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 .
Election/Restrictions
Applicant’s election of Group I and the species where the composition comprises (i) sodium lauryl sulfate as the one or more anionic surfactants, (ii) coco glucoside as the one or more nonionic surfactants of alkyl (poly)glycoside type, (iii) polyglyceryl-4-caprate as the one or more polyglycerol esters, (iv) coco betaine as the one or more amphoteric or zwitterionic surfactants, and (v) hydroxypropyl guar hydroxypropyltrimonium chloride as the one or more cationic polymers in the reply filed on January 30, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
As a point of clarification, the intent of the election of species was for the selection to be made amongst compositions with a particular choice for the one or more amphoteric or zwitterionic surfactants and the one or more cationic polymers. During the course of searching, the betaine subgenus of the one or more amphoteric or zwitterionic surfactants were found to be obvious variants of one another and are therefore rejoined.
Claims 18 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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
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 2-6 and 8-17 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.
The claims repeatedly recite the phrases/terms, “such as”, “preferably” , “in particular”, “notably, “more preferentially”, “even more preferentially”, and “better still” which makes the claims unclear because it is unclear whether the limitations following the phrases/terms are part of the claimed invention. See MPEP § 2173.05(d).
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kleinen et al. (US PGPub No. 2015/0297485 – see IDS).
Kleinen et al. teach cosmetic compositions composed of at least one esterified polyhydric alcohol, at least one amphoteric surfactant, at least one anionic surfactant, oil, water, and optionally also include various functional additives (see abstract and paragraphs 16-20, 32, 102, 106, 109, 119, and 149 table). Esterified polyhydric alcohol compounds are envisioned as various polyglyceryl esters such polyglyceryl-3-caprate and polyglyceryl-4-caprate as well as monoglyceryl esters (see paragraph 53; instant claim 11). Amphoteric surfactants are taught as various betaine compounds such as cocamidopropyl betaine and coco betaine (see paragraph 56). Anionic surfactants are preferably alkyl sulfates or alkyl ether sulfates, such as sodium laureth sulfate and sodium lauryl sulfate (see paragraphs 65 and 67). Kleinen et al. teach oil present at greater than 10 wt% and water present at 20 to 75 wt% in the composition (see paragraph 16, 102, and 119). They teach hydroxypropyl guar hydroxypropyltrimonium chloride as a desired additive included in exemplary embodiments at proportions that range from 0.1 to 0.5 wt% (see examples, especially 51 and 67a, c-e, g-h, and k; instant claim 17). Kleinen et al. detail several examples of embodiments of their compositions. Example 67h includes water at 42.6 wt%, oils at 40 wt%, polyglyceryl-3-caprate at 6 wt% (polyglyceryl ester of C10 fatty acid; n = 3, R = 10 carbon alkyl), sodium laureth sulfate (anionic surfactant; alkyl ether sulfate) at 3 wt%, cocamidopropyl betaine (amphoteric surfactant) at 3 wt%, lauryl glucoside (alkyl polyglucoside nonionic surfactant; R1 = 12 alkyl, t = 0 G = saccharide with 6 carbons, v = 1) at 1 wt%, coco glucoside (alkyl polyglucoside nonionic surfactant; R1 = 12 carbon alkyl, t = 0 G = saccharide with 6 carbons, v = 1) at 3 wt%, as well as hydroxypropyl guar hydroxypropyltrimonium chloride (cationic polysaccharide polymer) at 0.1 wt% (see instant claims 1-5, 7-8, 10, 13-16). The ratio of alkyl polyglucoside nonionic surfactant to polyglyceryl ester is 0.67 (see instant claims 1 and 10). Example 95 includes water at 64 wt%, polyglyceryl-3-caprate at 9 wt% (polyglyceryl ester of C10 fatty acid; n = 3, R = 10 carbon alkyl), sodium laureth sulfate (anionic surfactant; alkyl sulfate) at 1 wt%, cocamidopropyl betaine (amphoteric surfactant) at 3 wt%, as well as coco glucoside (alkyl polyglucoside nonionic surfactant; ; R1 = 12 carbon alkyl, t = 0 G = saccharide with 6 carbons, v = 1) at 2 wt% (see instant claims 1-8, 10, and 13-15). The ratio of alkyl polyglucoside nonionic surfactant to polyglyceryl ester is 0.22 (see instant claims 1 and 10). Kleinen et al. also teach that the combination of at least one esterified polyhydric alcohol, at least one amphoteric surfactant, at least one anionic surfactant, and a hydrophobic thickener collectively composes 5 to 35 wt% of the composition, where the at least one esterified polyhydric alcohol composes 20 to 67 parts of the 100 parts in the four component combination (see paragraph 130 and claim 1).
