DETAILED ACTION
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
The examiner construes the limitation “wherein the composition is substantially free from alkyl sulfate and alkyl ether sulfate type of surfactants” to mean that the composition contains “less than 1.5% by weight of alkyl sulfate and alkyl ether sulfate type of surfactants”, as defined by applicant on page 4, lines 27-29, of the instant specification.
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 1-17 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.
Claims 1-17 are rejected under 35 U.S.C. 112, second paragraph, for containing the limitation “alkyl sulfate and alkyl ether sulfate type of surfactants” in independent claim 1. The term “type” renders the claim vague and indefinite, since one of ordinary skill in the art would not be able to ascertain the metes and bounds of the term “type”. Furthermore, the examiner asserts that the addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). Likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986). See MPEP 2173.05(b). Claims 2-17 are included in this rejection for being dependent upon claim 1. Appropriate correction and/or clarification is required.
Claims 4-5 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 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) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In the present case, claim 4 recites the broad recitation “wherein the weight ratio of fatty acyl sarcosinate to fatty acyl isethionate is above about 0.5:1”, followed by the narrow recitation of “or from about 0.65:1 to about 1.75:1”. See MPEP 2173.05(c). Claim 5 is included in this rejection for being dependent upon claim 4. Appropriate correction and/or clarification is required.
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.
Claims 1-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Meyers et al, US 2020/0030220.
Meyers et al, US 2020/0030220, discloses a personal cleansing composition comprising 0.5-3.5% by weight of a fatty acyl isethionate, such as sodium lauroyl isethionate (see abstract and paragraphs 71-76), 0.5-5% by weight of a fatty acyl sarcosinate co-surfactant, such as sodium lauroyl sarcosinate (see paragraphs 81-86 and 99), and 5-15% by weight of a betaine co-surfactant, such as cocamidopropyl betaine (see paragraphs 81 and 109-114), wherein the composition preferably contains a mixture of sodium lauroyl sarcosinate and cocamidopropyl betaine as co-surfactants (see last line of paragraph 113). It is further taught by Meyers et al that the composition contains adjunct ingredients, such as 0.8% by weight of fragrances, preservatives, and 2.11-4.22% by weight of sodium chloride (see paragraph 190 and Examples 1-9), and that the composition is made by mixing the components (see paragraphs 192-197), per the requirements of the instant invention. Specifically, note Examples 1-22 and Examples A-D in paragraphs 224-252, which meet the weight ratio requirements of the instant invention. Although Meyers et al is silent with respect to the pH value of their personal cleansing compositions, the examiner asserts that the personal cleansing compositions disclosed in Meyers et al would inherently meet the pH requirements of the instant invention, since the personal cleansing compositions disclosed in Meyers et al contain all of the required components in the amounts required in the instant claims to achieve the required pH values, absent a showing otherwise. Furthermore, the examiner asserts that products of identical chemical composition cannot have mutually exclusive properties.
Although Meyers et al generally discloses a personal cleansing composition containing 1.75-2.75% by weight of a fatty acyl isethionate, 1.75-3.0% by weight of a fatty acyl sarcosinate, and 7.75-9.75% by weight of a betaine, the reference does not require such personal cleansing compositions containing these components with sufficient specificity to constitute anticipation.
It would have been obvious to a person of ordinary skill in the art at the time of the invention to have formulated a personal cleansing composition, as taught by Meyers et al, which contained 1.75-2.75% by weight of a fatty acyl isethionate, 1.75-3.0% by weight of a fatty acyl sarcosinate, and 7.75-9.75% by weight of a betaine, because such personal cleansing compositions fall within the scope of those taught by Meyers et al. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success, because such a personal cleansing composition containing 1.75-2.75% by weight of a fatty acyl isethionate, 1.75-3.0% by weight of a fatty acyl sarcosinate, and 7.75-9.75% by weight of a betaine is expressly suggested by the Meyers et al disclosure and therefore is an obvious formulation.
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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/782,827 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/782,827 claims a similar personal cleansing composition comprising 1.75-15% by weight of a fatty acyl isethionate, such as sodium cocoyl isethionate, 1.75-10% by weight of a fatty acyl sarcosinate, such as sodium lauroyl sarcosinate, 3-20% by weight of a betaine, such as coco betaine, adjunct ingredients, such as sodium chloride, fragrances, and a salt of salicylate and benzoate, wherein the composition has a pH of 5.5-7, is free of alkyl sulfate and alkyl ether sulfate surfactants, and is made by combining the components (see claims 1-19 of copending Application No. 18/782,827), as required in the instant claims. Therefore, instant claims 1-17 are an obvious formulation in view of claims 1-19 of copending Application No. 18/782,827.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10 and 15-20 of copending Application No. 18/299,864 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/299,864 claims a similar personal cleansing composition comprising 0.1-5% by weight of a fatty acyl isethionate, such as sodium lauroyl isethionate, 0.05-5% by weight of a fatty alkanolamide, 0.01-2% by weight of a hydrophobically modified ethoxylated methyl glucoside, 0.01-1% by weight of a preservative, 0.1-10% by weight of a fatty acyl sarcosinate, such as sodium lauroyl sarcosinate, 0.05-5% by weight of an electrolyte, such as sodium chloride, 0.01-2% by weight of a fragrance, and 0.5-40% by weight of a co-surfactant, such as an alkyl betaine, wherein the composition has a pH of 5.5-7, is free of alkyl sulfate and alkyl ether sulfate surfactants, and is made by combining the components (see claims 1-7, 10 and 15-20 of copending Application No. 18/299,864), as required in the instant claims. Therefore, instant claims 1-15 and 17 are an obvious formulation in view of claims 1-7, 10 and 15-20 of copending Application No. 18/299,864.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
May 5, 2026
Prosecution Insights