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 .
Claim Status
Claims 1-20 are pending.
Claim 1 is currently amended.
Claims 14-15 are withdrawn.
Claim 20 has been added.
Claims 1-13 and 16-20 are currently under consideration.
Claims 1-13 and 16-20 are rejected.
Acknowledgement of Receipt
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/16/2025 has been entered.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 06/16/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, this IDS has been considered by the Examiner.
The listing of references in the specification is not a proper information disclosure statement (see Spec., [00162], US 2004/0170586). 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP §609.04(a) states, “the list may not be incorporated into the specification but must be submitted in a separate paper.” Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Withdrawn Rejections
In light of the new amendments and/or upon further consideration, the rejection of claims 1-13 and 16-18 under 35 U.S.C. § 103 as being unpatentable over Dussaud in view of Jin are withdrawn.
In light of the new amendments and/or upon further consideration, the rejection of claims 1-10, 12-13 and 16-19 under 35 U.S.C. § 103 as being unpatentable over Dussaud in view of Jin, further in view of Jha are withdrawn.
Maintained Rejections
The following rejections are maintained from the previous Office Action dated 03/14/2025 since the art that was previously cited continues to read on the newly amended limitations.
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, 9, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 9, and 11 of co-pending application 17/731,712 in view of Dussaud '653. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (a) at least one
polyphenol X comprising at least two different phenol groups; (b) a surfactant system
consisting essentially of at least one (poly)glycerolated and/or polyoxyalkylenated
nonionic compound Y; (c) a solvent system comprising (i) water in an amount of at least
about 10% by weight with respect to the total weight of the composition; and (ii) at least
one C2-CS monoalcohol in an amount effective to inhibit formation of a precipitate of
compound X and compound Y in the composition prior to application. The copending
claims disclose composition in the form of a gel. The at least one (poly)glycerolated and/or
polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The
polyphenol compound X is tannic acid. The at least one C2-CS monoalcohol is ethanol
as well as the pH is less than 7. The composition is substantially free of coloring agents.
However, the copending claims do not explicitly teach at least one sulfur containing
antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been
prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date
of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of
the copending claims with expected results. One would be motivated to do so with a
reasonable expectation of success as Dussaud shows that these antioxidants are "also
well accepted in the food industry," ([0218]) which suggests that they are suitable and
commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1-5, 7, and 11 are provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-5, 7 and 9 of copending
Application No. 17/731,733 in view of Dussaud '653. Although the claims at issue
are not identical, they are not patentably distinct from each other. This is a
provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (a) at least one
polyphenol X comprising at least two different phenol groups; (b) a surfactant system
consisting essentially of at least one (poly)glycerolated and/or polyoxyalkylenated
nonionic compound Y; (c) a solvent system comprising (i) water in an amount of at least
about 10% by weight with respect to the total weight of the composition; and (ii) at least
one C2-CS monoalcohol in an amount effective to inhibit formation of a precipitate of
compound X and compound Y in the composition prior to application. The copending
claims disclose composition in the form of a gel. The at least one (poly)glycerolated and/or
polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The
polyphenol compound X is tannic acid. The at least one C2-CS monoalcohol is ethanol.
The composition is substantially free of coloring agents.
However, the copending claims do not explicitly teach at least one sulfur containing
antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been
prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date
of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of
the copending claims with expected results. One would be motivated to do so with a
reasonable expectation of success as Dussaud teaches that these antioxidants are "also
well accepted in the food industry," ([0218]) which suggests that they are suitable and
commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1-8, and 11 are provisionally rejected on the ground of non-statutory
double patenting as being unpatentable over claims 1-7 and 10 of copending
Application No. 17/731,759. Although the claims at issue are not identical, they are
not patentably distinct from each other. This is a provisional nonstatutory double
patenting rejection.
The co pending claims are directed to a com position comprising ( 1) at least one
polyphenol X comprising at least two different phenol groups; (2) at least one nonionic
compound Y which is a surfactant having a hydrophilic-lipophilic balance (HLB) greater
than or equal to 7, has at least one carbon chain having at least 8 carbon atoms, and has
at least one (poly)glycerolated chain and/or polyoxyalkylenated chain; and (3) a solvent
system comprising (i) water in an amount of at least about 10% by weight with respect to
the total weight of the composition; and (ii) at least one C2-CS monoalcohol in an amount
effective to inhibit formation of a precipitate of compound X and compound Y in the
composition prior to application. The copending claims disclose composition in the form
of a gel. The (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a
molar mass greater than 200 g/mol. The copending claims disclose the composition is
substantially free of coloring agents. The polyphenol compound X is tannic acid. The C2-
C5 monoalcohol is ethanol as well as the pH is less than 7. Copending claim 10 of '759
teaches at least one antioxidant selected from the group of sodium sulfite, sodium
bisulfite.
