DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 30 April 2026, is acknowledged.
Claims 1 and 3 have been amended.
Claims 1-20 are pending and under consideration in the instant Office Action.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 1-3, 5, and 7-13 over Cash et al. (U.S. Patent No. 8,191,739 B1) under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendments to claims 1 and 3. The rejections of claims 1-20 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments to claims 1 and 3 and made anew below.
Rejections Made Anew
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-14 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tamarkin et al. (U.S. Patent Application Publication No. US 2008/0253973 A1, published on 16 October 2008, hereafter referred to as Tamarkin) in view of Cash et al. (U.S. Patent No. 8,191,739 B1, published on 5 June 2012, hereafter referred to as Cash) and Gawtrey et al. (U.S. Patent Application Publication No. US 2010/0269844 A1, published on 28 October 2010, hereafter referred to as Gawtrey).
Tamarkin teaches foamable compositions that comprise pharmaceutical, therapeutic, and/or cosmetic compositions which comprise an active agent that imparts a sensation or sensation modifying effect on a body surface following application (Abstract). The foamable compositions further comprise a foamable carrier, which carries the aforementioned active agent, and a propellant (Abstract). The active agent is further taught to be a cooling, warming, relaxing/soothing, or stimulating/refreshing agent, or a combination thereof, and is in a composition that is stored in an aerosol container, along with a propellant, which can release the composition to form a “non-crackling short term stable foam” (para. [0030-0039]).
The propellant in some embodiments is taught to be, individually or in mixtures, propane, isobutane, butane, and/or fluorocarbon gases (para. [0327]). Tamarkin also teaches that chlorofluorocarbons (CFCs) and hydrofluorocarbons (HFCs) may be used, but care needs to be taken with respect to the environment and flammability of the product (para. 0330-0331]). The propellant is placed in a foam producing canister following the cosmetic formulation and is used to pressurize the canister (para. [0419]). In Example 1, Tamarkin teaches a foamable composition that comprises 8% propellant, in this example propane, butane, and isobutane, with respect to 100% of a cosmetic composition, resulting in the propellant accounting for ~7% of the total aerosol product and 93% composition. These numbers fall within the larger range taught in Example 3, where it is taught that the propellant can be at a concentration from about 3% to about 25% or more.
The cosmetic compositions may in some embodiments include a foamable carrier that includes at least one surface active agent, at least one polymeric agent, and at least one non-aqueous solvent (para. [0049]). In the case of an aqueous emulsion formulation, the non-aqueous solvent may be a hydrophobic emollient, one example of which is isopropyl myristate (para. [0054-0055]). In Examples 1-2, isopropyl myristate comprises 4.62% w/w of the base formulation and ~4.47% of the sum of the propellant and other components. Further, in some embodiments the polymeric agent may be starch or a chemically modified starch such as aluminum starch octenyl succinate, which has been noted to stabilize cosmetic emulsions (para. [0057], [0194], and [0276]). The polymeric agent is taught to be at a concentration of “about 0.1% to about 5% by weight” (claim 13). Finally, Tamarkin teaches that their compositions may comprise an additional active agent that can be a hair growth regulator and may treat the disorder of hair loss (claims 22 and 44).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the above decisions, “the prior art taught carbon monoxide concentrations of ‘about 1-5%’ while the claim was limited to ‘more than 5%.’ The court held that ‘about 1-5%’ allowed for concentrations slightly above 5% thus the ranges overlapped.” With respect to ranges or amounts that do not overlap but are merely close, courts held that a prima facie case of obviousness also exists. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
These guidelines apply to the percent composition of Example 1, which comprises ~93% cosmetic composition, falling within the ranges of instant claims 7-13, and ~7% propellant, which falls within the ranges of instant claims 1 and 3. In addition, the guidelines apply to the percentage of isopropyl myristate, as the ~4.5% taught in Examples 1-2 is close to the 0.5-4% recited in instant claim 20. Finally, the guidelines apply to the percent composition of polymeric agent, in the instant case aluminum starch octenyl succinate, because the range of about 0.1% to about 5% in claim 13 of Tamarkin overlaps with the range of 3-15% recited in instant claim 18.
