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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04 December 2024 has been entered.
Claim Status
Applicant’s claim amendments and argument, filed 05 November 2024, are acknowledged.
Claims 6 & 15-23 are pending.
Claims 1-5 & 7-14 are cancelled.
Claims 15-23 are new.
Claim 6 is amended.
Claim 6 is withdrawn.
Claims 15-23 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 and constitute the complete set presently being applied to the instant application.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. The effective filing date is 08 April 2021 is based upon the English language disclosure of EP 21167441.
New Objections/Rejections
Claim Objections
Claims 15-22 are objected to because of the following informalities: Claims 15-22 recites “wt % by weight” for the units. The units should either be “wt %” or “% by weight” but not both.
Claim 17 also does not end in a period.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 16 v) recites “from 0.5 to 8 wt% by weight of the shampoo composition of a co-surfactant”. The types of surfactants are anionic, cationic, non-ionic, and amphoteric/zwitterionic. Page 6, ll. 30-33, of the as filed specification discloses “An example of a co-surfactant is a nonionic surfactant, which can be included in an amount ranging from 0.5 to 8 %...by weight…” Page 8, ll. 5-10 discloses “A preferred example of a co-surfactant is an amphoteric or zwitterionic surfactant, which can be included in an amount ranging from 0.5 to about 8% …by weight”. No support is present for the entire genera of co-surfactants (e.g. cationic surfactant) being present in an amount of 0.5 to 8 wt%. The claim changes the scope of the disclosure; thereby introducing new matter.
Claims 17-23 are rejected under 35 USC 112 (a) because they depend from rejected claim 16.
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.
Claim 16 is 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.
Claim 16 contains two periods. The first is after “ix) water” and the second is after “pH of from 3 to 5.” It is unclear where the claim ends and what limitations the claim comprises.
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 nonobviousness.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Cosmetic Technical Sheet (Published: 05/26/2017; previously cited) in view of Mueller (EP 1462086; Published: 2004-09-29; previously cited), Iman (IE 921085; Published 10/07/1992; previously cited) and Bender (DE102013226269; Published: 07/02/2015; previously cited).
All references refer to the English language translation.
With regard to claim 15 i)-iv), Cosmetic Technical Sheet teaches a shampoo having a pH of 5.0 ± 0.3 comprising sodium gluconate, citric acid, sodium laureth sulfate (i.e. sodium lauryl ether sulfate; anionic surfactant), and sodium benzoate (i.e. pH=4.7-5.3; pg. 1).
Cosmetic Technical Sheet does not teach the amount of sodium gluconate, citric acid, sodium laureth sulfate or sodium benzoate or that the pH is 4.5.
With regard to claim 15 i), in the same field of invention of which may be a shampoo, Mueller teaches inclusion of polyhydroxy-carboxylic acids of Formula (I) which may be sodium gluconate as a conditioning agent for keratin materials which may be hair (abstract; pg. 2, 3 & 5). Mueller teaches “[p]referably, the compound or compounds of formula (I)…represent from 0.001 to 10% by weight and, better still, from 0.001 to 5% by weight of the total weight of composition” (pg. 6). Mueller in Examples 1 & 3 teach the polyhydroxy-carboxylic acids of formula I to be present in an amount of 0.3 % (pg. 6 & 7).
With regard to claims 15 ii), in the same field of shampoos, Iman teaches citric acid is an optional ingredient which functions as a pH adjusting agent; optional components are included in an amount from “from about 0.01% to about 10% of the composition” (pg. 25, ll. 20-3). With regard to claim 11, the pH of the shampoos range from 2 to about 10, preferably from about 3 to about 9, more preferably from about 4 to about 8 (pg. 26, ll. 5-10). With regard to claims 15 ii), in the shampoo Examples I-V, Iman teaches inclusion of citric acid with sodium laureth-3 sulfate with citric acid being present in an amount of 0.25% of the composition (Examples 1 & 3; pg. 27). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). With regard to claim 15ii), 0.2% citric acid and about 0.25% citric acid are expected to have similar qualities of pH adjustment and a similar pH value. With regard to claims 15 iii), Iman in shampoo Examples I & III teaches sodium laureth-3 sulfate (sodium lauryl ether sulfate) being present in an amount of 8.6 and 10% (pg. 27).
