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 .
DETAILED ACTION
A fourth 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 20, 2026 has been entered.
Claims 1-15, 17 and 19-22 are pending.
Claims 16 and 18 are cancelled.
Claim 22 is new.
Claims 6 and 14 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-5, 7-13, 15, 17 and 19-22 as filed on March 20, 2026 are pending and under consideration to the extent of the elected species, e.g., the species of at least one polyphenol X is tannic acid, the at least one glycerolated nonionic compound Y is polyglyceryl-6 caprylate and the emulsion is water-in-oil.
Withdrawn Objections / Rejections
In view of the Notice of Abandonment mailed in Application No. 17/731,712, the double patenting rejection thereover is withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 20, 2026 was considered.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 8-13, 15, 17 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Plescia et al. (WO 2020/252203, published December 17, 2020, of record) as evidenced by Bai et al. (CN 113546524 A, as evidenced by the Google translation, of record) and as evidenced by Simon et al. (US 5,932,234, of record) in view of Doering (US 2019/0105251, published April 11, 2019, of record) and Deol et al. (US 2020/0383886, published December 10, 2020, of record).
Plescia teaches deodorant compositions comprising (A) a yeast component, (B) one or more of a phytochemical, an organic acid, and an antimicrobial peptide, and (C) a dermatologically acceptable carrier; the phytochemical can be a polyphenol (title; abstract; claims; page 16, lines 15-18; page 25, lines 8-17; page 42, lines 3-14). The compositions are configured for topical application to an area of the subject such as the face (claims 46, 54). Regarding the recitation of a makeup composition for application to human lips and/or face as recited in the preamble of claim 1 and as newly recited in claim 22, such recitations of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.
The phytochemical is selected from inter alia tannic acid (at least one polyphenol) (claim 16; page 25, lines 8-17; paragraph bridging pages 27-28), as required by instant claim 2. The phytochemical is present from about 0.1 to 10 wt%, for example, about 5 wt% (claims 13-15; page 27, lines 9-26), as required by instant claims 15, 19. 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). See MPEP 2144.05.
The organic acid is selected from the group inclusive of citric acid (cosmetic or dermatological active agent as evidenced by Simon (e.g., claims 1, 15-17)) and extracts of citrus fruits (claims 26-28; page 33, lines 4-7; page 38, lines 5-17), as required by instant claim 21.
The carrier is selected from inter alia water, an alcohol (e.g., ethanol), polyglyceryl-6 caprylate (at least one glycerolated nonionic compound Y having an HLB of at least 7), polyglyceryl-4 caprate or/and titanium dioxide (pigment that is a coloring agent as evidenced by paragraphs [0081] & [0085] of the instant specification); polyglyceryl-6 caprylate and polyglyceryl-4 caprate are solubilizers or/and emulsifiers (claims 34, 38, 39; page 42, lines 3-14; Table 1), as required by instant claims 3, 4, 13. The solubilizer or/and emulsifier may be present from about 0.05 to 10 wt%, for example, about 5 wt% (paragraph bridging pages 46-47), as required by instant claims 15, 19. Regarding the weight ratio X:Y as required by instant claim 11, Plescia renders obvious ratios of about 0.1:10 to 10:0.05, for example, about 5:5. The carrier may comprise inter alia a humectant (claims 35, 36; page 43, lines 8-17), as required by instant claim 12. The carrier is present from about 0.05 to 95 wt% (paragraph bridging pages 42-43).
The compositions may be in the form of inter alia an emulsion or a liquid (claims 47, 48), as required by instant claim 5.
The compositions may further comprise a fragrance (page 51, lines 16-23), an emollient inclusive of triethyl citrate (claims 35, 37) and a preservative inclusive of phenoxyethanol (claims 35, 40).
Although Plescia teaches carriers inclusive of water and ethanol can be present from about 0.05 to 95 wt%, Plescia does not specifically teach at least 10 wt% water and 55 wt% or less of the at least one C2-C5 monoalcohol, wherein the weight ratio (alcohol):(alcohol+water) is at least about 0.35 as required by claim 1.
