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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed on 05/07/2025. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see attached USPTO form.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 8 is objected to because of the following informalities: the phrase “wherein the anionic surfactant to zwitterionic surfactant is at a weight ratio from 1:1 to 1 to 2.2” should read “a weight ratio from 1:1 to 1:2.2.” Appropriate correction is required.
Claim 12 is objected to because of the following informalities: it should read “and further comprises sodium benzoate” in line 2. 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 1-16 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.
With regards to claim 1, the phrases “the composition has from 3.0 to 15% by weight total surfactant” and “the total surfactant comprises from 8 to 70% by weight amphoteric surfactant, zwitterionic surfactant or both based on total weight of anionic, and zwitterionic and/or amphoteric surfactant in the composition” renders the claim indefinite. It is unclear if the total surfactant comprises of anionic, amphoteric, and zwitterionic surfactant exclusively or if the total surfactant can also comprise of other types of surfactants (ex: cationic and nonionic surfactants). For the purposes of compact prosecution, the claim will be interpreted as zwitterionic or amphoteric surfactant comprising 8-70 wt% of the 3-15 wt% total surfactant composition where the total surfactant composition can include anionic, cationic, zwitterionic, and amphoteric surfactant.
Claims 2-16 inherit this rejection.
With regards to claim 3, the phrase “wherein the composition comprises from 10 to 65%, by weight amphoteric surfactant, zwitterionic surfactant or both based on total weight of anionic, and zwitterionic and/or amphoteric surfactant in the composition” renders the claim indefinite. It is unclear if the amphoteric or zwitterionic surfactant alone should comprise 10-65 wt% of the sum of the anionic, zwitterionic, and amphoteric surfactant or if the sum of the zwitterionic and amphoteric surfactant should comprise 10-65 wt% of the sum of the anionic, zwitterionic, and amphoteric surfactant. For the purposes of compact prosecution, the claim will be interpreted as the combination of zwitterionic and amphoteric surfactant comprises 10-65 wt% of the sum of the anionic, zwitterionic, and amphoteric surfactant.
With regards to claim 6, the phrase “wherein the synthetic thickener is ammonium acryloyldimethyltaurate vinylpyrrolidone copolymer, alkyl acrylate crosslinked polymer or a mixture thereof” renders the claim indefinite. It is unclear if the synthetic thickener is required because claim 5, from which claim 6 depends, does not require the presence of synthetic thickener. For the purposes of compact prosecution, claim 6 will be interpreted as if present, the synthetic thickener is ammonium acryloyldimethyltaurate vinylpyrrolidone copolymer, alkyl acrylate crosslinked polymer or a mixture but it is not required.
Claim 13 contains the trademark/trade name Octopirox. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe piroctone olamine and, accordingly, the identification/description is indefinite.
With regards to claim 14, the phrase “the zwitterionic surfactant is a betaine” renders the claim indefinite. It is unclear if zwitterionic surfactant is required since claim 1, from which claim 14 depends, requires either amphoteric or zwitterionic surfactant. For the purposes of compact prosecution, the claim will be interpreted as if the zwitterionic surfactant is present, then it is a betaine.
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 1-6, 8-11, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Doi (US20170246096A1).
Doi teaches a cleaning composition for skin or hair comprising of an olefin sulfonate surfactant (see Abstract). With regards to claim 1, Doi teaches the use of nonionic, and amphoteric surfactants at preferably 10 mass% or less of the cleansing composition (see [0156], [21]). Doi also teaches the use of thickener such as hydroxypropyl starch, hydroxyethyl cellulose, hydroxypropyl cellulose, carboxymethyl cellulose, and hydroxypropyl methyl cellulose (see [0108]). The thickener is preferably present in 0.01-10 mass% of the cleaning composition (see [0109]). In Table 8, Formula Examples 105-106, 110, and 113-114 comprise 10-15 mass % of total surfactant. In Formula 106 specifically, the betaine lauryldimethylaminoacetate surfactant comprises 19.35% (2.4 ÷ (8+2+2.4)) of the total surfactant in the system. The pH of the cleansing composition is taught to be adjusted to 6 (see [0199]). Isethionate and sulfates are optionally taught but not required in the inventive composition.
