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 with traverse of decyl glucoside as the species of alkyl glucoside, cocamidopropyl hydroxysultaine as the species of amphoteric surfactant, sodium cocoyl apple amino acids as the species of anionic surfactant, sodium lauroyl lactylate as the species of non-ionic surfactant, and a species of composition in the form of a facial cleanser and further comprising polyacrylate crosspolymer-6 as the species of polymeric thickener in the reply filed on 4 May 2026 is acknowledged.
The traversal is on the ground(s) that there is no evidence indicating a serious search or examination burden, citing MPEP 808.01. This is not found persuasive. It is noted that MPEP chapter 800 is directed to restriction in applications filed under 35 U.S.C. 111. As the instant application is a national stage application filed under 35 U.S.C. 371, MPEP chapter 800 does not apply. The standard for restriction in applications filed under 35 U.S.C. 371 is the unity of invention analysis (see MPEP 1893.03(d)). As the instantly claimed composition does not make a contribution over the prior art as discussed in the rejection of claims over Bernard et al. as discussed below, the species do not share a special technical feature as defined in Rule 13.2 of the PCT, and unity of invention is broken.
The requirement is still deemed proper and is therefore made FINAL.
Upon further search and consideration, art was found that reads on cocobetaine as a species of amphoteric surfactant, disodium cocoyl glutamate as a species of anionic surfactant, and polyglyceryl-5 laurate as the species of nonionic surfactant. As such, these species alone have been rejoined and examined together. The election of species requirement is maintained to the extent that the remaining species do not make a contribution over the prior art.
Claims 7 and 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4 May 2026.
Claims 1-2, 4-5, 8, 10-15, 17-19, 21-24, and 26-44 are examined on the merits herein.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “wherein the mechanical pump is configured to promote mixing of the personal care composition with air to promote the production of foam” in claim 41 and “wherein the personal care composition is adapted to produce… a foam having” a specific property in claims 42-44.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 12, 14-15, 32, and 42-44 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.
Regarding claim 12, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation “triethanolamine” following the phrase is part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, the limitation triethanolamine is considered to be merely exemplary of the claim.
Claim 12 recites the composition of claim 1, wherein the non-ionic surfactant comprises a lactylate. Claim 12 further recites the lactylate being an ammonium, sodium, potassium, or alkanolamine salt of a lactylate i.e., a salt of an anionic compound. As such, it is unclear whether the composition comprises a non-ionic surfactant or a lactylate salt, rendering the claim indefinite.
Claim 14 recites the composition of claim 12, wherein the lactylate comprises sodium lauroyl lactylate i.e., a salt of an anionic compound. As such, it is unclear whether the composition comprises a non-ionic surfactant or a lactylate salt, rendering the claim indefinite.
Claim 15 recites the composition of claim 12, wherein the non-ionic surfactant is a blend of decyl glucoside and sodium lauroyl lactylate i.e., a salt of an anionic compound. As such, it is unclear whether the composition comprises a non-ionic surfactant or a lactylate salt, rendering the claim indefinite.
Claim 32 is drawn to the composition of claim 23, wherein the nonionic surfactant comprises a lactylate selected from a group of sodium, TEA, and calcium lactylate salts i.e., salts of anionic compounds. As such, it is unclear whether the composition comprises a non-ionic surfactant or a lactylate salt, rendering the claim indefinite.
For examination purposes, the claims are interpreted as requiring a lactylate salt based on Applicant’s elected species of sodium lauroyl lactylate.
In claims 42-44, the limitation “wherein the composition is adapted to produce” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While the instant specification discloses at par. [0036] “without being limited to any specific theory, it is believed that a personal care product comprising a container comprising certain mechanical pumps in conjunction with certain personal care compositions can produce a foam from the personal care composition having certain desirable foam characteristics… for instance, the personal care composition when dispensed with the mechanical pump may produce a foam having an elastic modulus of about 10 to about 50 Pa” (emphasis added), there is no discussion about the specific structure of the composition that would cause the instantly claimed elastic modulus, elasticity, or yield stress when dispensed by the mechanical pump. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For examination purposes, the composition comprising the instantly claimed polyol, surfactant system, and water is interpreted as the composition being adapted to produce a foam having the instantly claimed properties.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12, 14-15, and 32 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 12 and 14-15 depend from claim 1, which recites a non-ionic surfactant. However, claims 12 and 14-15 recite the non-ionic surfactant being a lactylate salt i.e., a salt of an anionic compound. As such, claims 12 and 14-15 fail to include all of the limitations of claim 1.
