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 .
DETAILED ACTION
Claims 1-19 are currently pending and the claims as originally filed on 10/08/2024 are acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The two (2) information disclosure statement (IDS) submitted on 11/01/2024 and 05/07/2025 were filed before the mailing date of the instant first action on the merits. The submissions thereof are in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statements have been considered by the examiner, and signed and initialed copies are enclosed herewith.
Specification
The abstract of the specification is objected to a minor informality.
Applicant is reminded of the proper content of an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc. See MPEP 608.01(b)
In the instant case, the abstract is simply written as follows:
PNG
media_image1.png
45
766
media_image1.png
Greyscale
That is, the current abstract is not descriptive by not complying with the above guideline. Accordingly, appropriate correction is requested.
Claim Rejections - 35 USC §103
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 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.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-19 are rejected under 35 USC 103 as being obvious over Kacher et al. (US5340492A, IDS of 11/01/2024) in view of Lynch et al. (US10076583, IDS of 11/01/2024, citation is obtained from its corresponding US2018/0028707A1).
Applicant claims the below claims 1 and 11 filed on 10/08/2024:
PNG
media_image2.png
357
858
media_image2.png
Greyscale
PNG
media_image3.png
343
861
media_image3.png
Greyscale
Level of Ordinary Skill in the Art
(MPEP 2141.03)
The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The examiner must ascertain what would have been obvious to one of ordinary skill in the art at the time the invention was made, and not to the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the art at hand. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).
The level of ordinary skill will often predetermine whether an implicit suggestion exists to modify the prior art. Persons of varying degrees of skill not only possess varying bases of knowledge, they also possess varying levels of imagination and ingenuity in the relevant field, particularly with respect to problem-solving abilities. If the level of skill is low, for example that of a mere technician, then it may be rational to assume that such an artisan would not think to combine references absent explicit direction in a prior art reference. If, however, the level of skill is that of a cosmetic research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetics, pharmacy, physiology and chemistry— without being told to do so.
Indeed, MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). This is because “The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention.” (MPEP 2141.03(1)) and an artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. (MPEP 2141.03 (I)). “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07). In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(11)).
Determination of the scope and content of the prior art (MPEP 2141.01) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Kacher discloses neutralized crystalline carboxylic acid shaped solid compositions, particularly personal cleansing bars, cakes, soap bars, synbars and the like (col. 1, lines 11-15 and line 60 – col. 2, line 4) which reads on the claimed personal care rheological solid composition wherein the composition comprises crystalline agent having a diameter of greater than 400 nm (col. 3, lines 55-64) which reads on the claimed crystal particles, and the agent includes about 5 to about 75% sodium carboxylic acids (=fatty acids) having C12-24 or its blend (e.g., claim 2 and Tables 10-11 of prior art) which reads on the claimed crystallizing agent and about 5-10% among about 5% to about 75% is within the claimed range of between about 0.5% and about 10%. Please note that Kacher discloses the term “soap’, “fatty acid (FA), and “monocarboxylic acid salts” as used herein are sometimes interchangeable (col. 10, lines 33-35) and water in an amount of about 15% to about 94% (e.g., claim 2 of prior art) which reads on the claimed aqueous phase and the amount of prior art overlaps the instant range of at least about 80%; in embodiments, e.g., Examples 12, 15 and comparative Examples20-22 discloses solid bars containing a blend of sodium salts of fatty acids containing carbon atom14-20 which reads on the claimed blend of sodium salt of about C13 to C20fatty acid; surfactants, water which reads on the claimed aqueous phase, NaCl, etc.; and Example 25 discloses solid bars containing lithium myristate which reads on the claimed crystallizing agent of metal salt of about C13 to C17 fatty acid, surfactant, water which reads on the claimed aqueous phase, etc. Kacher teaches bars can contain perfumes, preservatives such as EDTA, surfactant, etc. (col. 17, lines 14-21) wherein the perfumes are present in an amount of at least about 1% that overlaps the instant range of about 0.015 to about 2%, and the EDTA in an amount of less than 1%can be incorporated in the bar to prevent odor degradation Ico. 17, lines 5-10) which reads on the claimed malodor counteractant and the less than 1% of EDTA overlaps the instant range of about 0.01 and about 5%; the formulation is provided in the form of cleansing (abstract) (instant claims 1, 5-8, 11, 16-18 (in part), and instant claims 2-4, 9, 10, 12-15 & 19). Kacher further teaches bar hardness test that grades the firmness of the bar composition using a penetrometer: less than 5 mm (very hard - acceptable), 5-10 mm (moderately hard – acceptable) and 10-12mm (softer – acceptable), greater than 12 mm (too soft – unacceptable) (col. 20, lines 30-34).