Although Plescia teaches carriers inclusive of titanium dioxide (pigment that is a coloring agent as evidenced by paragraphs [0081] & [0085] of the instant specification that is white and “colored”), Plescia does not specifically an amount sufficient to provide visual color to the human lips and/or face as required by claims 1, 22.
Although Plescia teaches carriers inclusive of water and ethanol can be present from about 0.05 to 95 wt%, Plescia does not specifically teach at least 10 wt% water and 55 wt% or less of the at least one C2-C4 monoalcohol, wherein the weight ratio (alcohol):(alcohol+water) is at least about 0.35 as required by claim 22.
Plescia does not specifically teach about 5 to 55 wt% of the at least one C2-C5 monoalcohol as required by claim 8.
Plescia does not specifically teach about 35 to 55 wt% of the at least one C2-C5 monoalcohol as required by claim 9.
Plescia does not specifically teach about 40 to 50 wt% of the at least one C2-C5 monoalcohol as required by claim 10.
Plescia does not specifically teach 10 to 40 wt% water and about 5 to 55 wt% of the at least one C2-C5 monoalcohol, wherein the weight ratio (alcohol):(alcohol+water) is at least about 0.4 as required by claim 15.
Plescia does not specifically teach 2.5 to 20 wt% colored pigment as required by claim 17.
Plescia does not specifically teach 10 to 40 wt% water and about 35 to 55 wt% of the at least one C2-C5 monoalcohol, wherein the weight ratio (alcohol):(alcohol+water) is at least about 0.4, and 2.5 to 20 wt% colored pigment as required by claim 19.
Plescia does not teach at least one non-white pigment as required by claim 20.
These deficiencies are made up for in the teachings of Doering and Deol.
Doering teaches deodorants with prolonged scent adhesion comprising, in addition to ethanol and fragrances, at least one fixing agent mixture; the fixing mixture comprises at least one aromatic alcohol inclusive of phenoxyethanol, at least one citric acid ester inclusive of triethyl citrate, and at least one polyglycerol fatty acid esters inclusive of polyglyceryl-4 caprate or/and polyglyceryl-6 caprylates (title; abstract; claims; paragraphs [0009], [0031]-[0039]). The compositions comprise a cosmetically acceptable carrier inclusive of alcoholic or aqueous-alcoholic media, wherein aqueous-alcoholic contains at least 10 wt% water and up to 70 wt% water and at least about 20 wt% alcohol inclusive of ethanol such as from about 22 to 97 wt% ethanol (paragraphs [0014], [0016]-[0019]).
Deol teaches a deodorant cosmetic product comprising a pigment selected from inter alia titanium dioxide or/and iron oxide such as black iron oxide; the composition may serve to conceal skin discoloration, to color correct or to lighten skin pigmentation (amounts sufficient to color upon application) (title; abstract; claims, in particular 46, 47, 62; paragraphs [0089]-[0094]), as required by instant claim 20. The colorant may be present from about 0.1 to 15 wt% (amounts sufficient to color upon application) (paragraph [0093]), as required by instant claims 17, 19. Doel further teaches citric extracts are brightening agents (paragraph [0106]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the carrier of the compositions of Plescia comprising water or/and an alcohol (e.g., ethanol) to comprise the aqueous-alcoholic media of Doering comprising at least 10 wt% and up to 70 wt% water and at least about 20 wt% alcohol inclusive of ethanol because these quantities of water and ethanol are suitable for deodorant compositions. There would be a reasonable expectation of success because Plescia does not delimit the amounts of water or alcohol and because the amounts taught by Doering fall within the broad scope of the 0.05 to 95 wt% of carrier embraced by Plescia.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the deodorant compositions of Plescia or/and of Plescia in view of Doering to further comprise a pigment or colorant such as titanium dioxide or/and iron oxide such as black iron oxide in an amount from about 0.1 to 15 wt% as taught by Deol in order to conceal skin discoloration, to color correct or to lighten skin pigmentation. There would be a reasonable expectation of success because the carrier of the composition of Plescia may comprise titanium dioxide.
