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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission, filed on 23 January 2026, has been entered.
Status of Claims
The amendment, filed on 5 December 2025, is acknowledged.
Claim 1 is amended.
Claims 1-20 are pending and under consideration in the instant Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 23 January 2026, was filed after the mailing date of the final Office Action on 1 October 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejections
Rejections pursuant to 35 U.S.C. § 103
The rejections of claims 1-20 under 35 U.S.C. § 103 presented in the final Office Action, mailed on 1 October 2025, are withdrawn in view of Applicant’s amendment to claim 1 and made anew below.
Double patenting rejections
The provisional nonstatutory double patenting rejections of claims 1-20 presented in the final Office Action, mailed on 1 October 2025, are withdrawn in view of Applicant’s amendment to claim 1 and made anew below.
New Grounds of Rejection
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 1-3, 5, and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Cash et al. (U.S. Patent No. 8,191,739 B1, published on 5 June 2012, cited by Applicant in IDS, hereafter referred to as Cash).
Cash teaches an aerosol dispenser that comprises a compressed gas, liquefied gas, and a desired aerosol product (Abstract). The desired aerosol product is taught to be “all chemical constituents [in the dispenser] before dilution by injection or introduction of the propellant” and examples include water-based cleaners, soluble organic solvents, and other water-based compositions, with the stipulation that the quantity of water is sufficient to “ensure that the liquefied gas…remains insoluble in the aerosol formula concentrate” (column 4, lines 3-20). The aerosol product, otherwise described as the aerosol formula concentrate, is determined to be equivalent to the base formulation of the instant invention. Said liquefied gas is taught to include liquefied petroleum gases (LPGs) and hydrofluorocarbons (HFCs), in a preferred embodiment the liquefied gases being n-butane, isobutane, and propane – a group referred to as “hydrocarbon propellants” (column 4, lines 47-56). An additional component in the propellant is a compressed gas, in a preferred embodiment being nitrogen because “nitrogen is inert and is not soluble in water” (column 4, lines 21-27).
The pressure inside the aerosol container is taught 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. Cash teaches that solvent mixtures and water are components of the aerosol formula concentrate (column 4, lines 21-24), therefore the water, solvents, and surfactants are determined to be equivalent to the aerosol formula concentrate, or base formulation, resulting in the hydrocarbon propellants (liquefied gas) accounting for 5/95=5.3% by weight of the base formulation. In Table 8 and column 12, lines 51-67, Cash teaches an aerosol container with nitrogen (the insoluble compressed gas) and aerosol formula concentrate(s) (the base formulation), to which 2, 4, or 6% w/w of liquefied gas are added.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Cash and the instant claims is that Cash teaches a wider range of pressures in their pressurisable container. The specific features claimed in the instant application are disclosed within the teaching of Cash, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the variables from within the teachings of Cash, to arrive at a product such as the one being sought.
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 5-15% weight/weight of the base formulation of the liquefied gas blend of propane, isobutane, and n-butane in a pressurized container. Because Cash teaches all of the species above, in an embodiment that possesses 6% w/w of the liquefied gas blend (based upon the weight of 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 can not 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 claims 1-3, 5 and 7-13 in view of the teachings of Cash.
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 (U.S. Patent No. 8,191,739 B1, published on 5 June 2012) 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, mixable 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) and maintaining desirable rate and characteristics of the aerosol spray as the contents of the container are depleted (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 5-15% weight/weight of the base formulation of the liquefied gas blend of propane, isobutane, and n-butane in a pressurized container. Because Cash teaches all of the species above, in an embodiment that possesses 6% w/w of the liquefied gas blend (based upon the weight of 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 can not 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 Cash (U.S. Patent No. 8,191,739 B1, published on 5 June 2012) as applied to claims 1-3, 5, and 7-13 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).
Cash teaches the above.
Cash does 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 teachings of Cash 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 teachings of Cash with those of Bartolucci because Cash did not teach the dimensions or shape of the pressurisable container in their invention. 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 taught by Cash. 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 Cash and further in view of the teachings of Bartolucci.
Response to Arguments
The remarks submitted by Applicant on 5 December 2025, have been fully considered but are not found to be persuasive.
In the para. that spans all of pg. 6 and the top of pg. 7, Applicant argues that the teachings of the Cash reference do not produce a “dual-phase system that stabilizes spray pressure and reduces VOCs”. Applicant additionally argues in this para. that the wide range taught by Cash does not maintain “an inert gas pressure…to stabilize spray pressure while reducing VOCs”. Further in this para., Applicant argues that the claimed range of 5-15% liquefied gas achieves the pressure-stabilizing effect “which is an effect that is not disclosed by Cash”.
The final Office Action, mailed on 1 October 2025, did not assert that the Cash reference taught a “dual-phase system” and this argument is considered moot. Regarding the stabilization of spray pressure and reduction of VOCs, Cash does teach a composition comprising nitrogen and liquefied gas (propane, isobutane, and butane mixture), which by its composition is lower in VOC content, and the stabilization of spray pressure is necessarily present (vide supra).
The recognition of a new property of something old, such as stabilized spray pressure, does not render the intention newly patentable. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). See MPEP § 2112.I. “Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.” In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In addition, the inherent feature does not need to be recognized at the time of disclosure if the feature is inherent. See MPEP § 2112.II.-III.
In the final para. of pg. 7, Applicant argues that Cash cannot be used to offset the deficiencies of the Tamarkin reference because it does not teach the pressure-stabilizing effect. As stated above, the recognition of an inherent feature that was not previously disclosed does not render something old patentable, and the argument is not found to be persuasive.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-15 of copending Application No. 18/015,440 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).
This is a provisional nonstatutory double patenting rejection because the conflicting claims have not yet been patented.
Both the instant claims and the claims of Application ‘440 comprise aerosol products that may be formulated for hair care comprising nitrogen as an insoluble compressed gas, a cosmetic formulation, and a liquefied gas in a pressurisable container at a pressure from 10 x 105 to 11 x 105 Pa (App. ‘440 claims 1-3 and 5). ‘440 further recites the weight of the liquefied gas to be 3-16% w/w of the hair care formulation, significantly overlapping with the range of 5-15% recited in instant claim 1 and 6-14% in instant claim 3 (‘440 claim 6). The liquefied gas of ‘440 is a liquefied petroleum gas or a hydrofluorocarbon (‘440 claim 7). Both inventions possess a composition inside a pressurisable container which has a spraying device attached and is configured to dispense the formulation within and the container of ‘440 has a volume of 300-350 mL, which falls within the range of instant claim 15 (‘440 claim 1 and 12). Both inventions also have a formulation that comprises 85-95% of the total invention weight (‘440 claims 8-11). Finally, both inventions comprise a type of starch and isopropyl myristate, with the weight of the former being 3-15% w/w (‘440 claims 1 and 13) and the weight of the latter being 0.5-4.0% w/w (‘440 claims 14-15).
The differences between Application ‘440 claims and the instant claims are that the ‘440 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 are 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 copending Application No. 18/015,440 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 ‘440 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 ‘440. Finally, co-pending Application ‘440 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 ‘440. 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 co-pending Application No. 18/015,440 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 copending Application No. 18/015,440 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 copending Application No. 18/015,440, 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 5 December 2025, 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619