DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1 and 11 are rejected.
No claims are allowed.
New Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the term “possibly.” The claims are indefinite since the term “possibly” is not an acceptable alternative language because there is ambiguity as to which alternatives are covered by the claim. In the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112(b). See MPEP 2173.05(h). The term “possibly” means that something may exist, thus indicating a degree of uncertainty. It is unclear when the limitation following the term “possibly” will exist such that one would know when the limitation is required in the claimed invention.
To obviate this issue, it is suggested that the term “possibly” be replaced with the term “optionally.”
New Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
1. Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Imoto et al., (US 2017/0042783 A1, Feb 16, 2016) (hereinafter Imoto) in view of Ringenbach et al., (US 2019/0099362 A1, April 04, 2019) (hereinafter Ringenbach).
Imoto discloses a thickened composition, including a polyhydric alcohol, water, an organic acid, and a lipid peptide-type compound containing at least one of a compound of Formula (1) below and a pharmaceutically usable salt of compound of Formula (1),
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where R1 is a C9-23 aliphatic group, R2 is a hydrogen atom or a C1-4 alkyl group that optionally has a C1-2 branched chain, R3 is a —(CH2)n—X group, n is a number of 1 to 4, X is an amino group, guanidino group, —CONH2 group, a 5-membered ring group optionally containing 1 to 3 nitrogen atom(s), a 6-membered ring group optionally containing 1 to 3 nitrogen atom(s), or a condensed heterocycle group that contains a 5-membered ring and a 6-membered ring optionally containing 1 to 3 nitrogen atom(s) (Abstract). The thickened composition further comprises at least one fatty acid ([0013]) such as stearic acid ([0015]). The thickened composition is highly safe for living organisms, and highly useful particularly in applications such as cosmetics materials ([0025]). The composition may be a solution (i.e., liquid) comprising a surfactant ([0069]) such as sucrose fatty acid esters ([0072]).
Imoto differs from the instant claims insofar as not disclosing wherein the sucrose ester is selected from the group consisting of sucrose laurate, sucrose myristate, sucrose palmitate, and sucrose stearate.
However, Ringenbach discloses a non-therapeutic cosmetic treatment comprising a plant material derived from Marrubium vulgare used to tighten skin pores ([0008]). A cosmetic composition according to the invention comprises a plant material derived from Marrubium vulgare in a physiologically acceptable medium ([0040]) such as an aqueous or hydro-alcoholic solution ([0041]). The plant material of the invention may be combined with other active ingredients at effective synergistic or reinforcing concentrations to achieve the desired effects described for the invention, such as peptides ([0044]). Suitable peptides include, but are not limited to: lipophilic derivatives of peptides, preferably palmitoyl derivatives such as the dipeptide N-Palmitoyl-beta-Ala-His (i.e., a lipidic peptide compound) ([0058]). Formulation Example 2 comprises sucrose stearate as an emulsifier.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Imoto discloses wherein the composition comprises sucrose fatty acid esters. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated sucrose stearate into the composition of Imoto since it is a known and effective sucrose fatty acid ester used for cosmetic compositions as taught by Ringenbach.
2. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Imoto et al., (US 2017/0042783 A1, Feb 16, 2016) (hereinafter Imoto) in view of Ringenbach et al., (US 2019/0099362 A1, April 04, 2019) (hereinafter Ringenbach), and further in view of Ranade et al., (US 2010/0266648 A1, Oct. 21, 2010) (hereinafter Ranade).
As discussed above, Imoto and Ringenbach make obvious the limitations of claim 1 but do not teach wherein the composition can form a film on the surface of skin or hair, wherein the film has a surface roughness, and the average surface roughness is 3 nm to 500 nm.
However, Ranade discloses compositions and methods for imparting super-hydrophobic properties to cosmetics, which can be used to significantly improve water repellency compared to traditional cosmetics (Abstract). Conventional water-proof or water-resistant topical compositions are not super-hydrophobic primarily because they lack nano-scale surface roughness. In the absence of roughness on the nano -meter scale, smooth films made of currently known hydrophobic materials exhibit contact angles that are not in the super-hydrophobic range, i.e., they are less than 140°. It would be desirable to provide cosmetic films which impart super-hydrophobic films for improving water repellency, self-cleaning properties, and long-wear properties ([0014]). The invention comprises a particulate material that provides nano-scale (1 nm to ˜1,000 nm) surface roughness or structure on a film, which imparts superhydrophobicity by providing protuberances on which water droplets may sit, thereby minimizing contact of the water with the surface at large, i.e., reducing surface adhesion ([0044]).
