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
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on May 29th, 2026 is acknowledged. Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is deemed proper and therefore made FINAL.
Claims 1-14 are pending and were examined on the merits.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The priority date is October 27th, 2021.
Information Disclosure Statement
The information disclosure statement (IDS) filed April 26th, 2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because there appears to be a typographical error, where US patent document 2021/093529 A1 should be written 20210093529 A1 (the document was retrieved as US 20210093529 A1). It has been placed in the application file, but the information referred to therein for the lined-through reference has been considered as to the merits only after identifying and correcting for the typographical error as stated above. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
The information disclosure statement filed March, 23rd, 2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because there is no copy provided for the foreign patent document WO 2013102568 A2 (instead, there is only an abstract of WO 2013102568 A3), and there is no identifiable copy of the reference listed as "https ://med.niv.ru/doc/encyclopedia/med/articles/13 54/kozhnyebolezni.htm?ysclid=mm3d5nalk5548112755". It has been placed in the application file, but the information referred to therein for lined-through references not cited on the PTO-892 has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a). A copy of WO 2013102568 A2 has been retrieved by the examiner, uploaded, and cited on the PTO-892 form.
Specification
The disclosure is objected to because of the following informalities: the term "arachinyl" should be changed to "arachidyl" for correct spelling..
Appropriate correction is required.
The use of the terms Marcel Dekker, Tween, Plantaren, Dow Corning, LycoRed, Beacon, Quaker, Dermofeel, BASF, Lanette, Emulsiphos, Symirse, Eumulgin, Keltrol, Rheozan, Solvay, Cutina, Cegesoft, Myritol, Cetiol, Ronacare, Merck, Velsan, Clarian, and Cellmark, each of which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, each term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The applicant’s assistance is requested for correctly reciting any trademarks or tradenames they become aware of, even if not explicitly pointed out by the applicant.
Claim Objections
Claim 2 is objected to because of the following informalities: the term "arachinyl" should be changed to "arachidyl" for correct spelling. Appropriate correction is required.
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 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.
The term “about” in claims 1, 3, 5, 7, 8, 11, 13, and 14 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. At least the following quantities are rendered indefinite by the use of the term "about": the weight percent of water in the composition (claims 1, 13, and 14), the weight percent one of more C20-24 fatty alcohols (claims 3 and 13), the weight percent of one or more anionic surfactants (claim 5 and 13), the weight percent one or more thickening polysaccharide (claims 7 and 13), the weight percent of a natural butter (claim 8), the ratio of behenyl alcohol and shea butter (claim 11) the weight percent of one or more emollients (claim 13); and the weight percents of behenyl alcohol, potassium cetyl phosphate, succinoglycan, xanthan gum, and shea butter (claim 14).
Claim 11 recites a ratio between behenyl alcohol and shea butter but does not recite the measurement that the ratio is based on, such as mass or volume. Therefore, the ratio recited in claim 11 is rendered indefinite.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more. The claims recite a composition comprising: a. one or more a C20-24 fatty alcohols; b. one or more anionic surfactants; c. one or more thickening polysaccharides comprising succinoglycan; d. one or more emollients comprising at least one natural butter having a natural butter which is solid at 20°C and has a melting point below 50°C; and e. about 50 to about 95 wt. % of water by weight of the total composition, wherein the composition is in the form of an emulsion.. This judicial exception is not integrated into a practical application because it is not clear that the instantly claimed composition has physical or chemical properties, or a pharmacological function, that differentiates it from its naturally occurring source materials. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims , whole reciting ingredients of the instantly claimed composition, does not recite how the combination of ingredients differ from naturally occurring counterparts in terms of physical or chemical properties, or pharmacological function. The applicant is advised to amend independent claims 1 and 13 to recite any physical properties of the emulsion that would render it improved over a product of nature.
The first step of the eligibility analysis evaluates whether the claim falls within a statutory category (see MPEP 2106.03). Since claims 1-14 are directed to a composition, the claims are directed to a composition.
Effective January 7, 2019, subject matter eligibility determinations under 35 U.S.C. § 101 follow
the procedure explained in the Federal Register notice titled 2019 Revised Patent Subject Matter
Eligibility Guidance (Federal Register, Vol. 84, No.4, 50-57), which is found at:
https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf. Applicants are kindly asked
to review this guidance as well as MPEP 2106.