However, Kacher does not expressly teach capsule comprising perfume of instant claims 1, 5, 8 and 16; and capsule wall materials of polyurea-based or melamine-based of instant claims 6, 7, 17 and 18. The deficiencies are cured by Lynch.
Lynch discloses a freshening composition comprising a plurality of particles, a structurant system, and an aqueous carrier (abstract); the composition comprises benefit agent particles or encapsulated benefit agent ([0037]) wherein the agent includes encapsulated perfume ([0112] and [0130]-[0131]); and wall material of encapsulated benefit agent includes polyurea- or melamine-based materials ([0038] and [0044]); the benefit agent particles are present in an amount of about 0.001% to about 2.0% ([0045]); and the freshening composition contains benefit agent contained with the wall material of the benefit agent particle, and therefore, the composition reads on the claimed capsule comprising perfume and wall material. The freshening composition may be used in the air or on a surface and/or to remove or reduce the amount of malodors in the air or on a surface and/or to deliver a benefit agent into the air or onto a surface ([0019]) (instant claims 1, 5-8 and 16-18: capsule comprising perfume).
It would have been obvious to modify the teachings of Kacher with encapsulated perfume of Lynch in order to provide a stable suspension such that the particles are able to suspend in the capsule and have a phase stability as taught by Lynch (see [0027] of Lynch).
Although Kacher/Lynch does not expressly teach optical purity (Po) of instant claims 1 and 11, Po would be implicit from the teachings of Kacher/Lynch. This is because instant claim 1 is only limited to positively recited elements which are the fatty acid salts, aqueous phase and benefit agents with overlapping amounts thereof, and thus, when the prior art, herein Kacher/Lynch discloses a solid composition having those components, it must have the claimed rheological properties measured under the recited test methods. The Examiner's finding is based on the principle that products of identical chemical compositions cannot have mutually exclusive properties. This is a well settled principle in patent law. See In re Papesch, 315 F.2d 381,391 (CCPA 1963) ("From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing."). Where patentability rests upon the property of the claimed material not disclosed within the art, the USPTO has no reasonable method of determining whether there is, in fact, a patentable difference between the prior art materials and the claimed material. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Therefore, where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the USPTO can require an applicant to prove that the prior art products do not necessarily possess the characteristics of his claimed product. Id. See MPEP 2112.01(I). Therefore, the prior art composition must also have the same optimal purity (Po) as claimed (instant claims 1 and 11: optical purity).
In light of the foregoing, instant claims 1-19 are obvious over Kacher in view of Lynch.
The Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending application No. 18/909337 in view of Kacher/Lynch.
Although the claims at issue are not identical (instant rheological solid composition vs. a method of producing a rheological solid composition), they are not patentably distinct from each other because both claim sets require the same or very similar composition comprising crystallizing agent (the sodium salts of fatty acids), and overlapping amount, water, and overlapping optimal purity. The difference between them is that instant composition requires insoluble benefit agent comprising a capsule comprising perfume and a malodor counteractant. The deficiencies are cured by Kacher/Lynch disclosing capsule containing perfume, and a malodor counteractant. It would have been obvious to further add those ingredients to the copending ‘337 composition in order to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending ‘337 subject matter in view of Kacher/Lynch.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of patent no. 11,812,909B2 in view of Kacher/Lynch.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets require the same or very similar composition comprising crystallizing agent (sodium salts of fatty acids), and overlapping amount, water, and overlapping range of optimal purity. The difference between them is that the composition of patent ‘909 requires erodible foam, and but the claimed language uses “comprising” which does not exclude introduction of the said element. The difference between them is that the instant composition requires a capsule containing perfume and a malodor counteractant. The deficiencies are cured by Kacher/Lynch disclosing capsule containing perfume, and a malodor counteractant. It would have been obvious to further add those ingredients to the patent ‘909 composition in order to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patent ‘909 subject matter in view of Kacher/Lynch.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-11 of patent no. 12,138,328B2 in view of Kacher/Lynch.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets require the same or very similar composition comprising crystallizing agent (sodium salts of fatty acids) and overlapping amount, water, and overlapping range of optimal purity. The difference between them is that the composition of patent ‘328 requires the rheological properties of firmness, thermal stability, liquid expression, and however such properties would be implicit because patent ‘328 requires very same composition. The difference between them is that patent ‘328 does not expressly teach a capsule comprising perfume, and a malodor counteractant. The deficiencies are cured by Kacher/Lynch disclosing capsule containing perfume, and a malodor counteractant. It would have been obvious to further add those ingredients to the patent ‘328 composition in order to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patent ‘328 subject matter in view of Kacher/Lynch.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of patent no. 12,138,333B2 in view of Kacher/Lynch.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets require the same or very similar composition comprising crystallizing agent (sodium salts of fatty acids) and overlapping amount, water, and overlapping amount of optimal purity. The difference between them is that the composition of patent ‘333 requires the rheological properties of firmness, thermal stability, liquid expression, and however such properties would be implicit because patent ‘333 requires very same composition. The difference between them is that patent ‘333 does not expressly teach capsule comprising perfume and a malodor counteractant. The deficiencies are cured by Kacher/Lynch disclosing capsule containing perfume, and a malodor counteractant. It would have been obvious to further add those ingredients to the patent ‘333 composition in order to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patent ‘333 subject matter in view of Kacher/Lynch.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 14-18 of patent no. 12,414,906B2 in view of Kacher/Lynch.
