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 .
DETAILED ACTION
Claims 1-6, 9, 10, and 13-16 are under consideration.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16, drawn to aqueous compositions comprising an acyl taurate surfactant and an amphoteric surfactant in a ratio of about 0.5 to 2:1 in the reply filed on May 29, 2026 is acknowledged.
Applicant’s election without traverse of the species “sodium lauroyl taurate,” “cocamidopropyl betaine,” and a shampoo reading on claims 1-16 is acknowledged. The Examiner notes the election does not read on claims 7, 8, 11 and 12.
Claims 7, 8, 11, 12 and 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-6, 9, 10, and 13-16 as filed on May 29, 2026 are pending and under consideration to the extent of the elected species, e.g., the species of detersive surfactant is sodium lauroyl taurate, the species of amphoteric co-surfactant is cocamidopropyl betaine, and the composition is in the form of a shampoo.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 21, 2024, August 27, 2024 and June 11, 2026 were considered.
Consideration by the examiner of the information submitted in an IDS means nothing more than considering the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.
Specification
The disclosure is objected to because of the following informalities: page 3, line 6, desirable is misspelled. Appropriate correction is required.
Claim Objections
Claims 1, 3, 4 and 13-16 are objected to because of the following informalities:
Claim 1 b): “a ratio” is properly “the ratio” because antecedent basis is implicit.
Claim 1 b) recites a ratio without providing a basis for the determination thereof, e.g., by weight consistent with the disclosure at page 4, line 6.
Claims 3, 4: “the amphoteric surfactant” should presumably reference “the amphoteric co-surfactant” consistent with the antecedent in claim 1.
Claims 13-16: the preamble should recite “The personal care composition of claim” consistent with claims 2-12, or vice versa.
Claim 16 recites a percentage without providing a basis for the determination thereof, e.g., by weight.
Appropriate correction is required.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of 35 U.S.C. 112 (pre-AIA ). See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/489023, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph for one or more claims of this application.
While the prior-filed application discloses a blender lather height (e.g., pages 11-12), the prior-filed application does not disclose a lather robustness test as required by claim 2.
The prior-filed application does not disclose all of the surfactants of claim 4.
The earliest date potentially available to these claims is March 8, 2024.
Claim Rejections - 35 USC § 112(b)
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 2 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 pre-AIA the applicant regards as the invention.
Claim 2 recites “the Lather Robustness Test. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites less than a 55% decrease in lather. It is unclear what baseline is employed for the determination of the percentage. While the instant specification at page 13 discloses a specific protocol for measuring lather as a function of water hardness, the claimed method is broader than the disclosed method and therefore the specification fails to remedy the noted ambiguity.
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.
Claims 1-6, 9, 10 and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu et al. (CN 114010520 A, published February 8, 2022, as evidenced by the Google translation, IDS references filed August 27, 2024 and as evidenced by the Google image translations).
Regarding claims 1, 3, 4, 9, 10
Xu teaches personal care compositions comprising 2 to 25 wt% of N-alkanoyl taurate, preferably cocoyl or lauroyl, and 0.5 to 15 wt% of amphoteric surfactant, preferably cocamidopropyl betaine (title; abstract; claims, in particular 1-4). Xu exemplifies an embodiment of an aqueous composition comprising (Table 1):
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wherein the ratio of sodium cocoyl taurate (detersive surfactant, alternative of sodium lauroyl taurate) to cocamidopropyl betaine (amphoteric co-surfactant) is 15:10 or 1.5:1. Personal care compositions include shampoo (page 2, 1st full paragraph under “Background”).
Regarding claim 2
Regarding the less than 55% decrease in lather according to the Lather Robustness Test, Xu exemplifies an embodiment of an aqueous composition in Table 1 having a decrease in lather of (780-1150)/1150 ~= 32% over 5 minutes. Additionally or/and alternatively, because Xu is in possession of and anticipates compositions as instantly claimed, the compositions of Xu must also be characterized by a less than 55% decrease in lather because a chemical composition and its properties are inseparable. See MPEP 2112.01 II.
Regarding claims 5, 6, 15
Xu teaches the compositions may further comprise one or more of a non-sulfate anionic surfactant (free of sulfated surfactants as embraced by the definition of substantially free at page 5 of the instant specification), a nonionic surfactant and a cationic polymer (claim 6).
Regarding claim 13
Xu teaches the compositions may further comprise one or more of a benefit agent, pH adjuster and preservative (claim 10).
Regarding claim 14
Xu teaches pH regulators include salicylic acid (anti-dandruff agent) (paragraph bridging pages 3 and 4).