Claims 1-5, 7-8, and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-8, and 10 of copending Application No. 17/731,791 in view of Dussaud '653. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising (a) at least one
polyphenol X comprising at least two different phenol groups; (b) a surfactant system
consisting essentially of at least one (poly)glycerolated and/or polyoxyalkylenated
nonionic compound Y with a molar mass greater than 200 g/mol; (c) a solvent system
comprising (i) water in an amount of at least about 10% by weight with respect to the total
weight of the composition; and (ii) at least one C2-C5 monoalcohol in an amount effective
to inhibit formation of a precipitate of compound X and compound Y in the composition
prior to application. The copending claims disclose composition in the form of a gel. The
polyphenol compound X is tannic acid. The copending claims disclose at least one
(poly)glycerolated and/or polyoxyalkylenated nonionic compound Y has a molar mass
greater than 200 g/mol. The composition is substantially free of coloring agents. The C2-
C5 monoalcohol is ethanol as well as the pH is less than 7.
However, the copending claims do not explicitly teach at least one sulfur containing
antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been
prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date
of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of
the copending claims with expected results. One would be motivated to do so with a
reasonable expectation of success as Dussaud teaches that these antioxidants are "also
well accepted in the food industry," ([0218]) which suggests that they are suitable and
commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1, and 4-5 are provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-3 of copending Application
No. 17/731,802 in view of Dussaud '653. Although the claims at issue are not
identical, they are not patentably distinct from each other. This is a provisional
nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising: (a) a solvent
system comprising (i) water in an amount of at least about 10% by weight with respect to
the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in a
concentration by weight in the com position that is about 55% or less and wherein the at
least one C2-C5 monoalcohol is present in an amount effective to inhibit formation of a
precipitate of compound X and compound Y in the composition prior to application; (b) at
least one polyphenol X comprising at least two different phenol groups (c) at least one
polyoxyalkylenated nonionic compound Y. The copending claims disclose the polyphenol
compound X is tannic acid. The at least one C2-C5 monoalcohol is ethanol.
However, the copending claims do not explicitly teach at least one sulfur containing
antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been
prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date
of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of
the copending claims with expected results. One would be motivated to do so with a
reasonable expectation of success as Dussaud teaches that these antioxidants are "also
well accepted in the food industry," ([0218]) which suggests that they are suitable and
commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1, and 4-5 are provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-3 of copending Application
No. 17/731,809 in view of Dussaud '653. Although the claims at issue are not
identical, they are not patentably distinct from each other. This is a provisional
nonstatutory double patenting rejection.
The copending claims are directed to a composition comprising: (a) a solvent
system comprising (i) water in an amount of at least about 10% by weight with respect to
the total weight of the composition; and (ii) at least one C2-C5 monoalcohol in a
concentration by weight in the composition that is about 55% or less and wherein at least
one C2-C5 monoalcohol is present in an amount to inhibit formation of a precipitate of
compound X and compound Y in the composition prior to application; (b) at least one
polyphenol X comprising at least two different phenol groups (c) at least one glycerolated
nonionic compound Y. The copending claims disclose the at least one polyphenol
compound X is tannic acid. The at least one C2-C5 monoalcohol is ethanol.
However, the copending claims do not explicitly teach at least one sulfur containing
antioxidant.
Dussaud discloses antioxidants, e.g. sulfite salts ([0218]). It would have been
prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date
of the claimed invention, to incorporate the antioxidants of Dussaud in the composition of
the copending claims with expected results. One would be motivated to do so with a
reasonable expectation of success as Dussaud teaches that these antioxidants are "also
well accepted in the food industry," ([0218]) which suggests that they are suitable and
commercially accessible. The copending claims anticipate the scope of the instant claims.
Claims 1, and 3-7 are provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1, 3-5, 8 and 10 of copending
Application No. 17/731,863 in view of Dussaud '653. Although the claims at issue
are not identical, they are not patentably distinct from each other. This is a
provisional nonstatutory double patenting rejection.
