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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/02/2025 has been entered.
Status of Claims
Receipt of Remarks/Amendments filed on 10/28/2025 is acknowledged. Claims 1, 11, 13, and 21-23 are amended and claims 2-3, 9-10, and 14-20 are canceled. Claims 1, 4-8, 11-13, and 21-23 are currently pending and are examined on the merits herein.
Priority
The instant application filed 08/05/2022, is a 371 filing of PCT/IB2021/05118, filed 02/12/2021, which claims foreign priority to IT 102020000002827, filed 02/13/2020.
Withdrawn Objections/Rejections
Claim 11 was rejected under 35 U.S.C. 112(a) for written description and total enablement. Applicant’s amendments to claim 11 have overcome the rejections and the rejections are withdrawn.
Claims 21-22 were rejected under 35 U.S.C. 112(a) for scope of enablement. Applicant’s amendments to the claim have overcome the rejection and the rejection is withdrawn.
Claim Interpretation
Claims 1, 13, and 21-23 recite a composition “for forming a product that is absorbable by the skin” or a “product absorbable by the skin”. The recitation of “for forming […]” is an example of intended use. To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Thus, the compositions of claims 1, 13, and 21-22 must be capable of providing a product which is “absorbable by the skin”. The term “absorbable” is not explicitly defined in the claims nor the instant specification. Paragraph [0080] is the only recitation of the word “absorb” throughout the entire specification and simply defines a process of leaving “the product to absorb completely, if necessary”. The recitation of “if necessary” in paragraph [080] means the product is not required to be completely absorbed. Thus, the instant specification does not provide a specific definition as to what constitutes a product which is “absorbable by the skin”. Therefore, under its broadest reasonable interpretation, a product that is absorbable by the skin reads on a product that is absorbable by the skin to any degree or which comprises any component which is absorbable by the skin to any degree.
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 person shall be entitled to a patent unless –
(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.
1. Claims 1, 11, 13, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sandri, G., et al. (WO 2019/021,325 A1, 01/31/2019, on record), hereinafter Sandri, as evidence by Sanford Chemicals (2026). Can Hyaluronic Acid be Absorbed into the Skin, Hyaluronic Acid Supplier, (PTO-892), hereinafter Sanford Chemicals.
Sandri teaches a process for preparing nanofibers and nanofiber membranes as well as the nanofibers and nanofiber membranes obtainable by such process (abstract).
Regarding claim 1: The nanofibers of Sandri are prepared from a water solution comprising at least one glycosaminoglycan in an amount of 0.01 to 5% and a polymer chosen from polysaccharides in an amount of 1 to 30%; and then electrospinning said water solution (p. 8, lines 6-17; claim 1). The water solution of Sandri therefore reads on a composition to be electrospun. Specifically, the glycosaminoglycan may be hyaluronic acid (p. 8, lines 19-20; claim 12) and the polysaccharide may be pullulan (p. 8-9, lines 31-3; claim 2). Sandri teaches specific examples comprising hyaluronic sodium salt (low molecular weight) and pullulan (p. 13, compositions 3 and 5). The hyaluronic acid reads on the instantly claimed first compound to be electrospun and the pullulan reads on the electrospinning promotor. While these compounds are not explicitly defined as such by Sandri, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Regarding the recitation of “for forming a product that is absorbable by the skin”, the composition of Sandri comprises low molecular weight hyaluronic acid which is highly absorbable by the skin, as evidenced by Sanford Chemicals. Thus, the electrospinning composition of Sandri results in nanofibers comprising highly absorbable hyaluronic acid which would be absorbed by the skin to some extent, thereby reading on the broadest reasonable interpretation of a product that is absorbable by the skin.
Regarding claim 11: The composition as defined in instant claim 1 comprises a “first compound to be electrospun” and an “electrospinning promotor”. As discussed above, Sandri teaches compositions comprising hyaluronic acid and pullulan, which read on the first compound to be electrospun and the electrospinning promotor as defined in claim 11. Given that the composition as a whole is defined by claim 1 with the open term “comprising”, there is nothing to limit the composition as a whole from comprising additional elements or polymers to be electrospun, which could arbitrarily be defined as a “second compound to be electrospun”. Thus, the compositions taught by Sandri, regardless of additional components, read on the instantly claimed composition.
Regarding claim 13: Sandri teaches a process for the preparation of nanofibers comprising a step of providing the above solution and a step of electrospinning the solution. Since the components must necessarily be mixed to form a solution that is electrospun, the process of Sandri reads on the instantly claimed method of preparation. Regarding the recitation of “for forming a product that is absorbable by the skin”, the composition of Sandri comprises low molecular weight hyaluronic acid which is highly absorbable by the skin, as evidenced by Sanford Chemicals. Thus, the electrospinning composition of Sandri results in nanofibers comprising highly absorbable hyaluronic acid which would be absorbed by the skin to some extent, thereby reading on the broadest reasonable interpretation of a product that is absorbable by the skin.
