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 .
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.
Claim Status
Applicant’s amendment of 07/07/2026 is acknowledged. Claims 1, 3, 7, and 10-13 are amended, and claims 4-5 and 8-9 are cancelled. Claims 1-3, 6-7, 10-15 are currently pending and are examined on the merits herein.
Priority
The instant application is a 371 of PCT/JP2021/030482 filed on 08/13/2021 and claims foreign priority to JP2020-141567 filed on 08/25/2020 and FR2010177 filed on 10/06/2020 as reflected in the filing receipt dated on 06/27/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Previous Rejections/Objections
Applicant’s arguments filed 07/07/2026 have been fully considered. Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections have only been modified as necessary to address Applicant’s amendment to the claims. They constitute the complete set of rejections presently being applied to the instant application. Applicant’s arguments insofar as they pertain to the present grounds of rejections are addressed herein.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6-7, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pan (US20180207077A1; 07/26/2018; PTO-892 of 06/02/2025) in view of Koerbaecher (DE4436270C1; 03/07/1996; PTO-892 of 06/02/2025).
Pan discloses microemulsion compositions, which are useful as cosmetic and/or pharmaceutical compositions for application to the skin and/or hair, comprising: (a) polydatin, (b) optionally, niacinamide; (c), optionally baicalin, (d) one or more oils, (e) water, and (f) one more emulsifiers (Abstract).
In an exemplary embodiment prepared based on wt. % of the total composition (Paragraphs 0083-0084, Formulation No. 4), the composition comprises 1% polydatin, 2% vitamin B3 as niacinamide, and water, among other ingredients.
Regarding claims 1, 3, and 10: Polydatin, niacinamide, and water read on the same as instantly claimed. The amounts of polydatin and niacinamide each lie within and thus reads on the instantly claimed ranges.
Regarding claim 2: Polydatin is a stilbene compound and antioxidant extracted from the root and rhizome of the plant species Polygonum cuspidatum (Paragraph 0006).
Regarding claim 12: The weight ratio of polydatin to niacinamide, which equals 1:2, lies within and thus reads on the instantly claimed range.
It is noted that other exemplary embodiments disclosed by Pan, including Formulations 5 and 7-10, also meet the above instant claim limitations.
Regarding claim 14: Pan further notes that the term “microemulsion” refers to a suspension or mixture of tiny droplets of an oil component in an aqueous component (Paragraph 0088). Because the compositions of Pan comprise water as the aqueous component, the compositions meet the limitation of an O/W emulsion.
Regarding claim 15: Pan further discloses methods for improving the appearance of skin and hair by applying the microemulsion composition to the skin or hair (Paragraph 0016). Because skin is a keratin substance as evidenced by the instant specification (Page 3, lines 10-15), the method of Pan reads on the instant method.
However, Pan does not expressly teach that the formulation comprises the chlorogenic acid recited in instant claims 1, 6-7, 11, and 13.
Koerbaecher teaches cosmetic and dermatological formulations comprising 0.01 wt. % to 10 wt. % chlorogenic acid for use in the treatment, care, and cleansing of the skin and/or hair (Paragraph 0017). Chlorogenic acid is plant-derived (Paragraph 0013) and found to be an effective antioxidant, effective against the harmful oxidative influences of oxidizing substances and the oxidative effect of secondary products cause by radiation, namely light, and in particular UV light (Paragraphs 0011-0012). It can be advantageously combined with other antioxidants, including stilbenes and its derivatives (Paragraph 0025). The cosmetic and dermatological preparations of Koerbaecher can be in various forms, including oil-in-water (O/W) emulsion, among others (Paragraph 0019). In exemplary embodiments (Example 4, Formulations I and II; Machine translation provided on Page 25), hair conditioners comprise 1 wt. % to 1.5 wt. % chlorogenic acid, wherein chlorogenic acid is represented by the term “CGS” (Paragraph 0063).
Regarding the chlorogenic acid recited in claims 1, 6-7, 11, and 13: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the microemulsion composition of Pan (Formulation No. 4) by further including the plant-derived chlorogenic acid of Koerbaecher. One of ordinary skill in the art would have been motivated to include chlorogenic acid to achieve an added antioxidative and photoprotective effect, which Koerbaecher teaches is even more advantageous in combination with another antioxidant, including stilbenes, such as the polydatin of Pan.
