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
Amendment filed on 05/06/2026 is acknowledged.
Claims 1-11 remain cancelled. Claims 12, 14, 17-18, and 20-27 are amended.
Claims 12-31 are pending and being examined on the merits herein.
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.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 01/13/2026) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 05/06/2026.
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.
MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). For this instance, polyvinyl alcohol, starch, or sodium cocoyl glutamate each is taught by prior art, therefore, being binder or surfactant as the inherent property of the compound would necessarily present in prior art.
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 the limitation of “the cleansing concentrate being dispersed in the binder”, it is interpreted as “process of making”, because it does not materially contribute to the composition. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). "In determining validity of a product-by-process claim, the focus is on the product and not the process of making it." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed.Cir.2009). The process of making is only relevant "if the process by which a product is made imparts 'structural and functional differences' distinguishing the claimed product from the prior art" Greenliant Systems, Inc. v. XicorLLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012). Since prior art teaches the composition, and there is no evidence of such process of making would impart the product structurally and functionally different from prior art, therefore, such process of making would not allow patentability since prior art already teaches the instantly claimed product.
Moreover, Song exemplifies that all of the polymeric structurant and/or one or more, for example all, of surfactants are dissolved and/or dispersed prior to spinning a fibrous element, such as a filament from the filament-forming composition (e.g., [0049]), and one or more additives, such as active agents, may be present on a surface of the fibrous element, and can bloom to a surface of the fibrous element prior to and/or when exposed to conditions of intended use of the fibrous element (e.g., [0050]), suggesting the solid additives can be dispersed in the binder as instantly claimed. Furthermore, MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
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 23-24, 26-28, 36-37 and 41 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 and at least 35 % by weight of two or more surfactants including disodium lauryl sulfosuccinate and sodium coco sulfate (Claim 23), and the concentrate as tablet form or powder form (Claim 37), 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 23-24) read into surfactants in instant claims 18-19, indicating surfactant amounts further in the concentrate in claims 26-28, that overlaps with the surfactant ranges in instant claims 20-22. App’736 points out water is less than 5% and concentrate to water ratio (Claims 36 and 41), that read 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 18-20, 22-24, 33-35 and 41 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 18 (a) & (b), and Claim 41), and the concentrate being in tablet form or powder form (Claim 34) and having one section consisting of a water-soluble film (Claim 35), 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 18 (i) and 19) read into surfactants as in instant claims 18-19, indicating surfactant amounts in the concentrate in claims 22-24, that overlap with the surfactant ranges in instant claims 20-22. App’427 points out water is less than 5% based on total weight of the concentrate (Claim 33), 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).
Response to Arguments
Applicant’s remarks/arguments filed on 05/06/2026 have been fully considered.
35 U.S.C. 112 rejections
In light of applicant’s remarks and claim amendment, the rejections are withdrawn.
Art Rejections
Applicant asserts that Song teaches surfactant and other active ingredients are added one by one to the smooth polymer solution with mixing until a homogeneous solution is obtained or via spinning the filament-forming composition, etc., however, Song does not teach or suggest a solid cleansing concentrate dispersed in a binder as instantly claimed. Art rejections should be withdrawn.
Examiner has taken full consideration of the specific limitation in claim as presented in this office action and copied below the most relevant paragraph for reference:
Regarding the limitation of “the cleansing concentrate being dispersed in the binder”, it is interpreted as “process of making”, because it does not materially contribute to the product of composition subject matter. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). "In determining validity of a product-by-process claim, the focus is on the product and not the process of making it." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed.Cir.2009). The process of making is only relevant "if the process by which a product is made imparts 'structural and functional differences' distinguishing the claimed product from the prior art" Greenliant Systems, Inc. v. XicorLLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012). Since prior art teaches the composition, and there is no evidence of such process of making would impart the product structurally and functionally different from prior art, therefore, such process of making would not allow patentability since prior art already teaches the instantly claimed product.
Moreover, Song exemplifies that all of the polymeric structurant and/or one or more, for example all, of surfactants are dissolved and/or dispersed prior to spinning a fibrous element, such as a filament from the filament-forming composition (e.g., [0049]), and one or more additives, such as active agents, may be present on a surface of the fibrous element, and can bloom to a surface of the fibrous element prior to and/or when exposed to conditions of intended use of the fibrous element (e.g., [0050]), suggesting the solid additives can be dispersed in the binder as instantly claimed. Furthermore, MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
In conclusion, the argument is not persuasive, and the art rejections remain.
Nonstatutory Double Patenting Rejections
Applicant asserts that Song fails to teach or suggest a cosmetic cleansing product with the solid cleansing concentrate being dispersed in the binder as recited in instant claim 12, therefore, the rejections should be withdrawn.
As addressed above in “Art Rejections”, the argument is not persuasive, and the art rejections remain. Therefore, the nonstatutory double patenting rejections sustain with updates incorporated claim amendments with all copending applications.
Please refer to the entire office action as a complete response to the remarks/arguments.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUE X. LIU can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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