Regarding claim 23: Sandri teaches electrospinning the water solution above, which reads on the composition according to claim 1, onto a collector of an electrospinning apparatus to form nanofibers (p. 8, lines 6-17; claim 1). The resulting nanofibers therefore read on a product comprising fibers obtained by electrospinning the composition according to claim 1. The recitation of “cosmetic” is simply a recitation of intended use. Statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). The compositions of Sandri may be applied to skin (p. 11, lines 20-25), meaning the product is capable of being applied in a cosmetic capacity. As such, the recitation of “cosmetic” results in no structural difference between the prior art and the instant invention and does not serve to limit the claim. Regarding the recitation of “absorbable by the skin”, the nanofibers of Sandri comprise low molecular weight hyaluronic acid which is highly absorbable by the skin, as evidenced by Sanford Chemicals.
2. Claims 1, 4-6, 11, 13, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peng, Z., et al. (CN 110664619 A, 01/10/2020, google patent translation used; PTO-892), hereinafter Peng, as evidence by Sanford Chemicals (2026). Can Hyaluronic Acid be Absorbed into the Skin, Hyaluronic Acid Supplier, (PTO-892), hereinafter Sanford Chemicals.
Peng discloses a collagen nano instant mast and preparation methods thereof. The mask comprises a fabric layer and a nanofiber layer, wherein the nanofiber layer is formed on the fabric substrate by an electrostatic spinning method (abstract).
Regarding claim 1: Peng teaches spinning solutions for preparing the facial mask comprising sodium hyaluronate and pullulan among other ingredients (p. 6-7, Examples 1-3 and 8). Sodium hyaluronate is the salt form of hyaluronic acid, as known by one of ordinary skill in the art, thereby reading on the hyaluronic acid as instantly claimed. The spinning solutions of Peng read on a composition to be electrospun. The sodium hyaluronate/hyaluronic acid reads on the instantly claimed first compound to be electrospun and the pullulan reads on the electrospinning promotor. While these compounds are not explicitly defined as such by Peng, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Regarding the recitation of “for forming a product that is absorbable by the skin”, Peng uses sodium hyaluronate with an average molecular weight of 20,000-60,000 (claim 2; Examples) which is considered low molecular weight HA that is highly absorbable by the skin, as evidenced by Sanford Chemicals. Thus, the electrospinning composition of Peng results in nanofibers comprising highly absorbable hyaluronic acid which would be absorbed by the skin to some extent, thereby reading on the broadest reasonable interpretation of a product that is absorbable by the skin.
Regarding claim 4: Example 2 of Peng teaches a spinning solution comprising 3 wt.% sodium hyaluronate and 1 wt.% pullulan, which results in a ratio of the first compound to be electrospun to the electrospinning promotor (i.e., HA:pullulan) of 3:1. Such a ratio falls within the instantly claimed range (i.e., 4:1 to 1:7). Examples 3 and 8 of Peng teach spinning solutions with equal amounts of sodium hyaluronate and pullulan resulting in a ratio of 1:1 (i.e., HA:pullulan), which also falls within the instantly claimed range.
Regarding claim 5: The spinning solutions of Peng comprise yeast recombinant collagen as an active ingredient (abstract; Examples), which reads on a peptide.
Regarding claim 6: The spinning solutions of Peng further comprise polyethylene glycol with a high and a low degree of polymerization (claim 1; Examples). Polyethylene glycol with a high degree of polymerization can increase the tenacity of the fiber, etc., which makes spinning relatively easy and can make spinning uniform; polyethylene glycol with a low degree of polymerization can further prevent knots during electrospinning. The agglomeration phenomenon promotes the formation of uniform spinning (p. 4, para. 17). Thus, the PEGs of Peng serve as stabilizers to “stabilize the fiber subsequently obtained”, as instantly claimed.
Regarding claim 11: The composition as defined in instant claim 1 comprises a “first compound to be electrospun” and an “electrospinning promotor”. As discussed above, Peng teaches compositions comprising sodium hyaluronate and pullulan, which read on the first compound to be electrospun and the electrospinning promotor as defined in claim 11. Given that the composition as a whole is defined by claim 1 with the open term “comprising”, there is nothing to limit the composition as a whole from comprising additional elements or polymers to be electrospun, which could arbitrarily be defined as a “second compound to be electrospun”. Thus, the compositions taught by Peng, regardless of additional components, read on the instantly claimed composition.
Regarding claim 13: Peng teaches preparing the spinning solution by adding the various components to water and stirring at a constant temperature (i.e., mixing) (Example 1).
Regarding claim 23: The spinning solution is electrospun onto a non-woven fabric substrate to form a facial mask (Example 1). The facial mask can be used for improving skin wrinkles, skin elasticity, and more (abstract), which clearly reads on a cosmetic product.
