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 .
Priority
The present application claims the benefit of Provisional US application 63469864 filed 05/31/2023.
Status of the Application
Receipt is acknowledged of Applicant’s claimed invention, filed 03/28/2024, in the matter of Application N° 18/619,896. Said documents have been entered on the record. The Examiner further acknowledges the following:
Claims 1-20 are pending.
Claims 1-20 are presented for examination and rejected as set forth below.
Claim Objections
Claims 1-3, 12, and 18-19 are objected to because of the following informalities: “ocimum” appears misspelled throughout, as ocmium. Appropriate correction is required.
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 1-20 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.
Claims 1, 10-15, and 18 recite the term “about” to describe numerical values, which is indefinite because it is an imprecise definition of a value (i.e., no suitable definition of “about” is found in the Specification to consistently define the term). The Examiner suggests “about” should be removed and considers the claim values as if the term “about” was not present. See MPEP 2173.05(b)(i).
All claims that depend from claim 1 are also rejected.
In Claims 1, 10-15, and 18, recite ingredient amounts as “% by weight” but it is unclear what the wt% is based on (i.e., no suitable explanation of “% by weight” in relation to what weight is found in the Specification). Therefore, the claims should be clarified to be based “on the total weight of the composition” or something to that effect.
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 1-20 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.
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]).
Regarding claims 1, 4-6, 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].
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 4-6),
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).
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over, and in further view of Wiegland (US20020034489A1):
claims 1-3, 5-16, and 18-20 of copending Application No. 18/620,027 (reference application)
Although the claims at issue are not identical, they are not patentably distinct from each other because all claim sets teach very similar compositions, expect that the ingredient amounts may slightly differ, and also the intended use.
This is remedied by Wiegland, who teaches broader ingredient ranges for the class of ingredients (that encompass the instant ranges) as obvious, and for different hair treatment purposes. Notably, there is no limitation to water amount [0047, 0100] and oil component may range 5-40 wt% (Wiegland – claim 9), whereby the surfactant (or aqueous phase would be 60-95 wt%). Furthermore, processing agents are used in amounts that are effective [0101] such as salts used in 0-10 wt% [0102]. One of ordinary skill in the art would have been motivated to modify the teachings of copending ‘027 because the broader ingredient ranges that encompass both Applications are made obvious by Wiegland.
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-5p EST (M-Th).
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/R.P./Examiner, Art Unit 1614 5/4/2026
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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