Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Applicants’ amendments and arguments filed 11/26/2025 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claims 1-35 are canceled.
Claims 36-55 are newly added.
Claims 36-55 are examined on the merits.
New Rejections Necessitated by New Claims
Claim Interpretation
In regards to claim 36, as to the limitation of 'is capable of holding more than one application portion of the cosmetic preparation' it is noted that the instant claims are composition claims and future intended use, such as holding more than one application, is not given patentable weight. Thus any composition, comprising a cosmetic product comprising (a) a cosmetic preparation comprising hydroxypropyl starch phosphate and (b) a packaging with a hole will meet this limitation.
In regards to claim 36, as to the limitation of ‘can be dispensed in the form of a flow’ it is noted that the instant claims are composition claims and future intended use, such as dispensing in the form of a flow, is not given patentable weight. Thus any cosmetic product comprising (a) a cosmetic preparation comprising hydroxypropyl starch phosphate and (b) a packaging with a hole will meet this limitation.
In regards to claim 38, as to the limitation of ‘can be closed after dispensing a portion of the cosmetic preparation’ it is noted that the instant claims are composition claims and future intended use, such as dispensing and then closing, is not given patentable weight. Thus any cosmetic product meeting the limitations of the instant claim 36 from which claim 38 depends upon will meet this limitation.
In regards to claim 40, as to the limitation of ‘can be removed to allow the cosmetic preparation to flow out of the dispensing opening and put on the bottle to prevent the preparation from flowing out of the dispensing opening’ it is noted that the instant claims are composition claims and future intended use, such removing the lid to allow flow or put used to prevent flow, is not given patentable weight. Thus any cosmetic product meeting the limitations of the instant claim 39 from which claim 40 depends and having a lid or cap upon will meet this limitation.
As to the limitations of claims 54-55, applicant is reminded this is a composition/product claim and the prior art teaches a cosmetic product comprising a preparation comprising hydroxypropyl starch phosphate thereby since a product is not separable from its physical properties then it necessarily teaches the preparation has a viscosity of from 1800-8500 mPas and a yield point of from 9-23 Pa.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 41 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 41 recites the limitation of “wherein the bottle has a volume of at least 200mL”, however, claim 41 is dependent upon claim 36 which makes no mention of “bottle”. Therefore, there is insufficient antecedent basis for this limitation in the claim.
For the purpose of moving prosecution forward, the examiner broadly interprets claim 41 to mean any container or package having a volume of at least 200mL.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claims 36-38, 43-44, 47-48, and 50-55 are rejected under 35 U.S.C. 103 as being unpatentable over Salzer et al. (DE10330247A1, published 12/02/2004, found in the previous office action, translation via google, hereafter Salzer).
Salzer teaches a cosmetic composition in single-serving packs (title; according to the claim limitations of the instant claim 36). Salzer teaches the packaging may be as a single-serving portion pack 1 or a plurality of single-serving portions packs which are attached to one another (abstract; according to the claim limitations of the instant claim 36). Salzer claims the cosmetic composition which is present as a flowable, pasty, liquid or gel-like preparation (claim 1; according to the claim limitations of the instant claim 36). Furthermore, Salzer claims the single-serving packs has an opening and contains the cosmetic composition (claim 1; according to the claim limitations of the instant claim 36). Salzer teaches the opening is circular, oval, and a hollow sphere so the consumer can flow the cosmetic product from the container (page 4, paragraph 11; according to the claim limitations of the instant claim 36). Further, Salzer claims the one-time portion pack, in particular for a cosmetic composition, consisting of a cup-like container part with a closure flange which projects essentially radially outwards from the enclosed opening (claim 5; according to the claim limitations of the instant claims 36-37). Claim 5 of Salzer further claims the container part contains a cosmetic composition which is present as a flowable, pasty, liquid or gel-like preparation, or as a powder, granulate or shaped body (according to the claim limitations of the instant claim 36). Salzer teaches the cosmetic contains polymers, specifically hydroxypropyl starch phosphate (page 9, paragraph 4; according to the claim limitations of the instant claim 36). Claim 2 of Salzer claims the concentration of the polymer to be preferably in an amount from 0.01 to 30% by weight of the total cosmetic composition (according to the claim limitations of the instant claims 43-44). Salzer teaches the additional of cosmetic oil bodies, specifically the triglyceride oil, coconut oil stating these increase the effect of the active ingredients (page 16, paragraph 3; according to the claim limitations of the instant claim 47). Salzer teaches a sample skin emulsion (O/W) which comprises glyceryl stearate, caprylic/capric triglyceride, and cetyl-/stearylalcohol (page 64, example 43 skin emulsions; according to the claim limitations of the instants claims 47-48 and 50). Salzer teaches the addition of penetration and/or swelling aids to include 1,2-propanediol, 1,2-pentanediol, 1,2-hexanediol, 1,2-dodecanediol, 1,3-propanediol, 1,6-hexanediol, 1,5-pentanediol, and 1,4-butanediol (page 25, paragraph 17; according to the claim limitations of the instant claim 51). Salzer further teaches the composition to contain thickeners such as xanthan gum and solvents such as ethanol (page 27, last paragraph; according to the claim limitations of the instant claims 52-53). Lastly, Salzer claims the cosmetic composition to have a viscosity of 100 to 105 mPas (claim 3; according to the claim limitations of the instant claim 54).
