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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-7 and 13-19) in the reply filed on 01/14/2026 is acknowledged.
Accordingly, claims 8-12 are withdrawn as being directed to a non-elected invention. Claims 1-7 and 13-19 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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/12/2023 and 10/03/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 5 and 17 are objected to because of the following informalities:
Claims 5 and 17 recite the phrase “sodium cocoyl isethionate” twice. This is believed to be a typographical error. Please delete the duplicate.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 7, 13-14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brandt, K. D., et al. (US 20210371773 A1, 12/02/2021, PTO-892), hereinafter Brandt.
Regarding claims 1 and 13: 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]). 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 claims 2 and 14: The example formulation 86 above comprises (by weight) 5% of cocamidopropyl betaine, which falls within the instantly claimed range (2-8%); 2.7% of glycerin, which falls within the instantly claimed range (1-5%); 1.7% of PEG-120 methyl glucose dioleate, which falls within the instantly claimed range (0.5-3%); and 2.1% of sodium chloride which reads on a range of about 0.4 to 2% as instantly recited.
Regarding claims 7 and 19: The formulations of examples 38 and 86 comprise 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.
Claims 1, 7, 13, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allef, P., et al. (US 9271908 B2, 03/01/2016, IDS dated 10/03/2023), hereinafter Allef.
Regarding claims 1 and 13: Allef discloses a cosmetic composition comprising cocamidopropyl betaine, glycerin (i.e., glycerol), PEG-120 methyl glucose dioleate, and sodium chloride (Table 67). The above composition is a washing emulsion for sensitive and problematic skin (Table 67). 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 claims 7 and 19: The above composition is a washing emulsion for sensitive and problematic skin (Table 67), which reads on an emulsion.
Claims 1, 7, 13, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Norman, G., et al. (US 20190231677 A1, 08/01/2019, PTO-892), hereinafter Norman.
Regarding claims 1 and 13: Norman discloses a cosmetic composition comprising cocamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, and sodium chloride (Ex. 4; Table 24). The above composition is a topical skin composition in the form of a cleanser ([0101]). Topical skin compositions include compositions suitable for topical application on skin and/or keratinous tissue, such compositions are used for topical application which means to apply or spread a composition onto the surface of keratinous tissue ([0025]). Skin cleansers are an example of a rinse off composition that is applied to the skin and then removed or rinsed from the skin ([0017]). As such, Norman teaches a method comprising the step of topically applying a cosmetic composition comprising the above ingredients. Given that the cosmetic composition is also a skin cleanser, such a method reads on the instantly claimed method of cleansing skin.
Regarding claims 7 and 19: The composition of Norman can be structured or formulated into a variety of different forms including emulsions ([0046]; [0055]).
Claims 1-2, 7, 13-14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Durkee, B., et al. (US 20170273894 A1, 09/28/2017, PTO-892), hereinafter Durkee.
Regarding claims 1 and 13: Durkee discloses a cosmetic composition comprising cocamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, and sodium chloride (Ex. 3; Table 6). The above composition is a topical skin composition in the form of a facial cleanser ([0103]). Topical skin compositions include compositions suitable for topical application on skin and/or keratinous tissue, such compositions are used for topical application which means to apply or spread a composition onto the surface of keratinous tissue ([0025]). Durkee teaches methods of use which include cleansing skin by applying any of the compositions disclosed to skin ([0021]). As such, Durkee teaches a method of cleansing skin comprising the step of topically applying a cosmetic composition comprising the above ingredients.
Regarding claims 2 and 14: The facial cleanser above comprises (by weight) 8% of cocamidopropyl betaine, which falls within the instantly claimed range (2-8%); 2% of glycerin, which falls within the instantly claimed range (1-5%); 2% of PEG-120 methyl glucose dioleate, which falls within the instantly claimed range (0.5-3%); and 0.3% of sodium chloride which reads on a range of about 0.4 to 2% as instantly recited.
Regarding claims 7 and 19: The compositions of Durkee can be structured or formulated into a variety of different forms including emulsions ([0055]).
Claims 1, 7, 13, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hartung, C., et al. (US 20130204021 A1, 08/08/2013, PTO-892), hereinafter Hartung.
Regarding claims 1 and 13: Hartung discloses a cosmetic composition comprising cocamidopropyl betaine, glycerin (i.e., glycerol), PEG-120 methyl glucose dioleate, and sodium chloride (Table 17). The above composition is a washing emulsion for sensitive and problematic skin (Table 17). Hartung teaches a hand-washing test wherein a group of subjects washed their hands in a defined way and evaluated foam properties and skin feel ([00152]-[0154]). Thus, Hartung teaches a method of cleansing (i.e., washing) skin comprising the step of topically applying a cosmetic composition such as the washing emulsion of Hartung.
