DETAILED ACTION
Applicant’s response filed 07/16/2026 has been fully considered. The following rejections and/or objections are either reiterated or newly applied.
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 .
Claim Status
Claims 5-6, 8, 12 and 17 are cancelled by Applicant.
Claims 1-4, 7, 9-11, 13-16 and 18 are currently pending and are herein under examination.
Claims 1-4, 7, 9-11, 13-16 and 18 are rejected.
Claim 1 is objected.
Priority
The instant application claims domestic benefit as a 371 filing of PCT/EP2021/056334 filed 03/12/2021, which claims foreign priority to European Application No. EP20163091.0 filed 03/13/2020. The claims to domestic benefit and foreign priority are acknowledged. As such, the effective filing date for claims 1-4, 7, 9-11, 13-16 and 18 is 03/13/2020.
Drawings
The objections to the drawings are withdrawn, except for the objection below, in view of drawing filed 07/16/2026.
The drawings filed 07/16/2026 are objected to for failing to comply with 37 CFR 1.84(u)(1) because partial views must be followed by a capital letter. “FIG. 5” should be “FIG. 5A” and “FIG. 5B”.
The drawings filed 07/16/2026 are objected to for failing to comply with 37 CFR 1.84(u)(2) because the view numbers of FIGs 1-2, 6 and 8 are smaller than the numbers for the reference characters.
The drawings filed 07/16/2026 are objected to because “FIG. 4” should be removed because the specification filed 07/16/2026 no longer discloses a “FIG. 4”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Abstract
The objection to the abstract is withdrawn in view of the abstract filed 07/16/2026.
Withdrawn Rejections
35 USC 112(b)
The rejection of claims 1-15 and 18 under 35 USC 112(b) are withdrawn in view of claim amendment, except for the rejection maintained below.
35 USC 112(d)
The rejection of claim 7 under 35 USC 112(d) is withdrawn in view of claim amendment.
35 USC 101
The rejection of claims 5-6, 8, 12 and 17 under 35 USC 101 are withdrawn in view of Applicant cancelling these claims.
The rejection of claim 17 for being directed to non-statutory subject matter is withdrawn in view of Applicant cancelling the claim.
Double Patenting
The provisional rejection of claims 1-8 and 16-18 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-8, 10 and 12-16 of copending Application No. 18/032,219 is withdrawn in view of claim amendments.
Claim Objections
The objection to claims 1, 7, 9-11, 13-14 and 16-17 are withdrawn in view of claim amendments.
Claim 1 is objected to because of the following informalities:
Claim 1, line 6, should recite “interface[[,]] composition”.
Claim 1, line 17, should recite “parameters; [[and]]” because the last step is “providing via an output” not “comparing by the processing device”.
Claim 1, line 20, should recite “are met[[,]]; and”.
Claim 1, line 27, should recite “cosmetics,”.
Claim 1, pg. 5, line 1, should indent the wherein clause.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
35 USC 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 7, 9-11 and 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
This rejection is either newly recited as necessitated by claim amendment or maintained from the previous Office action.
Claims dependent from a rejected claim are also rejected, unless otherwise noted.
Claim 1, line 13, recites “determining … determined performance properties”. It is unclear if this means that previously determined properties are being determined again, or if it should be written as “determining …
Claim 1, line 20, recites “repeating the method.” It is unclear if all steps in the method are repeated, or if only the steps recited prior to line 20 are repeated. If Applicant intends to repeat all steps of claim 1, then “repeating the method” should be moved to the bottom of claim 1. Otherwise, clarify which specific steps of the claim are repeated.
Claim 1, line 20, recites “the target performance properties”, line 22 recites “the determined performance properties”, and line 24 recites “the composition parameters”. It is unclear which target and determined performance properties and which composition parameters are being referenced because lines 19-20 recite repeating the method, which includes providing at least two different sets of target and determined performance properties in lines 10-11 and 13 and providing at least two different sets of composition parameters in line 6. Clarify which target and determined performance properties and which composition parameters are being referenced.
Claim 1, pg. 5, line 1, recites “the performance properties of each of the different oils”, which lacks antecedent basis. Claim 1, lines 13-15, determines performance properties of the oil-containing and surfactant-containing product, but does not determine performance properties for each oil of the different oils. Provide antecedent basis or clarify what the recitation refers to.
