DETAILED ACTION
The Examiner has reopened prosecution.
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 .
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.
Election/Restrictions
Applicant submitted significantly different claims in after-final (see claim sets of 10/17/2025) from the claims used in the final actions (claims sets of 1/20/2025).
Examiner is reopening prosecution because of applicant error in submitting wrong claims sets that was examined in the final office action of 07/11/2025.
Examiner have withdrawn all previous objections and rejections in this office action.
Examiner have withdrawn election of species requirement in this office action.
New double patenting rejection is made in this office action over co-pending Application No. 18/687,161.
New 102 and 103 rejection are made in this office action, in view of inherent property argument of composition of with 3-hyroxypropylcarpylate.
Claims 16-22 & 26-38 are examined in this office action.
Current Status of 17/428,296
This Office Action is in response to the amended claims of 10/17/2025.
Claims 16-17, 26-27, and 33-34 are currently amended, claims 18-22, 28-32 and 35 are previously presented and claims 36-38 are new.
Priority
The claim find support in PCT/EP2019/052582 therefore the effective filing date is 2/04/2019.
Response to Arguments
Examiner acknowledges the receipt of applicant’s claim amendment and remarks of 10/17/2025. Examiner have reviewed these remarks and amendments.
Applicants’ revisions to the claims resolves the claim objection of record.
Examiner have withdrawn double patenting rejections in previous office action.
Regarding 112(b) and 112(d) rejections, applicant amended claim 17 by adding “. . . wherein the method comprises incorporating two or more fatty esters into the cosmetic product, wherein at least one of the two or more fatty esters is chosen from 3-hydroxypropyl caprylate and 3-hydroxypropyl undecylenate”. Thereby overcoming the 112 rejection. The 112 rejections are withdrawn.
Applicant amended claim 26 by making claim 26 depended on claim 17. Thereby overcoming 112 rejection. Thus 112 rejection is withdrawn.
Regarding 102/103 rejection, applicant amended claims 16, 17, 27, and 33 by deleting reference to glyceryl monoundecylenate and glyceryl caprylate. Reference of Kwack refers to composition of with glyceryl monoundecylenate and glyceryl caprylate but does not teach composition on with 3-hydroxypropyl caprylate or 3-hydroxypropyl undecylenate. Thus, rendering moot 102 and 103 rejection on record. Therefore 102/103 rejections are withdrawn.
Response to Amendment
Claim Interpretation
Claims 33 and 17 recites “two or more fatty acid esters in cosmetic product”-. Examiner is interpreting any combination of two or more fatty acids chosen from this list. For example, two fatty acid can be two or more of 3-hydroxypropyl caprylate or two or more of 3-hydroxypropyl undecylenate or two or of glyceryl monoundecylenate, or combinations thereof.
Claim Rejections - 35 USC § 102 (new)
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.
Claims 27-35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Symrise (https://www.symrise.com/scent-and-care/cosmetic-ingredients/micro-protection/ published Nov 27, 2018, retrieved November 20, 2025) with evidentiary reference of Chen et.al. (Skin microbiota-host interactions. Nature. 2018 Jan 24;553(7689):427-436).
Symrise teaches a cosmetic product composition with Crinipan® AD(3-hydroxypropryl caprylate) and according examiner’s claim interpretation of claim 33 (see above) there are two or more of 3-hydroxypropryl caprylate in the composition hair care products(examiner is interpreting this as cosmetic product, skin care, and cleansing products (claims 32 and 35)) (page 4) thus anticipating claims 27,32 33 and 35.
Claim 27-28 and 34 are directed to composition having antimicrobial activity, examiner interpret this as inherent properties of the composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See MPEP 2112.01(I). Thus claims 27-28 and 34 are anticipated.