Doi does not explicitly disclose the thickener, anionic surfactant, and betaine surfactant in a single embodiment to the point of anticipation. However, in Formulas 108-110 Doi teaches inventive compositions comprising an olefin sulfonate (an anionic surfactant), a betaine surfactant, hydroxypropyl cellulose, sodium polyacrylate, carboxyvinyl polymer, cationic guar gum, and guar gum (suitable thickening polymers), among others (see Table 8). Guar gum, cationic guar gum, sodium polyacrylate, carboxyvinyl polymer, and hydroxypropyl starch are all taught to be suitable thickeners (see [0108]). It would have been obvious to a person of ordinary skill in the art before the effective filing date to create an inventive composition comprising olefine sulfonate, a betaine surfactant, and hydroxypropyl cellulose, substituting hydroxypropyl starch as the other thickener. The substitution of equivalents known in the art for the same purpose is prima facie obvious. This combination would have the expected benefit of improved stability and viscosity adjustment (see [0107]).
A person of ordinary skill in the art would reasonably expect to optimize the mass % of the guar gum, cationic guar gum, sodium polyacrylate, carboxyvinyl polymer, and hydroxypropyl cellulose thickeners taught in Table 8 to arrive at the starch:cellulose ratio recited in the instant claim. In Formulas 108-110, the total amount of thickener is 1.7 mass% (0.4 mass% cationic guar gum, 0.5 mass% carboxyvinyl polymer, sodium polyacrylate 0.3 mass%, 0.2 mass% guar gum, 0.3 mass% hydroxypropyl cellulose) and the ratio of non-cellulose thickeners: cellulose is 4.67:1 (1.4:0.3) (see Table 8). “Where general conditions of the claims are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. Even though applicant' s modification results in great improvement and utility over prior art, it may still not be patentable if modification was within the capabilities of one skilled in the art.” In Re Aller, 105 USPQ 233.
With regards to claims 2 and 14, Doi teaches the use of acyl methyl taurate and betaine surfactants, among others (see [0053]; see also [0059]). In Formulas 109, the total amount of surfactant is 13 mass%, and 0.3 mass% hydroxypropyl cellulose (see Table 8). The pH of the composition was adjusted to 6 (see [0199]). Doi teaches the preferably ratio of sulfate surfactant:thickener to be 10 (see [0109]). A person of ordinary skill in the art would have been motivated to increase the thickener mass in the formulation to 1 mass% using other thickeners such as hydroxypropyl starch. The general teachings of Doi could be optimized to arrive at the thickener composition recited in the instant claim.
With regards to claim 3, the pH of the composition is taught to be 6 as recited above (see [0199]). In Formula 106 specifically, the betaine lauryldimethylaminoacetate surfactant comprises 19.35% (2.4 ÷ (8+2+2.4)) of the total surfactant in the system (see Table 8).
With regards to claim 4, Doi teaches the use of hydroxystearic acid (see [0124]).
With regards to claims 5-6, synthetic thickeners, silicones, and methyl parabens are optionally taught but not required in the inventive composition of Doi. Formula 109 is free of synthetic thickeners, silicone, acrylate and acrylic acid copolymers, and methyl paraben. Hydantoin is not recited by Doi.
With regards to claim 8, Doi generally teaches the ratio of component A olefin sulfonate (anionic surfactant): betaine surfactant (component B) to preferably be 5:1 (see [0060]; see also [0070]). A prima facie case for obviousness exists for overlapping ranges.
With regards to claim 9, water is taught in balance in the example formulations (see Table 2-8). However, the weight % of water in the compositions necessarily falls within the ranges recited in the instant claim based on the mass % of the other components. For example, in Formula 89 the sum of the other components is 16.45 mass % (see Table 7). The remaining 83.55 mass % is comprised of water and the pH adjuster.
With regards to claim 10, Doi teaches the use of water-soluble salts and organic acids in the composition (see [0110]). Formulas 105-114 teach the use of ascorbic acid, sodium chloride, trisodium citrate among other water-soluble benefit agents. Doi also teaches the use of specific ester oils used in the composition for softening such as castor oil, avocado oil, shea butter oil, among others (see [0122]).