Regarding the wherein clause of claim 1 (c)(ii) and claim 22 (c)(ii) drawn to the inhibition of precipitation, because the combined teachings of the prior art render obvious compositions as instantly claimed, comprising the same ingredients in overlapping amounts, it necessarily follows that the compositions rendered obvious by the prior art encompass those which inhibit precipitation because products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01 and 2145 II.
Regarding the new wherein clauses appended to claim 1 and claim 22 drawn to the interaction after application resulting in a coating agent (as described in paragraph [0035] of the instant specification), because the combined teachings of the prior art render obvious compositions configured for topical application as instantly claimed, comprising the same ingredients in overlapping amounts, it necessarily follows that the compositions rendered obvious by the prior art encompass those which interact after application because products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01 and 2145 II. In further support of this presumption, Bai evidences ethanol in an aqueous solvent system temporarily prevents strong hydrogen bonding of tannic acid and avoids generation of precipitates, however, after application as the ethanol gradually evaporates hydrogen bonding re-establishes (title; abstract; claims; pages 1-3, in particular page 2, last full paragraph in Background section; Figures, in particular Figure 1 (see original Chinese publication)).
Regarding the weight ratio (alcohol):(alcohol+water) of at least about 0.3 as required by claims 1, 15, 19 and 22, the combined teachings of the prior art render obvious ratios of at least about 0.6 (~= 20/[20+10]) when the ethanol is minimally present at 20 wt% and the water is minimally present at 10 wt% and render obvious ratios inclusive of for example about 0.8 (~50/[50+10]). Additionally, it is self-evident that as the concentration of ethanol increases (and the water concentration correspondingly decreases due to the constraint of 100 wt% on the composition as a whole), the ratio as claimed converges on 1 (~= alcohol/alcohol) consistent with the fact that the ratio of the ranges recited in new claim 19 can never be less than 0.3.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Plescia et al. (WO 2020/252203, published December 17, 2020, of record) as evidenced by Bai et al. (CN 113546524 A, as evidenced by the Google translation, of record) and as evidenced by Simon et al. (US 5,932,234, of record) in view of Doering (US 2019/0105251, published April 11, 2019, of record) and Deol et al. (US 2020/0383886, published December 10, 2020, of record) as applied to claims 1-5, 8-13, 15, 17 and 19-22 above, and further in view of Bore et al. (US 4,089,942, published May 16, 1978, of record).
The teachings of Plescia, Doering and Deol have been described supra.
They do not specifically teach a water-in-oil emulsion as required by claim 7.
This deficiency is made up for in the teachings of Bore.
Bore teaches deodorant compositions which may comprise a hydroalcoholic carrier and which may be provided in the form of a water-in-oil emulsion (title; abstract; claims, in particular claims 10 and 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsion form of the compositions of Plescia in view of Doering and Deol to comprise a water-in-oil emulsion as taught by Bore because deodorant emulsions may be in this form.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s repeated arguements at page 7 of the Remarks that no motivation exists to modify Plescia’s deodorant to yield pigment-containing makeup compositions remains unpersuasive for reasons of record. Doel clearly motivates the inclusion of pigments in deodorant compositions as set forth in the narrative of the rejections.
Applicant’s citation to limitation (c)(2) of claims 1 and 22 in support of the apparent argument of elements working together is acknowledged but not found persuasive because it is well known that compounds comprising hydroxyl groups inclusive of tannic acid and inclusive of glycerol are capable of hydrogen bonding and that hydrogen bonding is inhibited in the presence of ethanol. See, for example, CN 113546524 A as relied upon the rejections. See also US 3,255,018, US 2018/029644, WO 2019/039858 as made of record August 12, 2024. See also US 6,221,399 as made of record March 25, 2025. See also US 2022/0135855 as made of record July 1, 2025. See also Chen et al., IDS reference filed March 20, 2026.
