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 .
Claim Objections
Claim 1 is objected to because of the following informalities: “first and second” in the antepenultimate line should be recited as --- the first and the at least one second ---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “amphoteric” in the antepenultimate line should be recited as --- the first and the at least one second ---. Appropriate correction is required.
Claim Interpretation
The term “chosen from”, absent evidence to the contrary, has been interpreted by the Examiner to mean “comprising” based on para. [0022] of the instant Specification.
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 and 18 recite the limitation "sulfo-derived" in line 3 and 4, respectively. The claims are indefinite because the scope of the claims is unclear. It is not clear which structures are intended to be encompassed by the term “derived”, which encompasses an unknown number of compounds obtained from an unknown number of possible chemical reactions from another compound (including compounds whose structure is far from the starting element), functional derivatives (such as compounds in which heteroatoms are replaced by other atoms), compounds with many different types of lateral group, and so on. However, there is no clear definition of the extent to which compounds according to claims 1 and 18 can be modified while still being consider “derived”. Moreover, it is also possible that sulfo-derivatives can be converted into sulfates or vice versa, which is excluded from the claims. At best, para. [00142] of the instant Specification suggests that sulfo-derived surfactants include surfactant compounds containing a sulfonate group. To obviate this issue, it is suggested for the claims to recite specific compound classes.
Claims 4-13 and 19-20 are rejected as they depend from claims 1 or 18 and do not further clarify the scope of the claims as discussed above.
Claims 1, 8, 14, and 18 recite the term “essentially free”. The claims are indefinite because the scope of the claims is unclear. It is not clear which amounts are encompassed by the term “essentially.” At best, para. [00141] of the instant Specification notes that essentially free may mean there is less than about 2% by weight of a specific material in the composition. However, para. [00141] does not appear to be a specific definition. Similarly, para. [00131] notes about may be +/- 10% or +/- 5%, thus there is a lack of clarity on which range is meant to be encompassed by the term “essentially” such that one of ordinary skill in the art would know when an amount of a material infringes on the claimed invention. To obviate this issue, it is suggested for the claims to recite specific threshold amounts that would define a composition as essentially free of a material.
Claims 2-7, 9-13, 15-17, and 19-20 are rejected as they depend from claims 1, 14, or 18, and do not further clarify the scope of the claims as discussed above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-12, and 18-20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Fernandes (WO 2015/013782 A1, 02/05/2015, IDS reference).
Regarding claims 1, 2, 4-7, 9, 10, and 19, Fernandes discloses an exemplary hair composition for cleansing the hair, comprising: 3.6% wt. disodium laureth sulfosuccinate; 1.2% wt. sodium lauroyl sarcosinate; 1.2% wt. cetyl betaine; 0.45% wt. lauryl betaine; 3.6% wt. cocobetaine; 0.48% wt. polyquaternium-10; 2% wt. PEG-150 distearate; and water (p. 27, lines 10-12).
As noted by para. [0073] of the instant Specification, cetyl betaine, lauryl betaine, and cocobetaine are amphoteric surfactants.
As such, Fernandes anticipates the instant claims where the embodiment cited above has amounts that fall within the instantly claimed ranges for each component.
Regarding claim 8, the composition of Fernandes does not comprise cocoamidopropyl betaine.
Regarding claim 11, As noted by para. [0082] of the instant Specification, PEG-10 distearate is an alkyl and polyalkyl esters of poly(ethylene oxide) suitable as nonionic surfactant. Accordingly, Fernandes anticipates the claim by reciting 2% wt. of PEG-150 distearate.
Regarding claim 12, as noted by para. [0098] of the instant Specification, polyquaternium compounds are cationic conditioning agents.
Regarding claims 18 and 20, as discussed above, Fernandes discloses a composition for cleansing hair (i.e. shampoo). Accordingly, applying the composition and rinsing from hair would flow naturally from such teaching.
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 Fernandes (WO 2015/013782 A1, 02/05/2015, IDS reference).
An exemplary embodiment of Fernandes is discussed above. While Fernandes is believed to support a finding of anticipation, purely arguendo, for the purposes of complete prosecution, and for the purposes of this ground of rejection only, Fernandes will be interpreted as though it does not anticipate the claims as discussed above.
Regarding claims 1, 4, 5, 7, Fernandes discloses compositions comprising one or more anionic surfactants selected from: sulfonate surfactants (abs) including alkyl sulfonates, α-olefin sulfonates and corresponding salts, the alkyl and acyl groups comprising 6 to 30 carbon atoms (p. 3, lines 9-14); carboxylate surfactants including sodium lauroylsarcosinate (p. 5, lines 16-26); and cetylbetaine (abs). The composition may comprise 0.1-15% by weight of one or more additional amphoteric surfactants (p. 9, lines 27-28) including cocobetaine (p. 7, lines 2-7), and may also comprise water (p. 25, line 8). The anionic surfactant(s) may be 0.1-15% by weight of the composition (p. 5, line 28); and the cetylbetaine may be 0.1-15% by wt. of the composition (p. 6, line 23). The compositions comprise less than 1% by weight of sulfate anionic surfactants (p. 6, lines 9-10). Exemplary sulfonate anionic surfactant includes (C12-C20) alkyl sulfosuccinates (p. 4, lines 6-7).
