DETAILED ACTION
Claims 1-16 are pending. Of these, claims 7-13 are withdrawn as directed to a nonelected invention. Therefore, claims 1-6 and 14-15 are under consideration on the merits.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restriction
Applicant’s election of Group I, claims 1-6 and 14-15, is acknowledged. The election having been made without traverse, the restriction requirement is still considered proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/17/23, 8/7/25, 3/4/26, and 4/3/26 was filed prior to the mailing date of a first Action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, it was considered by the Examiner.
Claim Objections
Claims 2-3 are objected to because of the following informalities:
Claims 2-3 recites improper Markush language. The claims should recite “selected from the group consisting of.” 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 1-6 and 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as 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.
Claim 1 recites that “the surfactants are in a lamellar phase,” which is unclear, because claim 1 recites both an anionic surfactant and a co-surfactant. Is the co-surfactant considered a “surfactant” for the purpose of this limitation? Clarification is required. Since dependent claims 2-6 and 14-15 do not clarify the point of confusion, they are also rejected.
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.
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- 6 and 14-15 are rejected under 35 U.S.C. 103 as unpatentable over Mould et al. (WO 94/16680; of record in IDS) in view of Dixon et al. (GB2297762).
As to claims 1-6 and 14-15, Mould discloses a hydratable concentrated surfactant personal washing composition comprising 36 wt% sodium laureth ether sulphate (SLES) anionic surfactant, 9 wt% cocamidopropyl betaine (CAPB) cosurfactant (claim 2), 2 wt% sodium chloride (“a “viscosity modifier” that is an “inorganic electrolyte” of claim 1 and a “metal chloride” of claim 3), and 49.1 wt% water to balance, the foregoing amounts being within the ranges recited by claim 1 and which results in a weight ratio of anionic surfactant to cosurfactant of 36:9 or 4:1, which is within the ranges of claims 1 and 4. The composition further may comprise a preservative such as sodium benzoate in the amount of 0.5-5 wt% (page 9, first two paragraphs), which reads on the ratios of sodium benzoate to total surfactant recited by claims 1 and 14-15. For example, the use of 3 wt% sodium benzoate, 36% sodium laureth sulphate, and 9 wt% cocamidopropyl betaine results in a ratio of 3:45 or 1:15. The composition is in a lamellar phase (page 3, lines 12-13).
Regarding claim 6, although Mould teaches that the composition may comprise a a conditioning agent and that one example of a suitable conditioning agent is a silicone, Mould does not require the use of a silicone, thereby meeting the negative limitation of the claim (page 7, 1st full paragraph and page 8, 2nd full paragraph).
As to claims 1-6 and 14-15, Mould does not further expressly disclose that the composition has a pH of 3-6 as recited by claim 1 nor a viscosity within the 5000-100,000 cps range of claim 1, nor that the composition comprises ethylenediaminetetraacetic acid (claim 5).
Dixon discloses personal cleansing compositions such as shampoos comprising surfactants (Abstract) such as betaines or sodium laureth sulfates (page 10) and additional ingredients such as sodium benzoate as a preservative (page 18, 1st full paragraph) and ethylene diaminetetraacetic acid as a calcium and magnesium ion sequestrant to provide lather boosting properties under hard water usage conditions (paragraph bridging pages 17-18). The composition may be lamellar (page 9, 1st paragraph). The pH of the composition is adjusted to about 4-8 using a buffer system (page 18, 2nd full paragraph). The compositions have a viscosity of 10,000-40,000 cps (page 2, last paragraph),
As to claims 1-6 and 14-15, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the personal washing composition of Mould by selecting a viscosity and pH within the range of claim 1, because Dixon teaches that personal cleansing compositions comprising betaines, sodium laureth sulfates, and/or sodium benzoate suitably may have a viscosity and pH within the claimed range such that the skilled artisan reasonably would have expected that such viscosities and pH values would be appropriate for the Mould personal cleansing composition. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, it further would have been prima facie obvious to incorporate ethylenediaminetetraacetic acid because Dixon teaches that doing so will advantageously boost lathering properties under hard water usage conditions.
