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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/24/2026 has been entered.
Amendments
Applicants amendments to the claims filed 7/24/2026 have been entered. Any objection\rejections from the previous office action filed 2/24/2026 not addressed below has been withdrawn.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-6,8-16,18,20-23,28-29 and 31 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Nawaz et al. (US (2002/0058051).
Nawaz teaches skin care compositions with a pH of 4-9 (data point 9 is within claimed ranges) comprising silicone oil, an amphoteric surfactant in amounts of 0.1-10 wt%, including potassium oleate, a polyol moiety including sugar alcohols and glucose (reads on sugar based moisturizer) and several additional excipients including EDTA (meeting claims 15-16), Guar and Xanthan gum (meeting claims 18,20-21) and glycerin humectant (meeting claims 22-23). See entire disclosure, especially abstract, [0067], [0087], [0168], [0180],[0186] and claims, especially 1,15,18. Regarding the broadly recited viscosity ranges in claims 2-3, Nawaz teaches viscosity of at least about 4,000 mPa.s, the data point of 4,000 is within the claimed ranges. It also follows that since the composition of Nawaz is within the scope of the pending claims it will feature the same properties including viscosity. “Products of identical chemical composition can not 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). MPEP 2112.01 [R-3] II. Regarding the recitations in claims 5-6,13 and 27 on the amount of nonnatural detergents, percent of natural or naturally derived ingredients and amount of sulfates, the compositions of Mitchell contains only natural ingredients or naturally derived ingredients and detergents and does not require sulphates, therefore the recitation is considered met.
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.
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.
Claim(s) 1-6 and 8-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nawaz et al. (US (2002/0058051), cited above in view of Kalahasti et al. (US 2019/0038689), in view of Park et al. (US 2018/0116937) in view of Cavaco Paulo et al. (US 2023/0414478).
Nawaz is disclosed above. Nawaz does not disclose use of some of the excipients recited in the claims including citric acid (claim 17), saccharide isomerate (in claims 24-25), ethylhexyl glycerin and hydroxypropyl guar hydroxypropyltrimonium chloride (claims 18-19 and 24-25) and trisodium dicarboxymethyl ananinate chelator.
Kalahasti is used for its disclosure that topical compositions were well known to contain citric acid pH adjuster, saccharide isomerate as well as ethylhexylglycerin. See abstract, [0050] and claims. The composition was used with other extracts to reduce erythema and cool the skin.
Park is used for its disclosure that use of hydroxypropyl guar hydroxypropyltrimonium chloride was well known to be useful as a thickening agent in topical cleansing compositions. See entire disclosure, especially abstract and claims, especially 1,17 and 20.
Cavaco Paulo is used for its disclosure that dicarboxymethyl ananinate chelator was well known to be useful in topical cleanser compositors. See entire disclosure, especially abstract and claims, especially 1,9 and 11.
It would have been prime facie obvious at the time of the invention to a person of ordinary skill in the art to modify the topical composition disclosed in Mitchell and add the skin care actives and excipients disclosed within Kalahasti, Park and Cavaco Paulo. It is generally considered to be prime facie obvious to combine compounds each of which is taught by the prior art to be useful for the same purpose in order to form a composition that is to be used for an identical purpose. The reason for combining them flows from their having been used individually in the prior art, and from them being recognized in the prior art as useful for the same purpose. As shown by the recited teachings, instant claims are no more than the combination of conventional components of topical skin or hair compositions. It therefore follows that the instant claims define prime facie obvious subject matter. Cf. In re Kerhoven, 626 F.2d 848, 205 USPQ 1069 (CCPA 1980).
Regarding the claimed amounts of ingredients recited in claims 10-11,24-26, 29 and 30, the prior art cited above is silent with respect to the amounts. However, the preparation of topical cleansing compositions having variable amount of actives and excipients is within the level of skill of one having ordinary skill in the art at the time of the invention. It has also been held that the mere selection of proportions and ranges is not patentable absent a showing of criticality. See In re Russell, 439 F.2d 1228 169 USPQ 426 (CCPA 1971).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 and 8-31 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES W ROGERS/ Primary Examiner, Art Unit 1618
