DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed January 20, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Status
Claims 23 and 24 are newly added.
Claims 1 – 24 are examined here-in.
Claim Objections
Claim 24 is objected for minor informalities:
Claim 24 recites “from 0.1 to 0.5% by weight of ascorbic acid” twice in lines 2 and 4 of the claim. One of these instances should be removed.
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 non-obviousness.
Maintained: Claims 1 – 9, 12, 13, and 15 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Robert (US 2018/0085297 A1, of record) in view of Boswell (US 7,179,302 B2, of record).
Robert teaches cosmetic compositions to improve the appearance of the skin by providing anti-ageing benefits (abstract).
Robert teaches that vitamins A, C, and E provide health and vitality to the skin and teaches inclusion of vitamins in the amount of 0.01 to 5 wt. % (paragraphs 0011, 0031). Robert teaches that retinol (vitamin A), ascorbic acid (vitamin C), and tocopherol (vitamin E) are anti-wrinkle active compounds that reduce the appearance of wrinkles and fine lines (paragraphs 0043, 0044).
Robert teaches fatty alcohols may be included in the composition, including isostearyl alcohol, oleyl alcohol, and octyl dodecanol, among others (paragraphs 0010, 0028).
Robert teaches glycerol as a possible humectant and moisturizing agent for inclusion in the composition (paragraph 0041).
Robert teaches applying the cosmetic composition to the skin at a variety of possible time intervals as appropriate (paragraph 0032, claim 20).
Robert does not teach ethylenediaminedisuccinic acid salt in the amount of 0.01% to 2.5% by weight of the total composition.
Boswell teaches the missing element of Robert.
Boswell teaches that chelating agents are routinely used as stabilizers or preservatives in various compositions which would otherwise undergo decomposition too rapidly and could not be stored (column 2 lines 8 – 18). Boswell teaches ethylenediamine disuccinic acid (EDDS) as a an aminocarboxylic acid chelant suitable for inclusion in a cosmetic composition (column 5 lines 62 – 65, column 6 lines 57 - 67). Boswell teaches EDDS is a preferred chelant because it is a di-acid, whereas EDTA is not preferred because it is a tetraamino acid (column 6 lines 35 – 37). Boswell also teaches that EDTA has can be damaging to keratin fibers (column 21 lines 5 – 45).
Boswell teaches that EDDS should be included in an amount of at least 0.25% of the composition, noting that an amount less than 4% (column 9 lines 14 – 24). Boswell teaches that less effective chelating agents may be required in greater amounts to display the same activity as EDDS (column 9 lines 14 – 24).
The combined teachings of Robert and Boswell render instant claims 1 – 9, 12, 13, and 15 – 20 prima facie obvious according to MPEP 2143(i)(a) because it would have been obvious before the effective filing date of the instant application to combine the teachings of Robert and Boswell to make a cosmetic composition with retinol, EDDS, ascorbic acid, and tocopherol. A person of ordinary skill in the art would have been motivated to include EDDS in the amount taught by Boswell because Boswell teaches that EDDS is a powerful chelating agent that can be used in low amounts while maintaining efficacy (column 9 lines 14 – 24). Each of the claimed ingredients (retinol, EDDS, ascorbic acid, and tocopherol) is well-known in the art of cosmetic compositions, and a person of ordinary skill in the art would have been motivated to combine these ingredients as known options within his or her own technical grasp. The combination of Robert and Boswell’s teachings is prima facie obvious as combining prior art elements according to known methods to yield predictable results (MPEP 2143(i)(a)).
