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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05 September 2025 has been entered.
Election/Restrictions
Newly added claim 18 is properly placed with Group II, and newly added claims 19-21 are properly placed with Group I (see Election/Restriction: mailed 06/18/2024). Claim 18 is withdrawn based upon the election dated 13 August 2024, wherein Applicant elected Group I for consideration.
Claim Status
Applicant’s claim amendments and arguments filed 05 September 2025 are acknowledged.
Claims 1-12 & 14-21 are pending.
Claims 18-21 are new.
Claim 13 is cancelled.
Claims 1, 8, 10, 14 & 15 are amended.
Claims 12, 14, 15 & 18 are withdrawn.
Claims 1-11, 16, 17 & 19-21 are under consideration.
Examination is to the extent of the following species:
What the Particle Comprises-cellulose;
At least one lipophilic antioxidant-tocopherol;
What the composition further comprises-oil; -and-
Goal/Intention-protecting skin by reducing or controlling peroxidation of unsaturated lipids
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. The effective filing date is 26 April 2019 due to the priority document being in the English language.
New & Maintained Objections/Rejections
Specification
The abstract of the disclosure is objected to because it uses the implicit phrases "The present invention relates to...” and “The present invention also relates to…” MPEP 1826 states “Phrases should not be used which are implicit, (for instance, "the invention relates to...")”.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 103
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.
Claims 1-8, 10, 11, 20 & 21 are rejected under 35 U.S.C. 103 as being unpatentable over Dumousseaux (EP 2939653; Published: 11/04/2015; previously cited).
With regard to claim 1 (a) & 4, Dumousseaux teaches a core “made of particle(s) having a high wet point and being optionally porous”. With regard to claim 1 (a), 2, 3, 5 & 6, Dumousseaux teaches Cellulobeads USF [i.e. a polysaccharide] as the encapsulated particle which the “wet point for oil is 296.0 ml/100 g, wet point for water is 400.8 ml/100 g, the ratio of the wet point for water/the wet point for oil is 1.4) with a particle size of 4 µm” [0186]. With regard to claim 7, Dumousseaux in their claim 11 teaches the microcapsule used in the invention comprises preferably between 40 and 75% by weight comprises of the particles/core and in their claim 36 teaches the composition comprises between 2 and 10% by weight of the microcapsules; as such the composition comprises particles in an amount of 0.8-7.5%, including 1.5% and 4% which falls within the recited range [Math: 40% * 2% =0.8%; 75% *10% =7.5%; 40% * 10% = 4%; 75% * 2%=1.5%]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). With regard to claim 1 (b), 8, & 10, Dumousseaux teaches the composition of their invention may comprise at least one active agent chosen from cosmetic active agents including antiwrinkle agents which may be tocopherol with the content of active agents is from 0.001% to 20% by weight, preferably from 0.01% to 10% by weight, and more preferably from 0.01% to 5% by weight”([0505]- [0508]). With regard to claim 11, Dumousseaux teaches the compositions of their invention may be anhydrous and in their claim 38 teaches the composition comprises least one additional non encapsulated cosmetic ingredient(s) selected from volatile and non-volatile silicon or hydrocarbon oils [0292]. With regard claim 20, Dumousseaux teaches the compositions may be an emulsion obtained by dispersing a fatty phase in an aqueous phase (O/W), an emulsion obtained by dispersing an aqueous phase in a fatty phase (W/O), and a multiple emulsion (W/O/W, O/W/O; i.e. a composition in the form of a two-phase or a multi-phase formulation; [0514]). With regard claim 21, Dumousseaux in Example 7 teaches an aerosol foam with a powder phase and water phase ([0669]-[0673]).
While there is not a single example comprising each of the claimed components, the porous particle/core constituents (i.e. cellulose polymer/Cellulobeads USF), lipophilic antioxidant/tocopherol, and oil components are included among short lists of reagents. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to the recited amounts of lipophilic antioxidant and particle in the composition; the wet point for oil; the wet point for water; the ratio of the wet point for water/the wet point for oil; and the number average primary particle size of the particle, Dumousseaux teaches these parameters with values which fall within or overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Dumousseaux as applied to claims 1-8, 10, 11, 20 & 21 above, and further in view of Ganceviciene (Published: 2012; previously cited).
