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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/30/2025 has been entered.
Formal Matters
Receipt of Applicant’s response dated 12/30/2025 is acknowledged.
Claims 1-20 are pending.
Claims 1-4 and 10 are amended.
Claims 12 and 20 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-11 and 13-19 are under consideration in the instant Office action to the extent of the elected species, i.e., the ethylenediaminedisuccinic acid salt is trisodium ethylenediamine disuccinate, the at least one UV-screening agent is butyl methoxydibenzoylmethane, octocrylene, and ethylhexylsalicylate, and the at least one nonvolatile hydrocarbon-based oil is caprylic/capric triglycerides, dicaprylyl carbonate, and diisopropyl sebacate.
REJECTIONS WITHDRAWN
Claim Rejections - 35 USC § 103
The obviousness rejections of claims 1-7, 11, and 13-19 over Kim et al in view of Bohnenblust and of claims 8-10 over Kim et al in view of Bohnenblust and further in view of Schlifkeposchalko et al and Deshayes et al set forth in the Office action dated 10/01/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
Double Patenting
The nonstatutory double patenting rejections of claims 1-6 and 13-17 over claims 1, 14, and 17-18 of U.S. Patent No. 11,865,197 B2 and of claims 1, 7-11 and 18-19 over claims 1, 8-9, 14, and 17-18 of U.S. Patent No. 11,865,197 B2 in view of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al and the provisional nonstatutory double patenting rejections of claims 1-11 and 13-19 over claims 1-6, 8, 10, and 19 of copending Application No. 17/787,526 in view of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al, of claims 1-11 and 13-19 over claims 1-4, 11-17, and 19-20 of copending Application No. 17/905,190 in view of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al, and of claims 1-11 and 13-19 over claims 1-3, 10-17, and 19 of copending Application No. 18/000,680 in view of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al set forth in the Office action dated 10/01/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF REJECTION
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-7, 11, and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (KR 20010068548 A, published 07/23/2001, cited in IDS dated 01/17/2025) in view of Bohnenblust (KR 20170131349 A, published 11/29/2017, cited in Notice of References Cited dated 04/08/2025).
Kim et al teach a cosmetic composition for skin care such as wrinkle improvement where the inclusion of tetradibutyl pentaerythrityl hydroxyhydrocinnamate (hereafter TPH; TPH is synonymous with di-t-butyl pentaerythrityl tetrahydroxycinnamate of the instant claims as evidenced by Page 5 Lines 24-26 of the instant specification) functions to preserve and stabilize the activity of retinol for a long time, protecting it from light, temperature, and oxygen (See entire document, e.g., Abstract). Kim et al teach that antioxidants including butyl hydroxytoluene (hereafter BHT) have been used in the art to stabilize retinol, however BHT suffers from disadvantages including poor stability at high temperature and poor photo-oxidative stability, and thus the composition of Kim et al uses TPH instead of BHT in order to overcome the problems of BHT (e.g., Page 2 Par. 5-10 of English translation).
The cosmetic composition of Kim et al is prepared by adding 0.001-10.0% by weight of retinol and 0.001-5.0% by weight of TPH, where weight is based on the total weight of the composition (e.g., Abstract, claims). The cosmetic composition of Kim et al may be formulated as a cream and ingredients other than retinol and TPH can be added to the formulation (e.g., Page 2 Par. 12-13 of English translation). Kim et al exemplify a cosmetic composition of their invention and a comparative example in Table 1, wherein the cosmetic composition of Kim et al comprises no BHT and comprises EDTA-2NA (a sodium salt of ethylenediaminetetraacetic acid (hereafter EDTA)) in an amount of 0.05% by weight (e.g., Table 1, Par. spanning Pages 2 and 3 of English translation).
Although Kim et al do teach that oils and chelating agents are used in order to stabilize retinol dependent on the type of emulsion (e.g., Page 2 Par. 4 of English translation), Kim et al do not teach the cosmetic composition comprising trisodium ethylenediamine disuccinate.
This deficiency is made up for in the teaching of Bohnenblust.
