DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Amendment filed on 12/04/2025 is acknowledged.
Claims 1-20 remain cancelled. Claim 40 is now cancelled.
Claims 21, 24, 28-29, 33-34, and 36-39 are amended.
Claims 21-39 are pending and being examined on merits herein.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 09/15/2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Priority
This instant application 18010220, filed on 07/27/2023, is a 371 of PCT/EP2021/066430, filed on 06/17/2021, which claims foreign priority of European patent office 20180895.3, filed on 06/18/2020. Foreign priority document filed on 12/14/2022 does not have English translation.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 09/04/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 12/04/2025.
Claim Objection
Claim 21 is objected to because of the following minor informalities:
Claim 21 recites “with at least 2 dispensing vessels, in which the base mixture is present in one of the dispensing vessels b1) and the active cosmetic …” in lines 4-5. The first “the” in bold font should be revised to “a”, and the 2nd “the” in bold font should be deleted because it is first time mentioning these ingredients. Claim 21 also recites “one UV filter”. It is suggested to revise as “one agent as UV filter” to distinguish from optical UV filters.
Proper corrections are required.
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 38 is 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 38 recites the limitations “the amounts of water” and “the water tank”. There is insufficient antecedent basis for these limitations in the claims because claim 36 or claim 21, which claim 38 directly or indirectly depend upon, do not have these terms.
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.
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 21-39 are rejected under 35 U.S.C. 103 as being unpatentable over Gros et al. (WO2018073541, 04/26/2018, IDS of 12/27/20222, machine translation replied upon below; copy attached in record of 09/04/2025), in view of Lu et al. (US 9592295, 03/14/2027).
Gros throughout the reference teaches the production of a cosmetic product (i.e., formulation) using a mixing system (Abstract). Note: paragraph coordinates are based on numbers in bold fonts).
Regarding instant claims 21 (recited below), 26 and 37,
Claim 21 A method of producing a sunscreen controllable by an end user of the sunscreen, in a device having a mixing device a).
Gros teaches the method of producing of a cosmetic product which is operatable and controllable by a user to receive cosmetic perfume capsule of the mixing system (e.g., Abstract; [0049]). Gros teaches the mixing system comprises a mixing device (Claim 1).
and at least one dispensing device b) equipped with at least 2 dispensing vessels, in which a base mixture is present in one of the dispensing vessels b1) and active cosmetic ingredients suitable for personalization in the other of the dispensing vessels b2).
Gros teaches throughout the description in detail of the mixing system, e.g., comprising a cylindrical moving plate 4 comprising at least two compartments 5, 6, preferably three compartments 5, 6, 10 ([0034]; Fig. 1), housing capsules 7, 8 containing various compounds for developing the final cosmetic product [0035] (corresponding to vessels b1 and b2 containing the base mixture or active cosmetic ingredients as claimed in instant claims 21, vessels as capsules as in instant claim 37).
said method comprising emptying contents of the dispensing vessels b1) and b2) into the mixing device a), mixing the contents in the mixing device, wherein the contents of the dispensing vessel b 1) comprising the base mixture are emptied into the mixing device together with at least one emollient, at least one interface-active substance and at least one UV filter, wherein the contents of the dispensing vessel b1) also comprise at least one rheology modifier or no rheology modifier; and wherein the dispensing vessel b2) comprises at least one UV filter.
Gros teaches that capsule 7 (i.e., vessel b1 in instant claim 21) houses contents, e.g., a cosmetic fat as suitable emollient, or texturizing agent such as polymer or xanthan gum [0035] as rheology modifier, and an emulsifier as an interface-active substance (corresponding to ingredients in base mixture of vessel b1 in instant claims 21 and 26), and capsule 8 ( i.e., vessel b2 as claimed), houses a cosmetic active ingredient (0036) (corresponding to content in vessel b2 instant claim 21).
Gros specifies that the mixing system includes means for expelling (or emptying) the contents of each capsule 7, 8. The contents of the capsules 7 and 8 are forced out and flow successively (e.g., Claim 1; [0037]) into the mixing device and the contents from capsules, e.g., mixture of liquid, cosmetic texturizing agent and cosmetic active ingredient, are contained in the container (11) comprising a mixing element (12) (subject to mixing) (e.g., Claim 1; [0041; [0038]].
