DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after June 14, 2023, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 06/14/2023 in the matter of Application N° 18/257,377. Said documents are entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after June 14, 2023, is being examined under the first inventor to file provisions of the AIA .
Thus, claims 1-15 represent all claims currently under consideration.
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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed 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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Orita et al. (WO2020218044A1).
Regarding claims 1 and 15, Orita et al. teach at least one modified starch, at least one C13-C15 fatty acid, at least one clay (See pg. 2, line 40), and the surfactant may be selected from the group consisting of anionic surfactants, and amphoteric surfactants. thus, a single type of surfactant or a combination of different types of surfactants may be used. One of the aspects of the present invention is a composition, comprising: at least one modified starch; at least one C13-C15 fatty acid; and at least one clay; the amount of the modified starch in the composition is from 0.01% to 15% by weight. The amount of the C13-C15 fatty acid is from 1% to 20% and the amount of the clay is from 1% to 40% by weight (See page 3, paragraph 45, and page 4, paragraphs 5-10). The amphoteric surfactant may be selected from the group consisting of betaines (See page 11paragraphs 45-50), and amine oxides (See page 17, line 38). The amount of the surfactants may range from 0.01% to 35% by weight, preferably from 0.1% to 30% by weight, relative to the total weight of the composition according to the present invention (pg.11, lines 39-45). It is preferable that the anionic surfactant be selected from the group consisting of C6-C30 fatty acid (other than the (b) C13-C15 fatty acid) salts (See pg. 12, lines 10 and 18-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to prepare a composition comprising at least one modified starch, at least one C13-C15 fatty acid, at least one clay, and an amphoteric surfactant, wherein the amount of the surfactants may range from 0.01% to 35% by weight, preferably from 0.1% to 30% by weight, as taught by Orita et al., modify the weight ratio of the amphoteric surfactant and the C13-C15 fatty acid based on the desired properties of rinsing off the composition from the skin, and arrive at the invention.
One of ordinary skill in the art would have been motivated to do so because the weight ratio of the components can be modified in order to achieve the desired properties of rinsing off the composition from the skin.
Regarding claim 2, Orita et al. teach the hydrophobicity of the (c) clay can be enhanced by the (a) modified starch and the (b) C13- C15 fatty acid, preferably a complex formed by the (a) modified starch and the (b) C13-C15 fatty acid, and more preferably a complex formed by hydrophobic modified starch and myristic acid (See lines16-20).
Regarding claim 3, Orita et al. teach the amount of the (a) modified starch in the composition may be from 0.01% to 15% by weight, preferably from 0.1% to 10% by weight, and more preferably from 0.5% to 5% by weight, relative to the total weight of the composition (See pg. 3. Lines 13-15).
Regarding claim 4, Orita et al. teach the C13-C15 fatty acid may be myristic acid (See pg. 3, line 50).
Regarding claim 5, Orita et al. teach the amount of the C13-C15 fatty acid may be from 1% to 20% by weight, preferably from 3% to 15% by weight, and more preferably from 5% to 10% by weight, relative to the total weight of the composition (See pg. 3, line 20).
Regarding claim 6, Orita et al. teach Hydrophilic clay includes smectites such as saponites, hectorites, montmorillonites. Hydrophilic clay includes synthetic hectorites (also called laponites) (See pg. 9, line 10). The origin of such clay can be natural or synthetic mineral clay such as hectorite, bentonite, and quatemized derivatives thereof, for example which are obtained by reacting the minerals with a quaternary ammonium compound, such as stearalkonium bentonite, hectorites, quatemized hectorites such as Quatemium-18 hectorite, and the like (See pg. 9, lines 31-35). The clay may be kaolin (pg. 3, line 50).
Regarding claim 7, Orita et al. teach the amount of the clay may be from 1% to 40% by weight, preferably from 5% to 35% by weight, and more preferably from 10% to 30% by weight, relative to the total weight of the composition (See pg. 3, line 25).
Regarding claim 8, Orita et al. teach the modified starch and the C13-C15 fatty acid may form a complex (See pg. 3, line 5).
Regarding claim 9, Orita et al. teach the amphoteric surfactant may preferably be selected from the group consisting of betaines and amidoaminecarboxylated derivatives (See pg.12, line 45). The nonionic surfactants are compounds well known in themselves (see, e.g., in this regard, "Handbook of Surfactants" by M. R. Porter, Blackie & Son publishers (Glasgow and London), 1991, pp. 116-178). Thus, they can, for example, be chosen from amine oxides such as (Cio-Ci4) alkylamine oxides or N-(Cio-Ci4) acylaminopropylmorpholine oxides; and mixtures thereof (See pg. 18, lines 20-25, and lines 38-39). The betaine-type amphoteric surfactant is preferably selected from the group consisting of alkylbetaines, alkylamidoalkylbetaines, sulfobetaines, phosphobetaines, and alkylamidoalkylsulfobetaines (See pages 11-12, paragraphs 50-54).
