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 05/11/2026 is acknowledged. Claims 1 and 4-5 are amended and claims 3 and 13-19 are canceled. Claims 8-12 remain withdrawn as being directed to a non-elected invention. Claims 1-2 and 4-7 are examined on the merits herein.
Priority
The instant application filed 04/11/2023, claims benefit to Provisional Application No. 63/329,749, filed 04/11/2022.
Withdrawn Objections/Rejections
Claims 5 and 17 were objected to because of informalities. Applicant’s amendment to claim 5 and cancellation of claim 17 have overcome the objection and the objection is withdrawn.
Claims 1-2, 7, 13-14, and 19 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brandt et al.. Applicant’s amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1, 7, 13, and 19 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allef et al.. Applicant’s amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1, 7, 13, and 19 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Norman et al.. Applicant’s amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1-2, 7, 13-14, and 19 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Durkee et al.. Applicant’s amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1, 7, 13, and 19 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hartung et al.. Applicant’s amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Claims 1, 7, 13, and 19 were rejected under 35 U.S.C. 102(a)(2) as being anticipated by Huang et al.. Applicant’s amendment to claim 1 has overcome the rejection and the rejection is withdrawn.
Any additional rejections of claims 3 and 13-19 are rendered moot due to Applicants cancellation of these claims.
The following grounds of rejection are necessitated by amendment:
Claim Rejections - 35 USC § 103
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.
1. Claims 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Brandt, K. D., et al. (US 20210371773 A1, 12/02/2021, on record), hereinafter Brandt.
Brandt discloses mixture composition comprising glucolipids with good ability to wash off skin and hair (abstract; [0015]).
Regarding claim 1: Brandt discloses cosmetic compositions which comprise cocamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, and sodium chloride ([0136], Ex. 38; [0184], Ex. 86). The shampoo of example formulation 38 further comprises sodium C14-C16 olefin sulfonate and sodium methyl cocoyl taurate ([0136]). Various other compositions of the invention, such as shampoos, shower gels, and micellar water, are taught to comprise disodium cocoamphodiacetate (Ex. 16; Ex. 20-22, Ex. 33; Ex. 113; Ex. 139). PEG-80 sorbitan laurate is further taught in a shampoo and bath composition of the invention (Ex. 7 and 98). Brandt teaches that compositions of the invention have a good ability to wash off skin and hair and that they provide a good skin feel during and after washing ([0015]-[0019]). As such, Brandt teaches a method of cleansing (i.e., washing) skin which necessarily comprises the step of topically applying the cosmetic composition as instantly claimed.
Regarding claim 2: The shampoo of example formulation 38 comprises (by weight): 7% of cocamidopropyl betainie, which falls within the instantly claimed range (2-8%); 0.1% of glycerin; 1% of PEG-120 methyl glucose dioleate, which falls within the instantly claimed range (0.5-3%); and 2% of sodium chloride, which reads on the instantly claimed range (0.4-2%). The soap of example formulation 86, which also comprises cocoamidopeopyl betaine, glycerin, PEG-120 methyl glycose dioleate, and sodium chloride, as discussed above, provides glycerin at 2.7% by weight, which falls within the instantly claimed range (1-5%).
Regarding claim 4: The shampoo of example formulation 38 comprises (by weight): 1% sodium C14-C16 olefin sulfonate and 4% of sodium methyl cocoyl taurate ([0136]). Disodium cocoamphodiacetate is present in various compositions at amounts ranging from 0.5% to 3.5% by weight (Ex. 16; Ex. 20-22, Ex. 33; Ex. 113; Ex. 139), which overlaps with the instantly claimed range (1-5%). PEG-80 sorbitan laurate is taught in a shampoo and bath composition at 2% and 4% by weight, respectively (Ex. 7 and 98).
