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 .
Status of Claims
Claims 1-53 are pending. This is the first office action on the merits.
Information Disclosure Statement
The Information Disclosure Statements filed January 6, 2023, April 26, 2023, August 9, 2023, April 1, 2024 and January 19, 2026 have been reviewed.
Election/Restrictions
Applicant’s election of species with traverse in the reply dated October 21, 2025 is noted. Specifically, Applicants elect sodium salicylate, sodium benzoate, anionic alkyl sulfates, alpha olefin sulfonates, guar hydroxypropyltrimonium chloride, acrylates copolymer, hydroxyl pyridine/piroctone olamine and zinc pyrithione with traverse.
The traversal is on the basis that there is no serious burden on the Examiner for the election of species to be required. Applicants argue that the different groups of the present invention have not acquired a separate status in the art, and although they may have different classification or subclassification in the art, the classes do overlap with each other. Since the classes overlap, then some of the art relevant for one group will be the same art which is relevant for another group of species.
The traversal is not found to be persuasive. MPEP § 803 states that restriction is proper between patentably distinct inventions where the inventions are (1) independent or distinct as claimed and (2) a serious search and examination burden is placed on the examiner if restriction is not required. In regard to the burden of search and examination MPEP § 803 states that a burden can be shown if the examiner shows either separate classification, different field of search or separate status in the art. In the instant case a burden has been established in showing that the species are independent and distinct because claims to the different species recite the mutually exclusive characteristics of such species. Additionally, the species are not obvious variants of each other based on the current record.
As stated in the August 21, 2025 Restriction Requirement, there is a search and/or examination burden for the patentably distinct species as set forth above due to their mutually exclusive characteristics. The species require a different field of search (i.e., searching different classes/subclasses or electronic resources, or employing different search queries) and the prior art applicable to one species would not likely be applicable to another species, and the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
These are the criteria for establishing that unrestricted examination would seriously burden the Examiner, and clearly different searches and issues are involved in the examination of each species. Respectfully, the possibility of some overlap in the prior art that would be reviewed does not alleviate the serious burden that would be placed on the Examiner in having to examine each species. Claim 32 for example, recites at least 20 different species of surfactants.
For the reasons set forth herein, the requirement for restriction is still deemed proper and is therefore made FINAL.
Claims 25-26 and 48 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-24, 27-47 and 49-53 are examined on their merits to the extent of the elected species of: salicylate, sodium benzoate, anionic alkyl sulfates, alpha olefin sulfonates, guar hydroxypropyltrimonium chloride, acrylates copolymer, hydroxyl pyridine/piroctone olamine and zinc pyrithione.
Claim Objection
Claim 4 is objected to because of the following informalities: The claim appears to go from plural (salicylate salts or acids) to singular (sodium salicylate). It is suggested that claim 1 may recite one or more salicylate salts or acids if Applicant should want to keep the singular forms too (i.e. is sodium salicylate).
Claim 5 is objected to because of the following informalities: The claim appears to go from plural (benzoate salts or acids) to singular (sodium benzoate). It is suggested that claim 1 may recite one or more benzoate salts or acids if Applicant should want to keep the singular forms too (i.e. is sodium benzoate).
Claim 22 is objected to because of the following informalities: For grammatical completeness of the claim, the claim should recite “further comprises”.
Claim 35 is objected to because of the following informalities: For grammatical completeness of the claim, the claim should recite “the” one or more surfactants.
Claim 36 is objected to because of the following informalities: The claim should recite “the” one or more surfactants.
Claim 37 is objected to because of the following informalities: The claim should recite “the” one or more surfactants.
Claim 38 is objected to because of the following informalities: The claim should recite “the” one or more surfactants.
Claim 46 is objected to because of the following informalities: For grammatical completeness, the claim should recite one or more “polymers” plural as opposed to the singular. It is suggested that claim 46 recite “polymers”.