Bohnenblust teaches a sun protection composition as an oil in water emulsion and formulated as a gel-cream for the protection of skin from UV-A and/or UV-B radiation (See entire document, e.g., Abstract, Technical-field on Page 2 of English translation). The composition of Bohnenblust is suitable for topical application on the skin (e.g., Par. 3 of Description-of-embodiments on Page 3 of English translation). Bohnenblust found that the inclusion of two chelating agents and a surfactant in the composition results in excellent sensory and macroscopic parameters (e.g., color, color change, odor, gloss, surface properties, consistency, oily and / or aqueous precipitate, granularity) while providing a stable composition (e.g., Par. spanning Pages 6-7 of English translation). The chelating agents may be alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30), which are preferably used because they enable droplet stabilization (e.g., Page 7 Par. 2 of English translation). The composition preferably comprises 0.05% to 3% by weight, based on the total weight of the composition, of alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) (e.g., Page 8 of English translation).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Kim et al and Bohnenblust, to provide a cosmetic composition suitable for topical application to the skin and in the form of an emulsion comprising 0.001-10.0% by weight of retinol, 0.001-5.0% by weight of TPH, and 0.05-3% by weight of alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30), wherein weight is based on the total weight of the cosmetic composition, and wherein the composition is formulated as a cream.
One of ordinary skill in the art would have motivated to provide the composition of Kim et al as an emulsion in order to provide stability to the cosmetic composition when formulated as a cream. One of ordinary skill in the art would have been motivated to add 0.05% to 3% by weight, based on the total weight of the composition, chelating agents being alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) to the composition of Kim et al because 1) Kim et al teach that that chelating agents can be used in order to stabilize retinol dependent on the type of emulsion and 2) Bohnenblust teaches droplet stabilization resulting from the inclusion of alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) in the amount of 0.05% to 3% by weight based on the total weight of the composition. There would have been a reasonable expectation of success in adding alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) to the composition of Kim et al because 1) Kim et al teach that further ingredients can be added to the cosmetic composition formulated as a cream and 2) Bohnenblust teaches that alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) contribute to stabilization of the composition.
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Regarding instant claims 17-18, the modified cosmetic composition of Kim et al in view of Bohnenblust comprising no BHT and comprising EDTA-2NA (sodium salt of EDTA) in an amount of 0.05% by weight (teaching of Kim et al supra), renders obvious the composition comprising less than 0.2% by weight of BHT and/or EDTA or a salt thereof (instant claim 7) and the composition being free of BHT and/or EDTA or a salt thereof (instant claim 18).
Regarding instant claim 19, Kim et al are silent regarding whether the cosmetic composition comprises retinyl palmitate. Thus, a skilled artisan would have understood that retinyl palmitate is not present in the cosmetic composition of Kim et al. See AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (“[A] reference need not state a feature’s absence in order to disclose a negative limitation.”); Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1004–05 (Fed. Cir. 2009) (affirming finding that reference disclosed “uncoated” film where it did not describe the film as coated and did not suggest necessity of coatings).
Thus, the modified cosmetic composition of Kim et al in view of Bohnenblust renders obvious the composition of instant claims 1-7, 11, and 13-19 to the extent of the elected species.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (as cited above) in view of Bohnenblust (as cited above) as applied to claims 1-7, 11, and 13-19 above, and further in view of Schlifkeposchalko et al (US 20130142737 A1, published 06/06/2013, cited in Notice of References Cited dated 04/08/2025) and Deshayes et al (WO 2016173927 A1, published 11/03/2016, cited in Notice of References Cited dated 04/08/2025).
The modified cosmetic composition of Kim et al in view of Bohnenblust has been discussed supra.
