DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. 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 Rejections - 35 USC § 112 - Indefiniteness
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 15 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 15 is confusing, and requires amendment. Claim 15, line two, recites the phrase “at least one additional preservative”. The word “additional” presumes that at least one preservative was previously recited in the claims. However, claim 1, from which claim 15 depends, does not recite a “preservative”. The Applicant is encouraged to remove the word “additional” from claim 15.
Claim Rejections - 35 USC § 103 - Obviousness
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7, 9, 12, 15, 18-21, 23 and 26-29 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pesaro et al (US 2016/0100574 A1).
Pesaro taught cosmetic compositions comprising preservatives comprising least one glyceryl ether [0022, 0049], where the glyceryl ethers were heptylglycerin (e.g., 3-(heptyloxy)propane-1,2-diol); octylglycerin (e.g., 3-[(n-octyl)oxy]-1,2-propanediol) and mixtures thereof [claim 2]; at least one surfactant [0052]; and, rheology modifiers, including polymeric thickeners, hydrophilic silicas, xanthan gum and sodium chloride (e.g., reads on rheology modifier comprising an inorganic salt (e.g., NaCl)) [0084-0085]. Methods of preserving personal care compositions were taught, at claim 11.
Claim 1 is rendered prima facie obvious over the teachings of Pesaro et al, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., 3-(heptyloxy)propane-1,2-diol, 3-[(n-octyl)oxy]-1,2-propanediol, surfactant, rheology modifier comprising inorganic salt) were known in the prior art (e.g., Pesaro) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results (e.g., a cosmetic composition) to one of ordinary skill in the art. MPEP 2143.A.
Pesaro reads on claims 1, 9 and 29.
Claim 2 is rendered prima facie obvious because Pesaro taught sodium chloride at 0.30 % [Table XXXVIII]. Additionally, Pesaro did not teach that heptylglycerin and octylglycerin were required [see claim 2 where other glycerylethers were taught].
The instant claim 2 recites “wherein the concentration of the inorganic salt to achieve a given viscosity is lower than an otherwise identical composition lacking 3-(heptyloxy)propane-1,2-diol and/or 3-[(n-octyl)oxy]-1,2-propanediol.
The instant Specification disclosed [0120] 1 wt. % or less of inorganic salt to achieve a given viscosity than an otherwise identical composition lacking 3-(heptyloxy)propane-1,2-diol and/or 3-[(n-octyl)oxy]-1,2-propanediol, where the inorganic salt was sodium chloride [0114].
Pesaro taught sodium chloride at 0.30 %.
It appears that the compositions of the instant claims (1 % or less of sodium chloride) and those of the prior art (0.30 % sodium chloride) would reasonably be expected to have substantially the same physical and chemical properties (e.g., achieve a given viscosity).
Inherent features need not be recognized at the time of the invention. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. MPEP 2112 II. It should be noted that a chemical composition and its properties are inseparable. If the prior art teaches the identical chemical compounds, then the properties that the Applicant discloses and/or claims are necessarily present (see MPEP 2112).
Claims 3-7 are rendered prima facie obvious because Pesaro taught anionic surfactants [0052], cocamidopropyl betaine [0080], sulfonate anionic surfactants [0254-0258], nonionic surfactants [0266, 0268, 0270] and betaines [0284-0287].
Claim 12 is rendered prima facie obvious because Pesaro taught hexylglycerin [claim 2].
Claim 15 is rendered prima facie obvious because Pesaro taught preservatives at claim 4(b) [see also ¶s 0022, 0026, 0036, 0049].
Claim 18 is rendered prima facie obvious because Pesaro taught a pH of 8-10 [page 34 at Table L].
The instant claim 18 recites a pH of from about 2 to about 10.5.
Pesaro taught a pH of 8-10. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. MPEP 2144.05 A.
Claims 19-20 are rendered prima facie obvious because Pesaro taught glyceryl ethers at 1 % of benzylglycerin [0388], where benzylglycerin could be replaced with heptylglycerin or octylglycerin [0397].
The instant claims 19-20 recite 3-(heptyloxy)propane-1,2-diol and 3-(heptyloxy)propane-1,2-diol in a concentration from about 0.1 % to about 10 %, or from about 1 % to about 1.5 %.
Pesaro taught octylglycerin at 1 %. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 21 is rendered prima facie obvious because Pesaro taught sodium chloride at 2.0 % [Table IV].
The instant claim 21 recites an inorganic salt from about 0.25 % to about 5 %.
Pesaro taught sodium chloride at 2.0 %. A prima facie case of obviousness exists because of overlap, as discussed above.
Claim 23 is rendered prima facie obvious because Pesaro taught surfactants from 0.5 to 5 % [0052].
The instant claim 23 recites surfactant from about 1 % to about 5 %.
Pesaro taught surfactants from 0.5 to 5 %. A prima facie case of obviousness exists because of overlap, as discussed above.
Claims 26-27 are rendered prima facie obvious because Pesaro taught shampoo [0247; see also Tables VIII-X]. Pesaro taught sodium lauryl ether sulfate (e.g., sodium laureth sulfate) and sodium laureth sulfate at Tables VIII-X.
Claim 28 is rendered prima facie obvious because Pesaro did not teach rheology modifiers as required ingredients.
Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pesaro et al (US 2016/0100574 A1), in view of The Clorox Company (June 21, 2021, https://www.thecloroxcompany.com/blog/burts-bees-advocates-for-natural-product-standards/).
The pre-AIA 35 U.S.C. 103(a) rejection over Pesaro was previously described.
Additionally, Pesaro generally taught natural ingredients [0094, 0210, 0222, 0243].
Although Pesaro generally taught natural ingredients, Pesaro was not specific that the composition was at least 95 % natural, according to ISO standard 16128, as recited in claim 11.
Nevertheless, The Clorox Company taught cosmetics that were, on average, of 99.6 % natural origin (according to ISO 16128), because consumers have a growing preference for natural products [section entitled ‘Global guidelines for natural cosmetic products’, at the 2nd paragraph and also at the last line].
Since Pesaro taught cosmetics generally comprising natural ingredients, it would have been prima facie obvious to one of ordinary skill in the art to include, within the teachings of Pesaro, cosmetics that were, on average, of 99.6 % natural origin (according to ISO 16128), as taught by The Clorox Company. The ordinarily skilled artisan would have been so motivated, because consumers have a growing preference for natural products, as taught by The Clorox Company [section entitled ‘Global guidelines for natural cosmetic products’, at the 2nd paragraph and also at the last line].
Conclusion
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/CELESTE A RONEY/Primary Examiner, Art Unit 1612