The combination of Robert and Boswell’s teachings reads on claim 1 of the instant application which requires retinol (in the amount of 0.02 to 5.0% by weight), EDDS (in the amount of 0.01 to 2.5% by weight), ascorbic acid (0.05 to 0.50% by weight), and tocopherol (0.05 to 1% by weight). Robert teaches the inclusion of retinol (vitamin A), ascorbic acid (vitamin C), and tocopherol (vitamin E) in a cosmetic composition as anti-wrinkle active compounds that reduce the appearance of wrinkles and fine lines, each in the amount of 0.01 to 5 wt. % (paragraphs 0011, 0031, 0043, 0044). Robert’s teaching for retinol, ascorbic acid, and tocopherol in the amount of 0.01 to 5 wt. % each overlaps with the instantly claimed amounts recited in claim 1. Boswell’s teaching for EDDS in an amount ranging from 0.25 to 4% of the composition (column 9 lines 14 – 24) overlaps on the instantly claimed range of 0.01 to 2.5% by weight of the total composition. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
A person of ordinary skill in the art would have been motivated to include EDDS as taught by Boswell because Boswell teaches that EDDS is a powerful chelating agent that can be used in low amounts while maintaining efficacy and that chelants are routinely used as stabilizers in compositions (column 2 lines 8 – 9, column 9 lines 14 – 24).
Robert’s teaching for retinol in the amount of 0.01 to 5 wt. % (paragraphs 0011, 0031) overlaps with the range of 0.05 to 3.0% retinol by weight of the total composition as recited in claim 2 in the instant application.
Boswell’s teaching for EDDS in an amount ranging from 0.25 to 4% of the composition (column 9 lines 14 – 24) overlaps on the instantly claimed ranges of 0.05 to 1.5% as recited in claims 3 and 19 of the instant application.
Robert’s teaching for ascorbic acid (or derivative magnesium ascorbyl phosphate) in the amount of 0.01 to 5 wt. % (paragraphs 0011, 0031, 0044) overlaps with the claimed range of 0.1 to 0.5% by weight of the total composition as recited in claims 4 and 20 of the instant application. Derivative magnesium ascorbyl phosphate read on claim 6 of the instant application. Ascorbic acid reads on claim 7 of the instant application.
Robert’s teaching for tocopherol (or derivative tocopheryl acetate) in the amount of 0.01 to 5 wt. % (paragraphs 0011, 0031, 0044) overlaps with the claimed range of 0.1 to 1% by weight of the total composition as recited in claim 5 of the instant application. Derivative tocopheryl acetate read on claim 8 of the instant application. Tocopherol reads on claim 9 of the instant application.
Boswell’s teachings for EDDS in the form of a sodium salt (column 6 lines 65 – 67) reads on claim 12 of the instant application.
Boswell’s teaching not to use EDTA as a chelant (column 6 lines 35 – 37, column 21 lines 5 - 45) reads on instant claim 13, which recites the amount of EDTA should be less than 0.01% by weight.
Robert’s teaching that fatty alcohols may be included in the composition, including isostearyl alcohol, oleyl alcohol, and octyl dodecanol, among others (paragraphs 0010, 0028) reads on instant claim 15, which recites the inclusion of a non-volatile hydrocarbon-based oil. Fatty alcohols such as isostearyl alcohol, oleyl alcohol, and octyldodecanol are suitable non-volatile hydrocarbon-based oils according to the instant specification (page 15 lines 5 – 7).
Robert’s teaching for glycerol as a possible humectant and moisturizing agent for inclusion in the composition (paragraph 0041) reads on claim 16 of the instant application.
Robert’s teaching that the cosmetic composition is to improve the appearance of the skin by providing anti-ageing benefits (abstract) reads on claim 17 which recites that the composition is a cosmetic keratin material caring composition.
Robert’s teaching to apply the cosmetic composition to the skin (paragraph 0032, claim 20) reads on claim 18 of the instant application which recites applying the composition to a keratin material.
Maintained: Claims 10, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Robert (as cited above), Boswell (as cited above), and further in view of Schelges (DE 102006062568 A1, citations to English translation by Espacenet, of record).
Robert and Boswell’s teachings are discussed above.
The combination of Robert and Boswell does not teach di-t-butyl pentaerythrityl tetrahydroxycinnamate or the inclusion of a UV-screening agent.
Schelges teaches the missing elements of the combination of Robert and Boswell.
Schelges teaches di-t-butyl pentaerythrityl tetrahydroxycinnamate as a stabilizer for cosmetic and pharmaceutical products (paragraphs 0001, 0013). Schelges shows the inclusion of di-t-butyl pentaerythrityl tetrahydroxycinnamate in a composition in amounts ranging from 0.0001 to 0.1 wt. % (paragraph 0085).