Regarding claim 5: The shampoo of example formulation 38 above further comprises caprylyl/capryl glucoside ([0136]). Decyl glucoside is taught as an ingredient in several compositions of the invention, such as shampoos, shower oils and jellys, soaps, make-up removers, micellar lotions and waters, and cleansing foams (Ex. 7; Ex. 10; Ex. 18; Ex. 25; Ex. 32; Ex. 47; Ex. 50; Ex. 53; Ex. 93; Ex. 99; Ex. 114; Ex. 116; Ex. 121; Ex. 124-127; Ex. 131; Ex. 137). Sodium cocoyl isethionate is taught in a shampoo and body wash composition of the invention (Ex. 10 and 64).
Regarding claim 6: The shampoo of example formulation 38 above comprises 0.7% by weight of caprylyl/capryl glucoside ([0136]), which falls within the instantly claimed range (0.25-1%). Decyl glucoside is taught in various compositions at amounts ranging from 0.5% to 6% by weight (Ex. 7; Ex. 10; Ex. 18; Ex. 25; Ex. 32; Ex. 47; Ex. 50; Ex. 53; Ex. 93; Ex. 99; Ex. 114; Ex. 116; Ex. 121; Ex. 124-127; Ex. 131; Ex. 137), which overlaps with the instantly claimed range (2-10%). Sodium cocoyl isethionate is taught in a shampoo and body wash composition at 0.7% and 0.2% by weight, respectively (Ex. 10 and 64).
Regarding claim 7: The formulation of example 38 comprises water and oily components along with known emulsifiers in the art. Thus, one of ordinary skill in the art would have recognized such compositions as emulsions.
The teachings of Brandt differ from that of the instantly claimed invention in that Brandt does not explicitly disclose a single embodiment comprising every ingredient of claims 1-2 and 4-6, wherein they are all present at their claimed amount.
Regarding claim 1, Brandt teaches various compositions of the invention to comprise ingredients such as disodium cocoamphodiacetate and PEG-80 sorbitan laurate. Thus, it would have been prima facie obvious for one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to combined such compositions with the washing emulsion of Brandt (i.e., Ex. 38) since compositions comprising these ingredients are known and routine in the art. Additionally, every composition of Brandt is a cleansing composition for hair and/or skin. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One of ordinary skill in the art could have combined ingredients from various embodiments of Brandt via no more than routine experimentation and known methods in the art to predictably yield a composition useful for cleansing skin comprising all of the instantly claimed ingredients.
Regarding the amount of glycerin in claim 2, it would have been obvious to adjust the amount of glycerin in formulation 38 of Brandt according to the concentration of glycerin in formulation 86 (i.e. 2.7%), since such a concentration is known and routine for the cleansing compositions of Brandt, specifically ones comprising cocoamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, and sodium chloride. Furthermore, 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 range of glycerin in claim 2 through no more than routine experimentation.
While the amounts of sodium C14-16 olefin sulfonate, disodium cocoamphodiacetate, sodium methyl cocoyl taurate, and PEG-80 sorbitan laurate taught in the various compositions of Brandt do not fall within the instantly claimed ranges of claim 4, it is well within the abilities of an ordinary artisan to optimize the amount of each component in the combined composition depending on the desired properties of the final product. One of ordinary skill in the art could have used the amounts of Brandt as starting points for their optimization, taking into account the ingredients which are already present in the composition. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges of claim 4 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 5, Brandt teaches various compositions of the invention to comprise ingredients such as decyl glucoside and sodium cocoyl isethionate. Thus, it would have been prima facie obvious for one of ordinary skill in the art to combined such compositions with the washing emulsion of Brandt, since compositions comprising these ingredients are known and routine in the art. Additionally, every composition of Brandt is a cleansing composition for hair and/or skin. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One of ordinary skill in the art could have combined ingredients from various embodiments of Brandt via no more than routine experimentation and known methods in the art to predictably yield a composition useful for cleansing skin comprising all of the instantly claimed ingredients.
