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 .
Status of the Claims
Claims 1, 3-7, 9-14, 16-18, and 21 are pending and under current examination. Claims 2, 8, 15, 19, and 20 are cancelled.
Withdrawn Claim Rejections
All rejections pertaining to claims 8 and 20 are moot because the claims are cancelled in the amendments filed 2/24/2026.
All rejections not reiterated have been withdrawn.
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, 3-7, 9-14, 16-18, and 21 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.
Claim 1 recites the limitation “a content of the raw material olefin having a double bond position at the 7-position or 8-position in the raw material olefin having 16 carbon atoms”. This renders the claim indefinite because it is not clear if the weight percentage refers to the content of the olefin with a double bond in the 7-position or 8-position alone or to a sum of the two populations.
Regarding claims 3-7, 9-14, 16-18, and 21, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 103
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 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, 3, 4, 6-14, 16-18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over D’Arras (WO2015140472, publication date: 9/24/2015, of record) in view of Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record).
Applicant’s Invention
Applicant’s claim 1 is drawn to a hair cleansing composition comprising the following components (A) to (C):(A) an internal olefin sulfonic acid having 16 carbon atoms or a salt thereof, obtained by sulfonation of a raw material olefin having 16 carbon atoms and having an average double bond position of 4.0-position or more and 4.4-position or less; (B) one or more amphoteric surfactants selected from the group consisting of carbobetaines and sulfobetaines each including an alkyl group, an alkenyl group, or an acyl group having from 8 to 18 carbon atoms ; and (C) one or more nonionic surfactant surfactants selected from the group consisting of a polyoxyalkylene alkyl ether, a fatty acid alkanolamide, and an alkyl glycoside, wherein a mass ratio of a content of the component (A) to the component (B), (A)/(B), is 1.2 or more and 8 or less, and a mass ratio of the component (A) to the component (C), (A)/(C), is 0.1 or more and 9 or less.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The examiner notes that the page and paragraph numbers of D’Arras cited in this office action refer to the machine translation of the description of the original application publication.
Regarding claim 1, D’Arras teaches a cosmetic composition for cleansing the hair and scalp (pg. 58, fourth paragraph) that contains a sulfonated mixture that comprises an internal olefin sulfonated derivative comprising 16 carbon atoms (pg. 3, second paragraph). The distribution of the double bond in the internal C16 olefins used to synthesize the internal olefin sulfonates is less than 1% by weight in the C-1 position, 27% by weight in the C-2 position, 23% by weight in the C-3 position, 18% in the C-4 position, 16% by weight in the C-5 position, 8% by weight in the C-6 position and 7% by weight in total on the C-7 and C-8 positions (pg. 59, second paragraph, Example 1). The composition may also contain nonionic and amphoteric surfactants (pg. 50, fifth paragraph). The amphoteric surfactants may include C8-C20 alkylamido (C1-C6) alkylbetaines, such as cocamidopropylbetaine (pg. 54, fifth paragraph). The nonionic surfactants may be alkyl polyglycosides (pg. 53, second paragraph). The C16 internal olefin sulfonate is present at a ratio of 79.4/20.6 relative to C18 olefins and at 12% by mass in the sulfonated mixture in the composition (pg. 60, Example 2). Cocamidopropyl betaine is present at 3% by mass of the composition (pg. 60, Example 2). D’Arras also teaches a composition wherein the internal olefin sulfonates have 16% by weight a sulfonate group on the carbon in the 2-position (pg. 60, seventh paragraph, Example 1).
Regarding claims 3 and 4, D’Arras teaches that the cocamidopropyl betaine is present at 3% by mass of the composition (pg. 60, Example 2) and that the one or more additional surfactant is present in an amount ranging from 0.1 to 25% by weight, relative to the total weight of the composition (pg. 56 seventh paragraph). D’Arras also teaches that the composition makes it possible to obtain optimum foaming performance with respect to the amount of nonsulfated surfactants present in the composition (pg. 6 third paragraph).
Regarding claim 6, D’Arras teaches the relevant limitations of claim 1 above.
Regarding claims 7, 9, 14, and 16, D’Arras teaches a composition wherein the internal olefin sulfonates have 16% by weight a sulfonate group on the carbon in the 2-position (pg. 60, seventh paragraph, Example 1). D’Arras also teaches that the distribution of the double bond in the internal C16 olefins used to synthesize the internal olefin sulfonates is less than 1% by weight in the C1 position, 27% by weight in the C-2 position, 23% by weight in the C-3 position, 18% in the C-4 position, 16% by weight in the C-5 position, 8% by weight in the C-6 position and 7% by weight in total on the C-7 and C-8 positions (pg. 59, second paragraph, Example 1).
Regarding claim 10, D’Arras teaches that the C16 internal olefin sulfonate is present at a ratio of 79.4/20.6 relative to C18 olefins and at 12% by mass in the sulfonated mixture in the composition (pg. 60, Example 2).
Regarding claim 11, D’Arras teaches that the weight ratio of the hydroxylated saturated form to the olefin saturated form in the final sulfonated mixture is 87/13 (pg. 60, Example 1).
Regarding claim 12, D’Arras teaches that cocamidopropyl betaine is present at 3% by mass of the composition (pg. 60, Example 2).
Regarding claim 17, D’Arras teaches a composition that contains a sulfonated mixture of C16 and C18 internal olefin sulfonates in a weight ratio of 79.4/20.6 (pg. 60, Example 1 and Example 2).
Regarding claim 18, D'Arras teaches that the composition may be used for washing keratin materials such as the skin and the hair (pg. 1, fifth para). The compositions are applied to keratin materials, preferably wetted, the foam generated by massage or friction with the hands or a toilet glove, followed by rinsing to remove the soiling present on the hair or skin (pg. 1 fifth para).
Regarding claim 21, D’Arras teaches a composition wherein the internal olefin sulfonates have 16% by weight a sulfonate group on the carbon in the 2-position (pg. 60, seventh paragraph, Example 1). D’Arras also teaches that the distribution of the double bond in the internal C16 olefins used to synthesize the internal olefin sulfonates is less than 1% by weight in the C1 position, 27% by weight in the C-2 position, 23% by weight in the C-3 position, 18% in the C-4 position, 16% by weight in the C-5 position, 8% by weight in the C-6 position and 7% by weight in total on the C-7 and C-8 positions (pg. 59, second paragraph, Example 1).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1 and 13, D’Arras does not teach the average double bond position of the raw material olefin materials or a mass ratio of internal olefin sulfonic acid to nonionic surfactant within the range embraced by the instant claims. However, this deficiency is cured by Doi.
