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 .
Priority
The instant application claims the benefit of Provisional U.S. application 63/619,571 filed 10 January 2024.
Status of the Claims
Claims 1-20 are pending, presented for examination, and rejected as set forth in greater detail below.
Claim Interpretation
Applicants claims are directed to compositions combining defined concentrations of at least one surfactant, defined concentrations of a compound providing at least one amine source, a “sustainable” raw material including a reducing sugar, defined concentrations of “Maillard reaction inhibiting enzymes” which dependent Claims indicate include any of hexose oxidase, fructosamine oxidase, fructosamine kinase, or carbohydrate oxidases, and a defined concentration of water. The Examiner notes that, per applicants specification, “[s]ustainable materials are derived from renewable, recycled, and waste carbon sources and their combination…” Specification [0003]. By this language, applicants have incorporated so-called “product by process” language to describe a component of the composition claimed. Applicants are reminded that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). As such, materials identified by the prior art as incorporating reducing sugars, regardless of source, will be considered sufficient to address the “material including a reducing sugar” or the “sustainable” polymers or solvents recited by dependent claims. Dependent claims specify the inclusion of multiple surfactants in defined concentrations, or indicate the surfactant is to be anionic, cationic, amphoteric, zwitterionic, or non-ionic. Additional dependent claims specify the source of the amine, or narrows the identity of the “sustainable” raw material claimed. Claim 10 places limitations of the concentration of enzyme present in the composition. Claims 11-20 mirror limitations of Claims 1-10, now requiring the primary amine source be a “fermented raw material that includes a reducing sugar,” which Claim 14 indicates is to comprise a biosurfactant. Looking to applicants own specification, Applicants consider rhamnolipids and sophorolipids as suitably addressing these limitations. Specification [0021; 0090].
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 (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.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bhogal (WO2014/095318).
Bhogal describes haircare compositions. (Abs.). These compositions are described as combining a flavonoid with a peroxidase, hydrogen peroxide generator, which has a pH between 3-9. Pg.2). Suitable hydrogen peroxide generators include the hexose oxidase of Claims 9 and 16, as well as each of galactose, glucose or dextrose (recited by Bhogal as D-glucose which applicants identify as reducing sugars (Spec. [0091])), identified as being included in the haircare compositions in concentrations of between 0.0001-5% by weight oxidase and 0.01-10% by weight sugar substrate, addressing limitations of Claims 1, 9-11, and 16-18. Bhogal pg.4-5, See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Bhogal requires surfactants, as well as combinations of multiple surfactants, in concentrations of between 1-50%, preferably between 2-40% by weight, which include any of anionic surfactants in concentrations of between 0.5-25% of the composition, non-ionic surfactants in concentrations of between 0-5% of the composition, or amphoteric or zwitterionic surfactants in concentrations of between 0.5-8% of the composition, addressing limitations of Claims 2, 3, 5, 11-13, and 15. Each of betaines and alkyl amine oxides are described by Bhogal as suitable amphoteric or zwitterionic surfactants, addressing limitations of Claims 1 and 4. Pg.8. Bhogal indicates water should be present in concentrations of about 50-98% of the composition, addressing limitations of Claims 1 and 11. (Pg.9). Cationic deposition polymers are described by Bhogal as useful for enhancing the performance of the compositions into which they are incorporated, and my include any of primary, secondary, or tertiary amine compounds, addressing limitations of Claims 1. (Pg.12-13). Cationic starch derivatives are identified by Bhogal as suitably included as cationic deposition polymers, addressing limitations of Claims 1, 6, 8, 11, 18, and 20. (Pg.13-14). Bhogal indicates trehalose of Claims 7 and 19 may also be included as fiber coating or repairing active agents. (Pg.15).
The specific combination of features claimed is disclosed within the broad disclosure of Bhogal, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). Where, as here, the reference does not provide any motivation to select this specific combination of anionic, nonionic, zwitterionic and amphoteric surfactants, amine containing surfactants as an amine source, reducing sugars such as galactose, glucose or dextrose, hexose or carbohydrate oxidases, trehalose as a sustainable solvent, and a starch as a sustainable polymer, all in concentrations falling within or overlapping those set forth by the instant claims, anticipation cannot be found.
That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of anionic, nonionic, zwitterionic and amphoteric surfactants, amine containing surfactants as an amine source, reducing sugars such as galactose, glucose or dextrose, hexose or carbohydrate oxidases, trehalose as a sustainable solvent, and a starch as a sustainable polymer, all in concentrations falling within or overlapping those set forth by the instant claims from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bhogal as applied to claims 1-10 above, and further in view of Kleinen (U.S.PGPub. 2022/0183958).
Bhogal, discussed in greater detail above, suggests haircare compositions combining anionic, nonionic, zwitterionic and amphoteric surfactants, amine containing surfactants as an amine source, reducing sugars such as galactose, glucose or dextrose, hexose or carbohydrate oxidases, trehalose as a sustainable solvent, and a starch as a sustainable polymer, all in concentrations falling within or overlapping those set forth by the instant claims.
Bhogal does not, however, identify the primary amine source as being a fermented amine containing raw materials including a reducing sugar, such as the biosurfactant rhamnolipids and sophorolipids identified by the present specification as suitable fermented amine containing raw materials including a reducing sugar.
Kleinen also relates to haircare compositions containing deposition aids, specifically rhamnolipids which are obtained from renewable raw materials, which improve combability, shine, softness, shapeability, shine, manageability, and disentanglability of hair onto which they are applied, and serve to aid in the deposition of substances onto the surfaces to which they are applied. [0006-0011; 0021]. Kleinen indicates that substances the sophorolipids aid in the deposition of include cationic amine compounds. [0052-53].
It would have been prima facie obvious to one of ordinary skill in the art at the time the instant application was filed to have utilized a rhamnolipid in the haircare compositions of Bhogal. That is because Kleinen indicates that rhamnolipids which are obtained from renewable raw materials improve combability, shine, softness, shapeability, shine, manageability, and disentanglability of hair as well as increases the deposition of cationic compounds onto hair surfaces. Because Bhogal indicates that cationic compound deposition aids are particularly preferred, the selection of a rhamnolipid as such a component appears little more than the selection of a particular component according to its known utility. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)( Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use).
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/990,105 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘105 application recites the identical components required by the instant claims, differing only in that the ‘105 application describes them as a “hand soap,” rather than the instant “hair care composition.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/990,218 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘218 application recites the identical components required by the instant claims, differing only in that the ‘218 application describes them as a “body wash,” rather than the instant “hair care composition.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/926,821 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘821 application recites the identical components required by the instant claims, differing only in that the ‘821 application describes them as a “detergent product,” placed within a container, rather than the instant “hair care composition.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/828,506 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘506 application recites the identical components required by the instant claims, differing only in that the ‘506 application describes them as a “unit dose detergent product,” placed within a pouch, rather than the instant “hair care composition.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/828,561 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘561 application recites the identical components required by the instant claims, differing only in that the ‘561 application describes them as a “unit dose detergent product,” placed within a pouch, rather than the instant “hair care composition.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No Claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M BASQUILL whose telephone number is (571)270-5862. The examiner can normally be reached Monday through Thursday, 5:30 AM to 4 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
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