DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 9-13 are withdrawn.
Claims 1, 6-8, and 14-17 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 06/29/2026 has been entered.
Claim 1 is amended. Claims 2-5 are canceled. Claims 14-17 are newly added. No new material has been added.
Applicant’s amendments have overcome the previous objections to claim 1 and the specification.
Claim 1 is newly objected to due to the amendment.
Claims 1, 6-8, and 15-17 are newly rejected under 35 U.S.C. 112(b) due to the amendment.
The previous rejection of claims 1 and 6-8 under 35 U.S.C. 103 have modified to address the amendments and maintained.
Claims 14-17 are newly rejected under 35 U.S.C. 103 due to the amendment.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Applicant argues that there is no direct and unambiguous disclosure in Johncock of the individual amounts of the potassium cetyl phosphate and hydrogenated palm glycerides components in the Emulsiphos® ingredient used, while the amended claims require specific amounts of each (Remarks, pages 6-8). This argument is not persuasive, because as stated in the rejection below, while Johncock does not specify the individual percentage of each, Schmaus teaches a cosmetic emulsion and teaches a preferable ratio of potassium cetyl phosphate to hydrogenated palm glycerides is about 6:4 (Schmaus, page 8, 10th paragraph), which would result in about 2.3% potassium cetyl phosphate and about 1.5% hydrogenated palm glycerides as calculated from the 3.8% total amount taught by Johncock, which each lie within both the broader and more narrow claimed ranges. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the ratio of emulsifying agents taught by Schmaus to be preferable, because Johncock teaches these ingredients, but does not specify a ratio between the two.
Applicant argues that Examples 1-10 of the specification show the concentrated compositions according to the pending claims exhibit advantageous stability and viscosities and can be diluted properly, citing Examples C1-C5 and E11 as not suitable (Remarks, page 7). This argument is not persuasive, because the data provided for E1-11 demonstrates amounts of 4% of hydrogenated palm glycerides and 5.41% of potassium cetyl phosphate as the only combination to not result in a suitable viscosity, which is significantly more than the 3.8% combined amount taught by Johncock. Regarding Examples C1-C5, these Examples are cited as being unsuitable due to an insufficient amount of water, a lack of thickener, a lack of hydrogenated palm glycerides and/or potassium cetyl phosphate, or a high amount of 10% of potassium cetyl phosphate (instant specification, page 24, lines 9-20). As stated in the rejection below, Johncock teaches the claimed amount of water and thickener of claim 1, and the presence of hydrogenated palm glycerides and potassium cetyl phosphate in an amount which lies within combined range of claim 15. Evidence of unexpected properties should be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.
Applicant argues that Schmaus teaches the skilled person to minimize the total amount of emulsifiers in the composition to about 1.0 wt%, and therefore the combination of Johncock and Schmaus teaches away from the present invention (Remarks, page 8). This argument is not persuasive, because Johncock teaches the claimed amount of the at least two emulsifiers as stated in the rejection below. Schmaus is used as a secondary reference to demonstrate a known ratio between the two emulsifiers used in the field.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claims 1, 6-8, and 14-17 are considered to have an effective filing date of 03/19/2021.
Information Disclosure Statement
The information disclosure statement filed 07/15/2026 has been considered.
The information disclosure statement filed 05/21/2026 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
New Claim Objections
Claim 1 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, “too” should read “to”.
New 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, 6-8, and 15-17 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of “a weight percent of each of said at least two emulsifying agents is from about 0.05% to about 7%”, and the claim also recites “said first emulsifying agent is present from about 1.5% to about 4%” and “said second emulsifying agent is present from about 0.05% to about 3%”, which are each narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 6-8 and 15-17, each claim is dependent on the rejected claim 1 and does not cure its deficiencies, and therefore is deficient for the same reasons as above.
Regarding claim 15, the claim recites the limitation "the emulsifying agents". There is insufficient antecedent basis for this limitation in the claim. The Examiner has interpreted this limitation to read “the at least two emulsifying agents”.
Modified/Maintained 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 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Johncock (WO 2020088778 A1; IDS reference, 09/18/2023), further in view of Schmaus (WO 2019120564 A1; IDS reference, 09/18/2023). The references were cited previously by the Examiner.