Claim 2 recites “a ratio of the different oils and/or surfactant and the further component in the mixture”. It is unclear what the ratio is. For example, is it a ratio of volumes of each of the different oils forming a mixture, or is it a ratio of a number of different oils to a number of surfactant and the further component in a combined mixture. Clarify what the ratio is defined by.
Claims 2-4 recite “the composition parameters”. Similar to the rejection above for claim 1, it is unclear in claims 2-4 which composition parameters are being referenced because claim 1, lines 19-20, repeats the method, which includes providing at least two different sets of the composition parameters in claim 1, line 6. Clarify which composition parameters are being referenced.
Claim 4, lines 2-3, recites “each of the oils … each of the oils”. It is unclear if this refers to the “different oils” or “or a mixture of oils” in claim 1. For examination, this refers to the different oils. Clarify which oils are being referenced.
Claims 9-11 and 13-14 are indefinite because they depend on cancelled claim 8. Thus, it is unclear to which claims these claims depend. Amend the dependency of these claims. For examination, claims 9-10 and 14 depend on claim 1.
Claim 10 recites “the result of the comparing step”, which lacks antecedent basis because there is no prior mention of a result. Provide antecedent basis for the recitation.
Claim 11, line 2, and claim 13, line 2, recite “the composition parameters”. It is unclear which composition parameters are being referenced because claim 1, lines 19-20, repeats the method, which includes providing at least two different sets of the composition parameters in claim 1, line 6. Clarify which composition parameters are being referenced.
Claim 13, line 4, recites “the composition parameter”. It is unclear which composition parameter from which of the plurality of composition parameters are being referenced because claim 1 requires repeating the step of providing composition parameters. Clarify which composition parameter is being referenced.
Claim 13, line 5, recites “the surfactant”. It is unclear which surfactant is being referenced because claim 1, line 4, and claim 13, line 3, recite “at least one surfactant” and claim 1, line 11, recites “surfactant”. Clarify which surfactant is being referenced.
Claim 15 recites “the target performance properties of a specific surfactant or a specific further component” which lacks antecedent basis. Claim 1, lines 10-12, recites “target performance properties of … surfactant and the further component”, but does not recite target properties for a specific surfactant or a specific further component. Clarify antecedent basis.
Response to Arguments under 35 USC 112(b)
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
Applicant argument regarding amended claim 1 overcoming the rejection for “determining … determined performance properties” is not persuasive because the amendments have not clarified whether the performance properties were already previously determined (pg. 9, bullet 1 of Applicant’s remarks).
Applicant’s argument regarding claim 2 is not persuasive because the amendment only clarified the antecedent basis issue but not the issue regarding what is the ratio (pg. 10, bullet 1, of Applicant’s remarks).
Applicant’s argument regarding claim 13 is not persuasive because claim 13, line 5, still recites “the surfactant” which renders the claim indefinite (pg. 10, bullet 6 of Applicant’s remarks).
Applicant’s argument regarding claim 15 is not persuasive because amended claim 1 still does not provide antecedent basis the phrase (pg. 10, bullet 6 of Applicant’s remarks).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 7, 9-11, 13-16 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Any newly recited portions herein are necessitated by claim amendment.
Step 1:
Step 1 asks whether the claims recite statutory subject matter. In the instant application, claims 1-4, 7, 9-11 and 13 recite a method, claim 16 recites a system, and claim 18 recites a method. As such, these claims recite statutory subject matter (Step 1: YES).
Step 2A, Prong 1:
Claims that recite statutory subject matter are analyzed under Step 2A, Prong 1 to determine if they recite any concepts that equate to an abstract idea, law of nature or natural phenomena. The instant claims recite the following limitations that equate to one or more categories of judicial exception:
Claim 1 recites “determining performance properties of an oil-containing and/or surfactant-containing product for cosmetics, the oil-containing product for cosmetics comprising different oils forming a mixture and/or the surfactant-containing product for cosmetics comprises at least one surfactant and further component forming the mixture, the method comprising: determining with a processing device determined performance properties of the oil-containing and/or the surfactant-containing product for cosmetics comprising the mixture, based on the data driven model and/or the rigorous model and the composition parameters; and comparing by the processing device the target performance properties with the determined performance properties, wherein the method further comprises the step of repeating the method, until the target performance properties are met”
Claim 4 recites “and the method further comprises a step of deriving performance properties for each of the oils and/or surfactant and the further component from the identifier.”
