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 .
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 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.
DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/20/2025 was filed after the mailing date of the non-final rejection on 08/20/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of claims
The amendment filed on 11/20/2025 is acknowledged. Claim 2 has been canceled and claims 11 and 12 have been withdrawn. Claims 1, 3-10, 13, and 14 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 11/20/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 102(a)(1) rejections of claims 1, 3-5, 8, 10, and 13 over Spooner-Hart et al. (US 2008/0234386 A1) and of claims 1, 3-5, 8, 10, 13, and 14 over Nakajima et al. (US 6,348,200 B1) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following. The rejections are modified based on the amendments.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-10, 13, and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nakajima et al. (US 6,348,200 B1).
Nakajima et al. teach a moisturizing essence (watery and thus sprayable) to be applied to skin (the claimed keratin material) in example 4 comprising
0.3% by weight of polyoxyethylene isocetyl ether (20 EO) (isoceteth-20, the claimed Y, MW 285.6 g/mol, the instant claims 1 and 3),
0.02% by weight of tannic acid (the claimed X in the instant claims 1 and 4),
urea (a moisturizer and a dermatological active in the instant claims 13 and14),
6.40% by weight of ethanol (the instant claim 5 and the claimed effective amount to inhibit formation of a precipitate of X and Y in the composition prior to application to a keratin material according to the instant specification paragraph 118, and thus, inhibiting formation of a precipitate of X and Y prior to application onto any material whether that material having a color cosmetic composition previously applied onto or not, the new limitation in component (3) in the instant claims 1), and
water as a carrier (the claimed non-toxic physiological acceptable medium in the instant claim 1). No colorant is recited (the instant claim 10). With the same tannic acid and the same isoceteth-20 in the same ethanol, the same tannic acid and the same isoceteth-20 would have the same property of forming a coating agent after application to the keratin material (the instant claim 1).
With the couple acids being acidic, tannic acid being acidic and 5% by weight of ethanol in water having pH<7, the composition would have pH<7 (the instant claim 8).
Nakajima et al. also teach the cosmetic compositions comprising trimethylsiloxy silicic acid surface-treated silicic acid anhydride (silicic acid anhydride being silica, the claimed silica silylated in the instant claim 6) (the paragraph bridges column 23 and 24) and ascorbic acid (the instant claims 7 and 9) (column 16, line 40).
Nakajima et al. do not specify the same weight percentage of tannic acid (the claimed X) in example 4 (0.02% vs about 0.5-30% by weight in the instant claim 1)
This deficiency is cured by Nakajima et al.’s teaching of 0.01-1% by weight of oxygen scavengers or antioxidants of the component (F) including tannic acid (column 16, line 35 and 43-48) and the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in example 4 and column 16, line 35 and 43-48 in Nakajima et al. to adjust the amount of tannic acid in example 4 to be 0.01-1% by weight. Incorporating 0.01-1% by weight of oxygen scavengers or antioxidants of the component (F) such as tannic acid in compositions taught by Nakajima et al. was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for adjusting the amount of tannic acid in example 4 flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose. The claimed range of tannic acid is about 0.5-30% by weight and the range of tannic acid taught in the prior art is 0.01-1% by weight and therefor, overlaps with the claimed range.
Nakajima et al. do not specify the same weight percentage of isoceteth-20 (the claimed Y) in example 4 (0.3% vs about 0.5-30% by weight in the instant claim 1).
This deficiency is cured by Nakajima et al.’s teaching of 0.1-5% by weight of nonionic surfactants including polyoxyethylene alkyl ethers (such as isoceteth-20) (column 22, line 19-20 and the paragraph bridges column 22 and 23) and the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in example 4 and column 22, line 19-20 and the paragraph bridges column 22 and 23 in Nakajima et al. to adjust the amount of isoceteth-20 in example 4 to be 0.1-5% by weight. Incorporating 0.1-5% by weight of nonionic surfactants such as isoceteth-20 in compositions taught by Nakajima et al. was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for adjusting the amount of isoceteth-20 in example 4 flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose. The claimed range of isoceteth-20 is about 0.5-30% by weight and the range of about 0.5-30% taught in the prior art is 0.1-5% by weight and therefor, overlaps with the claimed range.