Doi teaches a hair cleansing composition comprising an internal olefin sulfonate having 12 or more and 24 or less carbon atoms [0011]. The composition may contain an additional surfactant, preferably a nonionic or amphoteric surfactant [0052]. The mass ratio of the internal olefin sulfonate to additional surfactant is preferably from 1000 to 0.1 from the viewpoint of improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070]. Doi also teaches that from the viewpoint of acquiring lathering property and a creamy foam quality for easy washing, improving a durability of foam and rinse feel, and imparting to hair combability and softness from during rinsing to after drying and manageability after drying, and imparting a moist feeling to skin, the content of an internal olefin in which the double bound is present at the C-2 position in the raw material internal olefin is preferably 40% by mass or less. From the viewpoint of reducing the production cost and improving productivity, and from the viewpoint of durability of foam and manageability after drying hair, the lower limit of an internal olefin in which the double bound is present at the C-2 position in the raw material internal olefin is 5% by mass or more [0036]. From the viewpoint of improving lathering property, foam quality, durability of foam and a rinse feel as well as imparting to hair combability and softness from during rinsing to after drying and manageability after drying, and imparting a moist feeling to skin, the total content of raw material olefin in which the double bond is present further inside than the C-3 position in the raw material olefin is preferably 65% by mass or more [0040].
Regarding claim 3, D’Arras does not teach a mass ratio of the amphoteric to the nonionic surfactant in the composition.
Regarding claim 6, D’Arras does not teach a nonionic surfactant embraced by the instant claim. However, this deficiency is cured by Doi.
Doi teaches a hair cleansing composition comprising an internal olefin sulfonate having 12 or more and 24 or less carbon atoms [0011]. The composition may contain an additional surfactant, preferably a nonionic or amphoteric surfactant [0052]. The nonionic surfactant may include coconut oil fatty acid N-methyl monoethanolamide [0058].
Regarding claim 7, D’Arras does not teach that the content of the internal olefin sulfonates with a sulfonate group at carbons 1-4 comprises between 40-75% by weight of the internal olefin sulfonates of the composition.
Regarding claim 9, D’Arras does not teach that the content of the internal olefin sulfonates with a sulfonate at the 3-position comprises between 5-30% by weight of the internal olefin sulfonates of the composition.
Regarding claim 14, D’Arras does not teach that the content of the internal olefin sulfonates with a sulfonate group at a 4-position comprises between 15-30% by weight of the internal olefin sulfonate of the composition.
Regarding claim 16, D’Arras does not teach that the content of the internal olefin sulfonates with a sulfonate group at the 1-position comprises less than 3% by weight of the internal olefin sulfonate of the composition.
Regarding claim 17, D’Arras does not teach a weight ratio of C16 internal olefin sulfonic acid to another internal olefin sulfonic acid that lies within the range embraced by the instant claims. However, this deficiency is cured by Doi.
Doi teaches that from the viewpoint of improving detergency, foam quality, foamability, durability of foam and rinse feel, imparting to hair combability and softness from during rinsing to after drying and manageability after drying, and imparting a moist feeling to skin, the mass content ratio of an internal olefin sulfonate having 16 carbon atoms to an internal olefin sulfonate having 18 carbon atoms in the cleansing composition may range from 50/50 to 99/1 [0022].
Regarding claims 1 and 21, D’Arras does not teach a content of raw olefin material with a double bond in the 1, 2, 3, 5, or 6-position in the mass percentage range embraced by the instant claim. However, this deficiency is cured by Doi.
Doi teaches that from the viewpoint of acquiring lathering property and a creamy foam quality for easy washing, improving a durability of foam and rinse feel, and imparting to hair combability and softness from during rinsing to after drying and manageability after drying, and imparting a moist feeling to skin, the content of an internal olefin in which the double bound is present at the C-2 position in the raw material internal olefin is preferably 40% by mass or less. From the viewpoint of reducing the production cost and improving productivity, and from the viewpoint of durability of foam and manageability after drying hair, the lower limit of an internal olefin in which the double bound is present at the C-2 position in the raw material internal olefin is 5% by mass or more [0036]. From the viewpoint of improving lathering property, foam quality, durability of foam and a rinse feel as well as imparting to hair combability and softness from during rinsing to after drying and manageability after drying, and imparting a moist feeling to skin, the total content of raw material olefin in which the double bond is present further inside than the C-3 position in the raw material olefin is preferably 65% by mass or more [0040].
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1 and 13, the average double bond position of the raw material olefin is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal average double bond position of the raw olefin material in order to best achieve the desired results as such would provide advantageous surfactant properties to the hair cleansing composition. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Doi teaches that the distribution of internal olefin sulfonates with double bonds at specific positions has a direct effect on lathering property, foam quality, durability of foam and a rinse feel as well as imparting to hair combability and softness from during rinsing to after drying and manageability after drying, and imparting a moist feeling to skin [0036 and 0040]. The Examiner considers it prima facie obvious to optimize the properties of the precursor to an active ingredient within a composition to achieve the synthesis of ingredients with a known effect on the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the distribution of internal olefin sulfonates with double bonds at specific positions would have a direct effect on the lathering and foam properties of the composition and therefore be an optimizable variable.
The mass ratio of internal olefin sulfonate to nonionic surfactant of the instant claim 1 is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal mass ratio in order to best achieve the desired results as such would provide advantageous formulation effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Yasuhiro teaches that the mass ratio of the internal olefin sulfonate to additional surfactant has a direct effect on improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070]. The Examiner considers it prima facie obvious to optimize the mass ratio of internal olefin sulfonate to nonionic surfactant, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mass ratio of internal olefin sulfonate to nonionic surfactant would have a direct effect on the foaming properties and rinse feel of the composition and therefore be an optimizable variable.
Regarding claim 3, the mass ratio of amphoteric and nonionic surfactants is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal mass ratio in order to best achieve the desired results as such would provide advantageous foaming effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, D’Arras teaches that the composition makes it possible to obtain optimum foaming performance with respect to the amount of nonsulfated surfactants present in the composition (pg. 6 third paragraph). The Examiner considers it prima facie obvious to optimize the mass ratio of amphoteric and nonionic surfactants, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mass ratio of amphoteric and nonionic surfactant would have a direct effect on the foaming performance of the composition therefore be an optimizable variable.
Regarding claim 6, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional nonionic surfactants used in hair cleansing compositions comprising internal olefin sulfonates. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding claims 1, 7, 9, 14, and 16, the amount of internal olefin sulfonate with a sulfonate positioned at positions 1-4 is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of internal olefin sulfonate with sulfonates positioned at carbons 1-4 in order to best achieve the desired results as such would provide advantageous surfactant properties to the hair cleansing composition. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, D’Arras teaches C16 olefins with a population of the double bond positioned at carbons 1-8 and that anionic surfactants such as internal olefin sulfonates provide very good detergent properties (pg. 1, seventh paragraph). The Examiner considers it prima facie obvious to optimize the amounts of an active ingredient within a composition to achieve their known effect on the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of each internal olefin sulfonate with sulfonate groups at specific positions on the olefin would affect the surfactant properties of the composition and therefore be an optimizable variable.
