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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on October 3, 2023, July 11, 2024, and December 18, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Status
Claims 18, 19, 22, and 23 are cancelled.
Claims 1 – 17, 20, 21, and 24 are examined here-in.
Claim Objections
Claims 7, 9 – 11, 13, 14, and 20 are objected to because of the following informalities:
Claim 7 recites “sulfanate” which is believed to be a misspelling of “sulfonate”.
Claim 9 recites “wherein the surfactant system is present in an amount of from about 6.8 wt% to less than 10 wt%”. The “of” should be deleted so the clause reads “wherein the surfactant system is present in an amount from about 6.8 wt% to less than 10 wt%”.
On line 9 of claim 10, “wherein the cocamidopropyl betaine is present in an amount of from about 0.5 wt% to about 2.0 wt%” should be corrected to “wherein the cocamidopropyl betaine is present in an amount from about 0.5 wt% to about 2.0 wt%”. The term “of” should be deleted.
On line 12 of claim 10, “wherein the lauryl hydroxysultaine is present in an amount of from about 0.2 wt% to about 1.0 wt%” should be corrected to “wherein the lauryl hydroxysultaine is present in an amount from about 0.2 wt% to about 1.0 wt%”. The term “of” should be deleted.
Claim 11 recites “wherein the personal care composition is substantially free one of one or more”. The first “one” should be deleted.
Claim 13 recites “wherein the thickener is present in an amount of from about 0.08 wt% to about 0.12 wt%”. The “of” should be deleted so the clause reads “wherein the thickener is present in an amount from about 0.08 wt% to about 0.12 wt%”.
Claim 14 recites “wherein the surfactant system and the thickener are present in an amount of from about 6.8 wt% to less than 10 wt%”. The “of” should be deleted so the clause reads “wherein the surfactant system and the thickener are present in an amount from about 6.8 wt% to less than 10 wt%”.
Claim 20 recites “comprising a pH of from about 4.0 to about 6.5”. The “of” should be deleted and “comprising” should be changed to “having” so the clause reads “having a pH from about 4.0 to about 6.5”.
Appropriate correction is required.
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.
Claims 4 – 7, 9, 10, 12 – 17, and 20 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.
Claims 4 – 7, 9, 10, 12 – 17, and 20 recite the terms “preferably,” “particularly preferably,” and/or “most preferably.” These terms are considered indefinite since the scope of the claim cannot be determined. See MPEP 2173.05(c) and 2173.05(d).
For at least claims 10, 15, and 20: 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). In the present instance, claim 10 recites the broad recitation “wherein the sodium laureth sulfate is present in an amount from about 4 wt% to less than 7.8 wt%”, and the claim also recites “about 4.5 wt% to about 6.5 wt%” which is the narrower statement of the range/limitation.
Claim 15 recites the broad recitation “wherein a weight ratio of the anionic surfactant to the thickener is from about 45:1 to about 70:1”, and the claim also recites “about 50:1 to about 65:1” which is the narrower statement of the range/limitation.
Claim 20 recites the broad recitation “comprising a pH from about 4.0 to about 6.5”, and the claim also recites “about 4.5 to 6.0” which is the narrower statement of the range/limitation.
The claims 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 – 6, 8, 9, 11, 12, 14, and 20 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Fan (US 7,259,131 B2).
Fan teaches a composition containing 2 to 7.5% cocamidopropyl betaine, 5 to 9% lauryl ethoxy sulfate, 2 to 6% disodium laureth sulfosuccinate, and 0 to 1% of a thickener (claim 1). Cocamidopropyl betaine, lauryl ethoxy sulfate, and disodium laureth sulfosuccinate are surfactants. Fan’s teachings for these surfactants in the amounts of 2 to 7.5%, 5 to 9%, and 2 to 6%, respectively results in a total surfactant amount of 9 to 22.5%. Therefore, Fan’s teaching for a surfactant system in the amount of 9 to 22.5% and a thickener in the amount of 0 to 1% anticipates the instantly claimed surfactant system and thickener in an amount less than 10 wt. % as recited in claims 1 and 14.
Fan’s teaching for zwitterionic surfactant cocamidopropyl betaine, and anionic surfactants lauryl ethoxy sulfate and disodium laureth sulfosuccinate (claim 1) anticipates instant claims 2 and 3.
Fan’s teaching for disodium laureth sulfosuccinate (claim 1) anticipates instant claim 4.
