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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP 2219213, filed on 09/06/2022.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claim 8 and 15 include the phrase “substantially free of” in line 1. “Substantially free of” is defined in the instant Specification as being less than 3.5 wt% of the composition (see page 5, lines 19-20). Claim 8 is being interpreted as the wash composition comprising of 3.5 wt% or less of alkyl sulfate, alkyl ether sulfate, and soap. Claim 15 is being interpreted as the composition comprising 3.5 wt% or less of hydantoins.
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 phrase “unsaturated zwitterionic surfactant” renders the claim unclear. The instant Specification notes an “unsaturated zwitterionic surfactant means a surfactant like a betaine having at least one double bond, and preferably, one double bond in surfactant hydrophobic chain” (see page 4, lines 23-25). It is unclear whether the unsaturated surfactant necessarily needs to be a betaine with a double bond or a different zwitterionic surfactant with a double bond would suffice. The phrase “the unsaturated zwitterionic surfactant comprises a hydrophobic tail comprising 2.5 to 20% by weight C18:1, and 0.45 to 4.5%, by weight C18:2, and 5 to 22% by weight in total of Cs and C10 carbon chains based on total weight of the hydrophobic tail on the zwitterionic surfactant” also renders the claim unclear. It is also unclear whether the location of the double bond needs to be in the hydrophobic tail specifically or anywhere else in the surfactant, whether one or two double bonds are required in the surfactant, and if the hydrophobic tail is required to comprise of a C8 or C10 alkyl chain. For the purpose of compact prosecution, the claim will be interpreted as a zwitterionic or amphoteric surfactant with a double bond in the formula that can comprise of a mixture of C8 and C10 alkyl chains.
Claims 2-16 inherit this rejection.
With regards to claim 6, the phrase “the unsaturated zwitterionic comprises 3.5 to 15% by weight C18:1, and 0.75 to 4% by weight C18:2, and 5 to 22%, and 6.5 to 20% by weight in total of C8 and C10 carbon chains based on total weight of hydrophobic tail on the zwitterionic surfactant” renders the claim unclear. It is unclear whether these ranges are required only when two double bonds are present or that two double bonds are required in the unsaturated surfactant. For the purpose of compact prosecution, the claim will be interpreted as weight ranges are required when two double bonds are present in the surfactant.
With regards to claim 3 and 7, the phrases “wherein the C8 and C10 hydrophobic tails present on the zwitterionic surfactants are present at a weight ratio from 3:7 to 7:3” and “wherein the C8 and C10 and hydrophobic tails present on the zwitterionic surfactants are present at a weight ratio from 4:6 to 6:4” renders the phrase unclear because independent claim 1 does not explicitly state the unsaturated zwitterionic surfactant as requiring a C8 and C10 hydrophobic tail. For the purpose of compact prosecution, the claims will be interpreted as comprising of a mixture of C8 and C10 alkyl chains.
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.
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 1-11, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Pelegow et. al (EP2956533B1) hereinafter Pelegow.
Pelegrow teaches an enzyme containing liquid washing composition (see [0001]). With regards to claims 1-2 and 14, the use of anionic surfactants such as fatty acid isethionates (see [0043]), and thickeners such as starch derivatives, cellulose derivatives, and polysacchiride and xanthan gum are taught (see [0113]-[0114]). The use of nonionic surfactants is taught at 1-30 wt% of the composition (see [0070]). A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I), although nonionic surfactants is not required in the instant composition because the lower weight limit is 0. Pelegrow also teaches the use of betaines according to formula I where R-1 can be an unsaturated preferably C8-C18 alkyl radical (see [0052]).
Although the isethionate surfactant, thickener, and unsaturated betaine surfactant are not disclosed in a single embodiment to the point of anticipation, it would be obvious to a person of ordinary skill in the art before the effective filing date to combine all of these limitations into one inventive cleaning composition. This combination would have the expected benefit of improved run-off and drying behavior (see [0108]). Pelegow does not explicitly disclose the hydrophobic tail composition as recited in the instant claim, however a person of ordinary skill would reasonably have optimized the betaine surfactant of formula I to overlap with the unsaturated zwitterionic surfactant of the instant claim. “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 3 and 7, Pelegow does not explicitly disclose the C8 and C10 hydrophobic tails composition to be present in a weight ratio of between 3:7 to 7:3 as recited in claim3, or 4:6 to 6:4 as recited in claim 7. However, based on the general teachings of the betaine surfactant of formula I, the examiner asserts it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the proportions of the C8, and C10 hydrophobic tail ratio in the surfactant through routine experimentation for best results.
With regards to claims 4-5, Pelegow teaches the thickener can be a starch derivative, cellulose derivative, or a gum (see [0113]). The instant Specification notes gum, starch, and cellulose are all organic matter that can be broken down by microorganisms (see page 5, lines 19-20). As such, the suitable thickeners taught by Pelegow necessarily consists of organic matter and can be broken down by microorganisms.
With regards to claim 6, Pelegow does not explicitly disclose the hydrophobic tail composition as recited in the instant claim. However a person of ordinary skill would reasonably have optimized the betaine surfactant of formula I to overlap with the unsaturated zwitterionic surfactant of the instant claim. “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 claim 8, Pelegow teaches the optional use of alkyl ether sulfates, however it is not required in the composition (see [0036]).
With regards to claims 9-10, less than 0.35 wt% of synthetic thickener includes 0 as the lower limit. Hence, synthetic thickener need not be present in the composition.
With regards to claim 11, Pelegow does not explicitly disclose the composition to be lamellar or isotropic. However, the general teachings of Pelegow recite limitations of thickener, anionic surfactant, and unsaturated betaine surfactant of the inventive composition. Therefore a person of ordinary skill would reasonably expect the composition to be isotropic or lamellar. “Products of identical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical compounds, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II.
With regards to claim 13, the pH of the composition is taught to be between 5.5 and 8.5 to ensure good skin compatibility (see [0018]).
With regards to claim 15, Pelegow does not teach the use of hydantoins in the composition, and hence it is not required.
With regards to claim 16, Pelegow explicitly teaches the use of vitamin C among other skin active ingredients (see [0107]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Pelegow et. al (EP2956533B1) as applied to claims 1-11 and 12-16 above, in view of Pilz et. al (US20140348763A1) hereinafter Pilz.
The teachings of Pelegow are recited above. With regards to claim 12, Pelegow teaches the use of skin feel-improving or caring additives such as vitamin A, vitamin B2, vitamin B12, vitamin C, vitamin E, among others (see [0107]). However, Pelegow does not explicitly disclose any of the actives recited in the instant claim.
Pilz teaches a cleaning composition which can comprise of anionic surfactants such as sodium methyl cocyl taurate and sodium cocyl glutamate (see Example 26 [0270]; see also Formulation Example 7 [0236]); betaine surfactants (see [0158]); and starch and cellulose derivative thickeners (see [0109]). Pilz additionally teaches the use of biogenic active compounds such as niacin, and vitamin B3 (niacinamide) in the composition (see [0115]).
It would have been obvious to a person of ordinary skill to add the vitamin B3 active taught by Pilz to the inventive composition of Pelegow for the benefit of advantageous preservation performance or advantageous stability to microbial attack (see [0004]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA PAUL whose telephone number is (571)272-1551. The examiner can normally be reached M-F: 7:30am-5:00pm.
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/SP/Patent Examiner, Art Unit 1761
/BRIAN P MRUK/Primary Examiner, Art Unit 1761
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