Claim 32 depends from claim 23, which recites a non-ionic surfactant selected from a lactylate having carbon chains between C8 and C16. However, claim 32 recites the lactylate being a lactylate salt. As such, claim 32 fails to include all of the limitations of claim 23.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 5, 17, 23-24, 26-28, 30-31, and 37-44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bernard et al. (US 2015/0335538) as evidenced by Daiwa Can (“Foamers”).
Claim 1 is drawn to a personal care composition, comprising:
a polyol (more specifically glycerine and sorbitol(claim 17));
a surfactant system, wherein the surfactant system comprises:
one or more alkyl glucoside(s) (more specifically decyl glucoside (claim 5, Applicant’s elected species)),
an amphoteric surfactant,
an anionic surfactant selected from an anionic derivatives of proteins of plant origin, anionic derivatives of silk protein, a combination of two or more thereof, and
a non-ionic surfactant; and
water.
Bernard et al. teach cosmetic compositions comprising an alkyl glucoside surfactant, amphoteric surfactant, and water (Abstract). Bernard et al. further teach in Example 5 (Table 7 on pg. 17) a composition comprising:
glycerine and sorbitol;
decyl glucoside;
cocobetaine;
disodium cocoyl glutamate;
polyglyceryl-5 laurate; and
water.
As disclosed in par. [0042] of the instant specification, sodium cocoyl glutamate reads on an anionic derivative of proteins of plant or silk origin.
As such, claims 1, 5, and 17 are anticipated.
Claim 23 is drawn to a personal care composition, comprising:
a polyol;
a surfactant system, comprising:
an anionic surfactant selected from an anionic derivatives of proteins of plant origin, anionic derivatives of silk protein, a combination of two or more thereof (more specifically disodium cocoyl glutamate (claim 24)),
an amphoteric surfactant (more specifically coco betaine (claims 26-28)), and
a non-ionic surfactant selected from an alkyl glucoside, a lactylate having carbon chains between C8 and C16, and a combination of two or more thereof (more specifically decyl glucoside (claims 30-31)); and
optionally, water.
Bernard et al. teach cosmetic compositions comprising an alkyl glucoside surfactant, amphoteric surfactant, and water (Abstract). Bernard et al. further teach in Example 5 (Table 7 on pg. 17) a composition comprising:
glycerine and sorbitol;
disodium cocoyl glutamate;
coco betaine;
decyl glucoside; and
water.
As such, claims 24, 26-28, and 30-31 are anticipated.
Claim 37 is drawn to a personal care product comprising:
a container comprising a mechanical pump; and
a personal care composition disposed in the container, the personal care composition comprising:
a polyol;
a surfactant system, comprising:
an anionic surfactant selected from an anionic derivatives of proteins of plant origin, anionic derivatives of silk protein, a combination of two or more thereof,
an amphoteric surfactant (more specifically coco betaine, and
a non-ionic surfactant selected from an alkyl glucoside, a lactylate having carbon chains between C8 and C16, and a combination of two or more thereof (more specifically decyl glucoside; and
optionally, water.
Bernard et al. teach cosmetic compositions comprising an alkyl glucoside surfactant, amphoteric surfactant, and water (Abstract). Bernard et al. further teach in Example 5 (Table 7 on pg. 17) a composition comprising:
glycerine and sorbitol;
disodium cocoyl glutamate;
coco betaine;
decyl glucoside; and
water.
Bernard et al. further teach the composition being contained in a container with a foaming pump (Par. [0410]). And, as disclosed in par. [0042] of the instant specification, sodium cocoyl glutamate reads on an anionic derivative of proteins of plant or silk origin.
As such, claim 37 is anticipated.
Claim 38 is drawn to the product of claim 37, wherein the mechanical pump comprises a foaming chamber and a mesh disposed in the foaming chamber.
Claim 40 is drawn to the product of claim 38, wherein the mesh is configured to be a mesh screen.
Bernard et al. further teach the pump container being a Daiwa can F5 (Par. [0410]).
