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 .
Status of the Claims
Claims 20-37 are pending and under current examination.
Claim Objections
Claim 27 is objected to because of the following informalities:
Claim 27 recites “…wherein the composition comprises at least one surfactant…”. Surfactant is not required by the independent claims so it is suggested to amend claim 27 to read “…wherein the composition further comprises at least one surfactant…”.
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.
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 20-39 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.
Claim 20 recites the phrase “substantially anhydrous powder composition”. The specification provides no definition for the term “substantially”; it is therefore unclear how anhydrous a composition must be in order to be substantially anhydrous. The claim is therefore indefinite.
Claim 35 contains the phrase “a ration by weight of citric acid and sodium citrate”. It is unclear if the ration refers to the weight of citric acid and sodium citrate relative to the total weight of the composition or if the ration by weight refers to weight of citric acid relative to the weight of sodium citrate, therefore the claim is indefinite.
Regarding claims 21-34 and 36-39, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 20-23, 25, and 27-34 are rejected under 35 U.S.C. 103 as being unpatentable over Lourenco (WO 2020192865, publication date: 10/1/2020), in view of Independent Chemical (Is Sodium Benzoate Safe in Cosmetics?, available 7/17/2019).
Applicant’s Invention
Applicant’s claim 20 is drawn to a cosmetic composition, wherein the composition is a substantially anhydrous powder composition comprising (a) sodium coco sulfate and/or disodium lauryl sulfosuccinate,(b) sodium benzoate, and (c) hydroxyacetophenone.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 20, Lourenco teaches a cosmetic composition that may contain disodium lauryl sulfosuccinate ([0033] pg. 10 line 26), benzoic acid and its esters and salts [0097] as a preservative, and hydroxyacetophenone as an antioxidant ([0025 pg. 43 line 24). The formulations of the invention may be in the form of a powder ([00104], pg. 56 line 14) and may optionally contain water [0030]. The Examiner considers the teaching by Lourenco that the composition may optionally contain water to read on the “substantially anhydrous” limitation of the instant claim.
Regarding claim 21, Lourenco teaches that the percentage of surfactants such as disodium lauryl sulfosuccinate may be from 0.1 to 10% by weight, based on the preparation [0035].
Regarding claims 22, Lourenco teaches that the composition may contain from 0.1 to about 20 wt.% of additives [0030].
Regarding claim 23, Lourenco teaches that the percentage of surfactants may be from 0.1 to 10% by weight, based on the preparation [0035].
Regarding claim 25, Lourenco teaches that the composition may contain sodium methyl cocoyl taurate ([0033] pg. 17 line 38).
Regarding claim 27, Lourenco teaches that the composition may include sodium myristoyl glutamate ([0033] pg. 18 line 2).
Regarding claims 28 and 29, Lourenco teaches that the percentage of surfactants may be from 0.1 to 10% by weight, based on the preparation [0035].
Regarding claim 30, Lourenco teaches that the composition may contain from 0.1 to about 20wt.% of additives [0030].
Regarding claim 31, Lourenco teaches that the percentage of surfactants may be from 0.1 to 10% by weight, based on the preparation [0035] and that the composition may contain from 0.1 to about 20wt.% of additives [0030].
Regarding claim 32, Lourenco teaches that antioxidants such as hydroxyacetophenone may be present in the composition from 0.001 to 30% by weight [0026].
Regarding claim 33, Lourenco teaches that antioxidants such as hydroxyacetophenone may be present in the composition from 0.001 to 30% by weight [0026] and that the composition may contain from 0.1 to about 20wt.% of additives [0030].
Regarding claim 34, Lourenco teaches that citric acid may be present in the composition ([0025] pg. 43 line 12).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 20, Lourenco does not specifically teach the inclusion of sodium benzoate. However, this deficiency is cured by Independent Chemical.
Independent Chemical teaches that sodium benzoate is a salt of benzoic acid used in cosmetics and personal care products where it acts as a corrosion inhibitor, fragrance ingredient, and preservative (pg. 2, first paragraph).
Regarding claim 21, Lourenco does not teach a weight percentage of surfactant within the range of the instant claim.
Regarding claim 31, Lourenco does not teach a weight ratio of sodium benzoate to surfactants present in the composition.