It would be obvious to one skilled in the art at the time of filing would claim a cosmetic product comprising a composition comprises hydroxypropyl starch phosphate and a packaging having a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow as outlined by Salzer. A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”.
Claims 39-41 are rejected under 35 U.S.C. 103 as being unpatentable over Salzer et al. (DE10330247A1, published 12/02/2004, translation via google, hereafter Salzer) in view of Gomez-Berrada et al. (Gomez-Berrada, M. P., Ficheux, A. S., Galonnier, M., Rolfo, J. E., Rielland, A., Guillou, S., De Javel, D., Roudot, A. C., & Ferret, P. J. (2017). Influence of the container on the consumption of cosmetic products. Food and Chemical Toxicology, 109, 230–236. https://doi.org/10.1016/j.fct.2017.09.005 , hereafter Gomez).
As outlined above, Salzer teaches the cosmetic product of claim 36. Salzer fails to teach the cosmetic product is in a bottle with a lid and fails to teach the container has a volume of at least 200ml as in instant claims 39-41.
Gomez teaches the influence of the container of the consumption of cosmetic products (title). Gomez teaches the container, also known as primary package has impact on the consumption of cosmetic products such as shampoo, shower gel, and emollient cream (abstract). Gomez teaches that many containers may be of different form (bottle, tube, jars…), of different materials (plastic, glass, metal…), and of different closure and distribution systems including pump, cap, or sprayer (page 230, introduction, paragraph 3). Gomez teaches each of the containers had a 200ml capacity (page 231, materials and methods, paragraph 2.1).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a cosmetic product comprising (a) cosmetic preparation comprising hydroxypropyl starch phosphate, and (b) a packaging container with a hole as outlined by Salzer ready for improvement with the known technique of using a cosmetic packaging container that is 200mL, a bottle, and has a cap as outlined by Gomez. Adding the forementioned limitations to a cosmetic product with a packaging container as claimed by instant claims 39-41 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Claims 45-46 are rejected under 35 U.S.C. 103 as being unpatentable over Salzer et al. (DE10330247A1, published 12/02/2004, translation via google, hereafter Salzer) in view of Journal of The American College of Toxicology (Hydantoin, M. D. M. "Final Report on the Safety Assessment of DMDM Hydantoin." JOURNAL OF THE AMERICAN COLLEGE OF TOXICOLOGY 7.3 (1988)., hereafter J Am Coll Toxicol).
As outlined above, Salzer teaches the cosmetic product of claim 36. Furthermore, Salzer teaches cosmetic to be free of preservatives as many preservatives irritate the skin (abstract and page 2, description, paragraph 7). However, Salzer fails to teach the composition is free of DMDM hydantoin.
J Am Coll Toxicol teaches a final report of the safety of DMDM hydantoin (title). J Am Coll Toxicol teaches that DMDM hydantoin is a preservative commonly used in cosmetic products (page 245, abstract). J Am Coll Toxicol teaches DMDM hydantoin can cause moderate skin irritation (page 245, abstract).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would modify the free of preservative cosmetic product outlined by Salzer by removal of DMDM hydantoin as outlined by J Am Coll Toxicol under TSM, see MPEP 2143(G). As outlined by J Am Coll Toxicol, DMDM hydantoin is a known cosmetic preservative that causes moderate skin irritation which would motivate someone skilled in the art to advantageously create the cosmetic composition of Salzer without DMDM hydantoin as it would have a reasonable expectation of success.
