DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed February 06, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Rejections - 35 USC § 103 (Maintained)
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 1-3, 5-7, 9-16, and 18-19 are rejected under 35 U.S.C. 103 as being as being obvious over Swistowski et al. (US 2007/0014744 A1) in view of Nakashio et al. (US 3,972,997 A).
Examiner’s Note: Behenyl behenate (the elected fatty acid ester) is known in the art to be a wax (See: Swistowski at [0018]). The Examiner is interpreting the limitation “said composition containing less than 5.0% by weight of wax(es)” to be waxes other than the linear fatty acid monoester of formula (I).
Regarding claim 1, Swistowski discloses a cosmetic composition in a physiologically acceptable medium (water) (abstract; [0027], [0045]) comprising behenyl behenate [0018], stearic acid/palmitic acid [0021] [Claim 13], a base capable of neutralizing the fatty acid [Claim 11] [0049] [0024], a polyol [0026], and water [0027], [0045]. Swistowski discloses behenyl behenate as a wax which is present in a total content ranging from 0.5 to 50% by weight relative to the total weight of the composition [0022]. Within the wax component the proportion of the individual wax can be up to 100% by weight [0022] (i.e., substantially no other waxes present).
Swistowski does not disclose pullulan.
Nakashio teaches a cosmetic composition containing pullulan (abstract). Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
Since Swistowski generally teaches a cosmetic composition, it would have been prima facie obvious to one of ordinary skill in the art to include pullulan, within the teachings of Swistowski, because Nakashio teaches pullulan in a cosmetic composition. An ordinarily skilled artisan would be motivated to include pullulan because Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
It is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., behenyl behenate, stearic/palmitic acid, a base, a polyol, water, and pullulan) were known in the prior art (e.g., Swistowski and Nakashio) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., a cosmetic composition) to one of ordinary skill in the art. MPEP 2143.A.
In regards to the amounts of the components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claim 2 is rendered prima facie obvious because Swistowski discloses behenyl behenate as a wax which is present in a total content ranging from 0.5 to 50% by weight relative to the total weight of the composition [0022]. Within the wax component the proportion of the individual wax can be up to 100% by weight [0022] (i.e., substantially no other waxes present). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 3 is rendered prima facie obvious because Swistowski discloses behenyl behenate [0018].
Claims 5 and 6 are rendered prima facie obvious because Swistowski discloses stearic acid and palmitic acid [0021] [Claim 13].
Claim 7 is rendered prima facie obvious because Swistowski discloses stearic acid in an amount of 4.0 wt.% [0045]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 9 is rendered prima facie obvious because Swistowski discloses the base is an organic base (such as triethanolamine) [claim 11].
Claim 10 is rendered prima facie obvious because Swistowski discloses the base (triethanolamine) is present in the compositions in an amount of 0.75 wt.% [0049] and 0.65 wt.% [0051]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claim 11, Swistowski does not disclose pullulan in a content ranging from 1 to 7% by weight relative to the total weight of the composition.
Nakashio teaches a cosmetic composition containing pullulan (abstract) in an amount of 0.01 to 99 parts by weight (Col 3, lines 23-26), such as 2.5 wt. % (Col 4, Example 5). Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
Since Swistowski generally teaches a cosmetic composition, it would have been prima facie obvious to one of ordinary skill in the art to include pullulan, in the amount taught by Nakashio, within the teachings of Swistowski, because Nakashio teaches pullulan in a cosmetic composition in an amount of 0.01 to 99 parts by weight (Col 3, lines 23-26), such as 2.5 wt. % (Col 4, Example 5). An ordinarily skilled artisan would be motivated to use this amount of pullulan in order to improved and enhanced the effect of the cosmetic (abstract) (Col 1, lines 2-8).
Claim 12 is rendered prima facie obvious because Swistowski discloses the polyol is glycerol [0026].
Claim 13 is rendered prima facie obvious because Swistowski discloses the polyol is used in an amount of 0.3 to 10% by weight [0026]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 14 is rendered prima facie obvious because Swistowski discloses the compositions include water, such as in an amount of 51.38 wt.% [0027], [0045]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 15 and 16 are rendered prima facie obvious because Swistowski discloses the compositions include metal oxides, such as iron oxide [0045] [0035] [Claim 47].
Claim 18 is rendered prima facie obvious because Swistowski discloses the compositions include fatty alcohols [0021].
Claim 19 is rendered prima facie obvious because Swistowski discloses the composition is for eyelashes [0001] [0010].
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are not persuasive.
