Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/04/2025 has been entered.
Status of Claims
Amendment filed on 12/04/2025 is acknowledged.
Claims 1 and 19 are amended. Claims 8-9 and 11-14 are cancelled.
Claims 1-7, 10, 15-20 are pending and being examined on merits herein.
Priority
The instant application 18299864, filed on 04/13/2023, claims foreign priority to China PCT/CN2022086854, filed on 04/14/2022.
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 1-7, 10, and 15-20 are 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 1 recites “a) a surfactant system, …; b) … a non-ionic surfactant comprises a fatty alkanolamide”. “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). For the present instance, claim 1 recites the broad recitation “a) a surfactant system” and the claim also recites “b) … a non-ionic surfactant” which is the narrower statement 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. It is unclear whether non-ionic surfactant is excluded from the co-surfactant or can be included and it is unclear why a non-ionic surfactant does not belong to the surfactant system. Therefore, claim 1 scope is indefinite.
Claims 1 recites “the weight ratio of the fatty alkanolamide to the … glucoside ranges from about 7 to about 10”. It is unclear what exactly “from about 7 to about 10” means relating to the weight ratio since it is not shown in ratio format. Whether it is meant to be about 7 : 10, or it is meant to be from about 7 : 1 to about 10 : 1. The language does not express a definite meaning of the ratio, and metes and bounds of the claim is indefinite.
Claim 18 recites “the weight ratio of the fatty alkanolamide to the … glucoside ranges from about 8 to about 9”. It is unclear what exactly “from about 8 to about 9” means relating to the weight ratio since it is not shown in ratio format. Whether it is meant to be about 8 : 9, or it is meant to be from about 8 : 1 to about 9 : 1. The language does not express a definite meaning of the ratio, and metes and bounds of the claim is indefinite.
Claims 2-7, 10 and 15-17 and 19-20 are rejected accordingly because they directly or indirectly depend upon claim 1 and do not clarify the issue addressed above in claim 1 further.
Claim Interpretation
Claims 1 and 18 are interpreted below.
Claim 1 is interpreted as:
A personal cleansing composition comprising:
a surfactant system, free of alkyl sulfate or alkyl ether sulfate type of surfactants, comprising
a fatty acyl isethionate surfactant from about 0.1% to about 5% by weight of the composition;
a non-ionic surfactant comprising a fatty alkanolamide comprising cocamide MEA from about 0.05% to about 5% by weight of the composition;
other co-surfactant from about 0.5% to about 40% by weight of the composition;
a hydrophobically modified ethoxylated methyl glucoside, chosen from PEG-120 methyl glucose
dioleate, PEG-120 methyl glucose trioleate, or mixtures thereof, from about 0.01% to about 2.0% by weight of the composition;
a preservative chosen from sodium metabisulfite, sodium sulfite, sodium hydrosulfite, potassium sulfite, sodium bisulfite, potassium bisulfite and mixtures thereof, from about 0.01% to about 1.0% by weight of the composition;
the composition pH is from about 5.5 to about 7; and
wherein the weight ratio of the fatty alkanolamide to the hydrophobically modified ethoxylated methyl glucoside ranges from about 7 : 1 to about 10 : 1.
Regarding “the viscosity of the composition after 3 weeks at 60 C is greater than or equal to 4 Pa.s” is interpreted as the property of the composition or “intended use” because it does not provide structural contribution to the composition.
Claim 18 is interpreted as in the personal cleansing composition of claim 1 the weight ratio of the fatty alkanolamide to the hydrophobically modified ethoxylated methyl glucoside ranges from about 8 : 1 to about 9 : 1.
The term "about" in claim 1f) and claim 18 is interpreted as having its ordinary and customary meaning to a POSITA as "approximately" (see MPEP 2111.01 IV A), i.e. in general, within a range of plus or minus 10%.
Examiner notes that acronyms in the claims, MEA is monoethanolamine, TEA is triethanolamine, and PEG is polyethylene glycol, according to applicant’s remark in record of 08/11/2025.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-7, 10, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over He XJ (CN107822945, 03/23/2018, IDS of 07/03/2023; Machine translated English copy for including paragraph numbers, in record of 05/12/2025) as evidenced by Chemical Book (Sodium cocoyl isethionate, 01/06/2020, in record of 05/12/2025), in view of Dodd et al. (CA2445283, 01/22/2013, PTO-892) and Sutcliffe et al. (US20190000761, 01/03/2019).