Schelges teaches that UV filter substances are commonly used in cosmetic compositions to product the product from decomposition and stabilize the color and odor of the composition (page 1 lines 33 – 35).
The combination of Robert, Boswell, and Schelges’ teachings to make a cosmetic composition with retinol, ascorbic acid, tocopherol, EDDS, and di-t-butyl pentaerythrityl tetrahydroxycinnamate is prima facie obvious as combining prior art elements according to known methods to yield predictable results. A person of ordinary skill in the art would have been motivated to include di-t-butyl pentaerythrityl tetrahydroxycinnamate as taught by Schelges because it acts as a stabilizer for cosmetic compositions (paragraphs 0001 and 0013). The combination of Robert, Boswell, and Schelges’ teachings is prima facie obvious as combining prior art elements according to known methods to yield predictable results (MPEP 2143(i)(a)).
Schelges’ teaching to include di-t-butyl pentaerythrityl tetrahydroxycinnamate in a cosmetic composition in the amount of 0.0001 to 0.1 wt. % (paragraph 0085), in combination with Robert and Boswell’s teachings of a cosmetic composition with retinol, EDDS, ascorbic acid, and tocopherol (detailed above) read on claims 10 and 11 of the instant application, which require di-t-butyl pentaerythrityl tetrahydroxycinnamate in an amount ranging from 0.01 to 2.5% by weight relative to the total composition. Schelges’ teaching of di-t-butyl pentaerythrityl tetrahydroxycinnamate in an amount ranging from 0.0001 to 0.1 wt.% overlaps on the claimed range of 0.01 to 2.5% by weight of the total composition as recited in instant claim 11. Claimed amounts that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Schelges’ teaching that UV filter substances are commonly used in cosmetic compositions to product the product from decomposition and stabilize the color and odor of the composition (page 1 lines 33 – 35) reads on instant claim 14. A person of ordinary skill in the art would be motivated to include a UV-filtering substance in a cosmetic composition because Schelges teaches that UV-filtering substances stabilize color and odor of cosmetic compositions (page 1 lines 33 – 35).
Maintained: Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Robert (as cited above), Boswell (as cited above), and further in view of Ormancey (US 2018/0360717 A1, of record).
As discussed above, the combination of Robert and Boswell teaches a cosmetic composition which includes retinol, EDDS, ascorbic acid, and tocopherol in the claimed amounts.
The combination of Robert and Boswell does not teach the composition is an oil-in-water emulsion or the inclusion of butyl hydroxytoluene (BHT).
Ormancey teaches the missing elements of Robert and Boswell.
Ormancey teaches an emulsion cosmetic composition that does not include undesirable ingredients such as EDTA (abstract).
Ormancey teaches that emulsions with oil and water phases are a popular formulation for cosmetics (paragraph 0007). However, Ormancey teaches that many conventional emulsions have the drawback of including synthetic ingredients that are not beneficial to the skin, such as EDTA (paragraphs 0025, 0030). Ormancey teaches a cosmetic composition which does not include BHT and EDTA (paragraphs 0003, 0071). Ormancey teaches that BHT and EDTA are undesirable ingredients (paragraphs 0025, 0071).
The combined the teachings of Robert, Boswell, and Ormancey render claims 21 and 22 prima facie obvious as combining prior art elements according to known methods to yield predictable results. A person of ordinary skill in the art would have been motivated to modify the composition of Robert and Boswell with the teachings of Ormancey because BHT and EDTA are undesirable ingredients (paragraphs 0025, 0071). The combination of Robert, Boswell, and Ormancey’s teachings is prima facie obvious according to MPEP 2143(i)(a).
Ormancey’s teaching that emulsions with oil and water phases are a popular formulation for cosmetics (paragraph 0007) reads on instant claim 21.
Ormancey’s teaching to exclude BHT and EDTA from cosmetic compositions because they are undesirable ingredients reads on instant claim 22.
A person of ordinary skill in the art would be motivated to make an oil-in-water emulsion composition that does not contain BHT or EDTA because Ormancey teaches that emulsions are desirable formulations for cosmetics and that the exclusion of BHT and EDTA is beneficial for the skin (abstract, paragraph 0003, 0007, 0025, 0030, 0071).
