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 .
In view of the amendment, previous 102(a)(1) and 103 rejections over Jeong et al (KR10-2009-0073621) (see Paragraphs 9, 13 and 14) are hereby withdrawn. Jeong (either alone, or in view of the cited secondary arts) does not teach or suggest instant combination of Disodium lauryl sulfosuccinate and sodium coco sulfate.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 23, 24, 26-32, 34 and 36--41 are rejected under 35 U.S.C. 103 as being unpatentable over Harper et al (US 2020/0140781 A1) in view of Bugdahn et al (WO 2022/122131 A1).
In claims 1 and 7, Harper teaches a solid cleansing product comprising at least a first surfactant and at least a second surfactant, wherein the first and second surfactants are present in a combined surfactant weight amount of about 36 wt.% of the solid cleansing product. Harper further teaches ([0013]) that the term “solid” means that it is not in liquid form and has less than 0.2 wt.% of water in the cleansing product. Harper also teaches ([0035]) that each of the first and second surfactants are milled to form a powder having a desired particle size (which means that the first and second surfactants are in solid form). Harper further teaches ([0018]) that preferably, its first surfactant is sodium cocoyl isethionate and second surfactant is sodium coco-sulfate. Harper’s first surfactant (sodium cocoyl isethionate) does not teach instant disodium lauryl sulfosuccinate. However, as evidenced by Bugdahn et al ([0194]-[0195]) Harper’s sodium cocoyl isethionate and instant disodium lauryl sulfosuccinate are both known in the art as commonly used surfactants for the preparation of solid surfactant compositions. Since they are both known as commonly used surfactants for the preparation of solid surfactant compositions, based on such teaching of equivalency or interchangeability, it would have been obvious to one skilled in the art to use disodium lauryl sulfosuccinate (instead of sodium cocoyl isethionate) as Harper’s first surfactant in its solid cleansing product with a reasonable expectation of success. Thus, Harper in view of Bugdahn renders obvious instant component (a) comprising disodium lauryl sulfosuccinate and sodium coco sulfate.
With respect to instant component (b) (one or more polysaccharides), Harper teaches ([0029]) that its solid cleansing product can further contain additional skin benefit ingredients, such as moisturizing agent. Among examples for the moisturizing agent, Harper teaches maltodextrin (instant one or more polysaccharides). It would have been obvious to one skilled in the art to further include maltodextrin in Harper’s soldi cleansing product discussed above with a reasonable expectation of imparting moisturizing property to its solid cleansing product. Thus, Harper teaches instant component (b).
Thus, Harper in view of Bugdahn renders obvious instant claims 23, 26, 30, 31 and 36.
With respect to instant clam 24, the Examiner established above that in view of the teachings of Harper and Bugdahn, it would be obvious to one skilled in the art to use a combination of sodium coco sulfate and disodium lauryl sulfosuccinate as the solid surfactants in Harper’s solid cleansing product with a reasonable expectation of success. Harper does not teach the additional solid surfactants listed in instant claim 24. Bugdahn teaches ([0194]-[0195]) the list of solid surfactants that are commonly and preferably used for the preparation of solid surfactant compositions, and Bugdahn teaches that mixtures of two or more of the listed surfactants can be used. Among the list of the surfactants, Bugdahn teaches sodium cocoyl glutamate as well as sodium methyl cocoyl taurate. Since Harper also teaches ([0018]) that desirably, more than one surfactant can be used in its cleansing product, it would be obvious to one skilled in the art to use additional surfactant(s) commonly known for preparing solid surfactant compositions, such as sodium cocoyl glutamate and/or sodium methyl cocoyl taurate in Harper’s cleansing product with a reasonable expectation of success. Thus, Harper in view of Bugdahn renders obvious instant claim 24.
With respect to instant claims 27-29, as already discussed above, it would have been obvious to one skilled in the art to use disodium lauryl sulfosuccinate (instead of sodium cocoyl isethionate) as Harper’s first surfactant and use sodium coco-sulfate as Harper’s second surfactant in its solid cleansing product with a reasonable expectation of success. Harper teaches ([0019]) that the weight ratio of the first surfactant to the second surfactant is preferably 1:1 (which falls within instant range from 1.5:1 to 1:2 of claim 29). As discussed above, Harper also teaches (claim 7) that a combined surfactant weight amount should be about 36 wt.% of the solid cleansing product. Assuming that there are only the first and second surfactants present in Harper’s solid cleaning product (with the weight ratio of the first surfactant to the second surfactant being 1:1), this gives about 18 wt.% for each of Harper’s first surfactant (which is to be disodium lauryl sulfosuccinate as discussed above) and second surfactant (sodium coco-sulfate). Thus, Harper in view of Bugdahn renders obvious instant claims 27-29.
