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 Claims
Preliminary amendment filed on 12/04/2023 is acknowledged.
Claims 1-11 are cancelled. Claims 12-31 are new.
Claims 12-31 are pending and being examined herein on merits.
Priority
This instant application 18566724, filed on 12/04/2023, is a 371 of PCT/EP2022/062618, filed on 05/10/2022, which claims foreign priority of Germany 10 2021 206 400.0, filed on 06/22/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 03/01/2024 is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Claim Objections
Claims 12, 14 and 20-27 are objected to because of the following informalities:
Claim 12 recites “comprising less than 15% by weight, based on a total weight of the concentrate, of ingredients that are liquid under standard conditions”. Please rephrase the sentence to “comprising ingredients that are liquid under standard conditions at less than 15% by weight, based on total weight of the concentrate” to make it more readable.
Claim 14 recites “PVAc”, “UF”, “W” paste, “HF” paste acronyms without detailed definitions of the terms.
Claim 20 is recommended to add “based on total weight of the cleansing product” at the end of the sentence, although it the word “wherein” already implies this meaning.
Claims 20-27 each recite “a concentration of ” or “the concentration of”, which is commonly used to describe amount in liquid form. Since the claimed composition is in solid form as indicated in claim 12, the word “a concentration of” or “the concentration of” is suggested to be removed and revise the sentence ending as “ is present in an amount from xxx by weight”.
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 12-31 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 12 recites a cosmetic cleansing product “present in solid form and comprises (a) a binder, (b) a solid cleansing concentrate …, the cleansing concentrate being suspended in the binder and comprising less than 15% by weight, …, of ingredients that are liquid under standard conditions”. It is unclear how the solid form product can have the cleansing concentrate being suspended in the binder and can comprise less than 15% liquid ingredients. The cosmetic cleansing final product as the subject of matter cannot be in solid form while at meantime contains liquid and/or a concentrate being in suspension. To the extent that it is meant to be the process of making the final product, the cleansing concentrate is suspended in the binder and liquid as an intermediate product, the claim language fails to express as such. It is also unclear whether the binder is included or excluded in the amount of less than 15% of ingredients that are liquid under standard conditions, since there is no indication whether the binder is in solid or liquid form. Although the phrase “be suspended in the binder” suggests the binder is a liquid, without further clarification, the claim scope is unclear. For the issues raised above, the claim is indefinite.
Claims 13-31 are rejected accordingly, because they are directly or indirectly depending on claim 12, and they do not further clarify the issue in claim 12 as addressed above.
Claim 14 recites “PVAc paste”, “UF”, “W paste”, and “HF paste”. These terms are not defined by instant claim and specification. The terms do not appear to be commonly or routinely known in the art. One of skilled in the art would not know what the terms encompass and thus the metes and bounds of the claim are not defined.
Claim Interpretation
Claim 12 is interpreted drawn to a “solid” cosmetic cleansing composition comprising a) a binder, and b) a concentrate comprising one or more solid surfactants and less than 15% of liquid ingredients.
In light of the above discussion under 112 b, the claimed composition is interpreted to mean it’s not a liquid suspension.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12-27 are rejected under 35 U.S.C. 102 (a)(1) and (a)(2) as being anticipated by (US20200405587, 12/31/2020, IDS of 03/01/2024).
Regarding instant claim 12, Song throughout the reference teaches dissolvable fibrous solid cleansing article containing a polymeric structurant, a surfactant, and optionally a cationic polymer (e.g., Abstract). Song teaches the personal care composition can be solid articles such as compressed powders in a solid (e.g., [0002]-[0003]), and can be included in sunscreen substrates, personal care substrates containing skin care (e.g., [0253]), indicating the product can be a cosmetic cleansing product in solid form.
Song teaches the polymeric structurant materials in the composition can be polyvinyl alcohols and starch (e.g., [0102]), carboxymethyl cellulose (e.g., [0103]), among which the polyvinyl alcohols reads on the binder, as defined in the instant claim 14.