Regarding claims 7 and 19: The above composition is a washing emulsion for sensitive and problematic skin (Table 17), which reads on an emulsion.
Claims 1, 7, 13, and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Huang, Z., et al. (US 20230293412 A1, filed 07/27/2020, PTO-892), hereinafter Huang.
Regarding claim 1 and 13: Huang discloses cosmetic compositions which comprise cocamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, and sodium chloride (p. 8, Table 1B, SH-16; p. 9, Table 1B, SH31). One of the exemplary shampoos comprising the above ingredients is a kids care prebiotic emulsion for body and head washing 2 in 1 (p. 9, Table 1B, SH31). Huang further teaches method for washing a subject’s hair by contacting a subjects hair with said shampoo ([0061]). The shampoos of Huang are effective in cleaning hair but less toxic or damaging to skin ([0007]). Thus, Huang teaches a method comprising the step of topically applying a cosmetic composition comprising the above ingredients. Given that the cosmetic composition (i.e., shampoo) is also a body wash and the composition will also come in contact with the scalp, such a method reads on the instantly claimed method of cleansing skin.
Regarding claims 7 and 19: Huang teaches a kids care prebiotic emulsion (p. 9, Table 1B, SH31), which reads on an emulsion.
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 1-7 and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Brandt, K. D., et al. (US 20210371773 A1, 12/02/2021, PTO-892), hereinafter Brandt.
Brandt discloses mixture composition comprising glucolipids with good ability to wash off skin and hair (abstract; [0015]).
Regarding claims 1 and 13: Brandt discloses cosmetic compositions which comprise cocamidopropyl betaine, glycerin, PEG-120 methyl glucose dioleate, and sodium chloride ([0136], Ex. 38; [0184], Ex. 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]). 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 claims 2 and 14: The soap of example formulation 86 above comprises (by weight): 5% of cocamidopropyl betaine, which falls within the instantly claimed range (2-8%); 2.7% of glycerin, which falls within the instantly claimed range (1-5%); 1.7% of PEG-120 methyl glucose dioleate, which falls within the instantly claimed range (0.5-3%); and 2.1% of sodium chloride which reads on a range of about 0.4 to 2% as instantly recited.
Regarding claims 3 and 15: The shampoo of example formulation 38 above 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).
Regarding claims 4 and 16: 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 claims 5 and 17: 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 claims 6 and 18: 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 claims 7 and 19: The formulations of examples 38 and 86 comprise 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 3-6 and 15-18.
Regarding claims 3 and 15, 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 to combined these ingredients into the washing emulsion of Brandt, since such 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 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 claims 4 and 16, 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 claims 4 and 16 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 and 17, 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 these ingredients into the washing emulsion of Brandt, since such 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 claims 6 and 18, 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 claims 6 and 18 through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-7 and 13-19 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 claims 1 and 13: Allef discloses a cosmetic composition comprising cocamidopropyl betaine, glycerin (i.e., glycerol), PEG-120 methyl glucose dioleate, and sodium chloride (Table 67). The above composition is a washing emulsion for sensitive and problematic skin (Table 67). 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 claims 2 and 14: The washing emulsion above 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, 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 claims 3 and 15: The washing emulsion above further comprises sodium C14-C16 olefin sulfonate (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).
Regarding claims 4 and 16: 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 claims 5 and 17: 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 claims 6 and 18: 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 claims 7 and 19: 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 composition which comprises the ingredients at the amounts of claims 2 and 14, nor does Allef explicitly disclose a single embodiment comprising every ingredient of claims 3-6 and 15-18.
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 claims 2 and 14, 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 claims 2 and 14 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).
Regarding claims 3 and 15, 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 ingredients into the washing emulsion of Allef, since 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 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 claims 4 and 16, 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 claims 4 and 16 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 and 17, 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 these ingredients into the washing emulsion of Allef, since 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 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 claims 6 and 18, 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 claims 6 and 18 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).
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 1-7 and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 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 further 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 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 1-7 and 13-19 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. 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 substitute the PEG-120 methyl glucose trioleate of the copending claims with the PEG-120 methyl glucose dioleate of Brandt 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.
2. Claims 1-7 and 13-19 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 recite PEG-120 methyl glycose dioleate as a component. 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 PEG-120 methyl glucose dioleate 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 sodium chloride. One of ordinary skill in the art could have added PEG-120 methyl glucose by known methods with no change in its 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.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616