The teachings of Dumousseaux is described above. Dumousseaux teaches a composition comprising tocopherol as an anti-wrinkle agent.
Dumousseaux does not teach the species of tocopherol.
In the same field of invention of skin anti-aging, Ganceviciene teaches α-tocopherol is “used as a component of skin products…It acts by smoothing the skin and increasing the ability of the stratum corneum to maintain its humidity, to accelerate the epithelialization, and contribute to photoprotection of the skin” (i.e. α-tocopherol smooths the skin/is an anti-wrinkle product; pg. 310, col. 1).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Dumousseaux’s composition by substituting Dumousseaux’s generically taught tocopherol with Ganceviciene’s α-tocopherol because Dumousseaux’s tocopherol is for anti-wrinkling and α-tocopherol smooths the skin (i.e. anti-wrinkle) and accelerates epithelialization (i.e. anti-wrinkle). The ordinary skilled artisan would have been motivated to do so, with an expectation of success in order to select a species of tocopherol which has anti-wrinkle properties.
Claims 1-6, 8-11, 16, 17 & 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Baschong (US 2009/0156563; Published: 06/18/2009; previously cited).
*Page 19 of the specification states ”(a) particle may form a powder phase”.
With regard to claims 1(a), 4, 5, 6, 16, 17, 20 & 21, Baschong teaches several particulate skin care delivery systems which include microsponge technology which are water-swellable particles made of cellulose having a myriad interconnecting voids within non-collapsible structures (i.e. porous particles of cellulose/polysaccharide polymer which are a powder phase; [0109] & [0125]). With regard to claims 16, 17 & 19(b), Baschong teaches the active ingredients “such as antioxidants… may be integrated in [the] cosmetically or dermatologically acceptable carrier system” (emphasis added; i.e. the particles and the antioxidant are accessible to each other and the antioxidant is absorbed by the carrier; [0109]). With regard to claims 1(a) & 3, the instant specification discloses at pg. 6, ll. 40 to pg. 7, ll. 1-4, that “ [i]t is more preferable that the (a) particle comprises at least one polysaccharide…Cellulose and its derivatives are preferable. Cellulose is more preferable” (i.e. “the particle has a wet point for oil…a wet point for water… the ratio of the wet point for water to the wet point for oil is 5 or less”). These properties are inherent to the chemical which is cellulose. "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). With regard claims 1(b), 8 & 9, Baschong teaches the lipophilic antioxidant/active agent may be antioxidants “preferably selected from the group containing” tocopherol (α, γ, γ, δ isomers)” ([0078]-[0080]). With regard to claims 2 & 19(a), Baschong teaches the microcapsules of their invention may be a particle size of >1 µm and these are made from cellulosic ingredients and polysaccharides (i.e. 50 µm or less; [0114] & [0115]). It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date to have modified the size of Baschong’s microsponges to be a particle size of >1 µm because Baschong teaches this size as suitable for practicing their invention with cellulosic ingredients which reasonably includes the cellulose microsponges. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use a size appropriate for skin care delivery systems so as not to alter the feel of the composition on skin. More broadly, with regard to claims 1(b) & 10, Baschong teaches the concentration range for the antioxidants, which include tocopherol, is from 0.001 % to 10% [0078]. With regard to claims 11 & 20, Baschong teaches end-product formulations which include emulsions in the form of W/O, O/W, O/W/O, and W/O/W (i.e. containing at least one oil or water; two-phase and multi-phase compositions; [0054]-[0055]).
While there is not a single example comprising each of the claimed components, the porous cellulose particle/core constituents (i.e. cellulose polymer), lipophilic antioxidant/tocopherol, oil components and water components are included among short lists of reagents. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to the recited amounts of lipophilic antioxidant in the composition; the wet point for oil; the wet point for water; the ratio of the wet point for water/the wet point for oil; and the number-average primary particle size of the (a) particles, Baschong teaches these parameters with values which fall within or overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
In the traverse of the rejection of claims 1-8, 10, and 11 under 35 U.S.C. 103 over Dumousseaux, Applicant reiterates the argument that unexpected results are present for Example 1 in Table 1 of the specification and recreates Table 1 in the arguments (reply, pg. 8-9). Applicant states Example 1 comprises tocopherol and cellulose beads while Comparative Example 2 comprises only tocopherol (reply, pg. 9-10). Applicant argues “it can be found that cellulose beads can enhance the antioxidant effects of lipophilic antioxidants (e.g., tocopherol), which is beyond the expectations of a person
skilled in the art since none of the cited references teaches or suggests such enhanced effects “ (reply, pg. 10).
