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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/5/2025 has been entered.
Election/Restrictions
Claims 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/2/2022.
Priority
In view of the English translation of the foreign priority documents and the fact that the instant claimed subject matter is supported in said documents, the instant claims are awarded an effective filing date of 6/21/2018.
Response to Arguments
All of Applicant’s arguments filed 11/5/2025 have been fully considered and are not persuasive.
The majority of Applicant’s arguments on pages 6-16 were previously presented and addressed by the Examiner in the office action mailed 5/4/2023 and the board decision on 3/4/2025. These will not be reiterated. Only new arguments will be addressed below.
On pages 8-9, Applicant argues that Uyama teaches a preference for alcohols having a melting point of 60°C or higher and both cetyl and stearyl alcohol have a melting point below 60°.
This is not persuasive. While melting points of 60°C or higher are preferred, Uyama still teaches that cetyl and stearyl alcohol can be used. The teachings of preferred embodiments does not teach away from using non-preferred embodiments.
Applicant’s arguments of unexpected results on pages 12-14 are not persuasive. The Examiner would like to note that the data was not provided in the form of a Declaration, however, for purposes of compact prosecution the Examiner has considered Applicant’s remarks. The Examiner would like to note that in order to compare unexpected results, the data must provide a proper side-by-side comparison with the instant invention and the closest prior art. The data provided on Examples 1-7 contain different amounts of fatty alcohol and/or sodium N-stearoyl-N-methyltaurate, thus each of the exemplified compositions vary in more than one variable, thus a proper side by side comparison cannot be made. However, a side by side comparison can be made against Inventive example 3 and New composition A and B. While New composition B shows that even with the cationic surfactant of Uyama the composition is unstable, the data presented is not commensurate in scope with the claims. Instant claim 1 requires at least one saturated fatty alcohol, however, Example 3 and all other inventive examples contain a 50:50 mixture of cetyl and stearyl alcohols, which is not commensurate in scope with the claims 1 and 5-6. The tested examples also all contain 40% glycerin, but the claims do not require any specific amount of this ingredient. Applicant has also not provided enough data to show the entire claimed concentration range of fatty alcohol to be critical. Only 2.7% was tested, but the claims are directed to 2.5-7%.
Applicant arguments against comparative example 7 are not persuasive for the same reasons established by the Board in the reply filed 3/4/2025.
New 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 1, 5-7 and 22-23 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.
Claim 1 recites “at least one sodium N-stearoyl-N methyltaurate,” and “at least glycerol” the use of “at least” implies a selection, however a selection can’t be performed when a single option is provided.
Claims 5-7 and 22-23 are rejected in view of their dependency on claim 1.
Claim 5 recites “the saturated fatty alcohols,” this lacks proper antecedent basis to claim 1 which recites “at least one saturated fatty alcohols,” thus it’s unclear if claim 1 is referring to one, more than one or all saturated fatty alcohols.
Claim 7 recites “the amount of fatty alcohols,” this lacks proper antecedent basis to claim 1 which recites “at least one saturated fatty alcohols,” thus it’s unclear if claim 1 is referring to the saturated fatty alcohols of claim 1 or other fatty alcohols.
New 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, 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.
Claims 1, 5-7 and 22 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Uyama (US 2013/0005835). Uyama is previously cited.
Uyama discloses an emulsified cosmetic composition, such as skin care, comprising a) higher aliphatic alcohol, (B) ingredient is an anionic surfactant, (C) ingredient is a cationic surfactant, (D) ingredient is water, (E) ingredient is an oil component (Abs and [0068]).
Regarding claims 1(a) and 5-7: Uyama teaches that the higher aliphatic alcohol (a) is preferably chosen from saturated straight chain monovalent alcohol’s in terms of stability, examples of suitable alcohols include cetyl alcohol, stearyl alcohol and behenyl alcohol. Uyama further teaches that it is preferable to use a mixture of two or more, therefore, it would have been prima facie obvious to use a mixture of cetyl and stearyl alcohol yielding no more than one would expect from such as arrangement as these two alcohols and mixtures are specifically contemplated [0023-0024]. Uyama teaches that these alcohols can be used in amounts ranging from 1.0-10%, which overlaps with the claimed 2.5-7% and 2.5-4.5% and overlapping ranges are prima facie obvious [0026].