He XJ throughout the reference discloses a natural yeast composition for personal cleaning like facial cleansers, makeup removal, shampoos, shower gels, etc. (e.g., [0052]; [0081], [0093]).
Regarding instant claims 1-5, 7, 16, and 18, He XJ teaches a shower gel composition [0093] comprising 1.0 % sodium cocoyl isethionate (corresponding to instant claim 1 (a)(i) and claim 3), 3.0% cocamide methyl MEA (corresponding to instant claim 1 (a)(ii) in light of claim interpretation as presented above), 6.0% sodium lauroamphoacetate (corresponding to co-surfactant in instant claim 1 (a)(iii) in light of claim interpretation), 1.5% PEG-120 methyl glucose dioleate (corresponding to instant claim 1 (c)), 0.3% benzyl alcohol (corresponding to preservative in instant claim 1 (d)), 5.0% sodium lauroyl sarcosinate (corresponding to instant claims 4-5), 0.25% fragrance (corresponding to instant claim 7), and the composition is free of alkyl sulfate or alkyl ether sulfate type of surfactants (corresponding to instant claim 1(a)) and free of direct dyes, oxidative dyes, parabens, or mixtures thereof (corresponding to instant claim 16). All the ingredient weight amounts in He XJ as shown overlapping with the ranges in instant claims.
He XJ indicates that the composition pH is adjusted to 5.0-5.5 or pH 4.0-9.0 for later use (Claims 7 and 9) (overlapping with pH from about 5.5 to about 7 in instant claim 1(e)). Based on cocamide methyl MEA amount (3.0%) and PEG-120 methyl glucose dioleate (1.5%), the ratio of fatty alkanolamide to the hydrophobically modified ethoxylated methyl glucoside in He XJ’s cleansing composition is 3.0 :1.5 = 2 : 1, corresponding to the ratio ranges in instant claims 1f) and 18.
In light of the claim interpretation as presented above, the viscosity of the composition after 3 weeks at 60 C is greater than or equal to 4 Pa.s., is the property or “intended use” of the composition, which would be necessarily taught by prior art along with the composition.
Regarding the formula structures in instant claims 2 and 4, He XJ teaches sodium cocoyl isethionate and sodium lauroyl sarcosinate in the shower gel formulation [0093] as discussed above. As evidenced by Chemical Book, sodium cocoyl isethionate fits general formula (I) in instant claim 2, as R1 is saturated straight alkyl chain, R2 and R3 are H, and M+ is Na+. Even though He XJ does not teach fatty acyl sarcosinate surfactant formula II, MPEP 2112.01.II. states "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). For this instance, sodium lauroyl sarcosinate fits the general formula II as shown in instant claim 4, this structure is inherited property of sodium lauroyl sarcosinate, and therefore it is implied and taught by prior art He XJ.
Regarding instant claims 6, He XJ also exemplifies electrolyte in various compositions, such as 0.55% sodium chloride in a makeup remover [0085-0086], 0.8% sodium chloride in a natural yeast shampoo composition [0087-0088] (corresponding to instant claim 6 with overlapping amounts).
Regarding instant claim 17, He XJ indicates that the processing process of the natural yeast composition can improve stability, optimize product odor, increase product efficacy value, and reduce the use of additive (e.g., [0048]; [0052]).
He XJ does not teach weight ratio range close to from about 7 : 1 to about 10 : 1 of the fatty alkanolamide to hydrophobically modified ethoxylated methyl glucoside as recited in instant claim 1(f) as interpreted and presented above in claim interpretation, or about 8 : 1 to about 9 : 1 in the instant claim 18 as interpreted. He XJ does not teach the preservative is chosen from sodium metabisulfite, sodium sulfite, sodium hydrosulfite, potassium sulfite, sodium bisulfite, potassium bisulfite and mixtures thereof as recited in instant claim 1 d), He XJ does not teach the specific species of hydrophobically modified ethoxylated methyl glucoside as recited in instant claim 10, and He XJ also fails to teach a zwitterionic surfactant comprising an alkyl betaine and/or an alkyl amidopropyl betaine in the composition as recited in instant claim 15.