While the amounts of decyl glucoside and sodium cocoyl isethionate taught in the various compositions of Brandt do not fall within the instantly claimed ranges of claim 6, it is well within the abilities of an ordinary artisan to optimize the amount of each component in the combined composition depending on the desired properties of the final product. One of ordinary skill in the art could have used the amount taught by Brandt as starting points for their optimization, taking into account the ingredients which are already present in the composition. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of claim 6 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).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since all of the relied on examples of Brandt are cleansing compositions and the combination of known ingredients and the adjustment of their amounts is well within the skills of the ordinary artisan.
2. Claims 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Allef, P., et al. (US 9271908 B2, 03/01/2016, IDS dated 10/03/2023), hereinafter Allef.
Allef teaches compositions comprising water, at least one biosurfactant and at least one fatty acid and the use thereof as or for producing bath additives, shower gel, shampoos, conditioners, body cleansers or skin cleansers (abstract).
Regarding claim 1: Allef discloses a cosmetic composition comprising cocamidopropyl betaine, glycerin (i.e., glycerol), PEG-120 methyl glucose dioleate, sodium chloride, and sodium C14-C16 olefin sulfonate (Table 67). The composition is a washing emulsion for sensitive and problematic skin (Table 67). Examples of preferred amphoteric surfactants which may be used in the invention include disodium cocoamphodiacetate (col. 5, lines 54-56). A composition of the invention, in the form of a shampoo, is taught to comprise disodium cocoamphodiacetate and sodium methyl cocoyl taurate (Table 26). Sodium methyl cocoyl taurate is also taught in an additional shampoo composition of the invention (Table 34). PEG-80 sorbitan laurate is taught in various baby shampoos of the invention, two of which also comprise cocamidopropyl betaine (Table 38; Table 40; Table 61). Allef teaches a hand-washing test wherein a group of subjects washed their hands in a defined way and evaluated foam properties and skin feel (col. 9-10, Applications-Related Testing). Thus, Allef teaches a method of cleansing (i.e., washing) skin comprising the step of topically applying a cosmetic composition such as the washing emulsion of Allef.
Regarding claim 2: The washing emulsion above (Table 67) comprises (by weight): 0.5% of cocamidopropyl betaine; 0.5% of glycerin; 0.3% of PEG-120 methyl glucose dioleate; and 2% of sodium chloride which falls within the instantly claimed range (0.4-2%). Another example, which is a shower gel (Table 28), comprises 2.5% of cocamidopropyl betaine, which falls within the instantly claimed range (2-8%); 2% of glycerin, which falls within the instantly claimed range (1-5%); 0.3% of PEG-120 methyl glucose trioleate; and 1.5% of sodium chloride which falls within the instantly claimed range (0.4-2%).
Regarding claim 4: The washing emulsion above comprises sodium C14-C16 olefin sulfonate at 4.0% by weight (Table 67). Disodium cocoamphodiacetate is present in a shampoo composition at an amount of 0.2% by weight (Table 26). Sodium methyl cocoyl taurate is present in that same shampoo composition at an amount of 0.4% by weight (Table 26) and in a different shampoo composition at 0.7% by weight (Table 34), which falls within the instantly claimed range (0.5-3%). PEG-80 sorbitan laurate is taught in various baby shampoos at 3%, 3.5%, or 0.5% by weight (Table 38; Table 40; Table 61), with 0.5% falling within the instantly claimed range (0.2-1.5%).
Regarding claim 5: Decyl glucoside is taught as an ingredient in several compositions of the invention, such as a baby washing lotion, shampoos, and a kids shower composition (Table 33; Table 41; Table 68). Sodium cocoyl isethionate is also taught in several compositions of the invention in the form of shampoos (Table 34; Table 78; Table 84). Caprylyl/capryl glucoside is taught in compositions of the invention which are in the form of a shower gel and wet wipes (Table 49; Table 59).
