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 .
Terminal Disclaimer
The terminal disclaimer filed on 11/26/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent issuing from copending application 17632664 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
The Amendment filed 11/26/2025 has been entered. Applicant’s amendments are in response to in the Non-Final Office Action mailed 08/27/2025. Applicant’s claims have been amended in the following manner: independent claim 1 has been modified by inclusion of further limitations for “composition (E1)” to such that the previous ground of rejection is maintained (i.e., dependent claim 2 limitations are moved into claim 1, and a wherein clause is incorporated regarding the homogeneity of composition (E1) at various temperatures and storage times, where support for the claimed homogeneity of the instant emulsions of claim 1 are found in the Specification on page 2, lines 24-28 and pg 32-33). The application of the previously-used Prior Art is adapted to the newly amended claim limitations, although the thrust of the current rejection remains essentially the same as before. The following objections/rejections are withdrawn: the provision double patenting rejection is withdrawn (on the basis of the filed and approved terminal disclaimer, as discussed above).
The Examiner further acknowledges the following:
Claims 1 and 4-17 are pending.
Claims 1 and 4-17 are presented for examination and rejected as set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation, which appears to limit homogeneity as being over all temperatures (the “and” relationship between “greater than or equal to 20 °C” and “less than or equal to 25 °C”), and the claim also recites “as well as 45 °C” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Additionally, it is not clear if the “three months” applies to all temperatures or just “45 °C”. Applicant should consider rewording or introducing punctation for clarity.
Furthermore, claims 4-17 are rejected for depending from claim 1.
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, 4-12, and 14-15 are rejected as being unpatentable over 35 U.S.C. 103 as being unpatentable over Wang (WO2017062029A1), as evidenced by Bauer (US4695450), Bagdi (US7001603), Tadros (Emulsion Formation and Stability, 2013), and Tully (DE3938901A1 - machine translation provided), and in further view of Arvidsson (US20140350101A1), and Vishnupad (US20020111281A1).
Applicant’s claims are directed to a composition comprising a dispersed gelled phase (comprising at least one diol) free of added water that is dispersed in a continuous fatty phase (being a fatty phase comprising at least one oil, at least one emulsifying surfactant, and at least one other emulsifying surfactant).
The amended phrase “in a form” at the beginning of instant claim 1 does not add a substantive limitation beyond what had been intended by the previously used language. Applicant amends into instant claim 1 the limitation: “wherein said composition (E1) remains homogeneous at a temperature greater than or equal to 20°C and less than or equal to 25°C, as well as at 45°C after storage for at least three months” (where this limitation finds support in the original Specification on page 2, lines 24-28 and pg 32-33). Note the three months applies to all temperature ranges.
Wang teaches anhydrous dermatological compositions (abstract), including oil-in-glycol or glycol-in-oil emulsions [0100-0101] providing for example an anhydrous gel [0014].
Regarding claim 1, 5, and 7-12: Wang teaches anhydrous topical compositions comprising oil-in-glycol or glycol-in-oil emulsions (furthermore, by analogy to water-in-oil emulsions, then, the glycol could be dispersed into the oil), containing emulsifiers [0064], that are liquid or semi-liquid in nature (reads on “homogeneous”) [0100-0101]. Note that glycol-in-oil can mean for example propylene glycol-in-oil (p/o emulsions), which is evidenced by Bauer (col 1, lines 10-30). Wang teaches “oil” carriers such as ester oils and “alcohol” carriers are suitable [0062-0067], where the carrier is 2-50 wt% or 50-99 wt% [0061].
Regarding the newly amended stability limitation, Wang teaches an objective of the invention is for an anhydrous composition for topical use having prolonged stability [0017], stressing “physical stability” where there is no phase separation (i.e., also reads on “homogeneous” of instant claim 1) at least about 90 days or longer at 4 to 40 °C [0059], where 40 °C is close enough to 45 °C such that it is a minor variation of an accelerated stability test condition, wherein 45 °C has also been used to test for stability of anhydrous emulsion systems [0006]. Thus, the manufacture of an anhydrous emulsion that remains homogeneous under typical storage conditions is obvious.