Dodd throughout the reference teaches shaving compositions comprising water, cleansing or conditioning agent for hair or skin, and water soluble polymers to increase lubricity and enhance shaving performance (e.g., Abstract).
Dodd teaches suitable non-ionic surfactants include fatty alkanolamides such as lauramide DEA and cocamide MEA (e.g., Pg. 7, Line 31), and exemplifies in using cocamide MEA at 3% in Examples 3 and 5 (Pg. 12, top), and in Examples 10-14 using cocamide MEA at 1.44% (or lauramide DEA at 1.44%) with PEG-20 methyl glucose sesquisterate (corresponding to instant claim 10) at 0.24% in the self-foaming shave gel (Examples 10-14, Pg. 13, Line 19 -Pg. 14, Line 9), resulting in the weight ratio 1.44 : 0.24 = 6 : 1; if the percentage numbers are rounded to one decimal digit resulting in 1.4% : 0.2 % = 7 : 1. In light of claim interpretation, the term "about" is interpreted as having its ordinary and customary meaning to a POSITA as "approximately" (see MPEP 2111.01 IV A), i.e. in general, within a range of plus or minus 10%. With plus or minus 10% as conventionally interpreted as “about”, the claimed ratio range from about 7 : 1 to about 10 : 1 as recited in instant claim 1f) results in the range as 6.3 : 1 to 11 : 1 (can be rounded to 6 : 1). The weight ratio range from about 8: 1 to about 9 : 1 in instant claim 18 results in the range as 7.2 : 1 to 9.9 : 1 (can be rounded to 7 : 1 to 10 : 1). Therefore, Dodd teaches the corresponding weight ratio range at least very close to or overlapping with the instantly claimed ranges.
Sutcliffe throughout the reference teaches an anti-acne nanoemulsion composition comprising surfactant reagents (Abstract) in a topical form including shampoo and cleanser [0017].
Sutcliffe teaches suitable preservatives including benzyl alcohol, sodium metabisulphite (same as metabisulfite), and many others [0079] (corresponding to instant claim 1 d)), suitable surfactants such as polyoxyethylene stearate or distearate, polyoxyethylene fatty ethers, and PEG-20 methylglucose sesquistearate among many others [0069] (corresponding to instant claim 10). Sutcliffe lists many suitable zwitterionic surfactants for the composition including alkyl betaine [0073] (corresponding to instant claim 15).
It would have been prima facie obvious for one with ordinary skills in the art prior to the filing date to incorporate weight ratios of specific ingredients, suitable alternative surfactants and preservatives taught by Dodd and Sutcliffe into the composition of He XJ to arrive at instant invention. Because He XJ already shows the formulation comprising more fatty alkanolamide as cocamide methyl MEA amount (3.0%) than hydrophobically modified ethoxylated methyl glucoside as PEG-120 methyl glucose dioleate (1.5%) at weight ratio 2 : 1, while Dodd shows the in the lubricity and performance enhanced formulation with higher weight ratio close to 7 : 1, it would have motivated artisans in the field to increase the weight ratio close to that of Dodd in the formulation to achieve the desirable properties as demonstrated in the lubricity and performance enhanced formulation of Dodd. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Selecting alternative compounds and reagents are routine experimentation for scientists or artisans in the field to optimize compositions. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). For this instance, He XJ already taught preservative and co-surfactants are suitable for the cleansing composition, while Sutcliffe teaches many surfactants including PEG-20 methyl glucose sequistearate, zwitterionic surfactants and preservatives for cleansing composition. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For this instance, the ratio of cocamide MEA and PEG-120 methyl glucose dioleate in He XJ does not overlap with those in instant claims 1 and 18, however, there is no evidence such a range is critical. Especially, evidence of such ratio is not critical can be seen of range from 2 to 12 is indicated in instant spec. (Pg. 14, lines 28-29), which overlaps with that taught in prior art. Since the composition in He XJ comprising all the ingredients as instantly claimed, constitutes properties including natural, higher safety factor, and longer-lasting stability, and can be made into various forms (e.g., [0052]), it would be routine and motivated for scientists in the field to experiment viscosity or change composition forms. Moreover, the viscosity is a property of the composition and does not contribute to the composition structure as presented in claim interpretation. “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, the fatty acyl isethionate surfactant amount, co-surfactant amount, non-ionic surfactant amount, hydrophobically modified ethoxylated methyl glucoside amount, preservative amount, pH, fatty acyl sarcosinate amount, electrolyte amount, and fragrance amount all overlap with those ranges taught by prior art as discussed above.