Regarding the mass ratio of C16 to C18 internal olefin sulfonic acids as specified in claim 17, MPEP 2144.05 states:
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).
Furthermore, Doi teaches that a mass ratio of C16 to C18 internal olefin sulfonic acids between 50/50 and 99:1 has a direct effect on the detergency, foam quality, foam durability, and rinse feel of the composition [0022]. The Applicants' specification provides no evidence that the selected mass ratio in claim 17 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effect of the mass ratio of C16 to C18 internal olefin sulfonic acids on the detergency, foam quality, foam durability, and rinse feel of the composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the mass ratio to lie within the range embraced by the instant claim. One of ordinary skill in the art would have been motivated to change the mass ratio as this could be expected to be advantageous for improving the foaming and cleansing properties of the composition.
Regarding claims 1 and 21, the mass percentage of raw material olefins containing double bonds at various positions is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal mass percentage of the raw material olefin with double bonds at specific positions in order to best achieve the desired results as such would provide advantageous foaming and cleansing properties. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Doi teaches that the weight percentages of raw material olefins at with double bonds at specific positions affect the foaming and cleansing properties of the composition and have a direct effect on the manageability of the hair after drying. The Examiner considers it prima facie obvious to optimize the mass percentage of the raw material olefins with double bonds at specific positions, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mass percentage of raw material olefin with double bonds at specific positions would have a direct effect on the foam, durability of foam, cleansing, and end-result manageability rendered by the composition and therefore be an optimizable variable.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over D’Arras (WO2015140472, publication date: 9/24/2015, of record) in view of Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record), as applied to claims 1, 3, 4, 6-14, 16-18, 20, and 21 above, and further in view of Torres Rivera (U.S Patent Application Publication No. 2019/0142711, publication year: 2019, of record).
Applicant’s Invention
D’Arras, in view of Doi, renders obvious the relevant limitations of claim 1 above. Applicant’s claim 5 further adds the limitation of the hair cleansing composition according to claim 1, wherein the component (B) comprises one or more selected from the group consisting of lauramidopropyl betaine and lauramidopropyl hydroxysulfobetaine.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
D’Arras teaches that the amphoteric surfactant present in the composition may include (C8-C20)alkylamido(C1-C6)alkylbetaines and (C8-C20)alkylamido(C1-C6)alkylsulfobetaines (pg. 54 fifth paragraph).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
D’Arras does not teach the inclusion of lauramidopropyl betaine or lauramidopropyl hydroxysulfobetaine. However, this deficiency is cured by Torres Rivera.
Torres Rivera teaches a hair care composition that may contain mixtures of alkene sulfonates as a detersive surfactant [0026 and 0039]. The composition may comprise a cosurfactant such as lauramidopropyl betaine, cocamidopropyl betaine, and laurylsultaine [0043]. Torres Rivera teaches that lauramidopropyl betaine and lauryl hydroxysultaine are zwitterionic surfactants [0048]. However, with regards to the “amphoteric” limitations of instant claim 1 and 5, the prior art teaches the same surfactant as claimed and therefore, the amphoteric properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Therefore, the Examiner considers the teachings of Torres Rivera to read on the amphoteric surfactants of the instant claims.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional cosurfactants used in hair cleansing compositions comprising internal olefin sulfonates. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 2/24/2026 have been fully considered but they are not persuasive.
On page 10, Applicant argues that none of the cited references recognizes any properties of the olefin raw material as being a result-effective variable for low-temperature stability. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2144.05 (II)(A) which states: “a mere carrying forward of an original patented conception involving only change of form, proportions, or degree or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions”. As described in the obviousness rejection above, Doi teaches that the weight percentages of raw material olefins at with double bonds at specific positions affect the foaming and cleansing properties of the composition and have a direct effect on the manageability of the hair after drying. The Examiner considers it prima facie obvious to optimize the mass percentage of the raw material olefins with double bonds at specific positions, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mass percentage of raw material olefin with double bonds at specific positions would have a direct effect on the foam, durability of foam, cleansing, and end-result manageability rendered by the composition and therefore be an optimizable variable. Furthermore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., low-temperature stability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the argument is not persuasive and the rejection is maintained.
On page 10, Applicant argues that the hair cleansing composition of the instant claims is associated with unexpected results relating to improved foaming. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results amounts to improved foaming, smoothness of foam, softness of hair, and low temperature stability when the composition comprises internal olefin sulfonates within the limits of the instant claims. Yoshikawa (U.S. Patent No. 9,713,584) teaches that it is preferable that the content of the internal olefin sulfonate with the double bond at the C-1 position is less than 2.8% by mass (col. 6, line 42) and the content with the double bond at the C-2 position is 23% by mass or less (col. 7 line 6) from the viewpoint of foamability, volume of foam, foaming speed, and foam dissipation ( col. 6 line 47 and col. 7 line 10). For foamability, it is preferable that the content of an internal olefin sulfonate in which the sulfonate group is present at the C-2 position is low while the content of an internal olefin sulfonate in which the sulfonate group is present further inside is high (col. 4 lines 1-2). Thus, it is clear that the weight percentage of internal olefin sulfonates at particular positions has a direct effect on the foaming properties of a shampoo composition and is therefore an optimizable variable. Furthermore, the evidence presented in Tables 3 and 4 of the instant specification does not clearly demonstrate the criticality of internal olefin sulfonate composition to the improved properties of the composition. In Table 3, the inventive examples 1 and 2 appear to demonstrate that the amounts of the internal olefin sulfonate and lauramidopropyl betaine have an effect on the low-temperature stability of the composition in that example 2 has improved low-temperature stability and softness of hair. Furthermore, comparative example 2 does not contain the internal olefin sulfonate and a higher amount of lauramidopropyl betaine yet has better low-temperature stability than example 1, which contains internal olefin sulfonate A1. In Table 4, comparative examples 6 and 7 contains internal olefin sulfonates A5 and A7, respectively, which are outside of the limitations of the instant invention, and yet have identical low-temperature stability to those compositions within the limitations of the instant invention. Therefore, the evidence of unexpected results are not unobvious or unexpected.
Differences are of both practical and statistical significance: The differences are of practical and statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The instant claim 1 embraces any carbobetaine or sulfobetaine with an alkyl, alkenyl group, or an acyl group with 8-18 carbon atoms as component B and any polyoxyalkylene ether, fatty acid alkanoloamide, or alkyl glycoside as component C. Claim 5 limits component B to lauramidopropyl betaine and lauramidopropyl hydroxysulfobetaine and claim 6 limits component C to cocoyl N-methylethanolamide, polyoxyethylene (6) lauryl ether, lauryl glucoside, and 2-ethylhexylglyceryl ether. Therefore, in order to be in commensurate scope with the claims, the evidence of unexpected results must demonstrate improved foaming, smoothness of foam, softness of hair, and low temperature stability with each and every species and each and every possible combination embraced by the instant claims 5 and 6. However, the evidence of unexpected results are limited to compositions that contain the instant internal olefin sulfonates, lauramidopropyl betaine, and cocoyl N-methylethanolamide. Therefore, the evidence of unexpected results are not in commensurate scope with the claims.
