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 the Claims
Claims 49-68 are pending and under current examination.
Withdrawn Claim Rejections
Applicant’s amendments to the claims filed 10/14/2025 have necessitated the new grounds of rejection.
All rejections not reiterated have been withdrawn.
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 49-68 are rejected under 35 U.S.C. 103 as being unpatentable over Landa (U.S. Patent No. 7,816,310, issue date: 10/19/2010).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 49, Landa teaches a personal care composition that includes hydroxyalkylurea in combination with other moisturizing agents (col. 1 lines 50-51). The moisturizing agents may include citric acid (col. 4 line 16). When the hydroxyalkylurea is used in combination with a moisturizing agent, the ratio of hydroxyalkylurea to moisturizing agent may be in a ratio of 0.5:15.0 to 15.0:0.05 (col. 5 line 19). The moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, unsaturated fatty acids and their derivatives, and silicones (col. 4 lines 2-4). The personal care composition may also include a solvent (col. 4 line 34). The personal care composition can include hair conditioners and cream rinses, shampoos, hair styling products, and anti-frizz, volumizing, and bath and shower products (col. 5 lines 49-53). The Examiner considers the term “anti-frizz” to read on the “curl definition” limitation of the instant claim. Landa also teaches a curl defining cream with a final pH in the range of 4.0-5.0 (col. 16, Example 14).
Regarding claims 50 and 59, Landa teaches that when the hydroxyalkylurea is used in combination with a moisturizing agent, the ratio of hydroxyalkylurea to moisturizing agent may be in a ratio of 0.5:15.0 to 15.0:0.05 (col. 5 line 19).
Regarding claim 51, Landa teaches that the moisturizing agent is present in an amount of from about 0.1 to about 10% by weight (col. 5 line 7).
Regarding claim 52, Landa teaches that the composition may include N-2-hydroxyethylurea as the hydroxyalkylurea present in the composition (col. 3 line 57).
Regarding claim 53, Landa teaches that the hydroxyalkylurea of the invention is present in an amount of from about 0.25 to about 15% by weight of the personal care composition (col. 4 line 59).
Regarding claims 54 and 60, Landa teaches that the ratio of hydroxyalkylurea to moisturizing agent may be in a ratio of 0.5:15.0 to 15.0:0.05 (col. 5 line 19).
Regarding claim 55, Landa teaches that the moisturizing agent may include silicones (col. 4 line 4). Because silicones are not required by the disclosure of Landa, the Examiner considers the personal care composition of Landa to read on the “free of silicone compounds” limitation of the instant claim.
Regarding claim 56, Landa teaches that the moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, and unsaturated fatty acids and their derivatives (col. 4 lines 2-4).
Regarding claim 57, Landa teaches that the personal care composition may include a surfactant (col. 4 line 36) and defines the term surfactant to include cationic surfactants (col. 2 line 64).
Regarding claim 58, Landa teaches that the moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, unsaturated fatty acids and their derivatives, and silicones (col. 4 lines 2-4). The moisturizing agent is present in an amount of from about 0.1 to about 10% by weight (col. 5 line 7).
Regarding claim 61, Landa teaches that the moisturizing agents may include polyols (col. 4 line 7).
Regarding claim 62, Landa teaches that the personal care composition may include emulsifiers, surfactants, thickeners, moisturizers, and emollients (col. 4 lines 32-39). Landa defines the term surfactant to include cationic surfactants (col. 2 line 64).
Regarding claim 63, Landa teaches that the moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, and unsaturated fatty acids and their derivatives (col. 4 lines 2-4).
Regarding claim 64, Landa teaches a personal care composition that includes hydroxyalkylurea in combination with other moisturizing agents (col. 1 lines 50-51). The moisturizing agents may include citric acid (col. 4 line 16). When the hydroxyalkylurea is used in combination with a moisturizing agent, the ratio of hydroxyalkylurea to moisturizing agent may be in a ratio of 0.5:15.0 to 15.0:0.05 (col. 5 line 19). The moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, unsaturated fatty acids and their derivatives, and silicones (col. 4 lines 2-4). The personal care composition may also include a solvent (col. 4 line 34). The moisturizing agent is present in an amount of from about 0.1 to about 10% by weight (col. 5 line 7) and the hydroxyalkylurea of the invention is present in an amount of from about 0.25 to about 15% by weight of the personal care composition (col. 4 line 59). The personal care composition can include hair conditioners and cream rinses, shampoos, hair styling products, and anti-frizz, volumizing, and bath and shower products (col. 5 lines 49-53). The Examiner considers the term “anti-frizz” to read on the “curl definition” limitation of the instant claim. Landa also teaches a curl defining cream that utilizes water as a solvent with a final pH in the range of 4.0-5.0 (col. 15-16, Example 14).
