FINAL 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 .
Status of the Claims
This action is in response to papers filed 10/14/2025 in which claim 20 was withdrawn; and claims 1 and 11 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-19 are under examination.
Claim Interpretation
The term “optionally” in claims 6 and 19 is interpreted as not required in the cosmetic composition. It is noted that the components/elements following the term “optionally” in claim 6 and 19 will be interpreted as components/elements that are made optional or not required, and thereby not part of the claimed cosmetic composition. Thus, for the purpose of prior art rejection under 103 (a), “wherein the cosmetic composition optionally excludes one or all of the ingredients selected from the group consisting of gellan, stearic acid, plant butters over 5%, high levels of saturated fatty alcohols/acids above C16, ammonium acryloyldimethyltaurate/vp copolymer, hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer, acrylates/beheneth-25 methacrylate copolymer, and combinations thereof” as recited in claim 6 and 19 are made optional and interpreted as not part of the claimed cosmetic composition.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 11 introduce new matter as the claims recite the limitation: “being inclusive of all clay content in the cosmetic composition” There is no support in the specification for said limitation as it pertains to the one or more clay and its amount in a range from about 0.1% to about 0.8% by weight.
Applicant asserted that the support for the amendments can be found in paragraph [0043] of the specification as originally filed (see Remarks filed 10/14/2025, page 7, 2nd paragraph).
However, after a thorough review of said paragraphs [0043], as well as, throughout the specification, there appeared to be no support for “the one or more clay, being inclusive of all clay content in the cosmetic composition, is present in the cosmetic composition in a range from about 0.1% to about 0.8%, by weight” as claimed. While there is support for “the one or more clay is present in the cosmetic composition in a range from about 0.1% to about 0.8% by weight” in paragraph [0042] of the specification, there is no indication in paragraph [0042] or [0043] of the specification that this amount range for the one or more clay is “inclusive of all clay content in the cosmetic composition” or in other words, the total amount of clay(s) present in the cosmetic composition. In fact, it is noted that paragraph [0043] of the specification discloses “each one of the polymers and clay in the cosmetic composition is present by weight, based on the total weight of the cosmetic composition, as disclosed above [disclosed in paragraph [0042]], from about 0.1, 0.2, 0.3, 0.4, 0.5, 0.6, 0.7, 0.8, 0.9, 1.0, 1.1, 1.2, 1.3, 1.4, 1.5, 1.6, 1.7, 1.8, 1.9, 2.0, 2.1, 2.2, 2.3, 2.4, to about 2.5 percent, including increments and ranges therein and there between,” which means that each one of the clay can be individually present in an amount “from about 0.1, 0.2, 0.3, 0.4, 0.5, 0.6, 0.7, 0.8, 0.9, 1.0, 1.1, 1.2, 1.3, 1.4, 1.5, 1.6, 1.7, 1.8, 1.9, 2.0, 2.1, 2.2, 2.3, 2.4, to about 2.5 percent” or in other words, if two clays were used in the cosmetic composition, each of the clays can be for example, 0.8% by weight, which equates to a combined weight of 1.6%, and thus, does not support the claimed limitation of “inclusive of all clay content in the clay content in the cosmetic composition.” It is noted that “inclusive of all clay content” from about 0.1% to about 0.8% by weight means that the total, combined percentage of any and all clay materials present in the cosmetic composition must fall within this specific range based on the total weight of the cosmetic composition, which is not supported by paragraph [0043] of the specification, as paragraph [0043] is not to the total, combined percentage of any and all clay materials present in the cosmetic composition.
Claims 2-10 and 12-19 are also rejected, as they dependent directly or indirectly from claims 1 and 11, respectively, thereby also containing the conflicting new matter limitation.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of amended claims 1 and 11 at the time of filing of the instant application.
Maintained Rejections
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Montoya et al (US 2020/0345596 A1) in view of Yang (US 2021/0077373 A1) and Faig et al (US 2021/0401715 A1).