The evidentiary reference Chen et.al (Skin microbiota-host interactions. Nature. 2018 Jan 24;553(7689):427-436) is relied upon for the beneficial teachings that microorganisms are natural microbiota of mammalian skin or mucosa and include Escherichia coli(page 22), Staphylococcus Epidermidis(page 23, figure 4), Staphylococcus aureus (page 2), corynebacterium (page 2) and Candida albicans(page 8) teaching claims 29-31. Thus, SYMRISE as evidenced by CHEN anticipate claims 27-32 and according examiner’s claim interpretation of claim 33 (see above) there are two or more of 3-hydroxypropryl caprylate in the composition thus anticipating claims 33 and 35.
Claims 33-35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwack et. al (US10172820).
Kwack et. al discloses a lotion (cosmetic product, skin care product, claim 35) (composition with glyceryl undecylenate (example 2, table 1) and according examiner’s claim interpretation of claim 33 (see above) there are two or more of glyceryl undecylenate in the composition, thus teaching claim 33. Kwack et. al. further teaches one of the acid is glyceryl undecylenate reduces microbes of Escherichia coli (ATCC8739), Staphylococcus aureus (ATCC6538), Pseudomonas aeruginosa (ATCC9027), Candida albicans (ATCC10231) and Aspergillus niger (table 2) anticipating claim 34.
Claim Rejections - 35 USC § 103(new rejection)
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 16-22 and 26-38 are rejected under 35 U.S.C. 103 as being unpatentable over
Kwack et. al (US10172820)
In view of
Symrise (https://www.symrise.com/scent-and-care/cosmetic-ingredients/micro-protection/ published Nov 27, 2018, retrieved November 20, 2025) with evidentiary support from Chen et.al.( see above 102 rejection)
In further view of
Schmaus et. al (US 2010/0215775).
In further view of
Chen (Skin microbiota-host interactions. Nature. 2018 Jan 24;553(7689):427-436)
1. Determining the scope and contents of the prior art.
Kwack et. al discloses a lotion (cosmetic product, skin care product) (composition with glyceryl undecylenate and glyceryl caprylate (partially teaching claim 38) (example 2, table 1) thus partially teaching claims 22, 33 and 35. Kwack further teaches composition reduces microbes of Escherichia coli(ATCC8739 ) , Staphylococcus aureus (ATCC6538 ), Pseudomonas aeruginosa ( ATCC9027 ) , Candida albicans( ATCC10231 ) and Aspergillus niger (Kwack et. al. table 2) teaching claims 20-21 and 34.
Symrise teaches a cosmetic product composition with Crinipan® AD(3-hydroxypropryl caprylate for hair care products(examiner is interpreting this as skin care and cleansing products (claim 22, 32 and 35) (page 4) thus teaching claims 27 partially teaching claim 33.
Schmaus et. al teaches use of 1,2-alkanediols having a chain length of from 4 to 10 carbon atoms can be used in order to reduce the dose of conventional antiseptic microbicides in an antimicrobial formulation which includes 1,2-pentanediol and 1,2-hexanediol, 1,2-octanediol and 1,2 decanediol (paragraph [0033]) (claims 36-37).
Chen et.al teaches that microorganisms are natural microbiota of mammalian skin or mucosa and include Escherichia coli (page 22), Staphylococcus Epidermidis (page 23, figure 4), Staphylococcus aureus (page 2), corynebacterium (page 2) and Candida albicans (page 8) teaching claims 19-21 and 29-31.
2. Ascertaining the differences between the prior art and the claims at issue.
Kwack does not teach a cosmetic composition with antibacterial activity with 3 hydroxypropyl caprylate or 3-hydroxypropyl undecylenate.
Symrise does not teach a cosmetic composition with antibacterial activity with 3-hydroxypropyl caprylate or glyceryl undecylenate in combination with 1,2 alkane diol.
Schmaus et. al does not teach cosmetic composition 3 hydroxypropyl caprylate or 3 hydroxypropyl undecylenate with 1,2 alkane diol.
Chen et. al does not teach cosmetic composition 3 hydroxypropyl caprylate or 3 hydroxypropyl undecylenate with 1,2 alkane diol.