Additionally, Bohnenblust teaches that UV-A radiation causes 1) light-skin aging, i.e., altering the orientation of the elastin and collagen fibers to induce slackness of the skin, loss of firmness of the skin, and premature aging by the appearance of wrinkles, 2) sun allergies or photoallergies (fever, itching, summer lucitis), 3) pigmentary disorders (pregnancy mask, freckles), and 4) development of skin cancer, and thus it is important to filter UV-A radiation while exposed to natural or artificial light (e.g., Background-art on Page 2 of English translation). Bohnenblust reaches that UV-B rays cause not only tanning but also burn (sunburn), allergic reactions and skin cancer (e.g., Background-art on Page 2 of English translation). Bohnenblust teaches that, for the reasons just described, it is essential to protect the skin from both UV-A radiation and UV-B radiation using a composition that is easy to apply, fast and easy to use, that also complies with the SPF (Sun Protection Factor) regulations (e.g., Background-art on Page 2 of English translation). Bohnenblust teaches that the composition advantageously comprises three or more UV filters, wherein non-limiting examples of UV filters that may be used in the composition include octocrylene and Eusolex® 9020 (trade name for butyl methoxydibenzoylmethane of the instant claims) (e.g., Pages 3-4 of English translation). Bohnenblust also teaches that the composition advantageously comprises dicaprylyl carbonate (as Cetiol® CC) (e.g., Page 7 Par. 7 of English translation).
Bohnenblust does not teach ethylhexylsalicylate, specifically, as one of the suitable UV filters that may be used in the composition nor does Bohnenblust provide a rationale for using the specific combination of octocrylene, butyl methoxydibenzoylmethane, and ethylhexylsalicylate as the UV-filters. Bohnenblust does not teach that the composition may comprise other oils, specifically caprylic/capric triglycerides or diisopropyl sebacate, nor does Bohnenblust provide a rationale for using the specific combination of caprylic/capric triglycerides, dicaprylyl carbonate, and diisopropyl sebacate in the composition. Neither Kim et al nor Bohnenblust teach glycerol as an ingredient that may be present in the composition.
These deficiencies are made up for in the teachings of Schlifkeposchalko et al and Deshayes et al.
Schlifkeposchalko et al teach topical compositions for UV radiation absorbance comprising butyl methoxydibenzoylmethane as a UV-filter substance, specifically for UV-A radiation, stabilized by benzotriazole compounds (See entire document, e.g., Title, abstract, [0004], [0008]). Schlifkeposchalko et al teach that, in particular, C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate are cosmetic oils that are suitable solvents for oil soluble UV-filter substances and are suitable for the preparation of topical compositions according to their invention (e.g., [0038]). Schlifkeposchalko et al teach that cosmetically active ingredients suitable for use in the topical composition include glycerol (e.g., [0065]).
Regarding the UV-filter substance, Schlifkeposchalko et al teach that it is advantageous to include octocrylene in addition to butyl methoxydibenzoylmethane as the UV-filter substance (e.g., [0044]). Schlifkeposchalko et al teach that other conventional UV-filter substances may be added to the topical compositions including ethylhexyl salicylate (e.g., [0048]). Schlifkeposchalko et al exemplify topical compositions formulated as gels and foams comprising butyl methoxydibenzoylmethane, octocrylene, and ethylhexyl salicylate (Tables “Gels” and “Foams” of [0105]).
Although Schlifkeposchalko et al teach the specific combination of octocrylene and butyl methoxydibenzoylmethane to be used the UV-filter substance in the topical composition and Schlifkeposchalko et al exemplify topical compositions comprising all of butyl methoxydibenzoylmethane, octocrylene, and ethylhexyl salicylate, Schlifkeposchalko et al do not provide a rationale for using the specific combination of UV-filter substance as butyl methoxydibenzoylmethane, octocrylene, and ethylhexyl salicylate.
Deshayes et al teach a topical sunscreen emulsion composition comprising at least one UV-filter substance (See entire document, e.g., Abstract). In a preferred embodiment of the topical sunscreen emulsion, the at least one UV-filter substance is the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate (e.g., Page 6 Lines 5-8).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate as the three or more UV filters in the modified cosmetic composition of Kim et al in view of Bohnenblust. One of ordinary skill in the art would have been motivated to do so in order to provide the modified cosmetic composition of Kim et al with UV-protective abilities, for which Deshayes et al teach that the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate is a preferred combination of UV-filters.