Regarding claims 1 and 11, Montoya teaches a cosmetic composition in the form of an oil-in-water emulsion comprising a water phase and an oil phase containing an oil, wherein the water phase contains a polyacrylate crosspolymer such as polyacrylate crosspolymer-6; a polysaccharide film forming agent such as xanthan gum; one or more clay such as smectite (i.e., hectorite); one or more acidic active ingredient selected from hyaluronic acid, citric acid, malic acid, and salicylic acid; one or more bases selected from sodium hydroxide and potassium hydroxide; one or more pigments; and at least one emulsifier (Abstract; [0006]-[0024], [0029]-[0095], [0122]-[0139] and [0147]-[0152]; claims 1-18). Montoya teaches the polyacrylate crosspolymer such as polyacrylate crosspolymer-6 is present in the cosmetic composition in an amount from about 0.1% to about 3% by weight and the polysaccharide film forming agent such as xanthan gum is present in the cosmetic composition in an amount from about 0.1% to about 10% by weight ([0052]-[0054] and [0062]-[0067]; Table 1). Montoya teaches the cosmetic composition contains clay in an amount from about 0.1% to 10% by weight ([0046]-[0047]). Montoya teaches the cosmetic composition is stable and has a creamy texture ([0053], [0151], [0174]).
While Montoya does not expressly teach the specific combination of polyacrylate crosspolymer-6 and xanthan gum is used in the cosmetic composition, it would have been obvious to one of ordinary skill in the art to select and use a combination of polyacrylate crosspolymer-6 and xanthan gum, in view of the guidance from Yang.
Yang teaches a cosmetic composition in the form of an emulsion comprising an aqueous phase comprising a stabilizing thickener containing a combination of polyacrylate crosspolymer-6 and xanthan gum, wherein the stabilizing thickener is present in the cosmetic composition from 0.1% to 2% by weight (Abstract; [0012]-[0014], [0035]-[0063], [0065]-[0077], [0099]; Example 1, Table 1; claims 1-12). Yang teaches the stabilizing thickener is salt-tolerance that is less affected by pH and stabilize the cosmetic composition by increasing the viscosity of the cosmetic composition ([0059]-[0063]).
It would have been obvious to one of ordinary skill in the art to select and use a combination of polyacrylate crosspolymer-6 and xanthan gum in the cosmetic composition of Montoya, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Yang provided the guidance to do so by teaching that a combination of polyacrylate crosspolymer-6 and xanthan gum can be specifically used/included in the cosmetic composition of Montoya as stabilizing thickener so as to stabilize the cosmetic composition by increasing the viscosity of the cosmetic composition and preventing phase separation while also being salt-tolerance (Yang: [0059]-[0063] and [0099]). One of ordinary skill in the art would have reasonable expectation of success in selecting and incorporating a combination of polyacrylate crosspolymer-6 and xanthan gum in the cosmetic composition of Montoya because both polyacrylate crosspolymer-6 and xanthan gum were indicated in Montoya as being useful as thickening agents for the cosmetic composition (Montoya: [0020], [0053]-[0054], [0056], [0064]-[0067], [0114], [0122], and [0157]). Given that the cosmetic composition of Montoya contains salts and is required to be stable, ordinary artisan seeking to provide the cosmetic composition of Montoya with desired stability by preventing phase separation would have looked to using a combination of polyacrylate crosspolymer-6 and xanthan gum in the cosmetic composition of Montoya per guidance Yang, and achieve Applicant’s claimed invention with reasonable expectation of success.
It would also have been obvious to one of ordinary skill in the art to optimize the amount of combination of polyacrylate crosspolymer-6 and xanthan gum used in the composition of Montoya to an amount from about 0.5% to about 1.5% by weight, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Yang teaches that the combination of polyacrylate crosspolymer-6 and xanthan gum can be used in an amount from 0.1% to 2% by weight to provide a stabilized cosmetic composition, which is a range that overlaps the claimed range of “about 0.5% to about 1.5% by weight.” Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the amount of the combination of polyacrylate crosspolymer-6 and xanthan gum in the cosmetic composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
While Montoya does not expressly teach that the one or more bases selected from sodium hydroxide and potassium hydroxide provide a pH in a range from about 4.5 to about 7.5, it would have been obvious that the use of one or more bases selected from sodium hydroxide and potassium hydroxide in the cosmetic composition would be reasonably expected provide the resultant cosmetic composition of Montoya having a pH in the range from about 4.5 to about 7.5. This is because Faig teaches a cosmetic composition in the form of an oil-in-water emulsion comprising thickening agents such as polyacrylate crosspolymer-6 and xanthan gum, clays, an acidic skin active agent, at least one emulsifier, and one or more bases such as sodium hydroxide and potassium hydroxide, wherein the one or more bases is added to cosmetic composition to provide a desired pH of about 4.5 to about 6.5 (Faig: Abstract; [0006]-[0011], [0013]-[0016], [0019]-[0024], [0028]-[0030], [0078]-[0165], [0181]-[0202]; claims 1-18).
