DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed 04/06/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 1-4, 6-7, 9, 12, 15, 18-21, 23, 26-29 and 35-36 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], including sodium lauryl sulfate and sodium lauryl ether sulfate (e.g., sulfated surfactant [Tables XV, VII, LVI, and LXV]); 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, 29 and 35.
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 3-4 and 6-7 are rendered prima facie obvious because Pesaro taught cocamidopropyl betaine [0080], sulfonate anionic surfactants [0254-0258], nonionic surfactants [0266, 0268, 0270] and betaines [0284-0287].
Claims 12 and 36 are rendered prima facie obvious because Pesaro taught hexylglycerin [claim 2] and
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[0029].
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 7.0 [Table LXVI].
The instant claim 18 recites a pH of from about 4 to about 7.
Pesaro taught a pH of 7.0. 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 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 0.1 % to about 3 %.
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 25 %.
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) at Tables VIII-X. Rheology additives comprising sodium chloride were taught at [0084-0085].
Response to Arguments
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive.
Applicant argued thar Pesaro does not disclose a cosmetic composition comprising 3-(heptyloxy)propane-1,2-diol, 3-[(n-octyl)oxy]-1,2-propanediol, a sulfated surfactant system and a rheology modifier comprising inorganic salt, as required by the claims.
The Examiner disagrees. As discussed in the body of the rejection, Pesaro taught cosmetic compositions comprising 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], including sodium lauryl sulfate and sodium lauryl ether sulfate (e.g., sulfated surfactant [Tables XV, VII, LVI, and LXV]; and, rheology modifiers, including sodium chloride.
Applicant argued that Pesaro did not disclose a mixture of glyceryl ethers.
The Examiner responds that the instant claim 1 is not further limited to a mixture of ingredients. Furthermore, Pesaro taught a mixture of ingredients, as described in the Obviousness rejection.
Regarding claim 29, Applicant argued that Pesaro did not teach a mixture of glyceryl ethers.
The Examiner disagrees. Pesaro taught a mixture of glyceryl ethers at claim 2.
Applicant argued an unexpected viscosity when 3-(heptyloxy)propane-1,2-diol, 3-[(n-octyl)oxy]-1,2-propanediol, a sulfated surfactant system (e.g., Na coco sulfate, ammonium lauryl sulfate or Na lauryl ether sulfate), rheology modifier comprising inorganic salt (e.g., NaCl) are combined, versus when 3-(heptyloxy)propane-1,2-diol and 3-[(n-octyl)oxy]-1,2-propanediol are combined without the sulfated surfactant system and rheology modifier.
The Examiner acknowledges the increase in viscosity, as demonstrated in the Applicant’s Figure 1 [see Applicant’s remarks, at page 9]. This increase, however, appears inherent in Pesaro’s compounds. This is because Pesaro taught 3-(heptyloxy)propane-1,2-diol, 3-[(n-octyl)oxy]-1,2-propanediol, sodium lauryl sulfate, sodium lauryl ether sulfate and NaCl.
It appears that the compositions of the instant claims, and those of the prior art, would reasonably be expected to have substantially the same physical and chemical properties (e.g., increased 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 (e.g., 3-(heptyloxy)propane-1,2-diol, 3-[(n-octyl)oxy]-1,2-propanediol, sodium lauryl ether sulfate and NaCl), then the properties (e.g., increased viscosity) that the Applicant discloses and/or claims are necessarily present.
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].
Response to Arguments
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive.
Applicant argued that claim 11 is unpatentable over Pesaro, in view of The Clorox Company, because the secondary reference does not disclose the combination of 3-(heptyloxy)propane-1,2-diol, 3-[(n-octyl)oxy]-1,2-propanediol in a cosmetic composition, further comprising a sulfated anionic surfactant and an inorganic salt.
The Examiner reminds the Applicant that one cannot show nonobviousness by attacking references individually, where the rejections were based on combinations of references. See MPEP 2145(IV). In the instant case, Pesaro taught the combination of 3-(heptyloxy)propane-1,2-diol and 3-[(n-octyl)oxy]-1,2-propanediol in a cosmetic composition, further comprising a sulfated anionic surfactant and an inorganic salt.
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.
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/CELESTE A RONEY/Primary Examiner, Art Unit 1612
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