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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/20/2026 has been entered.
Manner of Making Amendments, 37 C.F.R. 1.121
Claim 3 has been amended in the claim set dated 08/20/2026, however the status identifier of ‘Previously presented’ is used instead of ‘Currently amended’ and the deleted text relative to the immediate prior version is not shown using strike-through or double brackets. Each of claims 4 and 11 in the claim set dated 08/20/2026 contain underlined and struck-through text that do not reflect changes that have been made relative to the immediate prior version, i.e., the underlined and struck-through text reflect changes made in a previous claim amendment. Applicant is reminded to include proper claim status identifiers and include proper markings to amended claim text moving forward to avoid delays. See MPEP 714.
Formal Matters
Receipt of Applicant’s response dated 08/20/2026 is acknowledged.
Claims 1-6 and 8-20 are pending.
Claim 7 is canceled.
Claims 1, 3, and 17 are amended.
Claims 15-16 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-6, 8-14, and 17-20 are under consideration in the instant Office action to the extent of the elected species, i.e., the at least one anti-acne active agent is salicylic acid, niacinamide and zinc gluconate, the at least one polyol is dipropylene glycol, the at least one organic solvent is ethanol, the poly(2-acrylamido 2-methyl propane sulfonic acid) compound is ammonium polyacryloyldimethyl taurate, the at least one surfactant is glyceryl stearate and PEG-100 stearate, the fatty phase is isododecane and dimethicone, and the at least one crosslinked starch is hydroxypropyl starch phosphate.
Information Disclosure Statement
The information disclosure statement (IDS) filed 06/02/2026 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections set forth in the Office action dated 05/07/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The rejections set forth in the Office action dated 05/07/2026 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
Double Patenting
The rejection set forth in the Office action dated 05/07/2026 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Claim 1 is objected to because in line 5 a space should be added between the semicolon and “and”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 has been amended to recite “The composition according to claim 1, wherein the at least one anti-acne agent is present of the composition”, however claim 1 already recites “A composition comprising…at least one anti-acne agent”. Claim 3 does not add a further limitation than that which is recited in claim 1, and therefore, claim 3 is rejected for failing to further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-5, 8-12, 14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sverdlove et al (US 2019/0142706 A1, published 05/16/2019, cited in Notice of References Cited dated 05/07/2026) in view of Buckley et al (US 2012/0283226 A1, published 11/08/2012, cited in Notice of References Cited dated 03/19/2025), Bioselect ("Hydroxypropyl Starch Phosphate", published 02/14/2017 dated by Wayback machine), Müller et al (Formulator Forum, "The Biopolymers Texture Triangle", published 09/02/2019), Lotioncrafter ("Hydroxyethylcellulose (HEC)", published 07/22/2019 dated by Wayback machine), and La Roche-Posay ("Toleriane Sensitive Crème", published 04/05/2019).
Sverdlove et al teach a bi-phase micellar liquid product, for cleansing, hydrating, and strengthening the skin, comprising (a) a fatty phase comprising one or more fatty compounds and one or more silicones; and (b) an aqueous phase comprising one or more ceramides, one or more water-soluble solvents, one or more surfactants, and water (See entire document, e.g., Abstract, [0004], [0008]). The aqueous phase of the bi-phase micellar liquid product is typically the predominant phase, i.e., the product comprises a greater amount of the aqueous phase than the fatty phase, and for example, the product may include from about 1 to about 49 wt. % of the fatty phase and from about 51 to about 99 wt. % of the aqueous phase, based on the total weight of the product (e.g., [0023]).
Suitable examples of the one or more fatty compounds include isododecane (e.g., [0078], [0092]). Suitable examples of the one or more silicones include dimethicone (e.g., [0011], [0026]). Suitable examples of the one or more water-soluble solvents include dipropylene glycol and ethanol (e.g., [0037]-[0040]). The one or more surfactants may be anionic, cationic, nonionic, and/or amphoteric (zwitterionic) surfactants, and in many instances the product includes at least one or more nonionic surfactants (e.g., [0009], [0043]). Suitable examples of the at least one or more nonionic surfactants include the product containing glyceryl stearate and PEG-100 stearate, marketed under the name ARLACEL 165 by Croda (e.g., [0239]).
