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 02/24/2026 is acknowledged.
Claims 1-6 and 8-20 are pending.
Claim 7 is canceled.
Claims 1-4, 8, 10, 12, and 17-19 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Claims 15-16 remain withdrawn from consideration as being drawn to a nonelected invention.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.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objection to the abstract set forth in the Office action dated 11/28/2025 is hereby withdrawn in light of Applicant’s amendments to the abstract.
Claim Objections
The objections to claims 1-4, 10, and 17-19, with the exception of an objection to claim 17 (See OBJECTION MAINTAINED section below), set forth in the Office action dated 11/28/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejections of claims 1-5, 8-12, 14, and 17-20 over Legendre et al in view of Buckley et al, of claim 6 over Legendre et al in view of Buckley et al and further in view of Nobile et al, and of claim 13 over Legendre et al in view of Buckley et al and further in view of Cherney et al set forth in the Office action dated 11/28/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the claims.
OBJECTION MAINTAINED
Claim Objections
Claim 17 remains objected to because “by weight, relative to the total weight of the composition” should be amended to “by weight relative to the total weight of the composition”, i.e., the comma should be deleted, in order to improve claim consistency and readability (See claims 1, 3-4, 10, and 18-19).
Appropriate correction is required.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Claim 1 is objected to because the comma appearing before “and” in line 5 should be replaced with a semicolon in order to improve consistency of the claim (See lines 2 and 7 wherein bulleted clauses are separated by semicolons).
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 1-5, 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) in view of Buckley et al (US 2012/0283226 A1, published 11/08/2012, cited in Notice of References Cited dated 03/19/2025).
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., below 1 wt. % (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]).
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 and Buckley et al, 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 the total amount of thickening agents is fairly low, e.g., below 1 wt. %, 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 the bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al 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 for use in the liquid product for the skin.
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)).
Thus, the bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al renders obvious instant claims 1-5, 8-12, 14, and 17-20.
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) 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 has been discussed supra.
Although Sverdlove et al teach hyaluronic acid as a suitable active ingredient, neither Sverdlove et al nor Buckley et al 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. 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 and further in view of Nobile et al comprising sodium hyaluronate renders obvious instant claim 6.
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) 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 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, neither Sverdlove et al nor Buckley et al 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 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.
The bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al and further in view of Cherney et al having a pH between 4 and 5 renders obvious 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)).
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), 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, 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, 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, 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, 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, and the composition further comprises at least one surfactant, at least one fatty phase, and not necessarily a cross-linked starch, wherein 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.
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 02/24/2026 have been considered.
Regarding the claim objections, Applicant states in remarks dated 02/24/2026 that “The objections to claims 1-4, 10, and 17-19 have been addressed by the amendments to the claims along the lines suggested by the Examiner”, however the above objection regarding claim 17 (See OBJECTION MAINTAINED section above) was not addressed in the amendments to the claims dated 02/24/2026, and therefore the above objection is hereby maintained.
Regarding the obviousness rejections, Applicant argues that Legendre et al and Buckley et al do not render obvious independent claim 1 as amended and claims dependent thereon. Applicant argues that the presence of a crosslinked starch, such as hydroxypropyl starch phosphate, makes it possible to limit, or even completely suppress, the occurrence of noodling behavior in the formulated composition, and a technical problem of the present invention is to formulate a composition for skin care which presents desired texture without the occurrence of noodling behavior for which the technical problem is solved by the present invention by including from 0.1% to 8% by weight of a crosslinked starch in the composition. Applicant argues that Legendre et al do not describe any composition comprising starches and at most suggest the optional use of starches as thickening agents however the crosslinked starches according to the present invention correspond to modified starches which constitute a specific and distinct subclass of starches. Applicant argues that even if a person of ordinary skill in the art were motivated by Legendre et al to introduce AMPS polymers and starches into the composition, such person would not be provided with any guidance as to the specific and let alone optimal content ranges for each of these distinct classes of compounds. Applicant argues that the scope of the claimed subject matter is now commensurate with the experimental evidence provided in the application.
The above arguments have been fully considered by the Examiner but are not found persuasive because, firstly, the obviousness rejections set forth in the Office action dated 11/28/2025 have been withdrawn and the teaching of Legendre et al is not applied as prior art in the obviousness rejections contained in the instant Office action, therefore rendering the above arguments regarding the teachings of Legendre et al and the modified cosmetic product of Legendre et al in view of Buckley et al moot. As can be seen in the new grounds of rejection under 35 USC 103 above, the bi-phase micellar liquid product of Sverdlove et al in view of Buckley et al meets all of the limitations of amended claim 1. Lastly, 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. Further, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
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
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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