DETAILED ACTION
Status of Claims
The amendments, and arguments, filed June 15, 2026, are acknowledged and have been fully considered. Claims 16 and 18-35 are pending. Claim 16 has been amended; claim 35 has been withdrawn; claim 17 has been cancelled; and claims 1-15 were previously cancelled. Claims 16 and 18-34 are currently under consideration. 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 Office Action: Final
Modified Claim Rejections
The rejection of claims 16-34 under 35 U.S.C. § 103 over PAN I (WO 2017/172523 A1), in view of PAN II (US 2018/0116950 A1) (at par. 3-12 of the 01/15/2026 Office action), is maintained in modified form, in light of applicant’s 06/15/2026 amendments, which cancel claim 17.
The nonstatutory double patenting rejection of claims 16-34 over claims 1-6 of US Patent 11,446,233 B2 (matured from US copending Appl. No. 17/038,977), in view of PAN I (at par. 13-15 of the 01/15/2026 Office action), is maintained in modified form, in light of applicant’s 06/15/2026 amendments, which cancel claim 17.
Modified Claim Rejections – 35 U.S.C. § 103 – Necessitated by Amendments
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. § 103(a) 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 C.F.R. § 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 16 and 18-34 are rejected under 35 U.S.C. § 103 as being unpatentable over PAN I (WO 2017/172523 A1, Publ. Oct. 5, 2017; on 10/30/2023; hereinafter, “Pan I), in view of PAN II (US 2018/0116950 A1, Publ. May 3, 2018; hereinafter, “Pan II”).
Pan I is directed to:
Title: COSMETIC COMPOSITIONS AND METHODS FOR PROVIDING BROAD AND FULL SPECTRUM PHOTO PROTECTION
Abstract: The present disclosure relates to compositions and methods for providing broad and full spectrum photo protection to skin. The compositions and methods use one or more antioxidants; optionally, one or more solubilizers; and a cosmetically acceptable carrier. UV filters may also optionally be included to provide additional protection from UV light. Non-limiting examples of antioxidants include baicalin, polydatin, silymarin, venuceane™, ferulic acid, punica granatum extract, mango leaf extract, soliprin, catechin, hesperetin, astilbin, DHC, Vitamin C, and mixtures thereof. Useful solubilizers include hydrotropes. Additional components, such as, additional active ingredients, emulsifiers, and silicone oils may also be used.
Pan I, title & abstract. In this regard, Pan I exemplifies an serum containing silymarin:
Example 15
(Serum)
A serum was prepared containing silymarin and the additional antioxidants vitamic C and Ferulic acid. The components of the serum are shown in the table below.
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The components of Phase A except for the alcohol were combined and mixed at 60°C then cooled to room temperature. Once at room temperature, the alcohol was added. The components of Phase B were separately combined and mixed. The mixture was heated to 65°C in order to dissolve the laureth-23. Phase A was added into phase B and mixed until the composition had a uniform consistency.
Pan I, p. 56, ln. 1-11, Ex. 15.
Regarding independent claims 16 and 34 and the requirements:
16. ([…]) A cosmetic composition comprising:
a) from about 0.1% to about 1.8% of Silybum Marianum Extract;
b) at least one compound chosen from salicylic acid, ascorbic acid, cinnamic acid derivatives, or mixtures thereof;
c) at least one surfactant;
d) from about 3% to about 18% of propylene glycol;
e) from about 3% to about 18% of dipropylene glycol; and
f) water;
wherein the weight ratio of propylene glycol to dipropylene glycol ranges from about 1:6 to about 1:1;
wherein the composition has a pH of less than or equal to about 5; and
wherein all percentages are by weight, based on the total weight of the cosmetic composition.
[…]
34. ([…]) A cosmetic composition comprising:
a) from about 0.1% to about 1.8% of Silybum Marianum Extract;
b) from about 0.1% to about 2% of salicylic acid;
c) from about 2% to about 20% of ascorbic acid;
d) at least one surfactant;
e) propylene glycol;
f) dipropylene glycol; and
g) water;
wherein the weight ratio of propylene glycol to dipropylene glycol ranges from about 1:6 to about 1:1;
wherein the composition has a pH of less than or equal to about 5; and
wherein all percentages are by weight, based on the total weight of the cosmetic composition.
