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 .
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.
Claim Status
Applicant’s amendment of 01/20/2026 is acknowledged. Claims 1, 3, 5-8, 10, and 12-13 are amended, and claims 2, 4, 9, and 11 are cancelled. Claims 1, 3, 5-8, 10, and 12-15 are currently pending.
Election/Restrictions
An election of invention/species was required in the instant application as detailed in the Office action dated 06/09/2025. The election is maintained and claims 14-15 remain withdrawn. Accordingly, claims 1, 3, 5-8, 10, and 12-13 are examined on the merits herein.
Priority
The instant application is a 371 of PCT/JP2021/035747 filed on 09/29/2021 and claims foreign priority to JP2020-164645 filed on 09/30/2020 as reflected in the filing receipt dated on 08/24/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Withdrawn Objections and Rejections
Applicant’s amendments to the claims have overcome/rendered moot the previous 112(b) rejections. Thus, the rejections are hereby withdrawn.
Applicant’s cancellation of claims 2, 4, 9, and 11 have rendered moot the previous 103 rejections and non-statutory double patenting rejections over these claims. Thus, the rejections are hereby withdrawn.
Applicant’s amendments to the claims have prompted the new/revised grounds of rejection presented herein. Applicant’s arguments insofar as they pertain to the revised grounds of rejection are addressed herein.
Claim Rejections - 35 USC § 112(b)
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.
Claim 13 is 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 13 recites the limitation “wherein the component (B) comprises an internal sulfonic acid or salt thereof other than those having 16 carbon atoms”. There is insufficient antecedent basis for this limitation in the claims. While the recitation “at least one” recited in parent claim 1 allows for the inclusion of other components so long as one is an anionic surfactant selected from those recited in the Markush grouping, the claim does not recite an internal olefin sulfonic acid component. The term “further” should be added to the claim so as to properly further limit claim 13. The Examiner recommends amending the claim to read “wherein the component (B) further comprises…”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 5-8, 10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action).
Doi teaches a cleansing composition for skin or hair comprising: (A) an internal olefin sulfonate having 12 or more and 24 or less carbon atoms; and (B) an anionic surfactant (Claim 1).
In at least one exemplary embodiment (Page 13, Table 3, Example 16), a cleansing composition for hair comprises: 4.8% internal olefin sulfonate (3), 1.2% internal olefin sulfonate (4), and 6.0% sodium sulfosuccinate, among other ingredients; wherein “%” means “% by mass” (Paragraph 0110).
Regarding component (A) of claim 1: Doi teaches that internal olefin sulfonate (3), which corresponds to Production Example 3 (Paragraph 0134 and Table 1), is a sodium internal olefin sulfonic acid having 16 carbon atoms.
Doi further teaches that the internal olefin sulfonic acid is obtained by sulfonation of a raw material olefin having 16 carbons and a the following double bond distribution: C-1 position, 0.5% by mass; C-2 position, 16.5% by mass; C-3 position, 15.4% by mass; C-4 position, 16.4% by mass; C-5 position, 17 .2% by mass; C-6 position, 14.2% by mass; and C-7 and 8 positions, 19.8% by mass in total (Paragraph 0126, Production Example B). Such distribution results in an average double bond position of approximately 4.55 to 4.75 (calculated by Examiner), depending on the actual distribution of the double bonds at the C-7 and 8 positions. 4.55 closely approaches the instantly claimed range of 4.0-position to 4.3-position.
The double bond content at the 1-position lies within and thus reads on the instantly claimed range.
Regarding the instantly claimed average double bond position and the content material having a double bond at the 2-position and the 7- or 8-positions: Doi teaches that the content of the raw material olefin having a double bond at the C-2 position is preferably 5 – 30 mass% (Paragraph 0037), which overlaps the instantly claimed range. Doi further teaches that when producing the raw material olefin, reducing the reaction time from five hours to three hours while keeping all other reaction conditions constant results in an increased content of material having a double bond at the 2-position (e.g., up to 30.4 mass%) and a decreased content having a double bond at the 7- or 8-positions (e.g., down to 7.8 mass%) while keeping the content having a double bond at the 1-position within the instantly claimed range (Paragraph 0127, Production Example C). Since Doi also teaches that the position of the sulfonate group within the internal olefin sulfonate product directly affects the composition’s properties, such as foamability, lathering, and rinse feel (Paragraphs 0027-0028), it would have been obvious and an ordinarily skilled artisan would have been motivated to manipulate the double bond distribution within the raw material olefin to produce an internal olefin sulfonate with the desired chemical and physical properties. An ordinarily skilled artisan would reasonably expect success because Doi clearly discloses conditions to manipulate the double bond distribution within the raw material olefin. 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). NOTE: MPEP 2144.05.
