Response to Amendment
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 .
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.
Claim(s) 1-12 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al (2023/0190606).
Johnson et al disclose a personal cleansing composition comprising from about 6% to about 50% of one or more sulfate free surfactants; from about 0.5% to 20% of lauramidopropyl betaine; from about 0.1% to about 10% of zinc pyrithione; from about 0.05% to about 3% of a cationic polymer; from about 0.05% to 10% of a stabilizing polymer from about 0.1% to about 2% of a preservative and having a pH of from about 5 to about 7 (0004). Suitable isethionate surfactants can include the reaction product of fatty acids esterified with isethionic acid and neutralized with sodium hydroxide. Suitable fatty acids for isethionate surfactants can be derived from coconut oil or palm kernel oil including amides of methyl tauride. Non-limiting examples of isethionates can be selected from the group consisting of sodium lauroyl methyl isethionate, sodium cocoyl isethionate (0030). Examples of betaine amphoteric surfactants can include coco dimethyl carboxymethyl betaine, cocoamidopropyl betaine (CAPB) (0037). he personal cleansing composition can comprise a stabilizing polymer to increase the viscosity or yield stress of the composition. Suitable stabilizing polymers can be used in the personal cleansing composition and the personal cleansing composition can comprise a stabilizing polymer from about 0.05% to 10% (0128). Said stabilizing polymers include acrylic copolymers or methacrylate copolymers, non-limiting examples include acrylic acid/acrylonitrogens copolymer, acrylates/steareth-20 itaconate copolymer, acrylates/ceteth-20 itaconate copolymer, Acrylates/Aminoacrylates/C 10-30 Alkyl PEG-20 Itaconate Copolymer, acrylates/aminoacrylates copolymer, acrylates/steareth-20 methacrylate copolymer, acrylates/beheneth-25 methacrylate copolymer, acrylates/steareth-20 methacrylate crosspolymer, acrylates/beheneth-25 methacrylate/HEMA crosspolymer, acrylates/vinyl neodecanoate crosspolymer, acrylates/vinyl isodecanoate crosspolymer, Acrylates/Palmeth-25 Acrylate Copolymer, Acrylic Acid/Acrylamidomethyl Propane Sulfonic Acid Copolymer, and acrylates/C10-C30 alkyl acrylate crosspolymer (0130). In addition, the composition also comprises one or more of a preservative. Each single preservative may be present in an amount of from about 0.1% to about 2% by weight of the composition; from about 0.3% to about 1.5%, by weight of the composition; from about 0.45% to about 0.75%, by weight of the composition: Non limiting examples of preservatives may be salicylate salts or salicylic acid (0173-0174). Additional suitable optional ingredients include but are not limited to suspension materials and structurants, pearlescent agent and combinations thereof. The composition may have from about 0.5% to about 7% of a perfume (0180). Note example
Johnson et al disclose all of the instantly required except a teaching of sufficient specificity to anticipate the claims. Nevertheless, it would have been obvious to combine each the components, in their requisite proportion to suggest the claimed invention. Given that Johnson et al teach all the components, and applicant has not proffered any evidence to the contrary, one skilled in the art of personal cleansing would readily ascertain the 4 component composition to suspend a particulate or insoluble pearlescent agents in view of the teachings and exemplifications of Johnson 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).]
Response to Arguments
Applicant's arguments filed 5-11-2026 have been fully considered but they are not persuasive.
Applicant argues that Johnson is “directed at a different technical problem” and no teachings of the “challenge of suspending particulates” or “solves this physical stability.”
The examiner contends and respectfully disagrees with the problems addressed above. Specifically applicant’s cleanser composition and the prior art relied upon both are analogous art of personal cleansing and both the claims and the prior art require 4 components in a pH range with functional language. The problems and challenges applicant’s rep. purports as being called out as requirements, is not well founded in patent law where within a compositional claim, when the composition is suggested it is therefore regarded as encompassing the characteristics of the functional language and the suggestion of solving problems is not the purpose of prior art when applied since the composition is met, all other characteristics are deemed prima facie obvious, absent a showing to the contrary, commensurate in scope with the claims.
Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established."; MPEP 2112.01 )).
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Applicant suggest the examples and comparison of the inventive concepts in examples 1-6 show criticality over the prior art of record.
The examiner contends that the inventive concept of claim 1, shows no fewer than 9 highly specific ingredients within a narrow range of proportions. The clams require 4 broadly written components without proportions, as shown in the most comprehensive claim 1. Therefore, criticality cannot be established since the claims are not commensurate in scope.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
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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