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 .
Response to Amendment
The Amendment filed 05/05/2026 has been entered. Applicant’s amendments are in response to in the Non-Final Office Action mailed 02/06/2026. Applicant’s claims have been amended in the following manner: independents claim 1, 16, and 22 have has been modified by inclusion of “wherein all weights are based on total weight of the composition” (which is supported at [023] of Applicant’s Specification). There are no significant scope changing amendments, and Applicant relies primarily on argument. Additionally, in response to Applicant’s arguments, explanation is added to the 112b rejection as to why the description of “about” in [021] of the Specification is an unsuitable definition in terms of the claim scope, and thus the 112(b) rejection is maintained.
The following objections/rejections are withdrawn: the claim objection is withdrawn (based on amendment regarding total weight discussed above).
The Examiner further acknowledges the following:
Claims 1-4, 7-17, and 21-25 are pending.
Claims 1-4, 7-17, and 21-25 are presented for examination and rejected as set forth below.
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 1-4, 7-17, and 21-25 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 1-2, 4, 7-8, 10, 13-14, 16-17, and 21-25 recite the term “about” to describe numerical values, which is indefinite because it is an imprecise definition of a value. The Examiner suggests “about” should be removed and considers the claim values as if the term “about” was not present. See MPEP 2173.05(b)(i).
When Applicant points to the definition of “about” in [021] of the Specification, note that this definition represents broad and narrow ranges (i.e., at [021]: ““About” can additionally or alternately mean either with 10% of the stated value, or within 5% of the stated value, or in some cases within 2.5% of the state values; or, “about” can mean rounded to the nearest significant digit”). A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Finally, the definition of the Specification uses the term "can" (see underlined above), which means the definition of “about” is optional.
The remaining claims that depend from claim 1 are also under rejection, such that all claims 1-4, 7-17, and 21-25 are rejected under 112(b).
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.
Claims 1-4, 7-10, 12-17, 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kulkarni (US 2015/0044157 A1), as evidenced by Fiume (International Journal of Toxicology, 2019).
Applicant’s broader independent claim 1 (compared to independent claim 16 or 22, see discussion in next paragraph) is directed to a shaving composition comprising: a) about 1% w/w to about 50% w/w of an amphoteric surfactant; b) about 0.1% w/w to about 20% w/w of an anionic surfactant; c) about 0.1% w/w to about 20% w/w of a humectant; d) 0% to about 15% w/w of a moisturizing agent; e) optionally one or more of a chelating agent, a preservative, a natural extract, an opacifier, and a fragrance; and f) the remainder water, wherein the composition has a pH of about 3.5 to about 8, and wherein the composition comprises less than 1% w/w of a fatty acid. Independent claim 1 is subsequently narrowed by dependent claims. Note that “shaving” does not present a significant limitation, as a composition taught as obvious with the required limitations, is expected to be suitable for shaving.
Applicant further narrows the limitations of independent claim 1 (i.e., “comprising”), by way of constructing alternate independent claim 16 (i.e., still “comprising”) and independent claim 22 (i.e., “consisting of”), where the combination of limitations presents a narrower scope compared to claim 1.
Generally, note that ‘optional’ components (including ingredients such as 1d, where the bottom limit of the range is 0% w/w) are not considered required by the claim set. Additionally, the Examiner turns to Applicant’s Specification for intent behind terms such as humectants [045] and moisturizing agent [047-049], where example ingredients are provided in both cases. However, note that the general classes of ingredients recited in claim 1, are not necessarily limited to examples set forth in Applicant’s Specification, but additionally, can incorporate what is taught in the Prior Art.
Kulkarni teaches an aqueous structured surfactant composition for use in shaving products [0004] where the surfactant system permits delivery of ingredients, and has enhanced viscosity, stability, and aesthetic appearance [0045].