Claim Rejections - 35 USC §112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-24, 27-47 and 49-53 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected under 35 USC 112(b) for reciting the limitation “at least one of the surfactants” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “one or more surfactants” in line 2. The phrase ““one or more surfactants” encompasses multiple one or more surfactants, so it is unclear whether just one, more than one, or all of the one or more surfactants are referred to in claim 1 in lines 2-3.
It is suggested that claim 1 be amended to recite “one or more surfactants, wherein at least one of the one or more surfactants has a branched alkyl chain or a linear alkyl chain of less than C12;”
Claim 1 is also indefinite for the following reasons. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claim 1 recites the broad recitation “benzoate salts” and the claim also recites “sodium benzoate” which is the narrower statement of the range/limitation.
Regarding claim 1, these broad and then narrow phrases renders the claim indefinite because it is unclear whether these limitations following the word as are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 1 is unclear because it is unclear if part c requires the genus of benzoate salts or the species of sodium benzoate. For the purposes of this office action claim 1 will be interpreted using the narrower phrase as the limitation.
Claims 2-24, 27-47 and 49-53 are rejected as depending from claim 1.
Claims 1-3, 6-7, 27-29, 34-38, 42-45 and 51-53 are also indefinite in reciting % amounts without any units for the percentage. The claims are unclear because no units for the percent concentration are given (e.g., vol/vol, wgt/vol, wgt/wgt) and one skilled in the art, therefore, would not be reasonably apprised of the metes and bounds of the claims.
Claim 30 is rejected under 35 USC 112(b) for reciting the limitation “the surfactant” in line 1 and depends from claim 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “one or more surfactants” in lines 2-3. The phrase ““one or more surfactants” encompasses multiple one or more surfactants, so it is unclear whether just one, more than one, or all of the one or more surfactants are referred to in claim 30.
It is suggested that amending claim 30 to recite “the one or more surfactants” would overcome this lack of clarity.
Claim 31 is also rejected under 35 USC 112(b) for reciting the limitation “the surfactant” in line 1 and depends from claim 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “one or more surfactants” in lines 2-3. The phrase “one or more surfactants” encompasses multiple one or more surfactants, so it is unclear whether just one, more than one, or all of the one or more surfactants are referred to in claim 31.
It is suggested that amending claim 31 to recite “the one or more surfactants . . “ would overcome this lack of clarity.
Claim 32 is rejected under 35 USC 112(b) for reciting the limitation “the surfactant” in line 1 and depends from claim 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “one or more surfactants” in lines 2-3. The phrase ““one or more surfactants” encompasses multiple one or more surfactants, so it is unclear whether just one, more than one, or all of the one or more surfactants are referred to in claim 32.
It is suggested that amending claim 32 to recite “the one or more surfactants . . “ would overcome this lack of clarity.
Claim 32 is also rejected under 35 USC 112(b) for being in improper Markush group format. Only the anionic surfactants a. and b. and c. are separated by the connecting operator “and”. The claim is indefinite because it is not clear whether the selection of “mixtures thereof” is only for a. R1O(CH2CHR3O)ySO3M and b. CH3(CH2)2 CHR2CH2O(CH2CHR3)ySO3M or whether the selection of “mixtures thereof” is for the combination of all the listed surfactants.
Claim 33 is rejected under 35 USC 112(b) for reciting the limitation “the surfactant” in line 1 and depends from claim 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “one or more surfactants” in lines 2-3. The phrase “one or more sulfate-based surfactants” encompasses multiple one or more surfactants, so it is unclear whether just one, more than one, or all of the one or more surfactants are referred to in claim 33.
It is suggested that amending claim 33 to recite “the one or more surfactants . . “ would overcome this lack of clarity.