With respect to instant claims 32 and 34, as already discussed above, Harper teaches that its solid cleansing product can further contain a moisturizing agent such as maltodextrin (instant one or more polysaccharides). Harper further teaches ([0029]) that additional skin benefit agents (such as a moisturizing agent) can be used in the amount of 1-10 wt.%. It would have been obvious to one skilled in the art to further include maltodextrin in the amount of 1-10 wt.% in Harper’s solid cleaning product discussed above with a reasonable expectation of providing moisturizing property to its solid cleansing product. The range 1-10 wt.% for the amount of maltodextrin (instant one or more polysaccharides) falls within instant range (0.1-10 wt.%) of claim 32 (and thus teaches instant range) and overlaps with instant range (0.1-7 wt.%) of claim 34, thus rendering instant range prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, Harper in view of Bugdahn renders obvious instant claims 32 and 34.
With respect to instant claim 37, Harper teaches (claim 17) that its solid cleansing product is in the form of a pressed tablet. Thus, Harper in view of Bugdahn renders obvious instant claim 37.
With respect to instant claims 38 and 39, Harper teaches ([0014] and [0032]) that its solid cleansing product may be packaged in a (water) dissolvable outer film. Thus, Harper in view of Bugdahn renders obvious instant claims 38 and 39.
With respect to instant claim 40, Harper teaches ([0035]-[0036]) that its milled powdered surfactants (in the amount of about 36 wt.% as taught in its claim 7) are added to a dry powder blender along with the binder, bulking agents, buffering agents, anti-caking agents and other optional components (such as moisturizing agent (maltodextrin)). These components are blended together to achieve sufficient mixing, and then a glidant is added. The entire composition is mixed again. Once fully mixed, the composition is ready for tableting. Thus, Harper teaches instant step (a). As to instant step (b), Harper teaches ([0039]) that when used by a consumer, the solid cleansing product is to be combined with water and manipulated by the consumer through rubbing the hands or skin to a point where foam is generated to a sufficient level. Thus, Harper teaches instant step (b). Thus, Harper in view of Bugdahn renders obvious instant claim 40.
With respect to instant claim 41, Harper teaches ([0078] and claim 14) mixing 0.25 g of its solid cleansing product with 250 mL (250 g) of water. Given such teaching as a starting point, instant range for the weight ratio of water to concentrate (98:2 – 93:7) would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233. Thus, Harper renders obvious instant claim 41.
Claim(s) 33 is rejected under 35 U.S.C. 103 as being unpatentable over Harper et al (US 2020/0140781 A1) in view of Bugdahn et al (WO 2022/122131 A1) as applied to claim 23 above, and further in view of Fukugaki et al (JP 2004-203801 A, its English translation and English translation of its claims).
Harper in view of Bugdahn does not teach instant limitation of claim 33. Fukugaki teaches (abstract, [0039] and claim 4) a cleanser composition excellent in foaming power and conditioning effect. Fukugaki teaches that such cleanser composition can be obtained by blending 0.1-3 wt.% of a cationized tara gum (instant Caesalpinia Spinosa Gum) and an anionic surfactant (or amphoteric surfactant). Since Harper in view of Bugdahn teaches the use of disodium lauryl sulfosuccinate and sodium coco sulfate (both of which are anionic surfactants), it would be obvious to one skilled in the art to further blend 0.1-3 wt.% of cationized tara gum with the anionic surfactants (disodium lauryl sulfosuccinate and sodium coco sulfate) with a reasonable expectation of achieving excellent foaming power and conditioning effect as taught by Fukugaki. Thus, Harper in view of Bugdahn, and further in view of Fukugaki renders obvious instant claim 33.