Claim 49 is rejected under 35 U.S.C. 103 as being unpatentable over Salzer et al. (DE10330247A1, published 12/02/2004, translation via google, hereafter Salzer) in view of Cosmetics Info (Glyceryl stearate. Glyceryl Stearate | Cosmetics Info. (2020, April 30). https://web.archive.org/web/20200430155920/https://cosmeticsinfo.org/ingredient/glyceryl-stearate, via wayback machine, hereafter Cosmetics Info).
As outlined above, Salzer teaches the cosmetic product of claim 36. The skin emulsion described above by Salzer further comprises Salzer teaches a sample skin emulsion (O/W) which comprises glyceryl stearate, caprylic/capric triglyceride, and cetyl-/stearylalcohol (page 64, example 43 skin emulsions) However, Salzer fails to claim glyceryl stearate SE as the emulsifier.
Cosmetics Info teaches that glyceryl stearate SE is the self-emulsifying form of glyceryl stearate which is widely used and can be found in lotions, creams, skin cleansing products, makeup bases, foundations, mascara, eye shadow, eyeliner, hair conditioner, rinses, suntan, and sunscreen (page 1, what is it?). Cosmetics Info further teaches that both glyceryl stearate and glyceryl stearate SE help to form emulsions by reducing the surface tension of the substances to be emulsified (page 1, why is it used).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a cosmetic product comprising a cosmetic preparation comprising hydroxypropyl starch phosphate and a packaging having a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow as outlined by Salzer with the simple substitution of glyceryl stearate SE as the emulsifier as outlined by Cosmetics Info. Simple substitution of one emulsifier for another is within the purview of the skilled artisan and would yield predictable results.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Salzer et al. (DE10330247A1, published 12/02/2004, translation via google, hereafter Salzer) in view of Odile et al. (FR3002141A1, published 08/22/2014, translation provided by PE2E search, hereafter Odile).
As outlined above, Salzer teaches the cosmetic product of claim 36. Salzer fails to teach the packaging comprises HDPE as in instant claim 42.
Odile teaches an oil-in-water emulsion cosmetic comprising at least one water-soluble polysaccharide (title and abstract). Odile further teaches the composition to have a viscosity of 1500-12000 mPas (abstract). Odile further teaches the use of starches, specifically hydroxypropyl starch phosphate (page 6, first paragraph). Odile further teaches the cosmetic product is present in a container in which the composition flows through the passage and orifice of the container (page 14, paragraph 3). Further Odile teaches the product is extracted from the container via the dispensing orifice (page 11, paragraph 3). Lastly, Odile teaches the wall of the container to be sufficiently rigid and provides the example composition for the wall to include polyethylene high density (HDPE)(page 11, paragraph 7).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a cosmetic product comprising a cosmetic preparation comprising hydroxypropyl starch phosphate and a packaging having a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow as outlined by Salzer with the ready for improvement with the known technique of utilizing HDPE in the product packaging as outlined by Odile. Utilizing the forementioned components in a cosmetic product comprising a packaging and hydroxypropyl starch phosphate as claimed by instant claim 42 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
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 36, 43-49, and 51-54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of the following copending Application No.: 17/754,432 (notice of allowance filed 02/12/2026), 17/753,224, 17/753,225, 18/001,738, 17/754,427, 17/753,344, and 17/754,428 in view of Salzer et al. (DE10330247A1, published 12/02/2004, translation via google, hereafter Salzer). Although the claims at issue are not identical, they are not patentably distinct from each other.
17/754,432 claims a skin care composition comprising hydroxypropyl starch phosphate (claim 35; according to the claim limitations of the instant claim 36). Furthermore, 17/754,432 claims the composition further comprises ethanol (claim 37; according to the claim limitations of the instant claim 53).
17/753,224 claims a cosmetic preparation that comprises hydroxypropyl starch phosphate (claim 16; according to the claim limitations of the instant claim 36). Claim 19 of 17/753,224 further claims the composition to comprise caprylic acid/capric acid triglycerides (according to the claim limitations of the instant claim 47). Claim 21 of 17/753,224 claims the composition is an emulsion and claim 22 of 17/753,224 claims the composition is an oil-in-water (O/W) emulsion (according to the claim limitations of the instant claim 48). Claim 23 of 17/753,224 claims the composition is free from parabens, methylisothiazolinone, chloromethylisothiazolinone, and DMDM hydantoin (according to the claim limitations of the instant claim 46). Claim 26 of 17/753,224 claims the composition further comprises one or more emulsifiers selected from glyceryl stearate, polyglyceryl-3 diisosterate, sodium cetearyl sulfate, and glyceryl stearate citrate (according to the claim limitations of the instant claim 49). Claim 30 claims the preparation further comprises one or more alkanediols selected from 1,2-pentanediol, 1,2-hexanediol, 1,2-octanediol, 1,2-decanediol, 2-methyl-1,3-propanediol, and ethylhexylglycerin (according to the claim limitations of the instant claim 51). Claim 34 of 17/753,224 claims the preparation further comprises ethanol (according to the claim limitations of the instant claims 53). Lastly, 17/753,224 claims the concentration of hydroxypropyl starch phosphate to be 0.2-5% of the total weight of the preparation (according to the claim limitations of the instant claims 43-44).