Regarding claim 33, Lourenco does not teach a weight ratio of sodium benzoate to hydroxyacetophenone.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 20, it would have been prima facie obvious to one of ordinary skill in the art of filing to use sodium benzoate in the cosmetic composition embraced by Lourenco. One would have understood in view of Independent Chemical that sodium benzoate is a salt of benzoic acid used as a preservative in cosmetic and personal care products (pg. 2, first paragraph). It would have been obvious that sodium benzoate is suitable as the benzoic acid salt preservative embraced by Lourenco. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Lourenco broadly embraces benzoic acid salts as preservatives in the cosmetic composition. See MPEP 2144.07.
Regarding the weight percentage of sodium coco sulfate and/or disodium lauryl sulfosuccinate as specified in claim 21, MPEP 2144.05 states:
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).
Furthermore, Lourenco teaches that the amount of surfactant may be adjusted depending on the desired preparation of the composition [0035]. The Applicants' specification provides no evidence that the selected weight percentage in claim 21 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effects of a surfactant on a cosmetic composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of surfactant present in the composition. One of ordinary skill in the art would have been motivated to change the weight percentage of surfactant present as this could be expected to be advantageous for adjusting the surfactant properties of the composition.
Regarding the weight ratio of sodium benzoate to surfactants as specified in claim 31, MPEP 2144.05 states:
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).
Furthermore, Lourenco teaches that the amount of surfactant may be adjusted depending on the desired preparation of the composition [0035]. The Applicants' specification provides no evidence that the selected weight ratio in claim 31 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effects of a surfactant on a cosmetic composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight ratio of sodium benzoate to surfactants present in the composition. One of ordinary skill in the art would have been motivated to change the weight ratio as this could be expected to be advantageous for altering the surfactant properties of the desired preparation.
Regarding the weight ratio of sodium benzoate to hydroxyacetophenone as specified in claim 33, MPEP 2144.05 states:
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).
Furthermore, Lourenco, in view of Independent Chemical, teaches that sodium benzoate may act as a preservative [0097] and that hydroxyacetophenone may be present as an antioxidant ([0025 pg. 43 line 24). The Applicants' specification provides no evidence that the selected weight ratio in claim 33 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the preservative and antioxidant effects of sodium benzoate and hydroxyacetophenone, respectively, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight ratio of sodium benzoate to hydroxyacetophenone present in the composition. One of ordinary skill in the art would have been motivated to change the weight ratio as this could be expected to be advantageous for altering the antioxidant properties or the stability of the formulation.
Claims 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Lourenco (WO 2020192865, publication date: 10/1/2020), in view of Independent Chemical (Is Sodium Benzoate Safe in Cosmetics?, available 7/17/2019), as applied to claims 20-23, 25, and 27-34 above, and further in view of Humblebee and Me (Sodium Coco Sulfate, available 12/20/2020).
Applicant’s Invention
Lourenco, in view of Independent Chemical, renders obvious the relevant limitations of claims 20 and 25 above. Applicant’s claim 24 further adds the limitation of the composition of claim 20, wherein the composition comprises sodium coco sulfate and disodium lauryl sulfosuccinate in a weight ratio of from 1:0.2 to 1:2. Applicant’s claim 26 further adds the limitation of the composition of claim 25, wherein the composition comprises sodium coco sulfate and sodium methyl cocoyl taurate in a weight ratio of from 1:0.2 to 1:2.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 24, Lourenco teaches that the percentage of surfactants such as disodium lauryl sulfosuccinate may be from 0.1 to 10% by weight, based on the preparation [0035].
Regarding claim 26, Lourenco teaches that the percentage of surfactants such as disodium lauryl sulfosuccinate may be from 0.1 to 10% by weight, based on the preparation [0035] and that the composition may contain sodium methyl cocoyl taurate ( [0033] pg. 17 line 38).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 24 and 26, Lourenco does not teach the inclusion of sodium coco sulfate or a weight ratio of sodium coco sulfate to disodium lauryl sulfosuccinate or sodium methyl cocoyl taurate. However, this deficiency is cured by Humblebee and Me.
Humblebee and Me teaches that sodium coco sulfate is a solid anionic surfactant (pg. 1 What is it?) and is included in shampoo and other personal care formulations (pg. 3 Some Formulations and use Sodium Coco Sulfate).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding the sodium coco sulfate of claims 24 and 26, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional surfactants used in personal care formulations. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the weight ratio of sodium coco sulfate to disodium lauryl sulfosuccinate or sodium methyl cocoyl taurate as specified in claims 24 and 26, MPEP 2144.05 states:
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).