Regarding claim 1, Johncock teaches an oil-in-water emulsion composition (Johncock, claim 16) which can be formulated as a hair care product such as a concentrated shampoo (Johncock, page 54, paragraph 0081). Johncock exemplifies a composition comprising water in about 53% and xanthan gum (i.e., a thickener as defined by the instant specification, page 8, line 30) in 0.2%, which each lie within the claimed range. Johncock teaches the composition comprises a mixture of potassium cetyl phosphate and hydrogenated palm glycerides in 3.8% total (Johncock, page 66, example 9), but does not specify the individual percentage of each. Schmaus, however, teaches a cosmetic emulsion comprising water, and one or more emulsifiers which can be potassium cetyl phosphate and hydrogenated palm glycerides (Schmaus, claims 1 and 3), and teaches a preferable ratio of potassium cetyl phosphate to hydrogenated palm glycerides is about 6:4 (Schmaus, page 8, 10th paragraph), which would result in about 2.3% potassium cetyl phosphate and about 1.5% hydrogenated palm glycerides as calculated from the 3.8% total amount taught by Johncock, which each lie within both the broader and more narrow claimed ranges.
Johncock and Schmaus are both considered to be analogous to the claimed invention, because Johncock, Schmaus, and the instant invention are in the same field of cosmetic emulsions. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the ratio of emulsifying agents taught by Schmaus to be preferable, because Johncock teaches these ingredients, but does not specify a ratio between the two.
Regarding claim 6, Johncock and Schmaus together teach all the elements of the claimed invention as applied to claim 1. Johncock teaches suitable thickeners are polymeric thickeners such as Carbopols® (i.e., a crosslinked polyacrylic acid as defined by the instant specification, page 9, lines 2-3).
Regarding claim 7, Johncock and Schmaus together teach all the elements of the claimed invention as applied to claim 1. Johncock exemplifies a composition comprising glycerin (i.e., a humectant as defined by the instant specification, page 13, lines 3-4; Johncock, page 58, example 1).
Regarding claim 8, Johncock and Schmaus together teach all the elements of the claimed invention as applied to claim 7. Johncock exemplifies a composition comprising glycerin in about 3.75% (i.e., a humectant as defined by the instant specification, page 13, lines 3-4; Johncock, page 58, example 1B), which lies within the claimed range.
New Claim Rejections - 35 USC § 103
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Johncock (WO 2020088778 A1; IDS reference, 09/18/2023), further in view of Schmaus (WO 2019120564 A1; IDS reference, 09/18/2023). The references were cited previously by the Examiner.
Regarding claim 14, Johncock and Schmaus together teach all the elements of the claimed invention as applied to claim 1. As above, Johncock teaches the composition comprises a mixture of potassium cetyl phosphate and hydrogenated palm glycerides in 3.8% total (Johncock, page 66, example 9), but does not specify the individual percentage of each. Schmaus, however, teaches a preferable ratio of potassium cetyl phosphate to hydrogenated palm glycerides is in the range of 1:1 to 7:3 (Schmaus, page 8, 10th paragraph), which would result in a range of about 1.9% to about 2.7% of potassium cetyl phosphate (as calculated from the 3.8% total amount taught by Johncock), which overlaps the claimed range, and about 1.1% to about 1.9% of hydrogenated palm glycerides, which is reasonably close to the claimed range of about 0.5% to about 1%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, absent any evidence to the contrary. See MPEP 2144.05(I). As above, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the ratio of emulsifying agents taught by Schmaus to be preferable, because Johncock teaches these ingredients, but does not specify a ratio between the two.
Regarding claim 15, Johncock and Schmaus together teach all the elements of the claimed invention as applied to claim 1. As above, Johncock teaches the composition comprises a mixture of potassium cetyl phosphate and hydrogenated palm glycerides in 3.8% total (Johncock, page 66, example 9), which lies within the claimed range.
Regarding claim 16, Johncock and Schmaus together teach all the elements of the claimed invention as applied to claim 1. Johncock exemplifies a composition containing no 1,2-alkanediols (Johncock, page 58, example 1), which lies within the claimed range of less than 0.05 wt.%.
Regarding claim 17, Johncock and Schmaus together teach all the elements of the claimed invention as applied to claim 16. Johncock exemplifies a composition containing no 1,2-alkanediols (Johncock, page 58, example 1).
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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/C.P.J./ Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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