Regarding claim 65, Landa teaches that the moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, and unsaturated fatty acids and their derivatives (col. 4 lines 2-4).
Regarding claim 66, Landa teaches that the composition may include N-2-hydroxyethylurea as the hydroxyalkylurea present in the composition (col. 3 line 57).
Regarding claim 67, Landa teaches that the personal care composition may include emulsifiers, surfactants, thickeners, moisturizers, emollients, and vitamins (col. 4 lines 32-39). Landa defines the term surfactant to include cationic surfactants (col. 2 line 64).
Regarding claim 68, Landa teaches the relevant limitations of claim 49 above. Landa also teaches that the terms “hair lotion” and “hair cream” includes compositions that are applied to hair to provide a cosmetic benefit (col. 3 lines 8-13).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 49-68, Landa does not teach a single embodiment or example meeting all limitations of the invention of claims 49-68.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 49-68, within the broader scope of Landa all of the limitations of the invention of claims 49-68 are met. It would have been prima facie obvious for one having ordinary skill in the art to choose the limitations in the instant claims from those disclosed by Landa and arrive at this conclusion because such was contemplated by Landa.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the rejection of claims 49-67 over Anderson as evidenced by Nakata and the rejection of claim 68 over TooCoolForSchool have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
On page 11, Applicant argues that the combination of citric acid and urea compounds in the weight ratios as claimed unexpectedly provide significantly improved curl definition and elongation, as well as other attributes such as curl hold, smoothness, frizz control, and manageability to the curly hair. This is not found persuasive. Please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The results presented in the specification are not unexpected or unobvious because Landa, as described in the obviousness rejection above, teaches a personal care composition that may contain citric acid and a hydroxyalkylurea compound (col. 1 lines 50-51 and col. 4 line 16) in a weight ratio that falls within the range embraced by the instant claims (col. 5 line 19). Landa teaches that the personal care composition can include hair conditioners and cream rinses, shampoos, hair styling products, and anti-frizz, volumizing, and bath and shower products (col. 5 lines 49-53). The Examiner considers the term “anti-frizz” to read on the “curl definition” limitation of the instant claims. Thus, the unexpected results presented in the instant specification are not unexpected or unobvious.
Differences are of both practical and statistical significance: The differences described in the instant specification amount to elongation of curls and improved curl definition. Thus, the differences are of a practical significance. However, images in Figures 1 and 2 show only a qualitative elongation of the curls and curl definition and provide no numerical data detailing the curl elongation or improved frizz control. Thus, the differences are not of statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The unexpected properties amount to curl elongation and improved curl definition rendered by the citric acid and urea present in the composition. Thus, the unexpected properties are commensurate in scope with the claims.
The evidence of unexpected results presented in the instant specification is not unexpected or unobvious and provides no statistical significance. Thus, the Applicant’s argument of unexpected results is not 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 49-57, 59, 60, 62, 63 and 68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,268,767.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘767 patent embrace a composition for treating hair comprising citric acid, at least one urea compound, at least one solvent and at least one component chosen from silicone compounds, non-silicon fatty compounds, thickening agents, cationic surfactants, or combinations thereof. The pH is less than 7 and the weight ratio of the total amount of citric acid to the total amount of urea ranges from about 1:1 to about 1:0.05. The mole ratio of citric acid to urea compounds ranges from about 0.4:1 to about 3:1. The amount of citric acid ranges from about 0.1% to about 50% by weight, relative to the total weight of the composition and the total amount of urea compounds ranges from about 0.1% to about 20% by weight relative to the total weight of the composition. The urea compound is chosen from urea, dimethyl urea, hydroxyethyl urea, or combinations of two or more thereof. The claims of the ‘767 patent also teach a method for treating hair comprising applying to the hair a composition comprising a combination of citric acid and at least one urea compound, at least one solvent and at least one additional component chosen from silicone compounds and non-silicone fatty compounds. The weight ratio of total citric acid to total urea in the method may range from 1:1 to 1:0.05.
The claims of the ‘767 patent do not teach the specific weight ratio of urea to citric acid or the weight percentage range of citric acid as embraced by the instant claims. It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight ratio of citric acid to urea in the composition embraced the claims of the ‘767 patent to match the range of the instant claim. One of ordinary skill would have been motivated to adjust the weight ratio of citric acid to urea in the composition in order to optimize the desired properties of the composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the composition embraced by the claims of the ‘767 patent significantly overlap with the range embraced by the instant claims. See MPEP 2144.05.
