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
Receipt of Remarks/Amendments filed on 09/22/2025 is acknowledged. The Declaration is also acknowledged. Claims 1, 3, 5, 7-8, 10, 12-13, 18-22 are amended and claim 23 is new. Claims 4 and 14-15 are canceled. Claims 1-3, 5-13, and 16-23 are currently pending and are examined on the merits herein.
Priority
The instant application filed 05/24/2023, is a 371 filing of PCT/EP2021/081013, filed 11/09/2021, which claims foreign priority to EP21151719.8, filed 01/15/2021 and PCT/CN2020/133390, filed 12/02/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/24/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Objections/Rejections
Claims 3-4, 7, 10, 18-20, and 22 were objected to for informalities. Applicant’s amendments to the claims along with the cancelation of claim 4 have overcome the objections and the objections are withdrawn.
Claims 1-13 and 16-22 were rejected under 35 USC 112(b). Applicants’ amendments to claims 1, 5, and 8 have overcome the rejection and the rejection is withdrawn.
The following rejections are necessitated by amendment:
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.
Claim 13 is 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 13 recites wherein the “composition is pumped out as a foam”. It is unclear what the composition is being pumped out of since the parent claim is drawn to a composition rather than a device. As such, this limitation lacks antecedent basis since there is nothing previously defined which can perform said pumping. For the sake of compact prosecution, claim 13 will be interpreted as the composition having foaming properties.
Claim 23 recites wherein the “composition is pumped out as a foam”. As discussed above, it is unclear what the composition is being pumped out of in this situation since the claim is drawn to a composition and not a device. Claim 23 further recites “the composition results in reduced dried residue when pumped out as a foam from an automatic dispensing device as compared to a composition comprising glycinate surfactant”. This limitation is unclear given that the instant composition comprises a glycinate surfactant. How can the instant composition result in a “reduced dried reside” when being compared to a composition that reads on itself?
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.
Claims 1-3, 5-13 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Um Taehee (KR 2020-0014154 A, 02/10/2020, IP.com translation used, on record), hereinafter Taehee as evidenced by The National Center for Biotechnology Information (2025). PubChem Compound Summary for CID 168006456, Potassium Cocoyl Glycinate. Retrieved June 17, 2025, (on record).
Taehee teaches a skin external composition for moisturizing and whitening facial skin (title). The cosmetic composition is of the foam type (p. 2, para. 7). Specifically, the composition comprises purified water (73.7 or 71.7% w/w); glycerin (6.09% w/w); decyl glucoside (0.825% w/w); potassium cocoyl glycinate (0.750% w/w); phenoxyethanol (0.204% w/w); and other ingredients (Tables 1-3). Potassium cocoyl glycinate reads on the glycinate surfactant of claim 1, while its amount (0.750% w/w) reads on claims 3 and 18. Potassium cocoyl glycinate has the following structure as evidenced by PubChem:
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, which further reads on claim 2. The glycerin of Taehee reads on the polyol of claims 1, 6, and 20. Decyl glucoside, which is a C10 alkyl glucoside as evidenced by its name, reads on the nonionic surfactant comprising alkyl glucoside of claims 1, 9, and 23, while its amount (0.825% w/w) reads on claim 10. The composition also comprises phenoxyethanol as recited in instant claims 1 and 23. Examiner calculates that the ratio of glycerin to the potassium cocoyl glycinate (i.e., polyol to the glycinate surfactant) is 8.12:1 which reads on the ratio of claims 1, 5, and 23. The ratio of the potassium cocoyl glycinate to the decyl glucoside (i.e., the glycinate surfactant to the nonionic surfactant) is 0.909 which falls within the weight ratio of claims 11, 21, and 23 (i.e., 0.125-8 in claims 11 and 23; 0.5-2 in claim 21). The composition of Taehee comprises either 73.7 or 71.7% w/w of water, both of which fall within the ranges of claims 12 and 22.
The teachings of Taehee differ from that of the instantly claimed invention in that Taehee does not teach wherein the total amount of the glycinate surfactant and alkyl glucoside is in the range of claims 1 and 23 nor the amount of polyol as recited in claims 1, 7, and 23. Lastly, Taehee does not teach the instantly claimed amounts of glycinate surfactant and nonionic surfactant alone as defined in claims 10, 19-20, and 23.