The statutory categories of invention under 35 U.S.C. 101 are processes, machines,
manufactures, and compositions of matter. However, certain members of these categories constitute judicial exceptions, i.e., the courts have determined that these entities are not patentable subject
matter. These judicial exceptions include abstract ideas, laws of nature, and natural phenomena. The
Office released guidance on December 16, 2014 for the examination of claims reciting natural products
under 35 U.S.C. 101 in light of the recent Supreme Court decisions in Association for Molecular
Pathology v. Myriad Genetics, Inc. (569 U.S. ___, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013)) and
Mayo Collaborative Services v. Prometheus Laboratories (566 U.S. ___, 132 S. Ct. 1289, 101 USPQ2d
1961 (2012)), Diamond v. Chakrabarty, 447 U.S. 303 (1980)) and Funk Brothers Seed Co. v. Kalo Inoculant Co. - 333 U.S. 127 (1948)). (inter alia). See eg. MPEP 2106.04(b)
The Supreme Court has explained that the judicial exceptions reflect the Court’s view
that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and
technological work", and are thus excluded from patentability because "monopolization of those
tools through the grant of a patent might tend to impede innovation more than it would tend to
promote it." Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980 (quoting Myriad, 133 S. Ct. at
2116, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S.
66, 71, 101 USPQ2d 1961, 1965 (2012)). The Supreme Court’s concern that drives this
"exclusionary principle" is pre-emption. Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980.
The Court has held that a claim may not preempt abstract ideas, laws of nature, or natural
phenomena; i.e., one may not patent every "substantial practical application" of an abstract
idea, law of nature, or natural phenomenon, even if the judicial exception is narrow.
While preemption is the concern underlying the judicial exceptions, it is not a standalone
test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119
USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent in and
resolved by the two-part framework from Alice Corp. and Mayo (the Alice/Mayo test referred to
by the Office as Steps 2A and 2B). It is necessary to evaluate eligibility using the Alice/Mayo
test, because while a preemptive claim may be ineligible, the absence of complete preemption
does not demonstrate that a claim is eligible.
Products of Nature: When a law of nature or natural phenomenon is claimed as a
physical product, the courts have often referred to the exception as a "product of nature".
Products of nature are considered to be an exception because they tie up the use of naturally
occurring things, but they have been labeled as both laws of nature and natural phenomena.
See Myriad 133 S. Ct. at 2116-17, 106 USPQ2d at 1979 (claims to isolated DNA held ineligible because they "claim naturally occurring phenomena" and are "squarely within the law of nature
exception"); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281
(1948) (claims to bacterial mixtures held ineligible as "manifestations of laws of nature" and
"phenomena of nature"). Step 2A of the Office’s eligibility analysis uses the terms "law of
nature" and "natural phenomenon" as inclusive of "products of nature".
It is important to keep in mind that product of nature exceptions include both naturally
occurring products and non-naturally occurring products that lack markedly different
characteristics from any naturally occurring counterpart. Instead, the key to the eligibility of all
non-naturally occurring products is whether they possess markedly different characteristics from
its closest naturally occurring counterpart.
When a claim recites a nature-based product limitation, examiners use the markedly
different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based
product limitation and determine the answer to Step 2A. Nature-based products, as used herein,
include both eligible and ineligible products and merely refer to the types of products subject to
the markedly different characteristics analysis used to identify product of nature exceptions.
The Markedly Different Characteristics Analysis
The markedly different characteristics analysis is part of Step 2A, because the courts use this
analysis to identify product of nature exceptions. If the claim includes a nature-based product
that has markedly different characteristics, then the claim does not recite a product of nature
exception and is eligible. If the claim includes a nature-based product that does not exhibit
markedly different characteristics from its closest naturally occurring counterpart in its natural
state, then the claim is directed to a "product of nature" exception (Step 2A: YES), and requires
further analysis in Step 2B to determine whether any additional elements in the claim add
significantly more to the exception.
Nature-based Product Claim Analysis
Where the claim is to a nature-based product by itself, the markedly different
characteristics analysis should be applied to the entire product. Where the claim is to a nature-
based product produced by combining multiple components, the markedly different
characteristics analysis should be applied to the resultant nature-based combination, rather than
its component parts. Where the claim is to a nature-based product in combination with non-
nature based elements, the markedly different characteristics analysis should be applied only to
the nature-based product limitation. For a product-by-process claims, the analysis turns on whether the nature-based product in the claim has markedly different characteristics from its
naturally occurring counterpart.