The co pending claims are directed to a com position comprising ( 1) at least one
polyphenol X comprising at least two different phenol groups; (2) a surfactant system
consisting essentially of at least one (poly)glycerolated and/or polyoxyalkylenated
nonionic compound Y; (3) a solvent system comprising at least one C2-CS monoalcohol
in an amount effective to inhibit formation of a precipitate of compound X and compound
Y in the composition prior to application; and optionally (4) at least one agent selected
from the group consisting of (i) at least one chelating agent; (ii) at least one gelling agent;
(iii) at least one antioxidant selected from the group consisting of ascorbic acid
compounds, sulfur-containing antioxidants, and mixtures thereof, (iv) at least one nonmineral filler, and (v) mixtures thereof. The at least one (poly)glycerolated and/or
polyoxyalkylenated nonionic compound Y has a molar mass greater than 200 g/mol. The
copending claims disclose the at least one polyphenol compound X is tannic acid. The
C2-C5 monoalcohol is ethanol. The composition has a pH that is less than 7.
However, the copending claims do not explicitly teach water in an amount of at
least about 10% by weight with respect to the total weight of the composition.
Dussaud teaches a composition comprising water more preferably at least 10
weight% ([0012], Example 22 [0309]). MPEP 2144.05 states that a prima facie case of
obviousness exists in the case where the claimed ranges overlap or lie inside ranges
disclosed by the prior art. It would have been prima facie obvious to a person of ordinary
skill in the art, ahead of the effective filing date of the claimed invention, to apply the
amount of water used by Dussaud to the copending claims with expected results. One
would be motivated to do so with a reasonable expectation of success as Dussaud
teaches that said aqueous compositions having a certain pH can be synthesized in a straightforward and cost-efficient way, are easy to formulate and to use ([0007]).
New Objections
Claim 1 is objected to because of the following informalities: lettering of the elements in the claim. It appears that the last three lines of the claim recite elements (e.g., pH, of 6.5 or less) that are additional to the ones recited, i.e., (a) - (e). Appropriate correction is required.
New Rejections
Applicant' s amendments have necessitated the following grounds of rejection:
Claim Rejections - 35 USC § 112(b)
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.
Claims 1, 12, and all dependent claims thereof are 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.
Claim 1 recites “capable of forming a coating agent after application.” It is not clear to what compound Y is applied.
The recitation of components (a) through (e) in claim 12, which depends to claim 1, does not show indefinite and definite articles, a, an, and the, respectively, that would typically be used to indicate whether or not the identity of the noun is known. Here in claim 12, it is unclear whether the components, i.e., compound X, Y, monoalcohol, antioxidant, water, refer back to those in claim 1 or if they are additional components.
Claim 12 is further unclear, because while claim 1 recites “(e) optionally one cosmetic or dermatological active agent,” claim 12, which depends to claim 1, recites “(e) from about 20 to about 55% by weight of water.” As such, claim 12 is unclear.
To reiterate, claim 1 and all dependent claims thereof are also rejected for being indefinite as they are dependent on an indefinite claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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 (a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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. Applicants are 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 1-13, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Dussaud (US 2018/0346653) evidenced by Zillich et al. (International Journal of Cosmetic Science, 2015, 37, 455–464) and Ferrari (US 2004/0170586).
Dussaud discloses aqueous compositions comprising at least one polyorganosiloxane (A) and a surfactant selected from a group to include anionic surfactants and said composition has a pH less than 7.5 (abstract, [0009], claim 1).
Regarding element (a) of claim 1, Dussaud discloses that one or more tannins (i.e., polyphenols) are present in aqueous compositions; see tannin and diluent/solvent components, K) and C) respectively, in paragraphs [0187], [0207-0212], [0221], [0233], claims 17 and 19. Dussaud teaches that tannins represent a class of polyphenol derivatives and are known for their structural diversity and provides structures ([0207], see pg. 17 no. 1-4) to read on the at least two different phenol groups limitation of instant claim 1.
Regarding element (b), the preamble reciting “composition comprising” is understood to mean that other ingredients can be present in addition to the limitations. Following is the recitation of “consisting essentially of” and considering the application of the broadest reasonable interpretation, is construed as “comprising of” because transitional phrase(s) link the preamble to the body of the claim. Thus, the surfactant system may comprise other compounds other than “at least one (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y.” Similarly, the surfactant system of dependent claim 19 is not exclusionary.
