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 .
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.
Claim Status
Claims 1-20 are currently pending.
Priority
The instant application claims domestic benefit to U.S. Application No. 63/531,194 filed on 08/07/2023 as reflected in the filing receipt dated on 10/15/2024.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/14/2024 and 06/25/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-19, in the reply filed on 06/23/2026 is acknowledged. In response to the species election requirement, Applicant further elected a shampoo formulation comprising the surfactant of Formula I, a foaming agent, a thickener, a foam booster, a pH stabilizer, a soil penetrating agent, and a fragrance, wherein Formula I corresponds to Surfactant 2 shown below (R1 is methyl, R2 is methyl, R3 is ester, n is 5, and X is bromide).
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The Examiner notes that Applicant’s elected species of shampoo formulation is free of the prior art. Schorzman et al. (US20080152540A1; published: 06/26/2008; IDS of 08/14/2024) and Asirvatham et al. (US20210186842A1; published: 06/24/2021; IDS of 08/14/2024) represent the closest prior art.
Schorzman teaches several monomer structures which read on Applicant’s Formula I wherein R1 is methyl, R2 is methyl, R3 is ester, N is 5, and X is bromide [0030, Formulae III, V, and VII]. However, the reference does not teach the specific ester of Applicant’s elected “Surfactant 2” shown above, nor does the reference teach Applicant’s elected shampoo formulation since the solutions of Schorzman comprise the polymerization product of the disclosed monomers [claim 6].
Asirvatham teaches a shampoo formulation comprising: at least one surfactant of Formula I (shown below), wherein the terminal nitrogen is optionally further substituted with R3, a foaming agent, a thickener, and water [claim 1].
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The formulation may also comprise Applicant’s elected foam booster, a pH stabilizer, a soil penetration agent, and a fragrance [claims 2-5]. However, too much picking and choosing from the teachings of Asirvatham is required to arrive at an intermediate that would still need to be converted to an ester to achieve a terminal nitrogen having the ester substituent of Applicant’s elected species of Formula I.
Because Applicant’s original elected species requires too much hindsight to be prima facie obvious in view of the prior art, the Examiner has expanded the species election to include species of Formula I wherein R3 is alcohol or C3-C8 carboxylic acid, as both are obvious in view of Asirvatham.
Claims 1-20 are pending in the application. Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/23/2026. Accordingly, claims 1-5 are being examined on the merits herein.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Asirvatham (US20210186842A1; published: 06/24/2021; IDS of 08/14/2024).
Asirvatham, throughout the reference, teaches personal care products including one or more siloxane derivatives of amino acids having surface-active properties [abstract and claims]. Specifically, Asirvatham teaches a shampoo formulation comprising: at least one surfactant of Formula I (shown below), at least one of a foaming agent and a thickener, and water [claim 1].
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Asirvatham teaches that R1 and R2 may be the same or different, selected from a C1-C6 alkyl which may be optionally substituted with one or more substituents selected from hydroxyl, amino, amido, sulfonyl, sulfonate, carbonyl, carboxyl, and carboxylate; n is an integer from 1 to 12; the terminal nitrogen is optionally substituted with R3, wherein R3 is selected from hydrogel, oxygen, hydroxyl, and C-1-C6 alkyl; and optionally includes a counterion selected from chloride, bromide, and iodide [claim 1].
Regarding claim 1: All of Asirvatham’s exemplary surfactants of Formula I comprise two N-terminal C1 alkyl groups and n is 5 [0263, table 1]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make shampoo formulation comprising: a foaming agent, a thickener, water, and a surfactant of Asirvatham’s Formula I having any of the specifically disclosed substituents, such as:
(1) a surfactant wherein n is 5, R1 and R3 are each a C1 alkyl, R2 is a C1-C6 alkyl substituted with a hydroxyl, and the counterion is bromide, which reads on Applicant’s elected species of instant Formula I wherein n is 5, R1 and R2 are each methyl, R3 is alcohol, and X is bromide; or
(2) a surfactant wherein n is 5, R1 and R3 are each a C1 alkyl, R2 is a C3-C6 alkyl substituted with a carboxyl, and the counterion is bromide, which reads on Applicant’s elected species of instant Formula I wherein n is 5, R1 and R2 are each methyl, R3 is a C3-C8 carboxylic acid, and X is bromide.
Regarding claim 2: The reference teaches that the shampoo formulation further comprises a foam booster.