The markedly different characteristics analysis compares the nature-based product limitation to
its naturally occurring counterpart in its natural state. Markedly different characteristics can be
expressed as the product’s structure, function, and/or other properties, and are evaluated based
on what is recited in the claim on a case-by-case basis. If the analysis indicates that a nature-
based product limitation does not exhibit markedly different characteristics, then that limitation is
a product of nature exception. If the analysis indicates that a nature-based product limitation
does have markedly different characteristics, then that limitation is not a product of nature
exception. Because the markedly different characteristics analysis compares the nature-based
product limitation to its naturally occurring counterpart in its natural state, the first step in the
analysis is to select the appropriate counterpart(s) to the nature-based product. When there are
multiple counterparts to the nature-based product, the comparison should be made to the
closest naturally occurring counterpart. When the nature-based product is a combination
produced from multiple components, the closest counterpart may be the individual nature-based
components of the combination. Because there is no counterpart mixture in nature, the closest
counterparts to the claimed mixture are the individual components of the mixture, i.e., each
naturally occurring species by itself. See, e.g., Funk Bros., 333 U.S. at 130, 76 USPQ at 281
(comparing claimed mixture of bacterial species to each species as it occurs in nature).
Markedly changed characteristics can include structural, functional, chemical changes.
In order to show a marked difference, a characteristic must be changed as compared to nature,
and cannot be an inherent or innate characteristic of the naturally occurring counterpart or an
incidental change in a characteristic of the naturally occurring counterpart. Myriad, 133 S. Ct. at
2111, 106 USPQ2d at 1974-75. Thus, in order to be markedly different, applicant must have
caused the claimed product to possess at least one characteristic that is different from that of
the counterpart. If there is no change in any characteristic, the claimed product lacks markedly
different characteristics, and is a product of nature exception.
Step 1: Determine if the claims are directed to one of the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101: a process, machine, manufacture or composition of matter.
YES, the claims are directed to a composition of matter, which is a statutory category within at least one of the four categories of patent eligible subject matter.
Step 2A: PRONG ONE: Evaluate whether the claim recites a Judicial Exception (e.g., law of nature, natural phenomenon, or an abstract idea; see MPEP 2106.04). YES, the claims are product claims reciting something that appears to be a nature-based product (i.e., a composition comprising naturally occurring butters, polysaccharides, fatty alcohols, and surfactants) which is not markedly different from the closest naturally-occurring counterpart (i.e., the individual nature-based products).
Because the claim states the nature-based products, which are plant extracts, the markedly different characteristics analysis is performed by comparing the nature-based product limitation to its natural counterpart.
The claim recites the naturally occurring components found within several listed plant genera (instant claim 1). This equates to a plant extract. The process of creating a plant extract is by partitioning the starting plant material into separate compositions based upon some property. The closest naturally occurring counterparts of extracted components are those same components when found existing in the plant in an unseparated form, even when purified and/or concentrated because they are chemically identical to the extracted compounds/components. All of these are naturally occurring in nature and are not markedly different from its naturally occurring counterpart in its natural state. The properties of the
nature-based product as claimed are not markedly different than the properties of these naturally
occurring counterparts found in nature as these activities would inherently be found in the plant they
come from. The components which would give the activities claimed in the instant invention would
inherently do the same in nature as there has been nothing done in the instant invention that would
make them act in any different way.
Step 2A: prong two evaluates whether the claim as a whole integrates the recited judicial exception into a practical application (see MPEP 2106.04(d)). This evaluation is performed by (a)
identifying whether there are any additional recited elements in the claim beyond the judicial exception
and (b) evaluating those additional elements individually and in combination to determine whether the
claim as a whole integrates the exception into a practical application.
This judicial exception is not integrated into a practical application because the plant extract
composition is only comprising the nature-based components. The claims do not integrate the judicial
exceptions into a practical application because in this context, such integration for a claimed product
would be a physical form of the specific practical application instead of a more general composition that
is not so limited.
The claims do not include additional elements that are sufficient to amount to significantly more
than the judicial exception because these components and their activity are already found naturally
occurring in nature and the addition of an intended use does not impart any added benefit to the
compounds or integrate the composition into a practical application.
Step 2B evaluates whether the claim as a whole, amounts to significantly more than the recited
exception, i.e., whether any additional element, or combination of additional elements, adds an
inventive concept to the claim (see MPEP § 2106.05(b)).
The claims as a whole do not amount to more than the recited exceptions because there aren’t
any other additional elements to consider, which does not add an inventive concept to the claims. Thus,
the claims are not eligible subject matter under current 35 U.S.C. 101 standards.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Enprani (97% Natural Soothing Lotion, Mintel, Record ID 8413641; cited on the IDS received on April 26th, 2024, the fifth document from the top in the list of non-patent literature documents), further in view of de Guertechin (Classification of Surfactants in Hand book of Cosmetic Science and Technology, cited on the IDS received on April 26th, 2024, the second document from the top in the list of non-patent literature documents) and Cao and Martino (US 8545828 B1), abbreviated “Cao”.