This is not persuasive. Dumousseaux teaches Cellulobeads USF are suitable for use as the microcapsules of their invention. Dumousseaux also teaches the composition of their invention may comprise at least one active agent chosen from cosmetic active agents including antiwrinkle agents which may be tocopherol with the content of active agents is from 0.001% to 20% by weight, preferably from 0.01% to 10% by weight, and more preferably from 0.01% to 5% by weight”([0505]- [0508]). It would be obvious to combine Dumousseaux’s cellulose beads with Dumousseaux’s tocopherol in a cosmetic composition because Dumousseaux teaches it is suitable to do so in order to provide anti-wrinkle agents. It is not required that Dumousseaux recognize the same advantage as Applicant for combining these two reagents. A rationale different from Applicant’s is permissible. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
With regard to the enhancement of the antioxidant effects of lipophilic antioxidants, this is also a latent property resulting from the combination of cellulose beads and tocopherol which are both taught by Dumousseaux. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).
Applicant argues Comparative Examples 3 & 4 of Table 1 do not enhance the antioxidant effects of glutathione or ascorbic acid; this effect is only present for lipophilic antioxidants (e.g., tocopherol; reply, pg. 11). Applicant argues Dumousseaux and Baschong disclose ascorbic acid, tocopherol, and
glutathione interchangeably (reply, pg. 11).
This is not persuasive for the reasons previously presented in the last office action. The Examiner reiterates that while the combination of cellulose beads + tocopherol showed a reduced hydroperoxide concentration of value of 4 µM as compared to tocopherol alone with a hydroperoxide concentration value of 10 µM, or cellulose beads + ascorbic acid with a hydroperoxide concentration value of 8 µM, Applicant has failed to show that the difference is practical and significant. MPEP 716.02 directs that the evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength “are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.”); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960; see MPEP 716.02). In the instant case, Applicant has not shown a 4 µM or a 6 µM difference in hydroperoxide concentration yields anything practically significant such as a longer shelf life, significantly less skin wrinkles, or better protected skin. The instant specification, at page 23, ll. 40 to page 24, ll. 2, states the composition of “Example 1 and… Comparative Example 2 demonstrates that a combination of cellulose beads and a lipophilic antioxidant can provide better anti-oxidation effects than the single use of a lipophilic antioxidant. The comparison of the anti-oxidation effects of the composition according to Example 1 and …Comparative Examples 3 and 4 demonstrates that a combination of cellulose beads and a lipophilic antioxidant can provide better anti-oxidation effects than a combination of cellulose beads and a hydrophilic antioxidant…” but what does this practically mean? A 4 µM difference in hydroperoxide concentration is very small (i.e. 4 x10-6), what is its practical impact? With regard to the statistical significance, Applicant has not performed any statistical tests to establish that these results are statistically significant. This is important because the differences in values for the hydroperoxide concentration between the inventive and comparative examples is very small (i.e. a difference of 4 µM or 6 µM).
With regard to Applicant’s argument that lipophilic antioxidants in combination with cellulose beads perform better than hydrophilic antioxidants in combination cellulose beads as shown by the comparison of tocopherol and ascorbic acid, the examiner notes the differences in hydroperoxide concentration is small (i.e. 6 µM) and is not a marked difference. This is a difference in degree, not kind. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of "a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree." Compare In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967) (differences in properties cannot be disregarded on the ground they are differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) ("we generally consider a discussion of results in terms of ‘differences in degree’ as compared to ‘differences in kind’ . . . to have very little meaning in a relevant legal sense") (from MPEP 716.02).