It would have also been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the combination of C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate in the modified cosmetic composition of Kim et al in view of Bohnenblust. One of ordinary skill in the art would have been motivated to do so because with the UV-filters discussed supra being present, it would be desirable that the composition further comprise cosmetic oils suitable for use with oil soluble UV-filter substances, for which Schlifkeposchalko et al teach that, in particular, C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate are cosmetic oils suitable for use with oil soluble UV-filter substances.
It would have also been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to add glycerol as a further ingredient in the modified cosmetic composition of Kim et al. One of ordinary skill in the art would have been motivated to do so because Kim et al teach that further ingredients can be added to the cosmetic composition formulated as a cream.
There would have been a reasonable expectation of success in adding the further ingredients as taught by Schlifkeposchalko et al and Deshayes et al to the modified cosmetic composition of Kim et al in view of Bohnenblust because 1) Kim et al teach that further ingredients can be added to the cosmetic composition formulated as a cream and 2) Bohnenblust teach a sun protection composition for topical application being compatible with UV-filters, specifically three or more UV-filters and specifically including octocrylene and butyl methoxydibenzoylmethane, and being compatible with oils, specifically dicaprylyl carbonate, and that inclusion of each of UV-filters and dicaprylyl carbonate is advantageous to the composition.
The modified cosmetic composition of Kim et al in view of Bohnenblust and further in view of Schlifkeposchalko et al and Deshayes et al further comprising butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, ethylhexyl salicylate, C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate, diisopropyl sebacate, and glycerol renders obvious the composition of instant claims 8-10 to the extent of the elected species.
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 1-7 and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, and 17-18 of U.S. Patent No. 11,865,197 B2 (hereafter ‘197).
Claims 1, 14, and 17-18 of ‘197 each recite a cosmetic composition comprising, or consisting of, retinol, pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate, and trisodium ethylenediamine disuccinate among other ingredients as well as each of their weight percents.
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Regarding instant claims 7 and 18-19, the claims of ‘197 are silent regarding the cosmetic composition comprising BHT, EDTA or a salt thereof, or retinyl palmitate and, thus, a skilled artisan would have understood that each of these ingredients are not required by the claims of ‘197.
Therefore, claims 1, 14, and 17-18 of ‘197 render obvious instant claims 1-7 and 13-19 to the extent of the elected species.
Instant claims 1-7 and 13-19 are directed to an invention not patentably distinct from claims 1-6 and 13-17 of commonly assigned U.S. Patent No. 11,865,197 B2. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Patent No. 11,865,197 B2, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, 14, and 17-18 of U.S. Patent No. 11,865,197 B2 (hereafter ‘197) in view of Kim et al (as cited above), Bohnenblust (as cited above), Schlifkeposchalko et al (as cited above), and Deshayes et al (as cited above).
Claims 1, 14, and 17-18 of ‘197 each recite a cosmetic composition comprising, or consisting of, retinol, pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate, and trisodium ethylenediamine disuccinate among other ingredients as well as each of their weight percents. Claims 8 and 9 of ‘197 recite the cosmetic composition comprising one or more polyols.
The claims of ‘197 do not recite the one or more polyols being glycerol, the composition being a cosmetic composition for caring for keratin materials, the composition comprising butyl methoxydibenzoylmethane, octocrylene, and ethylhexylsalicylate as UV-screening agents, or the composition comprising caprylic/capric triglycerides, dicaprylyl carbonate, and diisopropyl sebacate as nonvolatile hydrocarbon-based oils.
These deficiencies are made up for in the teachings of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al, which have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art based on the teachings of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al to use glycerol as the one or more polyols in the composition of ‘197, to use the composition of ‘197 as a cosmetic composition for caring for keratin materials, to use the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate as UV-screening agents in the composition of the claims of ‘197, and to use the combination of C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate as cosmetic oils in the composition of the claims of ‘197. One of ordinary skill in the art would have been motivated to do so, and there would have been a reasonable expectation of success, because the composition of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al comprising retinol, di-t-butyl pentaerythrityl tetrahydroxycinnamate, and trisodium ethylenediamine disuccinate is compatible with these further ingredients and Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al teach advantages for the inclusion of these further ingredients (see supra).