Although the claims at issue are not identical (method of producing a rheological composition vs. a rheological composition of patent ‘906), they are not patentably distinct from each other because both claim sets require the same or very similar composition comprising crystallizing agent (sodium salts of fatty acids) and overlapping amount, water, perfume, preservative, and overlapping range of optimal purity. The difference between them is that the composition of patent ‘906 requires cooling sensate and alcohol, and but the claimed language uses “comprising” which does not exclude introduction of those ingredients. Further, the difference between them is that patent ‘906 does not expressly teach a capsule comprising perfume and a malodor counteractants. The deficiencies are cured by Kacher/Lynch disclosing capsule containing perfume, and a malodor counteractant. It would have been obvious to further add those ingredients to the patent ‘906 composition in order to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patent ‘906 subject matter in view of Kacher/Lynch.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10-13 and 16 of patent no. 12,691,045B2 in view of Kacher/Lynch.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets require the same or very similar composition comprising crystallizing agent (sodium salts of fatty acids) and overlapping amount, active such as fragrances, encapsulated actives, water and overlapping range of optimal purity. The difference between them is that the composition of patent ‘045 additionally requires suspending agent, and but the claimed language uses “comprising” which does not exclude introduction of those ingredients. Further, the difference between them is that patent ‘045 does not expressly teach a capsule containing perfume and a malodor counteractant. The deficiencies are cured by Kacher/Lynch disclosing a capsule containing perfume, and a malodor counteractant. It would have been obvious to further add those ingredients to the patent ‘045 composition in order to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patent ‘045 subject matter.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of patent no. 12,122,979B2 in view of Kacher/Lynch.
Although the claims at issue are not identical (method of producing a rheological composition vs. a rheological composition of patent ‘979), they are not patentably distinct from each other because both claim sets require the same or very similar composition comprising crystallizing agent (sodium salts of fatty acids) and overlapping amount, water, and overlapping range of optimal purity. The difference between them is that the composition of patent ‘979 requires substrate and emulsifier, and but the claimed language uses “comprising” which does not exclude introduction of those element. Further, the difference between them is that patent ‘979 does not expressly teach perfume and malodor counteractants. The deficiencies are cured by Kacher/Lynch disclosing a capsule containing perfume, and a malodor counteractant. It would have been obvious to further add those ingredients to the patent ‘979 composition in order to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patent ‘979 subject matter.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of patent no. 12,232,673B2 in view of Kacher/Lynch.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets require the same or very similar composition comprising crystallizing agent (sodium salts of fatty acids) and overlapping amount, water, and overlapping ranges of firmness, thermal stability, aqueous phase expression, optimal purity and single purity. The difference between them is that the composition of patent ‘673 requires erodible foam, and but the claimed language uses “comprising” which does not exclude introduction of the said element. Further, the difference between them is that patent ‘673 does not expressly teach a capsule comprising perfume and a malodor counteractant. The deficiencies are cured by Kacher/Lynch disclosing capsule containing perfume, and a malodor counteractant. It would have been obvious to further add those ingredients to the patent ‘673 composition in order to enhance the properties of the composition.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patent ‘673 subject matter in view of Kacher/Lynch.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.0
/KYUNG S CHANG/Primary Examiner, Art Unit 1613
Prosecution Insights