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 . Claims included in prosecution are claims 30-48.
Previous Rejections
Applicants' arguments, filed Sep. 30, 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Response to Restriction Requirement
Applicant’s election of Group I, claims 30-48, in the reply filed on Sep. 30, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 49 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 103 (Maintained)
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.
1. Claims 30-33 and 35-48 are rejected under 35 U.S.C. 103 as being unpatentable over Ceballos et al. (US 2019/0365619, Dec. 5, 2019) (hereinafter Ceballos).
Ceballos teaches an anti-dandruff cleansing composition comprising: (a) salicylic acid; (b) a surfactant system comprising: (i) one or more non-sulfate anionic surfactants; (ii) one or more amphoteric surfactants (satisfies component (a) of claim 30 & 45); (iii) at least 10 wt. % of a plurality of nonionic surfactants comprising: (iii-a) one or more alkyl polyglucosides (satisfies claim 43); and (iii-b) one or more amide surfactants; and (c) water (Abstract). The composition includes about 15 to about 45 wt. % of the surfactant system (¶ [0007 & 0009]). Said surfactant system comprises: about 1 to about 15 wt. % of the one or more non-sulfate anionic surfactants; about 1 to about 15 wt.% of the one or more amphoteric surfactants; and at least 10 wt. % of the plurality of nonionic surfactants comprising about 1 to about 15 wt.% of the one or more alkyl polyglucosides (¶ [0009-0013]). Suitable non-sulfate anionic surfactants include alkyl sulfosuccinates, acyl isethionates, alkoxylated monoacids, acyl amino acids such as acyl taurates, salts thereof, and a mixture thereof (satisfies component (b) of claim 30 & 45)) (¶ [0017]). The anti-dandruff cleansing compositions may also include one or more conditioning agents and thickening agents (¶ [0022]). Suitable conditioning agents include cationic polymers and silicones (satisfies component (c) of claim 30 & 45) (¶ [0022]). The total amount of conditioning agents in the anti-dandruff cleansing compositions can vary but is typically from about 0.1 to about 10 wt.% (¶ [0142]). The composition may also be essentially free of sulfate-based surfactants (satisfies sulfate free of claim 30 & 45) (¶ [0023]). An anti-dandruff shampoo composition comprises sodium isethionate, sodium cocoyl isethionate, coco-betaine and/or cocoamidopropyl betaine, glycerin, sodium chloride (satisfies component (d) of the instant claims) and water (Example 1).
The prior art is not anticipatory insofar as this combination must be selected from different lists/locations in the reference. Although, Ceballos does not exemplify a composition comprising a combination of anionic surfactant system comprising acyl taurate, acyl isethionate and an anionic surfactant of iii. It does disclose that the anionic surfactants may be used in mixtures and include alkyl sulfosuccinates, acyl isethionates, alkoxylated monoacids, acyl amino acids such as acyl taurates, salts thereof, and a mixture thereof. Therefore, it would have been obvious to one of ordinary skill in the art prior to filing the instant application to have used a mixture of alkyl sulfosuccinates, acyl isethionates, alkoxylated monoacids, and acyl taurates in the disclosed examples because Ceballos suggests using these surfactants in mixtures and since all the claimed elements were known in the prior art. One skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claim 30 reciting amounts of the amphoteric surfactant, acyl taurate, acyl isethionate, and the anionic surfactants, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Ceballos discloses about 15 to about 45% of a surfactant system comprising about 1% to about 15% of one or more non-sulfate anionic surfactants such as acyl taurates, acyl isethionates; and about 1 to about 15 % one or more amphoteric surfactants. Thus, the composition comprises about 0.15 to about 6.75% acyl taurates and acyl isethionates, and 0.15 to about 6.75% amphoteric surfactant. Thus, the claimed amounts would have been obvious since the claimed ranges overlap with the ranges disclosed in the prior art.
In regards to claims 30 and 31 reciting weight ratios of the anionic surfactant system to sodium chloride, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Ceballos discloses about 15 to about 45% of a surfactant system comprising about 1% to about 15% of one or more non-sulfate anionic surfactants such as acyl taurates, acyl isethionates, and alkoxylated monoacids. Thus, the amount of non-sulfate anionic surfactants (i.e. claimed (b) anionic surfactant system) in the composition may be from about 0.15% to about 6.75%. Ceballos also uses 1.3 to 1.5% sodium chloride in the disclosed examples. The claimed weight ratios would have been obvious from one selecting amounts of one or more anionic surfactants and sodium chloride from these ranges and arriving at a weight ratio that overlaps with the claimed ranges.
