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 .
Terminal Disclaimer
The terminal disclaimer filed on 05/27/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent issuing from copending application 18620027 has been reviewed (DISQ file on 06/02/2026) and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
The Amendment filed 05/27/2026 has been entered. Applicant’s amendments are in response to in the Non-Final Office Action mailed 05/12/2026. Applicant’s claims have been amended in the following manner: independent claims 1, 12, and 18 have been modified by inclusion of editorial changes (including “all-natural”) that attempt to provide clarity of the claim scope, and introduction of the surfactant ingredients (from now-cancelled claim 4). A new ground of rejection (i.e., 112b rejection) is provided on the basis of the introduction of the term “all-natural”.
The following objections/rejections are withdrawn: claim objections (by amendment), 112(b) rejections (by amendment), and provisional non-statutory double patenting rejection (by terminal disclaimer).
The Examiner further acknowledges the following:
Claims 1-3 and 5-20 are pending.
Claims 1-3 and 5-20 are presented for examination and rejected as set forth below.
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 1-3 and 5-20 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
The term “all-natural” in claims 1, 12, and 18 has an unclear meaning, while the accepted meaning is not completely certain in the Art (see further discussion below). The term is indefinite because the specification does not clearly redefine the term (whereby Applicant is attempting to use the term to provide structural limitations of the composition). There is no specific definition in Applicant’s specification for “all-natural”, except for the “natural oil” examples given for glycerin and tea tree oil [0009] (i.e., even crude oil, herbal extracts, oils, etc. could be considered “all-natural” because they originate from “nature”). In terms of the newly amended “all-natural” modifying term, the Examiner uses the BRI of “all-natural” to include ingredients such as plant extracts, olive oil, crude oil (i.e., crude oil or petroleum is a natural resource), mineral oil, etc. that can be simply processed from plants, animals, or minerals (i.e., there are no “synthetic” components in the ingredients), until further clarification is provided by Applicant via claim limitations. According to the Prior Art, Liu (Arture 2018) demonstrates that the definition of “natural” vs. “natural derived” vs. “natural identical” is not a well settled matter, as shown by an attempt to clarify terms (i.e., “all-natural” is not even considered as a specific term, where Liu’s disclosure provides a representative example of an expert’s knowledge of the Art) (pg 1-3).
All claims that depend from the rejected claims are also rejected.
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.
Claims 1-3 and 5-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wiegland (US20020034489A1), and in further view of Dermalogica Pro UK (The Book, 2012) and Whole Foods (Body Care Ingredients, 2014) and Behr (US20070122492A1).
Applicant’s independent claim 1 is directed to an herbal cleansing shampoo composition, comprising: 40% to 70% by weight water; 2% to 20% by weight of an herbal extract blend component; about 10% to about 40% by weight of a surfactant blend component; and about 1% to about 15% by weight of a natural oil component; wherein the herbal extract component includes three or more of the recited instant extracts.
In consideration of the judicial exceptions under 35 U.S.C. § 101, it is noted that by incorporation of the surfactant in claim 1, the properties of the water (e.g., surface tension) are considered changed with respect to naturally-occurring water, based on what is known to a PHOSITA, regarding surfactant behavior in water.
Applicant amends the independent claims to purposefully recite “all-natural” in order to provide a structural requirement of the ingredients. Note, there is no specific definition in Applicant’s specification for “all-natural”, except for the “natural oil” examples given for glycerin and tea tree oil [0009] (i.e., even crude oil, herbal extracts, oils, etc. could be considered “all-natural” because they originate from “nature”). In terms of the newly amended “all-natural” modifying term, the Examiner uses the BRI of “all-natural” to include ingredients such as plant extracts, olive oil, crude oil (i.e., crude oil or petroleum is a natural resource), mineral oil, etc. that can be simply processed from plants, animals, or minerals (i.e., there are no “synthetic” components in the ingredients), until further clarification is provided by Applicant via claim limitations. According to the Prior Art, Liu (Arture 2018) demonstrates that the definition of “natural” vs. “natural derived” vs. “natural identical” is not a well settled matter, as shown by an attempt to clarify terms (i.e., “all-natural” is not even considered as a specific term) (pg 1-3).
Wiegland teaches a topical cosmetic composition comprising a surfactant phase, an oil phase, and a benefit agent (abstract). Note that Wiegland teaches ringing gel compositions; however, it would be obvious to formulate these compositions of the non-ringing variety (which appear easier to make, as the demands on balancing certain ingredients are not required for non-ringing compositions [0019]) , as Wiegland teaches many types of aqueous shampoo formulations (i.e., general emulsions, microemulsions, dispersions, etc. [0003-0007]) and specifically shampoo (Wiegland – claim 17, [0103]).