Applicant argues claim 1 has been amended to be commensurate in scope with the test results, the lipophilic antioxidant “has been limited to tocopherol and some similar compounds, and the amount thereof also has been limited” (reply, pg. 11).
This is not persuasive. The recited species of “pentaerythrityl tetra-di-t-butyl
hydroxyhydrocinnamate, nordihydroguaiaretic acid, propyl gallate, butylated hydroxytoluene, butylated hydroxyanisole, ascorbyl palmitate and tocopherol” do not share a common chemical core and are not expected to have the same efficacy at the recited concentrations. Applicant has only tested tocopherol; Applicant has not tested a representative amount of species commensurate with the scope of the claim. With regard to the amount of the lipophilic antioxidant, Applicant has only tested one concentration at the lower end of the range (i.e. 0.05%). Values in the mid-range, upper limit and outside the ranges have not been evaluated to see if there is a “peak” to the performance at higher concentrations. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960; see MPEP 716.02).
Applicant argues claim 1 is amended to recite that the amount of the lipophilic agent is from 0.001% to 5% by weight and the cited references fail to disclose this amount (reply, pg. 11).
This is not persuasive. Dumousseaux teaches the composition of their invention may comprise at least one active agent chosen from cosmetic active agents including antiwrinkle agents which may be tocopherol with the content of active agents is from 0.001% to 20% by weight, preferably from 0.01% to 10% by weight, and more preferably from 0.01% to 5% by weight”([0505]- [0508]). Baschong teaches the concentration range for the antioxidants, which include tocopherol, is from 0.001 % to 10% [0078].
Applicant argues their new claim 19 includes limitations from claims 2 and 16 but this combination was not rejected for Dumousseaux and claim 2 was not rejected by Baschong (reply, pg. 12).
This is not persuasive. Baschong is used to reject claims 2 & 19. Baschong teaches cellulosic microsponges for use in their invention to absorb reagents. Baschong teaches the microcapsules of their invention may be a particle size of >1 µm and these are made from cellulosic ingredients and polysaccharides (i.e. 50 µm or less; [0114] & [0115]). Both of these cellulosic forms are taught by Baschong as suitable for their skin care delivery composition. It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date to have modified the size of Baschong’s microsponges to be a particle size of >1 µm because Baschong teaches this size as suitable for practicing their invention with cellulosic ingredients which reasonably includes cellulose microsponges. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use a size appropriate for skin care delivery systems so as not to alter the feel of the composition on skin. MPEP 2144.01 states the Examiner is allowed to use implicit teachings of a reference. “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Applicant argues new claims 20 and 21 recite a two-phase or multi-phase formulation and the Examples demonstrate that a multi-phase formulation can provide better anti-oxidation effects than a W/O emulsion (reply, pg. 12). Applicant further argues the cited references fail to teach a two- or multi-phase composition (reply, pg. 12).
This is not persuasive. Baschong teaches end-product formulations which include emulsions in the form of W/O, O/W, O/W/O, and W/O/W (i.e. containing at least one oil or water; two-phase and multi-phase compositions; [0054]-[0055]). Dumousseaux teaches the compositions may be an emulsion obtained by dispersing a fatty phase in an aqueous phase (O/W), an emulsion obtained by dispersing an aqueous phase in a fatty phase (W/O), a multiple emulsion (W/O/W, O/W/O; i.e. a composition in the form of a two-phase or a multi-phase formulation; [0514]). Dumousseaux in Example 7 teaches an aerosol foam with a powder phase and water phase. Further, it is noted Applicant has not defined the terms “two-phase” or “multi- phase” composition in their specification (see instant specification in its entirety). As evidenced by Sheridan (US 2002/0058453; Published: 05/16/2002), “[s]ince most emulsions contain water as one of the two phases, emulsions are usually classified as either an oil-in-water (O/W) emulsion having droplets of oil dispersed in a continuous water phase, or a water-in-oil (W/O) emulsion having droplets of water dispersed in a continuous oil phase. The continuous liquid, or phase, is referred to as the dispersion medium, and the discontinuous liquid, or phase, is the disperse phase” [0057]. As such, Baschong’s and Dumousseaux’s W/O and O/W emulsions are art-recognized two-phase compositions. Baschong’s and Dumousseaux’s O/W/O, and W/O/W emulsions are multiphase compositions by definition because they comprise three phases.