Claim 7 recites “wherein the oil-containing product for cosmetics comprises at least three different oils.”
Claim 9 recites “wherein the method step of providing target performance properties is preceded by the steps providing an identifier of a specific oil or a specific mixture of oils and/or a specific surfactant or a specific further component or a specific mixture of surfactant and the further component, and deriving the target performance properties of the specific oil or the specific mixture of oils properties and/or of the specific surfactant or the specific further component or the specific mixture of surfactant and the further component from the identifier of the specific oil or the specific mixture of oils and/or of the specific surfactant or the specific further component or the specific mixture of surfactant and the further component.”
Claim 11 recites “the step of varying the composition parameters.”
Claim 13 recites “wherein the step of varying the composition parameters comprises varying a measure for the ratio of the different oils and/or the at least one surfactant or the further component, and/or wherein step of varying the composition parameter comprises changing at least one identifier of the different oils and/or the surfactant or the further component and/or comprises adding an additional identifier of an oil and/or of a surfactant or of a further component.”
Limitations reciting a mental process.
Claims 1, 4, 9-11, 13 and 16-18 contain limitations recited at such a high level of generality that they equate to a mental process because they are similar to the concepts of collecting information, analyzing it, and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), which the courts have identified as concepts that can be practically performed in the human mind. The paragraphs below discuss the broadest reasonable interpretation (BRI) of the limitations in these claims that recite a mental process.
Claims 1, 16 and 18 recite determining performance properties using a model and composition parameters. This includes using a linear regression as recited in specification pgs. 27-28. A human can input data and perform calculations of a linear regression. Claim 1, 16 and 18 include comparing data and making determinations. Claim 4 includes using the name of an oil/surfactant/further component to look up physio-chemical properties. Claim 9 includes displaying names of components in a mixture and determining a desired physiochemical property based on the composition of the mixture. Claims 11 and 13 include changing ratios of mixtures and adding or removing an oil in a mixture.
Limitations reciting a mathematical concept.
Claims 1, 16 and 18 recite determining properties using a model and composition parameters which includes performing calculations using a linear regression to derive numerical values, as discussed in specification pages 27-28. This limitation is similar to the concepts of organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)), which the courts have identified as mathematical concepts.
Limitations included in the recited judicial exception.
Claim 7 is included in the judicial exception in claim 1 of determining performance properties because it further limits the products.
As such, claims 1-4, 7, 9-11, 13-16 and 18 recite an abstract idea (Step 2A, Prong 1: YES).
Additional Elements:
Once limitations have been identified that recite a judicial exception, the claims are evaluated for additional elements. The additional elements are then analyzed under Step 2A, Prong 2 then Step 2B. The instant claims recite the following additional elements:
Claims 1, 16 and 18 recite “A computer implemented method for … providing via a communication interface, composition parameters to a processing device; providing via the communication interface a data driven model and/or a rigorous model to the processing device; providing to the processing device via the communication interface target performance properties of a specific oil or a mixture of oils and/or surfactant and the further component or a mixture of surfactant and the further component for cosmetics … providing via an output communication interface the determined performance properties of the oil-containing and/or the surfactant-containing product for cosmetics and/or the composition parameters and/ or a formulation of the mixture, and/or a formulation of the oil-containing and/or the surfactant-containing product for cosmetics wherein the performance properties of each of the different oils and/or surfactant and the further component relate to physico-chemical properties of each of the different oils and/or surfactant and the further component, and/or wherein the performance properties of each of the different oils and/or surfactant and the further component relate to sensory properties of each of the different oils and/or surfactants and the further component.”
Claim 2 recites “wherein the composition parameters comprise a measure for a ratio of the different oils and/or surfactant and the further component in the mixture.”
Claim 3 recites “wherein the composition parameters comprise performance properties for each of the different oils.”
Claim 4 recites “wherein the composition parameters comprise an identifier for each of the oils and/or surfactant and the further component.”
