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 .
Formal Matters
Receipt of Applicant’s response, dated 12/15/2025, is acknowledged.
Claims 1-24 are pending.
Claims 1-4, 6-8, 11, and 19-20 are amended.
Claims 21-24 are new.
Claim 18 remains withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-17 and 19-24 are under consideration in the instant Office action to the extent of the elected species, i.e., the ethylenediaminedisuccinic acid salt is ethylenediamine disuccinate, the at least one compound chosen from ascorbic acid or an analog thereof and/or tocopherol or a derivative thereof is ascorbic acid and alpha-tocopherol, the at least one UV-screening agent is ethylhexyl salicylate, and the at least one non-volatile hydrocarbon-based oil is caprylic/capric triglyceride.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objection to the abstract set forth in the Office action dated 08/26/2025 is hereby withdrawn in light of Applicant’s amendments to the abstract.
Claim Objections
The objections to claims 1, 7-8, 11, and 19-20 set forth in the Office action dated 08/26/2025 is hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 1-17 and 19-20 over Kim et al in view of Bohnenblust and Jentzsch et al set forth in the Office action dated 08/26/2025 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the claims.
REJECTION MAINTAINED
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7, 9, 11-17, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-7, 10-17, 19-20 of copending Application No. 18/000,680 (hereafter ‘680).
Claim 1 of ‘680 recites a composition comprising at least 0.02% to 5.0% by weight of retinol; 0.01% to 2.5% by weight of an ethylenediaminedisuccinic acid salt; and 0.05% to 0.50% by weight of at least one compound chosen from ascorbic acid or an analog thereof; and 0.05% to 1% by weight of tocopherol or a derivative thereof. Claims 2-4 and 19-20 of ‘680 recite the composition comprising from 0.05% to 3.0% by weight of retinol, from 0.05% to 1.5% by weight of ethylenediaminedisuccinic acid salt, and from 0.1% to 0.5% by weight of ascorbic acid or an analog thereof. Claims 6-7 of ‘680 recite the ascorbic acid or analogs thereof are chosen from ascorbic acid, ascorbyl palmitate and magnesium ascorbyl phosphate. Claims 10-11 of ‘680 recite the composition comprising di-t-butyl pentaerythrityl tetrahydroxycinnamate from 0.01% to 2.5% by weight. Claim 12 of ‘680 recites the ethylenediaminedisuccinic acid salt is chosen from the potassium, sodium and ammonium salts and the amine salts of ethylenediaminedisuccinic acid. Claim 13 of ‘680 recites the composition comprises less than 0.2% by weight of butyl hydroxytoluene (BHT) and/or ethylenediaminetetraacetic acid (EDTA) or a salt thereof. Claims 14-16 of ‘680 recite the composition also comprising at least one UV-screening agent, at least one non-volatile hydrocarbon-based oil, and at least glycerol. Claim 17 of ‘680 recites the composition being a cosmetic keratin material caring composition.
Claims 1-4, 6-7, 10-17, 19-20 of ‘680 render obvious instant claims 1-5, 7, 9, 11-17, and 19. The composition of the claims of ‘680 comprising di-t-butyl pentaerythrityl tetrahydroxycinnamate from 0.01% to 2.5% by weight and ethylenediaminedisuccinic acid salt from 0.05% to 1.5% by weight necessarily has a mass ratio of di-t-butyl pentaerythrityl tetrahydroxycinnamate to ethylenediaminedisuccinic acid salt that overlaps the range of mass ratio of di-t-butyl pentaerythrityl tetrahydroxycinnamate to ethylenediaminedisuccinic acid salt of instant claim 12 of from 0.1 to 3.
NEW GROUNDS OF OBJECTION/REJECTION
Specification
The abstract of the disclosure is objected to because “at least one compound chosen from ascorbic acid or an analog thereof, or tocopherol or a derivative thereof” should be amended to “at least one compound chosen from ascorbic acid or an analog thereof and tocopherol or a derivative thereof” in order to be consistent with the suggested amendment to claim 1 (See Claim Objections below).