Claim 33 is also rejected under 35 USC 112(b) for reciting “wherein the surfactant or combination of surfactants are substantially free” in lines 1-2. The phrase “substantially free” in claim 33 is a relative term which renders the claim indefinite. The phrase “substantially free” is not defined by the claim and although the specification provides a definition for “substantially free”, the definition is not clear so it does not provide a standard for ascertaining the requisite degree. Thus one of ordinary skill in the art would not be reasonably apprised of the scope of the invention or the metes and bounds of the claims.
It is suggested that claim 33 be amended to recite “wherein the one or more surfactants are free of sulfate-based surfactants.”
Claim 34 is rejected under 35 USC 112(b) for reciting the limitation “the surfactant” in line 1 and depends from claim 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “one or more surfactants” in lines 2-3. The phrase “one or more surfactants” encompasses multiple one or more surfactants, so it is unclear whether just one, more than one, or all of the one or more surfactants are referred to in claim 34.
It is suggested that amending claim 34 to recite “the one or more surfactants . . “ would overcome this lack of clarity.
Claim 46 is rejected under 35 USC 112(b) for being in improper Markush group format. Only the last two members are separated by the connecting operator “and”. Amendment to “ . . . consisting of homopolymers based on acrylic acid, homopolymers based on methacrylic acid, derivatives of homopolymers of acrylic acid, derivatives of homopolymers of methacrylic acid, alkali swellable acrylic copolymers, hydrophobically-modified alkali swellable acrylic copolymers, alkali swellable methacrylate copolymers, hydrophobically-modified alkali swellable methacrylate copolymers, soluble crosslinked acrylic polymers, associative polymeric thickeners and mixtures thereof” is suggested to overcome the above rejection. The claim is indefinite because it is not clear if there is a selection from all of the listed ingredients.
Claim Rejections - 35 USC §112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 is rejected as being indefinite for failing to further limit in the recitation of “sodium benzoate” wherein claim 5 ultimately depends from claim 1. Claim 1 already recites “sodium benzoate” in line 7. Since sodium benzoate is already recited in claim 1, claim 5 does not further limit claim 1. This is a failure to further limit the claim from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-24, 27-47 and 49-53 are rejected under 35 U.S.C. 103 as being unpatentable over Mullee et al. US 2012/0213725 (8/23/2012) in view of Goddinger US 2009/0169644 (7/2/2009) as evidenced by the specification.
Mullee et al. (Mullee) teaches surfactant-polymer blends that are useful as thickeners for a variety of personal care products. (See Abstract). The blend comprises (a) at least one anionic surfactant, (b) at least one amphoteric or zwitterionic surfactant and (c) at least one hydrophobically-modified polymer formed from a mixture comprising at least one ethylenically unsaturated carboxylic acid monomer and at least one nonionic copolymerizable ethylenically unsaturated monomer and optionally, (d) at least one salt. (See Abstract and claim 1). Mullee teaches that the surfactant polymer blends are useful as thickeners, rheology modifiers, deposition aids and film-formers in a variety of cosmeceutical and pharmaceutical compositions employed for topically ameliorating skin and scalp conditions caused by perspiration, dandruff, acne and the like. (See [0101]).
The salt can be sodium benzoate or sodium salicylate or mixtures of both. (See claim 34). Sodium salicylate is called for in instant claim 4 and is a salicylate salt as called for in instant claim 1. Sodium benzoate is called for in instant claim 5 and it is a benzoate salt as called for in instant claim 1. Mullee teaches that the sodium benzoate and sodium salicylate can be present in an amount of less than 1%. (See [0011-0012]). This is a ratio of 1:1 and overlaps with the ratio of about 1:1 to 2.5:1 called for in instant claim 1. Less than 1`% sodium salicylate overlaps with the from about 0.1 to 0.2% in claim 2, and overlaps with the from about 0.1 to 0.18% in claim 3. Less than 1`% sodium benzoate overlaps with the from about 0.1 to 0.2% in claim 6, and overlaps with the from about 0.1 to 0.18% in claim 7.