Regarding claim 16
Xu teaches cationic polymers include polyquaternium-10 (polymer having weight average molecular weight and charge density as instantly claimed as evidenced by line 34 of page 10 of the instant specification) (claim 9). Xu exemplifies an embodiment of an aqueous composition comprising (Table 2):
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386
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The above teachings therefore anticipate the claims.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6, 9, 10 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN 114010520 A, published February 8, 2022, as evidenced by the Google translation, IDS references filed August 27, 2024 and as evidenced by the Google image translation) in view of Geary et al. (US 2004/0157754, published August 12, 2004).
Xu is applied herewith under a different interpretation of claim 16 in the interest of compact prosecution
The teachings of Xu have been described supra with regard to the anticipation of claims 1-6, 9, 10 and 13-16. Claims 1-6, 9, 10 and 13-16 are therefore also obvious over Xu.
While Xu teaches cationic polymers inclusive of polyquaternium-10, Xu does not specifically teach the cationic polymers have a weight average molecular weight of about 50 kDa to about 5 MDa and a charge density of about 0.2 to 12 meq/g as required by claim 16.
This deficiency is made up for in the teachings of Geary.
Geary teaches improved shampoo compositions comprising a detersive surfactant and at least 0.05 wt% of a cationic polymer having a molecular weight of from about 10,000 to about 10,000,000 and a charge density of from about 1.4 to 7.0 meq/gm (title; abstract; claims). Cationic polymers include cellulose polymers inclusive of polyquaternium 10 having molecular weight of 1,250,000 and a charge density of 1.9 (claim 5; paragraph [0060]; Examples).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute cationic polymers inclusive of polyquaterium 10 inclusive of those having a molecular weight of 1,250,000 Da and a charge density of 1.9 meq/g as taught by Geary for the cationic polymers in the compositions of Xu simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. There would be a reasonable expectation of success because Xu embraces polyquaterium 10 as suitable cationic polymers.
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 1-6, 9, 10 and 13-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-10, 12 and 14-21 of copending Application No. 17/960,867 in view of Xu et al. (CN 114010520 A, published February 8, 2022, as evidenced by the Google translation, IDS references filed August 27, 2024 and as evidenced by the Google image translation) and Geary et al. (US 2004/0157754, published August 12, 2004).
The instant claims are drawn to aqueous compositions comprising an acyl taurate and an amphoteric co-surfactant in a ratio of about 0.5:1 to 2:1. The compositions may exhibit less than a 55% decrease in lather. The amphoteric co-surfactant may be a betaine such as cocamidopropyl betaine. The compositions may further comprise a non-ionic surfactant or an anionic co-surfactant or an anti-dandruff agent inclusive of zinc pyrithione or/and salicylic acid. The acyl taurate may be a C8-C24 acyl taurate such as a lauroyl (C12) taurate. The compositions may be substantially free of sulfated surfactants. The compositions may further comprise about 0.05 to 3% of a cationic polymer having an average MW of about 50 kDa to 5 MDa and a charge density of about 0.2 to 12 meq/g.
The copending claims are drawn to shampoo compositions comprising a) 3 to 15 wt% of an anionic surfactant substantially free of sulfated surfactants, inclusive of salts of taurates b) 3 to 15 wt% of an amphoteric surfactant, wherein the ratio of the anionic surfactant to the amphoteric surfactant is less than 2:1, and c) 0.01 to 2 wt% of a cationic polymer inclusive of polyquaternium-10, wherein the polymer has a charge density of 2.3 to 10 meq/g. The compositions may further comprise an anti-dandruff agent inclusive of zinc pyrithione.
The copending claims differ from the instant claims with respect to the recitation of water, the species of taurates, the species of amphoteric surfactants, the additional nonionic surfactant, and the MW of the polymer. However, these differences are bridged by the teachings of Xu and Geary as described supra. In view of Xu, it would have been obvious to modify the shampoo compositions of the copending claims to comprise an aqueous carrier because such is suitable for shampoos comprising taurate surfactants and amphoteric surfactants, it would have been obvious to substitute species of taurate surfactants inclusive of sodium cocoyl taurate or/and sodium lauroyl taurate and species of amphoteric surfactants inclusive of betaines inclusive of cocamidopropyl betaine because simple substitution of functionally equivalent elements yields predictable results, and it would have been obvious to modify the compositions of the copending claims to further comprise nonionic surfactants because such is suitable for shampoos comprising taurate surfactants and amphoteric surfactants. In view of Geary, it would have been obvious that cationic polymers inclusive of polyquaterium-10 have MW from about 10,000 to 10,000,000 Da. Regarding the property of lather, because the copending claims in view of the prior art render obvious compositions as instantly claimed, it is presumed that these compositions also possess the instantly claimed property because a chemical composition and its properties are inseparable. See MPEP 2112.01 II.