Regarding component (B) of claim 1: Sodium sulfosuccinate meets the claim limitation.
Regarding the mass ratio (A)/(B) recited in claim 1: The mass ratio of internal olefin sulfonate (3) to sodium sulfosuccinate is 0.8/1, which lies within and thus reads on the instantly claimed range.
Regarding claims 3, 5, and 10: While Doi does not expressly disclose the content of internal olefin sulfonate having sulfonate groups at the 1- through 4-positions, Doi teaches that the position at which the sulfonate group is present depends on the position of a double bond in the raw material internal olefin, and the content of an internal olefin sulfonate in which the sulfonate group is present at the C-2 position is roughly consistent with the content of the raw material internal olefin in which the double bond is present at the C-2 position (Paragraph 0030). Based on the logic of Doi presented above and the double bond distribution of internal olefin sulfonate (3), one of ordinary skill in the art would determine that the content of an internal olefin sulfonic acid including a sulfonate group at a 1-position or more and a 4-position or less is approximately 48.8% by mass (calculated by Examiner), which lies within and thus reads on the range recited in instant claim 3. The content of an internal olefin sulfonic acid including a sulfonate group at a 3-position is approximately 15.4% by mass, which lies within and thus reads on the range recited in instant claim 5. The content of an internal olefin sulfonic acid including a sulfonate group at a 4-position is approximately 16.4% by mass, which lies within and thus reads on the range recited in instant claim 10.
Regarding claim 6: The amount of internal sulfonate (3) lies within and thus reads on the instantly claimed range.
Regarding claim 7: The mass ratio of hydroxy form to olefin form of internal olefin sulfonate is 80/20 (Page 12, Table 1, Production Example 3), which lies within and thus reads on the instantly claimed range.
Regarding claim 8: The amount of sodium sulfosuccinate lies within and thus reads on the instantly claimed range.
Regarding claim 12: Doi teaches that the content of an internal olefin sulfonate in which the sulfonate group is present at the C-1 position in the component (A)—in this case internal olefin sulfonate (3)—is preferably 3.0% by mass or less, which lies within and thus reads on the instantly claimed range.
Regarding instant claim 13: Internal olefin sulfonate (4) of Doi’s composition has 18 carbon atoms and thus reads on the claimed component (B) (Paragraph 0135 and Table 1). The mass ratio of the internal olefin sulfonate (3) to the total amount of internal sulfonic acids in the composition of Doi is 0.8/1 (calculated by Examiner). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Doi by adjusting the content of internal olefin sulfonate (3) relative to the content of internal olefin sulfonate (4) through routine optimization, which would in turn affect the mass ratio of internal olefin sulfonate (3) to the total amount of internal sulfonic acids or salts thereof, in order to achieve a desired rinse feel, impart a desired combing property and softness to the hair, impart a refreshing feeling to the skin, and/or reduce irritation to skin, as taught by Doi (Paragraph 0062). One of ordinary skill in the art would reasonably expect success in modifying the composition of Doi as proposed because the reference teaches that any mass ratio of component (A) to component (B) within the range of 0.01 to 100 is suitable for achieving the above properties of the cleansing composition (Paragraph 0062). 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). NOTE: MPEP 2144.05.
Response to Arguments
Applicant’s arguments submitted on 01/20/2026 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but were not found to be persuasive.
Applicant argues that Doi fails to disclose low-temperature storage stability, and there is no teaching or suggestion in Doi that sulfonate groups would present in broad positions rather than one singular position. These arguments were not found to be persuasive for the reasons discussed below.
Regarding Applicant’s argument that Doi does not teach or suggest the broad sulfonate positions as claimed (i.e., “notable populations at both internal and external -positions”): The Examiner notes that the sulfonate positions of the internal olefin sulfonic acid are not recited in independent claim 1 to structurally define the claimed product. Instead, Applicant’s claim recites limitations drawn to the double bond distribution of the starting material.