Pan I clearly teaches a serum containing silymarin (Pan I, p. 56, ln. 1-11, Ex. 15 & Table), WHEREBY it is noted:
0.5 wt.% “Silymarin” (Pan I, p. 56, Ex. 15 & Table) is “a) from about 0.1% to about 1.8% of Silybum Marianum Extract” of claims 16 and 34, as well as the requirements of claim 3 for:
33. ([…]) The cosmetic composition of claim 16, wherein the Silybum Marianum Extract is extracted from the fruit/seed of the Silybum Marianum plant.
(see also Pan II, par. [0037], as evidence that “Silymarin” is extract of “ Silybum Marianum”);
10 wt.% “Vitamin C” (Pan I, p. 56, Ex. 15 & Table) is:
“b) at least one compound chosen from […], ascorbic acid, […]” of claim 16, and
“c) from about 2% to about 20% of ascorbic acid” of claim 34;
3 wt.% “laureth-23” (Pan I, p. 56, Ex. 15 & Table) is
“c) at least one surfactant” of claim 16, and
“d) at least one surfactant” of claim 34;
as well as the requirements of claim 22-23 for:
22. ([…]) The cosmetic composition of claim 16, wherein the total amount of surfactants ranges from about 1% to about 10% by weight, based on the total weight of the cosmetic composition.
23. ([…]) The cosmetic composition of claim 16, comprising at least one surfactant chosen from alkoxylated fatty alcohols.
(and par. [0071]-[0072] listing “laureth-23” as a fatty alkoxylated alcohol surfactant);
10 wt.% “Propylene Glycol” (Pan I, p. 56, Ex. 15 & Table) is:
“d) from about 3% to about 18% of propylene glycol” of claim 16, and
“e) propylene glycol” of claim 34,
as well as the requirements of claim 20 for:
20. ([…]) The cosmetic composition of claim 16, wherein the total amount of propylene glycol ranges from about 5% to about 12% by weight, based on the total weight of the cosmetic composition.
10 wt.% “Dipropylene Glycol” (Pan I, p. 56, Ex. 15 & Table):
“e) from about 3% to about 18% of dipropylene glycol” of claim 16, and
“f) dipropylene glycol” of claim 34;
as well as the requirements of claim 21 for:
21. ([…]) The cosmetic composition of claim 16, wherein the total amount of dipropylene glycol ranges from about 8% to about 15% by weight, based on the total weight of the cosmetic composition.
55 wt.% “Water” (Pan I, p. 56, Ex. 15 & Table) is:
“f) water” of claim 16, and
“g)water” of claim 34;
as well as the requirements of claim 25 for:
25. ([…]) The cosmetic composition of claim 16, wherein the total amount of water ranges from about 35% to about 90% by weight, based on the total weight of the cosmetic composition.
wherein 10 wt.% “Propylene Glycol” and 10 wt.% “Dipropylene Glycol” (Pan I, p. 56, Ex. 15 & Table) meets the requirements of claims 16 and 34 for “wherein the weight ratio of propylene glycol to dipropylene glycol ranges from about 1:6 to about 1:1.”
Regarding the range requirements of the instant claims, it is noted that MPEP § 2144.05 (I), states, “In the case where the claimed ranges ‘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).” However, it is noted that:
(i) Pan I DOES NOT TEACH the pH requirements of claims 16, 24 and 34 for:
“wherein the composition has a pH of less than or equal to about 5” (claims 16 and 34), and
24. ([…]) The cosmetic composition of claim 16, wherein the composition has a pH ranging from about 3 to about 4.5.
(ii) although Pan I teaches “salicylic acid” among suitable “skin active ingredient[s]” that may be present “from about 0.001 to about 10 wt.%, based on the total weight of the composition” (Pan I, p. 21, ln. 7-17), which relates to the requirements of claim 34 for “b) from about 0.1% to about 2% of salicylic acid,” as well as the requirements of claims 18 and 29-30 for:
18. ([…]) The cosmetic composition of claim 16, comprising a total amount of salicylic acid, ascorbic acid, and/or cinnamic acid derivatives ranging from about 0.1% to about 20% by weight, based on the total weight of the cosmetic composition.
[…]
29. ([…]) The cosmetic composition of claim 16, comprising salicylic acid and/or ascorbic acid.
30. ([…]) The cosmetic composition of claim 29, comprising salicylic acid in an amount ranging from about 0.1% to about 2% by weight, based on the total weight of the cosmetic composition.