17/753,225 claims a cosmetic preparation comprising hydroxypropyl starch phosphate (claim 17; according to the claim limitations of the instant claim 36). 17/753,225 claims the preparation further comprises one or more compounds selected from caprylic acid/capric acid triglycerides and coco glycerides (claim 22; according to the claim limitations of the instant claim 47). Claim 23 of 17/753,225 further claims the concentrations of hydroxypropyl starch phosphate to be from 0.2-5% of the total weight of preparation (according to the claim limitations of the instant claims 43-44). 17/753,225 further claims the composition to be an emulsion, specifically an oil-in-water (O/W) emulsion (claims 42 and 49; according to the claim limitations of the instant claim 23). Claim 26 of 17/753,225 claims the preparation is free from polyethylene glycol ethers and esters and free from parabens, methylisothiazolinone, chloromethylisothiazolinone and DMDM hydantoin (according to the claim limitations of the instant claim 46). Claim 28 of 17/753,225 claims the preparation further comprises one or more emulsifiers selected from glyceryl stearate citrate, glyceryl stearate, stearic acid, sodium stearoyl glutamate, sodium cetearyl sulfate, glyceryl stearate SE, and polyglyceryl-3 diisostearate (according to the claim limitations of the instant claim 49). Claim 32 of 17/753,225 claims the preparation further comprises one of more of 1,2-pentanediol, 1,2-hexanediol, 1,2-octanediol, 1,2-decanediol, 2-methyl-1,3-propanediol, and ethylhexylglycerin (according to the claim limitations of the instant claim 51). Claim 35 of 17/753,225 claims the preparation further comprises ethanol (according to the claim limitations of the instant claim 53).
18/001,738 claims a cosmetic oil-in-water emulsion (O/W emulsion) wherein the emulsion is free from carbomers, polyacrylates, parabens, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, polyethylene glycol ethers and polyethylene glycol esters ; and comprises hydroxypropyl starch phosphate (claim 36; according to the claim limitations of the instant claims 36, 45, 46, and 48). 18/001,738 claims the concentration of hydroxypropyl starch phosphate to be 0.75-1.5% by weight in claim 36 (according to the claim limitations of the instant claim 43-44). Claim 44 of 18/001,738 claims the emulsion to further comprise one or more of octane-1,2-diol, decane-1,2-diol, and 2- methylpropane-1,3-diol (according to the claim limitations of the instant claim 51). Claim 46 of 18/001,738 claims the emulsion further comprising xanthan gum (according to the claim limitations of the instant claim 52). Claim 36 of 18/001,738 claims the emulsion further comprises one of more compounds selected from dicaprylyl ether and cetyl palmitate (according to the claim limitations of the instant claims 47 and 52). Lastly, 18/001,738 claims the emulsion further comprises one or more emulsifiers selected from glyceryl stearate, glyceryl stearate SE and sodium cetearyl sulfate (claim 36; according to the claim limitations of the instant claim 49).
17/754,427 claims a skin care composition comprising hydroxypropyl starch phosphate as a thickener (claims 33 and 39; according to the claim limitations of the instant claim 36). Claim 33 of 17/754,427 further claims the composition comprising one or both of dicaprylyl carbonate and ethylhexyl cocoate (according to the claim limitations of the instant claim 47). Claim 42 of 17/754,427 claims the composition further comprises one or more of ethanol, phenoxyethanol, caprylyl glycol, and methylpropanediol as a preservative (according to the claim limitations of the instant claims 51 and 53).
