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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/11/2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/10/2025 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Status of the Claims
This action is in response to papers filed 11/11/2025 in which claims 2 and 9-12 were canceled; and claims 1 and 22 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1, 3-8 and 13-24 are under examination.
Withdrawn Objection/Rejections
The objection to claim 12 for informality, is withdrawn, in view of Applicant’s cancellation of said claim 12.
The rejection of claims 1, 3-7, 10-16, and 24 under 35 U.S.C. 103 as being unpatentable over Cetti et al (29 July 2009; US 2009/0029900 A1) in view of Soffin et al (9 November 2006; US 2006/0252662 A1; cited in IDS filed 08/27/2024), is withdrawn, in view of Applicant’s amendment to claim 1, which had necessitated the New Matter rejection below. Thus, Applicant’s arguments in the Remarks filed 11/11/2025 are hereby moot. However, if the new matter material was to be removed in response to the new matter rejection as set forth below, this 103 rejection may be reinstated.
The rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Cetti et al (29 July 2009; US 2009/0029900 A1) in view of Soffin et al (9 November 2006; US 2006/0252662 A1), as applied to claims 1 and 6 above, and further in view of Frantz et al (25 September 2003/0180246 A1), is withdrawn, in view of Applicant’s amendment to claim 1, which had necessitated the New Matter rejection below. Thus, Applicant’s arguments in the Remarks filed 11/11/2025 are hereby moot. However, if the new matter material was to be removed in response to the new matter rejection as set forth below, this 103 rejection may be reinstated.
The rejection of claims 17-23 under 35 U.S.C. 103 as being unpatentable over Cetti et al (29 July 2009; US 2009/0029900 A1) in view of Soffin et al (9 November 2006; US 2006/0252662 A1), as applied to claim 1 above, and further in view of Kitko et al (18 June 2009/ US 2009/0155383 A1), is withdrawn, in view of Applicant’s amendment to claim 1, which had necessitated the New Matter rejection below. Thus, Applicant’s arguments in the Remarks filed 11/11/2025 are hereby moot. However, if the new matter material was to be removed in response to the new matter rejection as set forth below, this 103 rejection may be reinstated.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
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, 3-8 and 13-24 are 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 introduces new matter as the claim recite the limitation: the anionic surfactant or combination of anionic surfactants are free of sulfates. There is no support in the specification for this limitation.
Applicant asserted that “[s]upport for this amendment is found in the specification at page 12, lines 6-7 disclosing sodium lauryl sarcosinate, sodium lauroyl sarcosinate, lauryl sarcosine, cocoyl sarcosine, ammonium cocoyl sulfate; page 13, lines 9-16 disclosing anionic alkyl and alkyl ether sulfosuccinates and/or dialkyl and dialkyl ether sulfosuccinates and mixtures thereof. The dialkyl and dialkyl ether sulfosuccinates may be a C6-15 linear or branched dialkyl or dialkyl ether sulfosuccinate. The alkyl moieties may be symmetrical (i.e., the same alkyl moieties) or asymmetrical (i.e., different alkyl moieties). Nonlimiting examples include: disodium lauryl sulfosuccinate, disodium laureth sulfosuccinate, sodium bistridecyl sulfosuccinate, sodium dioctyl sulfosuccinate, sodium dihexyl sulfosuccinate, sodium dicyclohexyl sulfosuccinate, sodium diamyl sulfosuccinate, sodium diisobutyl sulfosuccinate, linear bis(tridecyl) sulfosuccinate and mixtures thereof. This disclosure includes alkyl chain of less than C12: sodium dioctyl sulfosuccinate, sodium dihexyl sulfosuccinate and one that's short and branched: sodium diisobutyl sulfosuccinate and sodium diamyl sulfosuccinate. The dialkyl and dialkyl ether sulfosuccinates may be a C6-15 linear or branched dialkyl or dialkyl ether sulfosuccinate which provides support for a branched alkyl chain which is sulfate free.” (Remarks filed 11/11/2025, page 5).