3. Resolving the level of ordinary skill in the pertinent art.
The level of ordinary is an artisan who have sufficient background in developing cosmetic product and its method of use on skin to reduce microbial infection,
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
One skilled in the art would be motivated to develop a composition of cosmetic product for preventing /and or reducing growth of microorganisms in cosmetic products using (claims 22, 32, & 35) glyceryl monoundecylenate (Kwack, table 2) and 3-hydroxypropyl carpylate (Symrise et.al. page 4) because the composition of lotion with glyceryl monoundecylenate (Kwack, table 2) and 3-hydroxypropyl carpylate (Symrise et.al. page 4) is expected to inhibit and/or reduces the growth of microorganisms because both glyceryl monoundecylenate and 3-hydroxypropyl carpylate inherently have antibacterial activity. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See MPEP 2112.01(I). Therefore, cosmetic product with glyceryl monoundecylenate and 3-hydroxypropyl carpylate (Symrise et.al. page 4) (two or more fatty acid ester, claims 33) are expected to be more effective or same as individual fatty acid ester in inhibiting growth of microorganism in skin care product thus teaching claims 33-35.
Furthermore, a person skilled in the art would be motivated to develop a method of preventing or reducing growth of microorganisms with composition comprising of 3-hydroxylpropyl caprylate and glyceryl monoundecylenate since both ester has antimicrobial properties (claim 26). Therefore, it would be obvious for a person skilled in the art to develop a method of preventing and/or reducing microorganisms by incorporating 3-hydroxylpropyl caprylate and glyceryl monoundecylenate, since 3-hydroxylpropyl caprylate and glyceryl monoundecylenate inherently has antimicrobial activity thus teaching claim independent claims 16-18.
It would be expected the method would reduce microorganisms found in the natural microbiota of mammalian skin or mucosa and would include Escherichia coli (Chen et.al page 22), Staphylococcus Epidermidis (Chen et.al page 23, figure 4), Staphylococcus aureus (Chen et.al page 2), corynebacterium (Chen et.al page 2) and Candida albicans (Chen et.al page 8) teaching claims 19-21 and 29-31.
One skilled in the art would be motivated to develop a composition of cosmetic product for preventing /and or reducing growth of microorganisms in cosmetic products 3-hydroxycarpylate(Symrise et.al. page 4) with glyceryl caprylate (partially teaching claim 38)(Kwack et.al. example 2, table 1). The composition of the lotion with glyceryl caprylate ((Kwack et.al. example 2, table 1) and 3-hydroxycarpylate (Symrise et.al. page 4) is expected to inhibit and/or reduces the growth of microorganisms because both glyceryl carpylate and 3-hydroxycarpylate have antibacterial activity (see above). Therefore cosmetic product with glyceryl carpylate and 3-hydroxycarpylate (Symrise et.al. page 4) is expected to be more effective or same as individual fatty acid ester in inhibiting growth of microorganism in skin care product thus teaching claims 27-32 and claim 38.
Regarding claims 36-37, one skilled in the art would be motivated to combine 3-hydroxypropyl caprylate (Symrise, page 4) with 1, 2 alkane diol (Schmaus et. al paragraph [0033]) in lotion since 1, 2 alkane diol reduce the dose of conventional antiseptic microbicides in an antimicrobial formulation (Schmaus et. al paragraph [0033]). Therefore 1, 2 alkane diol is expected to reduce the amount of 3-hydroxypropyl caprylate used in the composition. The combination of 3-hydroxypropyl caprylate (Symrise, page 4) with 1, 2 alkane diol (Schmaus et. al paragraph [0033]) can be more effective in treating condition or infection on the skin with small quantity of 3-hydroxypropyl caprylate. Thus, teaching all the limitation of claims 36-37.
Claim 27-28 are directed to composition having antimicrobial activity, examiner interpret this as inherent properties of the composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See MPEP 2112.01(I).
Claim 18 is directed to composition having modify physicochemical properties of the product, improve sensory properties of the product and/or balance and /or reduce sebum reduction where the product is applied to the mammal’s skin or mucosa skin examiner interpret this as inherent properties of the composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See MPEP 2112.01(I).