Additionally, no side-by-side comparison to the closest prior art is provided to establish unexpectedly superior performance. There is no nexus between the purportedly unexpected property and the differences between the instant invention, as claimed, and the closest prior art. Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
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, 3, 4, 6-7, 9-14, 16-18, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,594,225 in view of D’Arras (WO2015140472, publication date: 9/24/2015, of record) and Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims in view of D’Arras.
Inter alia, the claims of the ‘225 patent teach a hair cleansing composition that contains an internal olefin sulfonic acid having 16 carbon atoms or a salt thereof, obtained by sulfonation of a raw material olefin having 16 carbon atoms and having an average double bond position of 4.0-4.4. The composition may also contain cationated hydroxyethyl cellulose. The content of a raw material olefin having a double bond position at a 1-position is less than 5% by mass, a content of a raw material olefin having a double bond position at a 2-position is from 20 to 24% by mass, and a content of a double bond at a 7 or 8-position is from 12 to 16% by mass. The content of the internal olefin sulfonic acid may include a sulfonate group at a 1-position or more and a 4-position or less at 40-75% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonates including a sulfonate group at a 2-position is 10-35% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonates including a sulfonate group at a 3-position is 5-30% by weight of the total internal olefin sulfonates of the composition. The claims of the ‘225 patent also teach that the internal olefin sulfonates comprise 0.01-30% by weight of the total weight of the composition. The ratio of hydroxy form to olefin form of the internal olefin sulfonic acids may range from 50/50 to 100/0. The content of the internal olefin sulfonic acid may include a sulfonate group at a 4-position at 15-30% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonic acid may include a sulfonate group at a 1-position is less than 3% by weight of the total internal olefin sulfonates of the composition. The claims of the ‘097 application also embrace an additional component of the composition that comprises an internal olefin sulfonic acid other than those having 16 carbon atoms wherein the mass ratio of C16 internal olefin sulfonates and the additional internal olefin sulfonates is 0.95 or more. The raw material olefin with 16 carbons has a content of raw olefin material with a double bond position at 3 from 16-19 mass%, a double bond position at 4 from 17-19 mass%, a double bond position at 5 from 13-15 mass%, and a double bond position at 6 from 11-13 mass%.
The claims of the ‘225 patent do not embrace an amphoteric surfactant or nonionic surfactant nor does it embrace any weight ratios relative to those surfactants in the composition. However, this deficiency is cured by D’Arras and Doi. D’Arras teaches a cosmetic composition for cleansing the hair and scalp (pg. 58, fourth paragraph) that contains a sulfonated mixture that comprises an internal olefin sulfonated derivative comprising 16 carbon atoms (pg. 3, second paragraph). The distribution of the double bond in the internal C16 olefins used to synthesize the internal olefin sulfonates is less than 1% by weight in the C-1 position, 27% by weight in the C-2 position, 23% by weight in the C-3 position, 18% in the C-4 position, 16% by weight in the C-5 position, 8% by weight in the C-6 position and 7% by weight in total on the C-7 and C-8 positions (pg. 59, second paragraph, Example 1). The composition may also contain nonionic and amphoteric surfactants (pg. 50, fifth paragraph). The amphoteric surfactants may include C8-C20 alkylamido (C1-C6) alkylbetaines, such as cocamidopropylbetaine (pg. 54, fifth paragraph). The nonionic surfactants may be alkyl polyglycosides (pg. 53, second paragraph). The C16 internal olefin sulfonate is present at a ratio of 79.4/20.6 relative to C18 olefins and at 12% by mass in the sulfonated mixture in the composition (pg. 60, Example 2). Cocamidopropyl betaine is present at 3% by mass of the composition (pg. 60, Example 2). Doi teaches a hair cleansing composition comprising an internal olefin sulfonate having 12 or more and 24 or less carbon atoms [0011]. The composition may contain an additional surfactant, preferably a nonionic or amphoteric surfactant [0052]. The mass ratio of the internal olefin sulfonate to additional surfactant is preferably from 1000 to 0.1 from the viewpoint of improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070].
It would have been prima facie obvious to one of ordinary skill in the art of filing that the hair cleansing composition embraced by the claims of the ‘225 patent may also contain an amphoteric surfactant and nonionic surfactant at the weight ratios embraced by the instant claims. One would have understood in view of D’Arras that a hair cleansing composition that comprises an internal olefin sulfonate and a cationic polymer may also contain an amphoteric and nonionic surfactant at levels that encompass the weight ratios embraced by the instant claims. It would have been obvious to include an amphoteric and nonionic surfactant in the composition embraced by the claims of the ‘225 patent. One of ordinary skill in the art of filing would have been motivated to include the additional surfactants in order to optimize the surfactant and cleansing properties of the hair cleansing composition. The artisan of ordinary skill would have had reasonable expectation of success because D’Arras teaches that a hair cleansing composition may contain an amphoteric and nonionic surfactant in addition to the internal olefin sulfonates and cationic polymers.
The mass ratio of internal olefin sulfonate to nonionic surfactant of the instant claim 1 is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal mass ratio in order to best achieve the desired results as such would provide advantageous formulation effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Yasuhiro teaches that the mass ratio of the internal olefin sulfonate to additional surfactant has a direct effect on improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070]. The Examiner considers it prima facie obvious to optimize the mass ratio of internal olefin sulfonate to nonionic surfactant, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mass ratio of internal olefin sulfonate to nonionic surfactant would have a direct effect on the foaming properties and rinse feel of the composition and therefore be an optimizable variable.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,594,225 in view of D’Arras (WO2015140472, publication date: 9/24/2015, of record) and Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record), as applied to claims 1, 3, 4, 6-7, 9-14, 16-18, and 21 above, and further in view of Torres Rivera (U.S Patent Application Publication No. 2019/0142711, publication year: 2019, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims in view of D’Arras.