The aqueous phase of the bi-phase micellar liquid product may contain one or more thickening agents, wherein suitable examples include starches, such as hydroxypropyl starch phosphate, and celluloses such as hydroxyethylcellulose (e.g., [0008], [0022], [0072]). Additionally, the one or more thickening agent may include polymeric thickeners selected from a group including ammonium polyacryloyldimethyl taurate (e.g., [0250]). The total amount of thickening agents to be included in the bi-phase micellar liquid product is typically fairly low (e.g., [0073]).
The bi-phase micellar liquid product may include one or more active ingredients, wherein suitable examples include hyaluronic acid and salicylic acid (e.g., [0268]-[0269]). The bi-phase micellar liquid product may comprise a moisturizing ingredient (i.e., emollient), an anti-wrinkle active ingredient such as nicotinamide (i.e., niacinamide), and an active ingredient that addresses oily skin such as zinc gluconate (e.g., [0270], [0274], [0277]). The total amount of active ingredients to be included in the bi-phase micellar liquid product may be from 10 ppm to 10 wt. % (e.g., [0268]).
The aqueous phase of the bi-phase micellar liquid product may comprise pH adjusting agents (e.g., [0008], [0022]).
Sverdlove et al do not exemplify the specific combination of salicylic acid, niacinamide, and zinc gluconate in the bi-phase micellar liquid product.
This deficiency is made up for in the teaching of Buckley et al.
Buckley et al teach a dermatological or cosmetic composition for skin care comprising an acid salt such as a gluconate salt (including zinc gluconate), hydroxy or bionic acid such as salicylic acid, and niacinamide (See entire document, e.g., Abstract, [0003], [0024]-[0025]). Buckley et al teach that the hydroxy acid functions in the composition to improve skin turnover, and that gluconate specifically, has the benefits of good skin tolerability, moisturization, strengthens skin barrier, has a free radical scavenging effect, improves the appearance of photodamaged skin, doesn’t thin the strateum corneum, and doesn’t increase sun sensitivity (e.g., [0014]-[0020]). Buckley et al teach that niacinamide has the benefits on the skin barrier such as replenishing niacinamide coenzymes which deplete with increasing age in skin, stimulating aged fibroblasts to stimulate collagen synthesis, improving skin barrier function by up-regulating epidermal ceramides synthesis, improving keratinocyte differentiation which slows with increasing age, preventing UV damage to skin and inhibiting UV immune suppression, inhibiting melanosome transfer from melanocytes to keratinocytes, leading to a reduction in skin pigmentation with time, reducing sebaceous activity in facial skin, improving skin smoothness, and improving wound healing (e.g., [0004]-[0013]). Further, Buckley et al teach that the hydroxy acid and niacinamide work synergistically to make skin stronger and more resistant to stresses (e.g., [0022]) and that niacinamide and the acid salt work synergistically to enhance the skin barrier (e.g., [0023]).
Sverdlove et al do not provide a teaching for specifically selecting hydroxypropyl starch phosphate as a thickening agent nor how much hydroxypropyl starch phosphate to include.
This deficiency is made up for in the teachings of Bioselect and Müller et al.
Bioselect teaches that hydroxypropyl starch phosphate is a naturally-derived sugar used in cosmetics and beauty products because of its ability to serve as a surfactant and emulsifier and that it stabilizes emulsions at any temperature, gives formulas immediate viscosity, reduces the greasiness of products, and delivers a smooth, thick feeling (See entire document, e.g., Page 2).
Müller et al teach use of hydroxypropyl starch phosphate in a lotion at 1.0% where it brings a soft pick-up as well as a sensation of richness and body during application that gives rise to a palpable powdery finish and caring after-feel and teach use in a cream at 3.0% to give a heavier, richer night cream style product (See entire document, e.g., Last Par. of Page 3).
Sverdlove et al do not provide a teaching for specifically selecting hydroxyethylcellulose as a thickening agent nor how much hydroxyethylcellulose to include.
This deficiency is made up for in the teaching of Lotioncrafter.