Regarding claim 6: Decyl glucoside is taught in various wash and shampoo compositions at 1.5%, 0.5%, or 1% by weight (Table 33; Table 41; Table 68). Sodium cocoyl isethionate is present in various shampoo compositions at an amount of 1% or 3% by weight (Table 34; Table 78; Table 84), with 3% falling within the instantly claimed range (1.5-6%). Caprylyl/ capryl glucoside is taught in a shower gel and wet wipes at 5% and 3% by weight, respectively (Table 49; Table 59).
Regarding claim 7: The above composition, which comprises each ingredient of claim 1, is a washing emulsion for sensitive and problematic skin (Table 67), which reads on an emulsion.
The teachings of Allef differ from that of the instantly claimed invention in that Allef does not explicitly disclose a single embodiment comprising every ingredient of claims 1-2 and 4-6, wherein they are all present at their claimed amount.
Regarding claim 1, Allef teaches various compositions of the invention to comprise ingredients such as disodium cocoamphodiacetate, sodium methyl cocoyl taurate, and PEG-80 sorbitan laurate. Thus, it would have been prima facie obvious for one of ordinary skill in the art to combined these compositions with the washing emulsion of Allef, since compositions comprising such ingredients are known and routine in the art. Additionally, every composition of Allef is a cleansing composition for hair and/or skin. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One of ordinary skill in the art could have combined ingredients from various embodiments of Allef via no more than routine experimentation and known methods in the art to predictable yield a composition useful for cleansing skin comprising all of the instantly claimed ingredients.
While the amounts of cocamidopropyl betaine, glycerin, and PEG-120 methyl glucose dioleate taught by the washing emulsion of Allef do not fall within the instantly claimed ranges of claim 2, it is well within the abilities of an ordinary artisan to optimize the amount of each component in the composition depending on the desired properties of the final product (i.e., foaming, hydration, sensory). Additionally, Allef teaches a shower gel comprising the cocamidopropyl betaine and glycerin at the instantly claimed amounts. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges of claim 2 in the washing emulsion via 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).
While the amounts of sodium C14-16 olefin sulfonate, disodium cocoamphodiacetate, sodium methyl cocoyl taurate, and PEG-80 sorbitan laurate taught in the various compositions of Allef do not all fall within the instantly claimed ranges of claim 4, it is well within the abilities of an ordinary artisan to optimize the amount of each component in the combined composition depending on the desired properties of the final product. One of ordinary skill in the art could have used the amounts of Allef as starting points for their optimization, taking into account the ingredients which are already present in the composition. As such, one of ordinary skill in the art would have arrived at the instantly claimed ranges of claim 4 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 5, Allef teaches various compositions of the invention to comprise ingredients such as decyl glucoside, sodium cocoyl isethionate, and caprylyl/capryl glucoside. Thus, it would have been prima facie obvious for one of ordinary skill in the art to combined such compositions with the washing emulsion of Allef, since compositions comprising these ingredients are known and routine in the art. Additionally, every composition of Allef is a cleansing composition for hair and/or skin. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One of ordinary skill in the art could have combined ingredients from various embodiments of Allef via no more than routine experimentation and known methods in the art to predictably yield a composition useful for cleansing skin comprising all of the instantly claimed ingredients.
While the amounts of decyl glucoside, sodium cocoyl isethionate, and caprylyl/capryl glucoside taught in the various compositions of Allef do not all fall within the instantly claimed ranges of claim 6, it is well within the abilities of an ordinary artisan to optimize the amount of each component in the combined composition depending on the desired properties of the final product. One of ordinary skill in the art could have used the amount taught by Allef as starting points for their optimization, taking into account the ingredients which are already present in the composition. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of claim 6 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).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since all of the relied on examples of Allef are cleansing compositions and the combination of known ingredients and the adjustment of their amounts is well within the skills of the ordinary artisan.
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.
1. Claims 1-2 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, and 17-18 of U.S. Patent No. 10,912,956 in view of Brandt. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Brandt.