To the extent that this argument is tied to Applicant’s subsequent argument that it would not have been routine experimentation for one of ordinary skill in the art to arrive at the bond positions of amended claim 1: The raw material olefin Doi uses to produce internal olefin sulfonate (3) has the same C-1 double bond population as claimed (0.5 mass%), and indeed appears to have notable double bond populations at the C-2 position (16.5 mass%) and the C-7 and C-8 positions (19.8 mass% in total). While this specific embodiment of Doi (Example 16) does not possess all features of the instantly claimed composition, the reference clearly teaches that the position of the sulfonate group within the internal olefin sulfonate product directly affects the composition’s properties. The teachings of Doi also suggest that different reaction times produce raw material olefins with specific double bond distributions. Longer reaction time (i.e., increased time to undergo isomerization) allows for increased content of material with double bonds at more internal positions (e.g., 7- or 8-positions). It is within the skillset of an ordinary artisan to determine the optimal reaction time required to produce a raw material olefin with the desired double bound distribution and, consequently, an internal olefin sulfonate product with the desired sulfonate group distribution and chemical/physical properties. Because the starting materials of Doi, which are the same materials used to produce the instant internal olefin sulfonic acid (Instant Specification, Paragraph 0078, Production example a1), could reasonably be made into the same product as claimed using the guidance and motivation set forth in the cited reference, a prima facie case of obviousness exists.
Regarding Applicant’s argument that there would be no motivation to have a content of the raw material olefin with a double bond position at the 1-position or 2-position within the claimed ranges. This argument was not found to be persuasive. As discussed above, the raw material olefin of Doi has the same C-1 double bond population as claimed, and the reference also teaches that the content of material having a double bond at the C-2 position is preferably 5 – 30 mass%, which overlaps the instantly claimed range. 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). NOTE: MPEP 2144.05.
Applicant further argues that a composition that shows improvements in foaming, smoothness of foam, softness of hair, and low-temperature stability that would not be obvious or expected from Doi. This argument was not found to be persuasive. First, the Examiner notes that the features upon which applicant relies (i.e., foaming, smoothness of foam, softness of hair, and 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). Further, as discussed in the prior art rejections of record, the compositions of Doi are known to improve foaming properties and impart a softness to the hair, and these properties are known to be manipulated by adjusting the position of the sulfonate group within the internal olefin sulfonate (Doi, Paragraphs 0037-0038).
Regarding Applicant’s arguments drawn to the failure of Doi to disclose low-temperature storage stability, which Applicant regards as an unobvious and advantageous property: The evidence relied upon to demonstrate unexpected results should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). In view of the data provided in Applicant’s instant specification, it is unclear that Applicant’s allegedly unexpected property is in fact a result of the claimed combination of features. For example, Applicant’s Example 1 received a low-temperature stability rating of “b”, which indicates the formation of precipitate between 5 – 6 hours, whereas examples that do not fall within the claimed scope (e.g., Examples 5, 6, and 11, which have mass ratios (A)/(B) outside of the claimed range, and Comparative Examples 1-6) have low-temperature stability ratings of “a”, which indicates formation of precipitate was not observed even after 6 hours (Instant Specification, Page 35). Clearly, embodiments outside of the scope of the claimed invention also possess the allegedly superior feature.
Additionally, to establish unexpected results over a claimed range, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In this case, Applicant has not demonstrated the criticality of the upper limit of the claimed mass ratio (A)/(B). Moreover, Applicant has not compared the claimed subject matter to the closest prior art, which does disclose compositions comprising the instantly claimed mass ratio of internal olefin sulfonate to anionic surfactant, to demonstrate that the prior art method would result in a materially different product having significantly superior properties. See MPEP 716.02(e).
In view of the foregoing, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of objective evidence to the contrary. Therefore, the prior art rejections of record are 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, 5-8, 10, and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/849,780 in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action).
App. ‘780 claim 1 recites a hair cleansing composition comprising: (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 from the 3.9 position or more to the 4.4 position or less; and (B) one or more hydroxy group-containing compounds; wherein the mass ratio of a content of the component (B) to a content of the component (A) is from 0.005 to 0.45 or less. Component (A) reads on the same recited in instant claim 1, and the average double bond position overlaps and thus renders obvious the instantly claimed range. App. ‘780 claims 3 and 11 recite that the content of internal olefin sulfonic acid or a salt thereof including a sulfonate group at the 1-position to the 4-position in the component (A) is from 40 mass% to 75 mass%, which reads on instant claim 3. App. ‘780 claims 5 and 14-16 recite that the content of internal olefin sulfonic acid or salt thereof including a sulfonate group at the 3-position in the component (A) is from 5 mass% to 30 mass%, which reads on instant claim 5. App. ‘780 claim 8 recites that the content of component (A) is from 0.01 mass% to 30 mass%, which reads on instant claim 6. The remaining claims of App. ‘780 recite limitations that are not excluded by the instant claim language.