Applicant’s allegation at page 8 that Plescia requires precipitation in its compositions citing to page 46 is acknowledged but not found persuasive because it is not correct. Applicant’s further allegations appear to agree that the solubilizers / emulsifiers of Plescia are not disclosed to form precipitates in the compositions per se.
Applicant’s statement at page 9 that one would not be motivated to use the polyglyceryl-6 caprylate of Plescia to form precipitates is unpersuasive because the only relevant issue is whether Plescia is in possession of compositions comprising polyglycerl-6 caprylate. Applicant’s further statements regarding the future intended use of the instantly claimed compositions is acknowledged but not found persuasive because all that is required to form precipitates is the removal of the solvent as evidenced by Bai as set forth in support of inherency.
Applicant’s rehashed argument that tannic acid cannot be both polyphenol X and active agent in the pending claims citing to Regeneron remains unpersuasive for reasons of record.
Therefore, the rejections over Plescia are properly maintained in modified form as necessitated by Applicant’s amendments.
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 1-5, 7-13, 15, 17 and 19-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over (1) claims 1-12 and 16-19 of Application No. 17/731,733; (2) claims 1-10 and 13-20 of Application No. 17/731,759; (3) claims 1, 3-13 and 16-20 of Application No. 17/731,791; (4) over claims 1-13 and 18 of copending Application No. 17/731,815; (5) claims 1-13 and 16-20 of Application No. 17/731,816; (6) claims 1, 3-10, 13 and 14 of Application No. 17/731,863; (7) claims 1-34 of Application No. 18/860,116; and (8) claims 1-6, 8-11 and 13-21 of Application No. 18/860,152 in view of Plescia et al. (WO 2020/252203, published December 17, 2020, of record) as evidenced by Bai et al. (CN 113546524 A, as evidenced by the Google translation, of record) and as evidenced by Simon et al. (US 5,932,234, of record), Doering (US 2019/0105251, published April 11, 2019, of record), Deol et al. (US 2020/0383886, published December 10, 2020, of record) and Bore et al. (US 4,089,942, published May 16, 1978, of record).
The instant claims are drawn to compositions comprising at least one polyphenol X / tannic acid, at least one glycerolated nonionic compound Y having an HLB of at least about 7, a solvent system comprising at least 10 wt%, 10 to 40 wt% water and less than 55 wt%, 40 to 50 wt% C2-C5 monoalcohol / ethanol, and an amount of pigment to provide visual color / 2.5 to 20 wt% of at least one colored pigment; the monoalcohol of the compositions inhibits precipitation of X with Y, however, X and Y interact after application; and the weight ratio (monoalcohol) : (monoalcohol+water) is at least about 0.35. The glycerolated compound may have from 2 to 10 glycerol units. The compositions may be an emulsion or a water-in-oil emulsion. The weight ratio X:Y may be about 1:3 to 3:1. The compositions may further comprise inter alia a humectant or/and a filler or/and rheology modifier. X and Y may be independently present from about 0.5 to 25 wt% and the weight ratio (monoalcohol) : (monoalcohol+water) may be at least about 0.4. The colored pigment may be non-white. The compositions may further comprise an active ingredient.
The copending ‘733 claims (1) are drawn to compositions comprising at least one polyphenol X / tannic acid, at least one (poly)glycerolated nonionic compound Y, a solvent system comprising at least 10 wt%, 20 to 55 wt% water and at least one C2-C5 monoalcohol / ethanol in an amount to inhibit precipitation of X and Y or from about 25 to 65 wt%, and at least one non-mineral filler. X and Y may be independently present from about 0.5 to 15 wt%.
The copending ‘759 claims (2) are drawn to compositions comprising at least one polyphenol X / tannic acid, a surfactant system consisting essentially of at least one (poly)glycerolated nonionic surfactant Y having at least one carbon chain comprising at least 8 carbon atoms and having a HLB greater than or equal to 7 and having groups for reacting with the polyphenol to form a coating agent after application, and a solvent system comprising at least 10 wt% water and at least one C2-C5 monoalcohol / ethanol in an amount to inhibit precipitation of X and Y. The compositions may further comprise a filler or an active agent. The composition may comprise at least 0.5 wt%, 1 to 25 wt% Y.
