DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed January 13, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being as being obvious over Obara (US 2003/0166918 A1) in view of Maruyama et al. (EP 2 366 720 A1).
Examiner’s Note: “Low substituted” is defined in the instant specification to be a content of hydroxypropoxy group of 4.0-11.0 % by mass [0030].
Regarding claim 1, Obara discloses a low-substituted cellulose powder [Abstract], such as low-substituted hydroxypropyl cellulose [0016] with 4 to 20% by weight of hydroxypropoxy group [0016] to be used in cosmetics or pharmaceuticals [0002]. The average particle size is 0.1 µm to 100 µm measured by dry laser diffraction [0029]. Water is included in a composition with the low-substituted cellulose powder [Abstract] [0020] [0027] [0031]-[0032].
Obara does not disclose that the low-substituted hydroxypropyl cellulose powder has an aspect ratio equal to or more than 2.0 and less than 5.0.
Maruyama discloses low-substituted hydroxypropylcellulose with an aspect ratio of less than 2.5 (such as 2.2, 2.3, and 2.4) [abstract] [0001] [0103]. Maruyama teaches that low-substituted hydroxypropylcellulose with an aspect ratio of less than 2.5 achieves good flowability of the powder [0022]-[0023] [0042].
Since Obara generally discloses a low-substituted hydroxypropyl cellulose powder, it would have been prima facie obvious to one of ordinary skill in the art to use an aspect ratio of 2.5 or less (such as 2.2, 2.3, or 2.4), within the teachings of Obara, because Maruyama teaches that low-substituted hydroxypropylcellulose with this aspect ratio allows for good flowability of the powders [0022]-[0023] [0042]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claim 2 is rendered prima facie obvious because Obara discloses the low-substituted hydroxypropyl cellulose has 4 to 20% by weight of a hydroxypropoxy group [0016]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 3 is rendered prima facie obvious because Obara discloses 425 g of a 6.3 wt.% aqueous NaOH solution is dissolved in 7.5 g of low-substituted hydroxypropyl cellulose powder [0031]. The ratio of the mass of water to the mass of the low-substituted hydroxypropyl cellulose is more than 3.0.
Claim 6 is rendered prima facie obvious because Obara discloses the product may be a liquid [0002] [0007]. The limitation of “personal care product” is viewed as an intended use limitation. Nevertheless, Obara’s teachings are capable of meeting the intended use because Obara discloses the product may be a cosmetic [0002] [0007].
Response to Arguments/Analysis of Unexpected Results
Applicant's arguments filed 1/13/2026 have been fully considered but they are not persuasive, and will be addressed insofar as they apply the new ground of rejection.
Applicant argues that the ready to use low-substituted hydroxypropyl cellulose of Obara has a D50 of 2 µM which is not within the instantly claimed range.
The Examiner disagrees because patents are relevant as prior art for all that they contain (See MPEP 2123) and Obara discloses the average particle size is 0.1 µm to 100 µm measured by dry laser diffraction [0029] which overlaps with the instantly claimed range.
Applicant argues at pg. 4-5 that the composition produced according to Example 1 has a low-substituted hydroxypropyl cellulose powder that has a D50 and a specific aspect ratio according to claim 1, whereas Comparative Example 1 contains low substituted hydroxypropyl cellulose that has a D50 of less than 30 µM, which results in an inferior cleaning capability compared to the composition of claim 1. Applicant argues that the beneficial properties with the claimed size and aspect ratio are unexpected over the prior art.
The Examiner has fully reviewed and considered the unexpected results alleged by the applicant. The applicant’s results show that the personal care compositions according to Examples 1-4, have good cleansing properties, excellent skin feel and caused no rough skin feel and irritation, whereas Comparative Examples 1-2 had poor cleansing properties [0131]-[0132].
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The Examiner agrees that the beneficial properties (i.e., cleansing, skin feel) of the Examples of the invention vs. the Comparative Examples are unexpected over the prior art.
However, the claims are not “commensurate in scope” with the showing. See MPEP § 716.02(d). The applicant has only shown improved properties with an aspect ratio of 2.2 to 3.8 and a D50 value of 38 to 53 µM. Comparative Examples 1 and 2 have values that fall within the instantly claimed ranges yet do not have the same beneficial properties.
Claim 4 is rejected under 35 U.S.C. 103 as being as being obvious over Obara (US 2003/0166918A1) in view of Maruyama et al. (EP 2 366 720 A1) and further in view of Ohara (JP 2002204951 A).