Claim 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over He XJ (CN107822945, 03/23/2018, IDS of 07/03/2023; Machine translated English copy for including paragraph numbers, in record of 05/12/2025), in view of Dodd et al. (CA2445283, 01/22/2013, PTO-892) and Sutcliffe et al. (US20190000761, 01/03/2019) as applied to claims 1-7, 10, and 15-18 above, and further in view of Ishikawa et al. (US4835092, 05/30/1989) and Hsu et al. (US20200283555, 09/10/2020, IDS of 07/03/2023).
He XJ, Dodd and Sutcliffe teaches a personal cleansing composition comprising a surfactant system free of alkyl sulfate or alkyl ether sulfate type of surfactants, comprising 1.0 % fatty acyl isethionate surfactant as sodium cocoyl isethionate, 3.0% fatty alkanolamide as cocamide methyl MEA, 6.0% co-surfactant as sodium lauroamphoacetate, 1.5% hydrophobically modified ethoxylated methyl glucoside as PEG-120 methyl glucose dioleate, 0.3% preservative as benzyl alcohol, 5.0% sodium lauroyl sarcosinate, 0.25% fragrance (He XJ); and also teaches that the preservative can be sodium metabisulphite instead of benzyl alcohol (Sutcliffe), and the fatty alkanolamide can be 1.44% cocamide methyl MEA or 1.44% lauramide DEA while with 0.24% of PEG-20 methyl glucose sesquistearate as the hydrophobically modified ethoxylated methyl glucoside in the cleansing formulation, reaching the weight ratio around 7 : 1 of these two specific ingredients in the formulation (Dodd), with composition pH adjusted to 5.0-5.5 or pH 4.0-9.0 for later use (He XJ), as presented above in great detail and incorporated herein.
He XJ, Dodd and Sutcliffe do not teach preservative as sodium bisulfite as recited in instant claim 19, or hydrophobically modified ethoxylated methyl glucoside as PEG-120 glucose trioleate as recited in instant claim 20.
Regarding instant claim 19, Ishikawa throughout the reference teaches a method for processing a silver halide color photographic material using a color developer containing a chelating agent in the absence of benzyl alcohol as preservative (e.g., Title; Abstract). Ishikawa specifies that the color-developing solution contains as a preservative a sulfite such as sodium sulfite, potassium sulfite, sodium bisulfite, potassium bisulfite, sodium metabisulfite, and potassium metabisulfite, or a carbonyl sulfite addition product (e.g., Col. 7, lines 18-21; Col. 10, lines 7-13).
Regarding instant claim 20, Hsu directs to alkali-swellable emulsion polymers useful as rheology modifiers for thickening aqueous surfactant containing compositions (Abstract). Hsu teaches nonionic surfactants including but not limited to hydrophobically modified alkoxylated methyl glucosides, such as PEG-120 methyl glucose dioleate, PEG-120 methyl glucose trioleate, and PEG-20 methyl glucose sesquistearate (e.g., [0120]).
It would have been prima facie obvious for a person having ordinary skills in the art prior to filing date to substitute the preservative of benzyl alcohol taught by He XJ with sodium bisulfite taught by Ishikawa, or implement PEG-120 methyl glucose trioleate taught by Hsu as hydrophobically modified ethoxylated methyl glucoside. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Ishikawa points out that benzyl alcohol as an ordinary preservative has disadvantages, e.g., with compounds in the composition cannot fully avoid production of a stain in a short processing time (Col. 2, lines 9-15), and various preservatives or chelating agents have been proposed to improve stability of a color-developing solution (Col. 1, lines 51-53) including sodium bisulfite. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 10, 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 6-9, 13-15, and 17 of copending Application US18429884 (hereafter US’884), filed on 02/01/2024 (hereafter US’884), in view of He XJ (CN107822945, 03/23/2018, IDS of 07/03/2023; Machine translated English copy for including paragraph numbers, in record of 05/12/2025), Dodd et al. (CA2445283, 01/22/2013, PTO-892), Sutcliffe et al. (US20190000761, 01/03/2019), Ishikawa et al. (US4835092, 05/30/1989) and Hsu et al. (US20200283555, 09/10/2020, IDS of 07/03/2023).