Regarding claims 1-4, 7-10, 14-17, and 21-25: Kulkarni teaches amphoteric surfactants such as alkyl amphodiacetates [0055] in 0-20 wt% (Kulkarni – claim 6, [0020]), zwitterionic surfactants such as amidopropyl betaine [0054] in 2-10 wt% [0046, 0056], anionic surfactants (one or more) such as sodium lauroyl sarcosinate [0039] and alpha olefin sulfonates [0039] in 3-40 wt% (Kulkarni – claim 3, [0016]), “sugars” such as glucose (a known humectant, as evidenced by Fiume in Table 1; additionally identified in Applicant’s Specification as a humectant [045], where an ingredient an its properties are inseparable) in 1 to 10 parts by weight (pbw) [0012] (i.e., 0-10% w/w) [0089], and moisturizers [0067] in 0.5-10 wt% [0085], and the benefit agent including moisturizers such as various vegetable (plant) oils such as castor oil (additionally identified by Applicant’s Specification as a humectant [045] or moisturizer [047-049], where an ingredient and its properties are inseparable), and also including ester oils and/or cocoa butter [0083] in 0.3 to 25 pbw (i.e., 0.3-25% w/w) [0085]. Regarding the amount values, note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)). Regarding the functionality of ingredients such as glucose or castor oil, note that a chemical and its properties are inseparable.
Regarding the “consisting of” transitional phrase in the composition of claim 22 (and its dependent claims 23-25): Kulkarni broadly teaches a general aqueous composition minimally comprising (Kulkarni – claim 1): one or more anionic surfactants in 3-40 wt% (Kulkarni – claim 3, [0016]), and one or more amphodiacetates (i.e., alkyl amphodiacetates are amphoteric surfactants [0055] in 0-20 wt% (Kulkarni – claim 6, [0020]). Additionally, optional humectants (see above) and additives in 0.3-25% w/w are also taught to be added to the composition, wherein the pH is pH 4-7 (Kulkarni – claim 22), and the compositions find use in shaving compositions [0004]. With regard to the amounts, note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Regarding the “wherein” limitation restricting fatty acids (instant independent claims 1, 16, and 21), it is noted that all of the listed ingredients (including fatty acids [0083]) are considered optional in consideration of the main invention of Kulkarni (see Kulkarni – claims 1 or 4), as described by the claim set.
Regarding claim 12: Kulkarni teaches optionally including cationic surfactants [0046, 0049].
Regarding claim 13: Kulkarni teaches a pH of the cosmetic compositions of pH 4-7 (Kulkarni – claim 22), and the compositions find use in shaving compositions [0004]. With regard to the numerical range, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (see 2144.05(I)). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”).
Thus, the instant composition claimed appears to be little more than the selection of art-known elements according to their known utility within a single prior art reference, teaching the desirability of selecting such components, and obvious thereby, that the composition of the instant invention is obvious. 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.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.).
Claims 1-4, 7-17, 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kulkarni (US 2015/0044157 A1), as evidenced by Fiume (International Journal of Toxicology, 2019) as applied to claims 1-4, 7-10, 12-17, 21-25 above, and in further view of Becker (Cosmetic Ingredient Review, 2013).
As discussed above, Kulkarni teaches the instant composition (i.e., with no requirement of a fatty acid) as obvious, including alpha olefin sulfonates (as surfactants) [0039] in 3-40 wt% (Kulkarni – claim 3, [0016]). However, Kulkarni does not teach the specified alpha-olefin sulfonate species (instant claim 11).
Becker teaches that sodium C12-14, C14-16, and C16-18 olefin sulfonate are common sodium alpha-olefin sulfonate ingredients used cosmetic products as surfactants (pg 8, introduction; pg 20, Table 1).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to specify the alpha-olefin sulfonate surfactant suggested by Kulkarni with Becker’s specific alpha-olefin sulfonates because the selection of a known material based on its suitability for its intended use (i.e., a surfactant in a cosmetic product) supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Becker merely lists the specific alpha-olefin sulfonate species taught for use as surfactants in cosmetic products (pg 8, introduction; pg 20, Table 1), where Kulkarni teaches general incorporation of alpha olefin sulfonates as surfactants [0039] in 3-40 wt% (Kulkarni – claim 3, [0016]) into cosmetics (abstract).
Response to Arguments
Applicants arguments, see pg 6-9, filed 05/05/2026, with respect to the 103 rejection of claims 1-4, 7-17, and 21-25 under rejection have been fully considered but they are not persuasive. The 103 rejection maintains the same ground of rejection from the previous Office Action.