Claim(s) 42 is rejected under 35 U.S.C. 103 as being unpatentable over Harper et al (US 2020/0140781 A1) in view of Bugdahn et al (WO 2022/122131 A1) as applied to claim 41 above, and further in view of Yamamoto (JP2012-107147 and its English translation) and Aoyama et al (US 2019/0191936 A1).
Harper in view of Bugdahn does not teach instant squeeze foamer of claim 42. Harper teaches ([0002]) that its solid cleansing products are foamable in the presence of water, but Harper also teaches ([0003]) that solid cleansers do not often foam to a desired profile or volume, i.e.., they do not foam quickly enough, nor do they have the desired foam stability. Yamamoto teaches (see the 2nd paragraph under BACKGROUND-ART) that a foam-type cleansing agent is foamed when discharged from a foamer container, such as squeeze foamers or pump foamers. When the cleansing composition passes through a porous film inside the container at the time of discharge, the cleansing composition is mixed with air to become a foam. Aoyama teaches ([0030]) that a squeeze foamer makes a liquid foamy and discharges the foamy liquid by squeezing (actuating) the container body while a pump-foamer has a manual pump and makes a liquid foamy and discharges the foamy liquid by pushing down (actuating) the head of the foaming dispenser. It would have been obvious to one skilled in the art to contain Harper’s aqueous solution of its solid cleaning product in a squeeze foamer or a pump-foamer with a reasonable expectation of improving the foam quality and force. Thus, Harper in view of Bugdahn, and further in view of Yamamoto and Aoyama renders obvious instant claim 42.
Claim(s) 43 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Harper et al (US 2020/0140781 A1) in view of Bugdahn et al (WO 2022/122131 A1) and Fukugaki et al (JP 2004-203801 A, its English translation and English translation of its claims).
In claims 1 and 7, Harper teaches a solid cleansing product comprising at least a first surfactant and at least a second surfactant, wherein the first and second surfactants are present in a combined surfactant weight amount of about 36 wt.% of the solid cleansing product. Harper further teaches ([0013]) that the term “solid” means that it is not in liquid form and has less than 0.2 wt.% of water in the cleansing product. Harper also teaches ([0035]) that each of the first and second surfactants are milled to form a powder having a desired particle size (which means that the first and second surfactants are in solid form). Harper further teaches ([0018]) that preferably, its first surfactant is sodium cocoyl isethionate and second surfactant is sodium coco-sulfate. Harper’s first surfactant (sodium cocoyl isethionate) does not teach instant disodium lauryl sulfosuccinate. However, as evidenced by Bugdahn et al ([0194]-[0195]) Harper’s sodium cocoyl isethionate and instant disodium lauryl sulfosuccinate are both known in the art as commonly used surfactants for the preparation of solid surfactant compositions. Based on such teaching of equivalency or interchangeability, it would have been obvious to one skilled in the art to use disodium lauryl sulfosuccinate (instead of sodium cocoyl isethionate) as Harper’s first surfactant in its solid cleansing product with a reasonable expectation of success. Thus, Harper in view of Bugdahn renders obvious instant combination of disodium lauryl sulfosuccinate and sodium coco sulfate. As to instant amounts for the disodium lauryl sulfosuccinate and sodium coco sulfate, Harper teaches ([0019]) that the weight ratio of the first surfactant to the second surfactant is preferably 1:1, and discussed above, Harper also teaches (claim 7) that a combined surfactant weight amount should be about 36 wt.% of the solid cleansing product. Assuming that there are only the first and second surfactants present in Harper’s solid cleaning product (with the weight ratio of the first surfactant to the second surfactant being 1:1), this gives about 18 wt.% for each of Harper’s first surfactant (which is to be disodium lauryl sulfosuccinate as discussed above) and second surfactant (sodium coco-sulfate). Thus, Harper in view of Bugdahn renders obvious instant component (a).