Based on the state of the art, an artisan of ordinary skill would have found each of these features obvious.
Regarding (i), Pan II, for instance, is directed to
COMPOSITIONS CONTAINING PHENOLIC COMPOUNDS HAVING SYNERGISTIC ANTIOXIDANT BENEFITS
ABSTRACT
Compositions comprising at least one polyphenol selected from the group consisting of Silybum Marianum extract, Origanum Vulgare leaf extract, and Coptis Chinensis root extract, and baicalin, and Vitamin E, all present in amounts sufficient to produce synergistic antioxidant activity and provided for cosmetic and other uses.
Pan II, title & abstract. In this regard, Pan II teaches a suitable pH range “generally between 2 and 12, or between 3 and 9”:
[0062] The pH of the compositions is not limited but is generally between 2 and 12, or between 3 and 9. The pH can be adjusted to the desired value by addition of a base (organic or inorganic) to the composition, for example ammonia or a primary, secondary or tertiary (poly)amine, such as monoethanolamine, diethanolamine, triethanolamine, isopropanolamine or 1,3-propanediamine, or alternatively by addition of an inorganic or organic acid, advantageously a carboxylic acid, such as, for example, citric acid.
Pan II, par. [0062].
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate Pan I’s serum containing silymarin (Pan I, p. 56, ln. 1-11, Ex. 15 & Table) in a pH range “generally between 2 and 12, or between 3 and 9,” as taught by Pan II (Pan II, par. [0062]). One would have been motivated to do so with a reasonable expectation of success in order to obtain the advantage of a suitable pH range for a composition containing “Silybum Marianum extract” (Pan I, p. 56, ln. 1-11, Ex. 15 & Table; Pan II, abstract). See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Therefore, the prior art renders (i) obvious.
Regarding (ii), it is noted that a reference is analyzed using its broadest teachings. MPEP § 2123 [R-5] states: “[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.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 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 emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to rearrange the disclosed above cited components of Pan I in order to formulate Pan I’s serum containing silymarin (Pan I, p. 56, ln. 1-11, Ex. 15 & Table) per Pan I’s broader disclosure to contain “salicylic acid” as a suitable “skin active ingredient[s]” in an amount “from about 0.001 to about 10 wt.%, based on the total weight of the composition” (Pan I, p. 21, ln. 7-17).
Therefore, the prior art renders (ii) obvious.
Thus, the prior art renders claims 16-18, 20-25, 29-31 and 33-34 obvious.
Regarding claims 26-28 and 32, and the requirements:
26. ([…]) The cosmetic composition of claim 16, comprising at least one cinnamic acid derivative.
27. ([…]) The cosmetic composition of claim 16, comprising ferulic acid.
28. ([…]) The cosmetic composition of claim 27, wherein the total amount of ferulic acid ranges from about 0.1% to about 1% by weight, based on the total weight of the cosmetic composition.
[…]
32. ([…]) The cosmetic composition of claim 16, comprising salicylic acid, ascorbic acid, and ferulic acid.
Pan I teaches a composition containing 0.5 wt.% “Ferulic Acid” and 10 wt.% “Vitamin C” (Pan I, p. 56, Ex. 15 & Table), wherein Pan I’s disclosure of “Ferulic Acid” is noted as “ferulic acid” of claims 27-28 and 32, as well as a “cinnamic acid derivative” of claim 26 (as well as par. [0020] of the instant published application, US 2023/0372231 A1). With regard to “salicylic acid,” Pan I teaches “salicylic acid” among suitable “skin active ingredient[s]” that may be present “from about 0.001 to about 10 wt.%, based on the total weight of the composition” (Pan I, p. 21, ln. 7-17), whereby it would be obvious to rearrange Pan I’s exemplary composition for the incorpoation thereof, per Pan I’s broader disclosure. See MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference. See MPEP § 2144.05 (I) regarding the obviousness of prior art overlapping claimed numerical ranges.
Thus, the prior art renders claims 18, 26-28 and 32 obvious.
Regarding claim 19, and the requirements:
19. ([…]) The cosmetic composition of claim 16, further comprising at least one glycol other than propylene glycol or dipropylene glycol.
Pan I teaches suitable carriers, inter alia, “propylene glycol, dipropylene glycol, buylene glycol” (Pan I, p. 8, ln. 12-23), wherein “buylene glycol” is “at least one glycol other than propylene glycol or dipropylene glycol” of claim 19. See MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference.