Inter alia, the claims of the ‘225 patent teach the relevant limitations above. The claims of the ‘225 patent do not teach the inclusion of an amphoteric surfactant. The relevant limitations of claim 5 have been rendered obvious in the non-statutory double patenting rejection above except for the species of amphoteric surfactant embraced by the instant claim 5. This deficiency is cured by D’Arras and Torres Rivera. D’Arras teaches that the amphoteric surfactant present in the composition may include (C8-C20)alkylamido(C1-C6)alkylbetaines and (C8-C20)alkylamido(C1-C6)alkylsulfobetaines (pg. 54 fifth paragraph). Torres Rivera teaches a hair car composition that may contain mixtures of alkene sulfonates as a detersive surfactant [0026 and 0039]. The composition may comprise a cosurfactant such as lauramidopropyl betaine, cocamidopropyl betaine, and laurylsultaine [0043]. Torres Rivera teaches that lauramidopropyl betaine and lauryl hydroxysultaine are zwitterionic surfactants [0048]. However, with regards to the “amphoteric” limitations of instant claim 1 and 5, the prior art teaches the same surfactant as claimed and therefore, the amphoteric properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Therefore, the Examiner considers the teachings of Torres Rivera to read on the amphoteric surfactants of the instant claims.
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional cosurfactants used in hair cleansing compositions comprising internal olefin sulfonates. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Claims 1, 3, 4, 6-7, 9-14, 16-18, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/247,219 in view of D’Arras (WO2015140472, publication date: 9/24/2015, of record) and Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims in view of D’Arras.
Inter alia, the claims of the ‘219 application teach a hair cleansing composition that contains an internal olefin sulfonic acid having 16 carbon atoms or a salt thereof, obtained by sulfonation of a raw material olefin having 16 carbon atoms and having an average double bond position of 4.0 or more and 4.3-position or less. The composition may also contain an anionic surfactant. The content of the internal olefin sulfonic acid may include a sulfonate group at a 1-position or more and a 4-position or less at 40-75% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonates including a sulfonate group at a 2-position is 10-35% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonates including a sulfonate group at a 3-position is 5-30% by weight of the total internal olefin sulfonates of the composition. The claims of the ‘219 application also teach that the internal olefin sulfonates comprise 0.01-30% by weight of the total weight of the composition. The ratio of hydroxy form to olefin form of the internal olefin sulfonic acids may range from 50/50 to 100/0. The average double bond position in the raw material olefin having 16 carbon atoms is 4.0-4.3-position. The content of the internal olefin sulfonic acid may include a sulfonate group at a 4-position at 15-30% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonic acid may include a sulfonate group at a 1-position is less than 3% by weight of the total internal olefin sulfonates of the composition. The claims of the ‘219 application also embrace an additional component of the composition that comprises an internal olefin sulfonic acid other than those having 16 carbon atoms wherein the mass ratio of C16 internal olefin sulfonates and the additional internal olefin sulfonates is 0.95 or more. The content of the raw material olefin having a double bond position at the 1-position is less than 5.0% by mass, from 20-24% by mass at the 2-position, and from 12 to 16 mass% at the 7 or 8 position. The claims of the ‘219 application also embrace a method of washing hair with the hair cleansing composition and a low-temperature stabilization method for a hair cleansing composition.
The claims of the ‘219 application do not embrace an amphoteric surfactant or nonionic surfactant nor does it embrace any weight ratios relative to those surfactants in the composition. However, this deficiency is cured by D’Arras and Doi. D’Arras teaches a cosmetic composition for cleansing the hair and the scalp that (pg. 58, fourth paragraph) that contains a sulfonated mixture that comprises an internal olefin sulfonated derivative comprising 16 carbon atoms (pg. 3, second paragraph). The distribution of the double bond in the internal C16 olefins ins less than 1% by weight in the C1 position, 27% by weight in the C-2 position, 23% by weight in the C-3 position, 18% in the C-4 position, 16% by weight in the C-5 position, 8% by weight in the C-6 position and 7% by weight in total on the C-7 and C-8 positions (pg. 59, second paragraph). The composition also comprises one or more additional surfactants chosen from nonionic, amphoteric or anionic surfactants other that the sulfonate surfactants of the sulfonated mixture above, alone or as a mixture (pg. 50 fifth paragraph). D’Arras also teaches that the amount of sulfonated mixture is greater than or equal to the amount of additional surfactants, and may range in ratio from 90/10 to 50/50 (pg. 56, eighth paragraph). D’Arras also teaches that the amphoteric surfactants may be sulfobetaines (pg. 54, fifth paragraph) and that the nonionic surfactants may be alkyl polyglycolides (pg. 53, second paragraph). Doi teaches a hair cleansing composition comprising an internal olefin sulfonate having 12 or more and 24 or less carbon atoms [0011]. The composition may contain an additional surfactant, preferably a nonionic or amphoteric surfactant [0052]. The mass ratio of the internal olefin sulfonate to additional surfactant is preferably from 1000 to 0.1 from the viewpoint of improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070].
It would have been prima facie obvious to one of ordinary skill in the art of filing that the hair cleansing composition embraced by the claims of the ‘219 application may also contain an amphoteric surfactant and nonionic surfactant at the weight ratios embraced by the instant claims. One would have understood in view of D’Arras that a hair cleansing composition that comprises an internal olefin sulfonate and an anionic surfactant may also contain an amphoteric and nonionic surfactant at levels that encompass the weight ratios embraced by the instant claims. It would have been obvious to include an amphoteric and nonionic surfactant in the composition embraced by the claims of the ‘219 application. One of ordinary skill in the art of filing would have been motivated to include the additional surfactants in order to optimize the surfactant and cleansing properties of the hair cleansing composition. The artisan of ordinary skill would have had reasonable expectation of success because D’Arras teaches that a hair cleansing composition may contain an amphoteric and nonionic surfactant in addition to the internal olefin sulfonates and anionic surfactant.
The mass ratio of internal olefin sulfonate to nonionic surfactant of the instant claim 1 is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal mass ratio in order to best achieve the desired results as such would provide advantageous formulation effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Yasuhiro teaches that the mass ratio of the internal olefin sulfonate to additional surfactant has a direct effect on improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070]. The Examiner considers it prima facie obvious to optimize the mass ratio of internal olefin sulfonate to nonionic surfactant, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mass ratio of internal olefin sulfonate to nonionic surfactant would have a direct effect on the foaming properties and rinse feel of the composition and therefore be an optimizable variable.
This is a provisional nonstatutory double patenting rejection because the copending claims have not yet been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/247,219 in view of D’Arras (WO2015140472, publication date: 9/24/2015, of record) and Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record), as applied to claims 1, 3, 4, 6-7, 9-14, 16-18, and 21 above, and further in view of Torres Rivera (U.S Patent Application Publication No. 2019/0142711, publication year: 2019, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims in view of D’Arras.