With respect to instant component (b) (one or more polysaccharides), Harper teaches ([0029]) that its solid cleansing product can further contain additional skin benefit ingredients, such as moisturizing agent. Among examples for the moisturizing agent, Harper teaches maltodextrin. It would have been obvious to one skilled in the art to further include maltodextrin in Harper’s soldi cleansing product discussed above with a reasonable expectation of imparting moisturizing property to its solid cleansing product. As to instant Caesalpinia Spinosa Gum, Harper in view of Bugdahn does not teach the use of such material. Fukugaki teaches (abstract, [0039] and claim 4) a cleanser composition excellent in foaming power and conditioning effect, and Fukugaki teaches that such cleanser composition can be obtained by blending 0.1-3 wt.% of a cationized tara gum (instant Caesalpinia Spinosa Gum) and an anionic surfactant (or amphoteric surfactant). Since Harper in view of Bugdahn teaches the use of disodium lauryl sulfosuccinate and sodium coco sulfate (both of which are anionic surfactants), it would be obvious to one skilled in the art to further blend 0.1-3 wt.% (which teaches instant range 0.1-5 wt.% of claim 44) of cationized tara gum (instant Caesalpinia Spinosa Gum) with the anionic surfactants (disodium lauryl sulfosuccinate and sodium coco sulfate) with a reasonable expectation of achieving excellent foaming power and conditioning effect as taught by Fukugaki. Thus, Harper in view of Fukugaki renders obvious instant component (b) comprising both Caesalpinia Spinosa Gum and Maltodextrin.
Thus, Harper in view of Bugdahn and Fukugaki renders obvious instant claims 43 and 44.
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 23, 24, 26-34, 36-41, 43 and 44 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18, 20, 23-26, 30, 34, 35 and 37 of copending Application No. 18/567,427 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reason:
Claims 18 and 20 of App.’427 teach a cosmetic cleansing concentrate (in solid form) which comprises (a) one or more solid surfactants which comprises disodium lauryl sulfosuccinate and/or sodium coco sulfate and (b) Caesalpinia Spinosa Gum and/or Cellulose Gum (instant polysaccharide(s)) and comprises less than 7 wt.% liquid ingredients based on the total weight of the concentrate. It would be obvious to one skilled in the art to have both disodium lauryl sulfosuccinate and sodium coco sulfate as the component (a) and have Caesalpinia Spinosa Gum as the component (b) in the cosmetic cleaning concentrate of claim 18 of App.’427 with a reasonable expectation of success. Claims 23 and 24 of App.’427 teach that the concentrate comprises disodium lauryl sulfosuccinate and sodium coco sulfate in the amount of 8-30 wt.% and 12-34 wt.%, respectively, which means that the sum of these two surfactants would be 20-64 wt.%. This range overlaps with instant range at least 35 wt.% (as well as instant range (not more than 55 wt.%) of claim 26) for the amount of the two or more solid surfactants, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, claims 18, 20, 23 and 24 of App.’427 render obvious instant claims 23, 26-28, 30, 31 and 36 (less than 7 wt.% liquid ingredients contained in the cosmetic cleansing concentrate of claim 18 of App.’427 renders obvious instant less than 5 wt.% of water as recited in instant claim 36).
With respect to instant claim 24, claim 18 of App.’427 teaches that the one or more surfactants comprise one or more of sodium myristoyl glutamate, sodium lauroyl glutamate, sodium stearoyl glutamate, sodium cocoyl glutamate, sodium coco sulfate, disodium lauryl sulfosuccinate and sodium methyl cocoyl taurate. It would be obvious to one skilled in the art to use sodium myristoyl glutamate, sodium lauroyl glutamate, sodium stearoyl glutamate, sodium cocoyl glutamate or sodium methyl cocoyl taurate in addition to the combination of disodium lauryl sulfosuccinate and sodium coco sulfate with a reasonable expectation of success. Thus, claims 18, 20, 23 and 24 of App.’427 render obvious instant claim 24.
With respect to instant claim 29, claim 25 of App.’427 teaches that the concentrate comprises disodium lauryl sulfosuccinate and sodium coco sulfate at a weight ratio of from 1.5:1 to 1:2. Thus, claim 25 of App.’427 renders obvious instant claim 29.
With respect to instant claims 32 and 33, claim 26 of App.’427 teaches that the concentrate can comprises 0.1-30 wt.% (in total) of Caesalpinia Spinosa Gum and/or Cellulose gum (instant one or more polysaccharides). Such range overlaps with instant ranges of claim 32 (for the amount of the one or more polysaccharides) and 33 (for the amount of the Caesalpinia Spinosa Gum), thus rendering instant ranges prima facie obvious. In re Wertheim, supra. Thus, claim 26 of App.’427 renders obvious instant claims 32 and 33.