3. Claims 1, 4-6, 11, 13, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peng, X., et al. (CN 109568173 B, filed 01/21/2019, google patent translation used; PTO-892), hereinafter Peng2, as evidence by Sanford Chemicals (2026). Can Hyaluronic Acid be Absorbed into the Skin, Hyaluronic Acid Supplier, (PTO-892), hereinafter Sanford Chemicals.
Peng2 discloses a collagen nano instant mask using hyaluronic acid as a skeleton and a preparation method thereof, wherein the nanofiber layer is formed on the fabric substrate by an electrostatic spinning method (abstract).
Regarding claim 1: Example 10 teaches preparing the mask from a spinning solution comprising sodium hyaluronate and pullulanase polysaccharide (i.e., pullulan) among other ingredients (p. 6, Example 10). Sodium hyaluronate is the salt form of hyaluronic acid, as known by one of ordinary skill in the art, and is used to form a mask comprising a hyaluronic acid skeleton (abstract). Pullulanase polysaccharide (pullulan) may be used in place of a part of sodium hyaluronate in order to reduce the cost of the mask (p. 4, para. 7). Thus, Peng2 teaches spinning solutions that read on a composition to be electrospun. The sodium hyaluronate/hyaluronic acid reads on the instantly claimed first compound to be electrospun and the pullulan reads on the electrospinning promotor. While these compounds are not explicitly defined as such by Peng2, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Regarding the recitation of “for forming a product that is absorbable by the skin”, Peng2 uses sodium hyaluronate with an average molecular weight of 20,000-60,000 (claim 1; Examples) which is considered low molecular weight HA that is highly absorbable by the skin, as evidenced by Sanford Chemicals. Thus, the electrospinning composition of Peng2 results in nanofibers comprising highly absorbable hyaluronic acid which would be absorbed by the skin to some extent, thereby reading on the broadest reasonable interpretation of a product that is absorbable by the skin.
Regarding claim 4: Example 10 of Peng2 teaches a solution comprising 3 wt.% sodium hyaluronate and 10 wt.% pullulan, which results in a ratio of the first compound to be electrospun to the electrospinning promotor (i.e., HA:pullulan) of 1:3.33, which falls within the instantly claimed range (i.e., 4:1 to 1:7).
Regarding claim 5: The solutions of Peng2 comprise hydrolyzed collagen as an active ingredient (abstract; Examples), which reads on a peptide.
Regarding claim 6: The spinning solutions of Peng2 further comprise polyethylene glycol with a high and a low degree of polymerization (claim 1; Examples). The polyethylene glycol with high polymerization degree can increase the tenacity of the fiber, so that the spinning becomes relatively easy and the spinning is uniform; the polyethylene glycol with low polymerization degree can further prevent the agglomeration phenomenon in the electrostatic spinning process and promote the formation of uniform spinning (p. 4, para. 2). Thus, the PEGs of Peng2 serve as stabilizers to “stabilize the fiber subsequently obtained”, as instantly claimed.
Regarding claim 11: The composition as defined in instant claim 1 comprises a “first compound to be electrospun” and an “electrospinning promotor”. As discussed above, Peng2 teaches compositions comprising sodium hyaluronate and pullulan, which read on the first compound to be electrospun and the electrospinning promotor as defined in claim 11. Given that the composition as a whole is defined by claim 1 with the open term “comprising”, there is nothing to limit the composition as a whole from comprising additional elements or polymers to be electrospun, which could arbitrarily be defined as a “second compound to be electrospun”. Thus, the compositions taught by Peng2, regardless of additional components, read on the instantly claimed composition.
Regarding claim 13: Peng2 teaches preparing the spinning solution by adding the various components to water and stirring at a constant temperature (i.e., mixing) (Example 1).
Regarding claim 23: The spinning solution is electrospun onto a non-woven fabric substrate to form a facial mask (abstract; claim 1). The facial mask, which comprises various cosmetic actives, clearly reads on a cosmetic product.
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.
Claims 1, 4-5, 11-13, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Sandri, G., et al. (WO 2019/021,325 A1, 01/31/2019, on record), hereinafter Sandri as evidenced by Siddiq, K.S., et al. (2018). A review on biosynthesis of silver nanoparticles and their biocidal properties. J Nanobiotechnology. 16(1):14, (on record), hereinafter Siddiq.
The teachings of Sandri are discussed above, as are the rejections of claims 1, 11, 13, and 23.
Sandri differs from the instantly claimed invention in that Sandri does not explicitly teach the proportion between the first compound to be electrospun and the electrospinning promoter within 4:1 and 1:7 as recited in claim 4, more specifically, a promoter:hyaluronic acid weight ratio of 1:2 as recited in claim 12. Additionally, Sandri does not explicitly teach wherein the composition comprises an active ingredient selected from the group consisting of a peptide, amino acid, antioxidant and vitamin as recited in claim 5.