With regard to claim 15 iv), in the same field of invention of shampoos, Bender in the Examples teaches shampoos comprising sodium laureth sulfate, citric acid, and 0.5% sodium benzoate (Examples-pg. 19). With regard to claim 15 iv), more broadly, Bender teaches sodium benzoate is a preservative.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Cosmetic Technical Sheet’s shampoo composition by adjusting the amount of sodium gluconate to be from 0.3 to 5% by weight of the composition, the amount of citric acid to be from about 0.01% to about 0.25% of the shampoo composition, the amount of sodium laureth sulfate to be 8.6-10.0 of the shampoo composition, the amount of sodium benzoate to be 0.5% of the composition and the pH of the shampoo composition to be from about 4 to about 4.7 as suggested by the combined teachings of Mueller, Iman and Bender because Cosmetic Technical Sheet, Mueller, Iman and Bender are all directed to shampoo compositions and it is obvious to modify similar compositions in a similar way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to alter the conditioning properties of the shampoo composition by adjusting the amount of the sodium gluconate, the pH of the composition by adjusting the amount of citric acid, the detergency of the compositions by adjusting the amount of sodium laureth sulfate/anionic surfactant and the preservative properties/shelf life by adjusting the amount of the sodium benzoate preservative.
With regard to the recited amounts of sodium gluconate, citric acid, anionic surfactant/sodium laureth sulfate and sodium benzoate and the recited pH range, the combined teachings of Cosmetic Technical Sheet, Mueller, Iman and Bender teach these parameters with values which fall within or overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, the combination Cosmetic Technical Sheet and Iman lead the ordinary skilled artisan to pH values close to the recited pH value of 4.5 with Iman teaching a preferred pH of 4.0 and Cosmetic Technical Sheet teaching a pH of 4.7 as suitable for hair shampoos. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 15-23 are rejected under 35 U.S.C. 103 as being unpatentable over Reed (US 2018/0369102; Published: 12/27/2018) in view of Feng (US 2022/0241179; Published: 08/04/2022; Provisional Filing Date: 01/29/2021).
With regard to claims 15, 16 & 16 viii) Reed teaches an exemplary embodiment of a personal care composition consisting essentially of a surfactant, system consisting essentially of an anionic surfactant and a zwitterionic surfactant; a preservative; a pH modifier; and a rheology modifier (i.e. viscosity modifier; [0010]-[0014]). With regard to claims 15 ii), 16 ii) & 19, Reed teaches the pH modifier may be citric acid and in Table 1 teaches 0.5% of a pH modifier ([0026]; Table 1-[0119]). With regard to claims 15 iii) & 16 iii), Reed teaches anionic surfactant may be sodium laureth ether sulfate, sodium lauryl sulfate and ammonium lauryl sulfate and in Table 1 teaches sodium laureth sulfate in an amount of 7.9% (i.e. sodium lauryl ether sulfate; [0103]; Table 1-[0119]). With regard to claims 15 iv), 16 iv), 21, & 22, Reed teaches inclusion of a preservative which may be sodium benzoate in an amount of 0.01 wt % to 2.5 wt % and in Table 1 teaches inclusion of 0.4% sodium benzoate ([0031] & [0108]; Table 1-[0119]) With regard to claim 16 v), Reed teaches the surfactant system is present in an amount of about 5 wt% to about 15 wt% of the composition and the ratio of about 1.2:1 to about 2.1:1 anionic surfactant to zwitterionic surfactant ([0020] & [0032]). As such, Reed teaches the amount of zwitterionic co-surfactant is 1.6-6.7% ([Math: 0.32* 0.05 = 1.6%; 0.45 * 0.15= 6.7%]; [0020] & [0032]). With regard to claim 16 ix), Reed in Table 1 teaches the composition comprises 72.5% water. More broadly, with regard to claim 16 ix), Reed teaches the composition further comprises water [0051]. With regard to claims 15, 16 & 23, Reed teaches the pH of the composition is about 4.2-4.8 [0052]. With regard to claim 16, Reed teaches the composition may be a shampoo [0033]. With regard to claim 16 i), Reed teaches inclusion of a chelating agent [0035].
Reed does not teach inclusion of sodium gluconate or the recited amount of citric acid.
With regard to claims 15 i), 16 i), 17 & 18, Feng teaches a shampoo comprising a chelating agent which may be sodium gluconate in an amount of about 1 to about 2 wt. % including ranges and subranges therebetween (abstract; [0216]; [0217]). With regard to claim 20, Feng teaches inclusion of pH adjusters which may be citric acid in an amount of about 0.12 to about 5 wt. %, including ranges and sub-ranges therebetween ([0212] & [0214]).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date of the invention to have modified Reed’s shampoo by adding about 1 to about 2 wt. % sodium gluconate and adjusting the amount of citric acid to be about 0.12 to about 5 wt. % as taught by Feng because Reed and Feng are both drawn to shampoos comprising chelating agents and citric acid and it is obvious to modify similar compositions in the same way. The ordinary skilled would have been motivated to add about 1 to about 2 wt. % sodium gluconate because Reed teaches inclusion of chelating agents and sodium gluconate is suitably used in shampoos in an amount of about 1 to about 2 wt. %. The ordinary skilled artisan would have been motivated to adjust the amount of citric acid to be about 0.12 to about 5 wt. % because Reed teaches inclusion of citric acid to adjust the pH and an amount of about 0.12 to about 5 wt. % citric acid is suitably used in shampoos to adjust the pH.