The copending ‘791 claims (3) are drawn to gel compositions comprising at least one polyphenol X / tannic acid, at least one (poly)glycerolated nonionic compound Y, a solvent system comprising at least 10 wt%, 20 to 55 wt% water and at least one C2-C5 monoalcohol / ethanol in an amount to inhibit precipitation of X and Y or 25 to 65 wt%, and at least one gelling agent (rheology modifier). X and Y may be independently present from about 0.5 to 15 wt%. The compositions may further comprise an active agent.
The copending ‘815 claims (4) are drawn to an emulsion comprising an exterior fatty phase and an interior aqueous phase (water-in-oil) comprising at least 5 wt%, 5 to 70 wt% water, and optionally less than 50 wt%, 5 to 40 wt% C2-C5 monoalcohol / ethanol, at least one polyphenol X / tannic acid, at least one glycerolated or/and polyoxyalkylenated nonionic compound Y having an HLB of less than about 8, and at least one pigment, wherein X and Y are each present from about 0.5 to 25 wt% and X and Y hydrogen bond. The compositions may further comprise inter alia a humectant.
The copending ‘816 claims (5) are drawn to compositions comprising at least one polyphenol X / tannic acid, a surfactant system consisting essentially of at least one (poly)glycerolated nonionic compound Y, a solvent system comprising at least 10 wt%, 20 to 55 wt% water and at least one C2-C5 monoalcohol / ethanol in an amount to inhibit precipitation of X and Y or about 25 to 65 wt%, and a sulfur antioxidant. The compositions may further comprise a gelling agent (rheology modifier). X and Y may be independently present from about 0.5 to 15 wt%. The compositions may further comprise an active agent.
The copending ‘863 claims (6) are drawn to compositions comprising about 0.5 to 30 wt% of at least one polyphenol X / tannic acid, about 0.5 to 30 wt% of at least one (poly)glycerolated nonionic compound Y, a solvent system comprising about 10 to 65 wt% of a C2-C5 monoalcohol / ethanol to inhibit precipitation of X and Y, and optionally inter alia a filler, wherein interaction of compounds X and Y forms a coating agent after application. The compositions may further comprise an active agent.
The copending ‘116 claims (7) are drawn to compositions in the form of water-in-oil emulsions comprising at least one aqueous phase comprising at least one polyphenol / tannic acid and comprising at least one polyglycerolated nonionic surfactant with an HLB of less than or equal to 8. The compositions may comprise 5 to 80 wt% water or at least 0.8 wt% of the polyphenol. The polyglycerolated nonionic surfactant may be inter alia esters of isostearic acid and polyglycerol having 2 to 10 glycerol units or may be present from 2 to 10 wt%. The ratio of reactive hydroxyl groups of the polyphenol to the reactive hydroxyl groups of the surfactant may range from 0.3 to 20. The compositions may further comprise at least one C2 to C8 monoalcohol or at least one colorant.
The copending ‘152 claims (8) are drawn to compositions comprising at least one polyphenol / tannic acid, at least one (poly)glycerolated nonionic compound capable of forming hydrogen bonds with the polyphenol, at least one C2-C8 monoalcohol / ethanol and at least one acid. The compositions may comprise at least 2 wt% of the polyphenol or at least 1 wt% of the (poly)glycerol or 25 to 98 wt% of the monoalcohol. The (poly)glycerols may comprise 2 to 20 glycerol units or may comprise polyglyceryl-6 caprylate. The compositions may comprise less than 10 wt% water or at least one colorant.