Regarding claim 10, Orita et al. teach the surfactant may be selected from the group consisting of anionic surfactants, amphoteric surfactants, cationic surfactants and nonionic surfactants. Two or more surfactants may be used in combination. According to one embodiment of the present invention, the amount of the surfactant(s) may range from 0.01% to 35% by weight, preferably from 0.1% to 30% by weight, and more preferably from 1% to 25% by weight, relative to the total weight of the composition according to the present invention (See pg.11, lines 41-45).
Regarding claim 11, Orita et al. teach the composition according to the present invention may further comprise water (See pg. 3, line 25).
Regarding claim 12, Orita et al. teach the pH of the composition according to the present invention may be more than 7.0 (See pg. 3, line 30)
Regarding claim 13, Orita et al. teach the composition according to the present invention may be a cosmetic composition (See pg. 3, line 35).
Regarding claim 14, Orita et al. teach the present invention also relates to a cosmetic process for a keratin substance, such as skin, comprising the step of: applying the composition according to any one of Claims 1 to 12 onto the keratin substance (See pg. 3, lines 38-40).
Regarding claim 16, Orita et al. disclose wherein amphoteric surfactant is selected from coco-betaine, (See page 12, line 10), sulfopropyl betaine (See page 12, lines 1-5), cocamidopropyl betaine (See page 12, line 11), Lauramine oxide- an amine oxide (See page 17, line 38). The betaine-type amphoteric surfactant is preferably selected from the group consisting of alkylbetaines, alkylamidoalkylbetaines, sulfobetaines, phosphobetaines, and alkylamidoalkylsulfobetaines (See pages 11-12, paragraphs 50-54).
Response to Arguments
The applicant contends that amended claim 1 (and corresponding claims) is patentable based on alleged unexpected results and asserts that the amendments render the claims commensurate in scope with the evidence presented in the declaration. The examiner has carefully considered these arguments but does not find them persuasive for the reasons set forth below.
The Examiner acknowledges that Applicant has amended claim 1 to limit the amphoteric surfactant to betaines, amine oxides, and mixtures thereof; and recite specific concentration ranges for modified starch (0.01-15 wt %), C13-C15 fatty acid (1-20 wt%), clay (1-40 wt%), amphoteric surfactant (1-20wt%).
However, Orita et al. disclose compositions comprising: Amphoteric surfactants, including betaines and amine oxides, fatty acids within overlapping carbon chain ranges (including C13-C15 species), structuring agents such as clays, polysaccharide – based or starch-derived materials. Further, Orita et al. teaches component amounts that overlap or reasonably encompass the claimed ranges, or would have been obvious as routine optimization by one of ordinary skill in the art.
Accordingly, the amended limitations do not distinguish the claimed invention over Orita et al.
Applicant argues that the claimed weight ratio of amphoteric surfactant to C13-C15 fatty acid ≥ 0.5 is critical. However, Orita et al. discloses compositions comprising both amphoteric surfactants and fatty acids in amounts that would reasonably result in overlapping ratios, including ratios meeting or exceeding 0.5. Moreover, applicant has not provided sufficient evidence demonstrating that the claimed ratio represents a sharp or critical boundary, or produces a new or unexpected property across the full scope of the claim. Absent such evidence, the ratio is considered a matter of routine optimization of result-effective variables, which would have been obvious to one of ordinary skill in the art.
Applicant asserts that the amended claims are now commensurate in scope with the evidence presented in table 2 of the declaration. The examiner disagrees: while the claims are now limited to betaines, amine oxides, and mixtures thereof, the claims still encompass, numerous structurally distinct betaines and amine oxides, broad concentration ranges for all components, a wide variety of compositions within the claimed genus, in contrast, the declaration: demonstrates results for only a limited number of specific embodiments, does not establish that the alleged improved properties are achieved across the full scope of the claimed genus. Therefore, the evidence remains not commensurate in scope with the claims, as required under established case law (e.g., In re scope, In re Peterson).
Additionally, applicant has not adequately shown that the alleged results are unexpected relative to Orita et al. which represents the closest prior art. To be persuasive, evidence of unexpected results must show a significant improvement over the closest prior art. The declaration does not provide a sufficient comparison demonstrating that the claimed compositions exhibit unexpected superiority over Orita et al. compositions.
For the reasons above, the amendments do not overcome the teachings of Orita et al., the claimed ratio is not shown to be critical, the evidence of unexpected results is not commensurate in scope and is not persuasive.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kimberly Barber whose telephone number is (703) 756-5302. The examiner can normally be reached on Monday through Friday from 6:30 AM to 3:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax, can be reached at telephone number (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615