New, Necessitated by Amendment: Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Robert (as cited above), Boswell (as cited above), and further in view of Liu (US 2011/0189249 A1).
Robert and Boswell’s teachings are discussed above.
The combination of Robert and Boswell does not teach the functional limitation of new claim 23 “whereby retinol is stabilized”.
Liu teaches the missing elements of the combination of Robert and Boswell.
Liu teaches a composition containing retinol (abstract, paragraph 0011). Liu teaches that retinol can reduce fine lines and wrinkles and increase collagen production, however, retinol degrades rapidly when exposed to light or oxygen (paragraph 0002).
Liu teaches the composition is a water-in-oil emulsion which has a chelating agent in the aqueous phase and an oil-soluble antioxidant in the oil phase to stabilize the retinoid in the composition (paragraphs 0014 – 0015). Liu teaches the oil soluble antioxidant can be ascorbyl palmitate or alpha-tocopherol in an amount of 0.01 to 1% of the composition (paragraph 0041).
Liu teaches the inclusion of a chelating agent stabilizes the retinoid by forming complexes with metal ions and preventing them from interacting with the retinoid (paragraph 0039).
In Example 1, Liu shows that a composition with retinol, tocopheryl acetate, ascorbic acid, and a chelant was stable for extended periods of time at elevated temperatures (paragraphs 0042 – 0052).
The combination of Robert, Boswell, and Liu’s teachings is prima facie obvious as combining prior art elements according to known methods to yield predictable results. A person of ordinary skill in the art would be motivated to use a chelant, ascorbyl palmitate, and alpha-tocopherol in the composition of Robert and Boswell because Liu teaches that these components are effective for stabilizing retinol. Therefore, this combination is prima facie obvious as combining prior art elements according to known methods to yield predictable results (MPEP 2143(i)(a).
Robert’s teaching for a composition which retinol (vitamin A), ascorbic acid (vitamin C), and tocopherol (vitamin E) as anti-wrinkle active compounds that reduce the appearance of wrinkles and fine lines, each in the amount of 0.01 to 5 wt. % (paragraphs 0011, 0031, 0043, 0044), in combination with Boswell’s teaching for EDDS as a chelant in an amount ranging from 0.25 to 4% of the composition (column 9 lines 14 – 24), with Liu’s teachings that the inclusion of oil-soluble antioxidants (such as ascorbyl palmitate and alpha-tocopherol) and a chelating agent function to stabilize the retinoid in the composition (paragraphs 0014 – 0015, 0039, 0041) reads on claim 23.
A person of ordinary skill in the art would be motivated to include EDDS sodium salt as the chelant because Boswell teaches that EDDS is a powerful chelating agent that can be used in low amounts while maintaining efficacy and that EDDS is preferred over EDTA because it is a di-acid rather than a tetraamino acid (column 2 lines 8 – 9, column 6 lines 35 – 37, column 6 lines 65 – 67, column 9 lines 14 – 24).
Robert’s teaching for retinol (vitamin A), ascorbic acid (vitamin C), and tocopherol (vitamin E) each in amounts of 0.01 to 5 wt. % (paragraphs 0011, 0031, 0043, 0044) overlaps on the instantly claimed range of 0.05 to 3.0%, 0.1 to 0.5%, and 0.05 to 1% as recited in claim 24. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Boswell’s teaching for EDDS as a chelant in an amount ranging from 0.25 to 4% of the composition (column 9 lines 14 – 24) overlaps on the instantly claimed range of 0.05 to 1.5% by weight as recited in claim 24.
Examiner’s Reply to Attorney Arguments Dated January 20, 2026
Applicant argues that Robert does not teach that vitamins A, C, and E all must be included in the composition, stating “the only vitamin included in the examples in Robert is vitamin E” (Remarks page 8). First, the Examiner notes that the teachings of the prior art are not limited to the examples, but include the full disclosure of the prior art reference, including nonpreferred and alternative embodiments, according to MPEP 2123. As discussed in the body of the rejection above, Robert teaches that vitamins A, C, and E provide health and vitality to the skin and that these vitamins are anti-wrinkle active compounds (paragraphs 0011, 0031, 0043, 0044). A person of ordinary skill in the art would be motivated to include each of these compounds in a cosmetic composition because Robert teaches they provide health and vitality to the skin and combat the formation of wrinkles (paragraphs 0011, 0031, 0043, 0044).