Inter alia, the claims of the ‘219 application teach the relevant limitations above. The claims of the ‘219 application do not teach the inclusion of an amphoteric surfactant. The relevant limitations of claim 5 have been rendered obvious in the non-statutory double patenting rejection above except for the species of amphoteric surfactant embraced by the instant claim 5. This deficiency is cured by D’Arras and Torres Rivera. D’Arras teaches that the amphoteric surfactant present in the composition may include (C8-C20)alkylamido(C1-C6)alkylbetaines and (C8-C20)alkylamido(C1-C6)alkylsulfobetaines (pg. 54 fifth paragraph). Torres Rivera teaches a hair car composition that may contain mixtures of alkene sulfonates as a detersive surfactant [0026 and 0039]. The composition may comprise a cosurfactant such as lauramidopropyl betaine, cocamidopropyl betaine, and laurylsultaine [0043]. Torres Rivera teaches that lauramidopropyl betaine and lauryl hydroxysultaine are zwitterionic surfactants [0048]. However, with regards to the “amphoteric” limitations of instant claim 1 and 5, the prior art teaches the same surfactant as claimed and therefore, the amphoteric properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Therefore, the Examiner considers the teachings of Torres Rivera to read on the amphoteric surfactants of the instant claims.
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional cosurfactants used in hair cleansing compositions comprising internal olefin sulfonates. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
This is a provisional nonstatutory double patenting rejection because the copending claims have not yet been patented.
Claims 1, 3, 4, 6-7, 9-14,16-18, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/849,628 in view of D’Arras (WO2015140472, publication date: 9/24/2015, of record) and Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims in view of D’Arras.
Inter alia, the claims of the ‘628 application teach a hair cleansing composition that contains an internal olefin sulfonic acid having 16 carbon atoms or a salt thereof, obtained by sulfonation of a raw material olefin having 16 carbon atoms and having an average double bond position of 3.9-position or more and 4.5-position or less. The composition may also contain an organic acid. The content of the internal olefin sulfonic acid may include a sulfonate group at a 1-position or more and a 4-position or less at 40-75% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonates including a sulfonate group at a 2-position is 10-35% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonates including a sulfonate group at a 3-position is 5-30% by weight of the total internal olefin sulfonates of the composition. The claims of the ‘628 application also teach that the internal olefin sulfonates comprise 0.01-30% by weight of the total weight of the composition. The ratio of hydroxy form to olefin form of the internal olefin sulfonic acids may range from 50/50 to 100/0.
The claims of the ‘628 application do not embrace an average double bond position of the C16 internal olefin sulfonates at 4.0-4.4-position, a content of the internal olefin sulfonate with a sulfonate group at a 4-position at 15-30% by weight of the total internal olefin sulfonates of the composition, an additional internal olefin sulfonate other than the C16 internal olefin sulfonate, or a method of washing hair with the hair cleansing composition. The claims of the ‘219 application also do not embrace an amphoteric surfactant or nonionic surfactant nor does it embrace any weight ratios relative to those surfactants in the composition. However, these deficiencies are cured by D’Arras and Doi.
D’Arras teaches a cosmetic composition for cleansing the hair and the scalp that (pg. 58, fourth paragraph) that contains a sulfonated mixture that comprises an internal olefin sulfonated derivative comprising 16 carbon atoms (pg. 3, second paragraph). The distribution of the double bond in the internal C16 olefins ins less than 1% by weight in the C1 position, 27% by weight in the C-2 position, 23% by weight in the C-3 position, 18% in the C-4 position, 16% by weight in the C-5 position, 8% by weight in the C-6 position and 7% by weight in total on the C-7 and C-8 positions (pg. 59, second paragraph). The composition also comprises one or more additional surfactants chosen from nonionic, amphoteric or anionic surfactants other that the sulfonate surfactants of the sulfonated mixture above, alone or as a mixture (pg. 50 fifth paragraph). The composition may also contain organic acids such as pectin acid or alginic acid (pg. 38, seventh paragraph). D’Arras also teaches that the amount of sulfonated mixture is greater than or equal to the amount of additional surfactants, and may range in ratio from 90/10 to 50/50 (pg. 56, eighth paragraph). D’Arras also teaches that the amphoteric surfactants may be sulfobetaines (pg. 54, fifth paragraph) and that the nonionic surfactants may be alkyl polyglycolides (pg. 53, second paragraph). D’Arras teaches a composition that contains a sulfonated mixture of C16 and C18 internal olefin sulfonates in a weight ratio of 79.4/20.6 (pg. 60, Example 1 and Example 2). D'Arras also teaches that the composition may be used for washing keratin materials such as the skin and the hair (pg. 1, fifth para). The compositions are applied to keratin materials, preferably wetted, the foam generated by massage or friction with the hands or a toilet glove, followed by rinsing to remove the soiling present on the hair or skin (pg. 1 fifth para). Doi teaches a hair cleansing composition comprising an internal olefin sulfonate having 12 or more and 24 or less carbon atoms [0011]. The composition may contain an additional surfactant, preferably a nonionic or amphoteric surfactant [0052]. The mass ratio of the internal olefin sulfonate to additional surfactant is preferably from 1000 to 0.1 from the viewpoint of improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070].
It would have been prima facie obvious to one of ordinary skill in the art of filing that the hair cleansing composition embraced by the claims of the ‘628 application may also contain an amphoteric surfactant and nonionic surfactant at the weight ratios embraced by the instant claims. One would have understood in view of D’Arras that a hair cleansing composition that comprises an internal olefin sulfonate and an organic acid may also contain an amphoteric and nonionic surfactant at levels that encompass the weight ratios embraced by the instant claims. It would have been obvious to include an amphoteric and nonionic surfactant in the composition embraced by the claims of the ‘628 application. One of ordinary skill in the art of filing would have been motivated to include the additional surfactants in order to optimize the surfactant and cleansing properties of the hair cleansing composition. The artisan of ordinary skill would have had reasonable expectation of success because D’Arras teaches that a hair cleansing composition may contain an amphoteric and nonionic surfactant in addition to the internal olefin sulfonates and organic acid.
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing that the composition embraced by the claims of the ‘628 application may also contain an additional internal olefin sulfonate other than the C16 internal olefin sulfonate embraced by the claims of the ‘628 application. One would have understood in view of D’Arras that a hair cleansing composition comprised of a C16 internal olefin sulfonate and organic acid may also contain a C18 internal olefin sulfonate. It would have been obvious to include the C18 internal olefin sulfonates embraced by D’Arras in the composition embraced by the claims of the ‘628 application. One of ordinary skill in the art of filing would have been motivated to include the additional C18 internal olefin sulfonate in the composition embraced by the claims of the ‘628 application in order to lend its surfactant properties to the composition. The artisan of ordinary skill would have had reasonable expectation of success because D’Arras teaches a hair cleansing composition that contains C16 and C16 internal olefin sulfonates in addition to an organic acid.
It would have been prima facie obvious to one of ordinary skill in the art of filing the utilize the hair cleansing composition embraced by the claims of the ‘628 application in a method of washing hair. One would have understood in view of D’Arras that a hair cleansing composition comprised of an internal olefin sulfonate and organic acid may be used in a hair washing method that comprises wetting the hair, washing the hair with the composition, and rinsing the hair. It would have been obvious to use the composition embraced by the claims of the ’628 application in such a method. One of ordinary skill in the art of filing would have been motivated to use the hair cleansing composition in such a method of washing hair in order to utilize the hair cleansing properties of the composition. The artisan of ordinary skill would have had reasonable expectation of success because D’Arras teaches a method of washing hair using a hair cleansing composition comprised of internal olefin sulfonates and an organic acid.
