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 .
Benefit of Earlier Filing Date
The instant application, filed 08 March 2024, claims the benefit of an earlier filing date to U.S. Provisional Patent Application Serial No. 63/489,066, filed 08 March 2023. Acknowledgment is made of Applicant’s claim.
Restriction/Election
Requirement for Restriction/Election was mailed 22 May 2026.
Applicant’s Response to Requirement for Restriction/Election was received 14 August 2026.
Applicant’s election with traverse of
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wherein R1 is C12, R2 is methyl, R3 is hydrogen, n is 1, X is sulfonate, and M is Na+ in the Response filed 14 August 2026 is acknowledged.
Applicant’s arguments in opposition to the election of species requirement have been fully considered and are persuasive.
The election of species requirement of 22 May 2026 is withdrawn.
Status of the Claims
The listing of claims filed 22 July 2026 has been examined.
Claims 1-25 are pending.
Claim 1 is amended.
Claims 1-25 are examined on the merits.
Information Disclosure Statement
The Information Disclosure Statements (IDSs) filed on 14 August 2026, 26 March 2026, 20 November 2025, 11 March 2025, and 13 August 2024 are acknowledged and have been considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it refers to variables like R1, R2, R3, n, X, and M, but is missing a corresponding chemical structure. Examiner interprets the large, blank space in the abstract as being intended by Applicant to contain a chemical structure. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The specification of the disclosure is objected to because, like the abstract, the instant Specification contains relatively large, blank spaces which appear to be missing chemical structures (Specification, p. 1, 6, and 46). For clarity and readability, Examiner requests the corresponding chemical structures be added into the Specification.
Claim Objections
Claims 1-25 are objected to because of the following informalities:
An independent claim introduces subject matter for the first time and commonly recites the indefinite article “a”. A dependent claim referring back to the subject matter from a prior claim should recite the definite article “the”. Such formal claim drafting avoids ambiguity and provides proper antecedent basis for the claimed subject matter.
Regarding claims 2-25, each claim recites, “A personal care composition according to claim [1]…,” referring back to a previously recited claim using the indefinite article “A”, which can cause confusion as to whether a new personal care composition is claimed or whether the claim is referring to and further defining the personal care composition recited in the referenced claims. Examiner recommends amending “A” to “The” at the beginning of each of claims 2-25.
Claim 1 recites, “…or ammonium; b. from 0.5% to 5%...” The word “and” appears to be missing immediately following the semicolon. For clarity, Examiner recommends amending to “…or ammonium; and...” [Emphasis added.] For examination purposes, Examiner interprets claim 1 as requiring both elements a. and b. (i.e., an anionic surfactant and a hydroxy acid which is salicylic acid and citric acid).
Appropriate correction is requested.
Regarding claims 18 and 23, Applicant is advised that should claim 18 be found allowable, claim 23 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Interpretation
The Specification includes language which attempts to broaden the meaning of a value recited in the claims, “The dimensions and values disclosed herein are not to be understood as being strictly limited to the exact numerical values recited. …each such dimension is intended to mean both the recited value and a functionally equivalent range surrounding that value.” (Specification, p. 49, Lines 4-6). This statement is not a clear definition (i.e., “intended to mean” is not the same as “means”). Accordingly, this statement is not given weight when establishing the scope of the claims, and any numerical value recited in the claims is given its plain and ordinary meaning.
Claim Rejections - 35 USC § 102
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 1-2, 6-7, and 9-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schroeder (US 2019/0021971 A1).
Regarding claims 1-2, 6-7, and 9-15, Schroeder teaches exemplary sulfate-free formulations comprising 5.80% Sodium Methyl Cocoyl Taurate, 6.40% Sodium C14-16 Olefin Sulfonate, 0.20% Guar Hydroxypropyltrimonium Chloride, 0.5% Salicylic acid, and 0.20% Citric acid which is pH 5 ± 0.2 (p. 10, Examples 45-47). The structure instantly recited by claim 1 encompasses Sodium Methyl Cocoyl Taurate. For example, a skilled artisan would expect Sodium Methyl Cocoyl Taurate to contain some Sodium Methyl Oleoyl Taurate, shown below, wherein R1 is a C17 unsaturated alkyl chain, R2 is methyl, R3 is H, n is 1, X is SO3-, and M is sodium:
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Note the instant Specification discloses exemplary compositions wherein the anionic surfactant is Sodium Methyl Cocoyl Taurate (p. 44-45, Examples 2-4).
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 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kroger Lyons (US 10,653,609 B2; IDS dated 13 August 2024, Cite No. 144) in view of Song (US 2019/0105243 A1; IDS dated 13 August 2024, Cite No. 274).