Regarding claims 1, 5-6, 12-15, and 18: Wiegland teaches a composition (Wiegland - claim 1) comprising water in 20-50 wt% (Wiegland – claim 12), a benefit agent such as natural extracts [0050], herbal extracts [0052] in 0.01-10 wt% (Wiegland – claim 15), surfactants in 20-45 wt% (Wiegland – claim 14), an oil (Wiegland – claim 6) in 5-40 wt% (Wiegland – claim 9) and finally, incorporation of thickening agents, preservatives, pH adjusting agents, chelating agents, humectants, additives (i.e., “processing aids”), etc. in order to enhance appearance, feel, and fragrance of the final product [0101] such as salts used in 0-10 wt% [0102]. Note the non-limiting description of extracts and oils, and therefore, the obviousness of selecting “natural” extracts and/or oils from natural sources (reads on “all-natural” of the independent claims 1, 12, and 18) [0026, 0091, 0092].
With regard to the numerical ranges, note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)). Wieland makes obvious the combination of one or more benefit agents, surfactants, additives ([0007], See Example 1, pg 9; also note ‘mixtures thereof’ in reference to ingredients throughout claim set [0050-0052, 0101], Wiegland – claims 3, 6, and 10), and thus the combination of one or more ingredients of these cosmetic ingredients is obvious.
In summary, Wiegland teaches the general cosmetic composition and provides motivation for making such a composition. Further note, that Wiegland teaches general ingredient classes:
General incorporation of oils (Wiegland – claim 6) in 5-40 wt% (Wiegland – claim 9) and/or water in no particular amount [0047] but preferably 20-50 wt% (Wiegland – claim 12).
General incorporation of natural extracts [0050] and herbal extracts [0052] in 0.01-10 wt% (Wiegland – claim 15). Other natural benefit agents are noted: antiseptics, antimicrobials [0050].
General surfactant classes of amidoalkyl betaines, fatty acyl taurates, fatty alkyl sulfoacetates, and/or alkyl ether sulfosuccinates (Wiegland – claim 3) in 20-45 wt% (Wiegland – claim 14), including hydroxypropyltrimonium guar [0052, 0061].
General incorporation of thickening agents, preservatives, pH adjusting agents, chelating agents, humectants, additives (i.e., “processing aids”), etc. in order to enhance appearance, feel, and fragrance of the final product [0101] such as salts used in 0-10 wt% [0102]. Thus, a PHOSITA would optimize the amount of these agents to improve performance of the final product.
However, Wiegland does not teach:
the up to 7 total or more instant species of herbal extracts in claim 19, extracted from the specified plant parts (see also instant claims 1-3, 10-12, and 18-19),
the up to 4 total or more instant species of surfactants in claim 6 (instant claims 1 and 5-6),
glycerin (instant claims 7 and 16),
tea tree oil (instant claims 8 and 17), and
the up to 6 total or more instant species of processing aids in claim 20 (instant claims 9, 12, 18, and 20).
Dermalogica Pro UK teaches ingredients commonly used in cosmetics such as shampoos (pg 105). Dermalogica teaches the following ingredients:
Herbal Extracts (8): Ocimum Basilicum, citrus Aurantium amara, Rosmarinus officinalis, Chamomilla recutita (pg 72), Lavandula angustifolia, Artemisia vulgaris, Eugenia caryophyllus, Thymus vulgaris (mostly in ‘ingredient analysis’; pg 207-211).
Surfactants (2): cocamidopropyl betaine (i.e., an amidoalkyl betaine, as taught by Wiegland), sodium cocoyl isethionate (mostly in ‘ingredient analysis’; pg 207-211).
Other (2): glycerin (humectant) (pg 214), tea tree oil (antiseptic, analgesic and/or antibacterial to soothe) (pg 216).
Processing Aids (4): citric acid (preservative, pH adjuster), sodium benzoate (anti-microbial preservative), potassium sorbate (mold yeast inhibitor), pentylene glycol (humectant) (mostly in ‘ingredient analysis’; pg 207-211).
Whole Foods teaches the following ingredients (with reference to shampoos):
Surfactants (5): cetrimonium chloride (quat; but also named as a surfactant by Applicant) (pg 6), guar hydroxypropyltrimonium chloride (quat/conditioning agent) (but also named as a surfactant by Applicant) (pg 12), cocamidopropyl betaine (surfactant) (pg 7), sodium cocoyl isethionate (surfactant) (pg 23), sodium cocoyl methyl taurate (surfactant) (pg 23).