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, 7, and 21-23 are objected to because of the following:
Spanning the last two lines of claim 1, “at least one compound chosen from 0.025% to 1% by weight of ascorbic acid or an analog thereof, or from 0.01% to 1% by weight of tocopherol or a derivative thereof” should be amended to “at least one compound chosen from 0.025% to 1% by weight of ascorbic acid or an analog thereof and 0.01% to 1% by weight of tocopherol or a derivative thereof” in order to improve the recitation of the Markush group (i.e., delete the comma and replace ‘or’ with ‘and’);
In line 2 of claim 7, “anolog” should be amended to “analog” in order to remedy the typographical error;
In line 1 of each of claims 21-23, a comma should be added after “claim 1” in order to improve the consistency of the claim language; and
Spanning the last two lines of each of claims 21-22, “at least one compound chosen from [amount] of ascorbic acid or an analog thereof, and/or or from [amount] of tocopherol or a derivative thereof” should be amended to “at least one compound chosen from [amount] of ascorbic acid or an analog thereof and [amount] of tocopherol or a derivative thereof” in order to improve the recitation of the Markush group (i.e., delete the comma and replace ‘and/or or’ with ‘and’).
Claim 20 is objected to because the Examiner believes that “from 0.7% to 0.3% by weight of ethylenediaminedisuccinic acid salt, relative to the total weight of the composition, and from 0.5% to 0.5% by weight of tocopherol or a derivative thereof, relative to the total weight of the composition” contains the typographical errors “0.7%” and “0.5%” and it is intended for the claim to recite “from 0.07% to 0.3% by weight of ethylenediaminedisuccinic acid salt, relative to the total weight of the composition, and from 0.05% to 0.5% by weight of tocopherol or a derivative thereof, relative to the total weight of the composition” (See Page 6 Line 29-Page 7 Line 2 and Page 10 Lines 7-10 of the specification).
Appropriate correction is required.
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 1-17 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (KR 20010068548 A, published 07/23/2001, cited in Notice of References Cited dated 08/26/2025) in view of Bohnenblust (KR 20170131349 A, published 11/29/2017, cited in Notice of References Cited dated 08/26/2025) and Jentzsch et al (WO 2005/070373, published 08/04/2005, cited in IDS dated 05/29/2024, English translation cited in Notice of References Cited dated 08/26/2025).
Note: In the interest of compact prosecution, claim 20 is being interpreted by the Examiner in the instant rejection as “The composition as claimed in claim 2, comprising from 0.1% to 0.3% by weight of di-t-butyl pentaerythrityl tetrahydroxycinnamate, relative to the total weight of the composition; from 0.07% to 0.3% by weight of ethylenediaminedisuccinic acid salt, relative to the total weight of the composition, and from 0.05% to 0.5% by weight of tocopherol or a derivative thereof, relative to the total weight of the composition” supported by the range of ethylenediaminedisuccinic acid salt being “more preferentially from 0.07% to 0.3% by weight” disclosed on Page 6 Line 29-Page 7 Line 2 of the specification and the range of tocopherol or a derivative thereof being “preferably from 0.05% to 0.5% by weight” disclosed on Page 10 Lines 7-10 of the specification.
Kim et al teach effects to the skin of short-term and long-term exposure to sunlight as including sunburn, photoaging of the skin, and skin cancer (See entire document, e.g., Page 1 Third to last Par. of English translation). Kim et al teach that UV rays are UV-A and UV-B, wherein UV-B rays reach only the epidermal layer of the skin but have an energy of about 1,000 times stronger than UV-A rays and mainly cause the destruction of skin tissues such as skin erythema and sunburn (e.g., Page 1 Third to last Par. of English translation). Kim et al teach that as people age, their antioxidant system is destroyed by active oxygen species generated by UV rays, leading to skin aging phenomena such as wrinkle formation, thickening of the skin, blemishes, freckles, sagging of the skin, loss of skin elasticity, roughness of the skin, dryness of the skin, and skin stains (e.g., Page 1 Second to last Par. of English translation). Therefore, an antioxidant system that protects the skin from ultraviolet rays, inhibits the generation of reactive oxygen species, and removes the generated active oxygen is desired (e.g., Page 1 Second to last Par. of English translation).
Kim et al teach that retinoids are used in antioxidant systems, wherein retinol is an endogenous compound that exists naturally in the human body, is essential for differentiation and growth of epithelial tissue, has a very high safety compared to retinoids such as retinoic acid, and can be said to be suitable as a raw material for skin improvement cosmetics (e.g., Page 2 Par. 1 of English translation). Although retinol is effective in improving and preventing skin wrinkles, it needs to be stabilized from the effects of light, heat, temperature, moisture, and time (e.g., Page 2 Par. 2 of English translation). 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 (e.g., Page 2 Par. 5-7 of English translation). Kim et al uses tetradibutyl pentaerythrityl hydroxyhydrocinnamate (hereafter TPH; TPH is synonymous with di-t-butyl pentaerythrityl tetrahydroxycinnamate of the instant claims as evidenced by Page 6 Lines 4-5 of the instant specification) instead of BHT in order to overcome the aforementioned problems of BHT (e.g., Page 2 Par. 8-10 of English translation).