Regarding claims 1-25, Kroger Lyons teaches an exemplary personal care composition comprising 2.00% citric acid, 0.50% salicylic acid, 7.69% SLE1S, 0.20% polysorbate 20, and 1.75% polyacrylate crosspolymer-6 having a pH of 2.8-3.3 (Cols. 11-14, Examples, Example 4). Thus, the composition contains 2.50% hydroxy acids (i.e., citric acid + salicylic acid). Additionally, polyacrylate crosspolymer-6, which is an associative polymeric thickener, and polysorbate 20 are thickening agents. However, SLE1S is an anionic sulfate surfactant (i.e., a sulfate based surfactant).
Kroger Lyons discloses exemplary anionic surfactants including sodium tridecyl benzene sulfonate and sodium dodecyl benzene sulfonate (Col. 3, Line 52 – Col. 4, Line 1).
Kroger Lyons indicates detersive surfactants, including anionic, amphoteric, non-ionic, and/or zwitterionic surfactants provide, “…cleaning performance to the composition.” (Col. 3, Lines 26-30). Kroger Lyons states, “The concentration of the detersive surfactant component in the shampoo composition should be sufficient to provide the desired cleaning and lather performance, and generally ranges from about 3 wt % to about 10 wt %...” (Col. 3, Lines 36-39).
Kroger Lyons discloses compositions comprising 0.15% and 0.23% guar hydroxypropyltrimonium chloride (Cols. 11-12, Examples, Comparative Examples 1 and 3).
Kroger Lyons suggests one or more anti-microbial actives may be included in a personal care composition, such as piroctone olamine (Col. 9, Lines 44-47) and/or zinc pyrithione (Col. 10, Lines 13-17). Furthermore, Kroger Lyons discloses an exemplary composition comprising 2.50% zinc pyrithione (Col. 13-14, Comparative Example 3).
Kroger Lyons does not explicitly teach an anionic surfactant having the instantly recited structure.
Song teaches shampoo compositions comprising sulfate-free surfactants (p. 1, ¶ [0001]). Song states, “…shampoos typically employ sulfate-based surfactant systems because of their effectiveness in generating high later volume and good lather stability and cleaning. However, some consumers believe that sulfate-based surfactants, like sodium lauryl sulfate and sodium laureth sulfate, can be less gentle to the hair and skin, especially colored hair, as compared to shampoos that are substantially free of sulfate-based surfactant systems.” (p. 1, ¶ [0003]). Song indicates suitable surfactants which are substantially free of sulfates include sulfonates, sulfoacetates, taurates, and phosphate esters (p. 3, ¶ [0038]). Furthermore, Song provides example acyl taurates, including sodium methyl lauroyl taurate (p. 4, ¶ [0057]), shown below:
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Relative to the instantly claimed structure, in sodium methyl lauroyl taurate R1 is a C11 saturated alkyl chain, R2 is methyl, R3 is H, n is 1, X is SO3-, and M is sodium.
Song does not explicitly teach an exemplary composition comprising both salicylic acid and citric acid.
Prior to the filing of the instant application, a person having ordinary skill in the art (PHOSITA) following the teachings of Kroger Lyons would have found it prima facie obvious to prepare a personal care composition comprising sulfate-free surfactants based on the teachings of Song because Kroger Lyons discloses a personal care composition comprising 7.69% SLE1S and 2.50% hydroxy acids (i.e., citric acid + salicylic acid) and Song indicates consumers believe sulfate-free surfactants are gentler on hair and skin. Thus, a PHOSITA would have been motivated to substitute the sulfate based surfactant (i.e., SLE1S) in the composition disclosed by Kroger Lyons with a sulfate-free surfactant disclosed by Song, such as sodium methyl lauroyl taurate, in order to create a personal care product which appeals to consumers seeking sulfate-free products.
Non-Statutory 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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. US 10,653,609 B2 (Kroger Lyons) and claim 1 of U.S. Patent No. 6,214,363 B1, each patent taken in view of Song (US 2019/0105243 A1; IDS dated 13 August 2024, Cite No. 274).
Patent ‘609 claims a method of cleansing the hair and scalp using an aqueous composition comprising about 1-9% lauryl ether sulfate, about 0.5-3 wt % of polyacrylate crosspolymer-6, about 0.01-5% salicylic acid, citric acid, and polysorbate-20 where the pH is about 2-4 (Claim 1).
Patent ‘609 does not claim a personal care composition comprising the instantly recited structure.