Double Patenting (new rejection)
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 16-22 and 26-38 are provisionally rejected on the ground of anticipatory-nonstatutory double patenting as being anticipated over claims 16-31 of co-pending Application No. 18/687,161 (reference application). Claims set of 10/17/2025 was used for writing this rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because reference claims 16-19, 22-23 recites a method of enhancing (same as reducing or preventing) an antimicrobial effect with one or more compounds selected from 3-hdroxypropyl caprylate and 3-hydroxypropyl undecylenate same as instant claims 16-17,27-28 and 33-34.
Reference claims 20 and 30 recites antimicrobial effect is against Staphlococcus, escherichis, Pseudomonas, Asperigllus, Candida…etc same as instant claim 21. Reference claims 21 recites antimicrobial effect is against Staphylococcus aureus, Escherichia coli, Pseudomonas aeruginosa,Aspergillus brasiliensis, Candida albicans…etc same as instant claims 21 and 31.
Reference claim 24-26 and 28 recites method of references claim 22 is a personal care product including hair care product, personal cleansing product, same as instant claim 22, 26-29 and 32-35.
Reference claims 16, 22, 26, 29-31 recites composition comprising of one or more compounds selected from 3-hydroxypropyl caprylate and 3-hydroxypropyl undecylenate (same as instant claims 27 and 33) in combination with one or more 1,2-propanediol,1,2-butanediol, 1,2-pentanediol, 1,2-hexanediol, 1,2-heptanediol, 1,2- octanediol, 1,2-nonanediol, 1,2-decanediol, 1,2-undecanediol, 1,2-tridecanediol, 2,3-pentanediol, 2,3-hexanediol . . .dimethyl phenylbutanol . . . farnesol … etc (same as of instant claims 36-38) and 1.
Claim 18 are directed to physiochemical properties, sensory properties and effectiveness sebum reduction of the product used in the method claims, examiner interpret this as inherent properties of the composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See MPEP 2112.01(I). T
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowable as written.
Examiner did not find 102 prior art for the full scope of independent of claim 16. Symrise teaches a cosmetic product composition of Crinipan® AD (3-hydroxypropryl caprylate) for hair care products (page 4) but does not teach a method of reduction of growth in microorganisms with 3-hydroxypropryl caprylate or 3-hydroxypropyl undecylenate. A person skilled in the art could not envision developing a method of reducing microorganism with 3-hydroxypropryl caprylate or with 3-hydroxypropyl undecylenate thus, Symrise is a close 102 art for independent claim 16.
Applicant conducted experiment to determine minimum inhibitory concentration (MIC) of 3-hydroxypropyl caprylate (table 1, page 17) and 3-hydroxypropyl undecylenate (table 2, page 18) against microorganism. In Table 4 on page 18 applicant depicts inhibitory formulation of 3-hydroxypropyl caprylate and colony count of different microorganism. Applicant claims surprising and unexpected results (Remarks of 25 July 2024) based on these data. However, Applicants have not shown surprising/unexpected results as “surprising/unexpected results” must show how data (such as MIC) was not previously known in the art (perhaps using “comparative” examples).
Fenyvesi teaches personal care (examiner interprets this as skin care product) compositions comprising ester of 1,3-propanediol. The 1,3-propanediol can be conjugated with esters such as undecylenic acid and caprylic acid [0074 and 0076]. Although 1,3-propanediol is a natural product, ester of 1,3 propanediol with undecylenic acid, (3-hydroxypropyl undecylenate) and caprylic acid (3-hydroxypropyl caprylate) are not natural product. Hence 101 subject matter rejection was not considered for this office action for claims 27-33.
Similarly, glyceryl undecylenate is a synthetic ester derived from naturally occurring undecylenic acid and glycerol. Therefore 101 rejection was not made for claims 33-35.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rehana Ismail whose telephone number is (703)756-4776. The examiner can normally be reached Monday-Friday 9:00am-5:00pm.
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/R.I./
Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625