Response to Amendment
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention presented by original presentation, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5-11-2026.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCarthy et al (2016/0108347).
McCarthy et al disclose an organic soap cleaning composition comprising one or more saponified oils, soapberries and sodium carbonate (0005) and in bar form (0034). The compositions may comprise up to 100% of saponified oils (0008), where the oils include plant-based vegetable oils such as cocoa butter, coconut oil, illipe butter, palm oil, shea butter and mixtures thereof (0030). Additionally, essential oils may be incorporated (0040). McCarthy et al do not suggest a ratio of hard butter to soft butter at 5:1, and it would have been obvious in the absence of a showing to the contrary commensurate in scope with the claimed invention.
With respect to the process limitation of pelletizing the ingredients to bar form, the examiner takes the position that this a process limitation where the product claims controls in the product by process structure. The form of the final composition is a bar and suggested by McCarthy et al but lacks a teaching of the intermediate process. Therefore, the burden of proof rest with applicant to show that the final bar of McCarthy et al is different from those of the claimed invention.
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.
Accordingly, It has been held that optimization of ranges is obvious when predictable results would have been obtained.
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); Inre Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Claim 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lucka et al (8,084,409) in view of McCarthy et al (2016/0108347) is withdrawn.
Response to Arguments
Applicant's arguments filed 11-5-2025 have been fully considered but they are not persuasive.
Applicant argues that para 0033-0034 do not suggest a bar soap and are not instructive of the claimed invention.
The examiner contends and respectfully disagrees and directs applicants attention to the paragraphs in question (0033-0034) where McCarthy et al clearly teaches that [0032] One of ordinary skill in the art would appreciate that the ingredients, such as the oil and the alkali, used in the saponification process can influence the characteristics of the presently disclosed cleaning/detergent composition, formulation, or solution. Such characteristics can include, but are not limited to, hardness or softness of the soap product, cleansing ability, fluffy lather, stable lather, stability in solution, and, in some embodiments, skin care qualities.
[0033] For example, coconut oil provides a stable solution with excellent cleaning ability and a fluffy, but unstable, lather, whereas palm oil also provides excellent cleaning ability, but, in contrast to coconut oil, provides a stable, but not fluffy, lather. Olive oil contains natural antioxidants and creates a creamy lather, whereas beef tallow forms a firm, white bar and creates a stable lather.
[0034] Further, potassium hydroxide can be used to prepare a soft soap or liquid soap due to its greater solubility, whereas sodium hydroxide can be used to prepare a bar soap. In some embodiments, any residual or excess alkali can be removed to decrease the harshness, irritability, and/or potential toxicity of the soap.
Applicant argues that the “up to 100%” of saponified oils lacks enablement.
The examiner would like to suggest that the wording of up to 100% has been allowed in Patent No. 9447336, of which the present application publication, 2016/0108347, relied upon is prior publication data.
Applicant argues that McCarthy et al do not provide a rationale for optimization nor a reason or expectation of success.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, The examiner contends that It has been held that optimization of ranges is obvious when predictable results would have been obtained and since McCarthy et al teach the specific oils, the use of a bar for purposes of cleansing and a broad range of up to 100%, one skilled would have been motivated to combine anyone of the specific oils in an amount to suggest the claimed invention of commercially producing a cleansing bar for its’ intended purposes. Applicant has not shown any criticality to the contrary, commensurate in scope with the claimed invention.
Applicant suggest “unexpected results” are suggested.
The examiner contends that statements within the specification that do not provide evidence against the prior art are not considered unexpected results.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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, Angela Brown Pettigrew can be reached at 571-272-1498. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761
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