The composition can include at least one more surfactant, implying more than one surfactant is acceptable [0074-0076] (including nonionic surfactant emulsifiers [0075], such as alkyl glucosides (reads on instant claims 1, 7-10) [0106-0108], polyglycerol esters and dipolyhydroxystearates (reads on instant claim 1, 11, 18) [0106, 0111]) and thickeners/gelling agents [0068-0071, 0118-0119], where it would be obvious to gel the oil or glycol phase to adjust viscosity of the final composition [0068-0071]. Surfactants are taught in 0-20 wt% and gellants in 1-40 wt% [0098]. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (see 2144.05(I)). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”).
With respect to selection of ingredients from a single art reference, it is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Regarding claim 14-15: Wang teaches a method of using the topical formulation by application to skin (Wang – claim 16).
In summary, Wang teaches elements and motivations for a suitable anhydrous topical composition that can be a glycol-in-oil emulsion comprising surfactants and gelling agents that maintains a certain homogeneity and stability under storage conditions. However, Wang does not teach the specific crosslinked anionic polyelectrolyte gelling agent (claims 4 and 6).
Arvidsson teaches substantially anhydrous topical gels (abstract), where “substantially anhydrous” means that the content of free water such as less than 0.5 wt% [0179]. Arvidsson teaches alkypolygycosides such as Sepineo SE68 [0089] (as demonstrated in Applicant’s Specification in Table 1), and anionic polyelectrolytes such as Sepineo P600 [0089] (as demonstrated as a suitable crosslinked anionic polyelectrolyte in Applicant’s Specification in Table 1). Arvidsson applies these ingredients as viscosity-increasing ingredients [0089] in 0.5 to 50 wt% [0090], because viscosity-increasing ingredients help form a stable gel in anhydrous compositions, where the carrier has a low base viscosity [0088].
Vishnupad teaches anhydrous gels (abstract), where polyacrylamide thickening agents in 0.05-20 wt% [0011, 0015] are used to increase the viscosity of predominantly propylene glycol phases (about 97-99 wt%) (Tables 1-7) to a desired viscosity range and thickness [0006].
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wang’s teachings of anhydrous emulsions with Arvidsson’s viscosity-increasing ingredients such as Sepineo SE68 and Sepineo P600 because Wang teaches general inclusion of gellants and thickeners in order to optimize viscosity of anhydrous emulsions [0068-0069] and Vishnupad provides a demonstration of the capability of viscosity-modifying polymers to optimize the viscosity of anhydrous gel compositions comprising high content propylene glycol (Table 7, [0006]).
Finally, since the prior art teaches the composition ingredients, amounts, and motivations to combine, the final structure of the emulsion is expected, as evidenced by the following art. As evidenced by Bagdi, the applicability of a gellant to a particular non-aqueous phase depends upon the gellant’s inherent polarity (col 2, lines 54-66). Thus, the gellant’s named in the instant claims and Specification should migrate to the appropriate phase based on polarity under equilibrating processing conditions (such as on pg 29 in Applicant’s Specification). As evidenced by Tadros, regarding oil-in-oil emulsions (pg 1), the phase in which the surfactant is most soluble typically forms the continuous phase (pg 24). Thus, the overall structure of the glycol-in-oil emulsion (i.e., which phase is gelled and which phase is continuous) depends from the nature of the ingredients, which have been named in the art in amounts overlapping the instant claims, as obvious. As evidenced by Tully, stable anhydrous alcohol-in-oil emulsions are known where the polyhydric alcohol (such as propylene glycol [0019]) disperses in an oil phase, with typical amounts of 10-40 wt% oil, 60-90 wt% polyhydric alcohol and up to 12 wt% emulsifier, where the viscosity is modified by oil proportion [0007-0010] for cosmetics for the skin [0018].
Claims 1 and 4-17 are rejected as being unpatentable over 35 U.S.C. 103 as being unpatentable over Wang (WO2017062029A1), Arvidsson (US20140350101A1) and Vishnupad (US20020111281A1), as evidenced by Bauer (US4695450), Bagdi (US7001603), Tadros (Emulsion Formation and Stability, 2013), and Tully (DE3938901A1 - machine translation provided), as applied to 1, 4-12, and 14-15, and in further view of Polonka (US20090208430A1).