With respect to the amounts of polyacrylate crosspolymer-6, xanthan gum, clay, and cosmetically acceptable acid as recited in claims 1 and 11, respectively, Montoya teaches the cosmetic composition contains polyacrylate crosspolymer such as polyacrylate crosspolymer-6 in an amount from about 0.1% to about 3% by weight and polysaccharide film forming agent such as xanthan gum in an amount from about 0.1% to about 10% by weight ([0052]-[0054] and [0062]-[0067]; Table 1). Montoya further teaches the composition contains clay such as smectite and hectorite in an amount from about 0.1% to 10% by weight of the total composition (Montoya: [0027]-[0042] and [0046]-[0047]) and the acidic active ingredient in amount of 10 ppm to 10 wt.% (Montoya: [0008], [0017], and [0040]-[0042]). Additionally, Yang teaches polyacrylate crosspolymer-6 and xanthan gum can be can optimize in a cosmetic composition to amounts from 0.01 to 3 wt. % based on the total weight of the cosmetic composition (Yang: [0061]-[0062]; claims 9-10), as well as, Faig teaches clay such as smectites can be optimize in a cosmetic composition to amount from about 0.1 to about 10 wt. % based on the total weight of the cosmetic composition (Faig: [0089]-[0094]). It is noted the amounts of polyacrylate crosspolymer-6, xanthan gum, clay, and cosmetically acceptable acid as taught in Montoya, Yang, Faig, respectively, overlap the claimed ranges for polyacrylate crosspolymer-6, xanthan gum, clay, and cosmetically acceptable acid. Thus, as discussed above, the Courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results from the claimed parameters, the optimization of the amounts of polyacrylate crosspolymer-6, xanthan gum, clay, and cosmetically acceptable acid in the cosmetic composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
With respect the claimed features of “the composition resists phase separation, pilling and gellifying, and confers a creamy texture,” as recited in claims 1 and 11, it is noted that the cosmetic compositions of Montoya and Yang are both stable, and Yang establishes that the use of the combination of polyacrylate crosspolymer-6 and xanthan gum stabilizes the cosmetic composition by increasing the viscosity of the cosmetic composition and preventing phase separation. Thus, the cosmetic composition of Montoya in view of Yang being substantially similar in structures as the claimed cosmetic composition with the cosmetic composition having polyacrylate crosspolymer-6 and xanthan gum, it would have been reasonably obvious that the claimed features of “the composition resists phase separation, pilling and gellifying, and confers a creamy texture” would have been implicit in the cosmetic composition of Montoya in view of Yang. It is noted that [w]here 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 also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 2, as discussed above, Montoya teaches clays such as smecitite. Faig also teaches smectite, illites, vermiculites, and chlorites as suitable clays for use in a cosmetic composition (Faig: [0093]-[0094]).
Regarding claim 3, as discussed above, Montoya teaches the acidic active ingredient is selected from hyaluronic acid, citric acid, malic acid, and salicylic acid.
Regarding claim 4, as discussed above Montoya and Faig teaches the bases can be selected from sodium hydroxide and potassium hydroxide. Montoya teaches the bases as pH adjuster can be present in the cosmetic composition in an amount of 1% to 5% by weight (Montoya: [0149]-[0150]). Faig teaches the bases as pH adjuster can be present in the cosmetic composition in an amount of 1% to 5% by weight (Faig: [0199]-[0200]).
Regarding claim 5, Montoya teaches the cosmetic composition contains salts (i.e., magnesium aluminum silicate) in an amount of at least 1 to about 15 wt. % (Montoya: [0009], [0017], [0040]-[0042]). Yang teaches the cosmetic composition contains salts (disodium salt of 4-(2-sulfo-p-tolylazo)-3-hydroxy-2-naphthoic acid; calcium salt of 4-(2-sulfo-p-tolylazo)-3-hydroxy-2-naphthoic acid; and calcium salt of 4-(1-sulfo-2-naphthylazo)-3-hydroxy-2-naphthoic acid) in an amount of from 0.1% to 3% by weight (Yang: [0045]-[0049]).