As discussed above, Sandri generally teaches wherein the glycosaminoglycan (i.e., hyaluronic acid) is in an amount from 0.01% to 5.00% and the polymer selected from polysaccharides (i.e., pullulan) is in amount of 1% to 30% (p. 8, lines 6-17; claim 1). Composition 3 teaches 0.5% w/w of hyaluronic sodium salt and 10% of pullulan. While Sandri does not teach a ratio of hyaluronic acid (i.e., the first compound to be electrospun) to pullulan (i.e., the electrospinning promoter) which falls within the instantly claimed range, it is routine and well within the abilities of an ordinary artisan to optimize the ratio of hyaluronic acid to pullulan in order to optimize the fiber formation and bioactive properties of the final product. As such, the instantly claimed ratios of claim 4 and 12, would have been prima facie obvious, prior to the effective filing date of the instantly claimed invention, given that one of ordinary skill in the art would have arrived at the instantly claimed ratios through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, Sandri teaches that the nanofibers and membranes may be further loaded with antimicrobial agents by mixing the polymer solution with an active ingredient and by proceeding with the above preparation method. Examples of antimicrobial agents include silver nanoparticles and silver nitrate (p. 12, lines 3-12; claim 6). Silver nanoparticles are specifically used in medicine as antibacterial, antifungal and antioxidants as evidenced by Siddiqi (abstract). It would have been prima facie obvious to one of ordinary skill in the art to incorporate an antimicrobial agent, such as silver nanoparticles, into the nanofibers of Sandri, since such active agents are known and routine in the art as taught by Sandri. One of ordinary skill in the art would have been motivated to add silver nanoparticles to the hyaluronic acid/pullulan solution to be electrospun since silver nanoparticles have both antimicrobial and antioxidant properties that would improve the ability of the membranes to heal and protect damaged skin. The silver nanoparticles read on an active ingredient selected from an antioxidant, as evidenced by Siddiqi and instantly claimed.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since all of these modifications are reasonably disclosed within Sandri as relating to a single invention.
Claims 1, 6-8, 11, 13, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Sandri, G., et al. (WO 2019/021,325 A1, 01/31/2019, on record), hereinafter Sandri, in view of Xiao, Q., et al., (CN 107675359 A, Translation used, 02/09/2018, on record), hereinafter Xiao.
The teachings of Sandri are discussed above, as are the rejections of claims 1, 11, 13, and 23.
The teachings of Sandri differ from that of the instantly claimed invention in that Sandri does not explicitly disclose the composition as further comprising a stabilizer, which is a cross-linkable polymer, specifically alginate as recited in claims 6-8.
Xiao teaches a pullulan/sodium alginate composite fiber film and preparation method thereof (abstract). The preparation method comprises mixing pullulan and sodium alginate to give an electrostatic spinning solution for electrostatic spinning to obtain the composite nano fiber film which is non-toxic and degradable. Adding sodium alginate improves the viscosity of the forming solution, increasing injection stability of wire in the spinning process. The obtained composite fiber film is without organic solvent residue, green and safe in food and pharmaceutical field (abstract). The sodium alginate is added to the pullulan polysaccharide water solution to increase the viscosity of the forming solution and thereby increase injection stability of wire in the spinning process, so as to form good fiber film (invention content, para. 18). Further, it is possible to add a proper amount of calcium chloride with calcium ion to crosslink the sodium alginate and form a water insoluble calcium sodium alginate component (invention content, para. 18).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to add the sodium alginate of Xiao to the hyaluronic acid/pullulan composition of Sandri since sodium alginate is a known and routine stabilizer in the art as taught by Xiao. One of ordinary skill in the art could have added the alginate of Xiao to the water solution of Sandri according to known methods in the art to predictably yield the instant invention. One of ordinary skill in the art would have been specifically motivated to add sodium alginate to the composition to be electrospun of Sandri since it is taught to improve the viscosity and injection stability of pullulan solutions for electrospinning. One of ordinary skill in the art would have had a reasonable expectation of success in adding sodium alginate to the hyaluronic acid/pullulan solution of Sandri since both Xiao and Sandri teach aqueous solutions for electrospinning that comprise pullulan. One of ordinary skill in the art would reasonably be able to add the alginate in an amount that provides the desired viscosity and benefit to fiber formation. Additionally, alginate is a cross-linkable polymer as evidenced by CN’359. As such, the combination of Sandri and Xiao reads on claims 6-8.
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Vicini, S., et al., (2018), Alginate and alginate/hyaluronic acid membranes generated by electrospinning in wet conditions: Relationship between solution viscosity and spinnability. J. Appl. Polym. Sci., 46390 (on record) in view of Chen, G. et al. (2016). Preparation, characterization, and application of PEO/HA core shell nanofibers based on electric field induced phase separation during electrospinning, Polymer, Volume 83, Pages 12-19 (PTO-892), hereinafter Chen, as evidence by Sanford Chemicals (2026). Can Hyaluronic Acid be Absorbed into the Skin, Hyaluronic Acid Supplier, (PTO-892), hereinafter Sanford Chemicals.
