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 .
This office action is in response to the reply filed 11/5/2025.
Election/Restrictions
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/8/2022.
Terminal Disclaimer
The terminal disclaimer filed on 10/18/2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Application 18/186027 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
All of Applicant’s arguments filed 11/5/2025 have been fully considered.
In view of the amendments to the claims, the 112(b) issues identified by the examiner in the previous office action have been resolved, as such the rejection is withdrawn.
Applicant remarks that in the claims as amended the scope has been substantially limited and argues that that all the essential ingredients for the claimed compositions are already present in the claims and it’s not necessary to have one or more additional additives such as salicylic acid to formulate the microemulsion according to the instant invention. Compositions A and B as described in the specification show that formulation of the microemulsion is possible without any additional additives. As such the claims are commensurate in scope with the filed declaration.
This is not persuasive. While Applicant has limited the claims, the declaration is still not persuasive. As previously explained Applicant provide a single inventive example comprising very specific ingredients in specific amounts. One data point is insufficient to “to ascertain a trend in the exemplified data which would allow [one having ordinary skill in the art] to reasonably extend the probative value thereof.” In re Kollman, 595 F.2d 48, 56 (Fed. Cir. 1979). Furthermore, the example presented in the declaration use both PG-4 laurate and PG-5 laurate; and glycerin and propanediol. As stated by Applicant the slightest change in the nature of the ingredients or their content can impact stability and lead to the loss of the microemulsion form as such the data presented by Applicant is not sufficient to cover the scope of the entire claims. Applicant’s remarks regarding salicylic acid and Examples A and B of the instant specification are not persuasive as its unsupported by factual evidence. Applicants reliance on Examples A and B to show that additives are not necessary to form the microemulsion are not persuasive as the instant specification does not indicate that Compositions A and B are microemulsions. While the specification generically teaches that microemulsions are preferred, compositions A and B are not taught to be microemulsions.
Applicant argues that a skilled artisan would not be able to predict the unexpected results of the instant invention based on the teachings of the prior art.
This is not persuasive as the data presented is not persuasive as this time.
Applicant’s request for rejoinder is not persuasive at this time as claim 1 is not allowable over the prior art.
While Applicant’s arguments regarding the double patenting rejection are not persuasive, a terminal disclaimer over 18186027 was previously filed by Applicant on 10/18/2024, as such the rejection is withdrawn.
Maintained/Modified 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 1-2, 9 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Derrips (US2016/0317416), KR 20170062899, Jourdan (US 2006/0177399), as evidenced by Dessene (US 2011/0171153).
Derrips discloses a cosmetic composition in the form of a nanoemulsion or microemulsion, comprising: (a) at least one oil; (b) at least one nonionic surfactant with an HLB value from 8.0 to 14.0; (c) at least one C-glycoside compound; and (d) water (Abs).
Derrips teaches that the cosmetic composition can be formulated as shampoos and other washing products [0385-0386].
Regarding claim 1i: Derrips teaches the non-ionic surfactant to be a polyglycerol monolaurate comprising 3-6 glycerol units, the non-ionic surfactant can be used in amounts ranging from 0.1-30% (Derrips – claims 7 and 9). Preferred surfactants include PG-4 laurate and PG-5 oleate [0119 and 0126].
Regarding claim 1ii: Derrips teaches that oil is preferably chosen from fatty esters containing one or more C1-C12 hydrocarbon-based chain, for example, isopropyl myristate (i.e. a monoester of monoacids and of nonalcohol) and the oil can be used in amounts ranging from 1-40%, preferably 5-30% which overlaps with the claimed ranges ([0052-0053] and working example).
Regarding claims 1iii and 9: Derrips teaches the composition to comprise at least one polyol, in amounts of 0.01-30% and suitable polyols for use those having 2-5 hydroxyl groups, such as butylene glycol, glycerol, 1,3-propanediol, etc. [0348-0353], thus the use of two polyols, including at least one diol is prima facie obvious. Derrips teaches amounts that overlap with the claimed ranges of polyol and diol and overlapping ranges are prima facie obvious absent evidenced showing the claimed ranges to be critical.
