DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of cocamidopropyl hydroxysultaine, methyl oleoyl taurate, sodium cocoyl glycinate, and niacinamide in the reply filed on 3 December 2025, is acknowledged.
Status of Claims
The amendments to the claims, filed on 3 December 2025, are acknowledged.
Claims 1-2, 4-5, 8, 11, and 17-20 are amended.
Claims 1-20 are pending in the instant Office Action.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, specifically a glycolipid rather than a glycinate, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3 December 2025.
Claims 1-12 and 14-20 are pending and under consideration in the instant Office Action, to the extent of the following elected species:
the specific amphoteric surfactant is cocamidopropyl hydroxysultaine;
the specific anionic surfactant is methyl oleoyl taurate;
the specific anionic surfactant having a carboxyl group is sodium cocoyl glycinate; and
the specific one or more ingredients is niacinamide.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 30 June 2023, and 3 July 2024, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 7 and 16 are objected to because of the following informalities: In line 2 of claim 7 and line 2 of claim 16, the elected amphoteric surfactant is recited as “cocoamidopropyl hydroxysultaine” (bold added for emphasis). The bolded letter “o” should be removed so the word becomes “cocamidopropyl” as in claims 6 and 17. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 12, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2 and 17 read in relevant parts "the amphoteric surfactant" (claim 2, line 2; claim 17, line 11), however, base claims 1 and 17 recite "at least one amphoteric surfactant" (claim 1, line 2; claim 17, line 2 ), which encompasses multiple amphoteric surfactants. Because of the multiplicity (i.e., at least one amphoteric surfactant), it is unclear whether the singular reference, i.e., "the amphoteric surfactant", is intended to refer to just one, more than one, or all of the amphoteric surfactants, i.e., do the further limitations apply to just one, more than one or all of the amphoteric surfactants. Amending the claims to recite "the at least one amphoteric surfactant ", consistent with base claims 1 and 17 would provide proper antecedent basis.
Claims 2, 12, and 17 read in relevant parts "anionic surfactant" (claim 2, line 2; claim 12, line 4; claim 17, line 11), however, base claims 1 and 17 recite "at least one anionic surfactant" (claim 1, line 2; claim 17, line 2 ), which encompasses multiple anionic surfactants. Because of the multiplicity (i.e., at least one anionic surfactant), it is unclear whether the singular reference, i.e., "anionic surfactant", is intended to refer to just one, more than one, or all of the anionic surfactants, i.e., do the further limitations apply to just one, more than one or all of the anionic surfactants. Amending the claims to recite "the at least one anionic surfactant ", consistent with base claims 1 and 17 would provide proper antecedent basis.
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.
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 1-12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dasgupta et al. (WIPO International Patent Publication No. WO 2022/101097 A1, published on 19 May 2022, hereafter referred to as Dasgupta).
Dasgupta teaches a wash composition that is non-irritating to the eyes of users while delivering “desired lathering characteristics” and comprising a surfactant system which may include anionic, amphoteric, zwitterionic, cationic, and/or nonionic surfactants (Abstract). Zwitterionic surfactants taught to be suitable for the composition include cocamidopropyl hydroxysultaine (CAHS), present in an amount from 0.5-7% w/w (pg. 6, lines 3-10). Anionic surfactants are taught to be 1-7% w/w of the composition, with the total amount of anionic surfactants being 25-100% taurate surfactants (pg. 10, lines 12-13 and 29-30). In one embodiment, the taurate surfactant is sodium methyl oleoyl taurate (pg. 10, lines 23-24). Dasgupta additionally teaches that the anionic surfactants may include sodium cocoyl glycinate (pg. 11, line 18). In some embodiments, Dasgupta teaches the inclusion of skin benefit ingredients, which may include niacinamide, in amounts up to 10% w/w (pg. 3, lines 28-35). Water is taught to comprise 50-96% w/w of the composition (pg. 12, line 10).
The other surfactants present in the composition are taught to be nonionic or cationic – when they are nonionic, the surfactants are present in an amount from 0.5-7% w/w, and when they are cationic they are present in an amount from 1.3-15% w/w (pg. 7, lines 7-8 and pg. 9, lines 10-11). Preferred nonionic surfactants are taught to be glucamides such as lauroyl methyl glucamide or cocoyl methyl glucamide (pg. 6, lines 21-26). In an embodiment in which CAHS is the zwitterionic surfactant and present in an amount of 7% w/w, sodium methyl oleoyl taurate and sodium cocoyl glycinate are the anionic surfactants present in an amount of 3.5% w/w each, and cocoyl methyl glucamide is the nonionic surfactant present in an amount of 0.5% w/w, the ratio of CHS: sodium methyl oleoyl taurate is 2.0, which is greater than 1.0 as recited in instant claim 2. In addition, methyl oleoyl taurate represents ~24% of all surfactants in the composition, greater than 5% as recited in instant claim 3. In addition, sodium cocoyl glycinate accounts for ~47% of all surfactants that are not CAHS, falling within the range as recited in instant claim 4. Finally, in the embodiment that a nonionic, rather than cationic, surfactant is present, no PEG-type surfactants are in the compositions of Dasgupta.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the quantities and ratio of surfactants as recited in instant claims 2-5, 7-9, 11-12, and 16-18. In each case, the ranges and quantities taught by Dasgupta either fall within or significantly overlap with the ranges recited in the instant application.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Dasgupta and the instant claims is that Dasgupta does not teach the specific combination of components as claimed in a single embodiment (e.g., a single composition with CAHS, sodium methyl oleoyl taurate, sodium cocoyl glycinate, niacinamide, and water), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Dasgupta, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Dasgupta, to arrive at an invention such as the one being sought. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.).
The teachings of Dasgupta described above have rendered obvious a foaming cleaning composition comprising cocamidopropyl hydroxysultaine, methyl oleoyl taurate, sodium cocoyl glycinate, niacinamide, and water in the amounts recited in instant claims 17-18. In the absence of sulfate surfactants and added thickeners, the composition would necessarily comprise entangled elongated micelles, as evidence by Example 6 of the instant specification.
The teachings of Dasgupta are sufficient to render obvious the composition recited in instant claim 17 and the entangled elongate micelles recited in claim 20, which depends from claim 17, would necessarily be present, in the absence of sulfate surfactants and added thickeners. As per MPEP § 2112.III-IV, the mere recognition of newly discovered properties, which are “inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art”. As a result, instant claim 20 is also obvious in view of the teachings of Dasgupta.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619