Claim 1 recites “A composition comprising: a. one or more a C20-24 fatty alcohols; b. one or more anionic surfactants; c. one or more thickening polysaccharides comprising succinoglycan; d. one or more emollients comprising at least one natural butter having a natural butter which is solid at 20°C and has a melting point below 50°C; and e. about 50 to about 95 wt.% of water by weight of the total composition, wherein the composition is in the form of an emulsion”. Claim 2 recites “The composition of claim 1, wherein the one or more C20-24 fatty alcohols is selected from the group consisting of behenyl alcohol, arachinyl alcohol, heneicosanol, Lignoceryl alcohol and combinations thereof”. Claim 3 recites “The composition of claim 1, wherein the one or more C20-24 fatty alcohols is present in an amount of from about 1 to about 5 wt.% of by weight of the total composition”. Claim 4 recites “The composition of claim 1, wherein the one or more anionic surfactants is selected from the group consisting of potassium cetyl phosphate, glyceryl stearate citrate, fatty acids in the anionic form, and combinations thereof”. Claim 5 recites “The composition of claim 1, wherein the one or more one or more anionic surfactants is present in an amount of from about 0.1 to about 3 wt.% of by weight of the total composition”. Claim 6 recites “The composition of claim 1, wherein the one or more thickening polysaccharides further comprises xanthan gum, hydroxyalkyl cellulose, alkyl cellulose, hydroxyalkyl alkyl cellulose, guar gum, carrageenan, alignates, pectin, and combinations thereof”. Claim 7 recites “The composition of claim 1, wherein the one or more thickening polysaccharide is present in an amount of from about 0.05 to about 2 wt.% of by weight of the total composition”. Claim 8 recites “The composition of claim 1, wherein at least one natural butter having a natural butter which is solid at 20°C and has a melting point below 50°C is present in an amount ranging from about 1.5 to about 5 wt.%. Claim 9 recites “The composition of claim 1, wherein the at least one natural butter having a natural butter which is solid at 20°C and has a melting point below 50°C comprises shea butter”. Claim 10 recites “The composition of claim 1, wherein the emollient is selected from the group consisting of shea butter, cocoglyceride, candelilla cera and hydrogenated vegetable oil, olus oil, caprylyl glyceryl ether, and combinations thereof. Claim 11 recites “The composition of claim 1, wherein the one or more C20- 24 fatty alcohols comprise behenyl alcohol, the one or more emollients comprises shea butter, and the behenyl alcohol and shea butter are present in a ratio of about 0.5 to about 2”. Claim 12 recites “The composition of claim 1, further comprising a non- ionic surfactant”. Claim 13 recites “A composition comprising: a. about 1 to about 5 wt.% of one or more C20-24 fatty alcohols by weight of the total composition; b. about 0.2 to about 3 wt.% of one or more anionic surfactants by weight of the total composition; c. about 0.05 to about 2 wt.% of one or more thickening polysaccharides comprising succinoglycan by weight of the total composition; d. about 1 to about 20 wt. % of one or more emollients comprising at least one natural butter having a natural butter which is solid at 20°C and has a melting point below 50°C by weight of the total composition; and e. about 50 to about 95 wt.% of water by weight of the total composition, wherein the composition is in the form of an emulsion. Claim 14 recites “The composition of claim 13, wherein the composition comprises: a. about 1 to about 5 wt.% of behenyl alcohol by weight of the total composition; b. about 0.2 to about 3 wt.% of potassium cetyl phosphate by weight of the total composition; c. about 0.05 to about 1 wt.% of succinoglycan by weight of the total composition; d. about 0.05 to about 1 wt.% of xanthan gum by weight of the total composition e. about 1 to about 20 wt. % of one or more emollients comprising shea butter; and f. about 70 to about 80 wt.% of water by weight of the total composition”.
The cited reference Enprani recites a lotion composition (page 1 of 3). The referenced composition comprises the fatty alcohols arachidyl alcohol and behenyl alcohol (Enprani, page 2 of 3; instant claims 1, 2, 13, and 14). The referenced composition comprises succinoglycan (Enprani, page 2 of 3; instant claims 1, 13, and 14). The referenced composition comprises Butyrospermum parkii butter (shea butter) (Enprani, page 2 of 3; instant claims 1, 9-11, 13, and 14). The referenced composition comprises water (Enprani, page 2 of 3; instant claims 1, 13, and 14). The referenced composition comprises multiple non-ionic surfactants including arachidyl glucoside, cetearyl olivate, and sorbitan olivate (Enprani, page 2 of 3; instant claims 1, 12, and 13). One of skill in the art would expect the combination of water; a hydrophobic material, such as shea butter; and a surfactant; to result in an emulsion (instant claims 1 and 13).
