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 .
Priority
The present application is a National Stage entry of International application PCT/US2021/052176 filed 09/27/2021, which claims the benefit of Provisional US application 63084640 filed 09/29/2020.
Status of the Application
Receipt is acknowledged of Applicant’s claimed invention, filed 03/17/2023, in the matter of Application N° 18/245,739. Said documents have been entered on the record. 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 Objections
Claim 1-4, 7-17, and 21-25 are objected to because of the following informalities: w/w is only demonstrated to be w/w “of the composition” in claims 23-25 (but not in independent claim 1 for example), such that there is an inconsistency in whether the w/w is “of the composition” or some other total. Perhaps “based on the total weight of the composition” should be introduced in the independent claims to clarify. 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 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).
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, not 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 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 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).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-5p EST (M-Th).
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/R.P./Examiner, Art Unit 1614 1/26/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614