Vicini teaches electrospinning in wet conditions to create alginate/hyaluronic acid membranes starting from blends of biopolymers with PEO (polyethylene oxide, i.e., poly(oxyethylene)) in water solutions (p. 2, paragraph 4).
Regarding claims 21 and 22: Vicini prepares several ternary systems by mixing the polymers sodium alginate, poly(ethylene oxide), and hyaluronic acid (SA/PEO/HA) (p. 2-3, Solutions Preparation; Table 1). The systems are then used in methods of electrospinning (p. 3, Membranes Preparation by Electrospinning), therefore reading on a composition to be electrospun as instantly claimed. The hyaluronic acid reads on the instantly claimed first compound to be electrospun while the alginate and PEO read on the electrospinning promotor. While these compounds are not explicitly defined as such by Vicini, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Vicini teaches ternary systems with ratios of SA/PEO/HMW-HA (high molecular weight HA) of 33:33:33, which comprise a 1:1 ratio of alginate and PEO as instantly claimed.
The entirety of Vicini explores optimizing viscosity and spinnability of electrospinning solutions by adjusting parameters such as HA molecular weight, total polymer concentration, and polymer weight ratio (Table 1; Title; Results and Discussion). Vicini teaches when using HMW-HA, the viscosity of the system was extremely high. Even when an electric field was applied at high voltage (i.e., 30 kV), it was impossible to overcome the surface tension and the elastic behavior of the solution, and therefore this system was discarded (p. 7, paragraph 1).
Vicini teaches that the biocompatible membranes generated from electrospinning had a tissue-like appearance. Therefore, they can be studied and their application will be experimented in tissue engineering, wound healing and release of drugs (p. 7, final paragraph).
The teachings of Vicini differ from that of the instant invention in that Vicini does not teach wherein the weight ratio of HA:promoter is 3:1 as defined in claims 21 and 22.
Chen teaches fabricating PEO/HA core-shell nanofibers via homogeneous electrospinning (abstract; p. 13, para. 3, Intro). Poly(ethylene oxide) (PEO) is already a well-known synthetic polymer in tissue engineering due to its biodegradable and biocompatible properties, however, it does not possess intrinsic bioactivity. Many researchers focus on the mixed electrospinning with other bioactivity biopolymers, such as chitosan, silk, sodium alginate, and hyaluronic acid (p. 13, Intro, para. 4). Electrospinning solutions of Chen where prepared with hyaluronic acid (HA) having a molecular weight of 8700 g/mol and PEO (p. 13, Materials and Electrospun solutions). Solutions with PEO/HA ratios of 3/1, 1/1, and 1/3 were prepared and parameters such as conductivity, surface tension, and viscosity were recorded for each solution (Table). The fibers prepared with all three PEO/HA ratios had relatively smooth surfaces and uniform diameters. As the HA content increases, the viscosity of the spinning solution decreases while its conductivity increases. The distributions of the fiber diameter exhibit a decreasing trend (as HA content increases) (p. 14, Results and Discussion, para. 1).
It would have been prima facie obvious to substitute the high molecular weight hyaluronic acid of Vicini with the low molecular weight hyaluronic acid of Chen and to increase its amount as compared to the other components (i.e., alginate and PEO), since such modifications are taught by Chen to decrease the viscosity of the spinning solution. The solutions of Vicini comprising HMW-HA suffer from the problem of having too high a viscosity. Chen teaches that electrospinning solutions comprising low molecular weight HA at a ratio of 3:1 (HA:promoter) result in decreased solution viscosity while also maintaining the ability to form smooth, uniform fibers. Thus, one of ordinary skill in the art would have arrived at the solution of using a low molecular weight HA (i.e., 8700 Da) at a ratio of 3:1 (HA:promoter), as taught by Chen, in the solution of Vicini. One of ordinary skill in the art could have applied the known teachings of Chen to the known electrospinning solution of Vicini, which is ready for improvement, to predictably yield an electrospinning solution with a lower viscosity able to produce smooth and uniform nanofibers.
Additionally, one of ordinary skill in the art would have arrived at the instantly claimed HA:promoter ratio, starting from the ratios taught by Vicini and as informed by the ratios of Chen, through no more than routine experimentation. It would have been well within the abilities of an ordinary artisan to optimize the HA:promoter ratio in the electospinning solution depending on the desired viscosity, spinnability, and conductivity of the solution. As such, one of ordinary skill in the art would have arrived at the instantly claimed HA:promoter ratio of 3:1 through no more than routine experimentation and the teachings of Vicini and Chen. Regarding the ratio of the alginate and PEO as the promotor, Vicini teaches that a ratio of 1:1 is known and routine in the art. Thus, it would have been prima facie obvious to one of ordinary skill in the art to use a 1:1 ratio of alginate and PEO for the promotor and to optimize the ratio of HA:promoter from there. Overall, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since both Vicini and Chen teach adjusting the electrospinning parameters of solutions comprising hyaluronic acid and PEO. Chen discusses that it is known to mix PEO with sodium alginate as well.