Lotioncrafter teaches that hydroxyethylcellulose is a non-ionic, water soluble polymer used as a thickening agent for aqueous cosmetic and personal care formulations that will produce crystal clear gel products and thicken the aqueous phase of cosmetic emulsions and is typically used in formulations from 0.1 to 3% (See entire document, e.g., Par. 1 on Page 5 of Info tab document, “Typical Use Rate” on Page 3 of Formulation Guide tab document).
Sverdlove et al do not provide a teaching for specifically selecting ammonium polyacryloyldimethyl taurate as a thickening agent.
This deficiency is made up for in the teaching of La Roche-Posay.
La Roche-Posay teaches use of ammonium polyacryloyldimethyl taurate in a skin cream also comprising water, starch, emollient, dimethicone, niacinamide, and glyceryl stearate, wherein ammonium polyacryloyldimethyl taurate is versatile polymer that helps to thicken up products and can also act as an emulsifier, enabling gel-cream-like textures, it gives a light, silky, and cool skin feel, and it works over a wide pH range and is electrolyte tolerant (See entire document, e.g., "Ingredients overview" Pages 2-3, "Ingredients explained" Bottom of Page 6).
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 Sverdlove et al, Buckley et al, Bioselect, Müller et al, Lotioncrafter, and La Roche-Posay, to provide a bi-phase micellar liquid product for cleansing, hydrating, and strengthening the skin, comprising (a) a fatty phase comprising isododecane as the one or more fatty compounds; and dimethicone as the one or more silicones; and (b) an aqueous phase comprising one or more ceramides; dipropylene glycol and ethanol as the one or more water-soluble solvents; glyceryl stearate and PEG-100 stearate, marketed under the name ARLACEL 165 by Croda, as the one or more surfactants; water; hydroxypropyl starch phosphate, hydroxyethylcellulose, and ammonium polyacryloyldimethyl taurate as the one or more thickening agents; and pH adjusting agents, wherein hydroxypropyl starch phosphate is present from 1.0% to 3.0%, wherein hydroxyethylcellulose is present from 0.1% to 3%, wherein the total amount of thickening agents is fairly low, and wherein the aqueous phase is present in a greater amount than the fatty phase, e.g., from about 1 to about 49 wt. % of the fatty phase and from about 51 to about 99 wt. % of the aqueous phase, based on the total weight of the product, and wherein the product further comprises a moisturizing ingredient (i.e., emollient), hyaluronic acid, salicylic acid, nicotinamide (i.e., niacinamide), and zinc gluconate as the one or more active ingredients totaling from 10 ppm to 10 wt. %.
One of ordinary skill in the art would have been motivated to specifically use the combination of salicylic acid, zinc gluconate, and niacinamide in order to provide beneficial skin care effects of each of salicylic acid, zinc gluconate, and niacinamide, i.e., improving skin turnover, good skin tolerability, moisturization, strengthens skin barrier, has a free radical scavenging effect, improves the appearance of photodamaged skin, doesn’t thin the strateum corneum, and doesn’t increase sun sensitivity, replenishing niacinamide coenzymes which deplete with increasing age in skin, stimulating aged fibroblasts to stimulate collagen synthesis, improving skin barrier function by up-regulating epidermal ceramides synthesis, improving keratinocyte differentiation which slows with increasing age, preventing UV damage to skin and inhibiting UV immune suppression, inhibiting melanosome transfer from melanocytes to keratinocytes, leading to a reduction in skin pigmentation with time, reducing sebaceous activity in facial skin, improving skin smoothness, and improving wound healing as well as the synergistic skin care effects when using them in combination, i.e., makes skin stronger and more resistant to stresses and enhances the skin barrier as is taught by Buckley et al. There would have been a reasonable expectation of success because Buckley et al already teach the compatibility and synergy of salicylic acid, zinc gluconate, and niacinamide in a dermatological or cosmetic composition for skin care and Sverdlove et al teach each of salicylic acid, zinc gluconate, and niacinamide as suitable active ingredients.