Fan’s teaching for cocamidopropyl betaine (claim 1) anticipates instant claims 5, 6, and 8.
As noted above, Fan’s teaching for a surfactant system in the amount of 9 to 22.5% anticipates the instantly claimed surfactant system in an amount from about 6.8 wt.% to less than 10 wt. % as recited in claim 9.
Fan does not require the inclusion of polyquaternium or cocomonoethanolamide (column 12 lines 9 – 29), anticipating instant claim 11.
Fan teaches PEG-150 pentaerythrityl tetrastearate is a preferred thickening agent (column 13 line 55), anticipating instant claim 12.
In each of Fan’s examples, the pH of the composition is 6.3 (Tables 1 – 3). A pH of 6.3 falls within the claimed range of 4.0 to 6.5, thereby anticipating instant claim 20. A specific example in the prior art which is within a claimed range anticipates the range according to MPEP 2131.03(i).
However, in the event that the previous does not have sufficient specificity to rise to anticipation, claims 1 – 6, 8, 9, 11, 12, 14, and 20 are also rejected under 35 U.S.C. 103 below.
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, 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 non-obviousness.
Claims 1 – 17, 20, 21, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Fan (as cited above).
For the purposes of this ground of rejection only, and purely arguendo, the examiner will take the position that Fan does not teach a specific embodiment (i.e., preferred embodiment, working example, etc.) having all of the claimed elements arranged as required by claims 1 – 6, 8, 9, 11, 12, 14, and 20 without resorting to some “picking and choosing” within the prior art disclosure. That being said, although Fan thus would not be anticipatory by this interpretation of the facts, it nevertheless does fairly suggest the claimed invention, as shown below.
Fan teaches a cosmetic composition that is mild to the hair and skin which contains a sulfosuccinate surfactant and an amphoteric surfactant (column 2 lines 31 – 50, column 3 lines 12 – 14). In claim 1, Fan teaches a composition containing 2 to 7.5% cocamidopropyl betaine, 5 to 9% lauryl ethoxy sulfate, 2 to 6% disodium laureth sulfosuccinate, and 0 to 1% of a thickener.
Fan teaches the amphoteric surfactant can be cocamidopropyl betaine (column 3 lines 63 – 64) or a hydroxysultaine (column 4 lines 1 – 2). Fan teaches laurylamidopropyl hydroxysultaine is a preferred hydroxysultaine (column 4 lines 22 – 24). Fan teaches amphoteric surfactants can be included in the range of 1 to 20% by weight of the composition (column 4 lines 59 – 63).
Fam teaches the composition includes a thickening agent to ensure that insoluble materials are stable (column 12 lines 32 – 34). Fan teaches PEG-150 pentaerythrityl tetrastearate as a preferred thickening agent (column 13 lines 49 – 59) and teaches that thickening agents can be included in the amount of about 0.1 to about 10 wt. % (column 14 lines 5 – 7).
For Example 1, Fan teaches mixing PEG-150 distearate (a thickener compound) with cocamidopropyl betaine to form a solution (column 17 lines 8 – 11). Fan teaches that additional surfactants are then mixed with the solution (column 17 lines 13 – 20).
Claims 1 – 17, 20, 21, and 24 are rendered prima facie obvious over the teachings of Fan, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., anionic surfactants, zwitterionic surfactants, thickeners) were known in the prior art (e.g., cosmetic compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP 2143(i)(a)).
Fan’s teaching for a composition containing 2 to 7.5% cocamidopropyl betaine, 5 to 9% lauryl ethoxy sulfate, 2 to 6% disodium laureth sulfosuccinate, and 0 to 1% of a thickener (claim 1) reads on instant claim 1.
Cocamidopropyl betaine, lauryl ethoxy sulfate, and disodium laureth sulfosuccinate are surfactants. Fan’s teachings for these surfactants in the amounts of 2 to 7.5%, 5 to 9%, and 2 to 6%, respectively results in a total surfactant amount of 9 to 22.5%. Therefore, Fan’s teaching for a surfactant system in the amount of 9 to 22.5% and a thickener in the amount of 0 to 1% overlaps on the instantly claimed surfactant system and thickener in an amount less than 10 wt. % as recited in claims 1 and 14. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i)(a).