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 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.
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Claims 1-11, 16, 17 & 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, 9 & 14-17 of U.S. Patent No. 11,020,338 (hereinafter ‘338 patent) in view of Dumousseaux (EP 2939653; Published: 11/04/2015; hereinafter Dumousseaux ) and Ganceviciene (Published: 2012). Both the instant claims and the 338’ claims are drawn to a porous cellulose particle and it may be in a composition comprising a physiological acceptable medium. The size of particle is from about 2 to about 7 microns. The ’338 recites the ratio of the wet point for water to the wet point for oil is about 5 or less. The ‘338 teaches the wet point for oil and wet point for water with overlapping values. The ‘338 does not teach the species of lipophilic antioxidant, the amount of particle in the composition or that the composition comprises at least one oil. Dumousseaux teaches the species of cellulose particles/Cellulobeads USF, their wet point for water and oil, the percent amount of the cellulose particles/Cellulobeads USF for inclusion in the composition, inclusion of tocopherol as an antiwrinkling agent and its amount, and inclusion of oils as described above. The teachings of Ganceviciene are described above with α-tocopherol taught to be an anti-wrinkling reagent. It would have been prima facie obvious at the time of filing to add the cellulose particles (a powder phase) recited by the ‘388 to a composition comprising oil and α -tocopherol [yielding a two-phase composition comprising an oil phase and a particle/powder phase] as suggested by the combined teachings of Dumousseaux and Ganceviciene because porous cellulose beads are added to such compositions to absorb oil. The ordinary skilled artisan would have been motivated to do so, with an expectation of success in order to supply an oil absorbent composition which has anti-wrinkling properties. With regard to the wet point for oil, the wet point for water, the ratio of the wet point for water to the wet point for oil, the primary particle size, the amount of particles in the composition, and the amount of lipophilic antioxidant in the composition, the combined teachings of the ‘338 patent, Dumousseaux and Ganceviciene teach these parameters with values that overlap or fall within the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 1-11, 17, 20 & 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 7-9 of U.S. Patent No. 11,622,923 (hereinafter ‘923 patent) in view of Dumousseaux (EP 2939653; Published: 11/04/2015; hereinafter Dumousseaux) and Ganceviciene (Published: 2012). The instant claims and the ‘923 patent claims are drawn to an emulsion (i.e. oil and water containing composition) comprising particles (i.e. powder phase). The ‘923 patent teaches the particle is porous cellulose having a wet point for oil of at last 25 ml/100 g , a wet point for water of at least 50 mg/ 100 g, and the ratio of the wet point for water/wet point for oil of less than or equal to 5. The ‘923 recites the amount of particles present in the emulsion comprise 0.1 to about 10% by weight. The ‘923 does not teach inclusion of a lipophilic antioxidant, its amount or species the tocopherol; or the size of the particle. The teachings of Dumousseaux are described above with regard to particle size, inclusion of tocopherol as an anti-wrinkling agent and its amount. The teachings of Ganceviciene are described above in relation to α -tocopherol being an antiwrinkling agent. It would have been obvious to the ordinary artisan at the time of filing to have modified the ‘923 composition by adjusting the size of the cellulose particle to be 4 µm and adding an antiwrinkle agent which may be α -tocopherol in an amount more preferably from 0.01% to 5% by weight as suggested by Dumousseaux and Ganceviciene because the ‘923 are drawn to porous cellulose particles and compositions comprising them and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide a composition with oil absorbent and anti-wrinkling properties. With regard to the wet point for oil, the wet point for water, the ratio of the wet point for water to the wet point for oil, the primary particle size, the amount of particles in the composition, and the amount of lipophilic antioxidant in the composition, the combined teachings of the ‘923 patent, Dumousseaux and Ganceviciene teach these parameters with values that overlap or fall within the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant request the nonstatutory double patenting rejections be held in abeyance until the time such allowable subject matter is indicated (reply, pg. 13).
Applicants' request is acknowledged, however, a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejections are maintained as no action regarding these rejections has been taken by applicants at this time.
Conclusion
No claims are allowed.
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