One of ordinary skill in the art would have been motivated to specifically use hydroxypropyl starch phosphate as a thickening agent and to do so from 1.0% to 3.0% because Bioselect teaches that hydroxypropyl starch phosphate is a naturally-derived sugar used in cosmetics and beauty products because of its ability to serve as a surfactant and emulsifier and that it stabilizes emulsions at any temperature, gives formulas immediate viscosity, reduces the greasiness of products, and delivers a smooth, thick feeling and because Müller et al teach use of hydroxypropyl starch phosphate in a lotion at 1.0% where it brings a soft pick-up as well as a sensation of richness and body during application that gives rise to a palpable powdery finish and caring after-feel and teach use in a cream at 3.0% to give a heavier, richer night cream style product. There would have been a reasonable expectation of success because Sverdlove et al teach hydroxypropyl starch phosphate as a suitable thickening agent.
One of ordinary skill in the art would have been motivated to specifically use hydroxyethylcellulose as a thickening agent and to do so from 0.1 to 3% because Lotioncrafter teaches that hydroxyethylcellulose is a non-ionic, water soluble polymer used as a thickening agent for aqueous cosmetic and personal care formulations that will produce crystal clear gel products and thicken the aqueous phase of cosmetic emulsions and is typically used in formulations from 0.1 to 3%. There would have been a reasonable expectation of success because Sverdlove et al teach hydroxyethylcellulose as a suitable thickening agent.
One of ordinary skill in the art would have been motivated to specifically use ammonium polyacryloyldimethyl taurate as a thickening agent because La Roche-Posay teaches use of ammonium polyacryloyldimethyl taurate in a skin cream, wherein ammonium polyacryloyldimethyl taurate is versatile polymer that helps to thicken up products and can also act as an emulsifier, enabling gel-cream-like textures, it gives a light, silky, and cool skin feel, and it works over a wide pH range and is electrolyte tolerant. There would have been a reasonable expectation of success because Sverdlove et al teach ammonium polyacryloyldimethyl taurate as a suitable thickening agent and because La Roche-Posay teaches the compatibility of ammonium polyacryloyldimethyl taurate in a product also comprising water, starch, emollient, dimethicone, niacinamide, and glyceryl stearate.
Regarding the weight percent and weight ratio 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)). Additionally, where 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)).
Thus, the bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al, Bioselect, Müller et al, Lotioncrafter, and La Roche-Posay renders obvious instant claims 1-5, 8-12, 14, and 17-20 to the extent of the elected species.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sverdlove et al (as cited above) in view of Buckley et al (as cited above), Bioselect (as cited above), Müller et al (as cited above), Lotioncrafter (as cited above), and La Roche-Posay (as cited above) as applied to claims 1-5, 8-12, 14, and 17-20 above, and further in view of Nobile et al (J. Cosmet. Dermatol., 2014, 13, 277-287, cited in Notice of References Cited dated 03/19/2025).
The bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al, Bioselect, Müller et al, Lotioncrafter, and La Roche-Posay has been discussed supra.
Although Sverdlove et al teach hyaluronic acid as a suitable active ingredient, none of the aforementioned references teach sodium hyaluronate as a suitable active ingredient.
This deficiency is made up for in the teaching of Nobile et al.
Nobile et al teach a study of the efficacy of topical administration of a dermocosmetic filling treatment containing sodium hyaluronate for anti-aging and wrinkle filling on the face (See entire document, e.g., Title, Summary, “Interventions” Section on Pages 279-280), wherein the results of the study showed an improvement in skin sagging and a decrease in wrinkle depth and volume (e.g., “Discussion” on Pages 284-285).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use sodium hyaluronate as the specific type of hyaluronic acid in the bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al, Bioselect, Müller et al, Lotioncrafter, and La Roche-Posay. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). One of ordinary skill in the art would have been motivated to do so in order to provide a skin care composition that improves skin sagging and wrinkles, for which are already goals of the product of Sverdlove et al (See Par. [0273] of Sverdlove et al). There would have been a reasonable expectation of success because Sverdlove et al teach compatibility of the product with hyaluronic acid.
The bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al, Bioselect, Müller et al, Lotioncrafter, and La Roche-Posay and further in view of Nobile et al comprising sodium hyaluronate renders obvious instant claim 6 to the extent of the elected species.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Sverdlove et al (as cited above) in view of Buckley et al (as cited above) , Bioselect (as cited above), Müller et al (as cited above), Lotioncrafter (as cited above), and La Roche-Posay (as cited above) as applied to claims 1-5, 8-12, 14, and 17-20 above, and further in view of Cherney et al (Healthline.com, published 03/19/2019, cited in Notice of References Cited dated 03/19/2025).
The bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al, Bioselect, Müller et al, Lotioncrafter, and La Roche-Posay has been discussed supra.
Although Sverdlove et al teach that the aqueous phase of the bi-phase micellar liquid product may comprise pH adjusting agents, none of the aforementioned references teach the pH of the product.
This deficiency is made up for in the teaching of Cherney et al.
Cherney et al teach that skin pH is important to overall skin health and that healthy skin is slightly acidic, which allows your skin to combat harmful microbes and damaging free radicals that might quicken the aging process (See entire document, e.g., Pages 1-2). The acidity of skin ranges from pH of 4 to 7, with pH levels below 5 as ideal (e.g., Page 3). Cherney et al also teach that having skin pH that is too high can make you more likely to have acne (e.g., Page 4). Cherney et al teach that more acidic-based skin care ingredients may also help maintain healthy skin in conditions such as eczema and psoriasis (e.g., Page 6).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the pH adjusters of Sverdlove et al to adjust the pH of the bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al, Bioselect, Müller et al, Lotioncrafter, and La Roche-Posay to a pH between 4 and 5 based on the teaching of Cherney et al. One of ordinary skill in the art would have been motivated to do so in order to provide a skin care composition that is compatible with the pH of skin and healthy for the skin. There would have been a reasonable expectation of success because Sverdlove et al teach compatibility of the product with pH adjusters.
Regarding the pH range required by instant claim 13, 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)).
The bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al, Bioselect, Müller et al, Lotioncrafter, and La Roche-Posay and further in view of Cherney et al having a pH between 4 and 5 renders obvious instant claim 13 to the extent of the elected species.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 8-14, and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11, 17-19, and 22 of U.S. Patent No. 10,813,852 B2 (hereafter ‘852) in view of Sverdlove et al (as cited above), Buckley et al (as cited above), Bioselect (as cited above), Müller et al (as cited above), Lotioncrafter (as cited above), La Roche-Posay (as cited above), Nobile et al (as cited above), and Cherney et al (as cited above).
It is noted that U.S. Patent No. 10,813,852 B2 corresponds to US 2019/0142706 A1 applied above as prior art.
Instant claims 1-6, 8-14, and 17-20 recite a composition comprising, in an aqueous phase: at least one anti-acne active agent; hydroxyethylcellulose and poly(2-acrylamido 2-methyl propane sulfonic acid), wherein the weight ratio of poly(2-acrylamido 2-methyl propane sulfonic acid): (hydroxyethylcellulose) ranges from 3 : 1 to 7 : 1, and from 0.1% to 8% by weight of crosslinked starch relative to the total weight of the composition; wherein the hydroxyethylcellulose is present in an amount ranging from 0.2% to 3% by weight relative to the total weight of the composition, wherein the at least one anti-acne agent is present in an amount ranging from 0.01% to 20% by weight relative to the total weight of the composition, wherein the aqueous phase is present in an amount ranging from 10% to 99% by weight relative to the total weight of the composition, wherein the aqueous phase comprises water, and optionally at least one polyol and/or at least one organic solvent miscible with water, wherein the aqueous phase further comprises sodium hyaluronate, wherein the poly(2-acrylamido 2-methyl propane sulfonic acid) is crosslinked or non-crosslinked; and/or is neutralized with an inorganic base or an organic base, and mixtures of these compounds, wherein the poly(2-acrylamido 2-methyl propane sulfonic acid) is neutralized with ammonia and cross-linked, wherein the poly(2-acrylamido 2-methyl propane sulfonic acid) is present in an amount ranging from 0.01 to 20% by weight relative to the total weight of the composition, wherein the weight ratio of poly(2-acrylamido 2-methyl propane sulfonic acid):(hydroxyethylcellulose) ranges from 4 : 1 to 7 : 1, which further comprises at least one surfactant and/or a fatty phase, which has a pH of less than 4.5, and which further comprises an emollient.
