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 .
Applicants' arguments, filed January 2, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims
Claim Rejections - 35 USC § 103 – Obviousness (Maintained Rejections)
1) Claims 1, 3, 5, 7, 9-11, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Myers et al. (WO 2022140280).
Myers et al. disclose oral care composition comprising stannous fluoride and/or stannous chloride, a potassium salt and a polyphosphate source (Abstract). The stannous ion source includes stannous fluoride and stannous chloride. Nitric acid or as water soluble nitrate salt includes potassium nitrate (paragraph 0015). The compositions comprise surfactants and include nonionic, amphoteric and anionic surfactants. Anionic surfactants include sodium methyl cocoyl taurate. Amphoteric surfactants include cocoamidopropyl betaine. Surfactants or mixtures of compatible surfactants comprise 0.3 to 3% by weight of the composition (paragraph 0016). The compositions may be formulated into toothpaste and have a pH of about 5 to about 9 (paragraph 0019). Anticalculus agents include zinc salts (paragraph 0022). Amino acids may be added an include arginine.
Myers et al. differ from the instant claims insofar as they do not disclose a combination of surfactants comprising a non-sulfate based anionic surfactant and an amphoteric surfactant.
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP 2144.06, I. The compositions may comprise mixtures of surfactants. It would have been obvious to one of ordinary skill in the art prior to filing the instant application to have added a combination of sodium methyl cocoyl taurate and cocoamidopropyl betaine as the surfactant of Myers et al. because they are taught for the same purpose and a mixture is suggested by Myers et al.
The ratios include 1:1 ratios. It would have been obvious to have used the surfactants in 1:1 ratios because they are taught as equivalents.
Response to Arguments
The Examiner submits that Myers et al. disclose that different surfactants may be used. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. See MPEP 2123, II. Although sodium lauryl sulfate or sodium lauryl ether sulfate are taught as preferred anionic surfactants, this would not deter one of ordinary skill in the art from using other surfactants that are taught by the art for the same function. Therefore, the compositions do not require sodium lauryl sulfate or sodium lauryl ether sulfate because they teach alternative surfactants. In regards to Myers disclosing the anionic surfactant is sodium lauryl sulfate or sodium lauryl ether sulfate, Myers discloses “in particular embodiments, the anionic surfactant is selected from sodium lauryl sulfate or sodium lauryl ether sulfate”. Therefore, sodium lauryl sulfate or sodium lauryl ether sulfate is not required for all embodiments and other surfactants may be used. In regards to the betaine in a large group, Myers specifically names cocoamidopropyl betaine. Therefore, one would be guided to choose cocoamidopropyl betaine because it is specifically named. In regards to teaching or suggesting combining a taurate surfactant with a betaine surfactant, Myers makes it clear that mixtures of compatible surfactant may be used in the compositions (paragraph 0016). Therefore it would have been obvious to have mixed surfactants such as taurates and betaines together. In regards to the ratio, different surfactants have different foaming properties. Further, the reference is not required to exemplify every embodiment. Myers suggests mixtures of surfactants. This would lead one of ordinary skill in the art to use surfactant mixtures. Some surfactants foam more than others. When using mixtures, it would have taken no more than the relative skill of one of ordinary skill in the art to have adjusted each surfactant to arrive at the desired foaming. Even if this was not the case, it would have been obvious to have used the surfactant in equal amounts because they are taught to be suitable for use singly and in mixtures. In regards to the alleged unexpected results, it is not clear if the combination of sodium methyl cocoyl taurate and cocoamidopropyl betaine actually produce unexpected results because the surfactant systems appear to be used in different amounts in each example. The example with a lower amount produces less foam and the example with a higher amount produces the most foam. In regards to Ex. B comprising lauryl glucoside and sodium cocoyl glutamate, it does appear that the combination produces more than an additive effect. However, the claims are not commensurate in scope with this result. The claims recite two different surfactant systems. In regards to the glucoside/amino acid combination of the instant claims, the combination encompasses different glucoside surfactants and amino acid surfactants. The results are to a specific combination of a specific glucoside surfactant and a specific amino acid surfactant. Therefore the claims are not commensurate in scope.
2) Claims 1, 3, 5, 7, 9-11, 14-15 and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Miguelino et al. (WO 2022125783).