Furthermore, Lourenco teaches that the amount of surfactant may be adjusted depending on the desired preparation of the composition [0035]. The Applicants' specification provides no evidence that the selected weight ratio in claims 24 and 26 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effects of a surfactant on a cosmetic composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight ratio of surfactants present in the composition. One of ordinary skill in the art would have been motivated to change the weight ratio as this could be expected to be advantageous for altering the surfactant properties of the desired preparation.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Lourenco (WO 2020192865, publication date: 10/1/2020), in view of Independent Chemical (Is Sodium Benzoate Safe in Cosmetics?, available 7/17/2019), as applied to claims 20-23, 25, and 27-34 above, and further in view of INCIDecoder Sodium Citrate (available 9/21/2020), INCIDecoder Citric Acid (available 1/2/2020), and Dias et. al. (International Journal of Trichology, pg. 95-99, publication year: 2014).
Applicant’s Invention
Lourenco, in view of Independent Chemical, renders obvious the relevant limitations of claims 20 and 34 above. Applicant’s claim 35 further adds the limitation of the composition of claim 34, wherein a ration by weight of citric acid and sodium citrate is adjusted such that the composition has a pH of from 3.2to 5 when the composition is dissolved in water in a ratio of 1 part composition per 20 parts of water.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Lourenco teaches that citric acid may be present in the composition ([0025] pg. 43 line 12) and that the composition may be formulated as a shampoo [0028] and contain buffers [0029].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Lourenco does not teach the inclusion of sodium citrate in the composition or a specific pH of the composition after dilution in water. However, this deficiency is cured by INCIDecoder Sodium Citrate, INCIDecoder Citric Acid, and Dias.
INCIDecoder Sodium Citrate teaches that sodium citrate is a buffering agent used to adjust the pH of a cosmetic product (pg. 1 details). INCIDecoder Citric Acid teaches that citric acid is a chelating agent (pg. 1, All Functions). Dias teaches that a lower pH in shampoos can cause less frizzing for generating less negative static electricity on the fiber surface and that 75% of salon shampoos tested had a pH less than or equal to 5.0 (pg. 95, Abstract).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional buffering agents used in cosmetic formulations. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the pH of the composition when diluted in water, it would have been prima facie obvious to include citric acid and sodium citrate in a ratio by weight that renders a pH from 3.2 to 5 when the composition is diluted in water. One would have understood that the composition of Lourenco may be formulated as a shampoo and in view of Dias that a lower pH in shampoos can cause less frizzing for generating less negative static electricity on the fiber surface and that 75% of salon shampoos tested had a pH less than or equal to 5.0 (pg. 95, Abstract). It would have been obvious to adjust the weight of the buffering agents sodium citrate and citric acid in such a way that the diluted composition would render a shampoo with a pH of less than 5. One of ordinary skill in the art would have been motivated to ensure a pH of less than 5 in order to reduce frizzing of the hair. The artisan of ordinary skill would have had reasonable expectation of success because Lourenco teaches that the composition may contain buffering agents and because Dias teaches that most salon shampoos sampled have a pH of less than 5.
Claims 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Lourenco (WO 2020192865, publication date: 10/1/2020), in view of Independent Chemical (Is Sodium Benzoate Safe in Cosmetics?, available 7/17/2019), as applied to claims 20-23, 25, and 27-34 above, and further in view of Stern (U.S. Patent No. 11,045,397, issue date: 6/29/2021, filing date: 11/6/2019).
Applicant’s Invention
Lourenco, in view of Independent Chemical, renders obvious the relevant limitations of claim 20 above. Applicant’s claim 36 further adds the limitation of a cosmetic product, wherein the product comprises the composition of claim 20 and packaging which encloses the composition.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 36-38, Lourenco teaches the relevant limitations of claim 20 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 36-38, Lourenco does not teach packing that encloses the composition. However, this deficiency is cured by Stern.
Stern teaches a hygiene product pod comprising a water-soluble envelope and a hygiene product sealed in the envelope (col. 1 lines 48-50). The active agent encased in the pod may be in a powdered format (col. 5 line 17). The envelope may be formed of polyvinyl alcohol (col. 3 line 26). The hygiene product pods are configured for single-use applications (col. 1 line 7).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 36-38, it would have been prima facie obvious to one of ordinary skill in the art of filing to enclose the powder composition of Lourenco in a water-soluble envelope. One would have understood in view of Stern that a water-soluble envelope comprised of polyvinyl alcohol may be used to envelop a wide variety of hygiene products, including those in a powdered format (col. 5 line 17). It would have been obvious to encase the powder composition of Lourenco in such an envelope. One of ordinary skill in the art of filing would have been motivated to include the composition of Lourenco in the envelope embraced by Stern in order to provide single-use portions of the cosmetic composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Stern teaches that the active agent encased in the pod may be in a powdered format (col. 5 line 17).