Regarding instant claim 31, Gros teaches the mixing system according can have a third capsule (i.e., dispensing vessel), containing a cosmetic perfume (e.g., Claim 22), and container 11 successively receive the water, the cosmetic oil, the active ingredient and, if applicable, the cosmetic perfume expelled from their respective compartments 13, 5 (containing capsule 7, Fig. 1), 6 (containing capsule 7, Fig. 1), 10, corresponding to four total dispensing vessels.
Regarding instant claims 28 and 32-34, Gros teaches the mixing system comprises a liquid reservoir 1 with an inner wall separating it into two compartments, the first compartment comprising aqueous phase entering the composition of the cosmetic product, i.e., demineralized water, and the second liquid compartment comprising pure or demineralized water or simply tap water [0032] (corresponding to the water tank c in instant claims 33-34), and intake pipe guarantees the flow of liquid used to produce the cosmetic product in a mixing device of the mixing system (e.g., [0033]). Gros teaches the method wherein the cosmetic product is a liquid oil mixture created in container 11 of the mixing device, after contents are expelled or emptied from capsules including 3rd capsule (i.e. total 4 vessels, as discussed above), wherein the contents can comprise a mixture of water, cosmetic oil, and cosmetic active ingredients, an emulsifier as an interface-active substance, and if applicable, cosmetic perfume (e.g., Claim 1; [0036]; [0038]) (corresponding to instant claims 32 and 34). Gros teaches that the mixing system preferably made to an emulsion, but any other cosmetic product can be easily produced [0041], corresponding to capsule contents are pre-emulsion in instant claim 28.
Regarding instant claim 35, Gros describes the container 11 of the mixing device being a removable cylindrical tube (corresponding to mixing vessel) closed by a bottom wall to allow the storage of the produced cosmetic product. The mixing member 12 in this embodiment comprises a piston 12a forming the bottom wall of the container 11 as the mixing vessel (corresponding to a stirrer at the base of the mixing vessel), and a plurality of radial fins 22a secured to the piston 12a and protruding from the upper face of the piston 12a. The piston 12a is able to be rotated (corresponding to the stirrer) with the fins 22a, when the removable container 11 is mounted on the mixing system, by a toothed crown 23 mounted in a support base 25 of the container 11 coaxially to the latter (this action results in the mixing vessel is closed and the stirrer is lowered). In addition, the support base 25 is movable in translation to allow the opening of the container 11 to be moved further away or closer to the movable platform 4 e.g., [0039]; Fig. 1).
Regarding instant claim 36, Gros teaches that the mixing system preferably made to an emulsion, but any other cosmetic product can be easily produced [0041]. In order to produce the mixture of water and cosmetic oil, solid content in capsules, e.g., solid oil in capsule 7, is heated via heating element 19, e.g., heating block, integrated into the mixing system and water pump (corresponding to heating system), before contents can be emptied into mixing device container or vessel (e.g., [0042]; [0051]).
Regarding instant claims 38-39, Gros states that each frangible membrane can comprise a bar code or any other identification means able to be read by the detection means of the mixing system, in order in particular to determine the type of oil, the type of active ingredient or the type of cosmetic perfume [0050] (corresponding to data transmission and end user controlled in situ dispensing vessels comprising cosmetic compositions that claimed in instant claims 38-39). Gros teaches that capsule (or vessel) 7 houses contents, e.g., a cosmetic fat as suitable emollient, or texturizing agent such as polymer or xanthan gum [0035] as rheology modifier, and an emulsifier as an interface-active substance and capsule 8 houses a cosmetic active ingredient (0036), corresponding to base mixture, and that composition can be variable, in the dispensing vessel in instant claim 39.
Gros does not teach that compositions in the capsules contain at least one UV filter as recited in instant claim 21, base mixture SPF as recited in instant claim 22, UV filter species in instant claim 23, emollient species with specified carbon numbers as recited in instant claim 24, interface-active substance features as recited in instant claim 25, rheology modifier as recited in instant claim 26, emollient to interface-active substance ratio in instant claim 27, b1), b2) and b3) contents as recited in instant claim 29, b2) comprising a UV filter-comprising formulation in instant claim 30, or a UV filter in base mixture in instant claim 39.