Applicants argue at pg. 6 that nothing in Swistowski would lead one of ordinary skill in the art to have more esters of formula (I) (present in an amount of at least 5%) than traditional waxes (present in an amount of less than 5%) and that Swistowski does not teach, suggest, or recognize the importance or significance of maximizing its esters while minimizing traditional waxes.
The Examiner disagrees. Swistowski discloses behenyl behenate as a wax which is present in a total content ranging from 0.5 to 50% by weight relative to the total weight of the composition [0018] [0022]. Within the wax component the proportion of the individual wax can be up to 100% by weight [0022]. Therefore, one of ordinary skill in the art, following the teachings of Swistowski would select behenyl behenate as a wax [0018] in an amount of 0.5 to 50% by weight relative to the total weight of the composition [0022], where the individual wax (i.e., behenyl behenate) can be present in an amount up to 100% by weight of the wax component [0022] (i.e., substantially no other waxes present). In regards to the arguments that Swistowski does not teach the importance of maximizing its esters while minimizing traditional waxes, the Examiner notes that the applicant has not provided evidence/results supporting “the importance of maximizing esters while minimizing traditional waxes”.
Claim 8 is rejected under 35 U.S.C. 103 as being as being obvious over Swistowski et al. (US 2007/0014744 A1) in view of Nakashio et al. (US 3,972,997 A) and further in view of Siddiqui (US 2018/0104161 A1).
The 35 U.S.C. 103 rejection over Swistowski in view of Nakashio was previously discussed.
Swistowski does not disclose the base is an inorganic base, as recited in claim 8.
Siddiqui discloses a cosmetic composition for eyelashes with the inorganic base, sodium hydroxide as a pH Buffer [0136] [abstract]. Siddiqui teaches that a pH buffer, such as sodium hydroxide, brings the pH of the product to the desired pH level and also maintains a product’s pH [0136].
Since Swistowski generally teaches a cosmetic composition for eyelashes, it would have been prima facie obvious to one of ordinary skill in the art to include sodium hydroxide, within the teachings of Swistowski, because Siddiqui teaches sodium hydroxide in a composition for eyelashes. An ordinarily skilled artisan would be motivated to use sodium hydroxide because Siddiqui teaches that a pH buffer, such as sodium hydroxide, brings the pH of the product to the desired pH level and also maintains a product’s pH [0136].
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are not persuasive.
Applicant argues that Siddiqui does not remedy Swistowski’s deficiencies.
The Examiner disagrees because Swistowski is not deficient expect where Siddiqui teaches an inorganic base.
Claim 17 is rejected under 35 U.S.C. 103 as being as being obvious over Swistowski et al. (US 2007/0014744 A1) in view of Nakashio et al. (US 3,972,997 A) and further in view of Pavel (US 2008/0175808 A1).
The 35 U.S.C. 103 rejection over Swistowski in view of Nakashio was previously discussed.
Swistowski does not disclose the composition includes at least one semicrystalline polymer, as recited in claim 17.
Pavel teaches a composition for eyelashes, such as mascaras, with a semi-crystalline polymer [abstract] [0021]-[0027]. Pavel teaches that the semi-crystalline polymer supports, strengthens, stiffens and reinforces faux fibers (extensions on eyelashes which provide eyelashes with the appearance of increased length [0003]) formed upon application of a composition to a keratin material [0027].
Since Swistowski generally teaches a cosmetic composition for eyelashes, it would have been prima facie obvious to one of ordinary skill in the art to include a semi-crystalline polymer within the teachings of Swistowski, because Pavel teaches a semi-crystalline polymer in a composition for eyelashes. An ordinarily skilled artisan would be motivated to use a semi-crystalline polymer because Pavel teaches that the semi-crystalline polymer supports, strengthens, stiffens and reinforces faux fibers formed upon application of the composition to a keratin material [0027].
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are not persuasive.
Applicant argues that Pavel does not remedy Swistowski’s deficiencies.
The Examiner disagrees because Swistowski is not deficient expect where Pavel teaches a semicrystalline polymer.
Claims 1-3, 5-6, 8-9, 11-15, and 17-19 are rejected under 35 U.S.C. 103 as being as being obvious over Roux et al. (WO 2018/115373 A1) in view of Nakashio et al. (US 3,972,997 A).
