DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-5, 7-16 and 18-23 are pending. Claims 6 and 17 are canceled.
Claim 9-10, 19 and 23 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-5, 7-8, 11-16, 18 and 20-22 are examined on their merits in light of the elected species.
Information Disclosure Statement
The Information Disclosure Statement filed April 2, 2026 has been reviewed.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Rejections Withdrawn
Double Patenting
In light of the abandonment of the case the provisional rejection of claims 1-5, 7-8, 11-16, 18 and 20-22 are provisionally rejected as being directed to an invention not patentably distinct from claims 1-20 of commonly assigned U.S. Patent Appn No. 17/609971 in view of Ebanks et al. US 2019/0091132 (3/28/2019) and Ehlis et al. WO 2015155158 (10/15/2015) is withdrawn as moot.
New Rejections/Rejections Maintained
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.
Claims 12 and 20-21 are 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 12 recites the limitation “wherein the one or more particulate organic filters” in lines 1-2 in referring to claim 1. There is insufficient antecedent basis for this limitation in claim 1. Specifically, claim 1, from which claim 12 depends, no longer recites this language.
It is suggested amending claim 12 to recite “wherein the 5,6,6’,6’ -tetraphenyl-3,3’-(1,4-phenylene)-bis[1,2,4]triazine is hydro-dispersed”.
Claim 20 recites the limitation “wherein the one or more particulate organic filters (c)” in lines 1-2 in referring to claim 1. There is insufficient antecedent basis for this limitation in claim 1. Specifically, claim 1, from which claim 20 depends, no longer recites this language.
It is suggested amending claim 20 to recite “wherein the 5,6,6’,6’ -tetraphenyl-3,3’-(1,4-phenylene)-bis[1,2,4]triazine has a particle size D50 from 100 to 1000 nm.”
Claim 21 recites the limitation “of the one or more particulate organic filters (c)” in line 2 in referring to claim 1. There is insufficient antecedent basis for this limitation in claim 1. Specifically, claim 1, from which claim 21 depends, no longer recites this language.
It is suggested amending claim 21 to recite “comprising from 2 wt% to 5 wt% of the 5,6,6’,6’ -tetraphenyl-3,3’-(1,4-phenylene)-bis[1,2,4]triazine (c) relative to the total weight of the composition.”
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 of this title, 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 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.
The rejection of claims 1-5, 7-8, 11-16, 18 and 20-22 under 35 U.S.C. 103 as being unpatentable over Ebanks et al. US 2019/0091132 (3/28/2019) in view of KR 20170131350 (11/29/2017)(“KR”) and Ehlis et al. WO 2015155158 (10/15/2015) is maintained.
Ebanks teaches a cosmetic composition capable of forming a multilayer structure after application to a keratinous material. (See Abstract). Ebanks teaches tris-biphenyl triazine UV filter and ethylhexyl triazone oil-soluble organic UV filters are suitable for use in its composition. (See [0256]). Ethylhexyl triazone is called for in instant claim 1 and it is the elected fat-soluble UV filter. UV filters can be added to the composition in amount from 0 to 99%. (See [0240]).
Ebanks also teaches that C12-C15 alkyl benzoates are suitable emollients and amounts such as from 0.1 to 20% of C12-C15 alkyl benzoates are taught. (See [0250]). C12-C15 alkyl benzoates are the elected species of emollient called for in instant claims 1, 2 and 18. Ebanks teaches that C12-C15 alkyl benzoates are an effective emollient compatible with UV filters and therefore they can be the only emollient used and comprise 100% of the solubilizing system of the fat-soluble ethylhexyl triazone oil-soluble organic UV filter. 100% is greater than 80% as called for in instant claim 1. 0.1% to 20% overlaps with the from 15% to 30% of the solubilizing system called for in instant claim 1.
Ebanks teaches that its composition can comprise an inorganic UV filter such as titanium dioxide. (See [0256]and claim 6). Titanium dioxide is also identified as a useful pigment for the composition. (See [0203, 206-208]). Titanium dioxide can be present in an amount of from 0.01% to 40%. (See [207-208]). Titanium dioxide is called for in instant claim 22.