Claim 10 recites “wherein providing via the output communication interface further comprises providing the result of the comparing step.”
Claim 11 recites “further comprising the step of providing the varied composition parameters as composition parameters.”
Claim 14 recites “wherein the target performance properties of the specific oil or the mixture of oils for cosmetics relate to a silicone-based oil or a mineral/paraffin oil.”
Claim 15 recites “wherein the target performance properties of a specific surfactant or a specific further component or a mixture of surfactant and further component relate to alkoxylate and sulfate based surfactants.”
Claim 16 recites “A system (12) for determining performance properties of an oil-containing and/or surfactant-containing product for cosmetics, the oil-containing product for cosmetics comprising different oils forming a mixture and/or the surfactant-containing product for cosmetics comprises at least one surfactant and further component forming the mixture, the system (12) comprising: a communication interface (18) and a processing device (16) configured to perform the method according to claim 1.”
Claim 17 recites “A computer program product that, when run on a processing device performs the method according to claim 1.”
Claim 18 recites “A method for determining performance properties of an oil-containing and/or a surfactant-containing product for cosmetics comprising utilizing the system according to claim 16 for production of an oil containing product and/or of a surfactant-containing product for cosmetics.”
These above recited additional elements are analyzed below under both Step 2A, Prong 2 and Step 2B:
Step 2A, Prong 2:
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2). The judicial exception is not integrated into a practical application because the claims do not recite additional elements that reflect an improvement to a computer, technology, or technical field (MPEP § 2106.04(d)(1) and 2106.5(a)), require a particular treatment or prophylaxis for a disease or medical condition (MPEP § 2106.04(d)(2)), implement the recited judicial exception with a particular machine that is integral to the claim (MPEP § 2106.05(b)), effect a transformation or reduction of a particular article to a different state or thing (MPEP § 2106.05(c)), nor provide some other meaningful limitation (MPEP § 2106.05(e)). Rather, the claims include limitations that equate to an equivalent of the words “apply it” and/or to instructions to implement an abstract idea on a computer (MPEP § 2106.05(f)), insignificant extra-solution activity (MPEP § 2106.05(g)), and field of use limitations (MPEP § 2106.05(h)). The paragraphs below discuss the additional elements recited above in the instant claims.
Claims 1, 10, 16 and 18 recite a computer implemented method and a system that use a communication interface, a processing device, and an output communication device. These are generic computer components and thus equate to mere instructions to implement an abstract idea on a generic computer, which the courts have established does not render an abstract idea eligible in Alice Corp. 573 U.S. at 223, 110 USPQ2d at 1983. These limitations also equate to invoking a computer as a tool to perform an existing process such as receiving, storing, and transmitting data (MPEP 2106.05(f)(2)).
Claims 1, 11, 16 and 18 recite providing composition parameters, models, and target performance parameters. These limitations equate to insignificant extra-solution activity of necessary data gathering. These limitations gather data necessary to perform the judicial exception in claims 1, 16 and 18 of determining performance properties of the product and comparing the target performance properties with the determined performance properties.
Claims 1, 10, 16 and 18 recite providing via an output communication interface and providing the result of the comparing step. These limitations equate to insignificant extra-solution activity of necessary data outputting. These limitations output the result of the judicial exception in claims 1, 16 and 18 of the determining and comparing steps.
Claims 2-4 and 14-15 further limit the gathered data of the composition parameters and target performance properties in claim 1. As such, these limitations also equate to necessary data gathering.
As such, claims 1-4, 7, 9-11, 13-16 and 18 are directed to an abstract idea (Step 2A, Prong 2: NO).
Step 2B:
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B). These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because these claims recite additional elements that equate to instructions to apply the recited exception in a generic way and/or in a generic computing environment (MPEP § 2106.05(f)) and to well-understood, routine and conventional (WURC) limitations (MPEP § 2106.05(d)). The paragraphs below discuss the additional elements recited above in the instant claims.
