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 .
Claims 1-7 are pending in the application. Claims 1-7 will be examined.
Priority
This application claims priority to Republic of Korea Foreign Application No. 10-2023-0150614 filed November 3, 2023.
Information Disclosure Statement
Receipt of the Information Disclosure Statement filed October 30, 2024 is acknowledged.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Panteleev et al. (RU 2635529C1). English Translation for Panteleev et al. provided by FIT Database.
Panteleev et al. disclose a preventative composition for children's teeth treatment, contains synthetic thin-dispersed amorphous silicon dioxide, synthetic amorphous thin-dispersed silicon dioxide with 1-6 mcm particles, sorbitol/glycerin, sodium carboxymethyl cellulose, sodium benzoate, sodium myristoilsarcosinate and sodium methylcocoyltaurate, sodium saccharin, trisodium phosphate, combined product Polyplant baby, containing plant extracts: calendula, chamomile, mimosa and sweet violet and D-panthenol, carbomer, sodium fluoride, trilon b, aromatic composition, stainer - titanium dioxide and water, with components in the composition being in a specific ratio in wt % (page 1, Substance).
Regarding claims 1 and 2, Panteleev et al. disclose synthetic finely dispersed amorphous silicon dioxide 15:00-25:00; Synthetic finely dispersed amorphous silicon dioxide with particles of 1-6 microns 1.00-3.00; Sorbitol/glycerin 15.00 - 36.00; Sodium carboxymethylcellulose 0.80 - 1.70; Sodium benzoate 0.15 - 0.50; Sodium myristoyl sarcosinate and sodium methyl cocoyl taurate 0.10 - 3.00 (sodium methyl cocoyl taurate of 1.0 to 1.5 wt% falls within the range of 0.10-3.00); Sodium saccharin 0.02 - 0.30; Trisodium phosphate 0.01 - 1.00; Polyplant Baby complex preparation 0.10 - 0.60; Carbomer 0.10 - 0.50; Sodium fluoride 0.07 - 0.09; Trilon B 0.001- 0.300; Aromatic composition 0.10 - 0.38; Dye – titanium dioxide 0.2 - 0.4; Water up to 100 (page 4, claim 2).
Regarding the limitations of improved low temperature stability, this is the intended purpose of the composition, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding the limitations of claims 6 and 7, Panteleev et al. disclose a prophylactic composition for treating children’s teeth comprising sodium methyl cocoyl taurate, sorbitol, and water. Therefore, the properties possessed by the composition of the instant application, viscosity of 800,000 to 1,800,000 cPs under a condition of 25˚C and a condition of 5˚C would be possessed by the prior art. Where the claimed and prior art product(s) are identical or substantially identical, the burden of proof is on applicant to establish that the prior art product(s) do not necessarily or inherently possess the characteristics of the instantly claimed product(s), see In re Best, 195 USPQ 430.
Panteleev et al. meet all the limitations of the claims and thereby anticipate the claims.
Claims 1, 3, 4, 5, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Kocinska et al. (WO 2022/251223).
Regarding claims 1, 3, 4, and 5, Kocinska et al. disclose in Example 2, Table 2
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444
481
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(page 27, paragraph 55, Example 2, Table 2).
Kocinska et al. disclose Formulas A and B, sodium methyl cocoyl taurate at 2%; Sorbitol at 40% (Formula A) and 50% (Formula B);
Regarding claim 3, the weight ratio of sorbitol and purified water of Formula A is 1:0.9, which is the lower range of claim 3;
Regarding claims 4 and 5, Polyethylene glycol 600 (polyethylene glycol MW 600) at 2%, which falls within the range of the amount of 0.01 to 10 wt.%;
and demineralized water at 36% (Formula A) and 26% (Formula B) (total water).
Regarding the limitations of improved low temperature stability, this is the intended purpose of the composition, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding the limitations of claims 6 and 7, Kocinska et al. disclose an oral composition comprising sodium methyl cocoyl taurate, sorbitol, and purified water. Therefore, the properties possessed by the composition of the instant application, viscosity of 800,000 to 1,800,000 cPs under a condition of 25˚C and a condition of 5˚C would be possessed by the prior art. Where the claimed and prior art product(s) are identical or substantially identical, the burden of proof is on applicant to establish that the prior art product(s) do not necessarily or inherently possess the characteristics of the instantly claimed product(s), see In re Best, 195 USPQ 430.
Kocinska et al. meet all the limitations of the claims and thereby anticipate the claims.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kocinska et al. (WO 2022/251223).
Applicant’s Invention
Applicant claims a sulfate-based surfactant free oral care composition with improved low temperature stability comprising sodium cocoyl taurate, sorbitol and purified water.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Kocinska et al. with respect to the 35 U.S.C. 103 rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Kocinska et al. further teach the taurate surfactant comprises sodium methyl cocoyl taurate (e.g. 1%-3% by wt. of sodium methyl cocoyl taurate) (page 5, paragraph 19, Section 1.4).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Kocinska et al. do not specifically disclose an example wherein the sodium methyl cocoyl taurate is included in an amount of 1.0 to 1.5 wt% based on the total weight of the composition or the oral care composition has a viscosity of 800,000 to 1,800,000 cPs under a condition of 25˚C, as claimed in claim 6 or 5˚C, as claimed in claim 7.
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Kocinska et al. and use 1.0 to 1.5 wt% of sodium methyl cocoyl taurate in the composition. Kocinska et al. teach an oral care composition that comprises sodium methyl cocoyl taurate, sorbitol and purified water. One of ordinary skill in the art would have found it obvious to use 1.0 to 1.5 wt.% of the sodium methyl cocoyl taurate with a reasonable expectation of success because Kocinska et al. teach the sodium methyl cocoyl taurate is included in an amount of 1%-3% by wt. Therefore, it would have been obvious to one of ordinary skill in the art to use the guidance of Kocinska et al. to determine the amount of sodium methyl cocoyl taurate to use in the composition. As such, a person with ordinary skill has good reason to pursue known options within his or technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex lnc. 82 USPQ 2d 1385 (Supreme Court 2007).
Regarding the limitations of the viscosity as claimed in claims 6 and 7, Kocinska et al. teach an oral composition comprising sodium methyl cocoyl taurate, sorbitol, and purified water. As such, following the prior art teaching that if the sulfate-free oral care composition is taught in the prior art, one comprising sodium methyl cocoyl taurate, sorbitol, and purified water, the skilled artisan would expect to obtain a result that necessarily flows with the intended purpose and properties, i.e., a viscosity of 800,000 to 1,800,000 cPs under a condition of 25˚ and 5˚C, without evidence to the contrary.
Therefore, the claimed invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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/ANDRIAE M HOLT/ Examiner, Art Unit 1614
/ALI SOROUSH/ Supervisory Patent Examiner, Art Unit 1614
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