Thus, the prior art renders claim 19 obvious.
Response to Arguments
Applicants’ arguments, filed on June 15, 2026 (hereinafter, referred to as “Remarks”), have been fully considered, but they are not persuasive.
Applicant argues:
First, contrary to the Office's position, one of ordinary skill in the art would not have been motivated to modify the composition in Pan I to have a pH of within the claimed range of “not higher than about 5” based on the disclosure in Pan II. Specifically, the Office asserts that such change would have been made “in order to obtain the advantage of a suitable pH range for a composition containing Silybum Marianum.” Office Action, pp. 7-8 (citing Pan I, p. 56, In. 1-11, Ex. 15 & Table; Pan II, abstract). However, nothing in either reference indicates any benefit in choosing a pH of 5 or lower for a composition with Silybum Marianum extract. For example, the cited portion of Pan II disclose “Compositions comprising at least one polyphenol selected from the group consisting of Silybum Marianum extract, Origanum Vulgare leaf extract, and Coptis Chinensis root extract, and baicalin, and Vitamin E, all present in amounts sufficient to produce synergistic antioxidant activity and provided for cosmetic and other uses.” Pan II, Abstract. The cited portion of Pan I provides that "[a] serum was prepared containing silymarin and the additional antioxidants vitamin C and Ferulic acid," and includes no discussion of pH. Pan I, p. 68. [Remarks, p. 8, par. 3]
Further, while the compositions disclosed in Pan II may include Silybum Marianum extract as the polyphenol, the remaining ingredients are entirely different from those disclosed in Pan I. Therefore, Applicant submits that one of ordinary skill in the art would not have looked to Pan II for guidance on a suitable pH for the compositions in Pan I. As such, the Office has failed to establish a motivation as to why a person of ordinary skill in the art would have modified or combined the cited references as proposed. See, e.g., Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068-9 (Fed. Cir. 2018) (finding a rejection of obviousness improper where the “Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention”); Belden, 805 F.3d at 1073. [Remarks, p. 9, par. 1]
Moreover, one of ordinary skill in the art would have expected a relatively high concentration of silybin (primary component of Silymarin) to have low aqueous solubility, which can be improved at higher pHs. See specification, p. 6 II. 22-26, p. 1911.10-16 (Example 3). Therefore, Applicant submits that the ability to create a composition with the claimed amounts of silymarin, salicylic acid, and ascorbic acid and also achieve stability in the solvent system at an acidic pH was unexpected, as also described in the as-filed specification. See id., p. 19 ll. 14-16. [Remarks, p. 9, par. 2]
Remarks, p. 8, par. 3 to p. 9, par. 2. In response: to the extent Pan I does not teach the pH requirements of claims 16, 24 and 34, it would be obvious to formulate Pan I’s serum containing silymarin (Pan I, p. 56, ln. 1-11, Ex. 15 & Table) in a pH range “generally between 2 and 12, or between 3 and 9” per Pan II (Pan II, par. [0062]) in order to obtain the advantage of a suitable pH range for a composition containing “Silybum Marianum extract” (Pan I, p. 56, ln. 1-11, Ex. 15 & Table; Pan II, abstract). Further, both Pan I and Pan II disclose the use of solubilizers or “hydrotropes” (Pan I, p. 7, ln. 17-33; Pan II, par. [0049]-[0056] ) including sodium salicylate (Pan I, p. 7, ln. 21; Pan II, par. [0054]) in amounts ranging from about 0.1 % to about 20% (Pan I, p. 7, ln. 25; Pan II, par. [0056]), which relates to salicylic acid of claims 16 and 34. Therefore, Pan I clearly teaches a serum containing silymarin (Pan I, p. 56, ln. 1-11, Ex. 15 & Table) with 10 wt.% “Vitamin C” (Pan I, p. 56, Ex. 15 & Table), as well as broadly teaching 0.1 % to about 20% (Pan I, p. 7, ln. 25; Pan II, par. [0056]) of sodium salicylate (Pan I, p. 7, ln. 21; Pan II, par. [0054]), whereby the prior art appears to teach the components affecting the pH of the claimed composition, whereby the claimed pH, would thus be obvious. In response to applicant’s argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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).