Tamarkin does not teach the pressure of the pressurisable container in their invention, the propellant to comprise nitrogen, the mass of the base formulation in their invention to be 40-100 grams, nor provide a motivation for selecting hair care from the possible applications of the invention. These deficiencies are offset by the teachings of Cash and Gawtrey.
Cash teaches an aerosol dispenser that comprises a compressed gas, liquefied gas, and a desired aerosol product (Abstract). The aerosol product, otherwise described as the aerosol formula concentrate, is determined to be equivalent to the base formulation of the instant invention, while the compressed and liquefied gases are together equivalent to the propellant. The liquefied gas is taught, in a preferred embodiment, to be n-butane, isobutane, and propane (column 4, lines 47-56). The compressed gas is taught in a preferred embodiment to be nitrogen because “nitrogen is inert and is not soluble in water” (column 4, lines 21-27). This water insolubility is desirable because “[t]he less soluble the compressed gas is in the product, the more compressed gas is retained in the vapor phase (i.e., the headspace) within the aerosol container” and subsequently the desirable rate and characteristics of the aerosol spray are maintained as the contents of the container are depleted (column 2, lines 4-14). Finally, Cash teaches the pressure inside the aerosol container of their invention to be between 20-170 psig (claim 5), which is equivalent to 1.38-11.72 x 105 Pa based on 1 psig = 6894.76 Pa.
Gawtrey teaches a hair cosmetic composition that comprises a cosmetic formulation, in which there is one or more anionic fixing polymers, polyols, liquid fatty alcohols, and C1-C4 monoalcohols, and one or more propellant gases which are packaged in an aerosol device (Abstract). Hair products in the art are taught to generally be composed of a propellant and a liquid phase, which comprises one or more fixing components in a cosmetically acceptable medium (para. [0004]). However, there is a need to reduce the content of volatile organic compounds (VOCs) in the propellant for ecological reasons while also balancing the cosmetic properties of the product (para. [0005]). Gawtrey teaches their invention to accomplish this goal by combining anionic fixing polymers, polyols, and fatty alcohols, resulting in the VOC content to be ≤50% (para. [0027] and claim 13). Finally, the examples taught by Gawtrey all express compositions in terms of percentages, totaling to 100 grams, which are subsequently placed in an aerosol device (para. [0080-0086]). Composition 2 comprises 35% propellant and 65% cosmetic formulation, resulting in a mass of 65 grams, which falls within the range taught in instant claim 14.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Tamarkin and Cash to arrive at the claimed invention because combining prior art elements according to known methods yields predictable results. An artisan would be motivated to modify the invention of Tamarkin with the teachings of Cash because the former does not teach the pressure of the pressurisable container in their invention and the teachings of Cash would better enable one to produce a foaming aerosol cosmetic product by teaching necessary information that would otherwise be absent. Tamarkin also does not teach the propellant of their composition to comprise nitrogen, but an artisan would be motivated to use nitrogen in the propane, butane, and isobutane mixture taught by Tamarkin because Cash teaches nitrogen to be inexpensive, inert with respect to the formulation in the product, compatible with a combined liquefied gas comprising propane, butane, and isobutane, and insoluble in water, which is necessary for aqueous formulations (Cash, column 4, lines 21-46). Further, Cash teaches that desirable rate and characteristics of the aerosol spray are maintained as the contents of the container are depleted when nitrogen is used in the propellant, which an ordinary artisan would recognize as desirable (Cash, column 2, lines 4-14).
