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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 1, 2025 has been entered.
Status of Claims
Claims 1, 4-10 and 13-31 are pending. Claims 2-3 and 11-12 are canceled. Claim 1 is amended. Claims 4-7 and 16-30 are withdrawn as being drawn to a non-elected invention or species, there being no allowable generic or linking claim.
Claims 1, 8-10, 13-15 and 31 are examined in light of the elected species of tetrasodium glutamate diacetate (GLDA) and sodium carboxymethyl inulin.
Information Disclosure Statement
The IDS filed 10/1/2025 has been reviewed.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejections of claims 1, 8-11, 13-15 and 31 under 35 U.S.C. 103 as being unpatentable over EP3290020 (3/7/2018) “EP” as evidenced by Ault et al. US 5,804,172 (9/8/1998) are withdrawn.
In light of the amendments to the claims the rejections of claim 12 under 35 U.S.C. 103 as being unpatentable over EP3290020 (3/7/2018) “EP” as evidenced by Ault et al. US 5,804,172 (9/8/1998) as applied to claims 1, 3, 8-11, 13-15 and 31 and further in view of LaRosa et al. US 2021/0093539 (4/1/2021) is withdrawn.
Rejections Maintained/New Rejections
Claim Rejections - 35 USC § 112(b)
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 rejection of claims 1, 8-10, 13-15 and 31 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention is maintained.
Claim 1 recites the limitation “the metal comprising”. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “at least one metal. The phrase “at least one metal” encompasses multiple metals, so it is unclear whether just one, more than one, or all of the metals are being referred to in claim 1.
It is suggested that amending claim 1 to recite “the at least one metal” consistent with the earlier recitation in claim 1 would overcome this lack of clarity.
Claims 8-10, 13-15 and 31 are rejected for depending from claim 1.
Claims 14-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 14 is rejected under 35 U.S.C. 112(b) as being indefinite in reciting “(%w/w) in the third line. This phrase is vague and confusing in that it is unclear whether the units are required to be in w/w or whether w/w is merely recited as an example.
Claim 15 is rejected under 35 U.S.C. 112(b) as being indefinite in reciting “(%w/w)” in the sixth line. This phrase is vague and confusing in that it is unclear whether the units are required to be in w/w or whether w/w is merely recited as an example.
These phrases are not defined or explained in the specification and cannot be determined by reference to any other claims. As a result, one of ordinary skill in the art would not be reasonably apprised of whether these recited units are required or not and the claim is indefinite as a result.
For purposes of this office action in claims 14 and 15 “(%w/w)” will be interpreted to merely be an example.
Claim Rejections - 35 USC § 103
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 of this title, 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, 8-10, 13-15 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over EP3290020 (3/7/2018) “EP” in view of Coret et al. US 2005/0009717 (1/13/2005).
All citations refer to the English translation of EP3290020, of record 9/28/2024.
EP discloses cosmetic compositions for mild cleaning compositions which contain a glycolipid biosurfactant are used to clean hair. (See Abstract, page 2 and claim 10). EP teaches that its compositions have high dermatological compatibility and have good cleaning performance in hair washing. (See page 2). EP expressly teaches that it is intended for hair washing and body washing. (See page 2 and claim 11). EP teaches that its composition is used to wash and clean hair and is then rinsed off of the hair. (See Uses section on page 62)
EP teaches that the compositions may contain preferred chelating agents including GLDA, MGDA, phytic acid, sodium gluconate. (See chelating agents on pages 41-42). EP also teaches that chelating agents increase the stability of the preparations and also improve the cleaning power of the composition. EP teaches that GLDA, sodium carboxymethyl inulin, MGDA and phytic acid show very good biodegradability. (See chelating agents on pages 41-42). GLDA, phytic acid and MGDA are three of the components called for in claim 1a. Sodium carboxymethyl inulin is called for in claim 1b.
EP teaches sodium phytate, sodium gluconate and trisodium MGDA as called for in claim 31. (See chelating agents on pages 41-42). EP teaches mixtures of chelating agents. (See chelating agents on pages 41-42). The complexing agents are present in a total amount of 0.1 – 20 wt% based on the total weight of the preparation. (See chelating agents at bottom of page 42). 0.1-20 wt% overlaps with the from 2 to 15% called for in instant claim 14. 0.1-20 wt% also overlaps with the about 0.1% to about 3% called for in instant claim 15.