Ebanks’ composition possesses no ethylhexyl salisate, octocrylene, ethylhexylcinnamatem isoamyl methoxycinnamate, homosalte, PABA, octyl dimethyl PABA, 3-methylbezylidene camphor, 4-methylbenzylidene camphor, benzophenone-3 or benzophenone-4 as called for in instant claim 1. Ebanks’ composition also possesses no C1-C4 alcohol as called for in instant claim 14.
Ebanks does not teach BEMT, diethylamino hydroxy benzoyl hexyl benzoate and ethyl hexyl triazone, PBDT, particle size or starch. These deficiencies are provided in the teachings of KR 20170131350 and Ehlis et al.
KR teaches a sprayable cosmetic sunscreen composition comprising at least one UV filter and at least one emollient in a physiologically acceptable medium. (See Abstract). KR teaches that desirable UV protection actives include BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), (See Example 1). Other desirable UV protection actives include diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone. (See KR claim 3 and page 4). BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone are called for in instant claims 4 and 5 and are the elected fat soluble photoprotective system. Combinations of UV filters are expressly taught by KR. (See page 4). C12-15 alkyl benzoate is taught as an acceptable emollient in the KR sunscreen. (See KR claim 9).
UV filters such as BEMT are taught to be present in an amount of 0.5 to 5%. (See KR claim 9). 0.5 to 5% overlaps with the from 3 to 19% of the fat-soluble photoprotective system called for in instant claim 1. 0.5 to 5% also overlaps with the from 2 to 4%, the from 5 to 7% and the from 3 to 5% called for in instant claim 19.
Ehlis et al. (Ehlis) teaches a sunscreen composition comprising a UV filter combination comprising phenylene bis-diphenyltriazine (5,6,5’,6’ -tetraphenyl-3,3’-(1,4-phenylene)-bis[1,2,4]triazine) which is also known as PBDT for cosmetic preparations. (See page 2 and Abstract). PBDT is called for in claim 1c. Ehlis teaches that surprisingly it has been found that PBDT in micronized form has very good properties in sunscreen compositions in combination with other inorganic and/or organic UV filters. Ehlis teaches an aqueous dispersion of PBDT. Ethylhexyl triazone is one such UV filter that PBDT has very good properties in combination with when in sunscreen compositions.
PBDT is exemplified in amounts of from 1.0% to 8% by weight. (See Example B7). 1 to 8% overlaps with the from 1 to 8% of the particulate organic UV filter called for in instant claim 3, overlaps with the from 1 to 4% called for in instant claim 9 and also overlaps with the from 2 to 5% called for in claim 21. C12-15 alkyl benzoate is taught as an acceptable emollient in the formulation. (See Example B8).
Ehlis teaches particle sizes for UV absorber dispersions of D50 = 130 nm. (See Preparation Example A). D50 = 130 nm falls within the D50 of from 100 to 1000 nm as called for in instant claim 20. Ehlis also teaches consistency regulators in its dispersion that can include starch particles as called for in instant claim 16. (See page 22, lines 19-35).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Ebanks sunscreen cosmetic composition of 0 to 99% ethylhexyl triazone oil-soluble organic UV filter in 0.1 to 30% C12-C15 alkyl benzoates and 0.1 to 40% titanium dioxide to add 0.5 to 5% BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone as taught by KR in order to have desirable UV filters that are compatible with C12-C15 alkyl benzoate emollients as taught by KR.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Ebanks sunscreen cosmetic composition of 0 to 99% ethylhexyl triazone oil-soluble organic UV filter in 0.1 to 30% C12-C15 alkyl benzoates and 0.1 to 40% titanium dioxide to add from 1.0% to 8% PBDT as taught by Ehlis, have particle size particle sizes for all UV absorbers be D50 = 130 nm and starch particles as consistency regulators in order to have the excellent properties of PBDT in sunscreen compositions in combination with other inorganic and/or organic UV filters and the ability to regulate consistency as taught by Ehlis.
With respect to claims 6 and 7, with Ebanks teaching from 0.1 to 20% C12-15 alkyl benzoates and KR teaching 0.5 to 5% BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone, this ratio of 0.5 to 5% BEMT, diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone to 0.1 to 20% C12-15 alkyl benzoates overlaps with the greater than or equal to 0.5 called for in instant claims 1 and 7.
With respect to claim 8, with Ehlis teaching from 1.0% to 8% PBDT and KR teaching 0.5 to 5% BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone, this ratio of 1.0 to 8% PBDT to 0.5 to 5% BEMT, diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone overlaps with the less than or equal to 0.35 called for in instant claim 8.