Other (2): glycerin (humectant or solvent) (pg 11), tea tree oil (herb extract) (pg 16).
Processing Aids (3): hydroxypropyl methylcellulose (thickener) (pg 13) and trisodium ethylenediamine disuccinate (chelator) (pg 27), and sodium anisate (active/chelator) (pg 23).
Behr teaches dermatological formulations based on plant extracts, in which these plant extracts provide benefit for treatment or prevention of various dermatological conditions, including hair damage, etc. (abstract). Behr teaches plant extracts to be obtained from leaves, flowers, roots, seeds, pods, stems, fruits, seed coats, buds, and other parts of a plant [0044] (i.e., the plant parts of instant claim 3 are obvious). Behr also demonstrates the obviousness of Ocimum Basilicum (Table 1), Rosmarinus officinalis (Table 2), Lavandula angustifolia [0197], Artemisia vulgaris [0197], and Thymus vulgaris [0197] in dermatological formulations.
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wiegland with the one or more ingredients described by Dermalogica Pro UK, Whole Foods, and Behr, because these are standard ingredients used in cosmetic formulations such as shampoo, where Wiegland generally teaches shampoo formulations, incorporating one or more ingredients from the general classes of ingredients taught by the secondary references. Not only do the secondary references provide individual motivations for each ingredient incorporation (see references for each motivation), but also, they provide the function of the general ingredient classes taught by Wiegland for incorporation (see references for ingredient classes). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Thus, the combine Prior Art teaches a general shampoo formulation, where incorporation of the instant specified ingredients is standard to the cosmetic Prior Art.
Furthermore, while the combined Prior Art demonstrates the obviousness of the required instant plant species botanical extracts, Behr additionally demonstrates the obviousness of plant (i.e., herb) extracts to be obtained from plant parts including the leaves, flowers, roots, seeds, pods, stems, fruits, seed coats, buds, and other parts of a plant [0044, 0158] (reading on instant extracts of claim 19 obtained from leaves, flowers, seeds, buds, etc.) for use in topical cosmetics (abstract).
Response to Arguments
Applicants arguments, see pg 8-13, filed 05/27/2026, with respect to the 103 rejection of claims 1-20 under rejection have been fully considered but they are not persuasive. The 103 rejection has been modified with respect to amendments made to the claim set.
Note that a general recognized theme of the arguments is that the references (especially, Wiegland) are treated piecemeal, which is per se unpersuasive. When Applicant names all of the deficiencies of Wiegland’s teachings compared to the amended claim set, it often ignores the contributions of Dermalogica Pro UK and Whole Foods. It is the combined teachings that define the art. For each individual reference, note that all elements of each prior art reference need not read on the claimed invention, rather, the proper test for obviousness is what the combined teachings would have suggested to a person of ordinary skill in the art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). However, the Examiner will respond to arguments of substance when presented.
On page 9, Applicant argues that Wiegland teaches away from shampoos. This is a per se argument that is not based on evidence. To rebut, Wiegland teaches compositions that are shampoo formulations, as obvious [0103].
On page 9-10, Applicant argues the “primary” “benefit agent” of an anti-acne ingredient [0009] (e.g., zinc pyrithione) is not all-natural. Note that specific embodiments do not define the teachings: “Applicants erroneously point to specific embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).” Note that Wiegland very clearly intends for more than one type of “benefit agent” by the recitation of benefit agent generally (abstract, Wiegland – claim 1), and then listing a multitude of synthetic or natural benefit agents to select from [0051-0093], including a benefit agent such as natural extracts [0050], herbal extracts [0052] in 0.01-10 wt% (Wiegland – claim 15). Thus, it would be obvious to select an “all-natural” or “natural” ingredient, where, in the cosmetic Arts, the benefits of “natural” ingredients is well-known, and Liu (Arture, 2018) discusses the motivation to make “natural” body care products, because the consumer worries about the ingredients being put onto your skin and into your body (pg 1), and therefore, cosmetic products based on natural ingredients sell well.
Furthermore, the argument that a ”benefit agent” must remain deposited on a user’s skin is not a requirement of Wiegland but an observed benefit [0010] that is suitable for application to hair [0010] like a shampoo [0103]. It is unclear how this argument is a demonstration of non-obviousness.
On page 10, Applicant argues that Wiegland teaches oils that are not “all-natural”. This is not correct because Wiegland teaches vegetable oils [0070], cod liver oil [0091], clove oils [0089], oat oil [0055], etc., whereby the oil phase can simultaneously act as a benefit agent [0051]. Furthermore, the oils discussed by Applicant (e.g., maleated soybean oil, mineral oils, triglycerides) are only preferred oils [0044]: “Applicants erroneously point to specific embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).” Thus, Wiegland’s general teaching of the oil phase is non-limiting, including sunflower triglycerides [0044] incorporated into a generic “oil phase” (Wiegland – claim 1), whereby selection of an “all-natural” or “natural” ingredient is obvious.