Regarding the instantly claimed amount of the chlorogenic acid: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manipulate the amount of chlorogenic acid using 1 wt. % to 1.5 wt. %, which lies within and thus renders obvious the ranges recited in claims 1 and 7, as a starting point for routine optimization because Koerbaecher teaches that any amount within this range is effective in providing antioxidative effects in cosmetic or dermatological formulations.
Regarding the instantly claimed weight ratios: The weight ratio of polydatin to chlorogenic acid in the composition taught by the combination of Pan and Koerbacher, which equals approximately 1:1.5 to 1:1, lies within and thus renders obvious the range recited in claim 11. The weight ratio of niacinamide to chlorogenic acid, which equals approximately 1.3:1 to 2:1, lies within and thus renders obvious the range recited in claim 13.
One of ordinary skill in the art would have a reasonable expectation of success in modifying the composition of Pan as proposed because Koerbaecher teaches that chlorogenic acid can be used in oil-in-water cosmetic or dermatological preparations, particularly in combination with other antioxidants including stilbenes. Further, the antioxidative effects of chlorogenic acid are consistent with the intended outcomes of applying the formulation of Pan, which include improving skin appearance by imparting photoprotection (Pan, Paragraph 0016).
Response to Arguments
Applicant’s arguments submitted on 07/07/2026 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but were not found to be persuasive.
Applicant argues that the amended claims are now commensurate in scope with the demonstrated results and that the data establish the criticality of the recited amount of chlorogenic acid. The Examiner respectfully disagrees. The data presented by Applicant in support of allegedly unexpected results fail to establish the criticality of the upper limit of the recited concentration range of chlorogenic acid, as well as the criticality of either recited concentration ranges of polydatin or niacinamide. While Applicant submits that the provided examples provide precisely the comparison contemplated by MPEP 716.02(d), which states that “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range” (emphasis added), no data are provided to support the criticality of the recited upper limit of 15 wt.% chlorogenic acid, or any concentration of chlorogenic acid above 1.5 wt.%. How could an ordinarily skilled artisan readily ascertain that 10 wt.% chlorogenic acid provides the same stabilizing effect? Does 16 wt.% chlorogenic acid not afford the same photostability of polydatin? This is particularly unclear in view of Applicant’s point that “one would expect the photostability to increase across the full range [of chlorogenic acid concentrations] tested” (pg. 9, Remarks filed 07/07/2026). Therefore, the Examiner maintains that the data provided are not commensurate in scope with the instant claims and, thus, are insufficient to overcome the established case of prima facie obviousness set forth in the prior art rejections of record.
Applicant further argues that the photostability of polydatin is a property not taught or suggested by the cited references, and that the simultaneous achievement of thermal stability and photostability is unexpected. These arguments have been fully considered but were not found to be persuasive.
First, the instant claims are not limited to a composition having any particular thermal stability or photostability. They are broadly drawn to a composition comprising four components that are routinely incorporated into cosmetic and dermatological compositions in exact same amounts as instantly claimed. As discussed in the prior art rejections of record, it would have been prima facie obvious to one of ordinary skill in the art to further include 1 wt.% to 1.5 wt.% chlorogenic acid in a cosmetic composition comprising polydatin, niacinamide, and water because the prior art teaches that this concentration of chlorogenic acid is known to provide additional antioxidative and photoprotective effects when incorporated into compositions that comprise similar ingredients and that are useful for the same purpose. Thus, an ordinarily skilled artisan would have had sufficient motivation to arrive at the exact composition as instantly claimed, regardless of Applicant’s finding of allegedly unexpected properties that flow naturally from the claimed combination.
Second, as discussed above, the data provided to support Applicant’s argument of unexpected results are not commensurate in scope with the instant claims and, thus, are insufficient to rebut the prima facie case of obviousness set forth above.