With regard to the recited amounts of sodium gluconate, citric acid, anionic surfactant/sodium laureth sulfate/sodium lauryl sulfate/ammonium lauryl sulphate, sodium benzoate and co-surfactant and the recited pH range, the combined teachings of Reed and Feng teach these parameters with values which fall within or overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
Applicant argues new claim 15 is not obvious over Cosmetic Technical Sheet, Mueller,
Iman, or Bender (reply, pg. 7).
This is not persuasive. Applicant has not compared their invention to the closest prior art which is the shampoo of Cosmetics Technical Datasheet. It is a shampoo commercially available from Gfl Skincare from Italy. The shampoo comprises sodium gluconate, citric acid, and sodium benzoate at a pH of 5.0 +/- 0.3. This is important because the shampoo comprises reagents which improve hair such as polyquaternium-7 and guar hydroxypropyltrimonium chloride and Applicant’s claim uses the transitional phrase “comprising” which permits additional reagents to be present in the composition. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential).
Applicant argues new claims 15-23 are commensurate in scope with the unexpected results provided in the specification (reply, pg. 7).
This is not persuasive. Only one inventive composition is present in the specification for comparison and it is composition 6 at Table 1 (pg. 16). Claim 15 recites a multitude of anionic surfactants and recites a range for the amount while only one anionic surfactant (i.e. sodium laureth sulfate) in one amount (12%) was examined. Claim 15 recites a range for the amount of sodium benzoate (0.1 to 1 wt%) while only one amount was present in composition 6 (i.e. 0.5 wt %). "[O]bjective 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).
Next, Applicant has not shown that the results are of a statistical and practical significance. The examiner notes that the data are variable and when one standard deviation from the mean is accounted for the temperatures of compositions 2-6 overlap. Applicant has not performed statistical tests to demonstrate that the thermal stability/mean denaturation temperature of compositions 1-5 are statistically different from that of composition 6. The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength “are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.”); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (see MPEP 716.02).
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 15-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10 & 11 of U.S. Patent No. 12,447,118 (Patented: 10/21/2025; hereinafter the ‘118) in view of Reed (US 2018/0369102; Published: 12/27/2018).
Although the claims are not identical, they are not patentably distinct from each other because the ‘118 patent recites a shampoo composition consisting of 0.05 to 2% by weight sodium gluconate, 0.1 to 5 wt% including 0.2 wt% to 0.5 wt% citric acid, anionic surfactant selected from “sodium oleyl succinate…and sodium N-lauryl sarcosinate”, a preservative, and water. The ‘118 recites the shampoo composition has a pH from 3 to 5.
The ‘118 does not recite the amount of anionic surfactant or that the preservative is sodium benzoate at its amount.
With regard to the amount of anionic surfactant, Reed teaches anionic surfactant may be sodium laureth ether sulfate, sodium lauryl sulfate and ammonium lauryl sulfate and in Table 1 teaches sodium laureth sulfate in an amount of 7.9% ([0103]; Table 1-[0119]). With regard to the preservative, Reed teachings inclusion of preservatives which are sodium benzoate in an amount of 0.01 wt % to 2.5 wt % and in Table 1 teaches inclusion of 0.4% sodium benzoate ([0031] & [0108]; Table 1-[0119]).
It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the composition recited by the ‘118 patent by adjusting the amount of anionic surfactant to be 7.9% and adding 0.01 wt% to 2.5 wt% sodium benzoate as taught by Reed because the ‘118 patent and Reed are drawn to shampoos and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use anionic surfactant in an amount suitable for shampoos and selecting a preservative suitable for shampoos and using it in an amount appropriate for shampoos.
With regard to the recited amounts of sodium gluconate, citric acid, anionic surfactant/sodium laureth sulfate/sodium lauryl sulfate/ammonium lauryl sulphate, and sodium benzoate and the recited pH range, the combined teachings of ‘118 and Reed teach these parameters with values which fall within or overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The pending claims are therefore an obvious variant of the conflicting, patented claims.
Response to Arguments
Applicant argues they will submit a terminal disclaimer once the claims are in condition for allowance (reply, pg. 7).
This is not persuasive. The double patenting rejection is maintained since no action has been taken by Applicant at this time.
Applicant requests rejoinder of claim 6 (reply, pg. 7).
Applicant’s request is acknowledge but it is premature since the claims are not in condition for allowance.
Conclusion
No claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619