Claims 58, 61 and 64-67 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,268,767 as applied to claims 49-57, 59, 60, 62, 63 and 68 above, and further in view of Anderson (U.S. Patent No. 11,191,264, issue date: 12/7/2021, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘767 patent teach the relevant limitations as described above.
The claims of the ‘767 patent do not embrace a polyol or water within the composition. However, these deficiencies are cured by Anderson. Anderson teaches a solid rinsing, cleaning, and/or sanitizing composition that employs a matrix of urea and an acid (col. 14 line 2). The acid may include citric acid (col. 14 line 11). Anderson also teaches that the composition may include a polyethylene glycol compound of the general formula (H(OCH2CH2)nOH, where n is greater than 15 (col. 13 line 38). Furthermore, Anderson teaches that a solution may be prepared from the concentrate by diluting the concentrate with water at a dilution ratio that provides a use solution having desired rinsing, cleaning, and sanitizing properties (col. 33 line 28).
It would have been prima facie obvious to one of ordinary skill in the art of filing to include a polyol in the composition embraced by the claims of the ‘767 patent. One would have understood in view of Anderson that that a polyol may be included as a solidification agent in the composition. One of ordinary skill would have been motivated to include a polyol in the composition embraced by the claims of the ‘767 patent in order to add solidification properties to the composition. The artisan of ordinary skill would have had reasonable expectation of success because Anderson teaches that a polyol may be included in the composition.
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing that the composition embraced by the claims of the ‘767 patent may include water. One would have understood in view of Anderson that the solid compositions may be dissolved in water to create a working solution. It would have been obvious that this would create a composition that includes water along with the other limitations rendered obvious by Anderson. One of ordinary skill would have been motivated to include water in the composition embraced by the claims of the ‘767 patent in order to render a solution having desired rinsing, cleaning, and sanitizing properties (Anderson col. 33 line 28). The artisan of ordinary skill would have had reasonable expectation of success because Anderson teaches that the solid compositions may be diluted in water.
The claims of the ‘767 patent also do not teach a weight range of silicone compounds that may be present in the composition. However, this deficiency is cured by Anderson. Anderson teaches that silicones may be present in the composition in a concentration range from about 0.01-20wt% (col. 30 line 44). It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight percentage of silicone in the composition embraced by the claims of the ‘767 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the weight percentage of silicone in the composition in order to optimize the desired properties of the composition, such as foamability. The artisan of ordinary skill would have had reasonable expectation of success because the weight percentage of silicone in the composition embraced by Anderson encompasses the range of the instant claim. See MPEP 2144.05.
Claims 49-68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,083,207.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘207 patent embrace a cosmetic composition comprising 0.1 to about 25 wt.% of citric acid and 0.2 to 40 wt.% of hydroxyethyl urea, wherein the citric acid and hydroxyethyl urea are in a molar ratio of about 1:1 to 1:4. The composition contains at least 20wt% of water. The composition may also contain a fatty alcohol, fatty ester, fatty ether and a mixture thereof. The composition may also contain a silicone, a cationic surfactant, a thickening agent, a water-soluble solvent, and a polyol. The composition may be applied to the hair in a method for treating hair. Silicone may be present in a weight percentage of 0.1 to 10% by total weight of the composition.
The claims of the ‘207 patent do not teach the specific weight percentage range of urea embraced by the instant claims or the specific mole or weight ratio of citric acid and urea embraced by the instant claims. The claims of the ‘207 patent also do not teach a pH range for the composition.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight percentage of urea in the composition embraced by the claims of the ‘207 patent to match the range of the instant claim. One of ordinary skill would have been motivated to adjust the weight percentage of urea in the composition in order to optimize the desired properties of the composition, such as solidification. The artisan of ordinary skill would have had reasonable expectation of success because the weight percentage of urea in the composition embraced by the claims of the ‘207 patent has significant overlap with the range of the instant claims. See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight ratio of citric acid to urea in the composition embraced by the claims of the ‘207 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the weight ratio of citric acid to urea in the composition in order to optimize the desired properties of the composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the composition embraced by the claims of the ‘207 patent teaches a rage of weight percentages that have significant overlap to those embraced by the instant claims. See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the molar ratio of citric acid to urea in the composition embraced by the claims of the ‘207 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the molar ratio of citric acid in the composition in order to optimize the desired properties of the solid composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the molar ratio of citric acid to urea in the composition embraced by the claims of the ‘207 patent has significant overlap to those embraced by the instant claims . See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to adjust the pH of the composition embraced by the claims of the ‘207 patent to a level less than about 7. One of ordinary skill would have been motivated to adjust the pH of the composition in order to adjust the properties of the composition for the intended hair styling purpose or hair type. The artisan of ordinary skill would have had reasonable expectation of success because the claims of the ‘207 patent teaches the inclusion of citric acid, a buffering agent. See MPEP 2144.05.