Fan’s teaching for zwitterionic surfactant cocamidopropyl betaine, and anionic surfactants lauryl ethoxy sulfate and disodium laureth sulfosuccinate (claim 1, column 3 lines 63 – 64, column 4 lines 22 – 24) reads on instant claims 2 and 3.
Fan’s teaching for disodium laureth sulfosuccinate (claim 1, column 4 lines 22 – 24) reads on instant claim 4.
Fan’s teaching for cocamidopropyl betaine (claim 1, column 3 lines 63 – 64) anticipates instant claims 5, 6, and 8.
Fan’s teaching the amphoteric surfactant can be a hydroxysultaine, with laurylamidopropyl hydroxysultaine as an example (column 4 lines 1 – 2, lines 22 – 24) reads on instant claim 7.
As noted above, Fan’s teaching for a surfactant system in the amount of 9 to 22.5% anticipates the instantly claimed surfactant system in an amount from about 6.8 wt.% to less than 10 wt. % as recited in claim 9.
Fan’s example 4 includes sodium laureth sulfate in the amount of 5% and cocamidopropyl betaine in the amount of 2% (Table 4), overlapping on the instantly claimed amounts of 4 to 7.8 wt. % sodium laureth sulfate and 0.5 to 2.0 wt. % cocamidopropyl betaine as recited in instant claim 10. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i)(a).
Fan does not require the inclusion of polyquaternium or cocomonoethanolamide (column 12 lines 9 – 29), reading on instant claim 11.
Fan teaches PEG-150 pentaerythrityl tetrastearate is a preferred thickening agent (column 13 line 55), reading on instant claim 12.
Fan’s teaching for thickening agent in in the amount of about 0.1 to about 10 wt. % (column 14 lines 5 – 7) overlaps on the instantly claimed range of about 0.08 to about 0.12 wt. % as recited in claim 13.
Fan’s teaching for a composition containing 2 to 7.5% cocamidopropyl betaine, 5 to 9% lauryl ethoxy sulfate, 2 to 6% disodium laureth sulfosuccinate, and 0 to 1% of a thickener (claim 1); this is equal to anionic surfactants in the amount of 7 to 15% (5 to 9% and 2 to 6%) and thickener in the amount of 0 to 1%. For a composition with 15% anionic surfactants and 0.3% thickener, the weight ratio is 45:1, reading on instant claim 15.
Fan’s teaching for cocamidopropyl betaine in an amount of 2 to 7.5% and thickener in an amount of 0 to 1% (claim 1) encompasses the weight ratio of betaine to thickener of 9.5:1 to 16:1, as recited in claim 16. For example, cocamidopropyl betaine in the amount of 7.5% and thickener in the amount of 0.47% is a ratio of 16:1.
Fan’s teaching for hydroxysultaine as an amphoteric surfactant, where amphoteric surfactant is to be included in the amount of 1 to 20% (column 4 lines 1 – 2, lines 22 – 24, lines 59 – 63) in combination with Fan’s teaching for thickening agent in the amount of 0.1 to 10% (column 14 lines 5 – 7) reads on instant claim 17. For example, hydroxysultaine in the amount of 1.3% and thickener in the amount of 0.1% is a weight ratio of 13:1, as recited in claim 17.
In each of Fan’s examples, the pH of the composition is 6.3 (Tables 1 – 3). A pH of 6.3 falls within the claimed range of 4.0 to 6.5, thereby anticipating instant claim 20. A specific example in the prior art which is within a claimed range anticipates the range according to MPEP 2131.03(i).
With regards to the functional limitations recited for claim 21 “wherein the surfactant system and the thickener are present in a synergistic amount to provide comparable foam volume, reduced stringiness, increased structure, and increased fragrance release as compared to conventional personal care compositions…”: the foam volume, reduced stringiness, increased structure, and increased fragrance release are the result of including the claimed ingredients in the claimed amounts. As discussed above, Fan’s claim 1 discloses a surfactant system and thickener in the claim amount. Therefore, since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations (examples 1 and 4, composition 2 recites surfactant system and thickener, resulting in the claimed properties). According to MPEP 2112(III) and 2163.07(a), an inherent feature of a composition or method does not need to be explicitly recognized in the prior art for the prior art to be applied. Said differently, “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it” MPEP 2163.07(a).
