as recited by the instant claims (See Examples 1-6 and 12-26 of ‘247).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Thus, the Examiner asserts that the teachings of ‘245 or ‘247 are sufficient to render the claimed invention obvious under 35 USC 103.
Further, Applicant states that data has been provided in the instant specification which is sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. Specifically, Applicant states that Examples 1 and 2 provide unexpected and superior clarity as indicated by % transmittance and Examples 5 and 6 provide unexpected and superior consistent viscosity properties than compositions falling outside the scope of the instant claims.
In response, note that, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. The data provided in the instant specification is not commensurate in scope with the instant claims. For example, the instant claims are open to an anionic surfactant in broad amounts, any amphoteric surfactant in broad amounts, any cationic polymer in a given amount, and an hydroxamic acid or hydroxyamic derivative in broad amounts, while the instant specification provides data with respect to only several specific embodiments which is not commensurate in scope with the instant claims. Note that, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); See MPEP 716.02(d)(I). While Applicant states that the instant specification has provided many examples which are commensurate in scope with the instant claims since pages 46-51 of the instant specification include 13 examples of various surfactants and polymers with an hydroxamic acid in various ranges within Claim 1 and meeting a % T value of greater than about 70 as required in Claim 1, the Examiner does not concur. The Examples all contain only several examples of each of the claimed category of components (i.e., several anionic surfactants), wherein these examples of components are not commensurate in scope with the breadth of instant claim 1.
Additionally, the Examiner would like to point out, as stated above, that both ‘245 and ‘247 both specifically teach compositions that are clear and provide %T values that fall within the scope of the instant claims and are the same properties demonstrated by at least some of the data provided in the instant specification. ‘247 clearly teaches that the compositions do not form coacervates. Thus, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above.
Applicant is reminded that any evidence to be presented in accordance with 37 CFR 1.131 or 1.132 should be submitted before final rejection in order to be considered timely.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/January 20, 2025