Lu throughout the reference teaches a cosmetic composition comprising a cosmetic active agent (Col. 34, Claim 8) including sun screens and many other ingredients (Col. 34, Claim 9), and at least one from the group of an emollient, a surfactant (i.e., an interface-active substance as defined by the instant specification, page 4, line 9-12), and a rheology modifier (Claim 11).
Lu teaches emollients to include hydrocarbons (Col. 23, line 43) (corresponding to instant claim 24), surfactant (i.e., interface-active substance) can be a nonionic or an anionic surfactant (Col. 23, lines 50-51) (corresponding to instant claim 25), sunscreen UV absorbents including a derivative of triazine octyltriazone, benzoate type agents including p-aminobenzoate, and cinnamic acid type including octyl methoxycinnamate as broad-spectrum UV-A/B filters (as defined by instant specification Pg. 19, Line 8) among many others (Col. 19, Lines 44-Col. 20, Line 4) (corresponding to instant claim 23), rheology modifiers to include, e.g., carbomers, acrylic copolymers, polyacrylamides, polysaccharides, natural gums, and others (Col. 24, lines 8-12).
Lu exemplifies multiple compositions, for instance, a sunscreen composition comprising UV absorbents octyl methoxycinnamate 5.0%, and oxybenzone 2.5% as UV absorbents (Col. 19, Lines 44-51) (overlapping with 5% to 50% in instant claim 29 of UV filter, corresponding to UV-A filter in instant claim 23), at least one emollient Cromollient SCE 1.0%, Brie LT3 2.0% from Croda, aloe 0.1% (corresponding to emollient amount in instant claim 29), at least one surfactant hexylene glycol 4.0% (overlapping with 1% to 20% interface-active substance in instant claim 29, corresponding to instant claim 25), Pluronic® F 127 13.0% (as Poloxamer polymers, Col. 10, Lines 4-12) (corresponding to rheology modifier in instant claims 21, 26, overlapping with 0% to 15% of rheology modifier in instant claim 29), vitamin E 0.2% (overlapping with 0% to 25% of active cosmetic ingredients in instant claim 29), deionized water 40.1% (falling within 0% to 50% of water in instant claim 29, or 5% to 75% in instant claim 34) with estimated SPF 15 to 25 (overlapping with SPF 6 to 20 in instant claim 22) (Example 8, Col. 30, Lines 50-64), with a ratio of emollient : interface-active substance in the range from 3 : 4 to 2 : 1 (overlapping to the ratio range from 1: 10 to 10 :1 in instant claim 27), considering agent octyl methoxycinnamate being an 18 carbon ester that functions as an emollient (corresponding to instant claim 24), while it also functions as UV filter in Example 8. Lu specifies the ingredients in an amount sufficient to deliver a non-toxic, pharmacologically effective amount of cosmetic active ingredient (Col. 4, lines 13-16). Therefore, Lu teaches a sunscreen in an acceptable amount of all claimed ingredients in the base mixture of instant claims 21, 32, and 39, as a liquid oil mixture corresponding to instant claim 28, or UV-filter-comprising formulation in instant claim 30, or mixing with water in instant claim 33. Lu teaches the preparation of such pharmaceutic compositions may be accomplished with reference to known methods in the industry (e.g., Col. 16, line 10).
It would have been prima facie obvious for a person having ordinary skills in the art prior to filing date to combine the teaching of Lu of sunscreen composition with Gros production method using the mixing and dispensing device to reach current invention, because Lu and Bros share common compositions for cosmetic use, and Lu teaches the preparation of such pharmaceutic compositions may be accomplished with reference to known methods in the industry (Lu, Col. 16, line 10), while Gros teaches the method to offer the user the possibility of freely choosing a desired final composition in terms of fats, active ingredients (which can be sunscreen active ingredients), and perfumes, with desirable texture of the cream, viscosity, spreading power, and its feel upon application (i.e., personalization; e.g., [0004]). This renders obviousness as combining prior art elements according to known methods to yield predictable results, see In Supreme Court KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). For specific UV absorbents or emollient compounds, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Gros teaches the mixing system and method offers user the ability to compose desired cosmetic products, while Lu teaches the cosmetic product as sunscreen, it flows with logic and renders obviousness to combine Gros and Lu to arrive at current invention. Based on Gros’ and Lu’s teaching, artisans in the field would be readily to choose, adjust and experiment, divide or combine, different ingredients into the multiple capsules or vessels Gros’ system/ method provide to achieve personalized final product, such as instantly claimed, adding base mixture with UV filter in one capsule or vessel, and adding other UV filter(s) in other vessels or capsules, would be obviously obtained as the claimed sunscreen product.