Miguelino et al. disclose oral care composition. The composition uses different surfactants and surfactants in mixtures. Anionic surfactants include sodium methyl cocoyl taurate. Suitable amphoteric surfactants include cocoamidopropyl betaine, C10-C16 alkyl glucosides and sodium cocoyl glutamate. Toothpaste E comprises only anionic surfactants in an amount of 2%. Toothpaste F comprises an anionic surfactant including sodium cocoyl glutamate, sodium lauryl glucoside and sodium methyl cocoyl taurate; and an amphoteric surfactant including cocoamidopropyl betaine. The anionic surfactants may be used in mixtures. The amount of surfactant used ranges from 0.10% to about 10% by weight. The oral care composition may comprise a desensitizing agent including potassium nitrate. Fluoride compounds include stannous fluoride. Tartar control agents may be used and includes inorganic phosphate salts (paragraph 00184).
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP 2144.06, I. It would have been obvious to one of ordinary skill in the art prior to filing the instant application to have used a mixture of a betaine surfactant and a taurate surfactant; or a mixture of a glutamate surfactant and a glucoside surfactant because they are taught for the same purpose and a mixture is suggested by Miguelino et al.
The ratios include 1:1 ratios. It would have been obvious to have used the surfactants in 1:1 ratios because they are taught as equivalents.
Response to Arguments
The Examiner submits that in regards to the ratio of sodium methyl cocoyl taurate and cocoamidopropyl betaine disclosed by Miguelino et al., the ratio includes 1:1, which is recited by the instant claims. In regards to the alleged unexpected results, it is not clear if the combination of sodium methyl cocoyl taurate and cocoamidopropyl betaine actually produce unexpected results because the surfactant systems appear to be used in different amounts in each example. The example with a lower amount produces less foam and the example with a higher amount produces the most foam. Further, Miguelino teaches sodium methyl cocoyl taurate and cocoamidopropyl betaine in a 1:1 ratio. In regards to the glucoside/ combination as represented in Ex. B comprising lauryl glucoside and sodium cocoyl glutamate, it does appear that the combination produces more than an additive effect. However, the claims are not commensurate in scope with this result. The claims recite two different surfactant systems. In regards to the glucoside/amino acid combination of the instant claims, the combination encompasses different glucoside surfactants and amino acid surfactants. The results are to a specific combination of a specific glucoside surfactant and a specific amino acid surfactant. Therefore the claims are not commensurate in scope.
3) Claims 1, 3, 5, 7, 9-11, 14-15 and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Myers et al. (WO 2022140280) in view of Miguelino et al. (WO 2022125783).
Myers et al. are discussed above and differ from the instant claims insofar as they do not disclose an amino acid surfactant or a glucoside surfactant.
Miguelino et al. disclose oral care compositions comprising combinations of surfactants. Surfactants include sodium cocoyl glutamate, sodium lauryl glucoside, sodium methyl cocoyl taurate; and cocoamidopropyl betaine.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. It would have been obvious to one of ordinary skill in the art prior to filing the instant application to have used sodium cocoyl glutamate and sodium lauryl glucoside as the surfactants of Myers et al. because they are suitable for use in oral care compositions.
Response to Arguments
The Examiner submits that Myers and Miguelino are discussed above. Miguelino discloses the surfactant may be interchanged and also discloses suitable surfactants for oral care composition. Therefore it would have been obvious to use mixtures of surfactants in 1:1 ratios. See response above in regards to the alleged unexpected results.
Obvious-Type Double Patenting (Maintained Rejections)
1) Claims 1, 3, 5, 7, 9-11, 14-15 and 18-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-11, 13-16, 19-20, 22 and 24-26 of copending Application No. 18/517,201 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as both sets of claims recite an oral care composition comprising a stannous salt, potassium salt, a phosphate salt and a taurate surfactant. The instant claims differ from the copending claims insofar as they do not recited the specific stannous, nitrate and phosphate salts, making them genus claims to the copending claims. Therefore the instant claims are obvious over the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The Examiner submits that this rejection is maintained since applicant does not argue the merits of the rejection; and neither allowable subject matter has been indicated, nor has a terminal disclaimer been filed.
2) Claims 1, 3, 5, 7, 9-11, 14-15 and 18-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 40-60 of copending Application No. 18/516,422 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as both sets of claims recite an oral care composition comprising a stannous salt, potassium salt, a phosphate salt and a combination of surfactants including a betaine surfactant, a glutamate surfactant, a glucoside surfactant and a taurate surfactant. The instant claims differ from the copending claims insofar as they do not recite the surfactants are combined together in one composition, making them genus claims to the copending claims. Therefore the instant claims are obvious over the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The Examiner submits that this rejection is maintained since applicant does not argue the merits of the rejection; and neither allowable subject matter has been indicated, nor has a terminal disclaimer been filed.
Conclusion
Claims 1, 3, 5, 7, 9-11, 14-15 and 18-24 are rejected.
No claims allowed.
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 LEZAH ROBERTS whose telephone number is (571)272-1071. The examiner can normally be reached Monday-Friday 11:00-7:30.
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/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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