Regarding the recitation of “for forming a product that is absorbable by the skin”, the combined composition of Vicini and Chen comprises low molecular weight hyaluronic acid which is highly absorbable by the skin, as evidenced by Sanford Chemicals. Thus, the electrospinning composition of Sandri results in nanofibers comprising highly absorbable hyaluronic acid which would be absorbed by the skin to some extent, thereby reading on the broadest reasonable interpretation of a product that is absorbable by the skin.
Regarding claim 23, Vicini and Chen teach their fibers to be biocompatible and useful for tissue engineering. The recitation of “cosmetic” is simply a recitation of intended use. Statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). Given that the combined composition is biocompatible and can be applied to skin, the recitation of “cosmetic” results in no structural difference between the prior art and the instant invention and does not serve to limit the claim.
Response to Arguments
Applicant's arguments, with respect to the claim rejections under 35 USC 102 and 103, filed 10/28/2025, have been fully considered but they are not persuasive:
(1) Against Sandri, Applicant argues that the cosmetic product of the instant invention is “absorbable by the skin” as discloses in paragraph [0080] of the instant specification. Applicant further cites the examples throughout the specification which utilize biocompatible and water-soluble materials to result in electrospun nanofibers that are inherently skin absorbable (p. 5-6 of Remarks). Applicant then argues that in contrast, Sandri discloses electrospun membranes designed to be water-insoluble and act as scaffolds for wound dressings rather than products absorbed by the skin. Applicant asserts that there is no disclosure or suggestion that that the electrospun product is skin absorbable. Additionally, the composition to be electrospun of Sandri comprises at least 20% acetic acid and 0.10-5% of a polycarboxylic acid as essential components, neither of which are suitable for preparing cosmetic products as alleged by Applicant. Sandri discusses problems caused by water-soluble GAGs like HA, and teaches methods of decreasing their solubility in aqueous solution, which Applicant characterizes as a teaching away from the instantly claimed electrospun product which is water soluble and skin absorbable (p. 6 of Remarks).
In response to Applicant’s arguments, it is discussed in the claim interpretation section above that the phrase “absorbable by the skin” is broad. The term “absorbable” is not explicitly defined in the claims nor the instant specification. Paragraph [0080] is the only recitation of the word “absorb” throughout the entire specification and simply defines a process of leaving “the product to absorb completely, if necessary”. The recitation of “if necessary” in paragraph [080] means the product is not required to be completely absorbed. Thus, the instant specification does not provide a specific definition as to what constitutes a product which is “absorbable by the skin”. Therefore, under its broadest reasonable interpretation, a product that is absorbable by the skin reads on a product that is absorbable by the skin to any degree or which comprises any component which is absorbable by the skin to any degree.
Regarding Applicant’s logic that the examples of the instant specification utilize biocompatible and water-soluble materials which inherently result in skin absorbable electrospun nanofibers, Sandri utilizes the same biocompatible and water-soluble materials as instantly claimed and taught in the specification examples (i.e., water, hyaluronic acid, and pullulan). Thus, the electrospun nanofibers of Sandri must also be inherently skin absorbable by Applicant’s own logic.
Regarding the argument that the electrospun membranes of Sandri are designed to be water-insoluble scaffolds rather than products absorbed by the skin, the recitation of “for forming a product that is absorbable by the skin” is a recitation of intended use. To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The water solution of Sandri which reads on the instantly claimed “composition to be electrospun”, is capable of forming a product which is absorbable by the skin, regardless of the fact that Sandri teaches it for forming insoluble membranes. Additionally, the compositions of Sandri specifically comprise highly absorbable low molecular weight HA, meaning the resulting electrospun nanofibers will also comprise LMW-HA which is absorbable by the skin regardless of the Sandri’s final product and use.
Regarding Applicant’s assertion that acetic acid and polycarboxylic acid are not suitable for preparing cosmetic products, the compositions of Sandri may be applied to skin in a therapeutic setting (p. 11, lines 20-25). Thus, Applicant has provided no specific evidence that the compositions and products of Sandri would be unsuitable for preparing cosmetic products.
Regarding Applicant’s argument that Sandri teaches away from the instant invention, water-solubility does not equate to skin absorption. Moreover, the claims do not define a composition for forming a product that is water-soluble. Additionally, the electrospun product (i.e., nanofibers) of Sandri comprise low molecular weight hyaluronic acid which is known to penetrate past the stratum corneum as evidenced by Stanford Chemicals.
(2) Against Vicini, Applicant argues that Vicini fails to disclose the “skin absorbable” feature discusses above. Applicant also asserts that Vicini teaches fibers applied in tissue engineering while being silent on the application of hyaluronic acid-based electrospun fibers in cosmetics.