Regarding claim 6, Montoya teaches the cosmetic compositions can further contains additives selected from tin oxide and/or titanium dioxide, tocopherol, phenoxyethanol, butylene glycol, caprylyl glycol, and pentylene glycol (Montoya: [0021], [0023], [0059], [0074], [0085], [0107], [0128], [0143], [0168], [0171]; Example 1, Table 1).
Regarding claim 7, Montoya teaches the composition contains clay including hectorite in an amount from about 0.1% to 10% by weight (Montoya: [0027]-[0042] and [0046]-[0048]). Likewise, Faig teaches clay including hectorites can be optimize in a cosmetic composition to amount from about 0.1 to about 10 wt. % (Faig: [0089]-[0094]). Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results from the claimed parameters, the optimization of the amount of clay in the cosmetic composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claims 8 and 10, as discussed above, Montoya teaches the oil phase contains an oil, and the cosmetic composition contains at least one emulsifier. Montoya further teaches the emulsifier is steareth-20 ([0108]; Example 1, Table 1).
Regarding claim 9, Montoya teaches the oil can be carnauba wax, dicaprylyl carbonate, sunflower oil, and isopropyl isostearate ([0082], [0084], and [0135]).
Regarding claim 12, a discussed above, Montoya teaches the oil can be carnauba wax, dicaprylyl carbonate, sunflower oil, and isopropyl isostearate.
Regarding claim 13, as discussed above, Montoya teaches the cosmetic composition contains at least one emulsifier. Montoya further teaches the emulsifier is steareth-20.
Regarding claim 14, Montoya teaches the acid is lactic acid, citric acid, malic acid, tartaric acid, or salicylic acid ([0139]-[0140], [0143], and [0149]).
Regarding claim 15, as discussed above Montoya and Faig teaches the bases can be selected from sodium hydroxide and potassium hydroxide. Montoya teaches the bases as pH adjuster can be present in the cosmetic composition in an amount of 1% to 5% by weight. Faig teaches the bases as pH adjuster can be present in the cosmetic composition in an amount of 1% to 5% by weight.
Regarding claim 16, as discussed above, Montoya teaches the cosmetic composition contains salts (i.e., magnesium aluminum silicate) in an amount of at least 1 to about 15 wt. %. Yang teaches the cosmetic composition contains salts (disodium salt of 4-(2-sulfo-p-tolylazo)-3-hydroxy-2-naphthoic acid; calcium salt of 4-(2-sulfo-p-tolylazo)-3-hydroxy-2-naphthoic acid; and calcium salt of 4-(1-sulfo-2-naphthylazo)-3-hydroxy-2-naphthoic acid) in an amount of from 0.1% to 3% by weight.
Regarding claim 17, as discussed above, Yang teaches that the combination of polyacrylate crosspolymer-6 and xanthan gum can be used in an amount from 0.1% to 2% by weight to provide a stabilized cosmetic composition, which is a range that overlaps the claimed range of “not more than about 1.5% by weight.” Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results from the claimed parameters, the optimization of the amount of the combination of polyacrylate crosspolymer-6 and xanthan gum in the cosmetic composition would have been obvious before the effective filing date of applicant's invention. See MPEP §2144.05 (I)-(II).
Regarding claim 18, Montoya teaches hectorite as a suitable clay (Montoya: [0006], [0019], and [0047]-[0049]). Faig teaches hectorite as a suitable clay for including in a cosmetic composition (Faig: [0093]-[0096]).