Claims 1, 9-11, 17-19, and 22 of ‘852 recite a bi-phase micellar liquid product comprising: (a) about 5 to about 40 wt. % of a fatty phase, the fatty phase comprising: one or more fatty compounds; one or more silicones; and (b) about 60 to about 95 wt. % of an aqueous phase, the aqueous phase comprising: micelles suspended in the aqueous phase (b), wherein the micelles comprise one or more ceramides; one or more water-soluble solvents; one or more surfactants; and water, wherein the fatty phase (a) and the aqueous phase (b) are separated by a single interface disposed between the fatty phase (a) and the aqueous phase (b), wherein the one or more surfactants comprises one or more nonionic surfactants selected from the group consisting of polyglycerol esters, alkylpolyglucosides, alkyl(ether)phosphates, fatty acid alkanolamides, and a mixture thereof, wherein the one or more fatty compounds are selected from the group consisting of oils, waxes, alkanes, fatty alcohols, fatty acids, fatty alcohol derivatives, fatty acid derivatives esters of fatty alcohols, hydroxy-substituted fatty acids, waxes, triglyceride compounds, lanolin, ceramide, and a mixture thereof, wherein the one or more silicones are selected from the group consisting of polyorganosiloxanes, polyalkylsiloxanes, polyarylsiloxanes, polyalkarylsiloxanes, polyestersiloxanes, and a mixture thereof, wherein the one or more silicones are selected from the group consisting of dimethicone, cyclomethicone (cyclopentasiloxane), amodimethicone, trimethyl silyl amodimethicone, phenyl trimethicone, trimethyl siloxy silicate, and a mixture thereof, and wherein the one or more water-soluble solvents are selected from the group consisting of glycerin, C1-4 alcohols, organic solvents, polyols, glycols, and a mixture thereof.
Claims 1, 9-11, 17-19, and 22 of ‘852 do not recite the one or more fatty compounds being isododecane, the one or more surfactants being glyceryl stearate and PEG-100 stearate, the one or more water-soluble solvents being dipropylene glycol and ethanol, the product comprising hydroxypropyl starch phosphate, hydroxyethylcellulose, ammonium polyacryloyldimethyl taurate, salicylic acid, niacinamide, zinc gluconate, sodium hyaluronate, or an emollient, or the pH of the product.
These deficiencies are made up for in the teachings of Sverdlove et al, Buckley et al, Bioselect, Müller et al, Lotioncrafter, La Roche-Posay, Nobile et al, and Cherney et al, which have been discussed in detail supra.
It would have been prima facie obvious to one of ordinary skill in the art, based on the teachings of Sverdlove et al, Buckley et al, Bioselect, Müller et al, Lotioncrafter, La Roche-Posay, Nobile et al, and Cherney et al, to use isododecane as the one or more fatty compounds, use glyceryl stearate and PEG-100 stearate, marketed under the name ARLACEL 165 by Croda, as the one or more surfactants, use dipropylene glycol and ethanol as the one or more water-soluble solvents, add one or more thickening agents being hydroxypropyl starch phosphate, hydroxyethylcellulose, and ammonium polyacryloyldimethyl taurate, add one or more active ingredients being a moisturizing agent (i.e., emollient), salicylic acid, nicotinamide (i.e., niacinamide), zinc gluconate, and sodium hyaluronate, and use pH adjusting agents to adjust the pH of the product to between 4 and 5 in the bi-phase micellar liquid product of the claims of ‘852.
Thus, claims 1, 9-11, 17-19, and 22 of ‘852 in view of Sverdlove et al, Buckley et al, Bioselect, Müller et al, Lotioncrafter, La Roche-Posay, Nobile et al, and Cherney et al render obvious instant claims 1-6, 8-14, and 17-20 to the extent of the elected species.
Claims 1-6, 8-14, and 17-20 are directed to an invention not patentably distinct from claims 1, 9-11, 17-19, and 22 of commonly assigned U.S. Patent No. 10,813,852 B2. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Patent No. 10,813,852 B2, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Applicant’s Arguments
Applicant’s arguments filed on 08/20/2026 regarding the rejections under 35 USC 103 and the double patenting rejection set forth in the Office action dated 05/07/2026 have been fully considered by the Examiner, however are considered moot as the aforementioned rejections have been withdrawn in light of Applicant’s amendments to the claims and new rejections are applied herein using a different combination of prior art teachings.
Conclusion
No claims are allowable.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