In response to Applicant’s above argument, it is discussed above that the “skin absorbable” feature is very broad. The electrospun product (i.e., nanofibers) of Vicini and Chen comprise low molecular weight hyaluronic acid which is known to penetrate past the stratum corneum as evidenced by Stanford Chemicals. Thus, the combined composition to Vicini and Chen is capable of forming a product which comprises low molecular weight HA which is absorbable by the skin. Regarding the “cosmetic” use of such a product, the recitation of “cosmetic” is simply a recitation of intended use. Statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). Given that the references above teach biocompatible fibers that can be applied to skin, the recitation of “cosmetic” results in no structural difference between the prior art and the instant invention and does not serve to limit the claim.
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, 4-8, and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 17/798,028 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims define every element of the instantly claimed invention.
Copending claim 1 of ‘028 recites a composition to be electrospun for forming a product that is absorbable by the skin, comprising a first compound to be electrospun, an electrospinning promoter and at least one active ingredient, wherein said first compound to be electrospun comprises hyaluronic acid; said electrospinning promoter comprises pullulan (copending claim 1). This anticipates every component of instant claim 1.
Copending claim 7 recites a method to prepare a composition to be electrospun, comprising a step of mixing a first compound to be electrospun with an electrospinning promoter, and a step of adding at least one active ingredient, wherein the first compound to be electrospun comprises hyaluronic acid, the electrospinning promoter comprises pullulan and a mixture thereof (copending claim 7). This anticipates every component of instant claim 13.
Claim 23 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No 17/798,014 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims define every element of the instantly claimed invention.
Copending claim 1 of ‘014 recites a patch product, comprising a membrane substrate absorbable by the skin and at least one active ingredient, wherein said membrane substrate is formed by at least one electrospun fiber comprising hyaluronic acid and an electrospinning promoter, wherein the electrospinning promoter comprises at least one of pullulan and alginate. Such a membrane reads on the cosmetic product of instant claim 23, wherein the fibers could have been obtained by electrospinning a composition according to claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2. Claims 1, 4-8, and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of copending Application No. 18/844,848 (reference application). The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims.
Copending claim 1 of ‘848 recites a composition to be electrospun, comprising a first compound to be electrospun selected from xanthan gum, pectins, chitin, chitosan, dextran, carrageenan, guar gum, agar, cellulose derivatives, albumin, starch, gelatin, collagen, elastin, beta-glucans, glycosaminoglycans, mucopolysaccharides, water-soluble polysaccharides and their derivatives; and an electrospinning promoter selected from alginate, pullulan and a mixture thereof (copending claim 1). Similarly, copending claim 8 recites a method of preparing such a composition. Copending claims ‘848 differ from those of the instant application in that ‘848 does not explicitly recite wherein the first compound to be electrospun is hyaluronic acid and the electrospinning promoter is pullulan as recited in instant claim 1. It would have been obvious to select hyaluronic acid as the first compound to be electrospun and pullulan as the electrospinning promoter in the composition and method of copending claims ‘848 since it entails choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2143.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4-8, 11-12, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/798,002 (reference application). Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims.
Copending claim 1 of ‘002 recites a method to produce a packaged cosmetic product comprising a step of electrospinning a composition, in which an electrospun substrate absorbable by the skin is formed. The composition comprises a first compound to be electrospun and a spinning promotor, wherein the first compound to be electrospun comprises hyaluronic acid, and the spinning promoter comprises pullulan or a blend of alginate and poly(oxyethylene). As such, the method of ‘002 makes obvious a composition which reads on the composition of instant claim 1 as well as a product obtained by electrospinning said composition, which reads on claim 23.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4-8, 11-13, and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/798,008 (reference application) in view of Chen. Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Chen.
Copending claim 1 recites an electrospinning method, comprising: providing a composition to be electrospun to form a membrane substrate able to be absorbed by the skin; wherein said composition to be electrospun comprises a first compound to be electrospun, an electrospinning promoter and an active ingredient, wherein said first compound to be electrospun comprises hyaluronic acid; said electrospinning promoter is at least one selected from pullulan, a mixture of alginate and poly(oxyethylene) having a weight proportion equal to 1:1, and a mixture thereof. As such, ‘002 defines a composition which reads on the composition of instant claim 1 as well as providing said composition, which necessarily comprises mixing as defined in claim 13, and a product obtained by electrospinning said composition, which reads on claim 23.
The ‘008 claims differ from the instant invention in that ‘008 does not explicitly recite a ratio of the compound to be electrospun to the promotor (i.e., PEO + alginate) of 3:1 nor the molecular weight of the hyaluronic acid, as recited in instant claims 21 and 22.
Chen teaches fabricating PEO/HA core-shell nanofibers via homogeneous electrospinning (abstract; p. 13, para. 3, Intro). Electrospun solutions of Chen where prepared with hyaluronic acid (HA) with a molecular weight of 8700 g/mol and PEO (p. 13, Materials and Electrospun solutions). Solutions with PEO/HA ratios of 3/1, 1/1, and 1/3 were prepared and parameters such as conductivity, surface tension, and viscosity were recorded for each solution (Table). The fibers prepared with all three PEO/HA ratios had relatively smooth surfaces and uniform diameters. As the HA content increases, the viscosity of the spinning solution decreases while its conductivity increases. The distributions of the fiber diameter exhibit a decreasing trend (as HA content increases) (p. 14, Results and Discussion, para. 1).