Claims 36 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Lourenco (WO 2020192865, publication date: 10/1/2020), in view of Independent Chemical (Is Sodium Benzoate Safe in Cosmetics?, available 7/17/2019), as applied to claims 20-23, 25, and 27-34 above, and further in view of Peters (Fast Company, available 2/14/2020).
Applicant’s Invention
Lourenco, in view of Independent Chemical, renders obvious the relevant limitations of claim 20 above. Applicant’s claim 36 further adds the limitation of a cosmetic product, wherein the product comprises the composition of claim 20 and packaging which encloses the composition.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 36 and 39, Lourenco teaches the relevant limitations of claim 20 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 36 and 39, Lourenco does not teach packing that encloses the composition. However, this deficiency is cured by Peters.
Peters teaches a powder hand wash enclosed in a paper sachet that may be added to a bottle and diluted with water to form a liquid hand wash (pg. 8, first paragraph). The product is designed to shrink packaging waste (pg. 8, second paragraph).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 36 and 39, it would have been prima facie obvious to one of ordinary skill in the art of filing to enclose the powder composition of Lourenco in paper envelope. One would have understood in view of Peters that a paper envelope may be used to contain a powdered hand wash composition (pg. 8, first paragraph). It would have been obvious to encase the powder composition of Lourenco in such an envelope. One of ordinary skill in the art of filing would have been motivated to include the composition of Lourenco in the envelope embraced by Peters in order to reduce packaging waste. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Peters teaches that a powdered hand wash composition may be contained within a paper envelope (pg. 8, first paragraph).
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 20-34, 36, and 37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 23-42 of copending Application No. 18/559,736,
and claims 18-37 of copending Application No. 18/567,427
, in view of Lourenco (WO 2020192865, publication date: 10/1/2020).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘736 application and the claims of the ‘427 application embrace a cosmetic cleansing concentrate in solid form comprising at least 35% and not more than 55% by weight or 0.1 to 50% by weight, respectively, of one or more surfactants which are solid under standard conditions. The surfactants comprise one or more of sodium coco sulfate, disodium lauryl sulfosuccinate, sodium methyl cocoyl taurate, sodium myristoyl glutamate, sodium lauroyl glutamate, sodium stearoyl glutamate, and sodium cocoyl glutamate. The composition comprises from 8 to 30% by weight of disodium lauryl sulfosuccinate and weight ratio of disodium lauryl sulfosuccinate to sodium coco sulfate from 1.5:1 to 1:2. The composition also includes 12 to 34% by weight of sodium coco sulfate. The composition also contains sodium benzoate. The concentrate is present in tablet or powder form and contains less than 5% by weight of water. The instant specification defines “anhydrous composition” to mean a composition than comprises less than 9.9% by weight (pg. 3 line 30), therefore the Examiner considers the less than 5% by weight of water in the claims of the ‘736 application and the claims of the ‘427 application to read on the anhydrous limitation of instant claims. The claims of the ‘736 application and the claims of the ‘427 application also embrace a packaging enclosing the cosmetic composition comprising a water-soluble film.
The claims of the ‘736 application and the claims of the ‘427 application do not embrace hydroxyacetophenone, a weight percentage of sodium benzoate present in the composition, a weight ratio of sodium coco sulfate and sodium methyl cocoyl taurate, or a weight ratio of sodium benzoate to surfactants. However, this deficiency is cured by Lourenco. Lourenco teaches a cosmetic composition that may contain disodium lauryl sulfosuccinate ([0033] pg. 10 line 26), benzoic acid and its esters and salts [0097] as a preservative, and hydroxyacetophenone as an antioxidant ([0025 pg. 43 line 24). The formulations of the invention may be in the form of a powder ([00104], pg. 56 line 14) and may optionally contain water [0030]. The Examiner considers the teaching by Lourenco that the composition may optionally contain water to read on the “substantially anhydrous” limitation of the instant claim. Lourenco teaches that the composition may contain from 0.1 to about 20 wt.% of additives [0030], including benzoic acid and its salts [0097]. Lourenco also teaches that antioxidants such as hydroxyacetophenone may be present in the composition from 0.001 to 30% by weight [0026]. Lourenco also teaches that citric acid may be present in the composition as an antioxidant ([0025] pg. 43 line 12).
