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 .
The amendment filed 19 August 2025 has been received, entered and considered. The following information has been made of record in the instant amendment:
1. Claims 2, 7 and 13 have been canceled.
2. No new Claims have been added.
3. Claims 1, 3, 8, and 12 have been amended.
4. Remarks drawn to rejections under objection to specification, 35 USC 112(b), 102, 103 and double patenting.
The following objection(s)/rejection(s) has/have been overcome:
5. The objection to the specification filed 02/18/2022, for some of the sub-headings being enclosed within parentheses has been withdrawn in view of applicant filing an amendment to the specification indicating the page and line numbers where the amendment is done.
6. The rejection of Claim 12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph has been overcome by amendment. The rejection of claim 7 has been rendered moot by cancelation.
7. The rejection of Claim(s) 1-14 under 35 U.S.C. 102(a)(2) as being anticipated by Brun et al (WO 2014/195265 A1; cited in IDS filed 02/18/2022) in view of the amendments and applicant’s remarks. Amended claim 1 is drawn to a composition comprising an oil phase comprising at least one oil and an aqueous phase comprising at least one crosslinked or non-crosslinked AMPS homopolymer, xanthan gum and water and the composition does not have a surfactant. Brun does not disclose a formulation which has AMPS homopolymer and xanthan gum as in claim 1. The Table at page 47 teaches an O/W emulsion which has xanthan gum and a surfactant but there is no AMPS homopolymer. The Table at page 52 teaches an O/W emulsion which has AMPS homopolymer and surfactant but no xanthan gum.
8. The rejection of Claim(s) 1-12 and 14 are under 35 U.S.C. 102(a)(2) as being anticipated by Lu et al (US 10,045,917) has been withdrawn in view of the amendment. Lu teaches that its composition may also contain anionic surfactants (col. 16, lines 15-20). Amended claim 1 excludes surfactant.
9. The rejection of Claim 13 under 35 U.S.C. 103 as being unpatentable over Lu et al (US 10,045,917) in view of Brun et al (WO 2014/195265 A1; cited in IDS filed 02/18/2022) has been rendered moot by cancelation.
10. The rejection of Claims 1, 3-6, 8-12 and 14 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 10-21, 23-24 of U.S. Patent No. 6,630,131 (‘131) in view of Brun et al (WO 2014/195265 A1; cited in IDS filed 02/18/2022) has been withdrawn in view of the amendments. The rejection of claims 2, 7 and 13 has been rendered moot by cancelation.
Claims 1, 3-6, 8-12 and 14-15 are pending in the case. Claim 15 has been withdrawn as being drawn to a non-elected invention. Claims 1, 3-6, 8-12 and 14 are under prosecution in this Action.
The following rejections are necessitated by Applicant's amendment filed 19 August 2025 wherein the limitations in pending claims 1, 3, 8, and 12 have been amended. Support for the amendments is seen at paragraphs 0001, 0005, 0011, 0180, 0203 of the published application US 20220362131 A1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-6, 8-9 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chevalier et al (EP 1203789 A1; Machine English Translation, pages 1-16; newly cited necessitated by amendment).
Chevalier teaches a composition comprising oil and water phases. The composition, in addition to oil and water, has poly2-acrylamido-2-methylpropane sulfonic acid (AMPS) homopolymer, and xanthan gum (paras 0019, 0034, 0057; composition as in claim 1; limitation of claims 4 and 10). There is no surfactant in the composition (as in claim 1). The composition of Chevalier should have two distinct phases and should be capable of transforming into a visually single phase when being mixed as in claim 1. Since the composition has the claimed components, it should have the property recited in claim 3. The amount of oil in the composition is 10% (as in claim 5). The amount of AMPS homopolymer can be 0.01-10% (paras 0020, 0057; as in claim 6). The amount of Xanthan gum can be 0.001-8% (paras 0020, 0057; as in claim 8). The composition at para 0057 teaches that water is q.s. 100%, meaning that amount of water added is sufficient to make it to 100%. The rest of the ingredients total up to 23.75%. Therefore, the amount of water is 76.25% (as in claim 9). The composition of Chevalier is a cosmetic composition (paras 0001 and 0054; as in claim 14).
Therefore, Chevalier anticipates claims 1, 3-6, 8-9 and 14.
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 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.
Claim(s) 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chevalier et al (EP 1203789 A1; Machine English Translation, pages 1-16; newly cited necessitated by amendment) in view of Lu et al (US 10,045,917; cited in IDS filed 02/18/2022; of record and newly cited in this rejection necessitated by amendment) and further in view of Castil et al (CN 101380289 A; Machine English Translation, pages 1-16; newly cited necessitated by amendment).