EP teaches that peptide antioxidants are suitable antioxidants for its compositions. (See Antioxidants section on pages 44-45). Antioxidants are called for in instant claim 8. Peptide antioxidants are called for in instant claim 9. (See Antioxidants section on pages 44-45). EP teaches surfactants which are called for instant claim 12. (See page 33). EP also teaches lactic acid as called for in instant claim 13. (See antioxidants section on pages 44-45). EP teaches carnosine. Carnosine is called for in claim 10. (See Antioxidants section on pages 44-45).
EP teaches that the composition for hair care can have a pH ranging from 5 to 11 which overlaps with the from about 7 to about 8 called for in instant claim 1. (See pH- adjusting agents on page 56).
EP teaches surfactants but does not teach polysorbate 20. These deficiencies are made up for with the teachings of Coret et al.
Coret et al. (Coret) teaches a cleansing cosmetic composition that can be used for make-up removal from skin and hair. (See Abstract). Coret teaches and exemplifies polysorbate 20 as a suitable surfactant for a hair and skin cleansing cosmetic composition. (See [0112] and Example 1). Polysorbate 20 is a surfactant that is called for in instant claim 12. Coret also teaches and exemplifies chelating agents as a suitable additional ingredient in its cleansing compositions. (See Example 1).
It would have been prima facie obvious for one of ordinary skill in the art as of the effective filing date making the EP composition to combine sodium carboxymethyl inulin and tetrasodium GLDA, trisodium MGDA, phytic acid and sodium gluconate with a surfactant at a pH of from 5 to 11 in a hair composition in light of EP’s teaching that these are particularly preferred chelants and components that result in improved stability and cleaning efficacy. It would have been prima facie obvious for one of ordinary skill in the art as of the effective filing date making the EP composition to use carnosine as a peptide antioxidant as taught by EP in light of EP’s teaching that carnosine is a suitable antioxidant for a hair cosmetic composition.
It would have been prima facie obvious for one of ordinary skill in the art as of the effective filing date making the EP composition of sodium carboxymethyl inulin and tetrasodium GLDA, trisodium MGDA, phytic acid and sodium gluconate at a pH of from 5 to 11 in a hair composition to use polysorbate 20 as a surfactant as taught by Coret in light of Coret’s teaching that polysorbate 20 is a suitable surfactant for a hair cleansing composition.
There is a reasonable expectation of success because both EP and Coret are both directed to hair cleansing compositions.
The prior art is silent with respect to the chelation of specific metals. However, EP in view of Coret teaches all of the claimed components in the same amounts (at the overlap of the ranges). EP teaches sodium carboxymethyl inulin and tetrasodium GLDA, trisodium MGDA, phytic acid, carnosine and sodium gluconate with a surfactant at a pH of from 5 to 11 in a hair composition and Coret teaches polysorbate 20 and it would be obvious to combine these components in light of EP’s teaching that these are particularly preferred chelants and components that result in improved stability and cleaning efficacy. EP in view of Coret teaches a composition which is used to wash and clean hair and is then rinsed from hair. The tetrasodium GLDA, trisodium MGDA, phytic acid, and sodium gluconate in the composition would necessarily chelate with and remove at least one metal from the hair if a metal were present in the hair. A composition having the same components as those claimed will necessarily have the same properties as those claimed. See MPEP 2112.01[R-3]: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With respect to claim 1’s language of “for removing a metal from hair” this is language of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Response to Arguments
Applicants remarks filed October 1, 2025 have been fully considered and are found to be partly persuasive in light of the amendments to the claims.
Applicants note the amendments to the claims and where support for these amendments can be found.
Applicants assert that claim 1 has been amended to recite the at least one metal to address the indefiniteness rejection. However, it should be noted that this amendment does not appear in the claim set that accompanied the October 1, 2025. Since claim 1 has not been amended, it is still unclear whether just one, more than one, or all of the metals are being referred to in claim 1 with the phrase “the metal”. Therefore, the rejection has been maintained since the indefiniteness issue remains in claim 1.