Mullee teaches that a suitable surfactant is an anionic alkyl sulfate. (See [0027]). Mullee teaches that the alkyl groups contain in one embodiment from about 8 to about 18 carbon atoms, which overlaps with the less than 12 carbon atoms called for in instant claim 1. (See [0027]). The surfactant can be present in an amount of about 1 to about 50%. (See [0036]). 1 to about 50% overlaps with the from about 10 to about 17% called for in instant claim 1a. 1 to about 50% overlaps with the from about 10 to about 16% called for in instant claim 34. 1 to about 50% overlaps with the from about 10 to about 16% called for in instant claim 35. 1 to about 50% overlaps with the from about 10 to about 15% called for in instant claim 36. 1 to about 50% overlaps with the from about 10 to about 14% called for in instant claim 37. 1 to about 50% overlaps with the from about 10 to about 13% called for in instant claim 38.
Mullee teaches embodiments that can include anionic alkyl sulfate surfactants and also teaches embodiments that are free of sulfated surfactants as called for in instant claim 33. (See Examples 11-13 at [0211-223]).
Mullee teaches that suitable organic salts include sodium benzoate and sodium salicylate and mixtures of these salts. (See [0075]). Mullee teaches that suitable fixative polymers in its composition include guar hydroxypropyl trimonium chloride as called for in instant claim 41. (See [0116]). This is a cationic guar polymer as called for in instant claim 40.
Mullee teaches that for optimal hydrolytic stability of its composition, the pH is in the range of less than 6 which overlaps with the less than or equal to 6 called for in instant claim 14 and overlaps with the from 4.5 to about 6 called for in claim 15. (See [0127]).
Mullee teaches that zinc pyrithione is a suitable example of a pharmaceutical and cosmeceutical active ingredient. (See [0102]). Zinc pyrithione is called for in instant claim 50, and it is a polyvalent metal salt of pyrithione as called for in instant claim 49. Zinc pyrithione is a scalp health agent as called for in instant claim 47. Mullee teaches that active ingredients can be present in an amount effective to accomplish their function and are generally included in an amount of from 0 to 35%. (See [0107]). 0 to 35% overlaps with the about 0.01% to 10% called for in instant claim 51, the from about 0.05% to 9% called for in instant claim 52 and the from about 0.1% to about 8% called for in instant claim 53. Zinc pyrithione is a soluble antidandruff agent as called for in instant claim 22 as evidenced by Mullee at [0102]. 0 to 35% overlaps with the about 0.02% to 8% called for in instant claim 28 and the from about 0.05% to 5% called for in instant claim 29.
Mullee teaches acrylates copolymer as a suitable additional fixative polymer for its composition. (See [0116]). Acrylates copolymer is called for in instant claim 46. Hair fixative polymers are described as cosmeceutical active ingredients in paragraph [0102] and active ingredients are taught to be present in an amount of 0 to 35%. (See [0107]). 0 to 35% overlaps with the 0.01% to about 10% called for in instant claim 45.
Mullee teaches piroctone olamine as a suitable additional cosmeceutical active ingredients in paragraph [0102] . Piroctone olamine is called for in instant claim 24. Piroctone olamine is a hydroxyl pyridine as called for in instant claim 23 and a soluble antidandruff agent as called for in instant claim 22. Cosmeceutical active ingredients are taught to be present in an amount of 0 to 35%. (See [0107]). 0 to 35% overlaps with the about 0.01% to about 10% called for in instant claim 27 and also overlaps with the about 0.02% to about 8% called for in instant claim 28 and also overlaps with the about 0.05% to 5% called for in instant claim 29.
Mullee does not teach alpha-olefin sulfonate surfactants. This deficiency is made up for with Goddinger et al.
Goddinger et al. (Goddinger) teaches antidandruff shampoo that contains surfactant and hydrogenated castor oil for stabilizing an antidandruff component that is insoluble in the cleansing composition. (See Abstract). Goddinger teaches that anionic surfactants suitable in its preparation are those that are suitable for use on the human body and include linear alpha-olefin sulfonates having 8 to 24 carbon atoms. (See [0013] and [0021]). Alpha-olefin sulfonates are called for in instant claim 33.
