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 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 02 April 2026 has been entered.
Status
Applicant’s response dated 02 April 2026 to the previous Office action dated 02 July 2024 is acknowledged. Claims 1-7 and 13-14 are pending in the application.
The rejection under 35 U.S.C. 102 made in the previous Office action is withdrawn in view of applicant’s claim amendments, but a new (modified) rejection under 35 U.S.C. 102 is made herein in view of applicant’s claim amendments.
The rejection under 35 U.S.C. 103 made in the previous Office action is withdrawn in view of the Decision on Appeal dated 02 February 2026.
The double patenting rejections made in the previous Office action are withdrawn in view of applicant’s claim amendments, but new (modified) double patenting rejections are made herein in view of applicant’s claim amendments.
Election/Restrictions
Claim 14 stands withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 15 December 2022.
The species election requirement made in the Office action of 18 October 2022 has previously been withdrawn.
Claims 1-7 and 13 are under current consideration.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bell et al. (US 2011/0190129 A1; published 04 August 2011; of record).
Bell discloses a shampoo composition in which the active ingredient may be azoxystrobin (paragraph [0037]) wherein shampoos therein are compositions where contact with human skin or eyes is required as in other applications such as body cleaning fluids, shower gels, hand or body wipes and medical wipes (i.e., personal care compositions) (paragraph [0041]).
The claimed recitations of minimum inhibitory concentration (MIC) properties do not add any structure/components/limitations to the claimed personal care composition comprising azoxystrobin since the MIC properties are inherent properties of the recited azoxystrobin and other recited strobilurins. MICs are inherent properties of particular compounds in that they are the lowest concentration of a compound that prevents growth of a particular microorganism.
The claimed recitation that the composition is dermatologically acceptable is inherent in the composition of Bell as discussed above per MPEP 2112(V) and 2112.01(I) given that the composition of Bell and the claimed composition are at least substantially identical, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II), and given that the composition of Bell is a shampoo wherein contact with human skin is required.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,433,070 (of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘070 claims merely recite additional components in the claimed composition, and the instant claim recitations of MIC properties do not add any additional structure/components/limitations as discussed above, and dermatological acceptability is inherent in the composition of the ‘070 claims per MPEP 2112(V) and 2112.01(I) given that the composition of the ‘070 claims and the claimed composition are at least substantially identical, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II), and given that the composition of the ‘070 claims is a personal care composition such as a shampoo wherein contact with skin is required.
Claims 1-7 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,701,316 (of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘316 claims merely recite additional concentrations/components in the claimed composition, and the instant claim recitations of MIC properties do not add any additional structure/components/limitations as discussed above, and dermatological acceptability is inherent in the composition of the ‘316 claims per MPEP 2112(V) and 2112.01(I) given that the composition of the ‘316 claims and the claimed composition are at least substantially identical, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II), and given that the composition of the ‘316 claims is a personal care composition such as a shampoo wherein contact with skin is required.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,980,612.
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘612 claims merely recite additional components in the claimed composition, and the instant claim recitations of MIC properties do not add any additional structure/components/limitations as discussed above, and dermatological acceptability is inherent in the composition of the ‘612 claim per MPEP 2112(V) and 2112.01(I) given that the composition of the ‘612 claim and the claimed composition are at least substantially identical, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II), and given that the composition of the ‘612 claim is a personal care composition such as a shampoo wherein contact with skin is required.
Claims 1-7 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-10, and 20-32 of copending Application No. 17/126,387 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘387 claims merely recite additional concentrations/components in the claimed composition, and the instant claim recitations of MIC properties do not add any additional structure/components/limitations as discussed above, and dermatological acceptability is inherent in the composition of the ‘387 claims per MPEP 2112(V) and 2112.01(I) given that the composition of the ‘387 claims and the claimed composition are at least substantially identical, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II), and given that the composition of the ‘387 claims is a personal care composition such as a shampoo wherein contact with skin is required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, 8-10, and 12-22 of copending Application No. 17/126,393 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘393 claims merely recite additional concentrations/components in the claimed composition, and the instant claim recitations of MIC properties do not add any additional structure/components/limitations as discussed above, and dermatological acceptability is inherent in the composition of the ‘393 claims per MPEP 2112(V) and 2112.01(I) given that the composition of the ‘393 claims and the claimed composition are at least substantially identical, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II), and given that the composition of the ‘393 claims is a personal care composition such as a shampoo wherein contact with skin is required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-15 and 23-34 of copending Application No. 17/126,975 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘975 claims merely recite additional concentrations/components in the claimed composition, and the instant claim recitations of MIC properties do not add any additional structure/components/limitations as discussed above, and dermatological acceptability is inherent in the composition of the ‘975 claims per MPEP 2112(V) and 2112.01(I) given that the composition of the ‘975 claims and the claimed composition are at least substantially identical, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II), and given that the composition of the ‘975 claims is a personal care composition such as a shampoo wherein contact with skin is required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 02 April 2026 regarding the rejections herein have been fully considered but they are not persuasive.
Applicant argues that Bell et al. does not set forth each and every claimed element in that Bell et al. fails to disclose the claimed MIC properties, which are unexpected (remarks pages 2-3). In response, Bell et al. discloses shampoo personal care compositions comprising azoxystrobin, and merely reciting properties of azoxystrobin not disclosed by Bell et al. does not render patentable the claimed personal care compositions comprising azoxystrobin. In re Spada, 15 USPQ2d 1655, 1657-1658 (Fed. Cir. 1990) (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to claims to the known composition.”; “When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art.”). Bell et al. specifically discloses shampoo personal care compositions comprising azoxystrobin, which anticipates the instant claimed composition regardless of a particular characteristic of azoxystrobin that other strobilurins do not exhibit. Such view of MIC properties was affirmed by the Decision on Appeal dated 02 February 2026. Moreover, assertions of unexpected results cannot overcome anticipation rejections.
Applicant argues that Bell et al. does not disclose dermatologically acceptable personal care compositions (remarks pages 2-3). In response, the claimed recitation that the composition is dermatologically acceptable is inherent in the composition of Bell as discussed above per MPEP 2112(V) and 2112.01(I) given that the composition of Bell and the claimed composition are at least substantially identical, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II), and given that the composition of Bell is a shampoo wherein contact with human skin is required.
Applicant requests that the double patenting rejections be held in abeyance until indication of allowable subject matter (remarks page 7). In response, only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated, and double patenting rejections may not be held in abeyance, per MPEP 804(I)(B)(1). The double patenting rejections are maintained.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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