Regarding claim 19, as discussed above, Montoya teaches the cosmetic compositions can further contains additives selected from tin oxide and/or titanium dioxide, tocopherol, phenoxyethanol, butylene glycol, caprylyl glycol, and pentylene glycol.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant argues “The Patent Office's insistence that paragraph [0047] references anything other than clays selected from hectorite and organically modified hectorites defies not only the understanding that a person having ordinary skill in the art would have reading the passage, but also the signed declaratory evidence of one of the authors of Montoya, David Chan, who confirmed in the previously submitted Chan Declaration that paragraphs [0046]-[0050] Montoya were directed to hectorite and organically modified hectorites (Chan Declaration at 9).” Applicant goes on to argue that “[e]ven the unreasonably broadest possible reading of Montoya requires (accounting of "about") at least 0.95% polyvalent silicate clay and at least 0.095% hectorite clay, totaling an absolute minimum of 1.045% total claim which exceeds the maximum amount of total claim (0.88%) by a full 19%. These ranges not only do not overlap and are in fact too far removed from one another to invoke Titanium Metals.” Applicant alleges that “[t]his is confirmed by the Chan Declaration, which presents experimental evidence demonstrating that if the total clay (hectorites and polyvalent silicon combined) is reduced to 1% or less, the formulations of Montoya are rendered unsuitable for their intended purpose. Specifically, the Chan Declaration demonstrates that at 1% clay levels, the resulting film does not provide an effective tightening/shrinking effect.” Applicant goes on to allege that the Patent Office’s argument on pages 15-16 of the Office Action dated 10/14/2025 was “clearly erroneous at every level.” Applicant alleges that “the purpose of Montoya is not to provide "to some extent" a skin-tightening effect; rather, the purpose of Montoya is "to provide a long-lasting skin-tightening effect and a mattifying finishing effect" in comparison to prior art compositions that "quickly lose their skin tightening effect" and "lose their elasticity and quickly begin to whiten, crack, and peel." Montoya at Abstract and paragraphs [0001], [0005], and [0006]. The Patent Office has offered no technical basis or argument to support a contention that the minimal curl measurement for Trial E of the Chan Declaration meets that standard, and so the arguments of the Patent Office amount to nothing more than mere conclusory statements insufficient to support a prima facie case of obviousness.” (Remarks, pages 7-9).
In response, the Examiner disagrees. The Examiner maintains the position that the broader disclosure from paragraph [0047] of Montoya does suggest and contemplate the use of one or more clays in an amount as low as 0.1% by weight, when formulation a cosmetic composition or a skin-tightening composition that provides long-lasting skin-tightening, even if the low amount may not provide a result as superior as the higher amounts used in Montoya’s Examples. Even with the disclosure of polyvalent silicates as also part of the composition, the minimum amount of “about 1% by weight” of polyvalent silicates as taught in Montoya when in combination with the minimum amount of “about 0.1% by weight” would be a combined amount of about 1.1% by weight which is close to the claimed higher end of 0.8% by weight. It is noted that the Courts in Titanium Metals Corp. of America v. Banner, made clear that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP §2144.05.
To this end and as previously noted, the trial results shown in the previously filed Chan Declaration showed that the Exemplary Formula of Trial E containing low amounts of 0.5% magnesium aluminum silicate and 0.5% stearalkonium Hectorite, provided some amount of curls (4 mm) when compared to no product applied (Trial F – 2.75 mm). Thus, the Exemplary Formula of Trial E containing low amounts of 0.5% magnesium aluminum silicate and 0.5% stearalkonium Hectorite is effective in providing tightening/shrinking effect when compared to no product applied. This result from Trial E when compared to no product applied of Trial F cannot be ignored. This is evidence to show that low amounts do provide a tightening/shrinking effect.
Applicant alleges that “the purpose of Montoya is not to provide "to some extent" a skin-tightening effect; rather, the purpose of Montoya is "to provide a long-lasting skin-tightening effect and a mattifying finishing effect" in comparison to prior art compositions that "quickly lose their skin tightening effect" and "lose their elasticity and quickly begin to whiten, crack, and peel." However, the alleged “prior art compositions” disclosed in paragraph [0005] of Montoya is to “’[c]ompositions containing sodium silicate…” The composition of Montoya does not contain sodium silicate and thus, the curl measurement for Trial E when compared to no product applied of Trial F as shown in the Chan Declaration does meets that standard of “providing a long-lasting skin-tightening effect and a mattifying finishing effect” or as discussed above, “effective in providing tightening/shrinking effect” when Trial E is compared to Trial F. Thus, contrary to Applicant’s allegation, the Examiner is not providing “mere conclusory statements,” as the analysis from Examiner’s is based on the evidence shown in Applicant’s Chan Declaration.