Applicant argues that the cited art fails to teach all the claim recitations, appearing to refer to Robert (Remarks page 8). Applicant also argues that Robert discloses many auxiliary ingredients but does not disclose the inclusion of a chelant, reasoning that it would therefore not be apparent why a person of ordinary skill in the art would be motivated to look to include a chelant (Remarks page 10). In response to applicant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See MPEP 2145(IV). Robert’s teachings are not relied upon for inclusion of chelant EDDS, rather the combination of Robert and Boswell’s teachings.
Applicant argues that the problem confronted by the inventor must be considered in determining whether it would have been obvious to combine features in the art to solve that problem, citing case law from 1988, 1988, and 1976 (Remarks page 8). Applicant also argues that a person of ordinary skill in the art would not have had a reasonable expectation of addressing the problems of concern according to the present invention with respect to retinol (Remarks page 10). Applicant emphasizes that the claimed invention is directed towards stabilizing retinol in cosmetic compositions because retinol can break down and cause an unpleasant odor. As discussed in the Final Rejection dated March 20, 2025 and the Non-Final Rejection dated October 27, 2025, the Examiner disagrees with Applicant’s arguments regarding the necessity to consider the problem confronted by the inventor with regards to obviousness under 35 U.S.C. 103. According to MPEP 2141(2), under KSR the question of obviousness mut be resolved on the basis of A) determining the scope and content of the prior art, B) ascertaining the differences between the claimed invention and the prior art, and C) resolving the level of ordinary skill in the pertinent art. MPEP 2141(I) notes that the Court in KSR stated that “[t]he first error…in this case was…holding that courts and patent examiners should look only to the problem the patentee was trying to solve. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter…The second error [was]…that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.” KSR, 550 U.S. at 420, 82 USPQ2d at 1397. Accordingly, to establish obviousness under 35 U.S.C. 103 it is not proper that the Examiner should look only to the problem confronted by the inventor.
Applicant argues that a person of ordinary skill in the art would not look to Boswell to address the problems of the instant invention (Remarks page 9) and that “the Examiner has failed to articulate a reasonable explanation as to why a person of ordinary skill in the art would have been led or motivated” to make the modifications of Boswell to Robert (Remarks pages 10 and 11). As addressed in the body of the rejection above, Boswell teaches that chelating agents are routinely used as stabilizers or preservatives in various compositions which would otherwise undergo decomposition too rapidly and could not be stored (column 2 lines 8 – 18). Therefore, a person of ordinary skill in the art would have been motivated to include a chelant, as taught by Boswell, in the composition of Robert in order to stabilize or preserve the composition. Although Robert does not explicitly disclose instability or degradation as a problem, a person of ordinary skill in the art would reasonably expect the inclusion of a chelant to have a positive effect in a cosmetic composition, because Boswell teaches chelants are routinely used to stabilize compositions (column 2 lines 8 – 18). Said differently, a person of ordinary skill in the art would have been motivated to include EDDS in the amount taught by Boswell because Boswell teaches that EDDS is a powerful chelating agent that can be used in low amounts while maintaining efficacy (column 9 lines 14 – 24). Each of the claimed ingredients (retinol, EDDS, ascorbic acid, and tocopherol) is well-known in the art of cosmetic compositions, and a person of ordinary skill in the art would have been motivated to combine these ingredients as known options within his or her own technical grasp. The combination of Robert and Boswell’s teachings is prima facie obvious as combining prior art elements according to known methods to yield predictable results (MPEP 2143(i)(a)).
Applicant argues that the prior art of Schelges does not cure the alleged deficiencies associated with the combination of Robert and Boswell (Remarks page 10). The Examiner disagrees, because as discussed in the body of the rejection above, a person of ordinary skill in the art would have been motivated to include di-t-butyl pentaerythrityl tetrahydroxycinnamate as taught by Schelges because it acts as a stabilizer for cosmetic compositions (paragraphs 0001 and 0013).