Kim et al teach a cosmetic composition for wrinkle improvement caused by ultraviolet ray damage to the skin wherein the inclusion of TPH 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, Page 1 Third to last Par. 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).
Kim et al provide exemplified compositions wherein glycerin (i.e., glycerol) is present in each example in an amount of 4.0% by weight, EDTA-2NA (i.e., a sodium salt of ethylenediaminetetraacetic acid (hereafter EDTA)) is present in only one example in an amount of 0.05% by weight, and BHT is not present in any example (e.g., Examples spanning Pages 2 and 3 and on Page 4 of English translation).
Ingredients other than retinol and TPH can be added to the formulation (e.g., Page 2 Par. 13 of English translation). Oils, water-soluble antioxidants, or chelating agents are used in order to stabilize retinol or derivatives thereof depending on the type of emulsion (e.g., Page 2 Par. 4 of English translation). The formulation of the cosmetic composition of Kim et al is not particularly limited, and can be formulated as a cream (e.g., Page 2 Par. 12 of English translation).
Kim et al do not teach the cosmetic composition comprising ascorbic acid as a suitable water-soluble antioxidant, trisodium ethylenediamine disuccinate as a suitable chelating agent, or caprylic/capric triglyceride as a suitable oil. Although Kim et al teach detrimental effects of UV rays, including specifically of UVB rays, Kim et al do not teach the cosmetic composition comprising UV filers, or more specifically UV-B filters.
These deficiencies are made up for in the teaching of Bohnenblust and Jentzsch et al.
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 chelating agents which are alpha-cyclodextrin and trisodium ethylenediamine disuccinate (e.g., Page 8 of English translation). The surfactant results in a uniform distribution of the product in use and prevents “cottage-cheese-effect” in long-term storage, and the surfactant is not limited but may be lauryl glucoside (e.g., Page 7 Par. 3-4 of English translation).
Jentzsch et al teach retinoid-containing preparations for use in cosmetics that are stable and do not suffer from discoloration comprising at least one retinoid, at least one water-soluble antioxidant, at least one oil-soluble antioxidant, and 0.01 to 10 wt. % of at least one UV filter (See entire document, e.g., Bottom of Page 1 of English translation).
Suitable retinoids are retinol and its derivatives, and the content of the at least one retinoid is in the range from 0.015 to 0.2 wt. % based on the total amount of the preparation (e.g., Page 2 Par. 3 and Page 8 Par. 7 of English translation). The at least one water-soluble antioxidant is preferably ascorbic acid, and the content of the at least one water-soluble antioxidant is in the range from 0.05 to 0.8 wt. % based on the total amount of the preparation (e.g., Page 1 Last Par., Page 2 Par. 5, and Page 8 Par. 7 of English translation). The at least one oil-soluble antioxidant is preferably alpha-tocopherol, and the content of the at least one oil-soluble antioxidant is in the range from 0.0005 to 2 wt. % based on the total amount of the preparation (e.g., Page 2 Par. 8 and Page 8 Par. 7 of English translation). The at least one UV filter is used for stabilizing retinol and for protecting human skin from UV radiation (e.g., Page 8 Par. 3 of English translation). The at least one UV filter can be UV-A, UV-B and/or broadband filters, wherein particularly advantageous UV-B filter substances are liquid at room temperature and include ethylhexyl salicylate (e.g., Page 5 Par. 8 and 11 of English translation).
The cosmetic preparation of Jentzsch et al can be produced as an oil-in-water emulsion, water-in-oil emulsion, but also multiple emulsions, as well as cream gels and gels (e.g., Page 9 Par. 4 of English translation). Conventional cosmetic oil components for use include caprylic acid/capric acid triglycerides (e.g., Page 9 Par. 3 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, Bohnenblust, and Jentzsch et al, to provide a UV protective and repairing cosmetic composition for the skin, formulated as an oil-in-water emulsion, comprising 0.001 to 10.0% by weight of retinol, 0.001 to 5.0% by weight of TPH, 0.05 to 3% by weight of chelating agents being alpha-cyclodextrin and trisodium ethylenediamine disuccinate, a surfactant such as lauryl glucoside, 0.05 to 0.8% by weight of at least one water-soluble antioxidant being ascorbic acid, 0.0005 to 2% by weight of at least one oil-soluble antioxidant being alpha-tocopherol, 0.01 to 10% by weight of at least one UV filter being a UV-B filter substance that is liquid at room temperature such as ethylhexyl salicylate, caprylic acid/capric acid triglycerides as conventional cosmetic oil, 4.0% by weight of glycerol, not comprising BHT, and optionally comprising 0.05% by weight of EDTA-2NA, where weight is based on the weight of the composition.