Song teaches primary surfactants such as “sodium cocoyl glutamate” (e.g. [0117]), which reads on the instant claimed surfactant. Song also exemplifies structurant material polyvinyl alcohol in fibrous article cleansing formulations in Examples A-B and C-D, along with following ingredients, e.g., sodium cocoyl isethionate, disodium cocoyl glutamate (Tables 1-2; [0277], [0282]), and in the inventive melt compositions Examples 1-3 and 5-6, polyvinyl alcohol together with at least one surfactant as sodium cocoyl isethionate, or more surfactants including disodium cocoyl glutamate, disodium laureth sulfosuccinate in the compositions (Table 3; [0285]). These ingredients are described as surfactants (e.g., [0117], [0119], [0128], [0137]) and added in the formulation based on dry basis weight as indicated [0277], suggesting they are solid materials under standard conditions. It is well known in the field of art surfactants such as sodium cocoyl isethionate, disodium cocoyl glutamate and others are solid under standard conditions, also it is as evidenced by instant claim 18. Therefore, these formulations in Song read on the binder and the surfactants as claimed in the cosmetic cleansing composition.
Song presents in fibrous article Examples C-D comprising binder polyvinyl alcohol at 28.6% and 29.0% respectively, surfactants, and moisture as liquid at 3.1% (Table 2). When the binder polyvinyl alcohol amount is excluded in calculation from the solid concentrate (total amount subtracts binder polyvinyl alcohol amount), liquid ingredient proportion in Example C is 3.1/(100-28.6)= 4.3%, falling within the instantly claimed amount of liquid ingredient less than 15% in instant claim 12. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
In summary, Song exemplifies in specific embodiments cosmetic cleansing products in solid form comprising a binder, e.g., polyvinyl alcohol, and a solid cleansing concentrate comprising one or more surfactants, e.g., sodium cocoyl isethionate and disodium cocoyl glutamate in Table 1, that are solid under standard conditions, and the cleansing concentrate comprises less than 15% of liquid ingredients based on total weight of the concentrate.
Regarding instant claims 13-15, Song teaches the polymeric structurant materials in the composition are water-soluble [0101]) such as polyvinyl alcohols and starch (e.g., [0102]), of which polyvinyl alcohol corresponding to binder in the composition.
Regarding instant claim 16, Song presents in fibrous article Examples A-B and C-D without other binders other than polyvinyl alcohol (Tables 1-2).
Regarding instant claim 17, Song specifies that the fibrous elements, e.g., filaments, in the composition are typically considered continuous or substantially continuous in nature (e.g., [0042], [0045]), and in the dissolvable solid fibrous shampoo article comprising fibrous elements comprising polymeric structurant, e.g., polyvinyl alcohol, and surfactants (e.g., [0005], [0008]), while formulating personal care products as solid articles in forms including dissolvable films, compressed powders in a solid, fibrous articles, porous foams, soluble deformable solids, powders, bars and pills [0003], indicating the cleansing product can present in the form of film in which polyvinyl alcohol, established above as the binder, as a continuous structure comprising surfactants and other active ingredients (as the cleansing concentrate) mixed or suspended therein.
Regarding instant claims 18-19, Song specifies that in the solid article composition can contain an anionic primary surfactant (e.g. [0114]), which can comprise at least one glutamate surfactant, e.g., sodium myristoyl glutamate, sodium lauroyl glutamate, sodium cocoyl glutamate, sodium stearoyl glutamate, disodium cocoyl glutamate, and many others (e.g., [0117], [0119]). Additional anionic surfactant can be selected from isethionate surfactant, a sarcosinate surfactant, sulfosuccinate surfactant, a taurate surfactant, a sulfonate surfactant, etc. [0125], such as sodium cocoyl isethionate [0128], disodium lauryl sulfosuccinate (corresponding to surfactant species in instant claim 19), disodium laureth sulfosuccinate [0137], sodium methyl cocoyl taurate [0142], and many others.