Gros points out that although the description of the invention is preferentially referred to emulsions, but any other type of cosmetic product that is simpler to make, for example a gel or a lotion, can be made with the mixing system (e.g., [0041]). Further, Gros also emphasizes that the configuration of the mixing system of the invention is not limited to the embodiment described above and shown in the figures. It has only been given as a non-limiting example and multiple modifications can be made without departing from the scope of the invention (e.g., [0061]).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The amount ranges, SPF range, carbon numbers, and temperature overlap with those taught in prior art as discussed above. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
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 21-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-28 of copending Application US18009812 (hereafter US’812) in view of Lu et al. (US 9592295, 03/14/2027).
US’812 recites the same method of producing a cosmetic formulation in the same device (claim 1) as instant claim 20, same emollient groups in the base mixture (claim 2) (same as instant claim 24), one nonionic and/or anionic interface-active substance (claim 3) and one cationic and /or ampholytic or zwitterionic interface-active substance in base mixture (claim 4) (corresponding to instant claim 25), one rheology modifier in base mixture (claim 5) (same as instant claim 26), weight ratio of components in base mixture (claim 6) (same as that in instant claim 27), base mixture composition components (e.g., 0.5% to 75% emollient, 1% to 30% interface-active substance, 1.5% to 30% rheology modifier, etc.) (claim 7) and base mixture amount (claim 8) (corresponding to instant claim 29, with overlapping amounts of emollient, interface-active substance, rheology modifier, active cosmetic auxiliaries and additives, water, and active cosmetic ingredients (e.g., UV filter in instant claim 29), resulting in similar base mixture a solid oil mixture as recited in instant claim 28 ), UV light protection filters in b2 (claim 9) with amount limit (claims 10 and 12-13)( corresponding to instant claims 29 and 30), further dispensing vessels (claim 11) (same as instant claim 31), a sunscreen, skin lotion, and hair conditioner formulations’ base mixture components with amounts and dispensing vessels (claims 14-16) (corresponding to instant claim 29 with overlapping amounts, instant claim 32-33 of dispensing vessels), water tank (claim 17) and contents from dispensing vessels mixing water from water tank (claim 18) (corresponding to instant claim 33), dispensing contents into mixing device with 35% water amount from water tank (claim 19) (overlapping with water range 5% to 75% water in instant claim 34), retractable stirrer at the base of mixing vessel (claim 20) and closure of mixing vessel (claim 21) (corresponding to instant claim 35), dispensing vessel able to be heated (claim 22) (corresponding to instant claim 36), dispensing vessels being capsules (claim 23) (same as instant claim 37), information or data transmission of the device by QR code (claim 24) and end user providing the dispensing device in accordance with data transmitted (claim 25) (corresponding to instant claim 38), a dispensing vessel comprising base mixture production in situ with general claimed ingredients (claim 27, withdrawn due to nonelected group) and a dispensing vessel comprising active cosmetic ingredients personalization in situ by end user (claim 28, withdrawn due to nonelected group) (corresponding to instant claim 39).
US’812 does not recite SPF of 6 to 20 of the base mixture as recited in instant claim 22, and it does not recite the base mixture comprising at least one triazine derivative UV filter and at least one UV-A filter as recited in instant claim 23.
As discussed above in great detail and incorporates herein, Lu cures these deficiencies of US’812. “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s remarks/arguments filed on 12/04/2025 have been fully considered, but they are not persuasive.
Rejections under 35 U.S.C. 112
Applicant believes the amendments are sufficient to obviate the stated grounds for the rejections.