Although the claims at issue are not identical, they are not patentably distinct from each other.
US’884 recites a personal cleansing composition comprising:
a) a surfactant system wherein the surfactant system comprises:
(i) from about 1.75% to about 2.75%, of a fatty acyl isethionate surfactant by weight of the composition (corresponding to instant claims 1(a)(i));
(ii) from about 1.75% to about 3.0%, of a fatty acyl sarcosinate surfactant by weight of the composition (overlapping with instant claim 1(a)(iii), in light of claim interpretation);
(iii) from about 7.75% to about 9.75%, of a zwitterionic surfactant by weight of composition, wherein the zwitterionic surfactant comprises a betaine (corresponding to instant claim 15, with overlapping range to instant claims 1(a)(iii));
b) wherein the pH is from about 5.5 to about 7 (same as instant claim 1(e)); and
c) wherein the composition is substantially free of from alkyl sulfate and alkyl ether sulfate type of surfactants (claim 1) (same as that in instant claim 1 (a)).
US’884 recites about 0.01% to about 1.0% a preservative in the composition (claim 15) (corresponding to instant claim 1(d)).
US’884 recites the general formula (I) of fatty acyl isethionate surfactant (claim 6) as seen in instant claim 2, and fatty acyl isethionate surfactant is chosen from sodium lauroyl isethionate, sodium lauroyl methyl isethionate, sodium oleoyl isethionate, sodium oleoyl methyl isethionate, sodium stearoyl isethionate, sodium stearoyl methyl isethionate, sodium myristoyl isethionate, sodium myristoyl methyl isethionate, sodium palmitoyl isethionate, sodium palmitoyl methyl isethionate, sodium cocoyl isethionate, sodium cocoyl methyl isethionate, a blend of stearic acid and sodium cocoyl isethionate, ammonium cocoyl isethionate, ammonium cocoyl methyl isethionate, or mixtures thereof (claim 7) (corresponding to instant claim 3). US’884 also recites fatty acyl sarcosinate surfactant general formula II (claim 8) (corresponding to instant claim 4), and fatty acyl sarcosinate surfactant is chosen from sodium lauroyl sarcosinate, sodium cocoyl sarcosinate, sodium myristoyl sarcosinate, TEA-cocoyl sarcosinate, ammonium cocoyl sarcosinate, ammonium lauroyl sarcosinate, dimer dilinoleyl bis-lauroyl glutamate/lauroyl sarcosinate, lauroyl sarcosinate, isopropyl lauroyl sarcosinate, potassium cocoyl sarcosinate, potassium lauroyl sarcosinate, sodium oleoyl sarcosinate, sodium palmitoyl sarcosinate, TEA-lauroyl sarcosinate, TEA-oleoyl sarcosinate, TEA-palm kernel sarcosinate, or mixtures thereof (claim 9) (corresponding to instant claim 5).
US’884 further recites about 0.05% to about 5% of an electrolyte in the composition, chosen from m sodium or potassium citrate, calcium chloride, calcium bromide, zinc chloride, barium chloride, calcium nitrate, potassium chloride, sodium chloride, potassium iodide, sodium bromide, ammonium bromide, sodium sulfate, or mixtures thereof (claim 13) (corresponding to instant claim 6), and about 0.01% to 2% of a fragrance (claim 14)(corresponding to instant claim 7). US’884 indicates a method of increasing stability of a personal cleansing composition comprising the step of forming a personal cleansing composition (claim 17) (corresponding to instant claim 17). The composition as seen is free of direct dyes, oxidative dyes, parabens, or mixtures thereof (corresponding to instant claim 16).