Claims 49-57 and 69-68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,115,239.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘239 patent embrace a cosmetic composition comprising a polyol, one or more monoalcohols, a cationic surfactant, one or more fatty compounds and 1-15% by weight of the total weight of the composition a combination of citric acid and urea. The weight ratio of citric acid to urea is about 10:1 to about 1:10. The citric acid and urea compound are in a mole ratio of about 10:0.5 to 0.5 to 10. The urea compound is dimethyl urea, hydroxyethyl urea, urea or mixtures thereof. The fatty compound may be chosen from a fatty alcohol, fatty ester, fatty ether or mixtures. The claims of the ‘239 patent also embrace a method of treating hair comprising applying the cosmetic composition to hair. The composition also comprises lees that 5wt. % of water.
The claims of the ‘239 patent do not teach the specific weight percentage range of urea embraced by the instant claims or the specific mole or weight ratio of citric acid and urea embraced by the instant claims. The claims of the ‘239 patent also do not teach a pH range for the composition.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight ratio of citric acid to urea in the composition embraced by the claims of the ‘239 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the weight ratio of citric acid to urea in the composition in order to optimize the desired properties of the composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the composition embraced by the claims of the ‘239 patent teaches a rage of weight percentages that have significant overlap to those embraced by the instant claims. See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the molar ratio of citric acid to urea in the composition embraced by the claims of the ‘239 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the molar ratio of citric acid in the composition in order to optimize the desired properties of the solid composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the molar ratio of citric acid to urea in the composition embraced by the claims of the ‘239 patent has significant overlap to those embraced by the instant claims . See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to adjust the pH of the composition embraced by the claims of the ‘239 patent to a level less than about 7. One of ordinary skill would have been motivated to adjust the pH of the composition in order to adjust the properties of the composition for the intended hair styling purpose or hair type. The artisan of ordinary skill would have had reasonable expectation of success because the claims of the ‘239 patent teaches the inclusion of citric acid, a buffering agent. See MPEP 2144.05.
Claim 58 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,115,239 as applied to claims 49-57 and 69-68 above, and further in view of Anderson (U.S. Patent No. 11,191,264, issue date: 12/7/2021, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘239 patent teach the relevant limitations as described above. The claims of the ‘239 patent do not teach the inclusion of a silicone or a weight percentage range of silicone that may be present in the composition. However, this deficiency is cured by Anderson. Anderson teaches a solid rinsing, cleaning, and/or sanitizing composition that employs a matrix of urea and an acid (col. 14 line 2). The acid may include citric acid (col. 14 line 11). Anderson also teaches that silicones may be present in the composition as a defoaming agent in a concentration range from about 0.01-20wt% (col. 30 line 44).
It would have been prima facie obvious to one of ordinary skill in the art of filing to include a silicone in the composition embraced by the claims of the ‘239 patent. One would have understood in view of Anderson that silicones may be present in the cleaning composition. It would have been obvious that the composition embraced by the claims of the ‘239 patent may also contain a silicone. One of ordinary skill in the art of filing would have been motivated to include a silicone in the composition in order to impart its defoaming properties to the composition. The artisan of ordinary skill would have had reasonable expectation of success because Anderson teaches that silicones may be present in the cleaning composition.
Furthermore, it would merely be a matter of routine for one having ordinary skill in the art to optimize the weight percentage of silicone in the composition embraced by the claims of the ‘239 patent match the range of the instant claims. One of ordinary skill would have been motivated to adjust the weight percentage of silicone in the composition in order to optimize the desired properties of the composition, such as foamability. The artisan of ordinary skill would have had reasonable expectation of success because the weight percentage of silicone in the composition embraced by Anderson encompasses the range of the instant claims. See MPEP 2144.05.
Response to Arguments
Applicants’ request for the double patenting rejections of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejection will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejection.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ELIZABETH ANNE MEYERS/Examiner, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614