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 08/05/2025. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see attached USPTO form.
Election/Restriction
Applicant's election with traverse of Group I (claims 1-18, and 28) in the reply filed on 09/01/2026 is acknowledged.
Applicant traverses on the grounds that the subject matter of all the claims are sufficiently related such that a thorough search for the subject matter of any Group would encompass a search for the subject matter of the remaining groups (see Remarks page 1).
Examiner finds the applicant’s argument unpersuasive and maintains the restriction due to Groups I-III being drawn to different inventions (Group I is a solid cleaning composition, Group II is a method of making, Group III is a method of using) with distinct classifications. The separate status of each invention in the art would pose a serious search and/or examination burden.
Applicant is reminded that the application is National Stage application submitted under 35 U.S.C. 371. Therefore, when the application lacks unity of invention, i.e. there is not special technical feature linking the different groups, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. See MPEP §1893.03(d).
Restriction for examination purposes as indicated is proper, thereby the restriction requirement is still deemed proper and is therefore made FINAL.
Claims 19-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims under consideration in the current office action are claims 1-18 and 28.
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 2, 11, and 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 2, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of compact prosecution, claim 2 will be interpreted as R1 being an optionally substituted C7-C17 hydrocarbyl group.
With regards to claim 11, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of compact prosecution, claim 11 will be interpreted as the composition comprising at least 1 wt % of at least one secondary surfactant.
With regards to claim 16, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of compact prosecution, claim 16 will be interpreted as the composition comprising 95-100% renewable carbon index.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Schultz et. al (US20020039978A1) hereinafter Schultz.
Schultz teachings a shaped soap product comprising talc, C12-C22 fatty acid alkali soaps, and anionic surfactants (see claim 1). With regards to claims 1-4, and 7 the soap may comprise 20-50 wt% anionic surfactant which can be a taurate such as sodium lauryl taurate and sodium methylcocoyl taurate (see [0041]; [0052]). It is known in the art that sodium lauryl taurate has a linear R1 C11 alkyl group which is provided by lauric acid, and sodium methylcocoyl taurate has a branched R1 C10 alkyl group which is obtained from coconut oil. The general presence of 5-30 wt% of free C12-C22 fatty acids in the composition are taught (see claim [0046]). In an exemplary base soap composition, sodium cocoate/sodium palm kernal fatty acid salts comprise 16.95 wt% of the composition (see [0112]).
Although Schultz does not disclose the 20-50 wt% taurate surfactant and the 5-30 wt% free fatty acid in a single embodiment to the point of anticipation, the general teachings of Schultz suggest the combination of these limitations into a soap composition. It would have been obvious to a person of ordinary skill in the art before the effective filing date to combine these limitations for the benefit of improved soap physical performance properties and smoothness (see [0032]).
With regards to claims 5-6 and 8, Schultz teaches the use of lauric acid, stearic acid, and coconut oil fatty acid among others as suitable fatty acid in the base soap (see [0045]). In Example 1, coconut fatty acid comprises 3.00 wt% of the overall composition (see [0112]). It is known in the art that R1 C11 alkyl group is identical between sodium lauroyl taurate and lauric acid.
With regards to claim 9, Schultz generally teaches the presence of 20-50 wt% anionic taurate surfactants and 5-30 wt% free fatty acids in the composition (see [0041]; [0046]). The combination of the total anionic surfactant and fatty acid ranges between 25-80 wt% which overlaps the teachings recited in the instant claim. A prima facie case for obviousness exists between overlapping ranges.
With regards to claim 10, a person of ordinary skill in the art would reasonably be able to optimize between the weight ranges of surfactant and fatty acid taught above to arrive at the 3:1 to 1:1 ratio recited in the instant claim. Additionally in Example 1, the ratio of the surfactant to fatty acid is about 1.35:1 (31 wt% isethionate anionic surfactant: 23 wt% stearic acid). “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 11-12, Example 1 comprises of 31 wt% sodium cocoyl isethionate surfactant (see [0112]). The general use of sodium alkyl isethionates are also taught which overlap with the isethionate surfactant of formula III (see [0069]).
With regards to claim 13, Schultz teaches the use of auxiliaries such as fragrances, plasticizers, binding agents, deodorant active ingredients, pigments, complexing agents, and pigments in up to 5 wt% of the composition (see [0104]-[0105]).
With regards to claim 14, Schultz generally teaches the soap product to comprise of 5-40 wt% of base soap (see [0043]). In Example 1, the base soap comprises 11 wt% of the composition which is further comprised of 16.95 wt% fatty acid salts (see [0112]). A prima facie case for obviousness exists because the general teachings overlap with the range recited in the instant claim. Additionally, a prima facie case for obviousness exists because 11 wt% base soap in Example 1 is about 10 wt%.
With regards to claim 15, Schultz generally teaches the presence of 5-35 wt% water in the composition (see [0044]). A prima facie case for obviousness exists between overlapping ranges.
With regards to claim 16, Schultz fails to disclose the RCI of the sodium lauryl taurate and sodium methylcocoyl taurate surfactants. However, the instant Specification teaches notes the use of identical sodium lauroyl taurate and sodium cocoyl taurate surfactants with suitable RCI % between 95-100% (see US20250215351A1 [0067]). Therefore, the RCI % is inherent and necessarily from 95-100%.“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 structure, 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 17, the inventive composition is taught to be a bar soap (see [0001]).
With regards to claim 18, Schultz teaches taurate surfactants and fatty acids satisfying the limitations of components a) and b) as recited above. However, Schultz fails to disclose the reagents and reaction by which the fatty acid and taurate surfactants form. Claim 18 is a product by process claim. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(I). The examiner asserts that the subject matter would have been obvious to the skilled artisan because the patentability of a product by process claim does not depend on its method of production and where the examiner has found a similar product, the burden rests with the applicant to prove that that product is patentably distinct. See In re Thorpe, 227 USPQ 964 (CAFC 1985); In re Marosi et al, 218 USPQ 289; In re Pilkington, 162 USPQ 145.
"The lack of physical description in a product-by-process claim makes the determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not the process that must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 173 USPQ 685,688 (CCPA 1972).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Schultz (US20020039978A1) as applied to claims 1-18 above, in view of Zhang et. al (US20090143267A1) hereinafter Zhang.
The general teachings of Schultz are recited above. Schultz teaches a bar soap composition comprising anionic surfactants and fatty acids (see claim 1 and 4). However, the use of packaging for the bar soap is not explicitly recited.
Zhang teaches the use of different packaging for bar soaps to reduce water loss in the bar soap, inhibiting mold growth, among other (see [0015]; [0033]). The packaging is suitable for bar soap composition comprising free fatty acid, surfactants, humectants, among other actives (see [0027]). It would have been reasonably to a person of ordinary skill in the art before the effective filing date to expect the packaging taught by Zheng is compatible with the bar soap composition taught by Schultz.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SP/Patent Examiner, Art Unit 1761
/BRIAN P MRUK/Primary Examiner, Art Unit 1761