It would have been prima facie obvious to one of ordinary skill in the art of filing to include hydroxyacetophenone and citric acid in the composition embraced by the claims of the ‘736 application and the claims of the ‘427 application. One would have understood in view of Lourenco that hydroxyacetophenone and citric acid may be included in a powder composition as antioxidants. It would have been obvious to include the same antioxidant in the composition embraced by the claims of the ‘736 application and the claims of the ‘427 application. One of ordinary skill in the art of filing would have been motivated to include hydroxyacetophenone and citric acid in the composition embraced by the claims of the ‘736 application and the claims of the ‘427 application in order to impart antioxidant properties to the cosmetic composition. The artisan of ordinary skill would have had reasonable expectation of success because Lourenco teaches that a nearly identical composition may contain hydroxyacetophenone and citric acid.
The weight percentage of sodium benzoate present in the composition embraced by the claims of the ‘736 application and the claims of the ‘427 application is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weigh percentage in order to best achieve the desired results as such would provide preservative biological effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. 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, 105 USPQ 233 (CCPA 1955). In the instant case, Lourenco teaches that sodium benzoate acts as a preservative and may be present as an additive from 0.1 to about 20 wt.% in a nearly identical composition [0030]. The Examiner considers it prima facie obvious to optimize the weight percentage of sodium benzoate present in the composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of sodium benzoate present in the composition would have a direct effect on the storage stability of the formulation due to the preservative properties of sodium benzoate and therefore be an optimizable variable.
Regarding the weight ratio of sodium coco sulfate to disodium lauryl sulfosuccinate or sodium methyl cocoyl taurate as specified in the instant claim 26, MPEP 2144.05 states:
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).
Furthermore, Lourenco teaches that the amount of surfactant may be adjusted depending on the desired preparation of the composition [0035]. The Applicants' specification provides no evidence that the selected weight ratio in the instant claim 26 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effects of a surfactant on a cosmetic composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight ratio of surfactants present in the composition. One of ordinary skill in the art would have been motivated to change the weight ratio as this could be expected to be advantageous for altering the surfactant properties of the desired preparation.
Regarding the weight ratio of sodium benzoate to surfactants as specified in the instant claim 31, MPEP 2144.05 states:
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).
Furthermore, Lourenco teaches that the amount of surfactant may be adjusted depending on the desired preparation of the composition [0035]. The Applicants' specification provides no evidence that the selected weight ratio in the instant claim 31 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the effects of a surfactant on a cosmetic composition, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight ratio of sodium benzoate to surfactants present in the composition. One of ordinary skill in the art would have been motivated to change the weight ratio as this could be expected to be advantageous for altering the surfactant properties of the desired preparation.
Regarding the weight ratio of sodium benzoate to hydroxyacetophenone as specified in the instant claim 33, MPEP 2144.05 states:
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).
Furthermore, Lourenco teaches that benzoic acid salts may act as a preservative [0097] and that hydroxyacetophenone may be present as an antioxidant ([0025 pg. 43 line 24). The Applicants' specification provides no evidence that the selected weight ratio in the instant claim 33 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the preservative and antioxidant effects of sodium benzoate and hydroxyacetophenone, respectively, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight ratio of sodium benzoate to hydroxyacetophenone present in the composition. One of ordinary skill in the art would have been motivated to change the weight ratio as this could be expected to be advantageous for altering the antioxidant properties or the stability of the formulation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 35 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 23-42 of copending Application No. 18/559,736,
and claims 18-37 of copending Application No. 18/567,427;
in view of Lourenco (WO 2020192865, publication date: 10/1/2020), as applied to claims 20-34, 36, and 37 above, and further in view of INCIDecoder Sodium Citrate (available 9/21/2020), INCIDecoder Citric Acid (available 1/2/2020), and Dias et. al. (International Journal of Trichology, pg. 95-99, publication year: 2014).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘736 application and the claims of the ‘427 application embrace the relevant limitations above. The claims of the ‘736 application and the claims of the ‘427 application do not embrace the inclusion of sodium citrate in the composition or a specific pH of the composition after dilution in water. However, this deficiency is cured by INCIDecoder Sodium Citrate, INCIDecoder Citric Acid, and Dias. INCIDecoder Sodium Citrate teaches that sodium citrate is a buffering agent used to adjust the pH of a cosmetic product (pg. 1 details). INCIDecoder Citric Acid teaches that citric acid is a chelating agent (pg. 1, All Functions). Dias teaches that a lower pH in shampoos can cause less frizzing for generating less negative static electricity on the fiber surface and that 75% of salon shampoos tested had a pH less than or equal to 5.0 (pg. 95, Abstract).