Therefore, claims 1, 8-9, 14, and 17-18 of ‘197 in view of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al render obvious instant claims 8-11 to the extent of the elected species.
Claims 8-11 are directed to an invention not patentably distinct from claims 1, 4, 8-9, 14, and 17-18 of commonly assigned U.S. Patent No. 11,865,197 B2. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Patent No. 11,865,197 B2, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-11 and 13-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 10, and 19 of copending Application No. 17/787,526 (hereafter ‘526) in view of Kim et al (as cited above), Bohnenblust (as cited above), Schlifkeposchalko et al (as cited above) and Deshayes et al (as cited above).
This is a provisional nonstatutory double patenting rejection.
Claim 1 of ‘526 recites a composition comprising retinol, di-t-butyl pentaerythrityl tetrahydroxycinnamate, at least one ethylenediaminedisuccinic acid salt, at least one polyol, among other ingredients. Claims 1-4 of ‘526 recite the amounts of retinol, di-t-butyl pentaerythrityl tetrahydroxycinnamate, at least one ethylenediaminedisuccinic acid salt in the composition by weight relative to the total weight of the cosmetic composition. Claim 5 of ‘526 recites the ethylenediaminedisuccinic acid salt being chosen from the potassium, sodium, ammonium, and amine salts of ethylenediaminedisuccinic acid. Claim 6 of ‘526 recites the mass ratio of di-t-butyl pentaerythrityl tetrahydroxycinnamate/ethylenediaminedisuccinic acid salt being between 1.5 and 5. Claims 8 and 10 of ‘526 recite the at least one polyol being at least glycerol. Claim 19 of ‘526 recites the composition being a cosmetic composition for caring for keratin materials.
The claims of ‘526 do not recite the at least one ethylenediaminedisuccinic acid salt being trisodium ethylenediamine disuccinate, the composition comprising butyl methoxydibenzoylmethane, octocrylene, and ethylhexylsalicylate as UV-screening agents, or the composition comprising caprylic/capric triglycerides, dicaprylyl carbonate, and diisopropyl sebacate as nonvolatile hydrocarbon-based oils.
These deficiencies are made up for in the teachings of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al, which have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art based on the teachings of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al to use trisodium ethylenediamine disuccinate as the at least one ethylenediaminedisuccinic acid salt, to use the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate as UV-screening agents, and to use the combination of C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate as cosmetic oils in the composition of the claims of ‘526. One of ordinary skill in the art would have been motivated to use trisodium ethylenediamine disuccinate as the at least one ethylenediaminedisuccinic acid salt and there would have been a reasonable expectation of success because claim 5 of ‘526 recites the ethylenediaminedisuccinic acid salt being chosen from the potassium, sodium and ammonium salts and the amine salts of ethylenediaminedisuccinic acid, for which trisodium ethylenediamine disuccinate is. One of ordinary skill in the art would have been motivated to use the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate as UV-screening agents and to use the combination of C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate as cosmetic oils and there would have been a reasonable expectation of success, because the composition of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al comprising retinol, di-t-butyl pentaerythrityl tetrahydroxycinnamate, and trisodium ethylenediamine disuccinate is compatible with these further ingredients and Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al teach advantages for the inclusion of these further ingredients (see supra).
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Regarding instant claims 7 and 18-19, the claims of ‘526 are silent regarding the cosmetic composition comprising BHT, EDTA or a salt thereof, or retinyl palmitate and, thus, a skilled artisan would have understood that each of these ingredients are not required by the claims of ‘526.
Therefore, claims 1-6, 8, 10, and 19 of ‘526 in view of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al render obvious instant claims 1-11 and 13-19 to the extent of the elected species.
Claims 1-11 and 13-19 are directed to an invention not patentably distinct from claims 1-6, 8, 10, and 19 of commonly assigned U.S. Copending Application No. 17/787,526. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Copending Application No. 17/787,526, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-11 and 13-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 11-17, and 19-24 of copending Application No. 17/905,190 (hereafter ‘190) in view of Kim et al (as cited above), Bohnenblust (as cited above), Schlifkeposchalko et al (as cited above), and Deshayes et al (as cited above).