Goddinger teaches that in the literature it is known to stabilize zinc pyrithione effective by using acrylate polymers. (See [0006]).
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Mullee personal antidandruff cleansing composition for scalp health of less than 1% of a mixture of sodium salicylate and sodium benzoate in a 1:1 ratio, about 0 to about 35% piroctone olamine, about 0 to about 35% zinc pyrithione, guar hydroxypropyl trimonium chloride, about 1 to about 50% cocamidopropyl betaine and anionic C8-18 alkyl sulfate surfactants and about 0 to about 25% acrylates copolymer at a pH of less than 6 because a prima facie case of obviousness exists when ranges overlap. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)
It would have been obvious to include alpha-olephin anionic surfactant with Mullee’s anionic alkyl sulfonate surfactants because it would have been obvious at the time of the invention to combine two known surfactants based on a common function. (See MPEP 2144.06). “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
With respect to the net change in bacteria log reduction and the net change in yeast and/or mold reduction in claims 16-21, the prior art is silent as to these properties. The prior art of the combined teachings of Mullee in view of Goddinger, however, teaches all of the claimed components in the same amounts (at the overlap of the ranges). Mullee in view of Goddinger teaches a personal antidandruff cleansing composition for scalp health of less than 1% of a mixture of sodium salicylate and sodium benzoate in a 1:1 ratio, about 0 to about 35% piroctone olamine, about 0 to about 35% zinc pyrithione, guar hydroxypropyl trimonium chloride, about 1 to about 50% cocamidopropyl betaine and about 0 to about 25% acrylates copolymer and about 1 to about 50% alpha olefin sulfonate at a pH of less than 6.
Since Mullee in view of Goddinger teaches the elected species of sodium salicylate, sodium benzoate, alpha olefin sulfonates, cocamidopropyl betaine and anionic C8-18 alkyl surfactants, guar hydroxypropyltrimonium chloride, acrylates copolymer, hydroxyl pyridine/piroctone olamine and zinc pyrithione, the properties of the net charge in yeast, mold or bacteria of 0.5 or greater in comparison to an unpreserved control would be the natural result of the prior art elements. Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements. Therefore, the properties of net charge in bacteria yeast or mold log reduction would necessarily follow as evidenced by Examples 2 and 3 of the instant specification.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-24, 27-47 and 49-53 are provisionally rejected as being directed to an invention not patentably distinct from claims 1-24, 27-47 and 49-53 of commonly assigned U.S. Patent Appn No. 17/980169 in view of Mullee et al. US 2012/0213725 (8/23/2012).
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case the claims are drawn to a hair care composition comprising from about 10% to about 17% of anionic alkyl surfactants, alpha olefin sulfonates, from about 0.1 to 0.25% of sodium salicylate, from about 0.1 to 0.25% of sodium benzoate, guar hydroxypropyl trimonium chloride, piroctone olamine, zinc pyrithione and acrylates copolymer at a pH of equal to or less than 6.
Claims 1-24, 27-47 and 49-53 of US Patent Appn. No. 17/980169 are drawn to a hair care composition comprising from about 10% to about 17% of one or more substantially free of sulfate-based surfactants that include alpha olefin sulfonates, cocamidopropyl betaine, from about 0.1 to 0.25% of sodium salicylate, from about 0.1 to 0.25% of sodium benzoate, guar hydroxypropyl trimonium chloride, piroctone olamine, zinc pyrthione and acrylates copolymer at a pH of equal to or less than 6.
Claims 1-24, 27-47 and 49-53 of 17/980169 differ from those of the instant application in that they do not teach anionic alkyl surfactants with carbon chain that is less than 12 carbons. This deficiency is made up for with the teachings of Mullee.