Regarding claims 32-33, and 45, as discussed above, the anti-dandruff cleansing compositions may include one or more conditioning agents such as cationic polymers and silicones (¶ [0022]). The total amount of conditioning agents in the anti-dandruff cleansing compositions can vary but is typically from about 0.1 to about 10 wt.% (¶ [0142]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As such, the claimed amounts of cationic polymers (e.g. about 0.01% to about 10%) and silicone compounds (e.g. less than about 2%) would have been obvious since the amounts selected for each from prior art range (e.g. about 0.1 to about 10%) overlaps with the claimed range.
Regarding claims 35, 36 and 46, Ceballos further discloses wherein suitable amphoteric surfactants include betaines (¶ [0092]). Particularly useful betaines include coco betaine, cocamidopropyl betaine, lauryl betaine (i.e. C12 alkylbetaine), laurylhydroxy sulfobetaine, lauryldimethyl betaine, behenyl betaine, capryl/capramidopropyl betaine, stearyl betaine, and mixtures thereof.
Regarding claim 37, Ceballos further discloses wherein suitable acyl taurates include those of formula (IX), wherein R is H or an alkyl chain having 1-24 carbon atoms, said chain being saturated or unsaturated, linear or branched (¶ [0080-0081]).
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Regarding claim 38, Ceballos further discloses that examples of acyl taurates include sodium methyl cocoyl taurate (¶ [0081]).
Regarding claim 39, Ceballos further discloses that suitable alkoxylated monoacids include compounds corresponding to formula (VII):
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wherein: R is a hydrocarbon radical containing from about 6 to about 40 carbon atoms; u, v and w, independently of one another, represent numbers of from 0 to 60; x, y and z, independently of one another, represent numbers of from 0 to 13; R' represents hydrogen or alkyl, and the sum of x+y+z>0 (¶ [0065-0071]).
Regarding claim 40, Ceballos further discloses that examples of alkoxylated monoacids include coceth-7 carboxylic acid, laureth-4 carboxylic acid, laureth-5 carboxylic acid, laureth-6 carboxylic acid, and mixtures thereof (¶ [0074]).
Regarding claim 41, Ceballos further discloses that suitable acyl isethionates include those of the formulas (V) and (VI):
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wherein R is H or an alkyl chain having 1-24 carbon atoms, said chain being saturated or unsaturated, linear or branched (¶ [0048-0049]).
Regarding claim 42, Ceballos further discloses that examples of acyl isethionates include sodium cocoyl isethionate, sodium lauroyl methyl isethionate, and sodium cocoyl methyl isethionate (i.e., claimed acyl isethionates) (¶ [0049]).
Regarding claims 44 and 47, Ceballos further discloses that the anti-dandruff cleansing compositions do not require silicones and thus, may be free or essentially free of silicones (¶ [0023]).
Regarding claim 45 reciting the amount of amphoteric surfactant, acyl taurate, acyl isethionate, and alkoxylated monoacid, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Ceballos discloses about 15 to about 45% of a surfactant system comprising about 1% to about 15% of one or more non-sulfate anionic surfactants such as acyl taurates, acyl isethionates, and alkoxylated monoacids; and about 1 to about 15 % one or more amphoteric surfactants. Thus, the composition comprises about 0.15 to about 6.75% acyl taurates, acyl isethionates, and alkoxylated monoacids, and 0.15 to about 6.75% amphoteric surfactant. Thus, the claimed amounts would have been obvious since the claimed ranges overlaps with the prior art ranges.
In regards to claim 45 and 48 reciting wherein the weight ratio of the anionic surfactant system to sodium chloride ranges from about 2:1 to about 10:1 and from about 4:1 to about 8:1, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Ceballos discloses about 15 to about 45% of a surfactant system comprising about 1% to about 15% of one or more non-sulfate anionic surfactants such as acyl taurates, acyl isethionates, and alkoxylated monoacids. Thus, the amount of non-sulfate anionic surfactants (i.e. claimed (b) anionic surfactant system) in the composition may be from about 0.15% to about 6.75%. Ceballos also uses 1.3 to 1.5% sodium chloride in the disclosed examples. The claimed weight ratio would have been obvious from one selecting amounts of one or more anionic surfactants and sodium chloride from these ranges and arriving at a weight ratio that overlaps with the claimed range.
2. Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Ceballos et al. (US 2019/0365619, Dec. 5, 2019) (hereinafter Ceballos) in view of Rughani et al. (US 2018/0280269, Oct. 4, 2018) (hereinafter Rughani), as evidenced by Adeline Chemicals (Sodium Cocoamphoacetate) (hereinafter Adeline Chemicals).
