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 Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12-13 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.
The aforementioned claims state the phrase “preferably” which is indefinite because it follows a narrow term, where the skilled artisan would not ascertain whether the broad or narrow term is prevalent in the claim and is inconsistent with distinctively claiming the invention. Clarification is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-9, 11 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koshti et al (2018/0193243) in view of WO (2020/069178) is withdrawn.
Claim(s) 3-4, 8, 11, 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koshti et al (2018/0193243) in view of Ilardi et al (5,393,466).
Koshti et al disclose a preservative personal care composition and method thereof (abstract) in the form of non-dusting composite blend, which comprises; [0022] a) N-capryloyl glycine (Formula I), b) N-undecylenoyl glycine (Formula II), [0023] c) benzoic acid (Formula III) and d) sodium dehydroacetate ((Formula IV) wherein, the ratio of above four components to each other is 1:1:1:1 by weight (0021). Specifically, it is very apparent to anyone with reasonable knowledge in microbiology that ratios of four components can be varied a little and still can get the effective broad spectrum of antimicrobial activity, for example, ratio of N-capryloyl glycine:N-undecylenoyl glycine:benzoic acid:sodium dehydroacetate can be 1:1:1.25:0.75 or it can be 1.25:0.75:1.0:1.0 by weight (0048). Koshti et al teach that 8 to 12% surfactant mix is the usual range that can be used for home and personal care products and comprise a blend of anionic and amphoteric surfactants, specifically cocoamidopropyl betaine (0051 and 0052). This ease of dispersion of the anti-microbial blend of the present invention in water and subsequent solubility of the same in the presence of surfactants is very surprising (0051) and water to balance a pH from 4-6 is suggested at example 3 Table 7. Furthermore, the personal care compositions comprising the antimicrobial composition of in an amount of 0.3 to 2% (with a ratio of 0.75 for dehydroacetate @ 0.3%= 0.075%; below the substantially free amounts as claimed) for of the personal care composition and wherein the composition is selected from the group consisting of a powder, granules, a compact, a lotion, a cream, a solution, a body-washes, sera, a hand wash, an intimate hygiene wash, a wipe, an emulsion, and combinations thereof (claims 6-7).
Koshti et al not suggest sodium dehydroacetate at 0.0125%.
The examiner contends that as stated above, the low amount of 0.07% as suggested may be optimized given that optimization is within the level of the ordinary artisan, absent a showing to the contrary commensurate in scope with the claimed invention.
Koshti et al teach all of the instantly required except an isethionate anionic surfactant.
Ilardi et al disclose a personal cleansing composition comprising isethionate anionic surfactants, betaine amphoteric surfactants, lauric acid, preservatives and water (example 8).
One skilled in the art would have been motivated to include alkyl isethionate surfactants as an anionic surfactant of choice within the preservative compositions of Koshti et al given that Ilardi et al teaches that isethionates, and betaines are desirable and mild body cleansers (col. 3, lines 40-60) anionic surfactants and amphoteric surfactants equivalently utilized in preservative compositions and absent a showing to the contrary, one skilled would have readily employed said isethionates with the expectation of similar reduction of surface tension upon the personal substrates being treated by Koshti et al.
[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
Allowable Subject Matter
Claim 5-7, 9-10, 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to Koshti et al not suggest sodium dehydroacetate at less than 0.125% or 0.0125%.
The examiner contends that as stated above, the low amount of 0.07% as suggested may be optimized given that optimization is within the level of the ordinary artisan, absent a showing to the contrary commensurate in scope with the claimed invention.
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-1498. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NECHOLUS OGDEN JR/ Primary Examiner, Art Unit 1761