17/753,344 claims a cosmetic oil-in-water (O/W) emulsion wherein the emulsion is acrylate-free and comprises (a) stearic acid and (b) 0.1-5% by weight of hydroxypropyl starch phosphate (claim 16; according to the claims limitations of the instant claims 36, 43-45, and 48-49). Claim 23 of 17/753,344 claims the concentration of (b) to be 0.2-3.8% and claim 24 of 17/753,344 further narrows that range to 0.4-3% (according to the claim limitations of the instant claims 43-44). Claim 26 of 17/753,344 claims the composition further comprises glyceryl stearate citrate (according to the claim limitations of the instant claim 49). Claim 36 of 17/753,344 claims a cosmetic oil-in-water (O/W) emulsion, wherein the emulsion is acrylate- and silicone-free and comprises, based on a total weight of the emulsion, (a) from 0.1% to 6% by weight of at least one fatty acid having 12 to 22 carbon atoms, (b) from 0.1% to 5% by weight hydroxypropyl starch phosphate, and (c) from 0.1% to 5% by weight of glyceryl stearate (according to the claim limitations of the instant claims 36 and 43-44). Lastly, claim 37 of 17/753,344 claims the composition of claim 36 further comprising glyceryl stearate citrate and/or polyglyceryl-3-diisostearate (according to the claim limitations of the instant claim 49).
17/754,428 claims a skin care composition comprising 0.05-10% (w/w) of hydroxypropyl starch phosphate (claims 33 and 36; according to the claim limitations of the instant claims 36 and 43-44). Claim 37 of 17/754,428 further narrows the concentrations of hydroxypropyl starch phosphate to 0.5-7.5% (w/w) of hydroxypropyl starch phosphate (according to the claim limitations of the instant claims 36 and 43-44). Claim 39 of 17/754,428 claims the composition further comprises dicaprylyl carbonate and/or ethylhexyl cocoate as emollient (according to the claim limitations of the instant claim 47). Claim 42 of 17/754,428 claims the composition further comprises one or more of ethanol, phenoxyethanol, caprylyl glycol, and methylpropanediol as preservative (according to the claim limitations of the instant claims 51 and 53).
All the above copending applications fail to claim the composition is a cosmetic product having a packaging with a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow as in the instant claim 36.
As outlined above, Salzer teaches a cosmetic product comprising a composition comprises hydroxypropyl starch phosphate and a packaging having a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow.
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a cosmetic product comprising hydroxypropyl starch phosphate as outlined by 17/754,432 (notice of allowance filed 02/12/2026), 17/753,224, 17/753,225, 18/001,738, 17/754,427, 17/753,344, and 17/754,428 applications with the ready for improvement of the known technique of storing the composition in a package having a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow as outlined by Salzer. Adding the forementioned limitations to a hydroxypropyl starch phosphate cosmetic composition as claimed by instant claim 36 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the patent applications claim a skin care composition comprising the same components in the same amounts in various permutations.
Claims 36, 43-45, 47-49, 51, and 54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12409129B2, U.S. Patent No. 125277312B2, and U.S. Patent No. 12343422B2 in view of Salzer et al. (DE10330247A1, published 12/02/2004, translation via google, hereafter Salzer). Although the claims at issue are not identical, they are not patentably distinct from each other.
US12409129B2 claims a skin care composition comprising hydroxypropyl starch phosphate (claim 8; according to the claim limitations of the instant claim 36).
US12527731B2 claims a cosmetic emulsion wherein the emulsion is an O/W emulsion which contains 0% acrylate-based polymers (claim 1; according to the claim limitations of the instant claims 36, 45, and 48). Claim 1 of US12527731B2 further claims the composition to comprise from 0.2% to 3% hydroxypropyl starch phosphate (according to the claim limitations of the instant claims 36 and 43-44). Furthermore, claim 16 of US12527731B2 claims the composition to comprise at least one substance selected from sodium stearoyl glutamate, alkali metal alkyl sulfates and alkali metal alkyl phosphates, wherein the alkyl group has in each case 16 to 18 carbon atoms, claim 2 of US12527731B2 further defines this as sodium stearoyl glutamate, and claim 3 of 17/271,261 further defines this as one or more of sodium cetyl sulfate, sodium stearyl sulfate, and sodium cetearyl sulfate (according to the claim limitations of the instant claim 49). Claim 4 of US12527731B2 further defines the substance selected from sodium stearoyl glutamate, alkali metal alkyl sulfates and alkali metal alkyl phosphates, wherein the alkyl group has in each case 16 to 18 carbon atoms to be alkali metal alkyl phosphates and claim 5 of US12527731B2 narrows this to potassium cetyl phosphate (according to the claim limitations of the instant claim 49). Claim 11 of US12527731B2 claims the composition further comprises one or more of 2-methylpropane-1,3-diol, 1,2-pentanediol, 1,2-hexanediol, 1,2-octanediol, glyceryl caprylate, 1,2-decandiol (according to the claim limitations of the instant claim 51).