Claims 1, 10, 16 and 18 recite a computer implemented method and a system that use a communication interface, a processing device, and an output communication device. There are no limitations that these components require anything other than a generic computer and/or generic computing system. Therefore, these limitations equate to instructions to implement an abstract idea on a generic computing environment, which the courts have established does not provide an inventive concept in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
Claims 1, 10-11, 16 and 18 recite providing via a communication interface and providing via an output communication interface. These limitations equate to receiving/transmitting data over a network, which the courts have established as WURC limitation of a generic computer in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014). Claims 2-4 and 14-15 also equate to transmitting/receiving data over a network because they limit the type of data but do not change the fact that data is being transmitted/received.
When these additional elements are considered individually and in combination, they do not provide an inventive concept because they equate to WURC functions/components of a generic computer. Therefore, these additional elements do not transform the claimed judicial exception into a patent-eligible application of the judicial exception and do not amount to significantly more than the judicial exception itself (Step 2B: No).
As such, claims 1-4, 7, 9-11, 13-16 and 18 are not patent eligible.
Response to Arguments under 35 USC 101
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
Applicant appears to argue that amendments to claim 1 provide substantially more than any recited judicial exception, which is being interpreted as an argument under Step 2B. Applicant’s argument is not persuasive for the following reasons:
The following limitations in amendment claim 1 do not provide significantly more under Step 2B. Additional element of “providing to the processing device via the communication interface target performance properties” equates to transmitting data over a network, which is a WURC limitation of a generic computer, and does not provide significantly more under Step 2B (MPEP 2106.05(d)(II)(i)). The mental process of “comparing … the target performance properties with the determined performance properties” is not evaluated under Step 2B. Repeating claim 1 until target performance properties are met includes repeating the WURC steps of transmitting data. The limitations defining the performance properties as physio-chemical or sensory properties further limit the abstract idea of “determining … determined performance properties of the oil-containing and/or the surfactant-containing process” and thus do not recite additional elements. As such, claim 1 is still directed to an abstract idea without significantly more.
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.
Claims 1-4, 7, 9-11, 13-16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pappas et al. (“Pappas”; WO 2020/264547 A1; effective filing date 06/25/2019; previously cited on PTO 892 mailed 04/16/2026).
Any newly recited portions herein are necessitated by claim amendment.
The bold and italicized text below are the limitations of the instant claims, and the italicized text serves to map the prior art onto the instant claims.
Claim 1:
A computer implemented method for determining performance properties of an oil-containing and/or surfactant-containing product for cosmetics, the oil-containing product for cosmetics comprising different oils forming a mixture and/or the surfactant-containing product for cosmetics comprises at least one surfactant and further component forming the mixture, the method comprising:
Pappas determines properties of chemical compositions for cosmetics using a computer-system (abstract) (Figures 5-6) [68]. Figure 1A shows a composition with sodium lauryl sulfate and water (at least one surfactant and other component) [44].
providing via a communication interface, composition parameters to a processing device;
The identity of a chemical composition is received from one or more databases [76] (Figure 3A). Figure 3B shows a system containing different databases that receive, store and transmit data to one another including the chemical composition identity [85-88]. Alternatively, a user device 502 inputs chemical composition data into a chemical property modeling device 602 via a network 520 which includes wired or wireless communication networks [103-104] [109].
providing via the communication interface a data driven model and/or a rigorous model to the processing device;
Figure 6 shows the chemical property modeling device 602 contains a chemical properties engine 630, CPU 608 and memory 606, wherein the CPU and memory communicate to perform functions of the chemical properties engine 630 [37-38][127]. The engine 630 contains machine learning models trained on experimentally determined measurements of chemical properties of chemical composition (data-driven model) [10] [131-132] (Figures 6 and 9-10).
providing to the processing device via the communication interface target performance properties of a specific oil or a mixture of oils and/or surfactant and the further component or a mixture of surfactant and the further component for cosmetics,
A desired value of chemical composition property may be transferred from a user 502 to the chemical property modeling device 602 via a network 502 (Figure 5) [109] [113]. Each ingredient contains an associated feature or property [44] (Figure 1A). Alternatively, experimentally measured values of a property may be transferred from a properties database to the chemical property modeling device 602 [78] [124].
