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 .
Election/Restrictions
Applicants’ election of Group I (claims 1-12 and 15-20) drawn to a cleansing powder composition, is acknowledged. The election was made with traverse.
Applicant argues no undue search burden has been shown. The Examiner respectfully points out that MPEP 1893.03(b) clearly states that unity of invention is applicable to national stage applications and as such "Undue search burden” is not a requirement for unity of invention determination in a 371/national stage application.
As the requirement for restriction is deemed proper, it is maintained and hereby made FINAL.
Claims 13-14 are hereby withdrawn from further consideration by the Examiner, pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions, there being no allowable generic or linking claim. The instant claims have been examined commensurate with the scope of the elected invention. Applicants timely responded to the restriction requirement in the reply filed 9/16/26.
Accordingly, claims 1-12 and 15-20 are under current examination.
Status of Claims
No new claim set was filed in response to the Restriction/Election requirement.
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.
Claims 10 and 12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 10 and 12 are unclear. Claim 10 recites “…high temperature (75% relative humidity at 40 °C) for at least 7 days” and claim 12 recites “…effervesces (self-foams) upon hydration with water…”. The species recited in the parentheses renders the claim indefinite because it is unclear whether the limitation(s) within the parentheses are part of the claimed invention. See MPEP § 2173.05(d).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-12 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ross et al. (US 2006/0128592; published: 6/15/06; in IDS dated 3/27/24), in view of Hutton et al. (US 2021/0212927; published: 7/15/21).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
With regards to instant claims 1, 3-7, 9, 15 and 17-18, Ross teaches an effervescent cleanser composition comprising:
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(arrows point to instant claimed ingredients with wt% within the claimed ranges) [0113]. The abovementioned composition comprises 24 wt% citric acid and 24 wt% sodium bicarbonate, which is a 1:1 weight ratio (or 50:50), which is within the ranges recited in instant claims 6 and 17-18. Ross teaches that the ingredients are dry blended in a high speed shearing mixer and fragrance and herbal extract are sprayed onto the powder and further blended to achieve homogeneity [0012].
With regards to instant claim 9, Ross teaches that the skin surfaces against which articles of the present invention are useful include, face, body, scalp, axilla and even legs/feet [0099].
With regards to instant claim 11, Ross teaches that the abovementioned composition is a powder; and more specifically, a dry flowing powder [0068]. With regards to the small orifice limitation, the Examiner suggests that the powder of Ross reads on “small” with the broadest reasonable interpretation.
With regards to the “pKa” and “logP” limitations of instant claim 15, the prior art teaches the same compound (i.e., citric acid) as claimed and therefore, the compound's properties are necessarily present; the Examiner directs attention to MPEP 2112.01(II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”.
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Although Ross teaches that antiaging actives include alpha- and beta-hydroxycarboxylic acids and salts thereof [0084], they do not teach a specific embodiment wherein a 1.5-15 wt% salt of a carboxylic acid (e.g., tricalcium citrate, trimagnesium citrate, trisodium citrate, monosodium citrate or mixtures thereof) is combined with the other claimed ingredients, as required by instant claims 1 and 16. However, such deficiency is cured by Hutton.
Hutton is directed to personal care compositions which exhibit excellent cleaning qualities [Abstract]. Hutton teaches that personal care compositions comprise one or more stabilizers such as sodium citrate dihydrate [0135]. Hutton teaches an isethionate-containing personal care composition comprising 2.5 wt% sodium citrate that provides suitable cleaning benefits [0148-0150].
Although Ross teaches incorporation of 3.75 wt% isethionate in the embodiment above and such does not read on the range of 5-40 wt%, as required by instant claim 2. It is noted that Ross teaches that sodium cocoyl isethionate is used as a surfactant in the composition and amount of the dry surfactant optimally ranges from about 8 to about 15%, by weight of the total composition [0067]. As indicated in MPEP §2144.05(I): a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Although the specific embodiment described above from Ross does not include the instantly recited species of viscosity builders, required by instant claim 8, Ross teaches that thickeners which may improve afterfeel properties on skin include hydroxypropyl methylcellulose and hydroxypropyl cellulose [0090]. It is noted in claim 8, the wt% range suggests that the viscosity builder does not have to present due to the low end of 0%. However, instant claim 20 requires 0.1-8 wt% viscosity builder. Ross teaches that the amounts of the thickener may range from about 0.1 to about 20%. As indicated in MPEP §2144.05(I): a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Ross and Hutton do not disclose the stability (amount of agglomeration) under high humidity and high temperature conditions and about (volume) of peak foam volume as recited in claim 10 and 12. However, the invention as claimed is not structurally distinguishable from the disclosure of Ross and Hutton and it is therefore, the Examiner's position that such are inherent properties of the invention taught by Ross and Hutton. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is upon the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.).
Ross teaches the abovementioned composition comprises 9.49 wt% maltodextrin (i.e., the claimed polysaccharide builder), but such does not read on the range of 10-50 wt%, as required by instant claim 19. As indicated in MPEP §2144.05(I): a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Ross and Hutton are both directed to isethionate-containing wash personal care compositions. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the composition of Ross by further comprising about 2.5 wt% sodium citrate to achieve the predictable result of obtaining a composition suitable for cleaning. One of ordinary skill in the art would have been motivated to do so because Hutton teaches that sodium citrate is advantageously incorporating as a stabilizer for such personal care compositions.
Based on the teachings of Ross, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the composition of Ross by further comprising about hydroxypropyl methylcellulose or hydroxypropyl cellulose to achieve the predictable result of obtaining a composition suitable for cleaning. One of ordinary skill in the art would have been motivated to do so because Ross teaches that such thickeners advantageously improve afterfeel properties on skin [0090].
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached at 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617
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