This is a provisional nonstatutory double patenting rejection.
Claim 1 of ‘190 recites a composition comprising at least retinol, di-t-butyl pentaerythrityl tetrahydroxycinnamate, an ethylenediaminedisuccinic acid salt among other ingredients. Claims 1-4 and 19-23 of ‘190 recite the amounts of retinol, di-t-butyl pentaerythrityl tetrahydroxycinnamate, an ethylenediaminedisuccinic acid salt in the composition by weight relative to the total weight of the cosmetic composition. Claim 11 of ‘190 recites the ethylenediaminedisuccinic acid salt being chosen from the potassium, sodium, ammonium, and amine salts of ethylenediaminedisuccinic acid. Claim 12 of ‘190 recites the mass ratio of di-t-butyl pentaerythrityl tetrahydroxycinnamate/ethylenediaminedisuccinic acid salt being between 0.1 and 3. Claim 13 of ‘190 recites that the composition comprises less than 0.2% by weight of butyl hydroxytoluene (BHT) and/or ethylenediaminetetraacetic acid (EDTA) or a salt thereof. Claim 24 of ‘190 recites that the composition is free of BHT and EDTA and salts thereof. Claims 14 and 15 of ‘190 recite that the composition comprises at least one UV-screening agent and at least one non-volatile hydrocarbon-based oil, respectively. Claim 16 of ‘190 recites that the composition comprises at least glycerol. Claim 17 of ‘190 recites that the composition is a cosmetic composition for caring for keratin materials.
The claims of ‘190 do not recite the ethylenediaminedisuccinic acid salt being trisodium ethylenediamine disuccinate, the composition comprising butyl methoxydibenzoylmethane, octocrylene, and ethylhexylsalicylate specifically as the at least one UV-screening agent, or the composition comprising caprylic/capric triglycerides, dicaprylyl carbonate, and diisopropyl sebacate specifically as the at least one non-volatile hydrocarbon-based oils.
These deficiencies are made up for in the teachings of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al which have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art based on the teachings of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al to use trisodium ethylenediamine disuccinate as the at least one ethylenediaminedisuccinic acid salt, to use the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate as the at least one UV-screening agent, and to use the combination of C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate as the at least one non-volatile hydrocarbon-based oil in the composition of the claims of ‘190. One of ordinary skill in the art would have been motivated to use trisodium ethylenediamine disuccinate as the at least one ethylenediaminedisuccinic acid salt and there would have been a reasonable expectation of success because claim 11 of ‘190 recites the ethylenediaminedisuccinic acid salt being chosen from the potassium, sodium and ammonium salts and the amine salts of ethylenediaminedisuccinic acid, for which trisodium ethylenediamine disuccinate is. One of ordinary skill in the art would have been motivated to use the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate as the at least one UV-screening agent and to use the combination of C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate as the at least one non-volatile hydrocarbon-based oil and there would have been a reasonable expectation of success, because the composition of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al comprising retinol, di-t-butyl pentaerythrityl tetrahydroxycinnamate, and trisodium ethylenediamine disuccinate is compatible with these further ingredients and Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al teach advantages for the inclusion of these further ingredients (see supra).
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Regarding instant claim 19, the claims of ‘190 are silent regarding the cosmetic composition comprising retinyl palmitate and, thus, a skilled artisan would have understood that retinyl palmitate is not required by the claims of ‘190.
Therefore, claims 1-4, 11-17, and 19-24 of ‘190 in view of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al render obvious instant claims 1-11 and 13-19 to the extent of the elected species.
Claims 1-11 and 13-19 are directed to an invention not patentably distinct from claims 1-4, 11-17, and 19-24 of commonly assigned U.S. Copending Application No. 17/905,190. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Copending Application No. 17/905,190, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-11 and 13-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 10-17, 19, and 22-24 of copending Application No. 18/000,680 (hereafter ‘680) in view of Kim et al (as cited above), Bohnenblust (as cited above), Schlifkeposchalko et al (as cited above), and Deshayes et al (as cited above).