Regarding instant claims 20-22, Song teaches that dissolvable solid fibrous shampoo article comprising about 1% to 50% by weight on a dry article basis of a polymeric structurant and from about 10% to about 90% by weight on a dry article basis of a surfactant system [0005]. Song exemplifies in inventive melt composition with spun fiber of making fibrous articles (which be dried to remove any remaining solvent used for spinning such as water, as indicated in paragraph [0272]) as solid cleansing compositions, comprising binder polyvinyl alcohol at amount 11.7%, and solid surfactants under standard condition (suppliers for raw materials for the Examples in Tables 1-4, [0288-0292]), including disodium cocoyl glutamate at dry weight amount 31.11%, sodium cocoyl isethionate 4.0%, and lauryl amidopropyl betaine (LAPB, [0156]) 6.86% (Examples 1-3, Table 3), adding up to total 41.97% by weight of the cleansing product; in Example 5 containing polyvinyl alcohol 12% and surfactant disodium cocoyl glutamate 24.58%, sodium cocoyl isethionate 3.2%, and lauryl amidopropyl betaine (LAPB, [0156]) 12.4% to total amount of surfactant as 40.18% (Example 5, Table 3). Both surfactant values fall within the range from 0.1% to 50% in instant claim 20, from 15% to 45% in instant claim 21, from 25% to 44% in instant claim 22. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding instant claims 23-27, as presented above and incorporated herein, Song presents in fibrous article Examples C-D comprising binder polyvinyl alcohol at 28.6% and 29.0% respectively, surfactants, and moisture as liquid at 3.1% (Table 2). When the binder polyvinyl alcohol amount is excluded in calculation from the solid concentrate (total amount subtracts binder polyvinyl alcohol amount), liquid ingredient proportion in Example C is 3.1/(100-28.6)= 4.3%, falling within the instantly claimed amount range of liquid additives based on the total weight of the concentrate, less than 15% by weight in instant claim 23, or less than 10% by weight in instant claim 24, or less than 7% in instant claim 25, and water less than 5% in instant claim 26. Song exemplifies in Examples A-B presents 0% liquid additive or water; therefore, it meets a concentration of water as liquid additive is less than 2% by weight based on total weight of the concentrate in instant claim 27. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
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 12-31 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US20200405587, 12/31/2020, IDS of 03/01/2024).
Song throughout the reference teaches cosmetic cleansing products in solid form, and exemplifies in specific embodiments comprising a binder, e.g., polyvinyl alcohol, and a solid cleansing concentrate comprising one or more surfactants, e.g., sodium cocoyl isethionate and disodium cocoyl glutamate in Table 1, that are solid under standard conditions, and the cleansing concentrate comprises less than 15% of liquid ingredients based on total weight of the concentrate, as discussed in great detail as applied to claims 12-27 above.
Regarding instant claims 28-31, Song teaches that dissolvable solid fibrous shampoo article comprising about 1% to 50% by weight on a dry article basis of a polymeric structurant, e.g., binder polyvinyl alcohol, and from about 10% to about 90% by weight on a dry article basis of a surfactant system (as cleansing concentrate) [0005], which would resulting in binder to concentrate ratios in the range of from 1:90 up to 5:1, overlapping with ratio range from 99:1 to 1:1 in instant claim 28, or range from 50:1 to 2:1 in instant claim 29, or from 30:1 to 3:1 in instant claim 30, or from 20:1 to 4:1 in instant claim 31.
Song does not exemplify in specific embodiments the instantly claimed ratio ranges.
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to adjust the ratio of binder and surfactant to arrive at current invention. As Song points out that while particular embodiments of the invention have been illustrated and described, it would be obvious to those skilled in the art that various other changes and modifications can be made without departing from the spirit and scope of the invention (e.g., [0419]). 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, the ratio ranges overlap with instantly claimed ranges. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
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 12-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-4, 16-17 and 21 of copending Application No. 18559736 (hereafter App’736) in view of Song et al. (US20200405587, 12/31/2020, IDS of 03/01/2024).
App’736 recites a cosmetic cleansing concentrate in solid form comprising one or more surfactants that are solid under standard conditions and one or more polysaccharides, with less than 7% of ingredients that are liquid under standard conditions (Claim 1), and the concentrate as tablet form or powder form (Claim 17), reading into instant claim 12 of the cosmetic cleansing product in solid form comprising one or more surfactants with less than 15% by weight of liquid ingredient in the concentrate, as well as liquid additive amounts in instant claims 23-25. App’736 recites the solid surfactant species in the concentrate (Claims 2 and 3) selected from the same group of surfactants as in instant claims 18-19, indicating surfactant amounts in the concentrate in claims 4-6, that overlaps with the surfactant ranges in instant claims 20-22. App’736 points out water is less than 5% and particularly preferably less than 2% by weight based on total weight of the concentrate (Claim 16), that reads into instant claims 26-27.