determining with a processing device determined performance properties of the oil-containing and/or the surfactant-containing product for cosmetics comprising the mixture, based on the data driven model and/or the rigorous model and the composition parameters;
Input into the model includes a value of a property of a chemical composition, identify of the chemical composition, and values of chemoinformatic properties of ingredients of the chemical composition [8-9] (Figure 12). These are used to predict properties of the chemical composition 312 (Figure 3A) [75].
comparing by the processing device the target performance properties with the determined performance properties,
The predicted and desired value of a property of a chemical composition is compared [101]. If the determined value is the same as the desired value, then composition is manufactured [101].
wherein the method further comprises the step of repeating the method, until the target performance properties are met,
Values related to a desired property such as periods of time can be adjusted until the value of the property of the chemical composition aligns with a desired value [194]. Combining new ingredients or removing ingredients from a chemical composition can change a value of a property of the composition [68], which necessitates retrieving/providing new compositions to the model and determining the property of new compositions.
providing via an output communication interface the determined performance properties of the oil-containing and/or the surfactant-containing product for cosmetics and/or the composition parameters and/ or a formulation of the mixture, and/or a formulation of the oil-containing and/or the surfactant-containing product for cosmetics
The predicted property values outputted by the properties engine 630 and are provided to the user device 502 via a communication network [103] [167] (Figure 5). The output includes predicted names, ingredients, cheminformatic values, and formulations of a chemical composition of a personal care product [75-76] [167] (Figure 3A).
wherein the performance properties of each of the different oils and/or surfactant and the further component relate to physico-chemical properties of each of the different oils and/or surfactant and the further component, and/or wherein the performance properties of each of the different oils and/or surfactant and the further component relate to sensory properties of each of the different oils and/or surfactants and the further component.
Each ingredient in a chemical composition contains associated physiochemical properties [79] and/or a chemoinformatic property associated with a qualitative sensory attribute (claim 1 steps a and c-d) (claim 16).
Claims 2-3:
A chemical composition comprises one or more ingredients making up a product, wherein each ingredient is present at a percentage in the product [58] (Figure 2A). The ingredients of a product include surfactants, oils and other components (Figure 7-8) [146]. Each ingredient has an identity [58].
Claim 4:
Each ingredient in a chemical composition contains an identity, which may be a unique identifier, used to predict properties of the composition (claim 1 step d) (Figure 2B) [58-59].
Claim 7:
Claim 7 further limits the oil-containing product, which is optional in claim 1. Thus, claim 7 is not required and is rejected for its dependency on rejected claim 1.
Claim 9:
Each ingredient has an identifier 222a or 242a and associated chemoinformatic properties (Figure 2A) [58-59] (providing an identifier). When an experimental measurement is transferred to the chemical property modeling device 602, the identifier and associated cheminformatic properties go with it (deriving the target performance from the identifier) [78] [124]. Alternatively, physiochemical properties of a chemical composition can be determined via thermodynamic modeling based on ingredients [62] [80]. Because these values, identifiers, and properties are stored in a database and used for later reference [86], these steps occur before the user inputs a desired value of a property of a chemical composition [113] or before the database transfers data to the modeling device [78][124].
Claim 10:
The predicted property values outputted by the properties engine 630 and are provided to the user device 502 via a communication network [103] [167] (Figure 5).
Claims 11 and 13:
One or more chemical compositions can be inputted into the model for a product which are inputted into the model (varying and providing the composition parameters) [6] [48] (Figure 3A). Features related to a property can be adjusted until a determined value aligns with a desired value [195], and two different compositions having a same property may contain at least one different ingredient (changing at least one identifier) (claims 121-125). Pappas mentions combining new ingredients or removing ingredients from a chemical composition can change a value of a property of the composition [68].
Claim 14:
Claim 14 further limits the target performance properties of an oil or a mixture of oils, which are optional in claim 1. Thus, claim 14 is not required and is rejected for its dependency on rejected claim 1.
Claim 15:
An ingredient in a chemical composition can be sodium lauryl sulfate [66].
Claims 16 and 18:
Pappas discloses a system configured to perform the method of instant claim 1 in Figures 5-6, which contains networks 520/620 and CPUs 508/608. The method and device are used to produce a product (abstract).