As discussed above, Wang, Arvidsson, and Vishnupad teach an anhydrous topical composition that can be a propylene glycol-in-oil emulsion comprising surfactants and gellants. However, they do not teach tanning agents and a method of use (claims 13 and 16-17).
Polonka teaches sunless tanning topical compositions (abstract) and a method of applying a composition [0062], including anhydrous formulations [0024]. Polonka teaches 0.1 to 20 wt% tanning agent (abstract) such as dihydroxyacetone as typical for these types of formulations [0007]. Polonka teaches a sunless tanning agent to provide tanning without exposure to harmful UV rays [0004-0007].
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Wang, Arvidsson, and Vishnupad to include a tanning agent in suitable amounts and method of application to provide tanning without exposure to harmful UV rays, as taught by Polonka [0004-0007].
Response to Arguments
Applicants arguments, see pg 12-17, filed 11/26/2025, with respect to the 103 rejection of claims 1-2 and 4-20 under rejection have been fully considered and are not persuasive. The 103 rejection has been modified with respect to amendments made to the claim set and new added claims, thus, maintaining the previous rejection. A general recognized theme of the arguments is that the references are treated piecewise, which is per se unpersuasive. It is the combined teachings that define the art.
On page 12-13, Applicant discusses the amendments in light of the previous 103 rejection, which is noted.
On page 13, Applicant argues that the compositions may be in any galenical form and that Wang does not teach a gelled anhydrous phase dispersed in a continuous oily phase. Note that in an obviousness rejection: One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Where a rejection of a claim is based on two or more references, a reply that is limited to what a subset of the applied references teaches or fails to teach, or that fails to address the combined teaching of the applied references may be considered to be an argument that attacks the reference(s) individually. Thus, Wang in combination with the secondary references teaches the obviousness of the instant claim set. Furthermore, Wang generally teaches that the composition may be in any galenical form normally used, providing rationale that generically encompasses the instant formulation (when the specific limitations are found within the primary and secondary references) and thus, the obviousness of the instant formulation. Specifically, Wang teaches anhydrous topical compositions comprising oil-in-glycol or glycol-in-oil emulsions (furthermore, by analogy to water-in-oil emulsions, then, the glycol could be dispersed into the oil), containing emulsifiers [0064], that are liquid or semi-liquid in nature (reads on “homogeneous”) [0100-0101]. Note that glycol-in-oil can mean for example propylene glycol-in-oil (p/o emulsions), which is evidenced by Bauer (col 1, lines 10-30). Wang also teaches thickeners/gelling agents [0068-0071, 0118-0119], where it would be obvious to gel the oil or glycol phase to adjust viscosity of the final composition [0068-0071].
On page 13, Applicant argues that Wang does not teach emulsions. Refer to the 103 rejection above: “Wang teaches anhydrous topical compositions comprising oil-in-glycol or glycol-in-oil emulsions (furthermore, by analogy to water-in-oil emulsions, then, the glycol could be dispersed into the oil), containing emulsifiers [0064], that are liquid or semi-liquid in nature [0100-0101]. Note that glycol-in-oil can mean for example propylene glycol-in-oil (p/o emulsions), which is evidenced by Bauer (col 1, lines 10-30). Wang teaches “oil” carriers such as ester oils and “alcohol” carriers are suitable [0062-0067], where the carrier is 2-50 wt% or 50-99 wt% [0061].” Applicant appears to focus on a specific embodiment of an anhydrous gel [0014], wherein, note that specific embodiments do not define the teachings: “Applicants erroneously point to specific embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).” Also note in [0014], Wang teaches any “anhydrous carrier, such as a gel, paste, cream, etc.” [0014]. Thus, there is ample teachings for emulsions by Wang. The instant claims describe a composition that combines individual aspects that the reference teaches as obvious, according to the reference’s guidance.