As evidenced by Daiwa Can, the pump comprises a foaming chamber with a coarse net and a fine net (i.e., a coarse and fine mesh) disposed in the foaming chamber (Figure on pg. 2).
As such, claims 38 and 40 are anticipated.
Claim 39 is drawn to the product of claim 28, wherein the foaming chamber comprises an inlet and a foam outlet, wherein the cross-sectional area of the foam outlet is greater than the cross-sectional area of the inlet by about 100 to about 500%.
As evidenced by Daiwa Can, the foaming chamber comprises an inlet and a foam outlet wherein the foam outlet is larger than the inlet by about 100 to about 500%.
As such, claim 39 is anticipated.
Claim 41 is drawn to the product of claim 37, wherein the mechanical pump is configured to promote mixing of the personal care composition with air to promote the production of foam.
As evidenced by Daiwa Can, the pump comprises a mixing chamber where the air and liquid (i.e., personal care composition) are mixed to produce foam (Figure on pg. 2). Therefore, the pump is configured to promote mixing of the personal care composition with air to promote the production of foam.
As such, claim 41 is anticipated.
Claim 42 is drawn to the product of claim 37, wherein the personal care composition is adapted to produce, when dispensed using the mechanical pump, a foam having an elastic modulus of about 10 to about 50 Pa at a stress of at least 8 Pa.
Claim 43 is drawn to the product of claim 37, wherein the personal care composition is adapted to produce, when dispensed using the mechanical pump, a foam having an elasticity of about 25 to 50 Pa.
Claim 44 is drawn to the product of claim 37, wherein the personal care composition is adapted to produce, when dispensed using the mechanical pump, a foam having a yield stress of about 4 to about 10 Pa.
As discussed in the rejection of claims 42-44 under 35 U.S.C. 112(b) above, a composition comprising the instantly claimed polyol, surfactant system, and water is interpreted as being adapted to produce, when dispensed using the mechanical pump, a foam having the instantly claimed properties.
As the composition of Bernard et al. comprises the instantly claimed polyol, surfactant system, and water, it reads on the claims.
As such, claims 42-44 are anticipated.
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.
Claims 2, 4, 8, 10-11, 17-19, 21-22, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard et al. as applied to claims 1, 5, 17, 23-24, 26-28, 30-31, and 37-44 above.
The teachings of Bernard et al. have been set forth above.
Claims 2 and 4 are drawn to the composition of claim 1, wherein the amphoteric surfactant is cocamidopropyl hydroxysultaine (Applicant’s elected species).
As discussed above, Example 5 of Bernard et al. teaches all of the limitations of instant claim 1. Example 5 of Bernard et al. does not comprise cocamidopropyl hydroxysultaine.
However, Bernard et al. teach both coco betaine and cocamidopropyl hydroxysultaine as suitable amphoteric surfactants (Par. [0158]).
And as discussed in MPEP 2141(I), "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when 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." Id. at 417, 82 USPQ2d at 1395-96.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Bernard et al. by substituting cocamidopropyl hydroxysultaine in the place of coco betaine. It would have been obvious to substitute one amphoteric surfactant suitable for foaming compositions for another to obtain a suitable foaming composition, with a reasonable expectation of success.
As such, claims 2 and 4 are rejected as prima facie obvious.
Claims 8 and 10-11 are drawn to the composition of claim 1, wherein the anionic surfactant comprises sodium cocoyl apple amino acids.
As discussed above, Example 5 of Bernard et al. teaches all of the limitations of instant claim 1. Example 5 of Bernard et al. does not comprise sodium cocoyl apple amino acids.
However, Bernard et al. teach both sodium salts of alkyl modified amino acids (e.g., disodium cocoyl glutamate) and sodium cocoyl apple amino acids as suitable anionic surfactants (Pars. [0220-221]).
And as discussed in MPEP 2141(I), "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when 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." Id. at 417, 82 USPQ2d at 1395-96.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Bernard et al. by substituting sodium cocoyl apple amino acids in the place of disodium cocoyl glutamate. It would have been obvious to substitute one anionic surfactant suitable for foaming compositions for another to obtain a suitable foaming composition, with a reasonable expectation of success.
As such, claims 8 and 10-11 are rejected as prima facie obvious.
Claim 18 is drawn to the composition of claim 1, wherein the polyol is butylene glycol.