Specifically, regarding compound Y in element (b) of claim 1, Dussaud teaches propylene glycol mono methyl ether may be used in the composition with Example 16 (F18) ([0300]). Looking to Applicants’ specification, paragraph [0082] establishes such compounds as a suitable compound Y. In addition, Dussaud teaches that preferred examples for siloxane based nonionic emulsifiers are ethylene oxide (EO), propylene oxide (PO) and butylene oxide (BO) containing emulsifiers of the ABA type with EO/PO/BO moieties attached to the terminal ends of a silicone chain or emulsifiers having polyether moieties attached to the silicone chain in a comb like arrangement ([0175]). In another preferred embodiment hydrophilic polyether moieties as well as oleophilic alkyl chains are attached to the silicone chain ([0175]).
Regarding the surfactant system of claim 1 and of claim 19, the Examiner notes that the instant specification is absent a description of “system.” Regarding nonionic compound Y, Dussaud teaches preferred nonionic surfactants to include ethylene oxide (EO), propylene oxide (PO) and butylene oxide (BO) containing more preferred C5 to C24 fatty alcohol and fatty acid based emulsifiers; alcohol based ethoxylates having EO units ([0148-0162]). As evidenced by Zillich, oxygen atoms of the polyoxyethylene (POE) chains in polyoxyethylene (20) cetyl ether (i.e., polyoxyethylenated compound Y) attracted phenolics, allowing them to penetrate deeper into the POE environment (pg. 459, col. 2, para. 2). Here the prior art teachings show that one of ordinary skill in the art would be motivated to utilize the nonionic compounds of Dussaud with the polyphenol compound(s) taught.
Regarding element (c) (i.e., solvent system), Dussaud teaches that the diluents/solvents are used to solvatize the at least one polyorganosiloxane A) ([0191]).
Regarding element (c)(i), the composition comprises water, preferably in an amount of more preferably at least 10 weight-% based on the total weight of the aqueous compositions ([0012]; Example 22 [0309]).
Regarding element (c)(ii), the aforementioned diluents/solvents include mono alcohols wherein a preferred embodiment, water/ethanol (i.e., C2-C5 mono alcohol) mixture is used in the aqueous compositions ([0191]). And, the recitation, “an amount effective to inhibit formation of a precipitate of compound X and compound Y in the composition prior to application” is a functionality of the ingredients. As such, this recitation does not add any structural value to the composition itself and thus the recitation does not hold any patentable weight. Moreover, as evidenced by Zillich, surfactants promote the solubilization of polyphenols, prevent polyphenols from precipitating in the used vehicle formulation, and assure a good migration of polyphenols into the skin (pg. 459, col. 1, para. 3).
Regarding element (d), Dussaud teaches sulfur-containing antioxidants that the hair treatment formulations may comprise ([0218]) many of which mirror those that are disclosed in Applicants’ specification (see Spec., [00122]).
Regarding element (e), it is noted that limitations that appear after the term, “optional” are not required.
Regarding the last 4 lines of claim 1, Dussaud teaches that the compositions have a pH of less than 7 (claim 11), preferably less than 6, more preferably less than 5, and preferably more than 2 ([0010]). Notably, Dussaud provides embodiments comprising tannic acid have a pH of 4.7 which is less than the pKa of tannic acid ([0247-0248]; [0300], Ex. 16).
The recitation, “wherein interaction between polyphenol compound X and (poly)glycerolated and/or polyoxyalkylenated nonionic compound Y is capable of forming a coating agent after application,” is a functionality of the ingredients. Further, this recitation does not add any structural value to the composition itself and thus the recitation does not hold any patentable weight. MPEP § 2112.01 states that if a composition is physically the same, it must have the same properties. The instant specification does not describe the precise structural features that result in the claimed properties. Thus, the claimed properties are presumed to be a direct result of the form of the composition as claimed.
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to utilize the tannins, nonionic compounds, in the aqueous compositions taught by Dussaud evidenced by Zillich with expected results. One would be motivated to do so with a high expectation of success because Dussaud throughout the reference teaches compositions for hair treatment can be formulated into a form typical for hair treatment compositions, e.g., intensive hair treatments e.g., leave-on deep conditioners, and liquid hair-setting preparations ([0247]). Dussaud suggests that the addition of certain amounts of short chained alcohols (i.e., C2-C5) improves the homogeneity of the formulations and the penetration of the formulations into the hair ([0191]). Dussaud provides formulation compositions that comprising skin protecting ingredients ([0221], [0229]) that can provide particularly benefits that extend the life of previously applied hair treatments to include hair strengthening and shaping effects as well as a conditioning effects ([0237]).