One of ordinary skill in the art would have motivated to add the chelating agents being alpha-cyclodextrin and trisodium ethylenediamine disuccinate from 0.05 to 3% by weight, the at least one water-soluble antioxidant being ascorbic acid from 0.05 to 0.8% by weight, the at least one oil-soluble antioxidant being alpha-tocopherol from 0.0005 to 2% by weight, and the at least one UV filter being a UV-B filter substance that is liquid at room temperature such as ethylhexyl salicylate from 0.01 to 10% by weight to the composition of Kim et al because Bohnenblust teaches the inclusion of the aforementioned chelating agents and surfactant results in a stable composition with excellent sensory and macroscopic parameters and the combination of the aforementioned chelating agents specifically results in droplet stabilization, and because Jentzsch et al teach a retinoid-containing preparation comprising retinoid being retinol, 0.05 to 0.8% by weight of at least one water-soluble antioxidant being ascorbic acid, 0.0005 to 2% by weight of at least one oil-soluble antioxidant being alpha-tocopherol, and 0.01 to 10% by weight of at least one UV filter being a UV-B filter substance that is liquid at room temperature such as ethylhexyl salicylate as a retinoid and antioxidant combination that is stable and does not suffer from discoloration. There would have been a reasonable expectation of success because all of Kim et al, Bohnenblust, and Jentzsch et al teach compositions for the skin related to protecting the skin from the sun and as being compatible with formulation as an emulsion, and Kim et al teach that ingredients other than TPH and retinol can be added e.g., oils, water-soluble antioxidants, or chelating agents for the stabilization of retinol or derivatives thereof depending on the type of emulsion.
The modified cosmetic composition of Kim et al based on Bohnenblust and Jentzsch et al render obvious the composition of instant claims 1-17 and 19-24.
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)). Further, the modified cosmetic composition of Kim et al based on Bohnenblust and Jentzsch et al comprising 0.001 to 5.0% by weight of TPH and 0.05 to 3% by weight of chelating agents being alpha-cyclodextrin and trisodium ethylenediamine disuccinate renders obvious the range of mass ratio of TPH to trisodium ethylenediamine disuccinate being between 0.1 and 3 as required by instant claim 12.
Response to Applicant’s Arguments
Applicant’s arguments filed on 12/15/2025 have been considered.
Applicant argues that the compositions according to the present invention are more stable than the compositions outside the present invention and points to Pages 32-36 of the instant specification wherein compositions I1 to I5 in accordance with the present invention exhibit significantly lower retinol losses than that observed for composition CC1 outside the present invention comprising EDTA and BHT or not comprising the combination of di-t-butyl pentaerythrityl tetrahydroxycinnamate and ethylenediaminedisuccinic acid salt, ascorbic acid and/or tocopherol. Applicant argues that Bohnenblust is not all concerned with retinol containing compositions, let alone stability problems of retinol containing compositions, and accordingly persons of ordinary skill in the art would not have looked to Bohnenblust and would not have had a reasonable expectation of achieving results obtainable by the present invention. Applicant argues that because Kim addresses the stability problem with respect to retinol, persons of ordinary skill in the art would not have been motivated to modify the compositions contemplated therein to address stability, i.e., one would not modify the compositions of Kim by incorporating for instance an ethylenediamine disuccinate salt to achieve something Kim already purports to have successfully achieved. Applicant argues that the cited references fail to teach or suggest all the claim recitations and the rejection of the claims is predicated on improper hindsight. Applicant argues that the rejection of claim 12 by the prior art references is not tenable because although selecting amounts of the TPH suggested by Kim and amounts suggested by Bohnenblust could result in the claimed mass ratio range, amounts of the TPH suggested by Kim and amounts suggested by Bohnenblust can also result in innumerable ratios outside the ratio range required by the claim and argues that only result-effective variables can be optimized for which the cited art would need to disclose that the variable was recognized to be a result-effective variable for the purpose of the claimed invention.