It would have been further obvious to modify the teachings of Tamarkin with the teachings of Gawtrey to arrive at the claimed invention because applying a known technique to a known device ready for improvement yields predictable results. An artisan would be motivated to modify the teachings of Tamarkin in such a manner because Tamarkin only expresses their compositions as percentages with respect to the total mass rather than teaching a specific mass (Tamarkin, Examples 1-15). In view of the teachings of Gawtrey, an artisan would find it obvious to adjust the total mass of the composition and use the percentages correspondingly. See the additional relevant reference Mekata for further examples of cosmetic compositions, including hair formulations, placed in aerosol devices at masses lower than 454 grams as taught by Cash.
Gawtrey also teaches the need for low-VOC content in propellants, particularly in the area of hair care compositions. However, the propellants of Gawtrey still comprise as high as 50% VOCs, demonstrating a need for lower VOC content alternatives. Tamarkin teaches the use of a propane, isobutane, and butane mixture, while Cash teaches the ability to retain desirable spray characteristics in an aerosol by using a mixture of compressed gas (nitrogen) and liquefied gas (propane, isobutane, and butane mixture), which has an even lower VOC content (Cash, column 3, lines 12-26).
Claim 1 was amended to recite the insoluble compressed gas mixed with liquefied gas provides a gradual and steady pressure drop during use “without wastage of the propellant, and results in consistent spray properties”. This limitation is an inherent property of the recited mixture of a base formulation and a propellant comprising the insoluble compressed gas nitrogen and 7-15% weight/weight of the base formulation of the liquefied gas blend of propane, isobutane, and n-butane in a pressurized container. Because the above references teach all of the claimed species, including an embodiment that possesses 8% w/w of the mixture of propane, isobutane, and butane, based upon the weight of the cosmetic formulation (which is considered equivalent to the base formulation), in a pressurisable container at 20-170 psig (equivalent to 1.38-11.72 x 105 Pa), the properties regarding pressure drop recited in amended claim 1 would necessarily be present.
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Id. See MPEP § 2112.01. The limitations discussed in claim 1 regarding the pressure drop during usage are necessarily present because Cash teaches the chemical composition recited in instant claims 1-2 and 5 – specifically, nitrogen as an insoluble compressed gas and a blend of propane, isobutane, and n-butane as a liquefied gas mixture. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-14 and 17-20 in view of the teachings of Tamarkin, Cash, and Gawtrey.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tamarkin (U.S. Patent Application Publication No. US 2008/0253973 A1, published on 16 October 2008) in view of Cash (U.S. Patent No. 8,191,739 B1, published on 5 June 2012) and Gawtrey (U.S. Patent Application Publication No. US 2010/0269844 A1, published on 28 October 2010) as applied to claims 1-14 and 17-20 above and further in view of Bartolucci et al. (U.S. Patent Application Publication No. US 2020/0148459 A1, published on 14 May 2020, hereafter referred to as Bartolucci).
Tamarkin, Cash, and Gawtrey teach the above.
Tamarkin, Cash, and Gawtrey do not teach the shape or dimensions of the pressurisable container in their invention. These deficiencies are offset by the teachings of Bartolucci.
Bartolucci teaches a method of dispensing a textured foam from an aerosol container and the shape and dimensions of said container (Abstract, Figure 1). The container comprises a pressurisable outer container, a composition under pressure, and an actuator attached to the top of the container for dispensing the composition (para. [0008]). The outer container (22 in Figures 1-2, 8, and 10) is described as having a round cross section, alternatively “eccentric” and have an ovular, square, or elliptical cross section and may be in the shape of a barrel, sphere, or teardrop, which is determined to render obvious the cylindrical shape in instant claims 15-16 (para. [0100]). The outer diameter, if round, is taught to be “from about 50 to about 65 mm” and the volume is taught to be “from 150 to 525 mL” (para. 0101]).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the invention rendered obvious by the teachings of Tamarkin, Cash, and Gawtrey with the teachings of Bartolucci to arrive at the claimed invention because the combination of prior art elements according to known methods yields predictable results. An artisan would be motivated to modify the above invention with those of Bartolucci because the references did not teach the dimensions or shape of the pressurisable container in their inventions. Bartolucci teaches a pressurisable container comprising an aerosol formulation and includes possible shapes and dimensions for the container, which an artisan could use in the invention rendered obvious by the teachings of Tamarkin, Cash, and Gawtrey. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 15-16 in view of the teachings of Tamarkin, Cash, and Gawtrey and further in view of the teachings of Bartolucci.