The conflicting claims recite a method of reducing oxidative damage and reducing TNF-a expression in skin, the method comprising topically applying to inflamed skin a composition (conflicting claim 1), wherein the composition comprises glycerin (conflicting claim 6). The composition further comprises sodium C14-16 olefin sulfonate, cocamidopropyl betaine, cocoamphodiacetate, PEG-120 methyl glucose dioleate, and PEG-80 sorbitan laurate (conflicting claim 17). The composition further comprises sodium methyl cocoyl taurate (conflicting claim 8). The composition is further formulated as a facial cleansing gel (conflicting claim 18). Thus, the method inherently includes a method of cleansing skin since the composition is a facial cleansing gel. The conflicting claims differ from the instant claims in that they do not explicitly define the composition to comprise sodium chloride. Brandt discloses cosmetic compositions which comprise cocamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, and sodium chloride ([0136], Example 38; [0184], Example 86). Brandt teaches that compositions of the invention have a good ability to wash off skin and hair and that they provide a good skin feel during and after washing ([0015]-[0019]). It would have been prima facie obvious to add the sodium chloride of Brandt into the composition used in the method of the copending claims since Brandt teaches a cosmetic composition also comprising cocamidopropyl betaine, glycerin, and PEG-120 methyl glucose dioleate. One of ordinary skill in the art could have added sodium chloride by known methods with no change in its function to predictably yield the instant invention.
2. Claims 1-2 and 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 11, and 13 of copending Application No. 18/137,818 in view of Brandt. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Brandt.
The copending claims recite a method and composition for exfoliating skin, the method comprising topically applying to skin of a person a composition comprising an effective amount of: sodium methyl cocoyl taurate; acrylates copolymer; glycerin; cocamidopropyl betaine; hydrated silica; sodium chloride; and potassium hydroxide (copending claims 1 and 11). The composition further comprises PEG-120 methyl glucose trioleate (copending claims 3 and 13). The copending claims differ from the instant claims in that they do not explicitly disclose PEG-120 methyl glucose dioleate, sodium C14-C16 olefin sulfonate, disodium cocoamphodiacetate, nor PEG-80 sorbitan laurate. Brandt discloses cosmetic compositions which comprise cocamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, sodium chloride, sodium C14-16 olefin sulfonate, and sodium methyl cocoyl taurate ([0136], Example 38). Various other compositions of Brandt, such as shampoos, shower gels, and micellar water, are taught to comprise disodium cocoamphodiacetate (Ex. 16; Ex. 20-22, Ex. 33; Ex. 113; Ex. 139). PEG-80 sorbitan laurate is further taught in a shampoo and bath composition of the invention (Ex. 7 and 98). Brandt teaches that compositions of the invention have a good ability to wash off skin and hair and that they provide a good skin feel during and after washing ([0015]-[0019]). It would have been prima facie obvious to substitute the PEG-120 methyl glucose trioleate of the copending claims with the PEG-120 methyl glucose dioleate of Brandt, as well combine compositions comprising sodium C14-C16 olefin sulfonate, disodium cocoamphodiacetate, and PEG-80 sorbitan laurate with that of the copending claims to predictably yield the instant invention. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). While the copending claims do not explicitly recited that the method is for cleansing the skin, the step of topically applying the composition is the same as instantly claimed, as are the ingredients in the composition. Thus, such a method would inherently cleanse the skin.
This is a provisional nonstatutory double patenting rejection.
2. Claims 1-2 and 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of copending Application No. 18/422,765 in view of Brandt. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Brandt.
