Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11-5-2025 has been entered.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-17 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn.
Election/Restrictions
Newly submitted claims 18-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims are directed to new invention of process, where previous claims are drawn to a composition or product. Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 18-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim Rejections - 35 USC § 102
Claim(s) 1-8 and 11-17 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jamerson (2016/0331675) is withdrawn.
Claim(s) 1-3 and 9-12; 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lucka et al (8,084,409) is withdrawn.
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).
Lucka et al disclose a soap bar composition comprising butters and oils in a microdermabrasion soap (col. 3, lines 1-4). The dispersing agent, which consists of oil and 0.3 to 1.1 butter components, comprises in total 0.5 to 3.5% of the bar composition. (col. 4, lines 55- 65) and wherein the vegetable oil components include coconut, aloe vera and palm oils (col. 6, lines 34-44) and that the vegetable butters include cocoa butter and shea butter (col. 7, lines 18-42) and in addition essential oils may be employed also additional moisturizing agents in an amount from 0.1 to 5% (col. 8, lines 18-31). See examples 1 and 2.
Lucka et al do not teach with specificity to anticipate the claims, however, one skilled in the art would have been motivated to arrange the well-known butters and oils in the requisite proportions to suggest the claimed soap bar given that Lucka et al teach and require each of the ingredients for the purpose of producing applicant’s invention, in the absence of a showing to the contrary.
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 Lucka 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 Lucka 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.
Specifically, Lucka et al does not suggest proportions of fat butters 20-40% or in a ratio of 5:1 soft to hard.
McCarthy et al is relied upon as set forth above. Specifically, McCarthy et al teach that said saponified oils, which includes butters, are utilized at levels up to 50% (0008).
It would have been obvious to the skilled artisan to optimize the amount of butter or saponified oils of to influence hardness or softness of the soap product, cleansing ability fluffy lather and skin care qualities (0033). Therefore, in the absence of a showing to the contrary, commensurate in scope with the claimed invention, one skilled in the art would expect similar results by increasing the butter fats up to 50% and/or obtaining a ratio of 5:1 of soft butter to hard. “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); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQad 1362 (Fed. Cir. 1997).
Response to Arguments
Applicant's arguments filed 11-5-2025 have been fully considered but they are not persuasive.
Applicant argues that Lucka does not teach the proportion of 20% butters or the 5:1 ratio as claimed in claim 1 and 8.
First, Lucka et al would have been prima facie obvious to optimize the proportions to 20% with the expectations of increasing the feel or softness of said moisturizing butter ingredients since that is the characteristics of known butters for their similar effects and absent a showing to the contrary, commensurate in scope with the claimed invention.
Applicant argues that McCarthy et al would not increase the ratio and proportions of butter fat to the compositions of Lucka et al in light of their abrasive nature.
The examiner contends and respectfully disagrees and suggest that ingredients within the McCarthy et al reference can be utilized for all of their intentions and one skilled in the art utilizing butters in high quantities in bar form would have been prima facie obvious towards Lucka et al also in bar form utilizing similar moisturizers for personal usage and optimizing said ingredients for their intend effects, absent a showing to the contrary commensurate in scope with the claimed invention.
“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); In re 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).
[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
Applicant argues that Lucka teaches away from using butters in “high” amounts.
The examiner contends that the term “high” is relative and one skilled in the art in the absence of a showing to the contrary would not ascertain “high” as 5%. Furthermore, the broad terminology of the claimed “butters” can encompass a plethora of ingredient suggested within the prior art from oils, moisturizers to butter components within Lucka. Therefore embodiments with 5% moisturizers, oils, dispersants and butters may all read upon applicant’s “butters” definition which aid as emollients or moisturizing the solid composition.
In response to applicant's argument that Lucka and McCarthy are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both references are directed toward solid cleansing personal compositions and the broadly defined comprehensive claim 1 does not differentiate between “solid” enables the prior art of both references to be combinable. Furthermore, with composition claims, once the utility and components are suggested in the prior art, the intended use of said claim is given little patentable weight.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761