The working example in table 1 discloses a composition comprising: oil (isopropyl myristate and octyldodecanol); PG-2 caprate and PG-5 laurate; butylene glycol (a diol) and water among other ingredients.
In view of the teachings of Derrips, it would have been prima facie obvious to formulate a composition comprising the at least one oil, nonionic surfactants, C-glycoside compound and water as detailed by Derrips claim 1 and further add polyol(s) and cationic surfactants as these are taught to be additional ingredients contemplated for use, and 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.
Regarding the ratio of claims 1-2 and 11: Derrips teaches the non-ionic surfactant (claimed component ii) to be used in amounts of 0.1-30%, preferably 3-20%, and teaches that polyols, such as 1,3-propanediol, can be used in amounts of 0.01-30%, preferably 1-10%, which provides a ratio of component i to component iii of 0.3-20 and the working example exemplifies a ratio of 6.5. Thus, Derrips teaches ratios which overlap with the claimed amounts.
Derrips teaches that the cosmetic can be in the form of O/W or W/O nanoemulsions [0375] and teaches the composition to also comprise water. Derrips teaches that the amount of water used is not limited and may range from 50-99%. The Examiner would like to note that Derrips teaches that the range “may” be 50-99%, the use of “may” implies that this range is exemplary and is not limited to these amounts.
However, Derrips does not teach the amount of water used to be 1-20% or between 2-10% as recited by instant claim 1v and 12.
KR’899 teaches micro- or nano-emulsions, in particular W/O emulsions (Abs) and teaches these emulsions to comprise water in amounts of 5-20%, preferably 8-15%; oil in amounts ranging from 10-70%.
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 Derrips with those of KR’899. One of skill in the art would have been motivated to formulate the composition of Derrips as a W/O emulsion comprising amounts of water between 5-20% as KR’899 teaches that these amounts of water are suitable for use when formulating W/O nanoemulsion and its prima facie obvious to combine prior art elements according to known methods to achieve a predictable result. There is a reasonable expectation of success as Derrips teaches that preferred formulations are O/W and W/O emulsions, thus the selection of either type of emulsion is obvious and both Derrips and KR’899 teaches W/O nanoemulsions.
Regarding the ratio of claim 13: The prior art makes obvious to use of water in amounts of 5-20%, and teaches the oil to be used in amounts of 1-40%, preferably 5-30%, which provides a ratio of 0.167-4. The prior art teaches ratios which overlap with the claimed amounts and overlapping ratios are prima facie obvious absent evidence of criticality.
While Derrips teaches that cationic surfactants such behenyltrimethylammoniun chloride can be added and these are used in amounts of 0.01-20% [0315 and 0346], Derrips does not teach the use of tertiary fatty amine salts as cationic surfactants as recited by instant claim 1iv.
Jourdan teaches cosmetic compositions for use in hair styling and/or hair fiber care [0002]. Jourdan teaches that cationic surfactants can be effectively added and teaches suitable cationic surfactants to include primary, secondary or tertiary fatty amine salts, optionally polyoxyalkylenated; quaternary ammonium salts such tetraalkyl ammonium, alkylamidoalkyl trialkylammonium, trialkylbenzyl ammonium, tri alkylhydroxyalkyl ammonium or alkyl pyridinium chlorides and bromides [0050].
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 Derrips and KR’899 with those of Jourdan. One of ordinary skill in the art would have recognized that the cationic surfactants of Jourdan, such as tertiary fatty amine salts could be effectively used in the taught amounts as these are equivalent to the cationic surfactants used by Derrips, such as behenyl trimethylammonium chloride which is a tetraalkyl ammonium chloride surfactant (as evidenced by Desenne [0182]) . One of skill in the art would have a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
As recognized by MPEP §2144.06, it is prima facie obvious to substitute art-recognized equivalents, and an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Conclusion
No claims are allowable.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 from 9am-4pm and Friday 9am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613