Imoto discloses wherein the composition may be a solution and comprise thickeners and gelators ([0069]). Therefore, the composition of Imoto can form a film on the surface of skin and hair when the solution is thickened.
When the composition is a film, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the film to have nano-scale (1 nm to ˜1,000 nm) surface roughness in order to impart superhydrophobicity for imparting water repellency, self-cleaning properties, and long-wear properties as taught by Ranade. One of ordinary skill in the art would have had a reasonable expectation of success of formulating a composition with surface roughness since Imoto discloses wherein the composition may comprise tactile-feeling enhancers and keratin-exfoliating agents in paragraph [0069].
Response to Applicant’s Arguments
Applicant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendments have been made.
New 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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of co-pending Application No. 17/789444 (reference application) in view of Imoto et al., (US 2017/0042783 A1, Feb 16, 2016) (hereinafter Imoto) and Ringenbach et al., (US 2019/0099362 A1, April 04, 2019) (hereinafter Ringenbach). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and copending claims both recite a composition comprising substantially the same lipidic peptide compound.
The instant claims differ from the co-pending claims insofar as disclosing an anti-pollution material comprising a sucrose ester, a polyhydric alcohol, and stearic acid, wherein the sucrose ester is selected from the group consisting of sucrose laurate, sucrose myristate, sucrose palmitate, and sucrose stearate, and wherein the composition is in the form of a liquid.
However, Imoto discloses a thickened composition, including a polyhydric alcohol, water, an organic acid, and a lipid peptide-type compound containing at least one of a compound of Formula (1) below and a pharmaceutically usable salt of compound of Formula (1),
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where R1 is a C9-23 aliphatic group, R2 is a hydrogen atom or a C1-4 alkyl group that optionally has a C1-2 branched chain, R3 is a —(CH2)n—X group, n is a number of 1 to 4, X is an amino group, guanidino group, —CONH2 group, a 5-membered ring group optionally containing 1 to 3 nitrogen atom(s), a 6-membered ring group optionally containing 1 to 3 nitrogen atom(s), or a condensed heterocycle group that contains a 5-membered ring and a 6-membered ring optionally containing 1 to 3 nitrogen atom(s) (Abstract). The thickened composition further comprises at least one fatty acid ([0013]) such as stearic acid ([0015]). The thickened composition is highly safe for living organisms, and highly useful particularly in applications such as cosmetics materials ([0025]). The composition may be a solution (i.e., liquid) comprising a surfactant ([0069]) such as sucrose fatty acid esters ([0072]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated a sucrose ester, a polyhydric alcohol, and stearic acid into the pending claims motivated by the desire to formulate a thickened a solution (i.e., liquid) which is highly useful composition, particularly in applications such as cosmetics materials as taught by Imoto.
The instant claims differ from the combined teachings of the co-pending claims and Imoto insofar as disclosing wherein the sucrose ester is selected from the group consisting of sucrose laurate, sucrose myristate, sucrose palmitate, and sucrose stearate.
However, Ringenbach discloses a non-therapeutic cosmetic treatment comprising a plant material derived from Marrubium vulgare used to tighten skin pores ([0008]). Formulation Example 2 comprises sucrose stearate as an emulsifier.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Imoto discloses wherein the composition comprises sucrose fatty acid esters. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated sucrose stearate into the composition of Imoto since it is a known and effective sucrose fatty acid ester used for cosmetic compositions as taught by Ringenbach.
Regarding the limitation of the co-pending claims reciting an anti-pollution material, as noted on page 6, lines 5-11 of the co-pending specification, an anti-pollution composition may be a cosmetic. Thus, because the composition of Imoto is a cosmetic composition, Imoto teaches the limitation of an anti-pollution material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant’s Arguments
Applicant’s arguments have been considered but are moot because a new rejection necessitated by Applicant’s amendments has been made.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha J Knight whose telephone number is (571)270-3760. The examiner can normally be reached Monday - Friday 8:30 am to 5:00 pm 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, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.J.K./Examiner, Art Unit 1614
/TRACY LIU/Primary Examiner, Art Unit 1614