Furthermore, Dermalogica Pro UK and Whole Foods teach a multitude of “natural” oils (including glycerin and tea tree oil found in Table 1 of Applicant’s Specification [0009, 0022-0023]), whereby rationale for inclusion of these ingredients is included in the 103 rejection above.
On page 10, Applicant argues that the rejection does not teach guar hydroxypropyltrimonium chloride (i.e., the Art teaches hydroxypropyltrimonium guar). Note that Whole Foods specifically teaches guar hydroxypropyltrimonium chloride salt form (quat/conditioning agent) (but also named as a surfactant by Applicant) (pg 12), whereby hydroxypropyltrimonium guar found in Wiegland [0052, 0061] is a generic cation species that can be found in association with various counterions.
On page 10-11, Applicant summaries the position against Wiegland suggesting a hindsight-based cut-and-paste operation: As for the assertion that the rejection is based on hindsight, as noted in MPEP 2145, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). The Examiner has pointed to nothing other than what the art available at the time the instant application was filed to teach or suggest each and every limitation of the invention claimed, and relied on nothing other than the art to rationalize their combination in the manner you put forth.
If Applicant is concerned by selection of certain ingredients over the combined Prior Art, note that 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, even when the possible selections number 1200 or in the thousands. 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). Thus, rationale is provided in the 103 rejection to select the ingredients of the Art for a cosmetic composition.
On page 11, Applicant discusses the use of “Dermalogica Pro UK” as Prior Art. At the time of writing this Office Action, Dermalogica Pro UK 2012 is freely available (at https://education.dermalogica.co.uk/Content/docs/uk_TheBookVolume12-06-02-2017.pdf), based on a google search of “Dermalogica pro uk the book”, consistent with the Examiner’s search notes and the attached publication. Unfortunately, degradation of document resolution is a common occurrence with the Office’s software (both on the Applicant and Examiner side). However, the Examiner will e-mail the publication in question to the Lawyer signed to the remarks page directly, concurrent with this Office Action posting (i.e., if nothing has been sent by the time the Office Action has been received, a call or email can be sent as a reminder). Furthermore, note that cost of a publication (i.e., even judging what would be prohibitively expensive) does not prohibit its use as Prior Art. See MPEP 2128 for guidance on “Printed Publications” as Prior Art.
On page 11-12, Applicant argues Whole Foods does not relate to shampoos. The Examiner notes that the ingredients for products intended body care (i.e., the hair is part of the body and the ingredients listed are commonly used in shampoos), which is reasonably analogous to the instant Application’s shampoo use. Applicant is reminded that the scope of analogous art is to be considered broadly. Wyers v. Master Lock Co., No. 2009-1412, 2010 WL 2901839 (Fed. Cir. July 22, 2010). Art is analogous if it is (1) from the same field of endeavor, regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). Furthermore, as discussed earlier it is the combined teachings of the references that are relevant in an obviousness rejection, whereby Wiegland directly teaches shampoo compositions, as they related to body care [0103], with many ingredients that overlap in function with the list of Whole Foods.
Additionally, Applicant argues that Whole Foods does not declare which ingredients are “all natural.” Note that the characterization of an ingredient as “all natural” is in inherent to a specific ingredient. When the combined Prior Art teaches the relevant instant ingredients, then the selection of those ingredients is obvious, and as a result the composition would be expected to contain all-natural extracts and all-natural oils. Furthermore, Applicant does not specifically define/declare the meaning of “all natural” ingredients in the Specification [0002-0004], which could provide a defined basis to separate “all natural” ingredients from other ingredients, and only points to “natural” oils of glycerin and tea tree oil [0009], which are taught by the Art in cosmetic compositions.
Furthermore, in the cosmetic Arts, the benefits of “natural” ingredients is well-known, and Liu (Arture, 2018) discusses the motivation to make “natural” body care products, because the consumer worries about the ingredients being put onto your skin and into your body (pg 1), and therefore, cosmetic products based on natural ingredients would be desirable to consumers.
On page 12, Applicant discusses the limitations of Behr’s teachings. Behr is only used to teach certain limitations of the instant claim set, as related to natural extracts (see the 103 rejection above).
Correspondence
Applicant's amendment necessitated the new ground of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/R.P./Examiner, Art Unit 1614 7/13/2026
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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