Although Enprani does not explicitly recite a composition comprising an anionic surfactant such as potassium cetyl phosphate, one of skill in the art could have substituted arachidyl glucoside with an anionic alkyl phosphate surfactant to obtain predictable results. Alkyl carbohydrate esters (a class including arachidyl glucoside) are known as emulsifiers or cleansing agents with emollient properties (de Guertechin, page 448, under the heading “Alkyl Carbohydrates Esters”). Phosphate esters, a class including potassium cetyl phosphate, are known to be useful in applications requiring a particular tolerance to pH, heat, or electrolytes (de Guertechin, page 437, under the heading “Phosphate Esters”). Alkyl phosphates, a class including potassium cetyl phosphate, are known to be mild for the skin and sometimes comprise facial and cleansing products (de Guertechin, page 437, under the heading “Phosphate Esters”). Therefore, one of skill in the art could have substituted arachidyl glucoside with potassium cetyl phosphate, with the predictable results of a composition comprising a surfactant mild for the skin (instant claims 1, 4, 13, and 14).
Although Enprani does not explicitly recite a composition comprising xanthan gum, one of skill in the art would have been motivated to add xanthan gum to the composition recited by Enprani to thicken the composition, making it easier to control, to stabilize any emulsions therein, and to decrease the settling out of solids in the composition (Cao, Background/Summary, paragraph (4); instant claims 1, 6, 13, and 14). One of skill in the art would have had a reasonable expectation of success at combining the xanthan gum with the composition recited by Enprani by adding the xanthan gum to the composition and mechanically mixing the ingredients (instant claims 1, 6, 13, and 14).
The instant claims are distinguished from the teachings of the prior art references by following parameters:
water weight percent content of 50-95% (instant claims 1 and 13)
water weight percent content of 70-80% (instant claim 14)
C20-24 alcohol(s) weight percent content of 1-5% (instant claims 3 and 13)
behenyl alcohol weight percent content of 1-5% (instant claim 14)
anionic surfactant(s) weight percent content of 0.1-3% (instant claim 5)
anionic surfactant(s) weight percent content of 0.2-3% (instant claim 13)
potassium cetyl phosphate weight percent content of 0.2-3% (instant claim 14)
thickening polysaccharide(s) weight percent content of 0.05-2% (instant claims 7 and 13)
succinoglycan weight percent content of about 0.05-1% (instant claim 14)
xanthan gum weight percent content of about 0.05-1% (instant claim 14)
natural butter(s) weight percent content of 1.5-5% (instant claim 8)
emollient(s) comprising natural butter(s) weight percent content of 1-20% (claim 13)
emollient(s) comprising shea butter weight percent content of 1-20% (claim 13)
ratio of behenyl alcohol to shea butter of 0.5-2% (instant claim 11)
The above parameters are obvious to one of skill in the art over routine optimization. One of skill in the art could weigh each component of the composition using a laboratory scale, and thereby control the weight percent of each component in the composition and the weight ratios between different components. One of skill in the art could test different compositions using a rheometer and/or viscometer, to compare how different compositions respond to applied force and to compare their viscosities. Therefore, one of skill in the art could optimize the weight percents and weight ratios of components in the instantly claimed composition to obtain a composition that can be spread over the skin, but is still thick enough for controlled application to the skin (instant claims 1, 3, 5, 7, 8, 11, 13, and 14).
Enprani, de Guertechin, and Cao are relied upon for the reasons discussed above. If not
expressly taught thereby, based upon the overall beneficial teachings provided by the references with respect to providing the components of the instantly claimed composition, the adjustments of particular conventional working conditions (e.g., the selection from among known components and determining one or more suitable ranges (amounts, proportions, ratios thereof) in which to provide the composition), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
From the teachings of Enprani in view of de Guertechin, and Cao, the invention as a whole, drawn to a composition as described in Claims 1-14, would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing
Applicants’ composition with the composition of the prior art, the burden is on applicant to show
a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert F Spaine whose telephone number is (571)272-9099. The examiner can normally be reached 8:00 AM - 4:00 PM United States Eastern Time, Monday-Friday.
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, Anand Desai can be reached at (571) 272-0947. 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.
/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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