With regards to claim 11, Doi teaches the use of nicotinic acid amide derivatives (niacinamide) as suitable vitamin agents (see [0103]).
With regards to claim 13, Doi teaches the use of zinc pyrithione, and piroctone olamine (Octopirox) as suitable antibacterial agents (see [0081]; see also Table 9).
With regards to claim 15, methyl paraben is optionally taught but not required in the inventive composition of Doi. Soap and formaldehyde donors are not mentioned. Formula 113 comprises of 11 mass% total surfactant (see Table 8).
With regards to claim 16, Doi teaches the use of vitamin agents such as vitamin C, vitamin B6, pantothenic acid, ascorbic acid phosphoric acid ester, among others (see [0103]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Doi as applied to claims 1-6, 8-10, and 13-16 above in view of Kadir et. al (US20210154120A1) hereinafter Kadir.
The teachings of Doi are recited above. With regards to claim 7, Doi teaches the use of acyl methyl taurate and fatty acid amidopropyl betaine surfactants such as cocoamidoproyl betaine (see [0053]; see also [0059]). However, Doi fails to explicitly teach the use of sodium methyl lauroyl taurate anionic surfactant.
Kadir teaches a hair composition comprising anionic olefin surfactant, amphoteric betaine surfactants such as cocoamidopropyl betaine, and polysaccharide rheology modifiers such as celluloses and starches (see [0091]; [0116]; [0086]). Kadir teaches different examples of suitable taurate surfactants such as sodium methyl lauroyl taurate (see [0095]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to use the sodium methyl lauroyl taurate surfactant taught by Kadir instead of the acyl methyl taurate taught by Doi. This modification would lead to expected benefit of improving the hair modifying effect of the composition (see [0050]).
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Doi as applied to claims 1-6, 8-10, and 13-16 above in view of Albrecht et. al (EP1384467A1) hereinafter Albrecht.
The teachings of Doi are recited above. With regards to claim 12, Doi teaches sulfates, methyl parabens, and silicones as optional ingredients in the composition however, the inventive composition can be formulated free of sulfates, parabens, and silicones. Formula 106 is an example of such a composition. Doi fails to disclose the presence of sodium benzoate in the composition.
Albrecht teaches a hair cleaning composition comprising surfactants, film-formers, and elastomers (see Abstract). Albrecht teaches the use of sodium olefin sulfonates and sodium lauroyl taurate anionic surfactants and alkylamidopropylbetaine surfactants (see [0025]-[0028]). The use of 0.4 wt% sodium benzoate is also taught in the Example formulations (see [0065]). Albrecht also teaches the use of benzoic acid (the conjugate acid of sodium benzoate) preservatives in the composition (see [0053]).
It would have been obvious to a person of ordinary skill before effective filing date to add to the inventive composition of Doi sodium benzoate preservative as taught by Albrecht. This modification would have the expected benefit of advantageously comprising preservation auxiliaries and hence, improved preservation of the composition (see [0053]).
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/115,476. Application ‘476 teaches a substantially similar wash composition comprising of an anionic surfactant (preferably a taurate), zwitterionic or amphoteric surfactant (preferably a betaine), thickener comprising starch and cellulose, and benefit agents in overlapping weight and pH ranges. The inventive wash composition of the instant application is not patentably distinct from the wash composition of ‘476. Therefore, instant claims 1-16 are an obvious formulation in view of claims 1-15 of copending Application No. 19/115,476.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/878,339. Application ‘339 teaches a substantially similar wash composition comprising of an anionic surfactant (preferably a taurate), zwitterionic or amphoteric surfactant (preferably a betaine), thickener comprising starch and cellulose, and benefit agents in overlapping weight and pH ranges. The inventive wash composition of the instant application is not patentably distinct from the wash composition of ‘339. Therefore, instant claims 1-16 are an obvious formulation in view of claims 1-16 of copending Application 18/878,339.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/SP/Patent Examiner, Art Unit 1761
/BRIAN P MRUK/Primary Examiner, Art Unit 1761
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