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 the Claims
Claims 1-14 were originally filed May 17, 2023.
The preliminary amendment received May 17, 2023 canceled claims 1-6 and 8; amended claims 10-14; and added new claims 15-18.
Claims 7 and 9-18 are currently pending.
Claims 7 and 15-18 are currently under consideration.
Election/Restrictions
Applicant's election with traverse of Group I (claims 7, 9, and 15-18) in the reply filed on January 20, 2026 is acknowledged. The traversal is on the grounds that there is an existing technical relationship between a composition and a method of utilizing a composition and that the claims were deemed novel and inventive in the international stage. This is not found persuasive because applicants failed to traverse the prior art of record which was utilized to break Unity of Invention. In addition, the Written Opinion at the international stage is not controlling in U.S. Patent Office prosecution.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 20, 2026.
Applicant's election with traverse of applying the composition to an external surface, 12-hydroxystearic acid, skin, and secretion of AMPs as the species in the reply filed on January 20, 2026 is acknowledged. The traversal is on the ground(s) that applicants have presented a reasonable number of species and are entitled to claim a reasonable number of species. This is not found persuasive because, again, applicants neglected to traverse the prior art of record which was utilized to break Unity of Invention. In addition, a species requirement does not limit applicants from claiming any number of species. The species requirement is utilized to focus the search and examination of the claimed “invention”.
The requirement is still deemed proper and is therefore made FINAL.
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 20, 2026.
Please note: claims 17 and 18 should also be withdrawn. However, due to issues with the claims, the claims have been examined. This does not preclude withdrawal of any new claims or a new species requirement, if necessary.
Priority
The present application is a 371 (National Stage) of PCT/EP2021/082733 filed November 24, 2021 which claims foreign priority to EP 21152775.9 filed January 21, 2021 and India 202021052758 filed December 3, 2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on May 17, 2023 and November 5, 2024 are being considered by the examiner.
The information disclosure statement (IDS) submitted on January 20, 2026 is being considered by the examiner, in part. See crossed out citations. Several references appear mostly blank (i.e. appears that sections of the references are missing).
Drawings
No drawings are present.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
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 7 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 7 recites the limitation "said external surface" in line 3. There is insufficient antecedent basis for this limitation in the claim. Utilization of “said external surface of the body” is suggested.
Claim 16 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 16 recites the limitation "the external surface" in line 1. There is insufficient antecedent basis for this limitation in the claim. Utilization of “the external surface of the body” is suggested.
Claim 18 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 18 recites the limitation "the external surface" in line 1. There is insufficient antecedent basis for this limitation in the claim. Utilization of “the external surface of the body” is suggested.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 depends on independent claim 7. Independent claim 7 requires applying hydroxystearic acid to an external surface of the body. Dependent claim 17 simply refers to the function of the application (i.e. induces secretion of AMPs from keratinocytes). Dependent claim 17 does not alter the reagents in the method and/or the method steps. Therefore, dependent claim 17 fails to further limit independent claim 7. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 18 depends on independent claim 7. Independent claim 7 requires applying hydroxystearic acid to an external surface of the body. Dependent claim 18 simply refers to the function of the application (i.e. immunity is improved). Dependent claim 18 does not alter the reagents in the method and/or the method steps. Therefore, dependent claim 18 fails to further limit independent claim 7. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
"Products of identical chemical composition cannot have mutually exclusive properties." See 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.
"[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." See 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. See In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. See Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention."); Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1348-49, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) ("Because ‘sufficient aeration’ was inherent in the prior art, it is irrelevant that the prior art did not recognize the key aspect of [the] invention.... An inherent structure, composition, or function is not necessarily known."); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343-44, 74 USPQ2d 1398, 1406-07 (Fed. Cir. 2005) (holding that a prior art patent to an anhydrous form of a compound "inherently" anticipated the claimed hemihydrate form of the compound because practicing the process in the prior art to manufacture the anhydrous compound "inherently results in at least trace amounts of" the claimed hemihydrate even if the prior art did not discuss or recognize the hemihydrate); In re Omeprazole Patent Litigation, 483 F.3d 1364, 1373, 82 USPQ2d 1643, 1650 (Fed. Cir. 2007) (The court noted that although the inventors may not have recognized that a characteristic of the ingredients in the prior art method resulted in an in situ formation of a separating layer, the in situ formation was nevertheless inherent. "The record shows formation of the in situ separating layer in the prior art even though that process was not recognized at the time. The new realization alone does not render that necessary [sic] prior art patentable.").
Therefore, applying hydroxystearic acid to an external surface of the body induces secretion of AMPs, induces secretion of AMPs from keratinocytes, and immunity of the external surface of the body is improved (i.e. same functions).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 7 and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deshayes et al. WO 2017/178235 published October 19, 2017.