As discussed above, Example 5 of Bernard et al. teaches all of the limitations of instant claim 1. Example 5 of Bernard et al. does not comprise butylene glycol.
However, Bernard et al. further teach glycerine and butylene glycol as suitable polyols (Par. [0262]).
And as discussed in MPEP 2141(I), "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when 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." Id. at 417, 82 USPQ2d at 1395-96.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Bernard et al. by substituting butylene glycol in the place of glycerine. It would have been obvious to substitute one polyol for foaming compositions for another to obtain a suitable foaming composition, with a reasonable expectation of success.
As such, claim 18 is rejected as prima facie obvious.
Claim 19 is drawn to the composition of claim 1, further comprising a polymeric thickener.
Example 5 of Bernard et al. does not comprise a polymeric thickener. However, Bernard et al. further teach the composition comprising a polymeric thickener (Pars. [0296-0305]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Bernard et al. to include a polymeric thickener. It would have been obvious to combine the known foaming composition with a known polymeric thickener suitable for use in foaming compositions to yield the predictable result of a suitable thickened foaming composition, with a reasonable expectation of success.
As such, claim 19 is rejected as prima facie obvious.
Claim 21 is drawn to the composition of claim 1, wherein the composition is a rinse off composition.
Claim 22 is drawn to the composition of claim 1, wherein the composition in in the form of a facial cleanser (Applicant’s elected species).
Bernard et al. further teach the compositions being used as a washing product for facial skin (Par. [0041]), i.e., a rinse off composition.
As such, claims 21-22 are rejected as prima facie obvious.
Claim 29 is drawn to the composition of claim 26, wherein the amphoteric surfactant is cocamidopropyl hydroxysultaine (Applicant’s elected species).
As discussed above, Example 5 of Bernard et al. teaches all of the limitations of instant claim 26. Example 5 of Bernard et al. does not comprise cocamidopropyl hydroxysultaine.
However, Bernard et al. teach both coco betaine and cocamidopropyl hydroxysultaine as suitable amphoteric surfactants (Par. [0158]).
And as discussed in MPEP 2141(I), "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when 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." Id. at 417, 82 USPQ2d at 1395-96.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Bernard et al. by substituting cocamidopropyl hydroxysultaine in the place of coco betaine. It would have been obvious to substitute one amphoteric surfactant suitable for foaming compositions for another to obtain a suitable foaming composition, with a reasonable expectation of success.
As such, claim 29 is rejected as prima facie obvious.
Claims 12-15 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard et al. as applied to claims 1, 5, 17, 23-24, 26-28, 30-31, and 37-44 above, and further in view of Maka et al. (US 2020/0206118).
The teachings of Bernard et al. have been set forth above.
Claims 12-15 are drawn to the composition of claim 1 comprising a blend of decyl glucoside and sodium lauroyl lactylate (Applicant’s elected species).
As discussed above, Example 5 of Bernard et al. teaches all of the limitations of instant claim 1, including the composition comprising decyl glucoside. Example 5 of Bernard et al. does not comprise sodium lauroyl lactylate.
Maka et al. also teach foaming compositions comprising an alkyl glucoside surfactant (Abstract, par. [0002]). Maka et al. further teach “The C8-C14 acyl lactylate is an anionic surfactant that typically serves as a foam booster and viscosity enhancer in the surfactant compositions according to the disclosure. The combination of the C8-C14 acyl lactylate with the other components of the surfactant combinations, in particular with the sugar-based surfactant comprising a C8-C14 alkyl glucoside, has been found to be particularly effective for enhancing foam quality” and sodium lauroyl lactylate being a suitable C8-C14 acyl lactylate (Par. [0019]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Bernard et al. to include sodium lauroyl lactylate. It would have been obvious to apply the known technique of including sodium lauroyl lactylate in a foaming composition to enhance the foam quality in combination with an alkyl glucoside surfactant to the known composition of Bernard et al. to improve it in the same way by enhancing the foam quality, with a reasonable expectation of success.
As such, claims 12-15 are rejected as prima facie obvious.
Claims 32-33 are drawn to the composition of claim 23, wherein the composition comprises an alkyl glucoside and a lactylate, more specifically decyl glucoside and sodium lauroyl lactylate (Applicant’s elected species).