Applicant argues that the prior art of Ormancey does not cure the alleged deficiencies associated with the combination of Robert and Boswell (Remarks page 11). The Examiner disagrees, because as discussed in the body of the rejection above, Ormancey teaches that many conventional emulsions have the drawback of including synthetic ingredients that are not beneficial to the skin, such as EDTA (paragraphs 0025, 0030). Ormancey teaches a cosmetic composition which does not include undesirable ingredients of BHT and EDTA (paragraphs 0003, 0025, 0071). A person of ordinary skill in the art would have been motivated to modify the composition of Robert and Boswell with the teachings of Ormancey because BHT and EDTA are undesirable ingredients (paragraphs 0025, 0071).
Applicant argues improper hindsight (Remarks page 11). In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See MPEP 2145(X)(A). For example, with regard to EDDS in the claimed amounts, a person of ordinary skill in the art would have been motivated to include EDDS as taught by Boswell because Boswell teaches that chelants are routinely used as stabilizers in compositions and that EDDS is a powerful chelating agent that can be used in low amounts while maintaining efficacy (column 2 lines 8 – 9, column 9 lines 14 – 24).
Applicant argues generally that the art of chemistry is unpredictable (with references to In re Dillon 919F.2d 688 Fed. Cir. 1990), appearing to conclude that a person of skill in the art would not have had a reasonable expectation of success (Remarks page 12). The Examiner disagrees, because as discussed in the body of the rejection above, each of the claimed ingredients (retinol, EDDS, ascorbic acid, and tocopherol) is well-known in the art of cosmetic compositions, and a person of ordinary skill in the art would have been motivated to combine these ingredients as known options within his or her own technical grasp. The combination of Robert and Boswell’s teachings for retinol, EDDS, ascorbic acid, and tocopherol, would lead a person of ordinary skill in the art to expect these ingredients to make a cosmetic composition with the active ingredients of retinol, ascorbic acid, and tocopherol (as taught by Robert) that is stabilized by EDDS.
Applicant argues that unexpected results can overcome a 35 U.S.C. 103 rejection with reference to In re Papesch, 137 USPQ 43 (CCPA 1963) (Remarks pages 12 and 13). Although Applicant has not explicitly argued unexpected results in this set of Remarks, the Examiner re-iterates that a thorough discussion of unexpected results was made on pages 12 and 13 of the Non-Final Rejection dated October 27, 2025. Briefly, a proper side-by-side comparison to the closest prior art as required by MPEP 216.02(e) was not made. The data presented in Applicant’s comparison of compositions I1 to I5 with CC1 to CC4 does not support Applicant’s allegation that inclusion of EDDS and exclusion of EDTA and BHT results in less retinol loss than is observed in compositions with EDTA and BHT (but without EDDS). MPEP 716.01(c)(II) and 716.02(b)(II) require that Applicant’s data supports any conclusion of unexpected results. Finally, and purely arguendo, even if Applicant has in fact shown unexpected results (of which the Examiner is not persuaded at this time), the Examiner notes that Applicant’s alleged showing is in regards to retinol degradation in the presence of 0.2% of 37% active material EDDS solution (which would be approximately 0.074% EDDS per the total composition) which does not appear to be “reasonably representative” of the claims in their current scope. See MPEP 716.02(d). It is unclear that a composition containing 0.1 to 0.2% retinol, 0.074% EDDS, 0.1 to 0.5% ascorbic acid, 0.1 to 1% tocopherol, and 0% BHT or EDTA would be reasonably representative of compositions containing 0.02 to 5.0% retinol, 0.01 to 2.5% EDDS, 0.05 to 0.5% ascorbic acid, 0.05 to 1% tocopherol, and less than 0.2% BHT or EDTA thereby falling within the broader scope of what is presently claimed.
Applicant’s submission of a terminal disclaimer over copending application 17/905,190 on July 15, 2025 (as discussed on Remarks page 13) is acknowledged. As such, there are no outstanding double patenting rejections.
Conclusion
Applicant's amendment necessitated the new grounds 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612