Response to Amendment
Claim Rejections - 35 USC § 103
Claim(s) 1-13, 21-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert et al (5211870) in view of WO (0246346).
Gilbert discloses a cleansing bar comprising a zeolite from 0.005-5% by weight; synthetic surfactants such as anionic surfactants from 4 to 32% by weight; wax adjunct materials from 4 to 30% by weight; 2 to 30% by weight of free fatty acids; 0 to 15% by weight of soap; 1.5% to 10% of water (claims 1-12). With respect to the free fatty acids being C16, Gilbert teaches stearic acid as a preferred (Table 4) and with further respect soap, C10-C22 fatty acid sodium soaps; polyethylene glycols as polyols; a pH of from 4 to 9 (col. Lines 10-41) and clays are utilized as fillers (col. 12, lines 55-65).
With respect to process claims, Gilbert teaches mixing from 5-10 min and heating fatty acids and anionic surfactants to 80 degrees Celsius; Crutcher mixed from 130-225 degrees Celsius; and drying on a chill roller to produce flakes that are cooled plodded and stamped (see A, B and C, columns 13-15).
“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.
With respect to the weight ratio of fatty acid to soap of claim 2, Gilbert teaches proportions of both fatty acid and soap which encompass the ratio through routine experimentation and optimization of proportions within the ranges given. It has long been held obvious to optimize and one skilled in the art would have been readily optimize the amount of fatty acids to soaps because optimization is held obvious to the skilled artisan and furthermore the addition fatty acids is well regarded to improve lather and suds within the cleansing composition surfactant compositions.
“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).
Gilbert lacks a teaching of at least 9% zeolite and is silent with respect to the hardness characteristics of the claims.
WO ‘346 discloses a cleansing bar comprising 1-30% of zeolites (cl. 15); 5-30% of detergent actives; 5-55% of water and optionally benefit agents round the ingredients of the cleansing bar (cl. 11). Fatty acids blends are also used in a variety of proportions and may be derived from tallow, palm kernel or palm (col. 9, lines 14-18).
It would have been obvious to one skilled in the art to utilized the builder zeolite in amounts from 9% and optimize the proportions of Gilbert in view of the teachings of WO ‘346. One skilled in the art would readily recognize that optimization is within the level of skill of the ordinary artisan, in the absent of a showing to the contrary. Moreover, the increase amounts of zeolite, a very well-known builder, would increase bar hardness for longer wear and usage.
[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).]
With further respect to the bar hardness of claims 26-27, Gilbert and WO ‘346 are silent with respect to the parameter. One skilled in the art would expect similar characteristics from the same compositions in requisite proportions. In the absence of a showing to the contrary, and with the zeolite builder suggested and motivated to comprise similar amounts, one skilled in the art would have the expectations that the bars of Gilbert in view of WO ‘346 would comprise the same or similar characteristics of hardness, in the absence of a showing to the contrary.
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Response to Arguments
Applicant's arguments filed 7-3-2025 have been fully considered but they are not persuasive.
Applicant argues:
The examples of Gilbert have at most 0.75 wt.% of zeolite. As a result, Gilbert not only does not disclose the claimed amount of zeolite but actually teaches away from using an amount higher than that disclosed in its patent (5 wt.%).
The examiner contends and respectfully disagrees and suggest that applicant’s “teaching away” and “hindsight reasoning” arguments are attorney’s conclusory statement unsupported by factual evidence. The optimization of zeolite is within the level of the artisan or ordinary skill, given that WO ‘346 teaches bars with improved moisture retention and better processability (page 4, lines 10-14). Therefore, an obvious optimization of ranges is within the level of ordinary skill and one skilled in the art would have been motivated to improve the bars of Gilbert with the expectation of successful processing with the increase amount of zeolite as suggested by WO ‘364.
“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).
The Declaration under 37 CFR 1.132 filed 11-14-2025 is insufficient to overcome the rejection of claims 1-13, 21-27 based upon prior art rejections as set forth in the last Office action because:
Applicant’s assertion that the pH of WO ‘346 allegedly does not encompass the pH range as claimed and therefore are different technologies from Gilbert et al.
The examiner contends that WO ‘346 is relied upon to show the range of zeolite is well known to be incorporated at levels above 5% for their hardness qualities and one skilled would have looked upon WO ‘346 for that particular teaching to include in Gilbert, which teaches the pH range of 4-9 as claimed. WO ‘346 is silent with respect to his soap bar, yet applicant argues that the “inherent” teachings would place said bars in a range from pH of >9.7. While not acquiescing the pH range submitted by applicant but for arguments sake, a pH of 9.7 is still within the range of the claimed pH of 4.5-10 and close enough to make obvious with the range of Gilbert of 4-9.
Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
In response to applicant's argument that Gilbert and WO ‘346 are different “technologies” or is 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 reference teach fatty acid soap bars for personal use, the fact that one requires synthetic surfactants more than the other or vice versa, is not well founded in being non-analogous. The prior art is the same field of endeavor and require many of the same ingredients and solving a different problem is not the test of obviousness in combining the prior art.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
Motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention; Cross Med. Prods.,Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
Applicant’s further argue that in the specification as filed, Table 3 of applicant’s shows the difference of zeolite Y require difference of pH and the qualities of grittiness are not expected by Gilbert.
The examiner contends that the showing of Table 3 is very specific and outside of the scope of the extremely broad claims where the skilled artisan would not be able to proffer criticality as alleged. For example, palmitic/stearic acid, betaines, sulfonates, zeolite 4A, SDS, POLYVOX, starch, titanium dioxide and citric acid are specific to the inventive concept but the claims are drawn to fatty acid soaps, free fatty acids, zeolite and water within a pH range. Accordingly, criticality cannot be established and the claims remain rejected for reasons of record.
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)
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.
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/NECHOLUS OGDEN JR/ Primary Examiner, Art Unit 1761