As discussed above, Example 5 of Bernard et al. teaches all of the limitations of instant claim 23, including the composition comprising decyl glucoside. Example 5 of Bernard et al. does not comprise sodium lauroyl lactylate.
Maka et al. also teach foaming compositions comprising an alkyl glucoside surfactant (Abstract, par. [0002]). Maka et al. further teach “The C8-C14 acyl lactylate is an anionic surfactant that typically serves as a foam booster and viscosity enhancer in the surfactant compositions according to the disclosure. The combination of the C8-C14 acyl lactylate with the other components of the surfactant combinations, in particular with the sugar-based surfactant comprising a C8-C14 alkyl glucoside, has been found to be particularly effective for enhancing foam quality” and sodium lauroyl lactylate being a suitable C8-C14 acyl lactylate (Par. [0019]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Bernard et al. to include sodium lauroyl lactylate. It would have been obvious to apply the known technique of including sodium lauroyl lactylate in a foaming composition to enhance the foam quality in combination with an alkyl glucoside surfactant to the known composition of Bernard et al. to improve it in the same way by enhancing the foam quality, with a reasonable expectation of success.
As such, claims 32-33 are rejected as prima facie obvious.
Claim 19 is ADDITIONALLY rejected under 35 U.S.C. 103 as being unpatentable over Bernard et al. as applied to claims 1, 5, 17, 23-24, 26-28, 30-31, and 37-44 above, and further in view of Wang et al. (US 9,987,207).
The teachings of Bernard et al. have been set forth above.
Claim 19 is drawn to the composition of claim 1, further comprising a polymeric thickener, more specifically polyacrylate crosspolymer-6 (Applicant’s elected species).
As discussed above, Example 5 of Bernard et al. teaches all of the limitations of claim 1. Bernard et al. further teach the composition further comprising polymeric thickeners including polyacrylate crosspolymers (Pars. [0296-0305]). Bernard et al. do not teach Applicant’s elected species of polyacrylate crosspolymer-6.
Wang et al. also teach foaming cleansing compositions including polyacrylate crosspolymer-6 as a thickener agent (Abstract).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Bernard et al. to include polyacrylate crosspolymer-6. It would have been obvious to substitute one polyacrylate crosspolymer suitable for foaming cleanser composition for another to obtain the predictable result of a suitably thickened foaming cleanser composition, with a reasonable expectation of success.
As such, claim 19 is rejected as prima facie obvious.
Claims 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard et al. as applied to claims 1, 5, 17, 23-24, 26-28, 30-31, and 37-44 above, and further in view of Watanabe (WO 2020/071487) and Beneventi et al. (Colloids and Surfaces A, 2001, Vol. 189, 65-73).
The teachings of Bernard et al. have been set forth above.
Claims 34-36 are drawn to the composition of claim 23, wherein the personal care composition produces a foam having:
an elastic modulus of about 10 to about 50 Pa at a stress of at least 8 Pa;
an elasticity of about 25 to 50 Pa; and
a yield stress of about 4 to about 10 Pa.
As discussed above, Example 5 of Bernard et al. teaches all of the limitations of claim 23, additionally teaching the composition producing a foam (Pars. [0421-423]). Bernard et al. are silent as to the elastic modulus, elasticity, and yield stress of the foam.
Watanabe also teaches foaming skin cleansing compositions (Abstract). Watanabe further teaches the foam texture, elasticity, and shape retention are factors that impact the consumer experience when using the composition (Pg. 9 eighth paragraph – pg. 10 final paragraph), indicating that the physical properties of the foam (e.g., elastic modulus, elasticity, yield stress etc.) are result effective variables.
Beneventi et al., teach the surfactant structure having an effect on the foaming properties of an aqueous composition (Abstract), further teaching that the choice of surfactant and concentration of surfactant impact properties such as surface tension (Fig. 5) and foam stability (Fig. 6) of the composition, indicating that the physical properties of the foam can be modified by modifying the surfactant system in the composition.
And, as discussed by MPEP 2144.05, “where 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…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he 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” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the elastic modulus, elasticity, and yield stress of the foam are clearly result-effective variables, determining the positivity of the consumer experience using the foaming cleanser. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal elastic modulus, elasticity, and yield stress in order to best achieve the desired results.
As such, claims 34-36 are rejected as prima facie obvious.
Conclusion
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/PAUL HOERNER/Examiner, Art Unit 1611
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