While a full example of each embodiment that follows from the teachings of Kleinen et al. is not detailed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the proportion of the oil and water of example 67h within the ranges of proportions that are envisioned because Kleinen et al. suggest to do so via their teachings of the ranges as envisioned options for these proportions. The result is a range of proportions for the water that overlap with those instantly claimed (see instant claim 1). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990)” (see MPEP 2144.05). It additionally would have been obvious to add hydroxypropyl guar hydroxypropyltrimonium chloride to the composition of example 95 at an exemplified proportion. This modification would have been obvious so as the glean the added benefit conferred by its presence and contemplated via its inclusion in several other embodiments. In addition, it also would have been obvious to add a glyceryl monoester as Kleinen et al. suggest as an additional esterified polyhydric alcohol. Given the 20 to 67 parts that the at least one esterified polyhydric alcohol composes of up to 35 wt% of the composition, the inclusion of an envisioned mono glycerol ester such that the esterified polyhydric alcohols are within this range yields a range of proportions that embraces that instantly claimed, thereby rendering the claimed range obvious (20 to 67 parts of up to 35 wt% corresponds to 7 to 23.45 wt%, as calculated by the examiner; see MPEP 2144.05; instant claim 12). Therefore claims 1-17 are obvious over Kleinen et al.
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 1-10 and 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,861,560 in view of Wivell et al. (US Patent No. 5,439,682).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a composition with a polyglyceryl ester, C6-C30 alkyl (poly)glucoside type surfactant, amphoteric surfactant, oil, and water. The patented composition may also include anionic surfactant, thickening agent, and their combinations. The polyglyceryl ester is present at 0.1 to 15 wt%, the alkyl (poly)glucoside type surfactant is present at 0.1 to 25 wt%, the amphoteric surfactant is present at 0.1 to 25 wt%, and the oil is present at 0.1 to 30 wt%. In addition, the C6-C30 alkyl (poly)glucoside type surfactant is recited as lauryl glucoside, the amphoteric surfactant is recited as alkyl betaines, and the polyglyceryl ester is recited as polyglyceryl-2-caprate. The patented claims recite the composition as a foaming cosmetic composition. Hydroxypropyl guar hydroxypropyltrimonium chloride is not explicitly recited as a component.
Wivell et al. teach a cosmetic composition that foams and is composed of an anionic surfactant, suspending agent, water, oil, and an additional surfactant (see abstract). They envision the inclusion of a thickener and name hydroxypropyl guar hydroxypropyltrimonium chloride as the envisioned variety (see column 7 lines 15-20). An example provides the anionic surfactant as sodium lauryl sulfate and a guar hydroxypropyltrimonium chloride at 0.75 wt%, as well as a betaine as the additional surfactant (see column 4 lines 17-25 and example I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select and include hydroxypropyl guar hydroxypropyltrimonium chloride as the thickener of the patented claims in light of Wivell et al. as the simple substitution of one known element for another in order to yield a predictable outcome. Inclusion at a proportion that is suggested for such compounds would follow. It also would have been obvious to pair this component with sodium lauryl sulfate as an anionic surfactant contemplated for combination with guar hydroxypropyltrimonium chloride compounds, in light of Wivell et al. This modification is also obvious as the simple substitution of one known element for another in order to yield a predictable outcome. Further, it would have been obvious to apply the proportion for the component categories as recited by the patented claims and the result is ranges of proportions that embrace or overlap with those instantly claimed, thereby rendering the claimed ranges obvious (see MPEP 2144.05). In addition, the range of ratios of the alkyl (poly)glucoside type surfactant to polyglyceryl ester also overlap with that instantly claimed (see MPEP 2144.05). Therefore claims 1-10 and 14-17 are obvious over claims 1-17 of U.S. Patent No. 9,861,560 in view of Wivell et al.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,861,560 in view of Wivell et al. as applied to claims 1-10 and 14-17 above, and further in view of Kleinen et al.
Claims1-17 of U.S. Patent No. 9,861,560 in view of Wivell et al. render the limitations of instant claim 1-10 and 14-17 obvious. The presence of a monoglycerol ester is not detailed.
Kleinen et al. teach cosmetic compositions that readily foam composed of at least one esterified polyhydric alcohol, at least one amphoteric surfactant, at least one anionic surfactant, oil, water, and optionally also include various functional additives (see abstract and paragraphs 15-20, 32, 102, 106, 109, 119, and 149 table). Esterified polyhydric alcohol compounds are envisioned as various polyglyceryl esters such polyglyceryl-3-caprate polyglyceryl-4-caprate as well as monoglyceryl esters (see paragraph 53). Kleinen et al. also teach that the combination of at least one esterified polyhydric alcohol, at least one amphoteric surfactant, at least one anionic surfactant, and a hydrophobic thickener collectively composes 5 to 35 wt% of the composition, where the at least one esterified polyhydric alcohol composes 20 to 67 parts of the 100 parts in the four component combination (see paragraph 130 and claim 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a mono glyceryl ester as taught by Kleinen et al. because they teach of the utility of a combination of polyglycerol ester and monoglyceryl ester in foaming cosmetic compositions that contain a similar amount of oil. The application of the proportions for these components as detailed by Kleinen et al. would follow and produces a set of ranges of proportions and claimed ratios that overlap or embrace the scope of those instantly claimed, thereby rendering the claimed ranges obvious (20 to 67 parts of up to 35 wt% corresponds to 7 to 23.45 wt%, as calculated by the examiner; see MPEP 2144.05). Therefore claims 1-17 are obvious over claims 1-17 of U.S. Patent No. 9,861,560 in view of Wivell et al. and Kleinen et al.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARALYNNE E HELM whose telephone number is (571)270-3506. The examiner can normally be reached Mon-Fri 9-5.
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/CARALYNNE E HELM/ Examiner, Art Unit 1615