Regarding claim 3: The reference teaches that the shampoo formulation further comprises a pH stabilizer.
Regarding claim 4: The reference teaches that the shampoo formulation further comprises a soil penetrating agent.
Regarding claim 5: The reference teaches that the shampoo formulation further comprises a fragrance.
Taken together, Applicant’s elected species of shampoo formulation is rendered prima facie obvious in view of Asirvatham.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,571,377 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite formulations that encompass compounds that read on those included in the expanded species election [see reference claims 1, 6, and 12]. The reference claims also recite a shampoo formulation comprising a foaming agent, a thickener, water, a foam booster, a pH stabilizer, a soil penetration agent, and a fragrance [see reference claims 1-5, for example].
Therefore, it would have been obvious to one of ordinary skill in the art to make shampoo formulation comprising: a foaming agent, a thickener, water, and a surfactant of Asirvatham’s Formula I having any of the specifically recited substituents, such as:
(1) a surfactant wherein n is 5, R1 and R3 are each a C1 alkyl, R2 is a C1-C6 alkyl substituted with a hydroxyl, and the counterion is bromide, which reads on Applicant’s elected species of instant Formula I wherein n is 5, R1 and R2 are each methyl, R3 is alcohol, and X is bromide; or
(2) a surfactant wherein n is 5, R1 and R3 are each a C1 alkyl, R2 is a C3-C6 alkyl substituted with a carboxyl, and the counterion is bromide, which reads on Applicant’s elected species of instant Formula I wherein n is 5, R1 and R2 are each methyl, R3 is a C3-C8 carboxylic acid, and X is bromide.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,466,846 B2 in view of Asirvatham (US20210186842A1; published: 06/24/2021; IDS of 08/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims encompass compounds that read on Applicant’s original elected species of Formula I (see Surfactant 2 show above under “Election/Restrictions”) as well as those included in the expanded species election [see reference claims 1, 3-5, 7, and 14, for example].
While the reference claims do not recite a formulation comprising the compound and additional ingredients recited in instant claims 1-5, this deficiency is cured by Asirvatham whose teachings are as set forth above and further incorporated herein.
Regarding instant claims 1-5: It would have been obvious to one of ordinary skill in the art to combine one or more compounds recited in the reference claims with a foaming agent, a thickener, water, a foam booster, a pH stabilizer, a soil penetration agent, and a fragrance because Asirvatham teaches that these ingredients are known in the art to be useful together in formulating shampoos.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/795,165 (reference application) as evidenced by Asirvatham (US20210187110A1; published 06/24/2021; IDS of 08/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite formulations which encompass surfactant compounds that read on Applicant’s original elected species of Formula I (see Surfactant 2 show above under “Election/Restrictions”) as well as those included in the expanded species election [see reference claims 1, 6, and 11, for example]. The embodiments of the reference surfactant can be used as foaming agents as evidenced by Asirvatham [0142-0143; claims], which under broadest reasonable interpretation are foam boosters. Surfactants are also soil penetration agents under broadest reasonable interpretation due to their inherent surface-active properties. The reference formulations can also comprise a thickener, water (aqueous component/phase), and a buffer, which under broadest reasonable interpretation is a pH stabilizer [see reference claims 6, 7, 9, and 11, for example].
While the reference claims are drawn to the intended use of “healthcare”, the structure of reference formulation is not patentably distinct from that of the instantly claimed formulation, as shampoo formulations can also comprise active ingredients, proteins, vitamins, supplements, minerals, excipients, binders, fillers, salts, colorants, etc. in solid, liquid, or emulsion form.
While the reference claims do not recite that the formulation further comprises a fragrance as recited in instant claim 5, it would have been obvious to one of ordinary skill in the art to further include a fragrance in reference formulation to improve the scent of the formulation which can be in the form of a lotion, for example [see reference claim 10].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-15 of copending Application No. 18/795,170 (reference application) as evidenced by Asirvatham (US20210187110A1; published 06/24/2021; IDS of 08/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite a formulation which encompass surfactant compounds that read on Applicant’s original elected species of Formula I (see Surfactant 2 show above under “Election/Restrictions”) as well as those included in the expanded species election, and water [see reference claims 1, 8, and 11, for example]. The embodiments of the reference surfactant can be used as foaming agents as evidenced by Asirvatham [0142-0143; claims], which under broadest reasonable interpretation are foam boosters. Surfactants are also soil penetration agents under broadest reasonable interpretation due to their inherent surface-active properties. The reference formulations can also comprise a thickener, a buffer, which under broadest reasonable interpretation is a pH stabilizer, and perfumes, which are a species of fragrances [see reference claim 14].