With respect to instant claim 34, claim 30 of App.’427 teach that the concentrate comprises 0.1-20 wt.% of maltodextrin. Thus, claim 30 of App.’427 render obvious instant claim 34.
With respect to instant claims 37-39, claims 34-35 of App.’427 teach instant claims 37-39. Thus, claims 34-35 of App.’427 render obvious instant claims 37-39.
With respect to instant claim 40, claim 37 of App.’427 (in combination with other claims of App.’427 discussed above) teaches instant method of claim 40. Thus, claim 37 (together with other claims discussed above) of App.’427 renders obvious instant claim 40.
With respect to instant claim 41, claim 37 of App.’427 teaches that after the cosmetic cleaning concentrate is prepared, such concentrate is dissolved in water to obtain the cosmetic cleansing composition. Although claim 37 of App.’427 does not explicitly teach instant range for the weight ratio of water to concentrate as claimed in instant claim 41, instant range would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Thus, claim 37 of App.’427 renders obvious instant claim 41.
With respect to instant claims 43 and 44, as already discussed above, claims 23 and 24 of App.’427 teach that the concentrate comprises disodium lauryl sulfosuccinate and sodium coco sulfate in the amount of 8-30 wt.% and 12-34 wt.%, respectively, which means that the sum of these two surfactants would be 20-64 wt.%. This range overlaps with instant range at least 35 wt.% for the total amount of the disodium lauryl sulfosuccinate and sodium coco sulfate, thus rendering instant range prima facie obvious. In re Wertheim, supra. Claim 26 of App.’427 teaches that the concentrate comprises 0.1-30 wt.% of Caesalpinia Spinosa Gum and/or Cellulose Gum. It would be obvious to one skilled in the art to use 0.1-30 wt.% of Caesalpinia Spinosa Gum in the concentrate with a reasonable expectation of success. The range 0.1-30 wt.% overlaps with instant range 0.1-5 wt.% for the amount of Caesalpinia Spinosa Gum, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, claims 23, 24 and 26 of App.’427 render obvious instant claims 43 and 44.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 23, 24, 26-29, 32 and 36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 14, 18-20, 26 and 28 of copending Application No. 18/566,724 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reason:
Claims 12, 19 and 20 of App.’724 teach a cosmetic cleansing product (in solid form) which comprises (a) binder and (b) 0.1-50 wt.% of solid surfactants, which are disodium lauryl sulfosuccinate and sodium coco sulfate and comprises less than 15 wt.% of liquid ingredients. Claim 14 of App.’724 teaches that the binder can be starch paste (instant polysaccharide). The range 0.1-50 wt.% for the amount of solid surfactant overlaps with instant range (at least 35 wt.%) of claim 23 and instant range (not more than 55 wt.%) of claim 26, thus rendering instant ranges prima facie obvious. In re Wertheim, supra. Also, the range less than 15 wt.% for the amount of liquid ingredients overlaps with instant range less than 7 wt.% of claim 23, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, claims 12, 14, 19 and 20 of App.’724 render obvious instant claims 23 and 26.
With respect to instant claim 24, claim 18 of App.’724 teaches that the concentrate comprises at least one surfactant selected from sodium myristoyl glutamate, sodium lauroyl glutamate, sodium stearoyl glutamate, sodium cocoyl glutamate, sodium coco sulfate, disodium lauryl sulfosuccinate or sodium methyl cocoyl taurate. It would be obvious to one skilled in the art to further include a surfactant such as sodium myristoyl glutamate, sodium lauroyl glutamate, sodium stearoyl glutamate, sodium cocoyl glutamate or sodium methyl cocoyl taurate (in addition to the disodium lauryl sulfosuccinate and sodium coco sulfate) with a reasonable expectation of success. Thus, claim 18 of App.’724 renders obvious instant claim 24.
With respect to instant claims 27-29, as discussed above, claims 12, 19 and 20 of App.’724 teach 0.1-50 wt.% of solid surfactants which are disodium lauryl sulfosuccinate and sodium coco sulfate. Assuming that disodium lauryl sulfosuccinate and sodium coco sulfate are present in the weight ratio of 1:1, this gives 0.05-25 wt.% for each of disodium lauryl sulfosuccinate and sodium coco sulfate. Such range overlaps with instant ranges of claims 27 and 28, thus rendering instant ranges prima facie obvious. In re Wertheim, supra. Alternatively, under the guidelines given by claims 12, 19 and 20 of App.’724 (i.e., using 0.1-50 wt.% of solid surfactants, which are disodium lauryl sulfosuccinate and sodium coco sulfate), instant amount of the disodium lauryl sulfosuccinate, instant amount of the sodium coco sulfate and instant weight ratio of disodium lauryl sulfosuccinate and sodium coco sulfate would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, claims 12, 19 and 20 of App.’724 render obvious instant claims 27-29.