Because Applicant’s results do not establish criticality of the instantly claimed concentrations and, importantly, because the cited combination of references would have led one of ordinary skill in the art to the instantly claimed composition regardless of Applicant’s allegedly unexpected results, the secondary evidence provided by Applicant fails to outweigh the strong case of prima facie obviousness set forth in the prior art rejections of record. Accordingly, the 103 rejections are maintained.
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 1-3, 6-7, and 10-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 10, 15-16, and 18 of U.S. Patent No. US 10,137,072 B2 in view of Koerbaecher (DE4436270C1; 03/07/1996; PTO-892 of 06/02/2025) and Pan (US20180207077A1; 07/26/2018; PTO-892 of 06/02/2025).
US ‘072 claim 1 recites a method comprising applying to the skin of a subject a cosmetic composition comprising: (a) 0.001 to 20 wt. % of one or more antioxidants selected from the group consisting of polydatin, among others; (b) 0.001 wt. % to 30 wt. % of one or more cosmetically acceptable hydrotropes selected from the group consisting of nicotinamide (also known as niacinamide), among others; and (c) a cosmetically acceptable carrier. US ‘072 claim 3 recites that (a) comprises polydatin. US ‘072 claim 10 recites that (c) comprises water, an organic solvent, or mixture thereof. US ‘072 claim 15 recites a method comprising applying to the skin of a subject a cosmetic composition comprising: (a) 0.001 to 20 wt. % of one or more antioxidants selected from the group consisting of polydatin, among others; (b) 0.001 wt. % to 30 wt. % of one or more cosmetically acceptable hydrotropes selected from the group consisting of nicotinamide (also known as niacinamide), among others; (c) a cosmetically acceptable carrier selected from the group consisting of water and an organic solvent; and other ingredients. The method step of applying the composition to the skin reads on the method for treating a keratin substance recited in instant claim 15. Because US ‘072 claims 10 and 15 recite only two options for the cosmetically acceptable carrier, one of ordinary skill in the art could immediately envision an embodiment wherein water is selected and, therefore, the claim reads on the water of instant claim 1. US ‘072 claim 16 recites that the composition comprises nicotinamide (also known as niacinamide), and claim 18 recites that (a) comprises polydatin, which read on the same as recited in instant claim 1. The amounts of polydatin and nicotinamide recited in the claims of US ‘072 overlap the ranges recited in instant claims 3 and 10, respectively.
The claims of US ‘072 differ from the instant claims in that the claims of US ‘072 do not explicitly recite that the composition comprises the chlorogenic acid recited in instant claims 1, 6-7, 11, and 13, that the polydatin is derived from plants as recited in instant claim 2, the specific amounts of polydatin or niacinamide recited in instant claims 3 or 10, respectively, the weight ratio of polydatin to niacinamide recited in instant claim 12, or that the composition is an O/W emulsion as recited in instant claim 14.
The teachings of Koerbaecher and Pan are as set forth above.
Regarding the chlorogenic acid recited in claims 1, 6-7, 11, and 13: It would have been obvious to one of ordinary skill in the art to modify the composition of the method recited in the claims of US ‘072 by adding the plant-derived chlorogenic acid of Koerbaecher. One of ordinary skill in the art would have been motivated to include chlorogenic acid to achieve an added antioxidative and photoprotective effect, which Koerbaecher teaches is even more advantageous in combination with another antioxidant, including stilbene compounds like the polydatin recited in the claims of US ‘072.
Regarding the instantly claimed amount of the chlorogenic acid: It would have been obvious to one of ordinary skill in the art to manipulate the amount of chlorogenic acid using 1 wt. % to 1.5 wt. %, which lies within and thus renders obvious the ranges recited in instant claims 1 and 7, as a starting point for routine optimization of the composition taught by the combination of US ‘072 claims and Koerbaecher because Koerbaecher teaches that any amount between 1 wt. % to 1.5 wt. % is effective in providing antioxidative effects in cosmetic or dermatological formulations.
Regarding the amount of polydatin recited in instant claims 1 and 3: It would have been obvious to one of ordinary skill in the art to manipulate the amount of polydatin using 1 wt. %, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization of the composition taught by the combination of US ‘072 claims, Koerbaecher, and Pan because Pan teaches that 1 wt. % is suitable for imparting antioxidative, anti-inflammatory, and photoprotective effects in cosmetic compositions that are applied to the skin.