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing that the composition embraced by the claims of the ‘628 application may be used to in a low-temperature stabilization method for a hair cleansing composition. One would have understood, in view of D’Arras, that the composition embraced by the claims of the ‘628 application may be used in a hair cleansing composition substantially identical to that embraced by the instant claims. Because a composition cannot be separated from its properties, the use of the composition in a low-temperature stabilization method for a hair cleansing composition is inherent. See MPEP 2112.01 (II).
The mass ratio of internal olefin sulfonate to nonionic surfactant of the instant claim 1 is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal mass ratio in order to best achieve the desired results as such would provide advantageous formulation effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Yasuhiro teaches that the mass ratio of the internal olefin sulfonate to additional surfactant has a direct effect on improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070]. The Examiner considers it prima facie obvious to optimize the mass ratio of internal olefin sulfonate to nonionic surfactant, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mass ratio of internal olefin sulfonate to nonionic surfactant would have a direct effect on the foaming properties and rinse feel of the composition and therefore be an optimizable variable.
This is a provisional nonstatutory double patenting rejection because the copending claims have not yet been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/849,628 in view of D’Arras (WO2015140472, publication date: 9/24/2015, of record) and Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record), as applied to claims 1, 3, 4, 6-7, 9-14,16-18, and 21 above, and further in view of Torres Rivera (U.S Patent Application Publication No. 2019/0142711, publication year: 2019, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims in view of D’Arras.
Inter alia, the claims of the ‘628 application teach the relevant limitations above. The claims of the ‘628 application do not teach the inclusion of an amphoteric surfactant. The relevant limitations of claim 5 have been rendered obvious in the non-statutory double patenting rejection above except for the species of amphoteric surfactant embraced by the instant claim 5. This deficiency is cured by D’Arras and Torres Rivera. D’Arras teaches that the amphoteric surfactant present in the composition may include (C8-C20)alkylamido(C1-C6)alkylbetaines and (C8-C20)alkylamido(C1-C6)alkylsulfobetaines (pg. 54 fifth paragraph). Torres Rivera teaches a hair car composition that may contain mixtures of alkene sulfonates as a detersive surfactant [0026 and 0039]. The composition may comprise a cosurfactant such as lauramidopropyl betaine, cocamidopropyl betaine, and laurylsultaine [0043]. Torres Rivera teaches that lauramidopropyl betaine and lauryl hydroxysultaine are zwitterionic surfactants [0048]. However, with regards to the “amphoteric” limitations of instant claim 1 and 5, the prior art teaches the same surfactant as claimed and therefore, the amphoteric properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Therefore, the Examiner considers the teachings of Torres Rivera to read on the amphoteric surfactants of the instant claims.
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional cosurfactants used in hair cleansing compositions comprising internal olefin sulfonates. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
This is a provisional nonstatutory double patenting rejection because the copending claims have not yet been patented.
Claims 1, 3, 4, 6-7, 9-14,16-18, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/849,780 in view of D’Arras (WO2015140472, publication date: 9/24/2015, of record) and Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims in view of D’Arras.
Inter alia, the claims of the ‘780 application teach a hair cleansing composition that contains an internal olefin sulfonic acid having 16 carbon atoms or a salt thereof, obtained by sulfonation of a raw material olefin having 16 carbon atoms and having an average double bond position of 3.9-position or more and 4.5-position or less. The composition may also contain an organic acid. The content of the internal olefin sulfonic acid may include a sulfonate group at a 1-position or more and a 4-position or less at 40-75% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonates including a sulfonate group at a 2-position is 10-35% by weight of the total internal olefin sulfonates of the composition. The content of the internal olefin sulfonates including a sulfonate group at a 3-position is 5-30% by weight of the total internal olefin sulfonates of the composition. The claims of the ‘628 application also teach that the internal olefin sulfonates comprise 0.01-30% by weight of the total weight of the composition. The ratio of hydroxy form to olefin form of the internal olefin sulfonic acids may range from 50/50 to 100/0.
The claims of the ‘780 application do not embrace an average double bond position of the C16 internal olefin sulfonates at 4.0-4.4-position, a content of the internal olefin sulfonate with a sulfonate group at a 4-position at 15-30% by weight of the total internal olefin sulfonates of the composition, an additional internal olefin sulfonate other than the C16 internal olefin sulfonate, a method of washing hair with the hair cleansing composition, or a low-temperature stabilization method for a hair cleansing composition. The claims of the ‘780 application also do not embrace an amphoteric surfactant or nonionic surfactant nor does it embrace any weight ratios relative to those surfactants in the composition. However, these deficiencies are cured by D’Arras and Doi.
D’Arras teaches a cosmetic composition for cleansing the hair and the scalp that (pg. 58, fourth paragraph) that contains a sulfonated mixture that comprises an internal olefin sulfonated derivative comprising 16 carbon atoms (pg. 3, second paragraph). The distribution of the double bond in the internal C16 olefins ins less than 1% by weight in the C1 position, 27% by weight in the C-2 position, 23% by weight in the C-3 position, 18% in the C-4 position, 16% by weight in the C-5 position, 8% by weight in the C-6 position and 7% by weight in total on the C-7 and C-8 positions (pg. 59, second paragraph). The composition also comprises one or more additional surfactants chosen from nonionic, amphoteric or anionic surfactants other that the sulfonate surfactants of the sulfonated mixture above, alone or as a mixture (pg. 50 fifth paragraph). The composition may also contain a nonionic saccharide (pg. 38, fifth paragraph). D’Arras also teaches that the amount of sulfonated mixture is greater than or equal to the amount of additional surfactants, and may range in ratio from 90/10 to 50/50 (pg. 56, eighth paragraph). D’Arras also teaches that the amphoteric surfactants may be sulfobetaines (pg. 54, fifth paragraph) and that the nonionic surfactants may be alkyl polyglycolides (pg. 53, second paragraph). D’Arras teaches a composition that contains a sulfonated mixture of C16 and C18 internal olefin sulfonates in a weight ratio of 79.4/20.6 (pg. 60, Example 1 and Example 2). D'Arras also teaches that the composition may be used for washing keratin materials such as the skin and the hair (pg. 1, fifth para). The compositions are applied to keratin materials, preferably wetted, the foam generated by massage or friction with the hands or a toilet glove, followed by rinsing to remove the soiling present on the hair or skin (pg. 1 fifth para). Doi teaches a hair cleansing composition comprising an internal olefin sulfonate having 12 or more and 24 or less carbon atoms [0011]. The composition may contain an additional surfactant, preferably a nonionic or amphoteric surfactant [0052]. The mass ratio of the internal olefin sulfonate to additional surfactant is preferably from 1000 to 0.1 from the viewpoint of improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070].