Regarding claim 1, Roux discloses a cosmetic composition in a physiologically acceptable medium (abstract; pg. 1, lines 3-7; pg. 35, line 25 – pg. 36, line 5) comprising behenyl behenate (pg. 40, lines 9-12), stearic acid/palmitic acid (pg. 17, lines 1-2), a base capable of neutralizing a fatty acid (pg. 28, lines 11-15), a polyol (abstract; pg. 11, line 24 - pg. 12, line 20), and water (abstract). The composition comprises waxes in a total content ranging from 0.5 to 5% by weight relative to the total weight of the composition (pg. 39, lines 18-20). Roux discloses behenyl behenate as an oil which are present in a total content ranging from 0.5% to 25% by weight relative to the total weight of the composition (pg. 40, line 9 – pg. 41, line 12). Roux discloses the composition can further include polysaccharides (pg. 33, line 15 - pg. 34, line 20).
Roux does not disclose the polysaccharide, pullulan.
Nakashio teaches a cosmetic composition containing pullulan (abstract). Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
Since Roux generally teaches a cosmetic composition with polysaccharides, it would have been prima facie obvious to one of ordinary skill in the art to include pullulan, within the teachings of Roux, because Nakashio teaches the polysaccharide, pullulan, in a cosmetic composition. An ordinarily skilled artisan would be motivated to use pullulan because Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
It is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., behenyl behenate, stearic/palmitic acid, a base, a polyol, water, and pullulan) were known in the prior art (e.g., Roux and Nakashio) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a cosmetic composition) to one of ordinary skill in the art. MPEP 2143.A.
In regards to the amounts of the components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claim 2 is rendered prima facie obvious because Roux discloses the composition comprises waxes in a total content ranging from 0.5 to 5% by weight relative to the total weight of the composition (pg. 39, lines 18-20). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 3 is rendered prima facie obvious because Roux discloses behenyl behenate (pg. 40, lines 9-12).
Claims 5 and 6 are rendered prima facie obvious because Roux discloses stearic acid and palmitic acid (pg. 17, lines 1-2).
Claims 8 and 9 are rendered prima facie obvious because Roux discloses the base is an inorganic base (such as sodium hydroxide) or organic base (such as triethanolamine) (pg. 28, lines 11-15).
Regarding claim 11, Roux does not disclose pullulan in a content ranging from 1 to 7% by weight relative to the total weight of the composition.
Nakashio teaches a cosmetic composition containing pullulan (abstract) in an amount of 0.01 to 99 parts by weight (Col 3, lines 23-26), such as 2.5 wt. % (Col 4, Example 5). Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
Since Roux generally teaches a cosmetic composition with polysaccharides, it would have been prima facie obvious to one of ordinary skill in the art to include pullulan, in the amount taught by Nakashio, within the teachings of Roux, because Nakashio teaches the polysaccharide, pullulan, in a cosmetic composition in an amount of 0.01 to 99 parts by weight (Col 3, lines 23-26), such as 2.5 wt. % (Col 4, Example 5). An ordinarily skilled artisan would be motivated to use this amount of pullulan in order to improved and enhanced the effect of the cosmetic (abstract) (Col 1, lines 2-8).
Claim 12 is rendered prima facie obvious because Roux discloses the polyol, pentylene glycol (pg. 11, line 24 - pg. 12, line 20).
Claim 13 is rendered prima facie obvious because Roux discloses the polyol is present in an amount of 7 to 20% by weight, relative to the weight of the composition (pg. 11, line 24 - pg. 12, line 20). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 14 is rendered prima facie obvious because Roux discloses water in a content ranging from 60% to 90% by weight relative to the total weight of the composition (abstract). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 15 is rendered prima facie obvious because Roux discloses the composition includes a colorant, such as liposoluble dyes (pg. 43, line 2).
Claim 17 is rendered prima facie obvious because Roux discloses the composition includes a semi-crystalline polymer (pg. 42, line 30 – pg. 43, line 3).
Claim 18 is rendered prima facie obvious because Roux discloses the composition includes a fatty alcohol (pg. 12, lines 22-25; pg. 18, lines 11-27).
Claim 19 is rendered prima facie obvious because Roux discloses the composition is an eyelash product (pg. 35, line 29 – pg. 36, line 2).
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are not persuasive.
Applicant argues that Roux does not teach or suggest pullulan compounds.
The Examiner disagrees. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See. MPEP 2145. In the instant case, Nakashio teaches a cosmetic composition containing pullulan (abstract). An ordinarily skilled artisan would be motivated to use pullulan, within the teachings of Roux, because Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
Applicant argues at pg. 7 that the fatty acid taught by Roux relates to an ester, not a fatty acid component itself, and therefore, nothing in Roux suggests the fatty acid element of the claimed composition.