On page 6, Applicant discusses changes made in response to the claim objections (which are not considered scope changing), which are found acceptable.
On page 6, Applicant argues that the term “about” is precisely defined by the Specification, by pointing to the language that ““about” to mean “plus or minus 10% of the provided value.” However, Applicant fails to discuss the alternate definition applied in the Specification at [021], that describes broad and narrow ranges (i.e., at [021]: ““About” can additionally or alternately mean either with 10% of the stated value, or within 5% of the stated value, or in some cases within 2.5% of the state values; or, “about” can mean rounded to the nearest significant digit”). A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Thus, the 112b rejection is maintained, because the definition of “about” at [021] of the Specification is considered indefinite, as applied to the claim scope.
On page 7-8, Applicant argues that the combined Prior Art does not teach “soap-free” (i.e., “less than 1% w/w of a fatty acid”, as defined by Applicant’s Specification at [025]), which is argued as advantageous for soap-free lubricating, shaving products. As a direct counterpoint, the closest Prior Art Kulkarni teaches a composition for shaving products (Kulkarni – claim 19), whereby the instant limitations are obvious, that optionally comprises fatty acids, as a benefit agent [0046, 0053, 0083]. Optional ingredients (such as the fatty acid benefit agent) are not required by Kulkarni. A negative limitation can be met implicitly or inherently by a disclosures. The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). Thus, the rationale to use “less than 1% w/w of a fatty acid” is that Kulkarni teaches fatty acids as optional (e.g., plainly meaning, the option to incorporate 0% w/w fatty acid). Kulkarni additionally teaches the lubrication properties of the disclosed composition [0068], which is also operationally useful in cosmetic shaving products for example (Kulkarni – claim 19), whereby a fatty acid is not required in the composition (i.e., fatty acids are optional).
Furthermore, the rationale for teaching a limitation of the instant claim scope can be different from Applicant: In an obviousness analysis, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Thus, the rationale to use “less than 1% w/w of a fatty acid” is that Kulkarni teaches fatty acids as optional, and the obviousness analysis does not necessarily require Applicant’s motivation of slowing razor blade dulling, improved lubrication, etc.
Finally, even if Applicant argues that absence of a fatty acid from Kulkarni’s composition would lead to worse performance (e.g., the inferred lubrication deficiency, because no additional lubricating agents are required), note that an obvious composition suggested as inferior does not afford patentability: In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” Thus, the rationale to use “less than 1% w/w of a fatty acid” is that Kulkarni teaches fatty acids as optional, and even if this selection would lead to poorer performance (i.e., however, there is no objective evidence of this), this limitation is still taught as obvious by the combined Prior Art.
Furthermore, the exclusion of additional lubrication agents is not found within the claim scope, as a required limitation, and thus this particular argument relies on unclaimed limitations.
On page 8, Applicant argues that Fiume does not discuss fatty acids. This is a piecemeal argument that is per se unpersuasive, because it is the combined teaching that demonstrate obviousness (especially Kulkarni). Fiume was not used to address fatty acids.
On page 8, Applicant argues that Becker does not discuss fatty acids. This is a piecemeal argument that is per se unpersuasive, because it is the combined teaching that demonstrate obviousness (especially Kulkarni). Furthermore, Applicant “traverses” the combination of Kulkarni and Becker but does not provide a specific argument, for the Examiner to reply to. Becker was not used to address fatty acids.
On page 9, Applicant concludes. However, the claims remain under rejection for the above reasons.
Finally, in response to the arguments that the combined Prior Art does not teach the benefits of “soap-free” shaving compositions, those benefits are generally known to a PHOSITA. As evidence of this, Babinski (US5849281A) teaches soaps cause irritation to the skin, making rinsing more difficult, and cause razor blades to dull (col 1), whereby soap-free shaving compositions are known as beneficial within the Art (col 1). Thus, a PHOSITA looking at Kulkarni’s composition and choosing the option to exclude the fatty acid ingredient would understand that the final composition would be less irritating and better for razor blade longevity (i.e., the benefits of soap-free shaving compositions are expected benefits, according to the Prior Art).
Correspondence
THIS ACTION IS MADE FINAL. 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 extension fee 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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/R.P./Examiner, Art Unit 1614 5/28/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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