Regarding the total amount of the glycinate surfactant and alkyl glucoside, the glycinate and decyl glucoside of Taehee total to 1.575% w/w which differs from the amounts recited in instant claims 1 and 23. However, it is well within the abilities of an ordinary artisan to optimize the total amount of surfactant in the composition depending on the desired properties of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed amount of glycinate and alkyl glucoside together through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the amount of polyol in the composition, Taehee teaches 6.09% w/w which differs from the ranges of instant claims 1, 7, and 23. While 6.09% w/w is not within the instantly claimed ranges it is well within the abilities of an ordinary artisan to optimize the amount of glycerin in the composition depending on the desired properties of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges of polyol, specifically glycerin, through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Regarding claim 8, even if the amount of glycerin was adjusted to between 10 and 40% or 16 and 30%, the ratio of glycerin to the potassium cocoyl surfactant of Taehee (i.e., 0.75% w/w) would still be above 6.3:1 (i.e., 13.3:1 at the very least). As such, the amounts and ratios of polyol in claims 1, 7-8, and 23 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding the use of the instant invention as a skin cleansing composition as recited in claims 1 and 23, this is simply a statement of intended use. A statement of intended use does not qualify or distinguish the structural product claimed over the reference. In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The manner or method in which a product is to be utilized is not germane to the issue of patentability of the machine itself. See In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967); In re Yanush, 477 F.2d, 958, 959, 177 USPQ 705, 706 (CCPA 1973). Furthermore, the composition made obvious by Taehee comprises every component of claim 1 as outlined above. If the composition made obvious by the prior art above is identical to the composition claimed, then the composition must necessarily be capable of performing the same function (i.e., cleansing). It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
As best interpreted given the 112(b) issue above, Taehee teaches a skin external composition of the foam type, which reads on claims 13 and 23.
Regarding the amount of nonionic surfactant, the 0.815% w/w of decyl glucoside does not fall within the instantly claimed ranges of claims 10, 20, and 23. However, it is well within the abilities of an ordinary artisan to optimize the amount of nonionic surfactant in the composition depending on the desired properties of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of a nonionic surfactant through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the amount of glycinate surfactant as recited in claim 19, the 0.5% w/w of potassium cocoyl glycinate does not fall within the instantly claimed range of a glycinate surfactant. However, it is well within the abilities of an ordinary artisan to optimize the amount of glycinate surfactant in the composition depending on the desired properties of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of a glycinate surfactant through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-3, 5-13 and 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Taehee as applied to claims 1-3, 5-13 and 18-22 above, and further in view of Lui, J., et al. (WO 2019127089 A1, 07/04/2019, IDS dated 05/24/2023), hereinafter Lui as evidenced by Chemical Book (2024). Sodium Cocoyl Glycinate Overview. Retrieved June 17, 2025, (on record).
The teachings of Taehee are discussed above.
The teachings of Taehee differ from that of the instantly claimed invention in that Taehee does not teach wherein the glycinate surfactant comprises C12-C20 alkyl or acyl glycinates as recited in claims 16-17 and 23.
Lui teaches a composition for cleansing and/or exfoliating keratin materials, specifically skin (abstract; p. 1, lines 3-4). The composition presents a very good foaming property and is mild and gentle to the keratin materials, in particular the skin (abstract). The composition comprises at least one C2-C6 polyol and at least one glycinate surfactant (abstract). The polyol is preferably glycerin (p. 4, line 4; example 1). Examples of the glycinate surfactant include palmitoyl glycinate, sodium lauroyl glycinate, sodium cocoyl glycinate, sodium myristoyl glycinate, potassium lauroyl glycinate, potassium cocoyl glycinate, and mixtures thereof (p. 5, lines 9-11). Preferably the glycinate surfactant is sodium cocoyl glycinate (p. 5, lines 23-24; example 1), which has the following formula as evidenced by Chemical Book:
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It would have been obvious to combine the compositions of Taehee and Lui before the effective filing date of the claimed invention by replacing the glycinate surfactant of Taehee with the glycinate surfactant of Lui to yield the instant invention. It would have been prima facie obvious to replace the potassium cocoyl glycinate of Taehee with the sodium cocoyl glycinate of Lui since it is the simple substitution of one known element for another (i.e., a glycinate surfactant) to obtain predictable results. One of ordinary skill in the art would have had a reasonable expectation of success in substituting potassium cocoyl glycinate with sodium cocoyl glycinate since both are used as glycinate surfactants in cosmetic compositions also comprising glycerin, which are applied to skin and possess foaming properties. Sodium cocoyl glycinate reads on the glycinate surfactant of claims 16-17 and 23 as evidenced by its structure above.