On page 14, Applicant suggests Bauer has only interest in emulsions as a filling material for capsules such that it is not analogous to the instant invention made for topical use. Applicant is reminded that the scope of analogous art is to be considered broadly. Wyers v. Master Lock Co., No. 2009-1412, 2010 WL 2901839 (Fed. Cir. July 22, 2010). Art is analogous if it is (1) from the same field of endeavor, regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). Here Bauer’s teachings on emulsions generally are relevant to the instant claim set that discusses emulsions as a formulation, and separate intended uses does not impact the pertinence of emulsion teachings generally. Used as an evidentiary reference, Bauer is directed to anhydrous emulsions (abstract), and Bauer teaches that glycol-in-oil (as described by Zhang [0100-0101]) can mean for example propylene glycol-in-oil (p/o emulsions) (col 1, lines 10-30). This has direct applicability to the instant anhydrous emulsions that can be exemplified by 1,2-propanediol (i.e., propylene glycol) in oil formulations, where an anhydrous emulsion compositional structure is the same, as independent of intended use (i.e., meant for topical use in the instant case, or meant for encapsulation with Bauer). No evidence is provided suggesting the emulsions described by Bauer would be not suitable for topical application because of structural deficiencies of Bauer’s emulsion descriptions. Furthermore, a reference need not contain all elements of the instant claim as long as obviousness is supported by rationale (see the 103 rejection for rationale): All elements of each prior art reference need not read on the claimed invention, rather, the proper test for obviousness is what the combined teachings would have suggested to a person of ordinary skill in the art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).
On page 14-15, Applicant discuss the new limitation of claim 1: “wherein said composition (E1) remains homogeneous at a temperature greater than or equal to 20°C and less than or equal to 25°C, as well as at 45°C after storage for at least three months” as a new claim limitation, where this limitation finds support in the original Specification on page 2, lines 24-28 and pg 32-33). Applicant teaches this limitation in terms of an unexpected result such that the instant invention unexpectedly provides a stable glycol/fatty emulsion.
As this section of the remarks focuses on unexpected results (i.e. maintaining homogeneity), the Examiner will address the proposed unexpected results here. The unexpected results represented by pages 29-33 (including Tables 1 and 2), only demonstrate that for a very specific formulation type 5 wt% Lanol 2681(Coco-Caprylate/Caprate), 0.4 wt% Sepineo SE 68 or Montanov 202 or Fluidanov (alkyl polyglycoside), 1 wt% Sepicide HB (preserving agent), 1.1 wt% Simaline WO (PEG 30 dipolyhydroxystearate), 2 wt% Sepineo P600 (thickening agent), and 90.5 wt% 1,2-propanediol, that addition of 1.2 wt% Montane 80 (sorbitan monooleate, an O/W lipophilic surfactant, as taught by Applicant on pg 33 of the Specification) destabilizes the formulation. Note that ingredients considered important to formulation stability and claim scope are underlined above for clarity.
The question becomes whether the stable formulation represents an unexpected result (i.e., to the Examiner, it appears the literature does not teach this specific embodiment to produce a stable emulsion, so in this instance it appears so), and whether the claim scope is commensurate with the data (i.e., Applicant only provides 3 data points in F1, F2, and F3, where the emulsion demonstrates stability). Thus, the Examiner cannot allow the current claim scope on the basis of the very limited formulation data supporting the instant claim set.
Furthermore, Applicant has already demonstrated the highly-sensitive nature of these formulations by incorporating a single ingredient at 1.2 wt% (Montane 80, or sorbitan monooleate) that leads to destabilization of the emulsion formulation. Notably, the addition of the AP1 amount (as provided in claim 4) is significant because 2 wt% AP1 is always present in the inventive embodiments of the Specification (Tables 1 and 2), and the Examiner has no way of knowing whether, for example 80 wt% AP1, results in a failure of the emulsion (note that Wang typically uses thickeners in the 1-40 wt% range [0071]). Restricting the amount of emulsifying surfactant (S1) (e.g., alkyl polyglycoside, etc.) and emulsifying surfactant (S2) (e.g., polyglycerol esters, etc.) should also be considered (e.g., the Examiner cannot predict the stability of the emulsion at 35 wt% S1 (alkylpolyglycoside) and/or 35 wt% S2 (polyglycerols), when no example is provided demonstrating a stable formulation with these surfactant amounts in Tables 1 and 2 from the Specification, where 35 wt% S1 and/or S2 is currently allowed in instant claim 1). As of now, there are no current limitations on the amount of S1 and/or S2 in the claim scope (see independent claim 1), which are predicted as critical materials for the emulsion stability, since addition of an undesired surfactant like sorbitan monooleate is capable of damaging emulsion stability).