US’884 does not recite a hydrophobically modified ethoxylated methyl glucoside species in the composition as recited in instant claim 1(c), 10, and 20. US’884 does not recite species of fatty alkanolamide as recited in instant claim 1a)(ii) in light of claim interpretation. US’884 does not recite alkanolamide to the hydrophobically modified ethoxylated methyl glucoside ratio as recited in instant claims 1f) and 18. US’884 also does not specify the preservative is chosen from the species as recited in instant claims 1d) and 19.
As discussed above in greater detail, He XJ, Dodd, Sutcliffe, Ishikawa, and Hsu combined teaching teach a cleansing composition comprising all components showing in instant claim 1, and also exemplifies fatty alkanolamide and hydrophobically modified ethoxylated methyl glucoside species with a weight ratio close to instantly claimed ranges, as well as specific preservative or PEG-120 methyl glucose trioleate as recited in instant claims.
It would be obvious to incorporate the species of desirable components from teachings of He XJ, Dodd, Sutcliffe, Ishikawa, and Hsu into the composition of US’884 to arrive at instant invention. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For this instance, both US’884 and prior art teach overlapping ranges of those in instant claims as discussed above. Even if a ratio of the fatty alkanolamide to the hydrophobically modified ethoxylated methyl glucoside does not overlap with what is taught in prior art, there is no evidence such a range is critical because a range of about 2 to about 12 is implemented in instant specification, which overlaps with that taught in prior art. Further, the viscosity of the composition is interpreted as property or “intended use” of the composition and does not provide structural limitation to the composition, in light of the claim interpretation as presented above. “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 10, 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3, 6-8, and 12-14 of copending Application US18782827 (hereafter US’827, filed on 07/24/2024), in view of He XJ (CN107822945, 03/23/2018, IDS of 07/03/2023; Machine translated English copy for including paragraph numbers, in record of 05/12/2025) as evidenced by Chemical Book (Sodium cocoyl isethionate, 01/06/2020, in record of 05/12/2025), Dodd et al. (CA2445283, 01/22/2013, PTO-892), Sutcliffe et al. (US20190000761, 01/03/2019), Ishikawa et al. (US4835092, 05/30/1989) and Hsu et al. (US20200283555, 09/10/2020, IDS of 07/03/2023).
Although the claims at issue are not identical, they are not patentably distinct from each other.
US’827 recites a personal cleansing composition comprising a surfactant system wherein the surfactant system comprises from about 1.75% to about 15%, of an acyl isethionate surfactant by weight of the composition, with composition pH from about 5.5 to about 7, and the composition is free of alkyl sulfate and alkyl ether sulfate type of surfactants (Claim 1) (corresponding to components of instant claim 1(a), 1(a)(i), 1(e) with overlapping ranges of amount and pH).
US’827 further recites species of acyl isethionate surfactant (Claim 6) (corresponding to instant claim 3), US’827 recites fatty acyl sarcosinate formula (I) (Claim 7), corresponding to instant claim 4. US’827 recites about 1.75% to about 10%, or 1.75% to about 4.0% of a fatty acyl sarcosinate surfactant in claims 2 and 3 respectively (corresponding to amount in instant claim 4), fatty acyl sarcosinate species (Claim 8) (corresponding to instant claim 5), and from about 3% to about 20% of a zweitterionic surfactant (corresponding to instant claim 15), a preservative in the composition (claim 15) and its amount from about 0.01% to about 1.0% (Claim 14) (corresponding to instant claim 1(d)).
US’827 further recites about 0.05% to about 5% of an electrolyte in the composition, chosen from compound species including sodium citrate, potassium citrate, etc. (claim 13) (corresponding to instant claim 6), and about 0.01% to 2% of a fragrance (claim 13)(corresponding to instant claim 7). The composition as seen is free of direct dyes, oxidative dyes, parabens, or mixtures thereof (corresponding to instant claim 16).
US’827 does not recite species of fatty alkanolamide as recited in instant claim 1a)(ii) in light of claim interpretation. US’827 does not recite a hydrophobically modified ethoxylated methyl glucoside species in the composition as recited in instant claim 1(c), 10, and 20. US’827 does not recite alkanolamide to the hydrophobically modified ethoxylated methyl glucoside ratio as recited in instant claims 1f) and 18. US’827 also does not specify the preservative is chosen from the species as recited in instant claims 1d) and 19. US’827 does not recite fatty acyl isethionate surfactant general formula as recited in instant claim 2.
