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 Acknowledged
Applicant's election with traverse of the invention of Group I encompassing claims 1-9 in the reply filed on 4/8/2026 is acknowledged. The traversal is on the ground(s) that Groups I and II are linked as to form a single general inventive concept. This is not found persuasive because, as noted in the restriction requirement mailed 4/1/2026, the Groups lack a unifying feature as the special technical feature is described by Brogden (US 2009/0130032).
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/30/2024 was considered by the examiner.
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 and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fevola (US 2012/0157365).
Fevola provides an sulfate surfactant-free (see [0005] and claim 11) aqueous shampoo composition comprising an anionic surfactant, such as acyl taurates (see [0047, 0057] and claim 1; see instant claims 1 and 2), in an amount of 1.5-10% by weight (see [0060]; see instant claim 1) and an organic acid, such as benzoic acid, salicylic acid and/or sorbic acid (see [0044] and claims 1 and 17) in an amount of 0.25-2% by weight (see [0046]; see instant claims 1, 3 and 4). The properties of the acid, e.g pKa and log P, presently claimed are inherent to the acids claimed. Moreover, the overlapping values disclosed by Fevola are considered sufficiently specific to be considered anticipatory. See MPEP 2131.03(II). The shampoo may also comprise zwitterionic surfactants, such as betaine and sultaine surfactants (see [0025, 0027] and claims 1 and 5; see instant claim 8)
The limitation recited by instant claim 1 that ‘the composition in a 50% aqueous solution has a pH from 2.9 to 5.2 and further wherein the composition is substantially sulfate free, wherein the anionic surfactant….” is considered an intended use limitation as it describes properties of the composition when used/formulated in a specific way (i.e. ‘in a 50% aqueous solution’). However, the limitation does not require the composition to have such a structure but instead describes the properties of a formulation when the claimed composition is formulated in a specific way. See MPEP 2111.02(II) regarding intended use limitations. Instant claims 6 and 7 are similarly intended use claims as the describe how the composition is used without limiting the structure of the composition being claimed.
Regarding instant claim 5, the compositions property of having a Zein value of less than or equal to 7 is an inherent property associated with a composition of that claimed. That is, because the claimed and prior art products are identical in composition (water, anionic surfactant and organic acid), the resulting composition would be expected to have the specified properties, unless shown otherwise. See MPEP 2112.01.
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 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fevola (US 2012/0157365) in view of Kulkarni et al. (US 2015/0044157).
Fevola is relied upon for disclosure described in the rejection of claims 1 and 3-8 under 35 U.S.C. 102(a)(1).
Fevola fails to teach their shampoo composition as being isotropic or lamellar.
Kulkarni describes an aqueous shampoo that comprises a mixture of surfactants and benefit agents such as anti-acne agents and depigmenting agents such as retinol and resorcinol (see [0083]). Kulkarni’s shampoo is to be in the form of spherulites, i.e. lamellar droplets, formed from an aqueous solution of the surfactant (see [0003 and 0030]). It is taught that lamellar formulation exhibits good suspending properties and are capable of suspending water insoluble or partially water-soluble solids, liquids and gases as a separate, discontinuous phase suspended in a continuous matrix of surfactant (See [0030]). Thus, it would have been obvious to modify Fevola to further include benefit agents, such as retinol and resorcinol, and structure the composition as a lamellar composition as doing so imparts stability and yields good suspending properties. See MPEP 2143(I)(A).
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Claim Rejections - 35 USC § 112
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.
Claim 3 is 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.
Claim 3, dependent from claim 1, recites, “…wherein the acid is propionic, n-butryic, isobutryic, pentanoic, hexanoic, heptanoic, octanoic, nonanoic and/or decanoic acid, adipic, but-3-enoic, but-2-ynoic, crotonic, isocrotonic, sorbic, angelic, tiglic, tetrolic, coumaric, benzoic, p-amino benzoic, salicylic, capryloyl salicylic, 3-hydroxybenzoic, 4-hydroxybenzoic, gallic, ethoxyphenylphosphonic, 4-methylphenylphosphonic, 4-chlorophenylphosphonic, phenylphosphonic acid or a mixture thereof.” However, claim 1 recites “wherein the acid is benzoic acid, salicylic acid or a mixture thereof.” Accordingly, claim 3 does not further limit claim 1 as it broadens the claim from which it depends from by introducing additional species.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A PURDY/Primary Examiner, Art Unit 1611
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