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional buffering agents used in cosmetic formulations. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding the pH of the composition when diluted in water, it would have been prima facie obvious to include citric acid and sodium citrate in a ratio by weight that renders a pH from 3.2 to 5 when the composition is diluted in water. One would have understood that the composition of Lourenco may be formulated as a shampoo and in view of Dias that a lower pH in shampoos can cause less frizzing for generating less negative static electricity on the fiber surface and that 75% of salon shampoos tested had a pH less than or equal to 5.0 (pg. 95, Abstract). It would have been obvious to adjust the weight of the buffering agents sodium citrate and citric acid in such a way that the diluted composition would render a shampoo with a pH of less than 5. One of ordinary skill in the art would have been motivated to ensure a pH of less than 5 in order to reduce frizzing of the hair. The artisan of ordinary skill would have had reasonable expectation of success because Lourenco teaches that the composition may contain buffering agents and because Dias teaches that most salon shampoos sampled have a pH of less than 5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 38 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 23-42 of copending Application No. 18/559,736,
and claims 18-37 of copending Application No. 18/567,427;
in view of Lourenco (WO 2020192865, publication date: 10/1/2020), as applied to claims 20-34, 36, and 37 above, and further in view of Stern (U.S. Patent No. 11,045,397, issue date: 6/29/2021, filing date: 11/6/2019).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘736 application and the claims of the ‘427 application embrace the relevant limitations above. The claims of the ‘736 application and the claims of the ‘427 application do not embrace a water-soluble film comprised of polyvinyl alcohol, gelatine, or alginates. However, this deficiency is cured by Stern. Stern teaches a hygiene product pod comprising a water-soluble envelope and a hygiene product sealed in the envelope (col. 1 lines 48-50). The active agent encased in the pod may be in a powdered format (col. 5 line 17). The envelope may be formed of polyvinyl alcohol (col. 3 line 26). The hygiene product pods are configured for single-use applications (col. 1 line 7).
It would have been prima facie obvious to one of ordinary skill in the art of filing to enclose the powder composition of the claims of the ‘736 application and the claims of the ‘427 application in a water-soluble envelope comprised of polyvinyl alcohol. One would have understood in view of Stern that a water-soluble envelope comprised of polyvinyl alcohol may be used to envelop a wide variety of hygiene products, including those in a powdered format (col. 5 line 17). It would have been obvious to encase the powder composition of the claims of the ‘736 application in such an envelope. One of ordinary skill in the art of filing would have been motivated to include the composition of the claims of the ‘736 application in the envelope embraced by Stern in order to provide single-use portions of the cosmetic composition. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Stern teaches that the active agent encased in the pod may be in a powdered format (col. 5 line 17).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 39 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 23-42 of copending Application No. 18/559,736,
and claims 18-37 of copending Application No. 18/567,427;
in view of Lourenco (WO 2020192865, publication date: 10/1/2020), as applied to claims 20-34, 36, and 37 above, and further in view of Peters (Fast Company, available 2/14/2020).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘736 application and the claims of the ‘427 application embrace the relevant limitations above. The claims of the ‘736 application and the claims of the ‘427 application do not embrace a composition enclosed in a paper pouch. However, this deficiency is cured by Peters. Peters teaches a powder hand wash enclosed in a paper sachet that may be added to a bottle and diluted with water to form a liquid hand wash (pg. 8, first paragraph). The product is designed to shrink packaging waste (pg. 8, second paragraph).
It would have been prima facie obvious to one of ordinary skill in the art of filing to enclose the powder composition of the claims of the ‘736 application and the claims of the ‘427 application in a paper envelope. One would have understood in view of Peters that a paper envelope may be used to contain a powdered hand wash composition (pg. 8, first paragraph). It would have been obvious to encase the powder composition of the claims of the ‘736 application and the claims of the ‘427 application in such an envelope. One of ordinary skill in the art of filing would have been motivated to include the composition of the claims of the ‘736 application and the claims of the ‘427 application in the envelope embraced by Peters in order to reduce packaging waste. The artisan of ordinary skill in the art of filing would have had reasonable expectation of success because Peters teaches that a powdered hand wash composition may be contained within a paper envelope (pg. 8, first paragraph).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614