Regarding claim 2, Dussaud teaches that the particular hair care preparations can be in the form of an aerosol spray, foam, gel, and gel spray ([0247]).
Regarding claim 3, Dussaud’s teaching of fatty acid sorbitane ester based ethoxylates having 10 to 18 carbon atoms in the alkyl chain and 5 to 50 EO units ([0157]) meets the limitation of a molar mass greater than 200 g/mol.
Regarding claim 4, Dussaud teaches tannic acid as the most preferred tannin and provides a structure ([0212]).
Regarding claim 5, Dussaud teaches ethanol ([0191]).
Regarding claim 6, Dussaud teaches sulfite and bisulfite antioxidants ([0205], [0218]).
Regarding claim 7, claim 10, claim 13, (i.e., ≤ pH 6); claim 16 (i.e., ≤ pH 5.5); claim 17 (i.e., pH 4.0 -6.0); claim 18 (i.e., pH 3.0 - 5.0), as stated above, Dussaud teaches that the compositions have a pH of less than 7 (claim 11), preferably less than 6, more preferably less than 5, and preferably more than 2 ([0010]). MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art.
Regarding claim 8 and claim 9, Dussaud discloses film-forming polymers and gelling agents as auxiliaries in paragraphs [0189] and [0218] and in claim 17.
Regarding claim 11, Applicants describe “substantially free” as present in amounts not greater than 0.1% by weight (see Spec., [0031]). Dussaud does not require coloring agents in the composition ([0244]).
Regarding the claimed ranges recited in claim 12 (i.e. (a)-(e)), the MPEP 2144.05 states that a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. Regarding element (a), Dussaud teaches tannins (i.e., tannic acid) which contain at least two different phenol groups in an amount preferably from about 0.1% - 15% ([0212], [0221], see K)). Regarding element (b), nonionic surfactant is taught in an amount from about 0% - 15% ([0162]). Regarding element (c), mono-alcohols are taught as suitable organic solvents in an amount from about 0.1 to about 95 weight % ([0221], see C)). Regarding element (d), sulfur containing antioxidants are present from about 0.1 to 15% ([0189], [0218], [0221]), claim 17). Regarding element (e), Dussaud teaches that water is present in an amount of at least 20 weight % ([0012]).
Regarding claim 20, Applicants disclose the terms “cosmetic and dermatological active agents” in paragraph [00162] but do not disclose specific compounds thereof either by chemical name or in an embodiment but cite reference US 2004/0170586 for a non-exhaustive listing of such ingredients. Looking to Applicants’ cited reference, Ferrari teaches that cosmetic and dermatological active agents are, for example, emollients, moisturizers, vitamins, essential fatty acids, sunscreens, and mixtures thereof (see Ferrari [0455]). Dussaud discloses that the compositions include emollients (see component E) in paragraphs [0181], [0193], [0221], [0227], claim 17, 19). Further Dussaud teaches that the compositions require at least one polyorganosiloxane (claim 1), and as such, siloxanes are well known emollients in the art.
Response to Arguments
Applicant's arguments filed 06/16/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to Jin and Jha have been considered but are moot because the new ground of rejection does not rely on Jin and Jha applied in the prior rejection of record.
35 USC § 103 rejections
Applicants argue that the results shown in the declaration (paragraphs 6 and 7) provide evidence that the cationic and/or anionic surfactants of Dussaud have a significant adverse effect on the properties of the composition (e.g., negative or inferior coat formation properties) (see Remarks, pg. 6, last paragraph).
The Examiner notes that paragraph [0038] of the instant disclosure is cited in said paragraph number 6. of Applicants’ declaration. Paragraph [0038] is reproduced below:
"the reaction can be carried out between the two reagents, in particular that : i) the amount of polyphenol X is sufficient in the composition containing it, and ii) the compound Y is soluble, miscible or solubilized by another solvent in the medium of the composition containing it, and iii) the compound Y has a sufficient number of hydrogen bond acceptor groups to react with the phenol groups of polyphenol X and, in the medium of the composition containing it, and iv) the compound Y, in the medium of the composition containing it, does not comprise in its structure any group which does not allow the formation of hydrogen bonding with the functions of the reactive phenol groups of the polyphenol X, such as for example, one or more anionic group.