The teachings of Chevalier are set forth above. Chevalier does not exemplify a composition further comprising at least one polysaccharide derived from plants as in claim 11. However, Chevalier teaches that the polysaccharide component in its composition can be one which is of plant origin like gum arabic, karaya gum, tragacanth gum and ghatti gum (para 0019; carbohydrate component as in claim 11). Therefore, it would be obvious to one of ordinary skill in the art to include a plant derived carbohydrate in the composition.
Chevalier does not expressly teach the limitations of claims 10 and 12.
Lu et al, drawn to cosmetic compositions, teaches the use of crosslinked or non-cross-linked copolymers of 2-acrylamido-2-methylpropane sulfonic acid as a component in its compositions which is similar to the claimed composition (col. 11, line 55 through col. 12, line 8; as in claim 10). This teaching renders obvious the inclusion of copolymers of 2-acrylamido-2-methylpropane sulfonic acid as an additional component in the claimed composition.
Castil et al, drawn to cosmetic compositions, teaches the use of a lysate of Bifidobacterium species. It is useful for preventing dead skin cells, especially drying epidermis, and other related disorders (Abstract; page 2, paras 2-4 under sub-title: Contents of the Invention; limitation of claim 12). This renders obvious the inclusion of a lysate of Bifidobacterium species as a component in the composition of Chevalier.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, the components as in claims 10-12 are known in the art to be used in cosmetic compositions.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art would be motivated to include the components in claims 10-12 (also taught by the prior art) since Lu teaches that the copolymers of AMPS are advantageously present in the continuous phase of the composition (col. 12, lines 21-26). This would ensure that the polysaccharide is present when the composition is shaken before use. The lysate of Bifido bacterium species has the added benefit of preventing dead skin cells, especially drying epidermis, and other related disorders (Castil). Hence, the composition, in addition reducing or erasing wrinkles and/or fine lines as taught by Chevalier, will also provide the additional benefits as taught by Castil and the advantage taught by Lu.
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).
The USPTO Internet website contains Terminal Disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-6, 8-12 and 14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 10-21, 23-24 of U.S. Patent No. 6,630,131 (‘131) in view of Lu et al (US 10,045,917; cited in IDS filed 02/18/2022; of record and newly cited in this rejection necessitated by amendment) and further in view of Castil et al (CN 101380289 A; Machine English Translation, pages 1-16; newly cited necessitated by amendment). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Claim 1 is drawn to a two-phase composition comprising an oil phase and an aqueous phase comprising at least one crosslinked or non-crosslinked acrylamido-2-methylpropanesulfonic acid homopolymer (AMPS), at least one polysaccharide and water. Dependent claims 3-6, 8-12 and 14 recite limitations drawn to the composition, capable of transforming into a single phase, capable of transforming into a two-phase composition within 3 days, type of oils and its percentage, percentage of the AMPS, percentages of the polysaccharides and water, crosslinked or non-crosslinked copolymer comprising at least one AMPS monomer, the polysaccharide being derived from plants, inclusion of a lysate of the genus Bifidobacterium, and wherein the composition is a cosmetic composition.
Claim 1 of ‘131 is drawn to a composition comprising a polysaccharide, at least one crosslinked poly(acrylamido-2-methylpropanesulfonic acid) polymer which is at least 90% neutralized. Dependent claims 10-26 recite limitations drawn to polysaccharide being xanthan gum, its percentage, structure of the AMPS unit, percentage of AMPS, an aqueous medium, additional active ingredient, the composition in the form of O/W emulsion.
The claims of ‘131 differ from the instant claims in that the instant claims do not include a mixed silicate as in claim 1 of ‘131 and does not include a lysate of Bifidobacetirum genus.
Lu teaches an oil-in-water composition (Abstract; col. 3, line 23). According to an embodiment of the invention the composition comprises poly2-acrylamido-2-methylpropanesulfonic acid which is optionally crosslinked, and a polysaccharide which can be xanthan gum (col. 10, lines 23-26 and line 45). The composition can include another component which can be non-silicate component (col. 25, lines 25-30).
The teaching of Castil regarding the lysate of Bifidobacetrium genus is set forth above.
It would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to arrive at the claimed composition in view of the combined teachings of ‘131 and the secondary references.
In the instant case ‘131 teaches a composition comprising the ingredients applicant claims. Although the claims of '131 include a mixed silicate as a component in its composition, and does not include a lysate of Bifidobacetrium genus, one of ordinary skill in the art would readily recognize that the composition taught by '131 could be modified to arrive at the claimed composition as an alternative cosmetic composition with a reasonable expectation of success in view of the combined teachings of ‘131 and the secondary references. The use of known members of classes of ingredients in compositions taught in the prior art is not seen to render the instantly claimed composition unobvious over the art. Once the composition has been shown to be old, the burden is on the applicant to present reason or authority for believing that exclusion of a component taught in the prior art would alter the nature of the product, especially in view of the teachings of the secondary reference.
Conclusion
Elected claims 1, 3-6, 8-12 and 14 (Group I) are rejected.
Group II Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Claims 2, 7, and 13 have been canceled.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693