The conflicting claims broadly recite the same generic compositions and differ with respect to the particulars of the compositions, e.g., with respect to various amounts, ratios and additional excipients. However, these differences are bridged by the teachings of Plescia, Doering, Deol and Bore summarized supra. In view of Plescia, it would have been prima facie obvious to modify the polyphenol / tannic acid compositions of the copending claims to comprise solubilizers or/and emulsifiers inclusive of polyglyceryl-6 caprylate or/and polyglyceryl-4 caprate as compound Y in amounts of about 0.05 to 10 wt% because the inclusion of such is expected to enhance the fixation of the cosmetic upon application to the skin, it would have been prima facie obvious to modify the compositions of the copending claims to comprise about 0.1 to 10 wt% tannic acid because such is suitable for producing deodorant compositions suitable for application to the underarm or the face, it would have been prima facie obvious to include inter alia humectants within the aqueous or/and alcoholic carrier in order to reap the expected benefit of moisture retention, and it would have been prima facie obvious to formulate the compositions into an emulsion because deodorants comprising tannic acid may take this form. In view of Doering, it would have been prima facie obvious to modify the solvent of the copending clams to comprise an aqueous-alcoholic media comprising at least 10 wt% and up to 70 wt% water and at least about 20 wt% alcohol inclusive of ethanol such as from about 22 to 97 wt% ethanol because these quantities of water and ethanol are suitable for deodorant compositions. In view of Deol, it would have been prima facie obvious to modify the compositions of the copending claims to further comprise 0.1 to 15 wt% colorant such as black iron oxides in order to provide a second benefit of skin coloration upon application. In view of Bore, it would have been prima facie obvious to formulate the compositions / emulsions as water-in-oil emulsions because deodorants may take this form.
The conflicting ‘733 (1), ‘815 (4), ‘116 (7) and ‘152 (8) claims also differ with respect to the newly introduced active, however, this difference is bridged by Plescia because it would have been obvious to produce deodorant compositions as elaborated supra comprising combinations of tannic acid with organic acids inclusive of citric acid (active as evidenced by Simon, brightener as evidenced by Doel) because such is an embodiment of Plescia.
Regarding the wherein clause of instant claims 1 (c)(ii) and 22 (c)(ii) drawn to the inhibition of precipitation, although many of the copending claims explicitly recite this property, additionally or/and alternatively, because the combined teachings of the copending, conflicting claims and the prior art render obvious compositions as instantly claimed, comprising the same ingredients in overlapping amounts, it necessarily follows that the compositions rendered obvious by the copending, conflicting claims in view of the prior art encompass those which inhibit precipitation because products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01 and 2145 II.
Regarding the new wherein clause appended to claims 1 and 22 drawn to the interaction after application resulting in a coating agent (as described in paragraph [0035] of the instant specification), because the combined teachings of the copending, conflicting claims and the prior art render obvious compositions configured for topical application as instantly claimed, comprising the same ingredients in overlapping amounts, it necessarily follows that the compositions rendered obvious by the prior art encompass those which interact after application because products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01 and 2145 II. In further support of this presumption, Bai evidences ethanol in an aqueous solvent system temporarily prevents strong hydrogen bonding of tannic acid and avoids generation of precipitates, however, after application as the ethanol gradually evaporates hydrogen bonding re-establishes (title; abstract; claims; pages 1-3, in particular page 2, last full paragraph in Background section; Figures, in particular Figure 1 (see original Chinese publication)).
Regarding the various ratios as instantly claimed, the combined teachings of the copending, conflicting claims and the prior art render obvious ranges for the various numerators and denominators which encompass ratios as instantly claimed.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments: Double Patenting
Applicant's request for withdrawal of the rejections at page 10 of the Remarks is acknowledged but not found persuasive.
Applicant is reminded that a complete response to a nonstatutory double patenting (NDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional. MPEP 804 I(B)(1). Because Applicant’s Remarks remain non-responsive to the rejections (see 37 CFR 1.111), the provisional double patenting rejections are properly maintained and made again and new grounds of rejection are applied herewith as necessitated by continued examination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. 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.
/ALISSA PROSSER/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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