With respect to claim 13, with Ehlis teaching from 1.0% to 8% PBDT and KR teaching 0.5 to 5% BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone, the total number of UV filters present in the composition is 4 which is less than or equal to 5 as called for in instant claim 13.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
The rejection of claims 1-5, 7-8, 11-16, 18 and 20-22 as being directed to an invention not patentably distinct from claims 1-19, 21 and 23-25 of commonly assigned U.S. Patent No. 9763867 in view of Ebanks et al. US 2019/0091132 (3/28/2019) and Ehlis et al. WO 2015155158 (10/15/2015) is maintained.
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case the claims are drawn to a cosmetic emulsion comprising (a) a fat-soluble photoprotective system, consisting of one or more fat-soluble UV filters chosen from: (i) hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate, (ii) 2,4-bis[4-(2-ethylhexyloxy)-2-hydroxyphenyl]-6-(4-methoxyphenyl)-1,3, 5-triazine, (iii) butyl methoxydibenzoylmethane, (iv) ethylhexyl triazone, and (v) diethylhexyl butamido triazone; (b) a solubilizing system of the fat-soluble photoprotective system (a) comprising C12-C15 alkyl benzoate in a quantity greater than or equal to 80 wt%, relative to the total weight of the solubilizing system; and (c) one or more, particulate organic UV filters, chosen from: (vi) 5,6,5’, 6’ -tetraphenyl-3,3’ –(1,4-phenylene)-bis[1,2,4]triazine, (vii) methylene bis-benzotriazoyl tetramethylbutylphenol, and (viii) tris-biphenyl triazine; wherein the composition comprises from 3 wt% to 19 wt% of the fat-soluble photoprotective system (a) relative to the total weight of the composition; and wherein the composition comprises from 15 wt% to 30 wt% of the solubilising system (b) relative to the total weight of the composition; wherein the composition does not comprise ethylhexyl salicylate, octocrylene, ethylhexyl methoxycinnamate, isoamyl methoxylcinnamate, homosalate, para-aminobenzoic acid (PABA), octyl dimethyl PABA, 3-methylbenzylidene camphor, 4-methylbenzylidiene camphor, benzophenone-3 and benzophenone-4 and titanium dioxide and particulate starch.
Claims 1-19, 21 and 23-25 differ from those of the instant application in that they do not teach amounts of C12-15 alkyl benzoate and do not teach titanium dioxide pigment or starch particles. These deficiencies are made up for with the teachings of Ebanks and Ehlis.
The teachings of Ebanks are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the sunscreen composition of US Patent No. 9763867 to use from 0.1% to 20.0% C12-C15 alkyl benzoates and 0.01% to 40% titanium dioxide in light of Ebanks teaching that C12-C15 alkyl benzoates is an effective emollient compatible with UV filters and titanium dioxide is an effective pigment.
The teachings of Ehllis are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the sunscreen composition of US Patent Appn. No. 9763867 to add starch particles as consistency regulators in order to have the ability to regulate consistency as taught by Ehlis.
Claims 1-5, 7-8, 11-16, 18 and 20-22 are rejected as being directed to an invention not patentably distinct from claims 1-20 of commonly assigned U.S. Patent No. 9763867 in view of Ebanks et al. US 2019/0091132 (3/28/2019) and Ehlis et al. WO 2015155158 (10/15/2015) as described 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. 9763867, 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
Applicants’ arguments of May 13, 2026 have been fully considered and are found to be unpersuasive as described further below. Applicants note the narrowing amendments to claim 1 to recite a composition comprising 5,6,5’,6’-tetraphenyl-3,3’-(1,4-phenylene)-bis[1,2,4,triazine as a particulate inorganic filter.
Obviousness Rejections
Applicants argue that neither Ebanks nor KR’350 disclose the specific compound now recited in claim 1. Additionally, a person of ordinary skill in the art would not have considered these references relevant to the claimed invention. Applicants assert that Ebanks teaches C12-15 alkyl benzoates but only among numerous emollients without any specific advantage associated with C12-15 alkyl benzoates and the amounts are disclosed for emollients in general. Ebanks also doesn’t address the a/b ratio and does not teach technical effect associated with these parameters.
