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 .
Formal Matters
Claims 1-19 are pending.
Election/Restriction
Applicant's election with traverse of Group I, claims 1-6, 9-11, 13-17, and 19, in the reply filed on 11/24/2025 is acknowledged.
Applicant also elected the following in the reply filed on 11/24/2025:
Di-rhamnolipids as the species of the at least one biosurfactant;
2-hydroxy sulfonate acetate (where n=2, R1=1, and R2=COOH) as the species of the at least one sulfonic or sulfinic acid derivative of formula (I) or any salt thereof; and
Anionic surfactant as the species of the at least one further surfactant.
During a telephone conversation with Richard Chinn on 1/29/26, Applicant’s election of the at least one sulfonic or sulfinic acid derivative of formula (I) or any salt thereof was clarified as 2-hydroxy sulfonate acetate (where n=2, R1=H, and R2=COOH).
The traversal of the restriction requirement is on the grounds that the restriction requirement does not identify where the cited art discloses the specific formula (I) compounds or the biosurfactant species recited in the claims, and therefore, because the Examiner has not cited any disclosure showing that the special technical feature fails to contribute over the cited art, the Examiner has not met the burden of proof required under MPEP 1893.03(d). The traversal of the election of species requirement is on the grounds that the Examiner did not map the cited references to the various species recited in the claims, and therefore, the Examiner has not met the burden required under MPEP 1893.03(d).
This is not found persuasive because, firstly, the Examiner disagrees that the requirement does map the cited art to the shared technical feature of the instant claims, i.e., the combination of at least one biosurfactant and at least one sulfonic or sulfinic acid derivative of formula (I) as recited in instant claim 1 or any salt thereof (See Page 4 of the Restriction/Election requirement dated 09/23/2025). Secondly, lack of unity of invention may be directly evident “a priori”, or before considering any prior art when no special technical feature is common to each of the independent claims, or alternatively, lack of unity of invention may only become evident “a posteriori”, or after considering the claims in relation to the prior art. By a posteriori analysis, the claimed invention still lacks unity of invention because the special technical feature lacks inventive step in the art as demonstrated by the teachings of Schelges et al (US 2017/0071842 A1, published 03/16/2017) in view of Berghofer et al (WO 2018/108925 A1, published 06/21/2018, cited in IDS dated 11/03/2023) discussed in the instant Office action below (See rejection under 35 USC 103 below).
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-8, 12, and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim 4 and 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (i.e., the election of the at least one sulfonic or sulfinic acid derivative of formula (I) or any salt thereof is not a salt and R2 does not contain ‘m’), there being no allowable generic or linking claim.
Claims 1-3, 5-6, 9-11, 15-17, and 19 are under consideration in the instant Office action to the extent of the elected species, i.e., the at least one biosurfactant is di-rhamnolipids, the at least one sulfonic or sulfinic acid derivative of formula (I) or any salt thereof is 2-hydroxy sulfonate acetate (where n=2, R1=H, and R2=COOH), and the at least one further surfactant is an anionic surfactant.
Priority
This application is a 371 of PCT/EP2022/061335 filed 04/28/2022, claiming priority to EPO 21172184.0 filed 05/05/2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) filed 11/03/2023 and 11/21/2023 have been considered by the Examiner. A signed copy of each IDS is included with the present Office Action.
Drawings
The drawings are objected to because the resolution of the Figure renders it illegible and should be replaced with a higher resolution version.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because it is too short and, thus, does not properly convey to the reader the subject matter of the invention. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length. See MPEP § 608.01(b).
A corrected abstract of the disclosure is required.
The disclosure is objected to because of the following:
In line 35 of Page 1 of the specification, “2-xydroxy-2-sulfonatoacetate” appears to be a typographical error of “2-hydroxy-2-sulfonatoacetate”;
In line 7 of Page 3 of the specification, “has” should be amended to “have”;
In each of lines 9, 11, 14, 16, and 18 of Page 3 of the specification, “is that” should be amended to “of”;
In line 35 of Page 3 of the specification, “per cent” should be amended to “percent”;
In line 6 of Page 17 of the specification, “pH at” appears to be a typographical error of “pH of”; and
Throughout the Examples, beginning on Page 15 of the specification, tables contain entries where decimals are represented with commas instead of decimal points; the commas should be replaced with decimal points to be consistent with U.S. practice of decimals (e.g., “1,67” should be amended to “1.67”).
Appropriate correction is required. Applicant’s cooperation is requested in checking the rest of the disclosure for informality, grammatical, and American English translation errors and making changes accordingly.
Claim Objections
Claims 1, 5, 9-10, 15, and 17 are objected to because of the following:
In line 1 of claim 1, the comma after “A composition” is unnecessary and should be deleted;
In each of lines 3 and 7 of claim 5, the recitation of “in said composition” should be amended to “in the composition” in order to improve claim readability and consistency (See claim 15);
In line 1 of claim 9, the comma after “A formulation” is unnecessary and should be deleted;
In line 1 of claim 10, the comma after “Claim 9” is unnecessary and should be deleted (i.e., a comma before a ‘comprising’ clause is not required grammatically, whereas a comma before a ‘wherein’ clause is required); and
At the end of each of claims 15 and 17, “, wherein the percentages by weight refer to the total composition” in order to improve claim readability and consistency (See claim 5).
Appropriate correction is required.
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 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 2-3 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.
(a) Claim 2 recites the limitation "the biosurfactant" in line 2. There is insufficient antecedent basis for this limitation in the claim because neither claim 2 nor claim 1 earlier recite “a biosurfactant”, however claim 1 earlier recites “at least one biosurfactant”. Thus, it is unclear whether “the biosurfactant” in claim 2 refers to just one of the at least one biosurfactant of claim 1, at least one of the at least one biosurfactant of claim 1, all of the at least one biosurfactant of claim 1, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims. In the case that “the biosurfactant” in claim 2 refers to all of the at least one biosurfactant of claim 1, the Examiner suggests amending “the biosurfactant” in claim 2 to “the at least one biosurfactant” in order to overcome this rejection.