Some of the previous rejections are maintained because the amendment filed on 12/04/2025 was unable to overcome the rejections. Please see detail in this office action presented above.
Rejections under 35 U.S.C. 103
Applicant asserts that the combination of Gros and Lu does not render the arrangement obvious, because Gros is silent regarding sunscreen products or the use of UV filters in any of the vessels, and Lu teaches conventional manufacture of sunscreen products and does not contemplate the use of separate dispensing vessels.
Gros teaches the system offers user the ability to choose desired final composition and cosmetic products are the intended products for the method, while Lu teaches the cosmetic product as sunscreen, it flows with logic and renders obviousness to combine Gros and Lu to arrive at current invention. Gros system shows that vessels can hold different contents including active ingredients, and all the contents are emptied into the mixing container for mixing to make the final product. It is obvious for an artisan in the field to divide or combine different ingredients into the multiple capsules or vessels Gros’ system/method provide, since Gros throughout the reference teaches the system can achieve products with end user desirable personalization. The most relevant obviousness reasoning paragraph is copied below for reference:
It would have been prima facie obvious for a person having ordinary skills in the art prior to filing date to combine the teaching of Lu of sunscreen composition with Gros production method using the mixing and dispensing device to reach current invention, because Lu and Bros share common compositions for cosmetic use, and Lu teaches the preparation of such pharmaceutic compositions may be accomplished with reference to known methods in the industry (Lu, Col. 16, line 10), while Gros teaches the method to offer the user the possibility of freely choosing a desired final composition in terms of fats, active ingredients (which can be sunscreen active ingredients), and perfumes, with desirable texture of the cream, viscosity, spreading power, and its feel upon application (i.e., personalization; e.g., [0004]). This renders obviousness as combining prior art elements according to known methods to yield predictable results, see In Supreme Court KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). For specific UV absorbents or emollient compounds, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Gros teaches the mixing system and method offers user the ability to compose desired cosmetic products, while Lu teaches the cosmetic product as sunscreen, it flows with logic and renders obviousness to combine Gros and Lu to arrive at current invention. Based on Gros’ and Lu’s teaching, artisans in the field would be readily to choose, adjust and experiment, divide or combine, different ingredients into the multiple capsules or vessels Gros’ system/ method provide to achieve personalized final product, such as instantly claimed, adding base mixture with UV filter in one capsule or vessel, and adding other UV filter(s) in other vessels or capsules, would be obviously obtained as the claimed sunscreen product.
Applicant alleges that Gros discloses that the texturizing agent should not contain other cosmetic actives and that additional actives should be included in separate composition ([0032-0033], contrary to the present invention which provides a stable base mixture already containing emollients and UV filters.
Gros talks about liquid reservoir in paragraph [0032] and liquid pump in [0033]. Even if Gros indicates that texturizing agent in a capsule or vessel should not contain other cosmetic actives, it is just an exemplified embodiment that Gros presents. Gros states that the method is to offer the user the possibility of freely choosing a desired final composition in terms of fats, active ingredients (which can be sunscreen active ingredients), and perfumes, with desirable texture of the cream, viscosity, spreading power, and its feel upon application (i.e., personalization; e.g., [0004]).
Further, as presented in this office action and copied below the most relevant paragraph:
Gros points out that although the description of the invention is preferentially referred to emulsions, but any other type of cosmetic product that is simpler to make, for example a gel or a lotion, can be made with the mixing system (e.g., [0041]). Further, Gros also emphasizes that the configuration of the mixing system of the invention is not limited to the embodiment described above and shown in the figures. It has only been given as a non-limiting example and multiple modifications can be made without departing from the scope of the invention (e.g., [0061]). Therefore, adding additional active ingredients or UV filters to base mixture or texturizing agent, into the capsules, or making any adjustments to user’s needs is not limited to the Gros scope.
In conclusion, the argument is not persuasive.
Double Patenting Rejections
Applicant requests the provisional rejection to be held in abeyance.
A request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP §714.02 and 37 CFR 1.111(b)). Thus, the double patenting rejection(s) of record has/have been maintained as no action regarding these rejections has been taken by Applicants at this time.
Conclusion
No claim is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616