Applicants note that their data demonstrates that the claimed structured system results in a composition that prevents recrystallization of fat-soluble UV filters over time in a homogenous clear solution. This unexpected effect is neither disclosed nor suggested in Ebanks or KR ‘350. In contrast, Ebanks includes caprylic/capric triglycerides as alternative emollients and KF ‘350 teaches dicaprylyl carbonate, yet Applicants comparative data demonstrate that such alternatives fail to suggest the unexpected results.
Ehlis relates to phenylene bis-diphenyltriazone, but still does not remedy the deficiencies of Ebanks or KR ‘350. It provides no teaching regarding the claimed emollient selection, the require (a/b) ratio or the interaction of components necessary to achieve the demonstrated stabilization effect.
Even if combined, Ebanks, KR ‘350 fail to teach or suggest the claimed subject matter or its unexpected technical effect. Applicants assert that the rejection relies on impermissible hindsight reconstruction.
Applicants request reconsideration of the obviousness-type double patenting rejection in light of the amendments to the claims. Applicants also request that the obviousness-type double patenting rejection be held in abeyance.
Response
Applicants’ arguments are found to be unpersuasive. Ebanks in view of KR and Ehlis teach all of the limitations of the amended claims, and there is motivation within them to combine their teachings to render the claimed invention obvious.
As Applicants themselves admit, Ehlish teaches phenylene bis-diphenyl triazine. Applicants’ arguments are not found to be persuasive because the obviousness rejection does not employ hindsight. Hindsight has not been used in making any obviousness rejections; this is evident in that all of the claimed elements are taught or suggested in the prior art references themselves and so is the motivation to combine them. Since both the teaching of the components and the motivation to use it is found in the prior art references themselves, the rejection relies on only knowledge from the prior art references themselves.
For example, Ehlish teaches that the motivation to add the PBDT (to which claim 1 is now amended to be limited to) taught by Ehlish in sunscreen compositions lies in its ability to be compatible and combinable with other inorganic and/or organic UV filters and the ability to regulate the consistency of the composition. Additionally, Ebanks teaches that C12-C15 alkyl benzoates are an effective emollient compatible with UV filters and due to this effectiveness and compatibility they can be the only emollient used and comprise 100% of the solubilizing system of the fat-soluble ethylhexyl triazone oil-soluble organic UV filter. Both the teachings and the motivations are found in the prior art references and identified and discussed in the obviousness rejections themselves.
As stated in the rejection above it would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Ebanks sunscreen cosmetic composition of 0 to 99% ethylhexyl triazone oil-soluble organic UV filter in 0.1 to 30% C12-C15 alkyl benzoates and 0.1 to 40% titanium dioxide to add from 1.0% to 8% PBDT as taught by Ehlis, have particle size particle sizes for all UV absorbers be D50 = 130 nm and starch particles as consistency regulators in order to have the excellent properties of PBDT in sunscreen compositions in combination with other inorganic and/or organic UV filters and the ability to regulate consistency as taught by Ehlis.
Applicants’ argument that neither Ebanks nor KR ‘350 disclose nor suggest the recrystallization of fat-soluble UV filters over time in a homogeneous clear solution is not found to be persuasive because it is not necessary that the prior art suggest this effect. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem.
It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Applicants’ assertion of unexpected results is not found to be persuasive for the reason that the results are not commensurate in scope with the claims. Claim 1 is broader than the Examples tested. The Examples show only sodium salicylate and sodium benzoate tested, but the salicylate is directed to salicylate salts or acids in claim 1 and the benzoate is directed to benzoate salts or acids. Additionally, claim 1 is directed to any surfactant having a branched or linear alkyl chain of less than C12 at amounts from about 10 to about 17% by weight but only sodium laureth-1 sulfate and sodium deceth-1 sulfate are used in the Examples. The scope of claim 1 is thus much broader than the Example compositions tested in the instant specification.
All showings of secondary considerations of obviousness must be commensurate in scope with the claims. Unexpected results must be commensurate in scope with the claims which the evidence is offered to support. See In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 196 (CCPA 1980). See MPEP 716.02(d).
Applicants request to hold the double patenting rejection in abeyance until there is an indication of allowability of claims is noted. Applicant is reminded that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejection is maintained as no action regarding this rejection has been taken by applicants at this time.
Please note the new indefinite rejections applied above which were necessitated by the amendments to the claims.
Conclusion
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 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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