Response to Arguments
The remarks submitted by Applicant on 30 April 2026, have been fully considered but are not found to be persuasive.
From the final para. of pg. 6 to para. 2 of pg. 7, Applicant argues against the single reference rejection under 35 U.S.C. § 103 over the teachings of the Cash reference. These arguments have been rendered moot in view of the withdrawal of the rejection over Applicant’s amendments to claims 1 and 3.
In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references in the para. that spans the bottom of pg. 7 and top of pg. 8, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the Tamarkin reference is drawn to foamable compositions that comprise a propellant and may be stored in an aerosol container, the Cash reference is drawn to an aerosol container and product, and the Gawtrey reference is drawn to a composition in an aerosol container that comprises one or more propellant gases. The references are therefore considered analogous art and proper to use in a rejection under 35 U.S.C. § 103. Addressing the motivation to combine and Applicant’s argument that the rejection relies on “generalized statements regarding ‘predictable results’”, Applicant appears to have missed the motivation presented in the rejection, repeated in brief here for convenience - an artisan of ordinary skill would be motivated to modify the invention of Tamarkin with the teachings of Cash because the former does not teach the pressure of the pressurisable container in their invention, which is addressed by the teachings of Cash, and the Cash reference teaches the benefits of using nitrogen in their propellant mixture. The ordinary artisan would be further motivated to combine the teachings of Gawtrey with the above invention because Gawtrey teaches specific masses to be used in a composition of defined size, rather than percentages, which would enable the ordinary artisan to formulate a complete product. Finally, Gawtrey teaches the need for low-VOC content in propellants, which is addressed in the teachings of Tamarkin and Cash and a person of ordinary skill would recognize the applicability of the references.
At the top of pg. 8, Applicant also argued that the combination of Cash and Tamarkin would “fundamentally alter” the invention of Tamarkin. The Examiner disagrees and directs the Applicant to the sections of the Cash reference which explicitly state that foaming characteristics are maintained. For example, the Abstract states that the dispenser “is able to retain desired spray characteristics, such as foaming” and claim 2 teaches “[a] foaming aerosol product”. Applicant’s argument is therefore found unpersuasive.
In response to Applicant's argument that the Tamarkin and Cash references are nonanalogous art in para. 2 of pg. 8, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, as stated above, the Tamarkin reference is drawn to foamable compositions that comprise a propellant and may be stored in an aerosol container and the Cash reference is drawn to an aerosol container and product. The references are therefore considered analogous art and proper to use in a rejection under 35 U.S.C. § 103 and Applicant’s argument is not found to be persuasive.
Also in this para. Applicant argues that the Office “does not demonstrate” and “provides no evidence” that the Tamarkin and Cash references may be combined. The rejection above provided an argument based upon the teachings of Tamarkin, Cash, and Gawtrey that a reasonable expectation of success in arriving at the invention of claims 1-14 and 17-20 had been established. A “reasonable expectation of success can be implicitly shown via the prior art teachings or as part of the obviousness analysis.” See MPEP § 2143.02.I. and Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1376-77, 2023 USPQ2d 1100 (Fed. Cir. 2023). Further, “[c]onclusive proof of efficacy is not required to show a reasonable expectation of success.” OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1385, 2019 USPQ2d 379681 (Fed. Cir. 2019). As a result, Applicant’s argument is not found to be persuasive.