The teachings of Mullee are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the hair care composition of US Patent Appn. No. 17/980169 to include anionic alkyl surfactants that have carbon chains of 8-18 carbons as taught by Mullee in order to have a cleansing composition that is gentle, mild and effective as taught by Mullee.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-24, 27-47 and 49-53 are rejected as being directed to an invention not patentably distinct from claims 1-16, 20-23, 26-44 and 46-51 of commonly assigned U.S. Patent No. 11,684,558 in view of Goddinger US 2009/0169644 (7/2/2009).
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case the claims are drawn to a hair care composition comprising from about 10% to about 17% of anionic alkyl surfactants, alpha olefin sulfonates, from about 0.1 to 0.25% of sodium salicylate, from about 0.1 to 0.25% of sodium benzoate, guar hydroxypropyl trimonium chloride, piroctone olamine, zinc pyrithione and acrylates copolymer at a pH of equal to or less than 6.
Claims 1-16, 20-23, 26-44 and 46-51 of US Patent No. 11,684,558 are drawn to a hair care composition comprising from about 8 to about 17% of one or more surfactants, from about 0.01% to 5% of one or more polyacrylate based thickening polymers, from about 0.02 to 0.25% of salicylate salts or acids, from about 0.1 to 0.25% benzoate salts or acids, alpha olefin sulfonates, guar hydroxypropyl trimonium chloride cationic polymer, piroctone olamine, zinc pyrithione and acrylates copolymer thickening polymer at a pH of equal to or less than 6.
Claims 1-16, 20-23, 26-44 and 46-51 of US Patent No. 11,684,558 differ from those of the instant application in that they do not teach alpha olefin sulfonate surfactants. This deficiency is made up for with the teachings of Goddinger.
The teachings of Goddinger are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the hair care composition of US Patent No. 11,683,558 to use alpha-olefin sulfonates taught by Goddinger in order to use a surfactant that was known to be able to be used on the human body and is suitable for use in an antidandruff shampoo as taught by Goddinger.
Claims 1-24, 27-47 and 49-53 are rejected as being directed to an invention not patentably distinct from claims 1, 3-4, 7, 12-13, 18-23, 26-44, 46-49 and 51-55 of commonly assigned U.S. Patent Appn. No. 17/078781 in view of Goddinger US 2009/0169644 (7/2/2009).
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case the claims are drawn to a hair care composition comprising from about 10% to about 17% of anionic alkyl surfactants, alpha olefin sulfonates, from about 0.1 to 0.25% of sodium salicylate, from about 0.1 to 0.25% of sodium benzoate, guar hydroxypropyl trimonium chloride, piroctone olamine, zinc pyrithione and acrylates copolymer at a pH of equal to or less than 6.
Claims 1, 3-4, 7, 12-13, 18-23, 26-44, 46-49 and 51-55 of US Patent Appn. No. 17/078,781 are drawn to a hair care composition comprising from about 8 to about 17% of one or more surfactants, from about 0.04% to 0.15% of salicylate salts or acids, from about 0.04% to 0.15% of benzoate salts or acids, guar hydroxypropyl trimonium chloride cationic polymer, piroctone olamine, zinc pyrithione and acrylates copolymer thickening polymer at a pH of equal to or less than 6.
Claims 1, 3-4, 7, 12-13, 18-23, 26-44, 46-49 and 51-55 of US Patent Appn. No. 17/078,781 differ from those of the instant application in that they do not teach alpha olefin sulfonate surfactants. This deficiency is made up for with the teachings of Goddinger.
The teachings of Goddinger are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the hair care composition of US Patent Appn. No. 17/078,781 to use alpha-olefin sulfonates taught by Goddinger in order to use a surfactant that was known to be able to be used on the human body and is suitable for use in an antidandruff shampoo as taught by Goddinger.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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SARAH CHICKOS
Examiner Art Unit 1619
/SARAH ALAWADI/Primary Examiner, Art Unit 1619