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.
Current Status of 18/249,321
This Office Action is responsive to the amended claims received 25 November 2025.
Claims 1, 3-4, and 7-16 are currently pending.
Priority
Applicant’s claim for the benefit of the prior-filed patent application PCT/CN2020/121068 (filed 15 October 2020) under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is acknowledged.
Response to Amendments
The objections to the claims, present in the previous office action, are hereby withdrawn due to Applicant’s amendments.
The 35 U.S.C. 112 rejections to the claims, present in the previous office action, are hereby withdrawn due to Applicant’s amendments. New rejections are presented herein, due to Applicant’s amendments
The 35 U.S.C. 103 rejections to the claims, present in the previous office action, are maintained herein, but altered due to Applicant’s amendments.
The nonstatutory double patenting rejections to the claims, present in the previous office action, are maintained herein.
Response to Arguments
Applicant argues that they have claimed “a narrow selection for the anionic surfactant as a carboxylate”, whereas KLEINEN has supposedly claimed a much broader scope. Applicant argues that the broader scope of KLEININ does not lead one of ordinary skill in the art to specific selections of compounds and amounts of compounds within a mixture. Applicant argues that KLEINEN provides a large list of anionic surfactants. Applicant again argues that the instant claims have a “narrow selection” of carboxylate anionic surfactants. Applicant states that the Examiner has specifically highlighted exemplary composition 44e of KLEININ within the Examiner’s rejections. Applicant argues that 44e of KLEININ does not fall within the scope of instant claim 1 due to the anionic surfactant of 44e being less than the 15-35 weight % instantly claimed. Applicant argues that the Examiner cannot limit their arguments to preferred embodiments and must consider the teachings of KLEININ as a whole. Applicant also highlights the instantly claimed limitation of a sulfate-free composition, and argues this to be nonobvious, because a sulfate-free composition only appears once within many exemplary compositions present in KLEININ.
The Examiner does not agree that instant claim 1 requires a selection from a narrow scope of anionic surfactants. Even with a conservative estimate, Formula I of claim 1 represents thousands of unique compounds. The Examiner agrees that KLEININ provides many exemplary compositions and compounds. Arguing that an Examiner has selected items from a long list, using hindsight, is sometimes a reasonable argument. For Example, if the reference had a 10-page list of unrelated diseases and a 10-page list of entirely dissimilar drugs, the Examiner would most likely be using hindsight if they were to choose one disease and one drug to reject a method of treatment claim. In the instant case, KLEININ provides many complete compositions, and each and every exemplary composition clearly would have been known to one of ordinary skill in the art. Conversely to our analogy above, if a reference provided a 20-page list of the form “drug A is used to treat condition A, drug B is used to treat condition B…”, each of those methods would have been clear to one of ordinary skill in the art, and the Examiner would not have engaged in any “picking and choosing”.
Applicant is correct that exemplary composition 44e of KLEININ does not in and of itself match the limitations of the instant claims. That is why the rejections below are not provided under 35 USC 102, but instead 35 USC 103. Paragraph [0016] of KLEININ teaches that the general invention therein contains: 20-67 wt % dialkyl sulfosuccinates or dialkyl methylsulfosuccinates, 15-40 wt % of an amphoteric surfactant, and 15-40 wt % of an anionic surfactant. The table of compositions wherein 44e is present is clearly showing diluted versions (diluted with oil and water) of the compositions that are the subject of KLEININ (probably for direct use by a consumer). This is clear, because for example, the wt % of the anionic surfactant in composition 44e is only 1.5 %. Therefore, one of ordinary skill in the art would understand that composition 44e has been diluted about 1:10 from the concentrated compositions discussed throughout KLEININ and in paragraph [0016]. The concentrated, undiluted version of composition 44e would logically contain about 40 wt % diethylhexyl sodium sulfosuccinate, about 15 wt % sodium laureth sulfate, and so on. Regarding Applicant’s assertion that the sulfate-free limitations of the instant claims are nonobvious, paragraph [0023] of KLEININ clearly teaches that any of the formulations therein can be made to be sulfate-free.
Applicant argues against the instant non-statutory double patenting rejections by discussing the filing dates of both the instant application and the reference application.
The non-statutory double patenting rejections below cannot yet be overcome by the earlier filing date of the instant application in the current situation. See MPEP 804(I)(B)(1)(b)(i) – “Application under examination has the earlier patent term filing date”.
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, 3-4, and 7-16 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 “wherein R2 and R3 are independently selected from alkyl having 8 to 22 carbon atoms and R2 and R3 are the same”. The concept that R2 and R3 are independently selected is entirely contradicted by them being the same. This renders claims 1, 3-4, and 7-16 indefinite. Applicant may choose to amend the quoted phrase above as follows “wherein R2 and R3 are the same, each being alkyl and having 8 to 22 carbon atoms
Claim 16 recites “wherein the sulfate-free aqueous personal cleansing composition is free of sulfate”. It is unclear to the reader if the concept of being free of sulfate is simply being repeated twice, or there is a difference in the scope of the terms “sulfate-free” and “free of sulfate”. This renders claim 16 indefinite. Applicant may choose to cancel claim 16.