In the final para. of pg. 8, Applicant argues that the Gawtrey reference does not teach a dual propellant system, pressure stabilization, or pressure drop. The Gawtrey reference was not argued to teach a dual propellant system above, nor is a “dual propellant” recited in the instant claims, and the pressure stabilization and drop were argued to be inherent properties of the recited aerosol product. Because the teachings of Tamarkin, Cash, and Gawtrey rendered obvious the aerosol product recited in instant claim 1, the pressure stabilization and drop are necessarily present and the Applicant’s argument is found unpersuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning in para. 1-3 of pg. 9, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Prior to the filing of the instant application, Tamarkin, Cash, and Gawtrey taught aerosol products comprising a base formulation and propellants, including the propellant mixture of propane, isobutane, and butane. The range of liquified gas and pressure and the insoluble compressed gas nitrogen, while not taught in one embodiment in one reference and therefore not anticipated, are obvious in view of the teachings of the above references. Therefore, the rejection under 35 U.S.C. § 103 only took into account knowledge available to an ordinary artisan at the time the instant invention was claimed and improper hindsight reasoning was not required.
Applicant additionally argued in this section that the combination of references in the obviousness rejection was performed “without any motivation” and that the Office Action did not “identify any prior art teaching or suggestion that would have led a person of ordinary skill to combine the references in the claimed manner”. The Examiner disagrees and directs the Applicant to the summary paragraphs in the new grounds of rejection above and the response to arguments above.
In the final para. of pg. 9, Applicant argues that the Office “provides no evidence that a skilled artisan would have reasonably expected the combination to function as claimed”. As argued above, a “reasonable expectation of success can be implicitly shown via the prior art teachings or as part of the obviousness analysis.” See MPEP § 2143.02.I. and Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1376-77, 2023 USPQ2d 1100 (Fed. Cir. 2023). Further, “[c]onclusive proof of efficacy is not required to show a reasonable expectation of success.” OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1385, 2019 USPQ2d 379681 (Fed. Cir. 2019). As a result, Applicant’s argument is not found to be persuasive.
In para. 1 of pg. 10, Applicant argues that “overlapping ranges alone do not establish obviousness” when the cited references do not teach the same components as the claimed invention. The rejection above relied upon the case law and examination guidelines outlined in MPEP § 2144.05, as well as the teachings of the Tamarkin, Cash, and Gawtrey references to motivate their combination in arriving at the invention recite in instant claims 1-14 and 17-20. Overlapping ranges alone were not argued to establish obviousness and Applicant’s argument is found unpersuasive.
Finally, in para. 2 of pg. 10 Applicant argues that the claimed pressure characteristics are not inherent because “inherency requires that a feature be necessarily present and not merely possible, and the Office Action has no showing that a combination of Tamarkin, Cash, and Gawtrey would necessarily result in the claimed properties”. The requirements for a rejection based upon inherency are outlined in MPEP § 2112. To show inherency, the Office “must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original).
The teachings of Tamarkin, Cash, and Gawtrey rendered obvious an aerosol product comprising a pressurisable container at a pressure equivalent to the claimed range, a base formulation, and a propellant comprising nitrogen mixed with a propane, isobutane, and butane mixture in an amount that falls within the range recited in instant claim 1 (vide supra). As recited in Applicant’s instant claim 1, an aerosol product comprising an insoluble gas mixed with a liquefied gas mixture in an amount of 7-15% w/w provides a pressure drop that is gradual and steady and results in consistent spray properties. Therefore, because the mixture of nitrogen and the liquefied gas mixture of propane, isobutane, and butane is obvious in view of the above teachings, the claimed properties are also present.