Regarding the properties recited in (vii) of claim 23, because the composition made obvious by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Response to Arguments and Declaration
1. Applicant's arguments and Declaration filed 09/22/2025 have been fully considered but they are not persuasive:
(1) Applicant argues that it would not have been obvious to optimize the amount of polyol taught in Um (i.e., 6.09 wt%) to be more than 10 wt% as instantly claimed. Applicant points to Samples 2, 3, 4, and 5 of Ex. 1 in the instant specification which show that when glycerin is included at a level higher than 10 wt% it results in less residue (p. 8-9 of Remarks).
This argument is not found convincing since other Samples in Ex. 1 of the instant specification (i.e., C, D, E, and F) also contain 10 wt% or more of glycerin and demonstrate obvious (4) and a lot (5) of residue. As such, there are variables other than the amount of polyol which affect residue. Specifically, the experiment of Example 1 is relied on for demonstrating the effect of the ratio of polyol to glycinate surfactant on residue formation. As discussed above, Um teaches the instantly claimed ratios of polyol to glycinate surfactant.
(2) Applicant argues that the total amount of the glycinate surfactant and the alkyl glucoside is critical and would therefore not be obvious to optimize. Applicant has submitted a Declaration demonstrating that compositions not made according to the claimed invention (i.e., Sample G) do not pose a reside problem. Specifically, Sample G (i.e., <2% surfactant) results in rare residue (1), but a composition according to the invention (i.e. >2% surfactant) faces challenges in residue which are unexpectedly reduced when making compositions according to the invention (p. 9 of Remarks). The Declaration indicates a score of 1 (rare residue) for Sample G which comprises the same total amount of surfactant as Um and provides Figure 1 which is meant to show the before and after of residue testing for Sample G. Overall, Applicant argues that the total amount of surfactant is critical because total surfactant levels lower than 2% (i.e., prior art) do not pose a residue problem while surfactant levels higher than 2% do, which are unexpectedly reduced by making compositions according to the instant invention.
First, Applicant’s argument is confusing since it indicates that increasing the total surfactant level actually results in worse residue. Applicant’s arguments and evidence are not found convincing for the following reasons: 1) an affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). In this case, Applicant has only provided data for a composition correlating to the prior art in terms of total surfactant level. There is no direct comparison between the prior art and the instant invention and the only variable analyzed is the total surfactant level. As demonstrated by the instant specification and Applicant’s other arguments, total surfactant level is not the only variable when it comes to residue reduction. 2) Applicant asserts that the criticality of the total surfactant level is because higher surfactant levels as instantly claimed are unexpectedly reduced by making the composition according to the pending claims. This argument does not indicate the criticality of the total surfactant level but rather the criticality of whatever it is that “unexpectedly reduces” residue issues. Applicant has not specifically defined what it is that allows for this unexpected residue reduction, but based on Ex. 1 of the instant specification, Examiner believes it to be the ratio of the glycerin to the glycinate surfactant (See p. 8, lines 5-6 of instant specification). However, as discussed above, Um teaches the instantly claimed ratio. As such, Applicant has not shown that there is an unexpected improvement that results solely from increasing the total surfactant level to above 2%.
(3) Lastly Applicant argues that the present application is directed to a personal care composition desirable for use in an automatic dispensing device, where the personal care composition is capable of generating less residue when pumped out as a foam and the foam is dried thereby reducing the risk of a blocked nozzle. Applicant has unexpectedly discovered that the composition of the invention reduces the risk of clocking a nozzle of an automatic dispensing device, which is not taught by the prior art.
In response to this argument, the use of the composition in an automatic dispensing device is simply a statement of intended use which is given no patentable weight. A statement of intended use does not qualify or distinguish the structural product claimed over the reference. In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The manner or method in which a product is to be utilized is not germane to the issue of patentability of the product itself. See In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967); In re Yanush, 477 F.2d, 958, 959, 177 USPQ 705, 706 (CCPA 1973). Additionally, the claims are not drawn to a device, rather they are drawn to the composition itself. The composition is made obvious by the prior art in its entirety and therefore will possess the same properties as the instant composition. When the composition made obvious by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Conclusion
No claims are allowed.
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 SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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, Sue X Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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