US12343422B2 claims a cosmetic oil-in-water emulsion wherein the emulsion comprises at least one substance selected from alkali metal alkyl sulfates, wherein the alkyl group comprises 15 to 19 carbon atoms (a), hydroxypropyl starch phosphate (b), and glyceryl stearate SE (c) (claim 1; according to the claim limitations of the instant claims 36 and 48-49). Claim 2 of US12343422B2 claims the component (a) of claim 1 to comprise one or more of sodium cetyl sulfate, sodium stearyl sulfate, and sodium cetearyl sulfate (according to the claim limitations of the instant claim 49). Claim 5 of US12343422B2 claims the concentration of hydroxypropyl starch phosphate to be from 0.1-5% by weight and claim 6 of US12343422B2 further narrows that range to 0.15-4% by weight (according to the claim limitations of the instant claims 43-44). Claim 15 of US12343422B2 claims the emulsion further comprises coco glycerides and claim 15 of US12343422B2 claims the emulsion further comprises coco caprylate/caprate (according to the claim limitations of the instant claim 47). Lastly, US12343422B2 claims the emulsion to have a viscosity of 3,000 mPas to 6,000 mPas 24 hours after preparation at 250C, as determined with a Rheomat R 123 from ProRheo using measuring bob 1 at a speed of 62.5 min-1 (claim 19; according to the claim limitations of the instant claim 54).
All the above US patents fail to claim the composition is a cosmetic product having a packaging with a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow as in the instant claim 36.
As outlined above, Salzer teaches a cosmetic product comprising a composition comprises hydroxypropyl starch phosphate and a packaging having a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow.
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a cosmetic product comprising hydroxypropyl starch phosphate as outlined by U.S. Patent No. 12409129B2, U.S. Patent No. 125277312B2, and U.S. Patent No. 12343422B2 with the ready for improvement of the known technique of storing the composition in a package having a dispensing opening in the form of a hole from which the cosmetic preparation can be dispensed in the form of a flow as outlined by Salzer. Adding the forementioned limitations to a hydroxypropyl starch phosphate cosmetic composition as claimed by instant claim 36 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Response to Applicant’s Arguments
Applicant’s arguments filed on /26/2025 have been considered by the examiner.
In regards to Applicant’s arguments against the 35 USC § 103 rejection over Salzer, Applicant argues that Salzer does not teach the new limitation of instant claim 36 that the product “is capable of holding more than one application”. Applicant argues Salzer neither teaches or suggests packaging is capable of holding more than one application portion of a cosmetic preparation.
In response to Applicant’s argument, it is first noted the “is capable of” is intended use. As outlined above in the claim interpretation, the instant claims are composition claims and future intended use is not given patentable weight. Further, it is noted that Salzer teaches the packaging holding a plurality of single-serving portions (abstract), therefore teaching more than one application.
In summary, Applicant’s arguments are not found persuasive by the examiner. The previous rejections of record are withdrawn due to the cancellation of all previous claims. New grounds of rejection necessitated by the addition of new claims are outlined above.
In regards to Applicant’s arguments against the 35 USC § 103 rejection over Salzer in view of Toxicology, over Salzer in view of Cosmetics info, and over Salzer in view of Odile, Applicant states that they respectfully disagree with Examiner’s assessment. Applicant further states the rejected claims are canceled, thereby rendering the rejections moot.
It is noted that Applicant acknowledged the rejections, but provided no reasoning as to why the rejections should be withdrawn other than the cancellation of the previous, now cancelled claims. Further, it is pointed out to Applicant that the new claims and the previous, now cancelled claims, are substantially the same material. As such, the 35 USC § 103 rejection over Salzer in view of Toxicology, over Salzer in view of Cosmetics info, and over Salzer in view of Odile rejections are made anew in light of the new claim numbering/limitations.
In regards to Applicant’s arguments against the Non-Statutory Double Patenting Rejections, Applicant states that they respectfully disagree with Examiner’s assessment. Applicant further states the rejected claims are canceled, thereby rendering the rejections moot.
It is noted that Applicant acknowledged the rejections, but provided no reasoning as to why the rejections should be withdrawn other than the cancellation of the previous, now cancelled claims. Further, it is pointed out to Applicant that the new claims and the previous, now cancelled claims, are substantially the same material. As such, the non-statutory double patenting rejections are made anew in light of the new claim numbering/limitations.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./Examiner, Art Unit 1611