It would have been prima facie obvious to one of ordinary skill in the art of filing that the hair cleansing composition embraced by the claims of the ‘780 application may also contain an amphoteric surfactant and nonionic surfactant at the weight ratios embraced by the instant claims. One would have understood in view of D’Arras that a hair cleansing composition that comprises an internal olefin sulfonate and a saccharide may also contain an amphoteric and nonionic surfactant at levels that encompass the weight ratios embraced by the instant claims. It would have been obvious to include an amphoteric and nonionic surfactant in the composition embraced by the claims of the ‘628 application. One of ordinary skill in the art of filing would have been motivated to include the additional surfactants in order to optimize the surfactant and cleansing properties of the hair cleansing composition. The artisan of ordinary skill would have had reasonable expectation of success because D’Arras teaches that a hair cleansing composition may contain an amphoteric and nonionic surfactant in addition to the internal olefin sulfonates and a saccharide.
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing that the composition embraced by the claims of the ‘780 application may also contain an additional internal olefin sulfonate other than the C16 internal olefin sulfonate embraced by the claims of the ‘780 application. One would have understood in view of D’Arras that a hair cleansing composition comprised of a C16 internal olefin sulfonate and organic acid may also contain a C18 internal olefin sulfonate. It would have been obvious to include the C18 internal olefin sulfonates embraced by D’Arras in the composition embraced by the claims of the ‘780 application. One of ordinary skill in the art of filing would have been motivated to include the additional C18 internal olefin sulfonate in the composition embraced by the claims of the ‘780 application in order to lend its surfactant properties to the composition. The artisan of ordinary skill would have had reasonable expectation of success because D’Arras teaches a hair cleansing composition that contains C16 and C16 internal olefin sulfonates in addition to an organic acid.
It would have been prima facie obvious to one of ordinary skill in the art of filing the utilize the hair cleansing composition embraced by the claims of the ‘780 application in a method of washing hair. One would have understood in view of D’Arras that a hair cleansing composition comprised of an internal olefin sulfonate and organic acid may be used in a hair washing method that comprises wetting the hair, washing the hair with the composition, and rinsing the hair. It would have been obvious to use the composition embraced by the claims of the ’780 application in such a method. One of ordinary skill in the art of filing would have been motivated to use the hair cleansing composition in such a method of washing hair in order to utilize the hair cleansing properties of the composition. The artisan of ordinary skill would have had reasonable expectation of success because D’Arras teaches a method of washing hair using a hair cleansing composition comprised of internal olefin sulfonates and an organic acid.
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing that the composition embraced by the claims of the ‘780 application may be used to in a low-temperature stabilization method for a hair cleansing composition. One would have understood, in view of D’Arras, that the composition embraced by the claims of the ‘780 application may be used in a hair cleansing composition substantially identical to that embraced by the instant claims. Because a composition cannot be separated from its properties, the use of the composition in a low-temperature stabilization method for a hair cleansing composition is inherent. See MPEP 2112.01 (II).
The mass ratio of internal olefin sulfonate to nonionic surfactant of the instant claim 1 is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal mass ratio in order to best achieve the desired results as such would provide advantageous formulation effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Yasuhiro teaches that the mass ratio of the internal olefin sulfonate to additional surfactant has a direct effect on improving the durability of foam and rinse feel in treatment with the cleansing composition, imparting to the hair combability and softness from during rinsing to after drying, and imparting a moist feeling to skin [0070]. The Examiner considers it prima facie obvious to optimize the mass ratio of internal olefin sulfonate to nonionic surfactant, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the mass ratio of internal olefin sulfonate to nonionic surfactant would have a direct effect on the foaming properties and rinse feel of the composition and therefore be an optimizable variable.
This is a provisional nonstatutory double patenting rejection because the copending claims have not yet been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/849,780 in view of D’Arras (WO2015140472, publication date: 9/24/2015, of record) and Doi (U.S. Patent Application No. 2017/0246096, publication year: 2017, of record), as applied to claims 1, 3, 4, 6-7, 9-14, 16-18, and 21 above, and further in view of Torres Rivera (U.S Patent Application Publication No. 2019/0142711, publication year: 2019, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims render obvious the instant claims in view of D’Arras.
Inter alia, the claims of the ‘780 application teach the relevant limitations above. The claims of the ‘780 application do not teach the inclusion of an amphoteric surfactant. The relevant limitations of claim 5 have been rendered obvious in the non-statutory double patenting rejection above except for the species of amphoteric surfactant embraced by the instant claim 5. This deficiency is cured by D’Arras and Torres Rivera. D’Arras teaches that the amphoteric surfactant present in the composition may include (C8-C20)alkylamido(C1-C6)alkylbetaines and (C8-C20)alkylamido(C1-C6)alkylsulfobetaines (pg. 54 fifth paragraph). Torres Rivera teaches a hair car composition that may contain mixtures of alkene sulfonates as a detersive surfactant [0026 and 0039]. The composition may comprise a cosurfactant such as lauramidopropyl betaine, cocamidopropyl betaine, and laurylsultaine [0043]. Torres Rivera teaches that lauramidopropyl betaine and lauryl hydroxysultaine are zwitterionic surfactants [0048]. However, with regards to the “amphoteric” limitations of instant claim 1 and 5, the prior art teaches the same surfactant as claimed and therefore, the amphoteric properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Therefore, the Examiner considers the teachings of Torres Rivera to read on the amphoteric surfactants of the instant claims.
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional cosurfactants used in hair cleansing compositions comprising internal olefin sulfonates. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
This is a provisional nonstatutory double patenting rejection because the copending claims have not yet been patented.
Response to Arguments
Applicant's arguments filed 2/24/2026 have been fully considered but they are not persuasive.
Applicants’ request for the double patenting rejections of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejection will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejection.
On page 13, Applicant argues that the instant application, co-pending application 18/247,097 (now U.S. Patent No. 12,594,225), and co-pending application 18/247,219 all have the same patent term filing date and therefore the issuance of patents based on the copending and present applications will not lead to an inappropriate extension of patent term and the rejections should be withdrawn. This is not found persuasive. In response, the Examiner respectfully refers to MPEP 804(1)(b)(ii), which states: “if both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome” and MPEP 804.02 (VI) which states “a terminal disclaimer is required in an application to overcome a nonstatutory double patenting rejection…even if the application claims the benefit…of the filing date of the patent or application which forms the basis for the rejection”.
On page 13, Applicant argues that the double patenting rejections of record should be withdrawn for the same reasons as argued for the obviousness rejections. This is not found persuasive for the same reasons as discussed in the response to arguments of the obviousness rejections above.
Conclusion
No claims are allowed.
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.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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