The above argument regarding the higher stability of the compositions according to the present invention compared to the compositions outside the present invention has been fully considered by the Examiner but is not found persuasive because the compositions argued to be in accordance with the present invention, i.e., compositions I1 to I5, are not commensurate in scope with the composition of the instant claims, e.g., the ingredients comprising each of compositions I1 to I5 span Pages 33-35 of the instant specification which includes many ingredients in addition to those recited in instant claim 1. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Regarding the argument that the prior art teachings do not solve the technical problem of the present invention, 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. As can be seen in the new grounds of rejection under 35 USC 103 above, based on the teachings of Kim et al, Bohnenblust, and Jentzsch et al, one of ordinary skill in the art would have motivated to add the chelating agents being alpha-cyclodextrin and trisodium ethylenediamine disuccinate from 0.05 to 3% by weight, the at least one water-soluble antioxidant being ascorbic acid from 0.05 to 0.8% by weight, the at least one oil-soluble antioxidant being alpha-tocopherol from 0.0005 to 2% by weight, and the at least one UV filter being a UV-B filter substance that is liquid at room temperature such as ethylhexyl salicylate from 0.01 to 10% by weight to the composition of Kim et al because Bohnenblust teaches the inclusion of the aforementioned chelating agents and surfactant results in a stable composition with excellent sensory and macroscopic parameters and the combination of the aforementioned chelating agents specifically results in droplet stabilization, and because Jentzsch et al teach a retinoid-containing preparation comprising retinoid being retinol, 0.05 to 0.8% by weight of at least one water-soluble antioxidant being ascorbic acid, 0.0005 to 2% by weight of at least one oil-soluble antioxidant being alpha-tocopherol, and 0.01 to 10% by weight of at least one UV filter being a UV-B filter substance that is liquid at room temperature such as ethylhexyl salicylate as a retinoid and antioxidant combination that is stable and does not suffer from discoloration, and there would have been a reasonable expectation of success because all of Kim et al, Bohnenblust, and Jentzsch et al teach compositions for the skin related to protecting the skin from the sun and as being compatible with formulation as an emulsion, and Kim et al teach that ingredients other than TPH and retinol can be added e.g., oils, water-soluble antioxidants, or chelating agents for the stabilization of retinol or derivatives thereof depending on the type of emulsion. The modified cosmetic composition of Kim et al based on Bohnenblust and Jentzsch et al meet all of the required limitations of the instant claims and as can be seen by the motivation one skilled in the art would have had, the rejection is not predicated on hindsight. The above argument regarding the rejection of claim 12 has been considered by the Examiner but is not found persuasive because it is not a requirement that the art does not teach ratios outside the claimed ratio range, but rather it is a requirement that the art teaches ratios that overlap with the claimed ratio range, for which the modified cosmetic composition of Kim et al based on Bohnenblust and Jentzsch et al does, i.e., the modified cosmetic composition of Kim et al based on Bohnenblust and Jentzsch et al comprising 0.001 to 5.0% by weight of TPH and 0.05 to 3% by weight of chelating agents being alpha-cyclodextrin and trisodium ethylenediamine disuccinate renders obvious the range of mass ratio of TPH to trisodium ethylenediamine disuccinate being between 0.1 and 3 as required by instant claim 12. Further, the rejection of claim 12 is based on the modified cosmetic composition of Kim et al based on Bohnenblust and Jentzsch et al having ratios that overlap with the claimed ratio range and is not based on an argument of optimization.
Applicant argues that the provisional rejection of claims 1-5, 7, 9, 11-17, and 19 on the ground of nonstatutory double patenting over claims 1-4, 6-7, 10-17, 19, and 20 of copending application 18/000,680 has been overcome with the filing of a Terminal Disclaimer.
The above argument has been fully considered by the Examiner but is not found persuasive because the Terminal Disclaimer has been filed in copending application 18/000,680, not filed in the instant application, and therefore, the rejection is maintained (see supra). See MPEP 1490.III.B. “For a terminal disclaimer filed under 37 CFR 1.321(c) or (d) in an application to obviate a nonstatutory double patenting rejection, the terminal disclaimer must be signed in accordance with 37 CFR 1.321(b)(1) and must be filed in the application in which the rejection was made” and also MPEP 1490.VI.D “If two (or more) pending applications are filed, in each of which a rejection of one claimed invention over the other on the ground of provisional nonstatutory double patenting (NSDP) is proper, the provisional NSDP rejection will be made in each application”.
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619