Response to Arguments under 35 USC 102
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
Applicant argues that Pappas does not anticipate the limitations of claims 5-6, which are now incorporated into claim 1 (pg 12, para. 2-3). Applicant’s argument is not persuasive because Pappas does teach claims 5-6, as discussed in the previous and current Office action. Applicant has not made an argument as to why Examiner’s claim mapping regarding claims 5-6 was incorrect. As such, Pappas still anticipates claim 1, even with the incorporation of claims 5-6.
Applicant argues that the instant invention is not obvious and that the data driven model and/or rigorous model are distinguishing features that solve a technical problem, which is not found in the prior art (pg. 12, para. 4 – pg. 13, para. 3). Applicant’s argument is not persuasive because:
Pappas anticipates every instant claim, and there is no obviousness rejection under 35 USC 103. As discussed in the rejection above, Pappas discloses a data drive and/or rigorous model. Applicant has not explained why Examiner’s claim mapping is incorrect. As such, the instant claims are still rejected under 35 USC 102.
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, 7, 9-11, 13-16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6, 8, 10 and 12-15 of copending Application No. 18/032,219 (hereinafter “App. ‘219”) in view of Pappas et al. (“Pappas”; WO 2020/264547 A1; effective filing date 06/25/2019; previously cited on PTO 892 mailed 04/16/2026).
This rejection is newly recited as necessitated by claim amendment.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are an obvious variant of the claims in App. ‘219. The following table shows claims in App. ‘219 that read on the instant claims:
Instant Application claims
App. ‘219
1, 16 and 18
1-2, 5-6, 8, 10, and 12-15
2
8
3
3
4, 9
5-6
7
2
10
1-2 and 13
App ‘219 does not teach in instant claim 1 comparing target performance properties with determined performance properties or repeating the method until the target performance properties are met.
Pappas determines properties of chemical compositions for cosmetics using a computer-system (abstract) (Figures 5-6) [68]. Predicted and desired values of a property of a chemical composition are compared [101]. If the determined value is the same as the desired value, then the composition is manufactured [101]. Values related to a desired property such as periods of time can be adjusted until the value of the property of the chemical composition aligns with a desired value [194]. Combining new ingredients or removing ingredients from a chemical composition can change a value of a property of the composition [68], which necessitates retrieving/providing new compositions to the model and determining the property of new compositions.
It would have been prima facie obvious have compared the target properties and predicted properties in App ‘219 until the target properties were met as taught by Pappas. Motivation for doing so is to achieve a desired property as taught by Pappas [101]. There would have been a reasonable expectation of success because the combination merely required trying new combinations of inputs into the prediction model to determine if a predicted property aligns with a desired property.
App ‘219 does not teach instant claims 11, 13 and 15.
Pappas teaches one or more chemical compositions can be inputted into the model for a product [6] [48] (Figure 3A). Features related to a property can be adjusted until a determined value aligns with a desired value [195], and two different compositions having a same property may contain at least one different ingredient (claims 121-125). Pappas mentions combining new ingredients or removing ingredients from a chemical composition can change a value of a property of the composition [68]. An ingredient in a chemical composition can be sodium lauryl sulfate [66].
It would have been prima facie obvious to have modified App ‘219 by varying physico-chemical properties of a composition as taught by Pappas because Pappas states that this helps align a desired property with a property determined by a model [68] [195]. There would have been a reasonable expectation of success because it requires altering input into the prediction model to get a different output.
Claim 14 is provisionally rejected for its dependency on provisionally rejected claim 1 because claim 1 renders optional the specific oil and mixture of oils.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments under Double Patenting
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
Applicant argues that incorporation of claims 10 and 12 into claim 1 overcome the provisional rejection under non-statutory double patenting (pg. 13, para. 4). Applicant’s argument was found persuasive. However, a new provisional rejection under non-statutory double patenting is applied as necessitated by claim amendments in the instant application and in co-pending App. ‘219. For example, the limitations of instant claim 12, which depended on claim 11, have been incorporated into claim 1, without also incorporating the limitations of claim 11.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Noah A. Auger whose telephone number is (703)756-4518. The examiner can normally be reached M-F 7:30-4:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Karlheinz Skowronek can be reached at (571) 272-9047. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/N.A.A./Examiner, Art Unit 1687
/KAITLYN L MINCHELLA/Primary Examiner, Art Unit 1685
Prosecution Insights