Regarding the amount of niacinamide recited in instant claims 1 and 10: It would have been obvious to one of ordinary skill in the art to manipulate the amount of nicotinamide (also known as niacinamide) using 2 wt. %, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization of the composition taught by the combination of US ‘072 claims, Koerbaecher, and Pan because Pan teaches that 2 wt. % is suitable for formulating cosmetic compositions comprising polydatin, niacinamide, and water that are applied to the skin.
Regarding instant claim 2: It would have been obvious to one of ordinary skill in the art to substitute the polydatin of the composition taught by the combination of US ‘072 claims and Koerbaecher with the plant-derived polydatin of Pan according to known methods to yield the predictable result of a cosmetic composition for application to the skin comprising polydatin, niacinamide, water, and chlorogenic acid.
Regarding instant claims 11-13: The weight ratio of polydatin to chlorogenic acid in the composition taught by the combination of US ‘072 claims, Koerbaecher, and Pan, which equals approximately 1:1.5 to 1:1, lies within and thus renders obvious the range recited in instant claim 11. The weight ratio of polydatin to nicotinamide, which equals 1:2, lies within and thus renders obvious the range recited in instant claim 12. The weight ratio of nicotinamide to chlorogenic acid, which equals approximately 1.3:1 to 2:1, lies within and thus renders obvious the range recited in instant claim 13.
Regarding instant claim 14: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by the combination of US ‘072 claims, Koerbaecher, and Pan such that it is in the form of an O/W emulsion. One of ordinary skill in the art would have been motivated to use the form of O/W emulsion because Pan teaches that polydatin allows the formation of clear and stable microemulsions that are unable to phase separate (Pan, Paragraph 0086), which is desirable when formulation cosmetic compositions.
One of ordinary skill in the art would have a reasonable expectation of success in modifying the composition of the method recited in the claims of US ‘072 as proposed because Koerbaecher teaches that chlorogenic acid can be used in oil-in-water cosmetic or dermatological preparations, particularly in combination with other antioxidants including stilbenes. Further, the antioxidative effects of chlorogenic acid are consistent with the intended outcomes of applying the formulation recited in the claims of US ‘072, which include providing photoprotection.
Claims 1-3, 6-7, and 10-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 11, and 17 of U.S. Patent No. US 10,695,278 B2 in view of Pan (US20180207077A1; 07/26/2018; PTO-892 of 06/02/2025) and Koerbaecher (DE4436270C1; 03/07/1996; PTO-892 of 06/02/2025).
US ‘278 claim 1 recites a cosmetic composition comprising: 0.5 to 5 wt. % of polydatin; optionally, one or more solubilizers; and a cosmetically acceptable carrier, among other ingredients. Polydatin reads on the same recited in instant claim 1, and the amount of polydatin overlaps the ranges recited in instant claims 1 and 3. US ‘278 claims 2 and 3 recited that the composition does comprise one or more solubilizers comprising one or more cosmetically acceptable hydrotropes selected from the group consisting of nicotinamide (also known as niacinamide), caffeine, sodium PCA, sodium salicylate, urea, hydroxyethylurea, or mixtures thereof. Because US ‘278 claim 3 recites only six options for the hydrotrope, one of ordinary skill in the art could immediately envision an embodiment wherein nicotinamide is selected and, therefore, the claim reads on the niacinamide of instant claim 1. US ‘278 claim 11 recites that the cosmetically acceptable carrier comprises water, an organic solvent, or a mixture thereof. Because US ‘278 claim 11 recites only two options for the cosmetically acceptable carrier, one of ordinary skill in the art could immediately envision an embodiment wherein water is selected and, therefore, the claim reads on the water of instant claim 1. US ‘278 claim 17 recites a method comprising applying the composition of claim 1 to skin. The method step of applying the composition to the skin reads on the method for treating a keratin substance recited in instant claim 15.
The claims of US ‘278 differ from the instant claims in that the claims of US ‘072 do not explicitly recite the chlorogenic acid recited in instant claims 1, 6-7, 11, and 13, that the polydatin is derived from plants as recited in instant claim 2, the amount of niacinamide recited in instant claim 10, the weight ratio of polydatin to niacinamide recited in instant claim 12, or that the composition is an O/W emulsion as recited in instant claim 14.