The Examiner disagrees. Roux teaches that a fatty acid may be chosen from stearic acid/palmitic acid (pg. 17, lines 1-2). Even though this is taught in the context of an ester, the ester still comprises the fatty acid (i.e., stearic acid/palmitic acid).
Applicants argue at pg. 7 that nothing in Roux would lead one of ordinary skill in the art to have more esters of formula (I) (present in an amount of at least 5%) than traditional waxes (present in an amount of less than 5%).
The Examiner disagrees. Roux discloses the composition comprises waxes in a total content ranging from 0.5 to 5% by weight relative to the total weight of the composition (pg. 39, lines 18-20) and Roux discloses behenyl behenate as an oil which are present in a total content ranging from 0.5% to 25% by weight relative to the total weight of the composition (pg. 40, line 9 – pg. 41, line 12). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claim 7 is rejected under 35 U.S.C. 103 as being as being obvious over Roux et al. (WO 2018/115373 A1) in view of Nakashio et al. (US 3,972,997 A) and further in view of Takada et al. (US 6,024,950).
The 35 U.S.C. 103 rejection over Roux in view of Nakashio was previously discussed.
Roux does not disclose the composition includes at least 3.0% by weight of fatty acids relative to the total weight of the composition, as recited in claim 7.
Takada discloses an eyelash cosmetic composition (abstract) with 0.5 to 10% by weight of a fatty acid soap (abstract; Col 2, line 42 – Col 3, line 17). Palmitic acid and stearic acid are both disclosed as fatty acids (Col 2, line 42-52). Takada teaches that Examples 1-6 with 2-4 wt.% of palmitic acid (Col 5, Table 1) have voluminous feeling, easy overlap application, and satisfactory finish and applicability (Col 7, lines 43-45). Takada teaches that if the content of the fatty acid soap is less than 0.5% by weight, the smoothness at the time of application becomes insufficient and the easy overlap application property becomes insufficient. On the other hand, if the content is more than 10% by weight, the dryability becomes poor and the voluminous feelings are impaired (Col 2, lines 9-17).
Since Roux generally teaches an eyelash composition, it would have been prima facie obvious to one of ordinary skill in the art to include fatty acids, in the amount taught by Takada, within the teachings of Roux, because Takada teaches that eyelash compositions with 2-4 wt.% of palmitic acid (Col 5, Table 1) have voluminous feeling, easy overlap application, and satisfactory finish and applicability (Col 7, lines 43-45) and Takada further teaches that if the content of the fatty acid soap is less than 0.5% by weight, the smoothness at the time of application and the easy overlap application property becomes insufficient and if the content is more than 10% by weight, the dryability becomes poor and the voluminous feelings are impaired (Col 2, lines 9-17). A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are not persuasive.
Applicant argues that Takada does not remedy the deficiencies of Roux.
The Examiner disagrees because Roux is not deficient expect where Takada teaches the amount of fatty acids.
Claims 10 and 16 are rejected under 35 U.S.C. 103 as being as being obvious over Roux et al. (WO 2018/115373 A1) in view of Nakashio et al. (US 3,972,997 A) and further in view of Siddiqui (US 2018/0104161 A1).
The 35 U.S.C. 103 rejection over Roux in view of Nakashio was previously discussed.
Roux does not disclose the composition comprises at least 0.1% by weight of at least one base, as recited in claim 10.
Siddiqui discloses a mascara with the base, triethanolamine as a pH Buffer / neutralizer in an amount of 2.0 wt.% [0146]. Siddiqui teaches that a pH buffer, such as triethanolamine, brings the pH of the product to the desired pH level and also maintains a product’s pH [0136].
Since Roux generally teaches a cosmetic composition for eyelashes, it would have been prima facie obvious to one of ordinary skill in the art to include 2.0 wt.% of a base, such as triethanolamine, within the teachings of Roux, because Siddiqui teaches 2.0 wt.% of triethanolamine in a mascara. An ordinarily skilled artisan would be motivated to use triethanolamine, in the amount taught by Siddiqui, in order to bring the pH of the eyelash product to the desired pH level and maintain the pH [0136]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Furthermore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general condition of triethanolamine in a composition for eyelashes has been taught by the prior art; and triethanolamine is known in the art to change the product’s pH. As such, it would not have been inventive for the skilled artisan to have discovered the optimum amount of triethanolamine via routine experimentation to achieved the desired pH value.
Roux does not disclose the composition comprises metal oxides, as recited in claim 16.
Siddiqui discloses a mascara with metal oxides, such as iron oxide [0124] [0138]. Siddiqui teaches that iron oxide gives color to the composition [0138].