Patent ‘363 claims a rinse-off antimicrobial composition comprising about 0.001-5% of an antimicrobial active, 1-80% of an anionic surfactant, 1-12% of a proton donating agent, 0.1-30% of a deposition aid where the pH is about 3.0-6.0 (Claim 1). Furthermore, Patent ‘363’s claim 18 suggests preferred proton donating agents include citric acid and salicylic acid.
Patent ‘363 does not claim a personal care composition comprising the instantly recited structure.
Song teaches shampoo compositions comprising sulfate-free surfactants (p. 1, ¶ [0001]). Song states, “…shampoos typically employ sulfate-based surfactant systems because of their effectiveness in generating high later volume and good lather stability and cleaning. However, some consumers believe that sulfate-based surfactants, like sodium lauryl sulfate and sodium laureth sulfate, can be less gentle to the hair and skin, especially colored hair, as compared to shampoos that are substantially free of sulfate-based surfactant systems.” (p. 1, ¶ [0003]). Song indicates suitable surfactants which are substantially free of sulfates include sulfonates, sulfoacetates, taurates, and phosphate esters (p. 3, ¶ [0038]). Furthermore, Song provides example acyl taurates, including sodium methyl lauroyl taurate (p. 4, ¶ [0057]), shown below:
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Relative to the instantly claimed structure, in sodium methyl lauroyl taurate R1 is a C11 saturated alkyl chain, R2 is methyl, R3 is H, n is 1, X is SO3-, and M is sodium.
Song does not explicitly teach an exemplary composition comprising both salicylic acid and citric acid.
A PHOSITA would have been motivated to prepare a personal care composition comprising a sulfate-free surfactant as disclosed by Song because Song suggests some consumers prefer sulfate-free surfactants for being gentler on hair and skin (p. 1, ¶ [0003]). A PHOSITA would have had a reasonable expectation of success in replacing lauryl ether sulfate, or another anionic sulfate based surfactant, with a sulfate-free surfactant, as disclosed by Song, in the personal care composition recited in Patent ‘609 and in the cleansing composition recited in Patent ‘363.
Because claims 1-26 in the instant application would have been obvious over claims 1-2 of U.S. Patent No. 10,653,609 B2 and claim 1 in U.S. Patent No. 6,214,363 B1 in view of Song, claims 1-26 in the instant application are not patentably distinct from claims 1-2 of U.S. Patent No. 10,653,609 B2 and claim 1 in U.S. Patent No. 6,214,363 B1.
Claims 1-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 18/599,554 in view of Song (US 2019/0105243 A1; IDS dated 13 August 2024, Cite No. 274).
Application ‘544 claims a personal care composition comprising 2-10% of an anionic surfactant and 0.5-5% of a hydroxy acid consisting of salicylic acid and citric acid wherein the composition has a pH of about 2.5-5.5 (Claim 1).
Application ‘554 does not expressly claim said anionic surfactant is a sulfate-free surfactant.
Song teaches shampoo compositions comprising sulfate-free surfactants (p. 1, ¶ [0001]). Song states, “…shampoos typically employ sulfate-based surfactant systems because of their effectiveness in generating high later volume and good lather stability and cleaning. However, some consumers believe that sulfate-based surfactants, like sodium lauryl sulfate and sodium laureth sulfate, can be less gentle to the hair and skin, especially colored hair, as compared to shampoos that are substantially free of sulfate-based surfactant systems.” (p. 1, ¶ [0003]). Song indicates suitable surfactants which are substantially free of sulfates include sulfonates, sulfoacetates, taurates, and phosphate esters (p. 3, ¶ [0038]). Furthermore, Song provides example acyl taurates, including sodium methyl lauroyl taurate (p. 4, ¶ [0057]), shown below:
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Relative to the instantly claimed structure, in sodium methyl lauroyl taurate R1 is a C11 saturated alkyl chain, R2 is methyl, R3 is H, n is 1, X is SO3-, and M is sodium.
Song does not explicitly teach an exemplary composition comprising both salicylic acid and citric acid.
A PHOSITA following the recitations of 18/599,554 would have been motivated to prepare a personal care composition comprising a sulfate-free surfactant as disclosed by Song because Song suggests some consumers prefer sulfate-free surfactants for being gentler on hair and skin (p. 1, ¶ [0003]). A PHOSITA would have had a reasonable expectation of success in using a sulfate-free surfactant in the personal care composition recited in Application ‘544.
Because claims 1-25 in the instant application would have been obvious over claims 1-26 of Application No. 18/599,554 in view of Song, claims 1-25 in the instant application are not patentably distinct from claims 1-26 of Application No. 18/599,554.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-25 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANNA L BAUER whose telephone number is (571)272-5752. The examiner can normally be reached 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ADAM C MILLIGAN can be reached at (571)270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.L.B./Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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