As discussed above in greater detail, He XJ, Dodd, Sutcliffe, Ishikawa, and Hsu combined teaching, as evidenced by Chemical Book, teach a cleansing composition comprising all components showing in instant claim 1, and also exemplifies fatty alkanolamide and hydrophobically modified ethoxylated methyl glucoside species in an exemplified ratio close to instantly claimed ratio ranges, as well as specific preservative or PEG-120 methyl glucose trioleate as recited in instant claims, as presented above in great detail and incorporated herein.
It would be obvious to incorporate the species of desirable components from teachings of He XJ, Dodd, Sutcliffe, Ishikawa, and Hsu into the composition of US’827 to arrive at instant invention. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For this instance, bothUS’827 and prior art teach overlapping ranges of those in instant claims as discussed above. Even if a ratio of the fatty alkanolamide to the hydrophobically modified ethoxylated methyl glucoside does not overlap with what is taught in prior art, there is no evidence such a range is critical because a range of about 2 to about 12 is implemented in instant specification, which overlaps with that taught in prior art. Further, in light of claim interpretation, the viscosity is a property or “intended use” of the composition which has been taught by prior art. “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s Remarks/Arguments filed on 12/04/2025 have been fully considered, but they are not persuasive.
In light of the applicant’s remarks regarding the weight ratio ranges of the fatty alkanolamide to the hydrophobically modified ethoxylated methyl glucoside, as presented in claim interpretation, from about 7 : 1 to about 10 : 1 in instant claim 1, and from about 8 : 1 to about 9 : 1 in instant claim 18, new reference Dodd et al. (CA2445283, 01/22/2013, PTO-892) is combined with He XJ to address this limitation. Please find the most relevant paragraphs presented in the office action and copied below for reference:
Dodd teaches suitable non-ionic surfactants include fatty alkanolamides such as lauramide DEA and cocamide MEA (e.g., Pg. 7, Line 31), and exemplifies in using cocamide MEA at 3% in Examples 3 and 5 (Pg. 12, top), and in Examples 10-14 using cocamide MEA at 1.44% (or lauramide DEA at 1.44%) with PEG-20 methyl glucose sesquisterate (corresponding to instant claim 10) at 0.24% in the self-foaming shave gel (Examples 10-14, Pg. 13, Line 19 -Pg. 14, Line 9), resulting in the weight ratio 1.44 : 0.24 = 6 : 1; if the percentage numbers are rounded to one decimal digit resulting in 1.4% : 0.2 % = 7 : 1. In light of claim interpretation, the term "about" is interpreted as having its ordinary and customary meaning to a POSITA as "approximately" (see MPEP 2111.01 IV A), i.e. in general, within a range of plus or minus 10%. With plus or minus 10% as conventionally interpreted as “about”, the claimed ratio range from about 7 : 1 to about 10 : 1 as recited in instant claim 1f) results in the range as 6.3 : 1 to 11 : 1 (can be rounded to 6 : 1). The weight ratio range from about 8: 1 to about 9 : 1 in instant claim 18 results in the range as 7.2 : 1 to 9.9 : 1 (can be rounded to 7 : 1 to 10 : 1). Therefore, Dodd teaches the corresponding weight ratio range at least very close to or overlapping with the instantly claimed ranges.
It would have been prima facie obvious for one with ordinary skills in the art prior to the filing date to incorporate weight ratios of specific ingredients, suitable alternative surfactants and preservatives taught by Dodd and Sutcliffe into the composition of He XJ to arrive at instant invention. Because He XJ already shows the formulation comprising more fatty alkanolamide as cocamide methyl MEA amount (3.0%) than hydrophobically modified ethoxylated methyl glucoside as PEG-120 methyl glucose dioleate (1.5%) at weight ratio 2 : 1, while Dodd shows the in the lubricity and performance enhanced formulation with higher weight ratio close to 7 : 1, it would have motivated artisans in the field to increase the weight ratio close to that of Dodd in the formulation to achieve the desirable properties as demonstrated in the lubricity and performance enhanced formulation of Dodd. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D). Moreover, It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
In summary, prior art has taught the obviousness of instant invention.
Please consider the entire office action above as a complete response to the arguments.
Conclusion
No claim is allowed.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616