The teachings of Pan and Koerbaecher are as set forth above.
Regarding the chlorogenic acid recited in claims 1, 6-7, 11, and 13: It would have been obvious to one of ordinary skill in the art to modify the composition of the method recited in the claims of US ‘278 by adding the plant-derived chlorogenic acid of Koerbaecher. One of ordinary skill in the art would have been motivated to include chlorogenic acid to achieve an added antioxidative and photoprotective effect, which Koerbaecher teaches is even more advantageous in combination with another antioxidant, including stilbene compounds like the polydatin recited in the claims of US ‘278.
Regarding the instantly claimed amount of the chlorogenic acid: It would have been obvious to one of ordinary skill in the art to manipulate the amount of chlorogenic acid using 1 wt. % to 1.5 wt. %, which lies within and thus renders obvious the ranges recited in instant claims 1 and 7, as a starting point for routine optimization of the composition taught by the combination of US ‘278 claims, Pan, and Koerbaecher because Koerbaecher teaches that any amount between 1 wt. % to 1.5 wt. % is effective in providing antioxidative effects in cosmetic or dermatological formulations.
Regarding the amount of polydatin recited in instant claims 1 and 3: It would have been obvious to one of ordinary skill in the art to manipulate the amount of polydatin using 1 wt. %, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization of the composition taught by the combination of US ‘278 claims, Pan, and Koerbaecher because Pan teaches that 1 wt. % is suitable for imparting antioxidative, anti-inflammatory, and photoprotective effects in cosmetic compositions that are applied to the skin.
Regarding the amount of niacinamide recited in instant claims 1 and 10: It would have been obvious to one of ordinary skill in the art to manipulate the amount of nicotinamide (also known as niacinamide) using 2 wt. %, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization of the composition taught by the combination of US ‘278 claims, Pan, and Koerbaecher because Pan teaches that 2 wt. % is suitable for formulating cosmetic compositions comprising polydatin, niacinamide, and water that are applied to the skin.
Regarding instant claim 2: It would have been obvious to one of ordinary skill in the art to substitute the polydatin of the composition taught by the combination of US ‘278 claims, Pan, and Koerbaecher with the plant-derived polydatin of Pan according to known methods to yield the predictable result of a cosmetic composition for application to the skin comprising polydatin, niacinamide, water, and chlorogenic acid.
Regarding instant claims 11-13: The weight ratio of polydatin to chlorogenic acid in the composition taught by the combination of US ‘072 claims, Koerbaecher, and Pan, which equals approximately 1:1.5 to 1:1, lies within and thus renders obvious the range recited in instant claim 11. The weight ratio of polydatin to nicotinamide, which equals 1:2, lies within and thus renders obvious the range recited in instant claim 12. The weight ratio of nicotinamide to chlorogenic acid, which equals approximately 1.3:1 to 2:1, lies within and thus renders obvious the range recited in instant claim 13.
Regarding instant claim 14: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by the combination of US ‘278 claims, Pan, and Koerbaecher such that it is in the form of an O/W emulsion. One of ordinary skill in the art would have been motivated to use the form of O/W emulsion because Pan teaches that polydatin allows the formation of clear and stable microemulsions that are unable to phase separate (Pan, Paragraph 0086), which is desirable when formulation cosmetic compositions.
One of ordinary skill in the art would have a reasonable expectation of success in modifying the composition recited in the claims of US ‘278 as proposed because Koerbaecher teaches that chlorogenic acid can be used in oil-in-water cosmetic or dermatological preparations, particularly in combination with other antioxidants including stilbenes. Further, the antioxidative effects of chlorogenic acid are consistent with the intended outcomes of applying the formulation recited in the claims of US ‘278, which include strengthening skin's natural antioxidant defenses.
Response to Arguments
Applicant’s request in the Remarks filed 07/07/2026 for the double patenting rejections of record to be held in abeyance is acknowledged. However, this 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). Accordingly, the rejections will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejections.
Conclusion
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 CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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