This is a provisional nonstatutory double patenting rejection.
Claim 1 of ‘680 recites a composition comprising at least retinol, an ethylenediaminedisuccinic acid salt, among other ingredients. Claim 10 of ‘680 recites that the composition also comprises di-t-butyl pentaerythrityl tetrahydroxycinnamate. Claims 1-3, 11, 19, and 24 of ‘680 recite the amounts of retinol, an ethylenediaminedisuccinic acid salt, and di-t-butyl pentaerythrityl tetrahydroxycinnamate in the composition by weight relative to the total weight of the cosmetic composition. Claims 12 and 23 of ‘680 recite the ethylenediaminedisuccinic acid salt being chosen from the potassium, sodium and ammonium salts and the amine salts of ethylenediaminedisuccinic acid. Claim 13 of ‘680 recites that the composition comprises less than 0.01% by weight of butyl hydroxytoluene (BHT) and/or ethylenediaminetetraacetic acid (EDTA) or a salt thereof. Claim 22 of ‘680 recites that the composition comprises less than 0.2% by weight of BHT and EDTA and salts thereof. Claims 14 and 15 of ‘680 recite that the composition comprises at least one UV-screening agent and at least one non-volatile hydrocarbon-based oil, respectively. Claim 16 of ‘680 recites that the composition comprises at least glycerol. Claim 17 of ‘680 recites that the composition is a cosmetic composition for caring for keratin materials.
The claims of ‘680 do not recite the ethylenediaminedisuccinic acid salt being trisodium ethylenediamine disuccinate, the composition comprising butyl methoxydibenzoylmethane, octocrylene, and ethylhexylsalicylate specifically as the at least one UV-screening agent, or the composition comprising caprylic/capric triglycerides, dicaprylyl carbonate, and diisopropyl sebacate specifically as the at least one non-volatile hydrocarbon-based oil.
These deficiencies are made up for in the teachings of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al which have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art based on the teachings of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al to use trisodium ethylenediamine disuccinate as the ethylenediaminedisuccinic acid salt, to use the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate as the at least one UV-screening agent and to use the combination of C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate as the at least one non-volatile hydrocarbon-based oil in the composition of the claims of ‘680. One of ordinary skill in the art would have been motivated to use trisodium ethylenediamine disuccinate as the ethylenediaminedisuccinic acid salt and there would have been a reasonable expectation of success because claim 12 of ‘680 recites the ethylenediaminedisuccinic acid salt being chosen from the potassium, sodium and ammonium salts and the amine salts of ethylenediaminedisuccinic acid, for which trisodium ethylenediamine disuccinate is. One of ordinary skill in the art would have been motivated to use the mixture of butyl methoxydibenzoylmethane, phenylbenzimidazol sulfonic acid, octocrylene, homosalate, and ethylhexyl salicylate as the at least one UV-screening agent and to use the combination of C12-15 alkyl benzoate, caprylic/capric triglyceride, dicaprylyl carbonate and diisopropyl sebacate as the at least one non-volatile hydrocarbon-based oil and there would have been a reasonable expectation of success, because the composition of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al comprising retinol, di-t-butyl pentaerythrityl tetrahydroxycinnamate, and trisodium ethylenediamine disuccinate is compatible with these further ingredients and Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al teach advantages for the inclusion of these further ingredients (see supra).
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Regarding instant claim 19, the claims of ‘680 are silent regarding the cosmetic composition comprising retinyl palmitate and, thus, a skilled artisan would have understood that retinyl palmitate is not required by the claims of ‘680.
Therefore, claims 1-3, 10-17, 19, and 22-24 of ‘680 in view of Kim et al, Bohnenblust, Schlifkeposchalko et al, and Deshayes et al render obvious instant claims 1-11 and 13-19 to the extent of the elected species.