With respect to instant claim 32, claim 20 of App.’724 teaches that the one or more solid surfactants are present in the amount of 0.1-50 wt.% based on the total weight of the cleansing product, and claim 28 of App.’724 teaches that the weight ratio of the binder (such as starch – instant polysaccharide) to cleansing concentrate comprising the one or more solid surfactants is from 99:1 to 1:1. Under such general guidelines given by the claims of App.’724, instant amount for the amount of the one or more polysaccharides (starch – binder of claim 14 of App.’724) would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, claims 20 and 28 of App.’724 render obvious instant claim 32.
With respect to instant claim 36, claim 26 of App.’724 teaches that the concentration of water is less than 5 wt.% based on the total weight of the concentrate. Thus, claim 26 of App.’724 renders obvious instant claim 36.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
With respect to instant 103 rejections over Harper in view of Bugdahn, applicant argue that while [0195] of Bugdahn lists a large number of surfactants which may be employed in the solid surfactant compositions disclosed therein, there is no reason for one skilled in the art to assume that all of these surfactants are interchangeable and that each of these surfactants, and each and every combination of these surfactants, is suitable for each and every solid surfactant composition disclosed in BUGDAHN, regardless of the remaining components of the composition. Applicant also point out that the list of preferred surfactants in [0195] of BUGDAHN also includes Sodium Coco Sulfate and argue that if all surfactants listed in [0195] of BUGDAHN were assumed to be equivalent and interchangeable, there would be no reason to employ a combination of any of these surfactants, and in particular, a combination of Sodium Coco Sulfate and Disodium Lauryl Sulfosuccinate or Sodium Cocoyl Isethionate, let alone in the compositions of HARPER. Applicant thus argue that it is only with the benefit of hindsight that one can conclude that in view of Bugdahn one of ordinary skill in the art would have chosen Disodium Lauryl Sulfosuccinate instead of Sodium Cocoyl Isethionate as the first surfactant in the compositions of HARPER. The Examiner disagrees. (i) Bugdahn teaches a list of compounds ([0194]-[0195]) that are known in the art as commonly and preferably used surfactants for the preparation of solid surfactant compositions (such as solid body wash, solid shampoos or bar soaps – see [0257]), and since all of those compounds listed in [0195] of Bugdahn are being taught (by Bugdahn) to be used for the same purpose (i.e., useful as surfactants for preparing solid surfactant composition), and since both Disodium Lauryl Sulfosuccinate and Sodium Cocoyl Isethionate are included in such list, those two compounds are being recognized as equivalent, both as surfactants that can be used for the preparation of solid surfactant compositions. See MPEP 2144.06 (II). Thus, based on such teaching of equivalency, it would be obvious to one skilled in the art to substitute Disodium Lauryl Sulfosuccinate for Sodium Cocoyl Isethionate in Harper’s solid cleansing product (which is a solid surfactant composition) with a reasonable expectation of success, especially in the absence of applicant’s showing of unexpected superior results of using instant combination of disodium lauryl sulfosuccinate and sodium coco sulfate (when compared to using the combination of sodium cocoyl isethionate and sodium coco sulfate as taught by Harper). (ii) As to applicant’s argument that if all surfactants listed in [0195] of BUGDAHN were assumed to be equivalent and interchangeable, there would be no reason to employ a combination of any of these surfactants, "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." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See MPEP 2144.06(I). Besides, in instant case, Harper clearly states ([0016] and [0018]) that desirably, its cleansing product includes at least two surfactants (i.e., two or more surfactants), and Bugdahn also teaches ([0195]) that the mixtures of two or more of the listed surfactants may be used. (iii) As to applicant’s argument of hindsight, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
For the reasons explained above, instant 103 rejections over Harper in view of Bugdahn still stand.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
May 20, 2026
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