The claims of App. ‘780 differ from the instant claims in that the claims of App. ‘780 do not recite the content of raw material olefin having a double bond at the 2-, 7-, or 8-positions or that the composition comprises an anionic surfactant other than the component (A) in the mass ratio recited in instant claim 1, or the further limitations of instant claims 7-8, 10, and 12-13.
The teachings of Doi are as set forth above and further incorporated herein.
Regarding the component (B) and mass ratio recited in instant claim 1: It would have been obvious to one of ordinary skill in the art to modify the hair cleansing composition recited in the claims of App. ‘780 by further including the sodium sulfosuccinate of Doi as an anionic surfactant. One of ordinary skill in the art would have been motivated to add sodium sulfosuccinate such that the mass ratio of component (A) to sodium sulfosuccinate is 0.2/1 to 5/1, which substantially overlaps and thus renders obvious the instantly claimed ranges, because Doi teaches that any ratio within this range is suitable for achieving a desired rinse feel, imparting a desired combing property and softness to the hair, imparting a refreshing feeling to the skin, and/or reducing irritation to skin (Doi, Paragraph 0062).
Regarding the instantly claimed double bond positions of the raw material olefin recited in instant claim 1: While the instant claims are drawn to an internal olefin sulfonic acid product rather than the process of making the product, it would have been obvious and an ordinarily skilled artisan would have been motivated to manipulate the double bond distribution within the raw material olefin to produce an internal olefin sulfonate with the desired chemical and physical properties. An ordinarily skilled artisan would reasonably expect success because Doi clearly discloses conditions to manipulate the double bond distribution within the raw material olefin. 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). NOTE: MPEP 2144.05.
Regarding instant claim 7: It would have been obvious to one of ordinary skill in the art to modify the hair cleansing composition taught by the combination of App. ‘780 claims and Doi by adjusting the mass ratio of the content of the hydroxy form of component (A) to the olefin form of component (A) within the range of 50/50 to 100/0, which lies within and thus renders obvious the instantly claimed range, because Doi teaches that any ratio within this range is suitable for improving productivity and reducing impurities within the cleansing composition (Doi, Paragraph 0032).
Regarding instant claim 8: It would have been obvious to one of ordinary skill in the art to modify the hair cleansing composition taught by the combination of App. ‘780 claims and Doi by adjusting the content of sodium sulfosuccinate within the range of 0.01 mass% to 30 mass%, which lies within and thus renders obvious the instantly claimed range, because Doi teaches that any amount within this range is suitable for improving combing property of the hair during rinsing, imparting the softness to the hair, and imparting a refreshing feeling to the skin (Doi, Paragraph 0061).
Regarding instant claim 10: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair cleansing composition taught by the combination of App. ‘780 claims and Doi by adjusting the content of raw material olefin having a double bond at more internal positions, such as the 4-position, in order to optimize the desired chemical behavior and properties of the cleansing composition, such as foamability, as taught by Doi. Doi expressly encourages a high total content of an internal olefin in which the double bond is present further inside than the C-3 position (Doi, Paragraph 0039).
Regarding instant claim 12: It would have been obvious to one of ordinary skill in the art to modify the hair cleansing composition taught by the combination of App. ‘780 claims and Doi by adjusting the content of internal olefin sulfonic acid having a sulfonate group at the 1-position in the component (A) within the range of 2.5 mass% or less, which lies within and thus renders obvious the instantly claimed range, because Doi teaches any content within this range improves lathering, foam quality, rinse feel, softness, and skin feel (Doi, Paragraph 0038).
Regarding instant claim 13: It would have been obvious to one of ordinary skill in the art to modify the hair cleansing composition taught by the combination of App. ‘780 claims and Doi by further including the internal olefin sulfonate (4) of Doi such that the mass ratio of component (A) to internal sulfonate (4) falls within the range of 50/50 to 99/1, which overlaps and thus renders obvious the instantly claimed range, because the reference teaches that the combination of internal olefin sulfonates having 16 and 18 carbon atoms improves composition properties such as detergency, foamability, rinse feel, etc. (Paragraph 0024). 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). NOTE: MPEP 2144.05.