Applicant argues “the Chan Declaration represents not just evidence of a co-inventor of the present Application but also of a co-inventor/author of Montoya. It is improper and clearly erroneous for the Patent Office to casually contradict a co-inventor of Montoya's expert assessment that the films yielded by Trials C, D, and E of the Chan Declaration do "not provide a film with an effective tightening/shrinking effect" and "would render the formulations of Montoya unsuitable for their intended purposes." The Patent Office's analysis fails to overcome the experimental evidence provided by the Chan Declaration as well as the expert testimony of the Chan Declaration.” Applicant goes on to argue that “the Patent Office's analysis of the evidence from the Chan Declaration is clearly erroneous. The high curl measurement dropped from 10.5 mm for the inventive composition from Montoya (Trial A) to only 4 mm for 0% magnesium aluminum silicate and 1% stearalkonium hectorite (Trial C), only 5.25 mm for 1% magnesium aluminum silicate and 0% stearalkonium hectorite (Trial D), and only 4 mm for 0.5% magnesium aluminum silicate and 0.5% stearalkonium hectorite (Trial E). While Trials C, D, and E are higher than Trial F, where no product whatsoever was applied, Trials C and E are actually lower than Trial B (4.75) where the applied composition had no clay whatsoever, and Trial D is only slightly higher than Trial B. In other words, Trials C, D, and E, which represent 1% clay, have results which are equivalent to the control experiment (Trial B) with 0% clay, and are only slightly above the baseline (Trial F) with no film at all. As would be understood by a person having ordinary skill in the art (as evidenced by the analysis of Expert David Chan in the Chan Declaration) this evidence in fact demonstrates that clay present at 1% has no appreciable effect, and so certainly does not produce a film that is satisfactory for its intended purpose. This is clear evidence that 1% clay is an ineffective amount of clay for the purposes for Montoya (as explained by an actual co-inventor of Montoya).” (Remarks, page 10).
In response, the Examiner disagrees. As previously discussed, the Examiner had acknowledged while the Table shown on page 3 of the Declaration showed that an exemplary formula of Montoya having 5% magnesium aluminum silicate and 3% stearalkonium Hectorite (Trial A), as having a high curl measurement of 10.5 mm (which Applicant equates to high tightening/shrinking effect) when compared to Exemplary formulas of Trials B-E, the Exemplary Formula of Trial E containing low amounts of 0.5% magnesium aluminum silicate and 0.5% stearalkonium Hectorite, provided some amount of curls (4 mm) when compared to no product applied (Trial F – 2.75 mm). Thus, as discussed above, the Exemplary Formula of Trial E containing low amounts of 0.5% magnesium aluminum silicate and 0.5% stearalkonium Hectorite does provide effective tightening/shrinking effect when compared to no product applied of Trial F. This result from Trial E when compared to no product applied of Trial F cannot be ignored. This is evidence to show that low amounts do provide tightening/shrinking effect.
As discussed above, Applicant alleges that “the purpose of Montoya is not to provide "to some extent" a skin-tightening effect; rather, the purpose of Montoya is "to provide a long-lasting skin-tightening effect and a mattifying finishing effect" in comparison to prior art compositions that "quickly lose their skin tightening effect" and "lose their elasticity and quickly begin to whiten, crack, and peel." However, the alleged “prior art compositions” disclosed in paragraph [0005] of Montoya is to “’[c]ompositions containing sodium silicate…” The composition of Montoya does not contain sodium silicate and thus, the curl measurement for Trial E when compared to no product applied of Trial F as shown in the Chan Declaration does meets that standard of “providing a long-lasting skin-tightening effect and a mattifying finishing effect” or as discussed above, “effective in providing tightening/shrinking effect” when Trial E is compared to Trial F. Thus, contrary to Applicant’s allegation, the Examiner is not providing “mere conclusory statements” or “casually contradict[ing] a co-inventor of Montoya's expert assessment that the films yielded by Trials C, D, and E of the Chan Declaration,” as the analysis from Examiner’s is based on the evidence shown in Applicant’s Chan Declaration. Thus, based on the evidence shown in Applicant’s Chan Declaration with respect to comparing Trial E to Trial F, clay used at a low amount of 1% by weight is satisfactory for Montoya’s intended purpose, as the curl measurement for Trial E when compared to no product applied of Trial F as shown in the Chan Declaration does meets that standard of “providing a long-lasting skin-tightening effect and a mattifying finishing effect” or as discussed above, “effective in providing tightening/shrinking effect” when Trial E is compared to Trial F.
As a result, for at least the reasons discussed above and of record, claims 1-19 remain rejected as being obvious and unpatentable over the combined teachings of Montoya, Yang and Faig in the standing 103 rejection as set forth in this office action.
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.
