Response to Amendment
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.
Claim(s) 1-5 and 7, 12-18 is/are rejected under 35 U.S.C. 102(a1) as anticipated by Dong et al (2009/0227482) is withdrawn.
Claim(s) 1-5, 7, 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al (2009/0227482).
Dong et al exemplifies the invention at EX.F:
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Specifically, the preferred betaine AMPHOSOL HCG, is specified and exemplified as applicant’s preferred betaine in proportions, fatty acid such as myristic acid, salts such as additional anionic surfactants ALPHA-STEP, adjunct ingredients such glidant and soybean oil emollients and balance of water in amounts up to 70% are suggested in runs 24, 27 and 28. Additionally, with respect to the amended claims inserting nonionic surfactant as an additional surfactant, Dong et al broadly discloses 0.1 to 50% of nonionic surfactants (0036), where the skilled artisan would readily include an additional surfactant for surface tension release for cleansing synergism as evidenced by Dong’s inclusion and suggestions. Absent a showing to the contrary, one skilled would have included said nonionic surfactant for the benefits disclosed in Dong et al. With respect to the fatty acid, which is exemplified at 2%, but said optional skin conditioning ingredients are well established to be from 0%, being optional to 25% (0043).
Therefore, the skilled artisan would have envisioned the claims as obvious to comprise a data point of 1% given the specific teachings and optimizations within the skilled artisan as low levels of skin conditioning agents such as fatty acids are employed for their intended purpose and are well envisioned from 0.05-1% as suggested by Dong et al.
[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Response to Arguments
Applicant's arguments filed 4-13-2026 have been fully considered but they are not persuasive.
Applicant argues that Dong et al do not suggest MW as claimed.
The examiner directs applicants to his specification where Amphosol Betaines are preferred and would readily fall within the claimed range (page 8 of applicant’s spec), absent a showing to the contrary one would readily envision the same component utilized and preferred by applicant would be the same or similar.
The argument with respect to the nonionic surfactant being absent by Dong is debunked and suggested above in para 0036 where nonionic are suggested and employed.
With respect to the argument that Dong does not teach foaming being generated from fatty acid versus anionic surfactants.
The examiner contends that the test of obviousness is not predicated on whether the characteristic are the same or functions in similar manner. The components claimed are suggested by Dong in their requisite proportions and one skilled in the art would expect similar characteristics in the absence of a showing to the contrary, commensurate in scope with the claims.
With respect to the examples and showing, the examiner contends that the claims are not commensurate in scope and one skilled in the art would be unable to determine criticality with the broad suggestions of components, all of which are suggested by the prior art.
Allowable Subject Matter
Claims 9-11 are allowed.
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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 NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-1498. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761
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