Claims 1-11 and 13-19 are directed to an invention not patentably distinct from claims 1-3, 10-17, 19, and 22-24 of commonly assigned U.S. Copending Application No. 18/000,860. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Copending Application No. 18/000,860, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Applicant’s Arguments
Applicant’s arguments filed on 12/30/2025 have been considered.
Applicant argues the significantly improved retinol stability obtained with the composition of claim 1 and points to Table 2 of the instant specification and the submitted declaration under 37 CFR 1.132 and notes that said data is commensurate with the scope of the claims. Applicant argues that Bohnenblust does not recite retinol nor deal specifically with stability of active compound or retinol as a means of preserving the activity of the active ingredient, that Bohnenblust does not suggest the use of the two chelating agents separately with the required other components for stabilizing all type of emulsion or all type of cream, or that Bohnenblust does not suggest the use of two chelating agents for improving the stability of active compounds such as retinol which are not stable in the sense of maintaining the activity of the active ingredient notably for a long time, protecting it from light, temperature, and oxygen, whereas Bohnenblust discloses only a macroscopic stability. Applicant argues that it is not reasonable to select in the composition of Bohnenblust only the two recited chelating agents and to add them in the composition of Kim since Kim does not disclose a composition with retinol comprising UV filter, an emulsion stabilizing and viscosity modifying agent such as acrylate or acrylamide polymer as recited in Bohnenblust and that it is not reasonable to select in the composition of Bohnenblust only the two recited chelating agents and to add them in the cream composition of Kim since Bohnenblust does not suggest to use specifically the two chelating agents for improving the stability of all type of cream.
The above arguments regarding the unexpected results of significantly improved retinol stability have been fully considered by the Examiner but are not found persuasive because, firstly, regarding the data shown in Table 2 of the instant specification, inventive composition I1 exhibits the same retinol stability as CC4 which is a composition outside of the invention, i.e. in the absence of trisodium ethylenediamine disuccinate or, more generally, in the absence of any ethylenediaminedisuccinic acid salt. Secondly, neither the data shown in the specification nor the declaration contain a comparison of an inventive composition to at least one composition comprising the ingredients recited in claim 1 in amounts outside of the ranges recited in claim 1 showing the criticality of said amounts. The above arguments regarding the individual teaching of Bohnenblust have been fully considered by the Examiner but are not found persuasive because the rejection under 35 USC 103 is based on the combined teachings of Kim et al and Bohnenblust and not the individual teaching of Bohnenblust. Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The above arguments regarding differing motivations in the prior art and the instant application have been fully considered by the Examiner but are not found persuasive because the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). As can be seen in the new grounds of rejection under 35 USC 103 above, the basis of the rejection is that it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Kim et al and Bohnenblust, to provide a cosmetic composition suitable for topical application to the skin and in the form of an emulsion comprising 0.001-10.0% by weight of retinol, 0.001-5.0% by weight of TPH, and 0.05-3% by weight of alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30), wherein weight is based on the total weight of the cosmetic composition, and wherein the composition is formulated as a cream and that one of ordinary skill in the art would have motivated to provide the composition of Kim et al as an emulsion in order to provide stability to the cosmetic composition when formulated as a cream and would have been motivated to add 0.05% to 3% by weight, based on the total weight of the composition, chelating agents being alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) to the composition of Kim et al because 1) Kim et al teach that that chelating agents can be used in order to stabilize retinol dependent on the type of emulsion and 2) Bohnenblust teaches droplet stabilization resulting from the inclusion of alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) in the amount of 0.05% to 3% by weight based on the total weight of the composition. The basis of the rejection is not that it would have been obvious to use the two chelating agents of Bohnenblust separately as argued by Applicant. Applicant is reminded that the art needs to provide “a motivation” and not the same motivation as Applicant or necessarily recognize the same problem/solution as Applicant. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co. v. Teleflex lnc., 550 U.S. 398,419 (2007). Instead, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420.
Applicant requests that all of the double patenting rejections be held in abeyance pending identification of patentable subject matter in the present application and, at that time, a terminal disclaimer will be filed if warranted.
A request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Applicant is reminded that a complete response to a nonstatutory double patenting (NSDP) 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.
Conclusion
No claims are allowable.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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