Thus, the examples of Table 1 (pg 29-30 of the Specification), representing the continuous phase (A2) within the unexpected stable emulsion (i.e., 5 wt% Lanol 2681 (Coco-Caprylate/Caprate), 0.4 wt% Sepineo SE 68 or Montanov 202 or Fluidanov (alkyl polyglycoside), 1 wt% Sepicide HB (preserving agent), 1.1 wt% Simaline WO (PEG 30 dipolyhydroxystearate)) is very narrow compared to the breadth of claim 1, and the amounts of all instant ingredients should be considered in order for the purported unexpected effect to be commensurate with the claim scope of independent claim 1. Remember that 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). In this case, Applicant has not demonstrated formulation stability over the entire claimed scope, such that the Examiner would reasonably be able to extrapolate the provided data of the Specification (i.e., pages 29-33, including Tables 1 and 2) to predict the unexpected result (i.e., formulation stability) over the entire claimed scope. Thus, in cases of non-obviousness, the claim scope should reasonably represent the invention, wherein the proposed unexpected effect occurs.
Furthermore, to counteract an obviousness rejection: “[A]ppellants have the burden of explaining the data…they proffer as evidence of non-obviousness.” Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). 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). In this regard, Applicant can submit additional data via Affidavit/Declaration, demonstrating emulsion stability over a larger compositional range, in order to support a broader claim scope. Any amendment of the claim scope or consideration of additional experimental data would result in reconsideration of whether the data is commensurate in scope with the instant claims for allowance.
On page 14, Applicant argues that Wang is a weak reference because it lists thousands of possibilities. While Applicant may maintain this viewpoint, the selection of ingredients within Wang’s disclosure is suitable for an obviousness analysis: it is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
On page 15, Applicant argues that the Office has applied seven or eight references to support an obviousness rejection. Note that “Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on thirteen prior art references.).” In this case, the secondary references are applied to teach specific limitations relevant to the claim set, as obvious (refer to 103 rejection). All references are analogous to the subject matter for the instant application (i.e., all secondary references are directed to anhydrous emulsions and/or gels).
Furthermore, proper rationale has been provided in the 103 rejection to combine the references. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant in an obviousness rejection. 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). In the 103 analysis above, the rationale to combine demonstrates obviousness of the instant invention.
On page 15, Applicant argues that Vishnupad and Arvidsson do not pertain to emulsions (and thus, cannot support an obviousness rejection). Applicant is reminded that the scope of analogous art is to be considered broadly. Wyers v. Master Lock Co., No. 2009-1412, 2010 WL 2901839 (Fed. Cir. July 22, 2010). Art is analogous if it is (1) from the same field of endeavor, regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). Furthermore, all elements need not be present in every reference: All elements of each prior art reference need not read on the claimed invention, rather, the proper test for obviousness is what the combined teachings would have suggested to a person of ordinary skill in the art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Hence, Vishnupad and Arvidsson both teach ingredients typical of anhydrous topical compositions, which poses relevance to the instant claim set, where Wang teaches use of thickeners/gelling agents [0068-0071, 0118-0119] and thus, one would naturally incorporate ingredients useful in anhydrous topical compositions, taught by Vishnupad and Arvidsson, into Wang’s teachings of anhydrous topical compositions [0014, 0100-0101].
On page 16, Applicant argues that Bagdi relates to propylene glycol in only the external phase of an emulsion (and thus, cannot support an obviousness rejection). Refer to the case law on analogous art and perspective on all elements contained within a secondary reference, above. Thus, Bagdi teaches topical emulsions, which is relevant to the instant topical emulsions. Bagdi further provides relevant general teachings on topical gellant compositions such as the applicability of a gellant to a particular non-aqueous phase depends upon the gellant’s inherent polarity (col 2, lines 54-66).
On page 16-17, Applicant discusses the terminal disclaimer filed, which is sufficient to withdraw the provisional double patenting rejection.
Correspondence
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/R.P./Examiner, Art Unit 1614 1/12/2025
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614