(b) Claim 3 is indefinite in the recitation of “wherein the composition comprises at least one sulfonic or sulfinic derivative of formula (I) selected from those with…” spanning lines 2-3 because it is unclear whether the at least one sulfonic or sulfinic derivative of formula (I) of claim 3 is in addition to the at least one sulfonic or sulfinic acid derivative of formula (I) of claim 1 or whether it is further defining the at least one sulfonic or sulfinic acid derivative of formula (I) of claim 1. In the case that claim 3 is further defining the at least one sulfonic or sulfinic acid derivative of formula (I) of claim 1, the Examiner suggests amending “wherein the composition comprises at least one sulfonic or sulfinic derivative of formula (I) selected from those with…” in claim 3 to “wherein the at least one sulfonic or sulfinic derivative of formula (I) is selected from those with…” in order to overcome this rejection.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-6, 9-11, 15-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Schelges et al (US 2017/0071842 A1, published 03/16/2017) in view of Berghofer et al (WO 2018/108925 A1, published 06/21/2018, cited in IDS dated 11/03/2023).
Schelges et al teach cosmetic cleansing agents, i.e., compositions, comprising one or more biosurfactants, one or more anionic surfactants, and water as a cosmetic carrier (See entire document, e.g., Abstract, [0016], [0078]). Suitable biosurfactants include rhamnolipids, wherein rhamnolipid may be a mixture of a mono- and di-rhamnolipid each derived from 3-hydroxydodecanoic acid and/or 3-hydroxyundecanoic acid (e.g., [0016], [0028]-[0033]). Schelges et al teach that all anionic surface-active substances suitable for use on the human body are suitable as anionic surfactants and teach a list of suitable anionic surfactants including mixtures of surface-active hydroxysulfonates (e.g., [0052]-[0053], [0064]).
The cosmetic cleansing composition preferably includes the one or more biosurfactants in an amount of approximately 0.5 to 50% by weight based on the total weight of the cosmetic cleansing composition (e.g., [0051]). The cosmetic cleansing composition preferably includes the one or more anionic surfactants in an amount of approximately 0.5 to 30% by weight based on the total weight of the cosmetic cleansing composition (e.g., [0072]).
The cosmetic cleansing composition may be formulated as a body cleansing agent, face cleansing agent, or agent for cosmetically treating acne (e.g., [0016], [0084]).
Schelges et al do not teach examples of suitable hydroxysulfonates, and therefore do not specifically teach 2-hydroxysulfonatoacetate (corresponding to formula (I) of the instant claims wherein n=2, R1=H, and R2=COOH, i.e., the elected species of the at least one sulfonic or sulfinic acid derivative of formula (I) or any salt thereof) as suitable.
This deficiency is made up for in the teaching of Berghofer et al.
Berghofer et al teach use of sulfonic acid salts bearing a hydroxyl group (i.e., hydroxysulfonates) including the following compound
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, wherein R1 is preferably H, and magnesium and zinc salts thereof, in compositions and teach a process of synthesizing these compounds (See entire document, e.g., Page 3 Lines 15-25, Page 4 Line 31-Page 5 Line 6, Page 5 Line 24). These compounds have color stabilization without odor problems and increased aqueous solubility (e.g., Page 3 Lines 10-13).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Schelges et al and Berghofer et al, to provide a cosmetic cleansing composition comprising one or more biosurfactants from approximately 0.5 to 50% by weight, one or more anionic surfactants from approximately 0.5 to 30% by weight and water, where percent by weight is based on the total weight of the composition, wherein the one or more biosurfactants comprise a mixture of a mono- and di-rhamnolipid each derived from 3-hydroxydodecanoic acid and/or 3-hydroxyundecanoic acid, wherein the one or more anionic surfactants comprise
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with R1=H, and wherein the composition is formulated as a body cleansing agent, face cleansing agent, or agent for cosmetically treating acne.
One of ordinary skill in the art would have been motivated to use
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with R1=H in the composition of Schelges et al and there would have been a reasonable expectation of success in doing so because the composition of Schelges et al is compatible with hydroxysulfonates but Schelges et al do not provide examples of suitable hydroxysulfonates, for which Berghofer et al teach the aforementioned compound, a hydroxysulfonate, as well as its synthesis, and teach properties that would be favorable in an aqueous cosmetic cleansing composition, i.e., color stabilization without odor problems and increased aqueous solubility.
The modified cosmetic cleansing composition and corresponding formulation comprising the composition of Schelges et al in view of Berghofer et al renders obvious the composition and formulation of instant claims 1-3, 5-6, 9-11, 15-17, and 19.
Regarding the required ranges of the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Regarding the requirement of instant claims 10 and 19 that the formulation comprising the composition comprises at least one further anionic surfactant (an anionic surfactant was elected as the species of the at least one further surfactant), the formulation of Schelges et al in view of Berghofer et al comprising the cosmetic cleansing composition comprising one or more anionic surfactants renders obvious this limitation. Further, the formulation of Schelges et al in view of Berghofer et al comprising the cosmetic cleansing composition, wherein the one or more biosurfactants are present from approximately 0.5 to 50% by weight and the one or more anionic surfactants are present from approximately 0.5 to 30% by weight based on the total weight of the composition renders obvious, i.e., either overlaps or can be obtained by routine experimentation and optimization, the range of total surfactant content relative to the formulation required by instant claim 11. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). Where 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)).
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619