For present claims 7 and 16-18, Deshayes et al. teach methods of topically to the skin or hair (e.g. scalp) administering 10-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 2, 6, 7, 10, 11, 15).
Therefore, the teachings of Deshayes et al. anticipate the presently claimed method.
Claims 7 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liebmann et al. WO 2009/147180 published December 10, 2009.
For present claims 7 and 15-18, Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
Therefore, the teachings of Liebmann et al. anticipate the presently claimed method.
Claims 7 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kahn et al. WO 2017/070515 published April 27, 2017.
For present claims 7 and 15-18, Kahn et al. teach methods of administering orally or topically to the skin 12-hydroxystearic acid wherein treatment causes secretion of antimicrobial peptides (please refer to the entire specification particularly the abstract; paragraphs 9-20, 34-38, 50-54, 61, 62, 79, 80, 82, 83, 104-114, 117, 169).
Therefore, the teachings of Kahn et al. anticipate the presently claimed method.
Claims 7 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Salerno et al., 2013, Lipid-based microtubes for topical delivery of Amphotericin B, Colloids and Surfaces B: Biointerfaces, 107: 160-166.
For present claims 7 and 15-18, Salerno et al. teach methods of applying 12-hydroxystearic acid to skin (please refer to the entire reference particularly the abstract; Materials 2.1, 2.10, 2.11, 2.12; Results and Discussion 3.8, 3.9, 3.10).
Therefore, the teachings of Salerno et al. anticipate the presently claimed method.
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 7 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/835,945 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the presently claimed method and the claimed method of copending Application No. 18/835,945 (reference application) are drawn to administering 12-hydroxystearic acid to the skin.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 6,174, 846 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 6,174, 846 claims a liquid cleansing composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 6,361,766. Although the claims at issue are not identical, they are not patentably distinct from each other because both the presently claimed method and the method as claimed in U.S. Patent No. 6,361,766 are drawn to methods of applying to the skin a composition comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 7,510,704 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 7,510,704 claims a cosmetic composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 6,730,643 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 6,730,643 claims a soap bar comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-58 of U.S. Patent No. 7,332,153. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 7,332,153 are drawn to methods of topically applying to the skin a composition comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 6,680,285 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 6,680,285 claims a toilet bar comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 6,924,256. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 6,924,256 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 7,744,857 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 6,680,285 claims an antiperspirant composition comprising hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-74 of U.S. Patent No. 7,347,990. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 7,347,990 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 8,226,933. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 8,226,933 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 9,227,090. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 9,227,090 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 8,247,405. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 8,247,405 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 7,871,600. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 7,871,600 are drawn to methods of applying to hair (i.e. scalp) compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8,613,939. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 8,613,939 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 8,703,686 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 8,703,686 claims a transparent soap bar comprising hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 8,778,910 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 8,778,910 claims a skin cleaning composition comprising hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 9,744,109. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 9,744,109 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 9,883,997. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 9,883,997 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9,682,028. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 9,682,028 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 9,539,190. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 9,539,190 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,443,020 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 10,443,020 claims an aqueous cleaning composition comprising hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,660,836. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 10,660,836 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,759,412. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 11,759,412 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,077,039 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 11,077,039 claims a topical personal care skin lightening composition comprising hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,419,802. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 11,419,802 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid to provide enhanced antimicrobial efficacy.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,233,144. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 12,233,144 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,826,449. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 11,826,449 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,324,679 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 11,324,679 claims a composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,000,462 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 11,000,462 claims a liquid cleansing composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,666,519 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 11,666,519 claims a topical personal care composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,478,566 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 12,478,566 claims a composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,076,427. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present claims and the claims of U.S. Patent No. 12,076,427 are drawn to methods of applying to the skin compositions comprising 12-hydroxystearic acid.
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,767,314 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 11,767,314 claims a topical personal care composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,857,508 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 11,857,508 claims a composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,409,117 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 12,409,117 claims a wash composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,533,305 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 12,533,305 claims a wash composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,529,011 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 12,529,011 claims a wash composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
Claims 7 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,178,901 in view of Liebmann et al. WO 2009/147180 published December 10, 2009.
U.S. Patent No. 12,178,901 claims a cosmetic composition comprising 12-hydroxystearic acid.
Liebmann et al. teach methods of administering to the skin or scalp 12-hydroxystearic acid (please refer to the entire specification particularly the abstract; pages 1, 8, 12, 28, 36, 41, 52, 66, 67).
The claims would have been obvious because a particular known technique (i.e. applying a composition comprising 12-hydroxystearic acid to the skin or scalp) was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d1385 (U.S. 2007).
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/AMBER D STEELE/Primary Examiner, Art Unit 1658