Together these would provide compositions as instantly claimed. The prior art is not anticipatory insofar as this combination must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claims 1 and 10 reciting a weight ratio of the total amount of first and second anionic surfactants to the total amount of amphoteric surfactant(s), as discussed above, it would have been obvious to one of ordinary skill in the art to have selected an amount of anionic surfactant(s) and an amount of cetylbetaine with or without additional amphoteric surfactants, such that the amounts selected would have equated to a ratio that overlaps with the claimed ratio, thus making the claimed ratio obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 2, as discussed above, Fernandes discloses wherein the anionic surfactants comprise alkyl sulfonates wherein the alkyl and acyl groups comprising 6 to 30 carbon atoms (i.e. C6-C30). Accordingly, the claimed ranges of carbon atoms would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. See MPEP § 2144.05(I).
Regarding claim 3, as discussed above, Fernandes discloses wherein the anionic surfactants comprise α-olefin sulfonates wherein the alkyl and acyl groups comprising 6 to 30 carbon atoms (i.e. C6-C30). Accordingly, the claimed ranges of carbon atoms would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. See MPEP § 2144.05(I).
Regarding claims 4-5, as noted by para. [0049] of the instant Specification, sodium lauroyl sarcosinate is an acyl sarcosinate, suitable as instantly claimed component (a)(ii).
Regarding claim 6, as discussed above, Fernandes disclose wherein anionic surfactant(s) may be 0.1-15% by weight of the composition. Accordingly, the claimed ranges would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art. See MPEP § 2144.05(I).
Regarding claim 8, Fernandes does not disclose wherein cocoamidopropyl betaine is an essential ingredient. Thus it appears the composition of Fernandes is essentially free of cocoamidopropyl betaine.
Regarding claim 9, Fernandes further discloses wherein the additional amphoteric surfactants may be in amounts of 0.1-15% by weight (p. 9, lines 27-28).
Regarding claim 11, Fernandes further discloses wherein the composition further comprises at least one or more common cosmetic ingredients including nonionic surfactants (p. 25, lines 21-23). The amount may be selected by a person skilled in the art (p. 26, lines 2-3). Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed amounts of nonionic surfactants (i.e. about 0.5 to about 15% by weight) through routine experimentation based on the guidance of Fernandes. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Regarding claim 12, Fernandes further discloses wherein the at least one or more common cosmetic ingredients include fatty substances (p. 25, lines 21-24).
Regarding claim 13, Fernandes further discloses wherein the composition may include cationic polymers (p. 11, line 5) including cationic polysaccharides such as cationic galactomannan gums (p. 13, line 27 – p. 14, line 3).
Regarding claim 14, the limitations of claim 14 have been addressed when addressing the limitations of claims 1, 3, 5, 8, and 12 as discussed above. Therefore, claim 14 is rejected based on the same reasons set forth above in rejecting claims 1, 3, 5, 8, and 12.
Regarding claim 15, the limitations of claim 15 have been addressed when addressing the limitations of claim 11 as discussed above. Therefore, claim 15 is rejected based on the same reasons set forth above in rejecting claim 11.
Regarding claim 16, as discussed above, Fernandes discloses wherein the composition may comprise cocobetaine.
Regarding claim 17, the limitations of claim 17 have been addressed when addressing the limitations of claims 3 and 5. Therefore, claim 17 is rejected based on the same reasons set forth above in rejecting claims 3 and 5.
Regarding claims 18 and 20, as discussed above, Fernandes discloses a composition for cleansing hair (i.e. shampoo). Accordingly, applying the composition and rinsing from hair would flow naturally from such teaching.
Regarding claim 19, the limitations of claim 19 have been addressed when addressing the limitations of claim 10 as discussed above. Accordingly, claim 19 is rejected based on the same reasons set forth above in rejecting claim 10.
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 1-2, 4-12, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11,045,406. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a cleansing composition consisting of about 2-25% by weight each of disodium laureth sulfosuccinate and sodium lauryl sulfoacetate, about 3-20% by weight cocobetaine, about 1-2% of PEG-7 glyceryl cocoate (i.e. a nonionic surfactant), water, ceramide (i.e. non-silicone fatty compound), and thickener including about 2-20% by weight of PEG-120 methyl glucose trioleate (i.e. a polysaccharide-based thickener). The composition is applicable to skin and hair, which reads on the instant claims.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/680,901, 18/680,920, 18/731,010, 18/731,070, 18/731,045, 18/731,048 and 18/731,057, and claims 1-2, 4, 6-9, 11-12, and 14-24 of copending Application No. 17/008,135 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite more specific embodiments, comprising the same anionic and amphoteric surfactants, as instantly claimed and thus read on the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Citation of State of the Art and Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Burch et al. (US 2016/0067172 A1, 03/10/2016), directed to sulfate-free personal care compositions.
Allef et al. (US 2014/0349902 A1, 11/27/2014, IDS reference of 04/08/2025), directed to hair cleaning compositions comprising biosurfactants.
Feng and Lee (FR 3115205 A1, 04/22/2022), directed to compositions for cleansing keratinous materials comprising amphoteric, anionic, and nonionic surfactants and polysaccharide thickening agents.
Botto et al. (BR 112020022106 A2, 01/26/2021), directed to cleansing compositions comprising unsulfated surfactants, amphoteric surfactants, conditioning agents, and water.
Conclusion
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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