Since Roux generally teaches a cosmetic composition for eyelashes, it would have been prima facie obvious to one of ordinary skill in the art to include a metal oxide, such as iron oxide, within the teachings of Roux, because Siddiqui teaches iron oxide in a mascara. An ordinarily skilled artisan would be motivated to use iron oxide to provide color to the composition [0138].
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are not persuasive.
Applicant argues that Siddiqui does not remedy the deficiencies of Roux.
The Examiner disagrees because Roux is not deficient expect where Siddiqui teaches the amount of base and a metal oxide.
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 1-3 and 5-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,419,807 in view of Swistowski et al. (US 2007/0014744 A1) and Nakashio et al. (US 3,972,997 A).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition except for pullulan and a polyol.
Swistowski teaches a cosmetic composition with a polyol, such as glycerin [0026]. Swistowski teaches that polyols serve in cosmetic preparations as moisture donors and serve as permanent plasticizers which reliably prevent the applied material from flaking or crumbling off [0026].
Nakashio teaches a cosmetic composition containing pullulan (abstract). Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
It would have been prima facie obvious to one of ordinary skill in the art to include a polyol and pullulan, within the claims. The ordinarily skilled artisan would have been motivated to include a polyol because Swistowski teaches that polyols serve in cosmetic preparations as moisture donors and serve as permanent plasticizers which reliably prevent the applied material from flaking or crumbling off [0026]. The ordinarily skilled artisan would have been motivated to include pullulan because Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
The amounts of the components would be achieved by one of ordinarily skill in the art through routine experimentation. See MPEP 2144.05(II)(A).
Claims 1-3 and 5-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,510,862 in view of Nakashio et al. (US 3972997 A) and Siddiqui (US 2018/0104161 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition except for pullulan and a base.
Nakashio teaches a cosmetic composition containing pullulan (abstract). Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
Siddiqui discloses a cosmetic with the base, sodium hydroxide as a pH Buffer [0136]. Siddiqui teaches that a pH buffer, such as sodium hydroxide, brings the pH of the product to the desired pH level and also maintains a product’s pH [0136].
It would have been prima facie obvious to one of ordinary skill in the art to include a pullulan and a base, within the claims. The ordinarily skilled artisan would have been motivated to include pullulan because Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8). The ordinarily skilled artisan would have been motivated to include a base because Siddiqui teaches that a pH buffer, such as the base, sodium hydroxide, brings the pH of the product to the desired pH level and also maintains a product’s pH [0136].
The amounts of the components would be achieved by one of ordinarily skill in the art through routine experimentation. See MPEP 2144.05(II)(A).
Claims 1-3 and 5-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent Application No. 18,713,830 in view of Swistowski et al. (US 2007/0014744 A1) and Nakashio et al. (US 3972997 A).
Claims 1-3 and 5-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent Application No. 18/713,833 in view of Swistowski et al. (US 2007/0014744 A1) and Nakashio et al. (US 3972997 A).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition except for pullulan and a polyol.
Swistowski teaches a cosmetic composition with a polyol, such as glycerin [0026]. Swistowski teaches that polyols serve in cosmetic preparations as moisture donors and serve as permanent plasticizers which reliably prevent the applied material from flaking or crumbling off [0026].
Nakashio teaches a cosmetic composition containing pullulan (abstract). Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
It would have been prima facie obvious to one of ordinary skill in the art to include a polyol and pullulan, within the copending claims. The ordinarily skilled artisan would have been motivated to include a polyol because Swistowski teaches that polyols serve in cosmetic preparations as moisture donors and serve as permanent plasticizers which reliably prevent the applied material from flaking or crumbling off [0026]. The ordinarily skilled artisan would have been motivated to include pullulan because Nakashio teaches that a cosmetic can be improved and enhanced in effect when incorporated with pullulan (abstract), that pullulan has excellent film-forming ability, moisture absorptivity, water solubility, tackiness, dispersibility and is non-toxic (Col 1, lines 2-8).
The amounts of the components would be achieved by one of ordinarily skill in the art through routine experimentation. See MPEP 2144.05(II)(A).
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not been patented.
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are not persuasive.
Applicant argues that the references would not motivate one skilled in the art to modify the subject matter of the asserted claims in a manner which would yield the currently claimed compositions.
The Examiner disagrees. One of ordinarily skill in the art would be motivated to modify the claims (‘807, ‘830, and ‘833 in view of Swistowski and Nakashio; ‘862 in view of Nakashio and Siddiqui) to arrive at the claimed composition as discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612