One of ordinary skill in the art would reasonably expect success in modifying the composition recited in the claims of App. ‘780 with the teachings of Doi as proposed because all components, concentrations, and parameters are known in the art to be useful in eliciting desired effects in compositions intended for cleansing the hair.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3, 5-8, 10, and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/849,628 in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action).
App. ‘628 claim 1 recites a hair cleansing composition comprising: (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 from the 3.9 position or more to the 4.4 position or less; and (B) an organic acid; wherein the mass ratio of a content of the component (B) to a content of the component (A) is from 0.005 to 0.25 or less. Component (A) reads on the same recited in instant claim 1, and the average double bond position overlaps and thus renders obvious the instantly claimed range. App. ‘628 claims 3 and 10 recite that the content of internal olefin sulfonic acid or a salt thereof including a sulfonate group at the 1-position to the 4-position in the component (A) is from 40 mass% to 75 mass%, which reads on instant claim 3. App. ‘628 claims 5 and 13-15 recite that the content of internal olefin sulfonic acid or salt thereof including a sulfonate group at the 3-position in the component (A) is from 5 mass% to 30 mass%, which reads on instant claim 5. App. ‘628 claims 7 and 20 recite that the mass ratio of the hydroxy form to the olefin form of the internal olefin sulfonic acid or salt thereof in the component (A) is from 50/50 to 100/0, which reads on instant claim 7. App. ‘628 claim 8 recites that the content of component (A) is from 0.01 mass% to 30 mass%, which reads on instant claim 6. The remaining claims of App. ‘628 recite limitations that are not excluded by the instant claim language.
The claims of App. ‘628 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1-20 of copending Application No. 18/849,780 in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action), which is discussed in detail above.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3, 5-8, 10, and 12-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. 12,594,225 B2 claims 1-15 (published patent of previously provisionally rejected copending Application No. 18/247,097) in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action).
US ‘225 claim 1 recites a hair cleansing composition comprising: (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 from the 4.0 position to the 4.4 position, which substantially overlaps the instantly claimed range, as well as limitations to the raw material olefin double bond positions which are the same as instantly claimed. Component (A) reads on the same recited in instant claim 1. US ‘225 claim 2 recites that the content of internal olefin sulfonic acid or a salt thereof including a sulfonate group at the 1-position to the 4-position in the component (A) is from 40 mass% to 75 mass%, which reads on instant claim 3. US ‘225 claim 4 recites that the content of internal olefin sulfonic acid or salt thereof including a sulfonate group at the 3-position in the component (A) is from 5 mass% to 30 mass%, which reads on instant claim 5. US ‘225 claim 5 recites that the content of component (A) is from 0.01 mass% to 30 mass%, which reads on instant claim 6. US ‘225 claim 6 recites that the mass ratio of the hydroxy form to the olefin form of the internal olefin sulfonic acid or salt thereof in the component (A) is from 50/50 to 100/0, which reads on instant claim 7. US ‘225 claim 8 recites that the content of internal olefin sulfonic acid including a sulfonate group at a 4-position or a salt thereof is 15 mass% or more and 30% mass or less in the component (A), which reads on instant claim 10. US ‘225 claim 10 recites that the content of internal olefin sulfonic acid including a sulfonate group at a 1-position or a salt thereof is less than 3.0 mass% in the component (A), which reads on instant claim 12. US ‘225 claim 13 recites the composition further comprises an additional internal olefin sulfonic acid or salt thereof and that the mass ratio of component (A) to a total amount of the internal olefin sulfonic acids or salts thereof is 0.95 or more, which reads on the same limitation of instant claim 13. The remaining claims of App. ‘097 recite limitations that are not excluded by the instant claim language.
The claims of App. ‘097 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1-20 of copending Application No. 18/849,780 in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action), which is discussed in detail above.
Claims 1, 3, 5-8, 10, and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/247,098 in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action).
