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 .
DETAILED ACTION
Applicant’s Request for Reconsideration dated May 20, 2026 is acknowledged.
Claims 1, 3, 5 and 6 are pending.
Claims 2 and 4 are cancelled.
Claim 1 is currently amended.
Claims 5 and 6 are new.
Claims 1, 3, 5 and 6 as filed on May 20, 2026 are under consideration.
This action is made FINAL.
Withdrawn Objections / Rejections
In view of the amendment of the claims, all previous claim objections are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
New Grounds of Rejection Necessitated by Amendment
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
New claim 6 excludes boron nitride. Applicant’s Remarks cite to paragraphs [0061] and [0065] in support of the exclusion. Paragraph [0061] encompasses exemplary embodiments of Table 1, none of which comprise boron nitride. Paragraph [0065] encompasses Example 7 of Table 2 which requires boron nitride. The only recitation of boron nitride is in paragraph [0065]. Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977). The mere absence of a positive recitation is not basis for an exclusion. See MPEP 2173.05(i). Because boron nitride is not positively recited in the specification as an alternative element but rather is recited as a required ingredient of Example 7, the specification does not support the newly claimed exclusion of boron nitride.
Maintained Grounds of Rejection / New Grounds of Rejection Necessitated by Amendment
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.
Claims 1, 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Elliot et al. (US 5,340,569, published August 23, 1994, IDS reference filed February 28, 2023) in view of Hoshino et al. (JP 2016-074590 A, published May 12, 2016, as evidenced by the Google translation, of record); Nakano et al. (JP 2006-160920 A, published June 22, 2006, as evidenced by the Google translation, of record); and Hall-Goulle et al. (US 2011/0112234, published May 12, 2011, of record).
Elliot teaches a color cosmetic composition comprising ultrafine boron nitride and from about 0.001 to 30 wt% magnesium fatty acid salt (title; abstract; claims). The magnesium fatty acid salt may comprise magnesium myristate (C14) having an average particle size of about 4 to 20 microns (claim 1; column 2, lines 12-20), as required by instant claim 5. The composition further comprises a vehicle chosen from inter alia mica (abstract; column 2, lines 21-27). Mica includes phlogopite and artificial or synthetic mica having a fluorine atom substituted for the hydroxyl group (synthetic fluorphlogopite) (paragraph bridging columns 2 and 3), as required by instant claim 3. The examples of Table II comprise 20 wt% of a magnesium fatty acid salt and 27.5 wt% mica.
Elliot does not specifically teach the average size of the mica is 15 microns or less, the magnesium fatty acid salt particles have an average thickness of 300 to 450 nm and an aspect ratio – defined as the ratio of the length to the width in paragraph [0013] of the instant specification – of 1 to 1.5 as required by claim 1.
These deficiencies are made up for in the teachings of Hoshino, Nakano and Halle-Goulle.
Hoshino teaches a flaky mica powder having a median diameter of 5 to 30 microns and an average thickness of 0.05 to 0.35 microns (50 to 350 nm) and a cosmetic containing the same; the mica is excellent in oil absorption properties and has satisfactory glossy feeling and use feeling (title; abstract; claims). The mica of example 1 has a median particle size of 5 microns.
Nakano teaches fatty acid metal salt compositions; preferred fatty acid metal salts include calcium myristate and magnesium myristate (title; abstract; claims; pages 2-3, in particular page 3, 4th full paragraph). The fatty acid metal salt may be in any form inclusive of powder and plate; the average particle size is of the plate is 0.1 micron to 10 mm (page 4, middle, paragraph beginning “The fatty acid metal salt is …”).
Halle Goulle teaches pigment mixtures comprising graphite platelets and a pigment, especially a plate-like effect pigment comprising for example mica and talc and cosmetic products thereof (title; abstract; claims; paragraphs [0029], [0031]). The plate-like particles or flakes have a length from 1 micron to 5 mm, a width from 1 micron to 5 mm, a thickness of 20 nm to 2 microns, and a ratio of length to thickness of at least 2 or a thickness of 50 to 1000 nm and a “diameter” of about 1 to 60 microns (paragraphs [0068]-[0069]).
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 magnesium fatty acid salt particles of the mica-containing compositions Elliot to take the form of plates as taught by Nakano in order to improve compatibility with the mica which is also a flaky powder as taught by Hoshino. There would be a reasonable expectation of success because Elliot does not delimit the shape of the magnesium fatty acid salt particles.
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 plate-like or flaky magnesium fatty acid salt particles of Elliot in view of Hoshino and Nakano having an average particle size of about 4 to 20 microns to have a length and width that span similar dimensions (encompasses 1:1 ratio) and a thickness that is at most ½ the length or a thickness of 50 to 1000 nm as taught by Halle Goulle because such dimensions define plate-like particles or flakes suitable for cosmetic compositions.