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.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12036304 in view of Yang (US 2021/0077373 A1) and Faig et al (US 2021/0401715 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the U.S. Patent No. 12036304 significant overlap with the subject matter of the instant claims i.e. salt-stable cosmetic compositions in the form of an oil in water emulsion, comprising: a water phase including: (i) a salt-stable polymeric system comprising a polymer blend comprising polyacrylate crosspolymer-6 and one or more gum such as xanthan gum; (ii) at least one acidic skin active present in the form of a cosmetically acceptable acid; and (iii) one or more neutralizing agents to provide a pH in a range from about 4.5 to about 7.5; and an oil phase, wherein: the total amount of polymer present in the salt-stable cosmetic composition is not more than about 1.5%, by weight, based on the total weight of the salt-stable cosmetic composition; the salt stable cosmetic composition includes greater than 2% salt; and the salt-stable cosmetic composition resists phase separation, pilling and gellifying.
While the claims in the Patent ‘304 further contains acrylamide/sodium acryloyldimethyltaurate copolymer in the polymer blend, it would have been obvious to include acrylamide/sodium acryloyldimethyltaurate copolymer in the polymer blend of the instant claims in view of the guidance from Yang (Abstract; [0012]-[0014], [0035]-[0063], [0065]-[0077], [0099]; Example 1, Table 1; claims 1-12).
While the claims in the Patent ‘304 does not contain one or more clay in a range from about 0.1% to about 0.8% by weight, it would have been obvious to include clay in the composition of the Patent ‘304, as well as, optimize the amount of clay included in the composition to an amount as claimed, in view of the guidance from Faig (Abstract; [0006]-[0011], [0013]-[0016], [0019]-[0024], [0028]-[0030], [0078]-[0165], [0181]-[0202]; claims 1-18).
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the U.S. Patent No. 12036304 in view of Yang and Faig.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant argues that “[t]able 3 and paragraph [0205] of the present Specification demonstrates that the introduction of the clay component provides the unexpected result of forming an emulsion that does not contract, and which lacks liquid pooling. Therefore, even if the combinations of references were proper, any obviousness-type double patenting is overcome by the showing of unexpected results.” Applicant then alleges that “[o]n pages 19-20 of the Office Action, the Patent Office suggests claims 1 and 11 are not adequately commensurate in scope with the Inventive 1 composition which was used for showing the unexpectedly improved results or a property not taught by the prior art, and yet the Patent Office's rejection of the dependent claims, particularly claims 7 and 18, without comment or analysis, do not support the Patent Office's contention that lack of commensurate scope is the basis of the Patent Office's rejection of all claims. Further, the Patent Office's comment on page 20 of the Office Action suggesting that the result may not actually be unexpected in light of art that is not applied in the double-patenting rejection is contrary to the Patent Office's mandate for compact prosecution. Either art is applied in a rejection or it is not applied in a rejection.” (Remarks, page 11).
In response, the Examiner disagrees. Because Applicant is arguing “unexpected results,” MPEP 716.02(d) had made clear that any objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. As previously discussed, Independent claims 1 and 11 are not commensurate in scope with Applicant’s alleged evidence of unexpected results.
Thus, as previously discussed, the Examiner maintains the position that Applicant’s alleged evidence of unexpected emulsion stability as shown in Table 3 and paragraph [0205] of the specification are considered, but are found not persuasive because Inventive 1 composition is drawn to particularly 0.5% polyacrylate crosspolymer-6, 0.3% xanthan gum and 0.5% hectorite, yet the salt-stable polymeric system of claims 1 and 11 are much broader than Inventive 1 composition, particularly claim 1 is drawn generically to any clay, as well as, both claims 1 and 11 are drawn to broad ranges for polyacrylate crosspolymer-6, xanthan gum, and hectorite. Thus, claims 1 and 11 are not adequately commensurate in scope with Inventive 1 composition that was used for showing the alleged unexpected emulsion stability. It is noted that [w]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). See MPEP 716.02(d).
Furthermore, it is noted that the alleged evidence of unexpected emulsion stability shown in Example 3 of the Specification may not be truly unexpected because the cited prior art of record, Montoya, also recognized that an oil-in-water emulsion containing polyacrylate crosspolymer-6, xanthan gum, and clays forms stable emulsion (Montoya: [0174]).
Accordingly, for at least the reason discussed above, the alleged evidence of unexpected results were not persuasive and thereby, the obviousness-type double patenting as set forth in this office action has not been overcome, pending filing of a terminal disclaimer.
As a result, it is maintained that the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the U.S. Patent No. 12036304 in view of Yang and Faig.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOAN THI-THUC PHAN whose telephone number is (571)270-3288. The examiner can normally be reached 8-5 EST Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DOAN T PHAN/ Primary Examiner, Art Unit 1613
Prosecution Insights