App’736 does not teach a binder in the composition as recited in instant claim 12, and the binder being water-soluble as recited in instant claim 13, the binder species as listed in instant claim 14, the binder comprising polyvinyl alcohol as recited in instant claim 15, no further binders present as recited in instant claim 16, product in a form of film as recited in instant claim 17, weight ratio of binder to cleansing concentrate as recited in instant claims 28-31.
As presented above in great detail and incorporated herein, Song teaches throughout the reference cosmetic cleansing products in solid form including a form of film, and exemplifies in specific embodiments comprising a binder, e.g., polyvinyl alcohol (corresponding to instant claims 12-17). Song also teaches weight amounts resulting ratio of binder to cleansing concentrate overlapping with the instantly claimed ranges in claims 28-31 as presented above in detail.
It would have been prima facie obvious for a person with ordinary skills in the art to incorporate Song’s teaching into the composition of App’736 to arrive at current invention. Because both compositions share common essential ingredients for cleansing concentrate in solid form, As Song points out that while particular embodiments of the invention have been illustrated and described, it would be obvious to those skilled in the art that various other changes and modifications can be made without departing from the spirit and scope of the invention (e.g., [0419]). Selecting a binder such as polyvinyl alcohol and swap polysaccharides from App’736 would have provided reasonable expectation of success as Song already demonstrated good compositions with desirable properties. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, concentration amounts, ratios in App’736 and prior art overlap with instantly claimed ranges. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 12-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-6, 12-14 and 16 of copending Application No. 18567427 (hereafter App’427) in view of Song et al. (US20200405587, 12/31/2020, IDS of 03/01/2024).
App’427 recites a cosmetic cleansing concentrate in solid form comprising one or more surfactants that are solid under standard conditions and Caesalpinia spinosa gum and/or cellulose gum, with less than 7% of ingredients that are liquid under standard conditions (Claim 1), and the concentrate being in tablet form or powder form (Claim 13) and having one section consisting of a water-soluble film (Claim 16), reading into instant claim 12 of the cosmetic cleansing product in solid form comprising one or more surfactants with less than 15% by weight of liquid ingredient in the concentrate, as well as liquid additive amounts in instant claims 23-25. App’427 recites the solid surfactant species in the concentrate (Claims 2 and 3) selected from the same group of surfactants as in instant claims 18-19, indicating surfactant amounts in the concentrate in claims 4-6, that overlaps with the surfactant ranges in instant claims 20-22. App’427 points out liquid is less than 7%, preferably less than 6.85% and especially less than 6.5% (Claim 12), and water is less than 5% and particularly preferably less than 2% by weight based on total weight of the concentrate (Claim 13), that reads into instant claims 26-27.
App’427 does not teach a binder in the composition as recited in instant claim 12, and the binder being water-soluble as recited in instant claim 13, the binder species as listed in instant claim 14, the binder comprising polyvinyl alcohol as recited in instant claim 15, no further binders present as recited in instant claim 16, product in a form of film as recited in instant claim 17, weight ratio of binder to cleansing concentrate as recited in instant claims 28-31.
As presented above in great detail and incorporated herein, Song teaches throughout the reference cosmetic cleansing products in solid form including a form of film, and exemplifies in specific embodiments comprising a binder, e.g., polyvinyl alcohol (corresponding to instant claims 12-17). Song also teaches weight amounts resulting ratio of binder to cleansing concentrate overlapping with the instantly claimed ranges in claims 28-31 as presented above in detail.
It would have been prima facie obvious for a person with ordinary skills in the art to incorporate Song’s teaching into the composition of App’427 to arrive at current invention. Because both compositions share common essential ingredients for cleansing concentrate in solid form, As Song points out that while particular embodiments of the invention have been illustrated and described, it would be obvious to those skilled in the art that various other changes and modifications can be made without departing from the spirit and scope of the invention (e.g., [0419]). Selecting a binder such as polyvinyl alcohol and swap gum species from App’427 would have provided reasonable expectation of success as Song already demonstrated good compositions with desirable properties. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, concentration amounts, ratios in App’427 and prior art overlap with instantly claimed ranges. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616