Regarding claims 1(b) and 22: Uyama teaches that the anionic surfactant (b) is preferably sodium N-stearoyl-N-methyltaurate [0038], which comprises one C16-C22 hydrocarbon chain and has sulfonate function and falls within the structure of formula I presented in claim 9. This surfactant is taught to be used in amounts ranging from 0.01-2%, preferably 0.1-0.5% [0040].
Regarding claim 1(c): Uyama teaches the use of polyols such as glycerol, butylene glycol and dipropylene glycol (see working examples), thus the inclusion of glycerin is prima facie obvious.
Regarding the mass ratio of claim 1: The prior art makes obvious the use of 1-10% of fatty alcohol and 0.1-0.5% of sodium N-stearoyl-N-methyltaurate, which results in a ratio of (2-100)/1, which overlaps with the claimed ratios and overlapping ratios are prima facie obvious absent evidence of criticality.
Uyama teaches that the composition is preferably an O/W emulsion wherein the oil component is the inner phase and water is the outer phase, which reads on oily phase being dispersed in the water phase [0050 and 0022].
Regarding claims 1(d): Uyama teaches that the selection of the oil component is not limited and preferred oil components include silicone oils (selected from a finite number of options). Examples of silicone oil include dimethylpolysiloxane [0059 and 0061]. The oil can be used in amounts of 5-30% (overlapping with silicone oil being present in an amounts of 0.06-50% and 0.6-30% and overlapping with oily phase making up 0.1-50% of the total composition) of the total composition and one, two or more types can be used together [0064-0065]. As Uyama teaches that one type of oil can be used, it would have been prima facie obvious to use a single oil component, such as a silicone oil, specifically dimethylpolysiloxane, yielding more than expected from such an arrangement. This results in an oil phase that comprises at least 60% silicone oil as the instant specification states that for purposes of the invention, the oily phase does not include the fatty alcohols and anionic surfactants as claimed (pg. 6-7 of the filed specification).
Claims 1, 5-7, 22 and 23 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Uyama (US 2013/0005835), as applied to claims 1, 5-7 and 22 above, and further in view of Hansenne (US 2002/0018758).
As discussed above, Uyama make obvious the limitations of claims 1, 5-7 and 22, however, Uyama does not teach the dimethicone to be non-volatile.
Hansenne teaches emulsion compositions for application to the skin (Abs). Hansenne teaches that oils such as volatile and non-volatile dimethicone can be effectively added [0097].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Uyama with those of Hansenne and use non-volatile dimethicone as this is shown to be a suitable dimethicone for use in cosmetics and its prima facie obvious to pursue the known options within the grasp of a skilled artisan to formulate a cosmetic comprising well known dimethiones and yielding no more than expected from such an arrangement.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 5-7 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent 11,564,872 (copending Application No. 16/469508) in view of Kroepke (US 2010/0173027).
US’508 discloses a composition, in the form of an oil-in-water emulsion for making up the skin comprising: from 0.1 to 40% by weight relative to the total weight of the composition of a mixture of a C16 and C18 fatty alcohol , from 0.05 to 5% by weight relative to the total weight of the composition of at least one anionic surfactant, specifically sodium N-stearoyl-N-methyltaurate, wherein the weight ratio of anionic surfactant of formula (I)/fatty alcohol is approximately ¼, 0.1-40% of at least one oil, such as silicone oils and 1-10% of a wax (thus overlapping with an oil phase comprising 60% or more of a silicone oil).
However, US’508 does not teach the use of polyols in amounts ranging from 20-80% as recited by instant claim 16.
Kroepke discloses teaches O/W cosmetic emulsions comprising one or more fatty alcohols in amounts of 2-10% and at least 15% of at least one moisturizer, preferably glycerol (Abs and [0001 and 0032-0033]). These moisturizers work by reducing moisture release by the horny layer (also called trans-epidermal water loss (TEWL)) and/or of positively influencing hydration of the horny layer [0028].
It would have been prima facie obvious to a person of ordinary skill in the art at the time before the effective filing date of the claimed invention to modify the teachings of US’508 and add at least 15% of a moisturizer such as glycerol, in to the composition of US’508 as Kroepke teaches this to be a suitable moisturizer for use in O/W emulsions teaches that the combined use of fatty alcohols and glycerol leads to an improvement in the skin moisture and skin smoothness [0038]. One of skill in the art would have a reasonable expectation of success as both Kroepke and US’508 teach O/W cosmetic composition for application to the skin comprising fatty alcohols, in overlapping amounts.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday 7am-4pm; Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613