However, after a thorough review of said page 12, lines 6-7 and page 13, lines 9-16, as well as, throughout the specification, there appeared to be no support the entire genus breadth of anionic surfactant or combination of anionic surfactants to be free of sulfates. It is noted that nowhere in page 12, lines 6-7 and page 13, lines 9-16 of the specification does it recites that anionic surfactant or combination of anionic surfactants can be free of sulfates. In fact, all the Examples on pages 46-56 of the specification contains sulfate based anionic surfactants. While page 12, lines 6-7 and page 13, lines 9-16 provided a handful of species of anionic surfactants that are not sulfate based or does not contain sulfates, these short list of species are not support for the entire genus of “anionic surfactant or combination of anionic surfactants to be free of sulfates” as claimed. This is because the genus of “anionic surfactant or combination of anionic surfactants to be free of sulfates” include anionic surfactants such as (but not limited to) sodium lauroyl lactylate, sodium methyl cocoyl taurate, sodium cocoyl glutamate, and disodium cocoyl glutamate, which are sulfate-free anionic surfactants that not disclosed or supported in Applicant’s specification. Thus, Applicant does not have possession of the entire claimed genus of “anionic surfactant or combination of anionic surfactants to be free of sulfates.”
Claims 3-8 and 13-24 are also rejected as they depend directly or indirectly from claim 1, thereby also containing the new matter material.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 1 as amended at the time of filing of the instant application.
Maintained Rejections
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-8 and 13-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11291616.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘616 significantly overlap with the subject matter of the instant claims, i.e., a composition comprising (a) from about 14% to about 40% of one or more surfactants wherein one or more of the surfactants is an anionic surfactant or combinations of anionic surfactants; and from about 0.1% to about 10% of one or more surfactant soluble agents, wherein when the composition is diluted to about 1% surfactant concentration, it has a ratio of surfactant diffusion coefficient to soluble agent diffusion coefficient of greater than 1.2.
While the claims from the instant application define the surfactant soluble agents as having a ClogP greater than 3.0, it is however, noted that the instant specification further defines the surfactant soluble agents as encompassing anti-dandruff agents such as piroctone olamine, and azoles such as climbazole (instant specification, pages 6-8), which are the same surfactant soluble agents as recited in claims 6-9 of the Patent ‘616.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over U.S. Patent No. 11291616.
Claims 1, 3-8 and 13-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-22 of copending Application No. 17/694,270.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application '270 significantly overlap with the subject matter of the instant claims, i.e., a composition comprising (a) from about 14% to about 40% of one or more surfactants wherein one or more of the surfactants is an anionic surfactant or combinations of anionic surfactants; and from about 0.1% to about 10% of one or more surfactant soluble agents, wherein when the composition is diluted to about 1% surfactant concentration, it has a ratio of surfactant diffusion coefficient to soluble agent diffusion coefficient of greater than 1.2.
While the claims from the instant application define the surfactant soluble agents as having a ClogP greater than 3.0, it is however, noted that the instant specification further defines the surfactant soluble agents as encompassing anti-dandruff agents such as piroctone olamine, and azoles such as climbazole (instant specification, pages 6-8), which are the same surfactant soluble agents as recited in claims 6-9 of the copending application ‘270.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over copending Application No.: 17/694,270.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 11/11/2025 have been fully considered but they are not persuasive.
Applicant argues by requesting the double patenting rejections be held in abeyance until the current claims are in allowable form and the double patenting rejection is the only remaining rejection. (Remarks, page 14)
In response, it is noted that Applicant's request to hold the double patenting rejection in abeyance is not a proper response because a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP § 37 CFR 1.111(b) and 714.02).
Accordingly, the double patenting rejections are maintained for reasons of record and pending the filing of a terminal disclaimer.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613