DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In 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.
Election/Restrictions
Applicant's election without traverse of Group II, claims 5-14, in the reply filed on 01/07/2026 is acknowledged.
Claims 1-4 and 15-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112, Second Paragraph
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.
Claim 6 is 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 6 is indefinite because it is not clear whether the amounts of HPMC, xanthan gum, and CMC recited in claim 6 refer to the amounts in the total “personal care composition” or the amounts in the “suspending polymer composition” as recited in claim 5. In the interest of compact prosecution, the Examiner is interpreting this to refer to the amount of each of the polymers in the “suspending polymer composition”, however, appropriate correction is required.
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 5-14 are rejected under 35 U.S.C. 103 as being as being obvious over Clark et al. (US 6,025,311) in view of Dijk et al. (US 2008/0071077 A1).
Regarding claims 5 and 11, Clark discloses a composition including 15.0 wt.% hydroxypropyl methyl cellulose (HPMC), 8.0 wt.% carboxymethyl cellulose (CMC), and 0.2 wt.% xanthan gum (Col 9, Table 7C). In relation to the total amount of polymers, this is 64.65 wt.% HPMC, 34.48 wt.% CMC, and 0.86 wt.% of xanthan gum. The polymer blends are added to shampoo formulations as thickeners in an amount such as 1.80 wt.% (Col 11, lines 30-34; Col 12-13). The shampoo compositions include anionic surfactants, such as 27.50 wt.% of ammonium lauryl sulfate, preservatives, such as 0.1 wt.% of methyl paraben, and around 60 wt.% water (Col 12, lines 30-40, Table 12). The shampoo compositions are free from acrylic acids, methacrylates, or derivatives. Additionally, Clark discloses that hydroxypropyl methyl cellulose acts as a thickener (Col 2, lines 65-67), that adding CMC allows for the salt requirement to be reduced (Col 8, lines 55-59), and that xanthan gum provides a structure to the polymer suspension which helps prevent settling of the polymer particles (Col 4, lines 9-11).
Clark is not believed to be anticipatory because Clark does not disclose amounts of each component falling within the instantly claimed range. That is, Clark discloses the amount of xanthan gum in the polymer blend is 0.86 wt.%, which is lower than the claimed amount of about 10-25 wt.%, and the amount of CMC in the polymer blend is 34.48 wt.%, which is higher than the claimed amount of about 10-25 wt.%.
However, Dijk discloses the use of CMC, HPMC, and xanthan gum as thickeners in personal care compositions such as shampoos [0016]-[0018]. Dijk teaches that the weight ratio of CMC to HPMC or xanthan gum may be from 1:100 to 100:1 [0018].
CMC, HMPC, and xanthan gum, and their amounts, are recognized to have different effects (HPMC, CMC, and xanthan gum – thickening; CMC – reducing salt requirement; xanthan gum – providing structure to polymer suspension) with changing amounts used as taught by Clark and Dijk; and the general condition (ratio of the components) is known (Dijk [0018]). As such, result effective variables can be optimized by routine experimentation and it would not have been inventive for the skilled artisan to have discovered the optimum amount of CMC, HPMC, and xanthan gum in the polymer combination via routine experimentation. See MPEP 2144.05.
Furthermore, in regards to the amount of the individual components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 A.
Regarding claim 6, the amounts of HPMC, CMC, and xanthan gum would be achieved by one of ordinary skill in the art through routine experimentation, as previously discussed.
Clark does not disclose that the carboxymethyl cellulose has a degree of substitution of less than 0.65.
Dijk teaches the use of CMC which has a degree of substitution of 0.6 [0026]. Dijk teaches that the CMC of the disclosure provides the cosmetic formulations, such as shampoos, with improved rheological behavior, gelling properties, texture and elasticity, enhanced water retention and (storage) stability [0010]-[0011] [0016].
Since Clark generally teaches a polymer combination to thicken personal care compositions, such as shampoos, it would have been prima facie obvious to one of ordinary skill in the art to include the CMC of Dijk, with a degree of substitution of 0.6, within the teachings of Clark, because Dijk teaches a CMC with this degree of substitution in cosmetic formulations such as shampoos. An ordinarily skilled artisan would be motivated to use a CMC with a degree of substitution of 0.6 because Clark teaches that it provides the cosmetic formulations with improved rheological behavior, gelling properties, texture and elasticity, enhanced water retention and (storage) stability [0010]-[0011] [0016]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 7-8 and 14 are rendered prima facie obvious because Clark discloses the shampoo composition includes a preservative (methyl paraben) (Col 12, lines 30-40).
Claims 9-10 are rendered prima facie obvious because Clark discloses the compositions are formulated into shampoos (Col 11, lines 30-34; Col 12-13).
Claim 12 is rendered prima facie obvious because Clark discloses ammonium lauryl sulfate (Col 12, lines 30-40) which is an alkyl sulfate anionic surfactant.
Claim 13 is rendered prima facie obvious because the compositions disclosed by Clark used as a shampoo are silicone free (Col 11, lines 30-34; Col 12-13).
Response to Arguments
Applicant’s arguments with respect to claims 5-14 in the response to election/restriction filed 01/07/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent Application No. 17/925,570 in view of Clark et al. (US 6,025,311).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition except for carboxymethyl cellulose.
Clark discloses a personal care composition including carboxymethyl cellulose (CMC) (Col 9, Table 7C). Clark teaches that that adding CMC allows for the salt requirement to be reduced (Col 8, lines 55-59).
It would have been prima facie obvious to one of ordinary skill in the art to include CMC, within the copending claims. The ordinarily skilled artisan would have been motivated to formulate the composition to include CMC to reduce the salt requirement (Col 8, lines 55-59).
The weight percentages of each component, as recited in the instant claims, would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612