It would have been prima facie obvious to use a hyaluronic acid with a molecular weight of 8700 g/mol (i.e., Da) since such a MW is known and routine in the art as taught be Chen. It would have been further obvious to adjust the HA:promoter weight ratio of ‘008 to increase the amount of low molecular weight HA as compared to the promotor to 3:1, since such an optimization is taught by Chen. Generally, the combination of prior art elements according to known methods to yield predictably results is considered prima facie obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4-8, 11-13, and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/798,010 (reference application) in view of Chen. Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Chen.
Copending claims ‘010 recite a method to electrospin a composition, comprising: providing a composition to be electrospun to form a membrane substrate able to be absorbed by the skin; wherein said composition to be electrospun comprises a first compound to be electrospun and a spinning promoter, wherein said first compound to be electrospun comprises hyaluronic acid, and said spinning promoter comprises pullulan, a mixture of alginate and poly(oxyethylene) having a weight proportion equal to 1:1, or a mixture thereof. As such, ‘010 defines a composition which reads on the composition of instant claim 1 as well as providing said composition, which necessarily comprises mixing as defined in claim 13, and a product obtained by electrospinning said composition, which reads on claim 23.
The ‘010 claims differ from the instant invention in that ‘008 does not explicitly recite a ratio of the compound to be electrospun to the promotor of 3:1 nor the molecular weight of the hyaluronic acid, as recited in instant claims 21 and 22.
Chen teaches fabricating PEO/HA core-shell nanofibers via homogeneous electrospinning (abstract; p. 13, para. 3, Intro). Electrospun solutions of Chen where prepared with hyaluronic acid (HA) with a molecular weight of 8700 g/mol and PEO (p. 13, Materials and Electrospun solutions). Solutions with PEO/HA ratios of 3/1, 1/1, and 1/3 were prepared and parameters such as conductivity, surface tension, and viscosity were recorded for each solution (Table). The fibers prepared with all three PEO/HA ratios had relatively smooth surfaces and uniform diameters. As the HA content increases, the viscosity of the spinning solution decreases while its conductivity increases. The distributions of the fiber diameter exhibit a decreasing trend (as HA content increases) (p. 14, Results and Discussion, para. 1).
It would have been prima facie obvious to use a hyaluronic acid with a molecular weight of 8700 g/mol (i.e., Da) since such a MW is known and routine in the art as taught be Chen. It would have been further obvious to adjust the HA:promoter weight ratio of ‘010 to increase the amount of low molecular weight HA as compared to the promotor to 3:1, since such an optimization is taught by Chen. Generally, the combination of prior art elements according to known methods to yield predictably results is considered prima facie obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 23 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/798,019 (reference application) in view of Chen. Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Chen.
Copending claim 1 of ‘019 recites a cosmetic patch product comprising a membrane substrate suitable to be absorbed by the skin, said membrane substrate being made up of at least one electrospun fiber comprising hyaluronic acid and a spinning promoter, wherein the spinning promoter comprises pullulan or a mixture of alginate and polyethylene oxide (PEO) having a weight ratio of 1:1.
The ‘008 claims differ from the instant invention in that ‘008 does not explicitly recite a ratio of the compound to be electrospun to the promotor of 3:1 nor the molecular weight of the hyaluronic acid, as recited in instant claims 21, which is necessary for forming the product of claim 23.
Chen teaches fabricating PEO/HA core-shell nanofibers via homogeneous electrospinning (abstract; p. 13, para. 3, Intro). Electrospun solutions of Chen where prepared with hyaluronic acid (HA) with a molecular weight of 8700 g/mol and PEO (p. 13, Materials and Electrospun solutions). Solutions with PEO/HA ratios of 3/1, 1/1, and 1/3 were prepared and parameters such as conductivity, surface tension, and viscosity were recorded for each solution (Table). The fibers prepared with all three PEO/HA ratios had relatively smooth surfaces and uniform diameters. As the HA content increases, the viscosity of the spinning solution decreases while its conductivity increases. The distributions of the fiber diameter exhibit a decreasing trend (as HA content increases) (p. 14, Results and Discussion, para. 1).
It would have been prima facie obvious to use a hyaluronic acid with a molecular weight of 8700 g/mol (i.e., Da) since such a MW is known and routine in the art as taught be Chen. It would have been further obvious to adjust the HA:promoter weight ratio of ‘019 to increase the amount of low molecular weight HA as compared to the promotor to 3:1, since such an optimization is taught by Chen. Generally, the combination of prior art elements according to known methods to yield predictably results is considered prima facie obvious. Thus the copending claims in combination with Chen teach a cosmetic product obtained by electrospinning the composition according to claim 21, as recited in claim 23.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616