While the instant specification indicates groups that affect the hydrogen bonding interactions, the pending claims do not clarify that a person of ordinary skill in the art could not include anionic surfactants in the “system” in order for the claimed invention to function. The claims do not exclude the presence “of one or more anionic groups.”.
Specifically, regarding paragraph 7. of Applicants’ declaration, research to which Applicants refer appears to be absent. Applicant has the burden of providing and showing criticality; compared to the prior art of record in order to show that the prior art is incapable of achieving the claimed properties. In this case, there is no showing that the exclusion of charged groups results in any unexpected or improved properties. Thus, the claimed properties are presumed to be a direct result of the form of the composition as claimed in claim 1 (i.e. a compositions meeting all of the requirements of elements (a)-(e) of claim 1).
Further, evidence from Parekh (US 2021/0196609) and Khine (US 2021/0196594) which share inventors of the current application, provide specific embodiments of tannic acid and alginate (i.e., ionic surfactant) (see Parekh [0276], see Khine [0271] Example 5) which shows that an anionic group would not affect the functionality of the claimed invention. In addition, evidence from Zillich discloses that oxygen atoms of the polyoxyethylene (POE) chains in polyoxyethylene (20) cetyl ether (i.e., compound Y) attracts phenolics (pg. 459, col. 2, para. 2).
Applicants argue that there is no motivation is provided to add separate polyphenol X compound having phenol groups for reacting with compound Y in addition to the optional active agent tannins in Dussaud in a single composition. Applicants point to the attached Federal Circuit decision in which a single compound (VEGF antagonist) could not satisfy two separate elements (active agent and buffering agent) of the claims. Applicants state that newly added claim 20 distinguishes the “polyphenol” component from the active agent (see Remarks, pg. 8, para. 4 - pg. 9, para. 2).
Looking to the attached decision, it is noted that the Court found that there was at least a substantial question of noninfringement (Amgen’s aBLA for ABP 938) and Regeneron’s infringement allegations were not established. The court noted “’while extrinsic evidence can shed useful light on the relevant art, it is less significant that the intrinsic record in determining the legally operative meaning of claim language’” (see Appeal, pg. 17, last para.).
In the instant case, the claims do not exclude tannins (i.e., polyphenols) from serving in an active agent capacity and the claim language does not make clear the distinction between polyphenol compound X (instant claim 1 (a)) and the active agent. Dussaud meets the requirement of the claim by teaching cosmetic and dermatological active agents. Applicants cite Ferrari (US 2004/0170586) in paragraph [00162] of the instant specification. Ferrari teaches that cosmetic and dermatological active agents are, for example, emollients, moisturizers, vitamins, essential fatty acids, sunscreens, and mixtures thereof (see Ferrari [0455]). Dussaud discloses that the compositions include emollients (see component E) in paragraphs [0181], [0193], [0221], [0227], claim 17, 19). Dussaud teaches that the compositions require at least one polyorganosiloxane (claim 1), and as such, siloxanes are well known emollients in the art.
Applicants argue that Dussaud teaches that the low carbon alcohols are optional (Dussaud [0191] [0207]) and would not lead one of ordinary skill in the art to combine an ingredient X with a C2-C5 alcohol in an amount sufficient to inhibit the precipitate formation. Dussaud does not provide enough guidance to obtain the desired functionality of all of the ingredients when combined (see Remarks, bridging pg. 11-12).
In response, the rejections presented are 103 rejections not 102 rejections. The test for obviousness is not whether the claimed invention must be expressly suggested in any one or all of the references. Dussaud teaches ethanol in aqueous compositions and further evidence from Zillich indicates that surfactants promote the solubilization of polyphenols, prevent polyphenols from precipitating in the used vehicle formulation, and assure a good migration of polyphenols into the skin (pg. 459, col. 1, para. 3). The claimed invention would have been obvious to a person of ordinary skill in the art at the relevant time given that all the claimed elements (i.e., elements (a) through (e) of claim 1) were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP 2143(I)(A).
Double Patenting
Applicant argues that the asserted claims would not render the invention compositions obvious.
For the reasons presented, Applicants’ arguments are found unpersuasive.
Conclusion
Claims 1-13 and 16-20 are rejected; no claims are currently allowable.
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/Karen Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614