The 35 U.S.C. 103 rejection over Obara in view of Maruyama was previously discussed.
As discussed, Obara discloses the low -substituted hydroxypropyl cellulose has a particle size of 0.1 µM to 100 µM (measured by dry methods) [0029]. Obara also discloses that the low-substituted cellulose is in the swollen state when added to water [Abstract] [0012] [0027].
Obara does not disclose that the low-substituted cellulose has a particle size of 50 µM to 400 µM when measured by wet laser diffraction, as recited in claim 4.
Ohara discloses a low-substituted cellulose to be used in cosmetics (Abstract) where the average particle size is 1 µM to 100 µM measured by a wet laser diffraction method (English translation, pg, 4, 11th paragraph). Ohara teaches that particles of this size have good stability (English translation, pg, 4, 11th paragraph).
Since Obara generally teaches a cosmetic with low-substituted cellulose, it would have been prima facie obvious to one of ordinary skill in the art to include an average particle size of 1 µM to 100 µM measured by a wet laser diffraction method, within the teachings of Obara, because Ohara teaches this size of low-substituted cellulose within a cosmetic composition. An ordinarily skilled artisan would be motivated to use this size of low-substituted cellulose in order to obtain particles that have good stability as taught by Ohara (English translation, pg, 4, 11th paragraph). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 5 is rejected under 35 U.S.C. 103 as being as being obvious over Obara (US 2003/0166918A1) in view of Maruyama et al. (EP 2 366 720 A1) and further in view of Asirvatham (WO 2021/126667 A1).
The 35 U.S.C. 103 rejection over Obara in view of Maruyama was previously discussed.
Obara does not disclose a surfactant, as recited in claim 5.
Asirvatham discloses surfactants in personal care products, such as cosmetics [Abstract]. Asirvatham teaches that surfactants are widely used in cosmetics because it provides cleansing attributes to the composition [0003].
Since Obara generally teaches a cosmetic, it would have been prima facie obvious to one of ordinary skill in the art to include a surfactant, within the teachings of Obara, because Asirvatham teaches surfactants within a cosmetic composition. An ordinarily skilled artisan would be motivated to use a surfactant in order to provide cleansing attributes to the composition as taught by Asirvatham [0003].
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,882,923 in view of Obara (US 2003/0166918A1).
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10,513,565 in view of Obara (US 2003/0166918A1).
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,166,918 in view of Obara (US 2003/0166918A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition except for water.
Obara discloses a low-substituted cellulose powder [Abstract], such as low-substituted hydroxypropyl cellulose [0016]. Water is included in a composition with the low-substituted cellulose powder [Abstract] [0020] [0027] [0031]-[0032].
It would have been prima facie obvious to one of ordinary skill in the art to include water, within the claims. The ordinarily skilled artisan would have been motivated to formulate the composition, as taught by Obara [Abstract] [0020] [0027] [0031]-[0032].
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10,959,959 in view of Maruyama et al. (EP 2 366 720 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition except for an aspect ratio of 2-5.
Maruyama discloses low-substituted hydroxypropylcellulose with an aspect ratio of less than 2.5 (such as 2.2, 2.3, and 2.4) [abstract] [0001] [0103]. Maruyama teaches that low-substituted hydroxypropylcellulose with an aspect ratio of less than 2.5 achieves good flowability of the powder [0022]-[0023] [0042].
It would have been prima facie obvious to one of ordinary skill in the art to include an aspect ratio of less than 2.5, within the claims. The ordinarily skilled artisan would have been motivated to have particles with this aspect ratio because Maruyama teaches that low-substituted hydroxypropylcellulose with an aspect ratio of less than 2.5 achieves good flowability of the powder [0022]-[0023] [0042].
Response to Double Patenting Arguments
Applicant's arguments filed 1/13/2026 have been fully considered but they are not persuasive
Applicant argues that the pending claims are non-obvious over Obara and therefore, Obara cannot be used to reject the claims as obvious under the double patenting standard.
The Examiner disagrees. Obara discloses a low-substituted cellulose powder [Abstract], such as low-substituted hydroxypropyl cellulose [0016]. Water is included in the composition with the low-substituted cellulose powder and it would have been prima facie obvious to one of ordinary skill in the art to include water, within the claims, to formulate the composition, as taught by Obara [Abstract] [0020] [0027] [0031]-[0032].
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612