The copending claims recite a method of treating oxidative damaged skin, the method comprising topically applying to oxidative damaged skin a composition comprising glycerin, among other ingredients (copending claim 1). The composition further comprises: cocamidopropyl betaine and sodium chloride among other ingredients (claim 14). The copending claims differ from the instant invention in that they do not define PEG-120 methyl glucose dioleate, sodium C14-C16 olefin sulfonate, disodium cocoamphodiacetate, sodium methyl cocoyl taurate, nor PEG-80 sorbitan laurate. Brandt discloses cosmetic compositions which comprise cocamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, sodium chloride, sodium C14-16 olefin sulfonate, and sodium methyl cocoyl taurate ([0136], Example 38). Various other compositions of Brandt, such as shampoos, shower gels, and micellar water, are taught to comprise disodium cocoamphodiacetate (Ex. 16; Ex. 20-22, Ex. 33; Ex. 113; Ex. 139). PEG-80 sorbitan laurate is further taught in a shampoo and bath composition of the invention (Ex. 7 and 98). Brandt teaches that compositions of the invention have a good ability to wash off skin and hair and that they provide a good skin feel during and after washing ([0015]-[0019]). It would have been prima facie obvious to combine compositions comprising sodium PEG-120 methyl glucose dioleate, C14-C16 olefin sulfonate, disodium cocoamphodiacetate, sodium methyl cocoyl taurate, and PEG-80 sorbitan laurate with that of the copending claims to predictably yield the instant invention. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). as a component. One of ordinary skill in the art could have added these ingredients by known methods with no change in their function to predictably yield the instant invention. While the copending claims do not explicitly recited that the method is for cleansing the skin, the step of topically applying the composition is the same as instantly claimed, as are the ingredients in the composition. Thus, such a method would inherently cleanse the skin.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are not persuasive:
(1) Applicant argues against Brandt stating that there is no motivation to modify Brandt’s shampoo or soap by picking and choosing from the other various embodiments of Brandt. Applicant asserts that there in no articulate rational explaining why a POSITA would have been motivated to combine the cited Brandt embodiments. Applicant states that claim 1 recites sodium C14-16 olefin sulfonate but the office does not identify an embodiment that discloses this ingredient. Applicant further argues that formulation examples 7 and 98 of Brandt, which disclose PEG-80 sorbitan laurate, are compositions for “shampoo” and “bath”, and that the office has not explained why a POSITA would combine ingredients for “shampoo” and “bath” to arrive at a skin cleansing composition (Section D, subsection i). Applicant further argues the amounts of claim 4 are non-obvious since the general conditions of cleansing skin with a composition comprising the instantly claimed amounts is not taught by Brandt. Rather, the Office relies on various embodiment of Brandt that teach shampoo, shower gel etc. As such, Applicant asserts that there is no basis upon which routine optimization can operate (Section E, subsection i).
As discussed in the rejection above, every composition of Brandt is a cleansing composition for hair and/or skin. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One of ordinary skill in the art could have combined compositions and therefore ingredients from various embodiments of Brandt via no more than routine experimentation and known methods in the art to predictably yield a composition useful for cleansing skin comprising all of the instantly claimed ingredients. Such a statement provides rationale to combine the claimed ingredients. The rationale to combine does not have to be the same as Applicant’s own rationale. See MPEP 2144 IV. Regarding sodium C14-16 olefin sulfonate, this ingredient is explicitly taught in formulation example 38 of Brandt, as discussed in the rejection above. Regarding the PEG-80 sorbitan laurate in the “shampoo” and “bath” compositions of Brandt, formulation example 38, which teaches the other claimed ingredients, is a shampoo composition. Combining compositions both used as shampoos is obvious for the reasons stated above. In regards to Applicant’s arguments against optimizing the amounts of Brandt, optimizing a shampoo formulation such as that of example 38 with ingredients and amounts taught in other shampoo or body cleansers is obvious and would entail no more than routine optimization. Moreover, shampoo and bath compositions both read on a “skin cleansing” composition given that they are specifically used to cleanse and come in contact with skin, whether that be the scalp or the body. Lastly, Applicant has not provided any evidence that the claimed amounts of each component are critical. 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).
(2) Applicant provides similar arguments against Allef as those presented against Brandt above (Section D, subsection ii; Section E, subsection ii). Examiner responds with the same reasoning presented above.
Conclusion
No claims 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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/SUSANNAH S ARMSTRONG/ Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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