Ceballos is discussed above and differs from the instant claim insofar as it does not disclose the amphoteric surfactants comprise sodium cocoamphoacetate.
However, Rughani teaches of methods of treating hair which include cleansing hair with a shampoo (¶ [0033]). The composition may include one or more thickening agents including salts, such as sodium chloride (¶ [0152]). The thickening agents may be included in an amount from 0.1 to about 15 wt. % (¶ [0154]). The composition may also include amphoteric surfactants with the formula:
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wherein R10 is an alkyl group having 8-18 carbon atoms (satisfies formula II of claim 34) (¶ [0211]-[0213]). Suitable amphoteric surfactants include sodium cocoamphoacetate (¶ [0252]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Ceballos discloses wherein the composition comprises one or more amphoteric surfactants. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated sodium cocamphoacetate into the composition of Ceballos since it is a known and effective amphoteric surfactant for a hair composition as taught by Rughani.
In regards to the formula II in claim 34, as evidenced by Adeline Chemicals, sodium cocoamphoacetate has a structure substantially the same as the structure disclosed in of Rughani and includes a cationic counterion (1st page, figure 1).
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Response to Arguments
Applicant argues that a prima facie case of obviousness was not established with respect to the weight ratio of the anionic surfactant system to sodium chloride.
The Examiner does not find Applicant’s argument to be persuasive. The rejection is based on overlapping ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). The art discloses amounts whereby one of ordinary skill in the art would reasonably choose amounts within the overlap. This would result in an overlap in the claimed weight ratios. It is understood that a component must be a result effective variable in order to make a routine optimization argument. However, this is not the basis of the argument of record. The basis of the argument of record is that the claimed weight ratio would have been obvious from one selecting amounts of one or more non-sulfate anionic surfactants and sodium chloride from the ranges disclosed by the prior art and arriving at a weight ratio range that overlaps with the claimed range. Accordingly, the Examiner does not find Applicant’s argument to be persuasive.
Applicant further argues that the data shown in Examples 1-3 and Tables 1-3 demonstrate that compositions 1A-1F & 3A-3C are characterized by ease/ quickness in generating foam, good foam quality, and abundance despite the absence of sulfate based surfactants.
The Examiner does not find Applicant’s argument to be persuasive. The data provided in Examples 1-3 and Tables 1-3 do not appear to contain any data with which the degree of ease/quickness in generating foam, good foam quality (i.e., creaminess, lushness, and/or stability), or abundance may be determined. For example, with regards to the ease/quickness in generating foam, no data was included to show the times it took for compositions 1A-1F & 3A-3C to generate foam in comparison to comparative product C1. No quantitative data from testing “foam quality” was provided to support Applicant’s assertion of unexpected results. Also, no data concerning the height of foaming, for example, was included to support foam “abundance” of the examples were superior to that of the comparative example. Furthermore, no amounts were included for the ingredients in the comparative product C1 recited in Table 2. For instance, compositions 1A-1F & 3A-3C may have included higher amounts of different surfactants, which significantly aid in foaming, in comparison to the amount of surfactants in the comparative product C1. One of ordinary skill in the art would reasonably conclude that a higher amount of surfactant would more than likely affect the ease/quickness in generating foam, good foam quality, and abundance. Therefore, since the amount of surfactants in the comparative product is not known, one of ordinary skill in the art would not be able to properly ascertain how the comparative composition actually compares to the examples of the instant specification. Accordingly, the Examiner does not find Applicant’s argument to be persuasive.
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 30-48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 30-49 of copending Application No. 18/091,017 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite compositions for treating keratin materials comprising:(a) at least one amphoteric surfactant; (b) an anionic surfactant system comprising: i. at least one acyl taurate; ii. at least one acyl isethionate; and iii. at least one additional anionic surfactant chosen from alkoxylated monoacids, alkyl sulfosuccinates, alkyl ether sulfosuccinates, or mixtures thereof; (c) optionally at least one cationic compound; and (d) sodium chloride. The difference between the instant claims and the copending claims lies in that the copending claims recite different ranges for the weight ratio between the anionic surfactant system and the sodium chloride. However, the two inventions are not patentably distinct because it would have been obvious to have used the anionic surfactant system and sodium chloride ratio ranges recited in the copending claims since they overlap with those recited in 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
Applicant requested that the double patenting rejections recited above be held in abeyance until otherwise allowable subject matter is identified. Accordingly, the rejections are maintained.
Conclusion
Claims 30-48 are rejected.
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 Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frederick Krass can be reached on (571) 272-0580. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/FREDERICK F KRASS/Supervisory Patent Examiner, Art Unit 1612