Claim 3 depends upon the now-cancelled claim 2. Therefore, the complete text of claim 3 is unknown to the reader. This renders claim 3 indefinite. Applicant may choose to amend claim 3 so that it depends upon claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-4, and 7-16 are rejected under 35 U.S.C. 103 as being unpatentable over:
KLEINEN (Cited by Applicant in IDS of 17 April 2023; US 2015/0297489 A1; Publication Date 22 October 2015).
KLEINEN teaches a composition made up of 20-67 parts by weight of dialkyl sulfosuccinates, 15-40 parts by weight of an amphoteric surfactant, and 15-40 parts by weight of an anionic surfactant (claim 1). The artisan would understand that the parts by weight in KLEINEN are synonymous with weight % values, because it is stated in claim 14 and paragraph [0005] of KLEINEN that the sum of all components is 100 parts by weight. KLEINEN teaches a “particularly preferred” composition below paragraph [0078], which includes 33-47 parts by weight of diethylhexyl sodium sulfosuccinate, 23-28 parts by weight of cocamidopropyl betaine, and 23-28 parts by weight of sodium laureth sulfate. KLEININ teaches, in paragraph [0083] that water may also be present in the particularly preferred invention of paragraph [0078]. KLEINEN teaches a formulation example, 44e on page 16, which includes: 4.0 % diethylhexyl sodium sulfosuccinate, 1.0 % cocamidopropyl betaine, 1.5 % sodium laureth sulfate, 1.0 % sodium cocoyl glycinate, and 35 % Helianthus Annus (sunflower) seed oil, wherein the remaining weight is made up of water. Paragraph [0098] of KLEINEN teaches that the formulations of the invention therein are skin cleansing formulations. Paragraph [0023] of KLEININ teaches that any of the formulations therein can be made to be sulfate-free.
Paragraph [0016] of KLEININ teaches that the general invention therein contains: 20-67 wt % dialkyl sulfosuccinates or dialkyl methylsulfosuccinates, 15-40 wt % of an amphoteric surfactant, and 15-40 wt % of an anionic surfactant. The table of compositions that 44e is present within is clearly showing diluted versions (diluted with oil and water) of the compositions that are the subject of KLEININ, because for example, the wt % of the anionic surfactant in composition 44e is only 1.5 %. Therefore, one of ordinary skill in the art would understand that composition 44e has been diluted about 1:10 from the concentrated compositions discussed throughout KLEININ. The concentrated, undiluted version of composition 44e would logically contain about 40 wt % diethylhexyl sodium sulfosuccinate, about 15 wt % sodium laureth sulfate, and so on, without a large amount of oil or water.
Diethylhexyl sodium sulfosuccinate, cocamidopropyl betaine, and sodium laureth sulfate respectively read on the instantly claimed: second anionic surfactant of formula II (wherein R2 and R3 are identical and each have 8 carbon atoms), amidopropyl betaine (being a member of the class of amidopropyl betaine compounds), and the first anionic surfactant of formula I (wherein n is equal to 1 and R1 is an alkyl group having 12 carbon atoms). Sodium cocoyl glycinate, as taught by KLEINEN (Pg. 16), is a C11-alkyl glycinate. The weight ranges taught by KLEINEN, as described above, significantly overlap the ranges instantly claimed for the corresponding compounds. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05(I).
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, 10, 12-13, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
Claims 26, 29, 31, 39, 41-43, and 48 of copending Application No. 18/264,296 (referred to below as the ‘296 application).
Although the claims at issue are not identical, they are not patentably distinct from each other because: Claim 26 of the ‘296 application teaches a composition including an anionic surfactant “D” and a multi-tail surfactant “A”. Claims 29 and 31 of the ‘296 application teach that the multi-tail surfactant A is present from 0.1-10 % by weight and is dioctyl sodium sulfosuccinate. Claim 39 of the ‘296 application teaches that surfactant D is sodium laureth sulfate and makes up 5-20 % of the composition by weight. Claims 41 and 42 of the ‘296 application teach that cocamidopropyl betaine is present to act as an amphoteric surfactant, being present from 0.01-20 % by weight. Claim 43 of the ‘296 application teaches that an oil is present that makes up 10 % or less of the composition. Claim 48 of the ‘296 application teaches that the composition is a shampoo intended to target the hair and/or scalp.
The weight ranges taught by the ‘296 application significantly overlap the ranges instantly claimed for the corresponding compounds. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are currently allowable.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D MCANANY whose telephone number is (571)270-0850. The examiner can normally be reached 8:30 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANDREW D KOSAR can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JDMc/Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625