Applicant further argues:
Second, Applicant submits that nothing in Pan I or Pan II teaches or suggests optimizing amounts of propylene glycol and dipropylene glycol in any particular ratio, contrary to the Office's arguments. Pan I discloses, for example, in Example 15:
A serum was prepared containing silymarin and the additional antioxidants vitamin C and Ferulic acid. The components of the serum are shown in the table below.
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The components of Phase A except for the alcohol were combined and mixed at 60°C then cooled to room temperature. Once at room temperature, the alcohol was added. The components of Phase B were separately combined and mixed. The mixture was heated to 65°C in order to dissolve the laureth-23. Phase A was added into phase B and mixed until the composition had a uniform consistency.
Pan I, p. 56. While the ratio of the amounts of propylene glycol and dipropylene glycol in the composition of Example 15 would be within the recited range of “from about 1 :6 to about 1 :1,” the Office fails to provide any explanation as to why the skilled artisan would have been motivated to select amounts of these components relative to each other in order to achieve the claimed weight ratio. In contrast, such ratio was found to be unexpectedly significant for solubility and stability to create the compositions and results of the present application. See specification, p. 19 In. 17-p. 20 In. 10 (Example 3). In other words, even assuming arguendo a skilled artisan would have been motivated based on Pan I and/or Pan II to include and optimize the amounts of those individual components, the Office has provided no explanation as to why or how the skilled artisan would have been motivated to optimize the amounts of those components relative to each other, i.e., to achieve the weight ratio as claimed. See, e.g., SNF S.A. v. Solenis Techs., IPR2020-01730, Paper 10, at *15 (P.T.A.B. April 22, 2021) (holding that picking values to calculate a ratio from unrelated ranges disclosed in the prior art simply because they combine to produce a the claimed ratio suggests reliance on hindsight, which is "not excused by the mere fact that the specific values combined to produce the claimed ratio fall within the ranges disclosed in the prior art."). Because there is no evidence in the references or elsewhere on the record that anyone other than the present inventors recognized that such a weight ratio would have any effect on the compositions, the skilled artisan would not have been motivated to modify and combine the references in order to prepare a composition as currently claimed, including “wherein the weight ratio of propylene glycol to dipropylene glycol ranges from about 1 :6 to about 1 :1.”
Remarks, p. 9, par. 3, cont. to p. 11. In response: Pan I’s serum containing silymarin (Pan I, p. 56, ln. 1-11, Ex. 15 & Table) appears to correspond to “Inv. Ex. 1” in Table 3 at pp. 19-20 of the 03/30/2023 Specification in terms of both the claimed amounts and ratio of propylene glycol to dipropylene glycol. Therefore, per applicant’s admission that the “the ratio of the amounts of propylene glycol and dipropylene glycol in the composition of Example 15 would be within the recited range of ‘from about 1 :6 to about 1 :1,’” it is noted that MPEP § 2112(I) states that “the 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). 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).
Modified Claim Rejections - Nonstatutory Double Patenting Necessitated by Amendments
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 16 and 18-34 are rejected on the ground of nonstatutory double patenting over claims 1-6 of US Patent 11,446,233 B2 to Brieva et al., hereinafter “‘233 Patent,” matured from copending Application No. 17/038,977, in view of the disclosure of PAN I (WO 2017/172523 A1, Publ. Oct. 5, 2017; on 10/30/2023; hereinafter, “Pan I).
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a Silybum Marianum extract composition with salicylic acid, ascorbic acid, alkoxylated fatty alcohol surfactants, prolylene glycol, dipropylen glycol, water and overlapping pH requirements. To the extent the ‘233 Patent DOES NOT RECITE ferulic acid per the requirements of the instant claims, the incorporation thereof would be obvious in order to obtain the advantage of a suitable antioxidant.
Thus, the ‘233 Patent per Pan I render claims 16-34 obvious.
Response to Arguments
Applicants’ arguments, filed on June 15, 2026 (hereinafter, referred to as “Remarks”), have been fully considered, but they are not persuasive.
Applicant’s arguments filed on June 15, 2026 have been fully considered and it is noted that applicant will take appropriate action in the event that the claims are allowed or determined to have allowable subject matter therein. Remarks, p. 11, par. 2. Until such an appropriate event as noted by applicant is taken, the provisional double patenting rejection of record is maintained.
Summary/Conclusion
Claims 16 and 18-34 are rejected. No claims are 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611
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