App. ‘098 claim 1 recites a hair cleansing composition comprising: (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 from the 4.0 position to the 4.4 position, which substantially overlaps the instantly claimed range, as well as limitations to the raw material olefin double bond positions which are the same as instantly claimed. Component (A) reads on the same recited in instant claim 1. App. ‘098 claim 13 recites that the average double bond position in the raw material olefin having 16 carbon atoms is 4.1-position to 4.4-position, which substantially overlaps and thus renders obvious the instantly claimed range. App. ‘098 claim 7 recites that the content of internal olefin sulfonic acid or a salt thereof including a sulfonate group at the 1-position to the 4-position in the component (A) is from 40 mass% to 75 mass%, which reads on instant claim 3. App. ‘098 claim 9 recites that the content of internal olefin sulfonic acid or salt thereof including a sulfonate group at the 3-position in the component (A) is from 5 mass% to 30 mass%, which reads on instant claim 5. App. ‘098 claim 10 recites that the content of component (A) is from 0.01 mass% to 30 mass%, which reads on instant claim 6. App. ‘098 claim 11 recites that the mass ratio of the hydroxy form to the olefin form of the internal olefin sulfonic acid or salt thereof in the component (A) is from 50/50 to 100/0, which reads on instant claim 7. App. ‘098 claim 14 recites that the content of internal olefin sulfonic acid including a sulfonate group at a 4-position or a salt thereof is 15 mass% or more and 30% mass or less in the component (A), which reads on instant claim 10. App. ‘098 claim 16 recites that the content of internal olefin sulfonic acid including a sulfonate group at a 1-position or a salt thereof is less than 3.0 mass% in the component (A), which reads on instant claim 12. App. ‘097 claim 17 recites that the composition comprises a component (D) which comprises an additional internal olefin sulfonic acid or salt thereof and that the mass ratio of component (A) to a total amount of the internal olefin sulfonic acids or salts thereof is 0.95 or more, which reads on the same limitation of instant claim 13. The remaining claims of App. ‘098 recite limitations that are not excluded by the instant claim language.
The claims of App. ‘098 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1-20 of copending Application No. 18/849,780 in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action), which is discussed in detail above.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3, 5-8, 10, and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/849,656 in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action).
App. ‘656 claim 1 recites a hair cleansing composition comprising: (A) 1 mass% to 8 mass% of an aromatic sulfonic acid or salt thereof; and (B) 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 to 4.4-position. Component (B) reads on the component (A) recited in instant claim 1, and the average double bond position overlaps and thus renders obvious the instantly claimed range. The amount of component (B) lies within and thus renders obvious the range recited in instant claim 6. App. ‘656 claim 3 recites that the content of internal olefin sulfonic acid or a salt thereof including a sulfonate group at the 1-position to the 4-position in the component (B) is from 40 mass% to 75 mass%, which reads on instant claim 3. App. ‘656 claim 5 recites that the content of internal olefin sulfonic acid or salt thereof including a sulfonate group at the 3-position in the component (B) is from 5 mass% to 30 mass%, which reads on instant claim 5. App. ‘656 claim 6 recites that the mass ratio of the hydroxy form to the olefin form of the internal olefin sulfonic acid or salt thereof in the component (B) is from 50/50 to 100/0, which reads on instant claim 7. The remaining claims of App. ‘656 recite limitations that are not excluded by the instant claim language.
The claims of App. ‘656 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1-20 of copending Application No. 18/849,780 in view of Doi et al. (US20140076344A1; published: 03/20/2014; PTO-892 of instant action), which is discussed in detail above.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments submitted on 01/20/2026 with respect to rejections on the ground of non-statutory double patenting have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but were not found to be persuasive.
Regarding Applicant’s argument that copending Apps. ‘780, ‘628, ‘626 each have patent term dates later than the patent term date of the present application, because these non-statutory double patenting rejections are not the only rejections remaining in the instant application, the double patenting rejections of record are hereby maintained. Regarding Applicant’s argument that copending Apps. ‘780, ‘628, ‘626 are furthermore distinguished from the present claims for analogous reasons to those made concerning the rejections under 35 U.S.C. 103, these arguments were not found to be persuasive for the reasons discussed in detail above in relation to the obviousness rejections of record.
Regarding Applicant’s argument that previously neither copending App. ‘097 (now published as U.S. Patent No. 12,594,225 B2 and rejected accordingly) nor copending App. ‘098 in view of Doi does not render obvious the at least one anionic surfactant selected from the group as instantly claimed, this argument was not found to be persuasive. As discussed above, an ordinarily skilled artisan would have reasonable motivation to include an anionic surfactant such as sodium sulfosuccinate, which is not excluded from the open “comprising” claim language recited in each of US ‘225 and App. ‘098, such that the mass ratio of component (A) to sodium sulfosuccinate is 0.2/1 to 5/1 because Doi demonstrates the advantageous properties achieved by this combination of ingredients when used within the prior art range.
In view of the foregoing, the non-statutory double patenting rejections of record are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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