Applicants argue that a skilled artisan would have no reason to combine EP and Ault for the following reasons. The primary teachings of EP direct the skilled artisan towards binary combination of glycolipid biosurfactants with alkoxylated fatty acid amides (neither of which are present in the instant invention), EP teaches against EDTA and the claimed pH range is at odds with Ault, which teaches acidic compositions.
Applicants argue that LaRosa is not analogous art because it is not from the same field of endeavor as the claimed composition and because LaRosa is not reasonably pertinent to the particular problem with which the inventor is involved. because LaRosa is directed to a cosmetic composition for topical administration to treat or prevent at least one of wrinkles, dry skin, fine lines, blemishes, skin discoloration or dry skin, not the removal of metals from hair.
Applicants arguments have been reviewed and are not found to be persuasive. However, in light of the amendments to the claims the rejections have been withdrawn above.
Applicants’ argument that neither glycolipid biosurfactants nor alkoxylated fatty acid amides are present in the instant invention is not found to be persuasive because the presence of glycolipid biosurfactants and alkoxylated fatty acid amides is not excluded from the claimed invention. Indeed, the claim language is drafted with the open-ended transition phase of “comprising” so these components can be present in the prior art and the prior art still reads on the claims.
Applicants’ argument that EP teaches against EDTA is not found to be persuasive. EP does not teach against EDTA, quite the contrary. EP teaches that representatives of suitable chelating agents for its invention include calcium disodium EDTA, diammonium EDTA, HEDTA and EDTA itself. (See EP at pg 41) While preferred embodiments may contain no EDTA, this does not erase EP’s teaching that EDTA is a suitable chelating agent for its invention.
There is absolutely no discouragement or disparagement of EDTA in EP. Just because a preferred embodiment is taught in which no EDTA is present does not amount to a teaching against or a teaching away. A teaching away must be clear. See MPEP Sec. 2143.03 (VI). “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. MPEP 2123. Additionally, the prior art’s disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit or otherwise discourage the solution claimed. In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Applicants’ argument that EP’s teaching that the claimed pH range is at odds with Ault, which teaches acidic compositions, is also not found to be persuasive. This argument is furthermore moot, since Ault is no longer being relied upon. EP teaches EP teaches that its composition for hair care can have a pH ranging from 5 to 11 which overlaps with the from about 7 to about 8 called for in instant claim 1. (See pH- adjusting agents on page 56). Ault was merely cited as an evidentiary reference, so its acidic pH range is irrelevant. Ault was only cited as evidence for the proposition that a chelating agent is expected to chelate a metal.
The basis for the inherency is not the teachings of Ault but the teachings of EP in view of Coret in which each and every element of the claimed invention is taught and the amounts of the pH is the same (at the overlaps of the ranges). EP teaches that its composition for hair care can have a pH ranging from 5 to 11 which overlaps with the from about 7 to about 8 called for in instant claim 1. (See pH- adjusting agents on page 56).
However, EP in view of Coret teaches all of the claimed component in the same amounts (at the overlap of the ranges). EP teaches sodium carboxymethyl inulin and tetrasodium GLDA, trisodium MGDA, phytic acid, carnosine and sodium gluconate with a surfactant at a pH of from 5 to 11 in a hair composition and Coret teaches polysorbate 20 and it would be obvious to combine these components in light of EP’s teaching that these are particularly preferred chelants and components that result in improved stability and cleaning efficacy. EP in view of Coret teaches a composition which is used to wash and clean hair and is then rinsed from hair. Structurally identical chelating agents in the composition would necessarily chelate with and remove at least one metal from the hair if a metal were present in the hair. Applicant is reminded that “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Applicants argument that LaRosa is not analogous art is moot in view of the new rejections applied above. Coret et al. is a hair cleansing composition. As described in the rejection above, it would have been prima facie obvious for one of ordinary skill in the art as of the effective filing date making the EP composition of sodium carboxymethyl inulin and tetrasodium GLDA, trisodium MGDA, phytic acid and sodium gluconate at a pH of from 5 to 11 in a hair composition to use polysorbate 20 as a surfactant as taught by Coret in light of Coret’s teaching that polysorbate 20 is a suitable surfactant for a hair cleansing composition. There is a reasonable expectation of success because both EP and Coret are both directed to hair cleansing compositions.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619