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 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- 6 and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over all claims of US Pat. Appl. No. 18/706,663.
The teachings of Mould are relied upon as discussed above.
Although the reference claims are not identical, they are not patentably distinct because the reference claims recite a hydratable concentrated surfactant composition comprising 30-50 wt% sodium laureth ether sulfate, 4-12% betaine cosurfactant or cocamide monoethanolamide, 0.2-3% sodium benzoate, 0.2- 3% inorganic electrolyte such as a metal chloride, and 10-60% water, wherein the composition is in a lamellar phase and the pH is 3-6 and the composition has a viscosity of 8000-200,000 cps, the composition further comprising ethylenediaminetetraacetic acid and is free from silicone, the ratio of the sodium benzoate to total surfactant and of the anionic surfactant to cosurfactant being within the claimed ratios.
Claims 1- 6 and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over all claims of US Pat. Appl. No. 18/711,038.
Although the reference claims are not identical, they are not patentably distinct because the reference claims recite a hydratable concentrated surfactant composition comprising 30-50 wt% sodium laureth ether sulfate, 4-12% betaine cosurfactant or cocamide monoethanolamide, 0.2-3% sodium benzoate, 0.2- 3% inorganic electrolyte such as a metal chloride, and 10-60% water, wherein the composition is in a lamellar phase and the pH is 3-6 and the composition has a viscosity of 8000-200,000 cps, the composition further comprising ethylenediaminetetraacetic acid and is free from silicone, the ratio of the sodium benzoate to total surfactant and of the anionic surfactant to cosurfactant being within the claimed ratios.
Although the reference claims are not identical, they are not patentably distinct because the reference claims recite a hydratable concentrated surfactant composition comprising 30-50 wt% sodium laureth ether sulfate, 4-12% betaine cosurfactant or cocamide monoethanolamide, 0.2-3% sodium benzoate, 0.2- 3% inorganic electrolyte such as a metal chloride, and 10-60% water, wherein the composition is in a lamellar phase and the pH is 3-6 and the composition has a viscosity of 8000-200,000 cps, the composition further comprising ethylenediaminetetraacetic acid and being substantially free from silicone, the ratio of the sodium benzoate to total surfactant and of the anionic surfactant to cosurfactant being within the claimed ratios.
Claims 1- 6 and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over all claims of US Pat. Appl. No. 18/578,443 and in view of Mould et al. (WO 94/16680) and/or Dixon et al. (GB2297762) where indicated below.
The teachings of Mould and Dixon are relied upon as discussed above.
Although the reference claims are not identical, they are not patentably distinct because the reference claims recite a hydratable concentrated surfactant composition comprising 5-40 wt% sulfate-free anionic surfactant, 5-12% of an amphotheric such as a betaine, 0.1- 5% inorganic electrolyte, a preservative, and 10-70 wt% water, wherein the composition is in a lamellar phase and the pH is 3-6 and the composition has a viscosity of 6000-400,000 cps, with a weigtht ratio of anionic to amphoteric surfactant of 1:1 to 1:2. The reference composition does not recite the presence of a silicone.
Although the reference claims do not recite that the electrolyte is a metal chloride or that the surfactant comprises sodium laureth ether sulfate or that the betaine is cocamidopropylbetaine or that the preservative is sodium benzoate nor the weight ratios of sodium benzoate to total surfactant and that the composition further comprises ethylenediaminetetraacetic acid, it would have been prima facie obvious to make these modifications since Mould teaches that for a similar hydratable concentrated surfactant composition comprising anionic surfactant, inorganic electrolyte, and betaine surfactant and a preservative, the preservative may be sodium benzoate, the electrolyte may be a metal chloride, the betaine surfactant may be cocamidopropylbetaine, and the anionic surfactant may be sodium laureth ether sulfate, and the presently claimed weight ratios may be within the claimed ranges, and Dixon teaches that ethylene diaminetetraacetic acid is useful in surfactant compositions as a calcium and magnesium ion sequestrant to provide lather boosting properties under hard water usage conditions, such that the skilled artisan reasonably would have been motivated to make these modifications to the reference claims with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached on M-F 9AM-6PM.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
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