While the reference claims are drawn to the intended use of “cleaning”, the structure of reference formulation is not patentably distinct from that of the instantly claimed formulation, as shampoo formulations can also comprise detergents, soaps, builders, enzymes, polymers, solvents and co-solvents, antimicrobial agents, and additives.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/795,160 (reference application) as evidenced by Asirvatham (US20210187110A1; published 06/24/2021; IDS of 08/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite a formulation which encompass surfactant compounds that read on Applicant’s original elected species of Formula I (see Surfactant 2 show above under “Election/Restrictions”) as well as those included in the expanded species election, and water [see reference claim 1, for example]. The embodiments of the reference surfactant can be used as foaming agents as evidenced by Asirvatham [0142-0143; claims], which under broadest reasonable interpretation are foam boosters. Surfactants are also soil penetration agents under broadest reasonable interpretation due to their inherent surface-active properties.
While the reference claims are drawn to the intended use of “recovery of hydrocarbons”, the structure of reference formulation is not patentably distinct from that of the instantly claimed formulation, as shampoo formulations can also comprise additional surfactants, inorganic salts, polymers, lecithin, solvents, gasses, and additives like alcohols, biocides, etc.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-9 of copending Application No. 18/795,161 (reference application) as evidenced by Asirvatham (US20210187110A1; published 06/24/2021; IDS of 08/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite a formulation which encompass surfactant compounds that read on Applicant’s original elected species of Formula I (see Surfactant 2 show above under “Election/Restrictions”) as well as those included in the expanded species election [see reference claim 1, for example]. The embodiments of the reference surfactant can be used as foaming agents as evidenced by Asirvatham [0142-0143; claims], which under broadest reasonable interpretation are foam boosters. Surfactants are also soil penetration agents under broadest reasonable interpretation due to their inherent surface-active properties.
While the reference claims are drawn to the intended use of “photoresist stripping”, the structure of reference formulation is not patentably distinct from that of the instantly claimed formulation, as shampoo formulations can also comprise alkanolamines, sulfoxides, sulfones, and glycol ethers.
While the reference claims do not recite that the formulation further comprises water as recited in instant claim 1, it would have been obvious to one of ordinary skill in the art to use any commonly known polar solvent, such as water, to produce a formulation comprising a charged surfactant.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/355,385 (reference application) in view of Asirvatham (US20210186842A1; published: 06/24/2021; IDS of 08/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite a liquid medium comprising water and compounds that read on Applicant’s original elected species of Formula I (see Surfactant 2 show above under “Election/Restrictions”) as well as those included in the expanded species election [see reference claims 1, 3-5, 7, and 14, for example].
While the reference claims do not recite that the liquid medium further comprises the additional ingredients recited in instant claims 1-5, this deficiency is cured by Asirvatham whose teachings are as set forth above and further incorporated herein.
Regarding instant claims 1-5: It would have been obvious to one of ordinary skill in the art to modify the liquid medium recited in the reference claims by further including foaming agent, a thickener, a foam booster, a pH stabilizer, a soil penetration agent, and a fragrance because Asirvatham teaches that these ingredients are known in the art to be useful together in formulating shampoos.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-19, and 27 of copending Application No. 19/355,385 (reference application) in view of Asirvatham (US20210186842A1; published: 06/24/2021; IDS of 08/14/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims encompass compounds that read on Applicant’s original elected species of Formula I (see Surfactant 2 show above under “Election/Restrictions”) as well as those included in the expanded species election [see reference claims 1 when Y is (C), for example].
While the reference claims do not recite a formulation comprising the compound and additional ingredients recited in instant claims 1-5, this deficiency is cured by Asirvatham whose teachings are as set forth above and further incorporated herein.
Regarding instant claims 1-5: It would have been obvious to one of ordinary skill in the art to combine one or more compounds recited in the reference claims with a foaming agent, a thickener, water, a foam booster, a pH stabilizer, a soil penetration agent, and a fragrance because Asirvatham teaches that these ingredients are known in the art to be useful together in formulating shampoos.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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