Since the composition taught by Fan appears to overlap with the claimed composition, the skilled artisan would have expected that the composition of Fan would have had the properties of comparable foam volume, reduced stringiness, increased structure, and increased fragrance release (compared to conventional personal care compositions) as that which is instantly claimed. Something which is old (e.g., the composition of Fan) does not become patentable upon the discovery of a new property (e.g., comparable foam volume, reduced stringiness, increased structure, and increased fragrance release compared to conventional personal care compositions), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I) and 2112(II). Put another way, "When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F .2d 705, 709, (Fed. Cir. 1990). Therefore, since Fan’s prior art teachings recite a surfactant system and thickener in the claimed amount, the functional limitations of claim 21 are obvious.
Fan’s teaching to mix PEG-150 distearate (a thickener compound) with cocamidopropyl betaine (an amphoteric surfactant) to form a solution, then adding additional surfactants and mixing the solution (column 17 lines 8 -11, lines 13 – 20) reads on instant claim 24.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Double Patenting over U.S. Patent No. 11,147,757
Claims 1 – 17, 20, 21, and 24 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 18 of U.S. Patent No. 11,147,757 in view of Fan (as cited above).
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a personal care composition comprising a surfactant system and a thickener.
Conflicting claim 1 is drawn to a personal care composition consisting of a surfactant system containing at least one anionic surfactant and at least one zwitterionic surfactant, a preservative, a pH modifier, a rheology modifier, and water.
The instant and conflicting claims differ because conflicting claim 1 recites the inclusion of a preservative, a pH modifier, a rheology modifier, and water. A rheology modifier reads on the thickener of instant claim 1. The inclusion of a preservative, a pH modifier, and water read on the “comprising” language of the claim.
Fan teaches preservatives, pH modifiers, and water are standard optional ingredients for personal care compositions (column 14 lines 57 – 67, column 22 lines 1 – 11, pH modifiers and water in each example). Furthermore, preservatives, pH modifiers, and water are well-known to persons of skill in the art.
It would be prima facie obvious to the ordinarily skilled artisan to include, within instant claim 1, a preservative, a pH modifier, and water as taught by Fan. It is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
Conflicting claim 1’s requirement that the surfactant system includes an anionic and zwitterionic surfactant reads on instant claims 2 and 3.
Conflicting claim 4 requires the anionic surfactant is an alkyl ether sulfate, reading on instant claim 4.
Conflicting claims 5 and 6 require the zwitterionic surfactant is cocamidopropyl betaine, reading on instant claims 5 and 6.
Conflicting claims 7 – 18 overlap with instant claims 7 – 17, 20, 21, and 24 in a similar manner, including overlapping amounts and ratios of ingredients.
Double Patenting over U.S. Application No. 18/715,218
Claims 1 – 17, 20, 21, and 24 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2, 4, 5, 7, 8, 10 – 15, 17 – 24, and 26 – 36 of copending Application No. 18/715,218 in view of Malik (US 4,668,422).
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a personal care composition comprising a surfactant system and a thickener.
Conflicting claim 1 is drawn to a personal care composition comprising a polyol, a surfactant system that includes one or more alkyl glucosides, an amphoteric surfactant, an anionic surfactant, and a non-ionic surfactant, and water.
The instant and conflicting claims differ because conflicting claim 1 recites the inclusion of a polyol, on ore more alkyl glucosides, a non-ionic surfactant, and water. A polyol reads on the thickener of instant claim 1. Alkyl glucosides are non-ionic surfactants.
Malik teaches that the inclusion of a glycoside surfactant in a soap composition leads to a pleasing texture and consistency (abstract). Malik teaches alkyl glycosides are known non-ionic surfactants (column 1 lines 13 – 18). Malik also teaches the inclusion of an additional nonionic surfactant in the composition to boost foaming (column 5 lines 37 – 40).
It would be prima facie obvious to the ordinarily skilled artisan to include, within instant claim 1, an alkyl polyglucoside and non-ionic surfactant as taught by Malik. It is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
Conflicting claim 1’s requirement for an anionic surfactant and amphoteric surfactant reads on the anionic and zwitterionic surfactant of instant claims 2 and 3.
Conflicting claim 1’s recitation for a polyol reads on instant claim 12.
Conflicting claims 2 and 4 recite the inclusion of a sultaine, reading on instant claims 6, 7, and 10.
Conflicting claims 5, 7, 8, 10 – 15, 17 – 24, and 26 – 36 overlap with instant claims 4, 5, 8, 9, 11 – 17, 20, 21, and 24 in a similar manner, including overlapping amounts and ratios of ingredients.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612