This is a provisional nonstatutory double patenting rejection.
Claims 1-6, 9, 10 and 13-16 are directed to an invention not patentably distinct from claims 1-3, 7-10, 12 and 14-21 of commonly assigned Application No. 17/960,867. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 17/960,867, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-6, 9, 10 and 13-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/599698
in view of Xu et al. (CN 114010520 A, published February 8, 2022, as evidenced by the Google translation, IDS references filed August 27, 2024 and as evidenced by the Google image translation) and Geary et al. (US 2004/0157754, published August 12, 2004).
The instant claims have been described supra.
The copending claims are drawn to aqueous compositions comprising an acyl taurate, an N-alkyl acyl taurate (anionic co-surfactant) and a co-surfactant. The acyl taurate may be a C8-C24 acyl taurate such as a lauroyl (C12) taurate. The co-surfactant may be cocamidopropyl betaine or/and decyl glucoside (nonionic). The compositions may further comprise an anti-dandruff agent inclusive of zinc pyrithione or may be substantially free of sulfated surfactants. The copending claims are also drawn to aqueous compositions comprising an acyl taurate and a cationic polymer. The cationic polymer may have an average MW of about 50 kDa to 5 MDa and a charge density of about 0.2 to 12 meq/g. The compositions may further comprise a co-surfactant inclusive of cocamidopropyl betaine or/and decyl glucoside (nonionic).
The copending claims differ from the instant claims with respect to the recitation of the ratio and the amount of cationic polymer. However, these differences are bridged by the teachings of Xu and Geary as described supra. In view of Xu, it would have been obvious to modify the aqueous compositions of the copending claims to comprise suitable amounts and ratios of the acyl taurate surfactant, e.g., 2 to 25 wt%, and the cocamidopropyl surfactant, e.g., 0.5 to 15 wt%, in order to formulate a shampoo. In view of Geary, it would have been obvious to modify the aqueous compositions of the copending claims to comprise suitable amounts of the cationic polymer, e.g., greater than 0.05 wt%, in order to formulate a shampoo. Regarding the property of lather, because the copending claims in view of the prior art render obvious compositions as instantly claimed, it is presumed that these compositions also possess the instantly claimed property because a chemical composition and its properties are inseparable. See MPEP 2112.01 II.
This is a provisional nonstatutory double patenting rejection.
Claims 1-6, 9, 10 and 13-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/407,173 in view of Xu et al. (CN 114010520 A, published February 8, 2022, as evidenced by the Google translation, IDS references filed August 27, 2024 and as evidenced by the Google image translation) and Geary et al. (US 2004/0157754, published August 12, 2004).
The instant claims have been described supra.
The copending claims are drawn to aqueous compositions comprising an acyl taurate or/and an N-alkyl acyl taurate (anionic co-surfactant) and an amphoteric surfactant. The acyl taurate may be lauroyl taurate. The amphoteric surfactant may be a betaine. The compositions may further comprise a nonionic surfactant. The ratio of acyl taurate to amphoteric surfactant may be about 1:1 to about 2:1.
The copending claims differ from the instant claims with respect to the species of betaine, the anti-dandruff agent and species thereof, and the cationic polymer. However, these differences are bridged by the teachings of Xu and Geary as described supra. In view of Xu, it would have been obvious to substitute species of betaines inclusive of cocamidopropyl betaine because simple substitution of functionally equivalent elements yields predictable results and it would have been obvious to modify the compositions of the copending claims to further comprise pH regulators inclusive of salicylic acid (anti-dandruff agent) or/and cationic polymers inclusive of polyquaterium-10 because such is suitable for shampoos comprising taurate surfactants and amphoteric surfactants inclusive of betaines. In view of Geary, it would have been obvious to modify the aqueous compositions of the copending claims in view of Xu to comprise suitable amounts of the cationic polymer inclusive of polyquaternium-10 having a molecular weight of 1,250,000 Da and a charge density of 1.9 meq/g, e.g., at least 0.05 wt%, in order to formulate a shampoo. Regarding the property of lather, because the copending claims in view of the prior art render obvious compositions as instantly claimed, it is presumed that these compositions also possess the instantly claimed property because a chemical composition and its properties are inseparable. See MPEP 2112.01 II.
This is a provisional nonstatutory double patenting rejection.
Claims 1-6, 9, 10 and 13-16 are directed to an invention not patentably distinct from claims 1-20 of commonly assigned Application No. 19/407,173. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 19/407,173, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Huang et al. (CN 116035933 A, IDS references filed June 21, 2024) teaches personal cleaning care compositions comprising a mixture of alkanoyltaurates and methylalkanoyltaurates in a ratio of 9:1 to 1:9 (title; abstract; claims, in particular 2-11).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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