Nakajima et al. do not specify the same weight percentage of ethanol (6.5% vs about 10-65% by weight in the instant claim 1).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where 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 the same properties.
In the instant case, the claimed range of C2-5 monoalcohol solvent is about 10-65% by weight and the range of ethanol solvent taught in the prior art is 6.4% by weight, i.e., both as solvents while about 5-75% by weight of solvent is disclosed as suitable in the instant specification paragraph 118; thus, the criticality of the now claimed about 10-65% over the 6.5% taught by Nakajima et al. is not established.
Response to Applicants’ arguments:
Applicant’s arguments are addressed in the modified rejection above.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 3-10, 13, and 14 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-42of copending Application No. 18/256,765. Although the patent and instant claims are not identical, they are not patentably distinct from each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Applicants’ arguments:
Applicants argue that the product claims are restricted.
However, this argument is not deemed persuasive. The rejection is over the product used or made in the process claims since the limitations of a process of using or making a product contain limitations of the product. Also, there is no withdrawn claims yet (election is not made in the copending application 18/256,765). Furthermore, withdrawn claims are still pending claims and are not exempted from provisional nonstatutory obviousness-type double patenting rejection. See MPEP 804.I.B.1(c).
New ground of rejections necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejections.
Claims 1, 3-5, 8, 10, and 13 are rejected under 335 U.S.C. 103(a) as being unpatentable over Spooner-Hart et al. (US 2008/0234386 A1).
Spooner-Hart et al. teach a spray composition in example 19 comprising
melaleuca cajeputi extract (a preservative in the instant claim 13),
1.0% by weight of (the claimed about 0.5-30% by weight in the instant claim 1) polyoxyethylene sorbitan emulsifier (the claimed Y, molecular weight (MW) of polysorbate 20 of 1227 g/mol, the claimed Y the instant claims 1 and 3)
1.0% by weight of (the claimed about 0.5-30% by weight in the instant claim 1) tannic acid (the claimed X in the instant claims 1 and 4),
5% by weight of ethyl alcohol solvent (the instant claim 5 and the claimed effective amount to inhibit formation of a precipitate of X and Y in the composition prior to application to a keratin material according to the instant specification paragraph 118, and thus, inhibiting formation of a precipitate of X and Y prior to application onto any material whether that material having a color cosmetic composition previously applied onto or not, the new limitation in component (3) in the instant claims 1), and
water as a carrier (the claimed non-toxic physiological acceptable medium in the instant claim 1).
No colorant is recited (the instant claim 10).
With the same tannic acid and the same polyoxyethylene sorbitan in the same ethanol, the same tannic acid and the same polyoxyethylene sorbitan would have the same property of forming a coating agent after application to the keratin material (the instant claim 1).
With an essential oil extracted from M. cajuputi leaves having a pH of 4.46, tannic acid being acidic and 5% by weight of ethanol in water having pH<7, the composition would have pH<7 (the instant claim 8).
Although Spooner-Hart et al. do not teach that the composition can be used in the manner instantly claimed, [apply to keratin material]; however, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Spooner-Hart et al. do not specify the same weight percentage of ethanol (5% vs about 10-65% by weight in the instant claim 1).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where 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 the same properties.
In the instant case, the claimed range of C2-5 monoalcohol solvent is about 10-65% by weight and the range of ethanol solvent taught in the prior art is 5% by weight, i.e., both as solvents while about 5-75% by weight of solvent is disclosed as suitable in the instant specification paragraph 118; thus, the criticality of the now claimed about 10-65% over the 5% taught by Spooner-Hart et al. is not established.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 11/20/2025, have been fully considered but they are moot in view of new ground of rejections.
Conclusion
No claims are 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 extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614