MPEP § 2112.V. states that once a product “appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning to show inherency, the burden of production shifts to the Applicant”. “Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Applicant has not provided evidence that an aerosol product comprising a pressurisable container at a pressure equivalent to the claimed range, a base formulation, and a propellant comprising nitrogen mixed with a propane, isobutane, and butane mixture in an amount that falls within the range recited in instant claim 1, as rendered obvious by the teachings of Tamarkin, Cash, and Gawtrey, would not necessarily have claimed pressure drop and spray characteristics recited in claim 1 and the argument is found unpersuasive.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-15 of U.S. Patent No. 12,569,425 B2 in view of Bartolucci (U.S. Patent Application Publication No. US 2020/0148459 A1, published on 14 May 2020) and Gawtrey (U.S. Patent Application Publication No. US 2010/0269844 A1, published on 28 October 2010).
U.S. Patent No. 12,569,425 recites an aerosol hair care product comprising a pressurisable container at a pressure from 9 x 105 to 11 x 105 Pa, which encompasses the range recited in instant claim 1, a propellant comprising a liquefied gas and nitrogen as an insoluble compressed gas, and a hair care formulation (Claims 1-3 and 5). Patent ‘425 further recites the weight of the liquefied gas to be 3-16% w/w of the hair care formulation, encompassing the ranges recited in instant claims 1 and 3 (Claim 6). The liquefied gas of ‘425 is a liquefied petroleum gas or a hydrofluorocarbon (Claim 7). The pressurisable container is recited as having a spraying device attached, as being configured to dispense the formulation within, and as having a volume of 300 mL, which falls within the range of instant claim 15 (Claims 1 and 12). The hair care formulation is recited to comprise 85-95% of the total invention weight (Claims 8-11). Finally, Patent ‘425 comprises a starch selected from an identical Markush group as the one recited in instant claim 17 and isopropyl myristate, with the weight of the starch being 3-15% w/w (Claims 1 and 13) and the weight of the isopropyl myristate being 0.5-4.0% w/w (Claims 14-15).
The differences between U.S. Patent No. 12,569,425 and the instant claims are that the ‘425 claims do not specify the liquefied petroleum gases to be propane, isobutane, and n-butane, the shape and diameter of the container are not specified, and the weight of the formulation in grams is not recited. These deficiencies are rendered obvious by the teachings of Bartolucci and Gawtrey.
Bartolucci and Gawtrey have been described above.
One of ordinary skill in the art would have been motivated to modify the product of claims 1-3 and 5-15 of U.S. Patent No. 12,569,425 to use the liquefied petroleum gases propane, isobutane, and n-butane because the mixture of petroleum gases is taught by Bartolucci to have low ozone reactivity. Further, the invention of Patent ‘425 did not specify the shape and diameter of the container in their invention, while Bartolucci teaches a cylindric container with a volume of 150 to 525 mL and an outer diameter of 50-65 mm would be useable in a pressurisable container that dispenses an aerosol foam, better enabling an artisan to produce the product of ‘425. Finally, Patent ‘425 expresses weights only in percentages, while Gawtrey teaches actual masses. An artisan would be motivated to combine the teachings of Gawtrey with the invention of ‘440 because it fills a gap of information and would better enable the artisan to create the hair care product of ‘425. As a result, one of ordinary skill in the art would have a reasonable expectation of success in arriving at the invention of instant claims 1-20 in view of U.S. Patent No. 12,569,425 and the teachings of Bartolucci and Gawtrey.
Claims 1-20 are directed to an invention not patentably distinct from claims 1-3 and 5-15 of commonly assigned U.S. Patent No. 12,569,425 in view of Bartolucci and Gawtrey. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned U.S. Patent No. 12,569,425, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Remarks
In the section labeled “Double Patenting” on pg. 5 of the remarks filed on 30 April 2026, it is stated that Applicant “chooses to delay submission of a terminal disclaimer until allowable subject matter has been identified”. A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by the Applicant showing that the claims subject to the restriction are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean J. Steinke, Ph.D., whose telephone number is (571) 272-3396. The examiner can normally be reached Mon. - Fri., 09:00 - 17:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard, can be reached at (571) 272-0827. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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