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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10-30-2025 has been entered.
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 9 and 12 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 that phrase “sufficient to provide” which is indefinite and unclear as it does not ascertain what is encompassed by said term “sufficient”. The skilled artisan would be unable to determine the metes or bounds of the claims. Corrections are 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) 1-6, 9-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kefauver et al (5,540,852).
Kefauver et al disclose a mild, lathering personal cleansing soap bar composition by weight of the bar comprising: from 60 to 85 parts tailored fatty acid soap, 1 to 15 parts free fatty acids; from 8 parts to 15 parts synthetic surfactant, and from 5 to 35 parts of water (claim 4); wherein said tailored fatty acid soap by weight of total soap comprises: from 50% to 85% is saturated fatty acid soap selected from the group consisting of: myristic, palmitic, and stearic acid soaps and mixtures thereof; and from 15% to 50% by weight of total soap is: oleic (C.sub.18:1) and lauric acid (C.sub.12) soaps and minor fatty acid soaps selected from the group consisting of: C.sub.8, C.sub.10, C.sub.18:2 ; and mixtures thereof; and
wherein said lauric and oleic soaps have a ratio of about 0.7:1 to about 2:1 and wherein said tailored fatty acid soap mixture is about 65% to about 95% sodium soap and from about 5% to about 35% magnesium soap, and wherein said soap bar composition is essentially free of potassium soap (claims 1-12). With respect to the synthetic surfactant, Kefauver et al disclose C8-C18 acyl isethionates, acyl taurates and alkyl sulfosuccinates (col. 5, lines 14-27). With respect to the method claims, Kefauver et al teach the milled soap bar compositions are mixed at a temperature of about 190.degree. F. (88.degree. C.) and pumped into a heat exchanger where the temperature of the mix is heated to about 240.degree. F. (115.degree. C.). The heated mixture is dried either atmospherically or with vacuum; flaked, combined with minors, milled, extruded, bar plugs are cut and deposited on a chilled roll and the final bars are then stamped (col. 8, lines 8-17).
Kefauver et al does not teach with sufficient specificity to anticipate the claims, where the ratio of fatty acid to soap of claim 1; TAXT reading of billets in claim 11; and the proportion of lauric acid being 80% or 85% in claims 1 and 20, respectively.
It would have been obvious to the skilled artisan to optimize the ratio of fatty acid to soap and increase the lauric acid content to 85% since optimization is within the level of ordinary skill of the artisan. Furthermore, 85% is an endpoint of fatty acid soap where lauric acid is a preferred selection of fats disclosed in Kefauver and including said endpoint would have been within the skill of the artisan, absent a showing to the contrary.
“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).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
With respect to the TAXT reading of the billets, Kefauver et al teach the preferred fats and synthetic surfactants within the broad proportions as claimed, therefore in the absence of a showing to the contrary, one skilled would have expected similar characteristics from the same or similar bar given the same or similar compositions of the prior art.
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Response to Arguments
Applicant's arguments filed 10-20-2025 have been fully considered but they are not persuasive.
Applicant argues the prior art of record, Kefauver et al teaches away from 80 to 85% lauric acid in the fatty acid soap, fatty acid compositions.
The examiner directs applicants attention above, where lauric acids are found in the soap mixture from 60 to 85 parts tailored fatty acid soap, 1 to 15 parts free fatty acids; from 8 parts to 15 parts synthetic surfactant with lauric acid being 2:1 over oleic (claim 4). Optimizing the amounts to reach 85% is within the level of the skill artisan in in the absence of criticality commensurate in scope with the claimed invention, as said proportions are outside the rage but said lauric acid is a result effective variable where lauric acids are required and claimed as the dominant fatty acid within said free and soap products.
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)
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)
Conclusion
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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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761