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 mica of the compositions of Elliot in view of Hoshino, Nakano and Halle Goulle to comprise the flaky mica powder of Hoshino having a median diameter of 5 to 30 microns or of 5 microns because this powder not only has satisfactory glossy feeling as expected for mica but also is excellent in oil absorption properties.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Elliot et al. (US 5,340,569, published August 23, 1994, IDS reference filed February 28, 2023) in view of Hoshino et al. (JP 2016-074590 A, published May 12, 2016, as evidenced by the Google translation, of record); Nakano et al. (JP 2006-160920 A, published June 22, 2006, as evidenced by the Google translation, of record); and Hall-Goulle et al. (US 2011/0112234, published May 12, 2011, of record) as applied to claims 1, 3 and 5 above, and further in view of Lihard et al. (WO 2018/166991 A1, printed September 20, 2018).
Elliot is applied herewith under a different interpretation of claim 3 in the interest of compact prosecution
The teachings of Elliot, Hoshino, Nakano and Halle-Goulle have been described supra.
Although Elliot teaches mica includes phlogopite and artificial or synthetic mica having a fluorine atom substituted for the hydroxyl group (synthetic fluorphlogopite) (paragraph bridging columns 2 and 3), Elliot does not specifically teach synthetic fluorphlogopite having an average size of 15 microns or less as required by claim 3.
This deficiency is made up for in the teachings of Lihard.
Lihard teaches compact powders comprising a pulverulent phase comprising at least mica particles; the mica particles are chosen from inter alia sericites and fluorophlogopite synthetic micas (title; abstract; claims, in particular 1, 9; pages 9-10, “Micas”), as required by instant claim 3. The mica particles or flakes have a mean size less than or equal to 100 microns, preferably from 1 to 20 microns; the mean size means the median volume size (page 9, lines 21-39). Exemplary synthetic fluorophlogopite micas have a mean size of 7.6 microns (page 10, lines 3-4, 7-9), as required by instant claim 3.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute mica particles or flakes as taught by Lihard inclusive of synthetic fluorophlogopite micas having a mean size of 7.6 microns for the mica vehicle of the compositions of Elliot in view of Hoshino, Nakano and Halle-Goulle because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. See MPEP 2144.6 and 2144.07.
Claims 1, 3, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Cantin et al. (US 6,395,301, published May 28, 2002) in view of Styczen et al. (FR 3,045,367 A1, published June 23, 2017, as evidenced by the Google translation) and Lihard et al. (WO 2018/166991 A1, printed September 20, 2018).
Cantin teaches anhydrous hydrophobic cosmetic compositions in the form of a compact powder comprising a particulate phase (title; abstract; claims).
The particulate phase comprises pulverulent compounds inclusive of fillers chosen from inter alia mica, boron nitride or/and metal soaps derived from organic carboxylic acids containing from 8 to 22, from 2 to 18 carbon atoms chosen from zinc, magnesium or lithium stearate, zinc laurate or/and magnesium myristate (claims 5, 7-9; paragraph bridging columns 2 and 3). Regarding the exclusion of boron nitride as required by instant claim 6, optional inclusion of a particular component teaches compositions that both do and do not contain that component. See MPEP 2123.
The compositions comprise 0.1 to 99 wt% fillers (claim 6; column 2, lines 40-42). Fillers are understood as comprising lamellar or non-lamellar particles (column 2, lines 31-39). Fillers include mica chosen from inter alia phlogopite, sericite or/and synthetic micas (column 2, lines 43-46). The compositions comprise 1 to 30 wt% mica (claim 11; column 2, lines 47-49).
Inventive example 1 comprises inter alia 20% mica and 5% zinc laurate and does not comprise boron nitride (column 7, lines 35-67).
Regarding the 1 to 30 wt% magnesium myristate as required by instant claim 1, Cantin teaches compositions comprising 0.1 to 99 wt% fillers inclusive of magnesium myristate. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Additionally, Cantin exemplifies an embodiment comprising an alternative metal soap and it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute magnesium myristate for the 5% zinc laurate in Inventive example 1 because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. See MPEP 2144.6 and 2144.07.
Regarding the 15 to 35 wt% mica as required by instant claim 1, Cantin teaches compositions comprising 0.1 to 99 wt% fillers inclusive of mica, Cantin teaches compositions comprising 1 to 30 wt% mica and Cantin exemplifies an embodiment of composition comprising 20% mica. See MPEP 2144.05.
Canton does not specifically teach mica having an average particle size of 15 microns or less and does not specifically teach magnesium myristate having an aspect ratio -- defined as the ratio of the length to the width in paragraph [0013] of the instant specification – of 1 to 1.5 and an average thickness of 300 to 450 nm as required by claim 1.
Canton does not teach synthetic fluorphlogopite as required by claim 3.
Canton does not teach 15 to 35 micron magnesium myristate as required by claim 5.
These deficiencies are made up for in the teachings of Styczen and Lihard.
Styczen teaches cosmetic compositions comprising inter alia solid platelet (lamellar) particles selected from platelets of mineral origin such as mica and platelets of organic origin such as metal soap platelets derived from organic carboxylic acids having from 8 to 22 carbon atoms, for example magnesium myristate (title; abstract; claims, in particular 1, 7, 12). Platelets means particles of parallelepipedal (rectangular or square surface (aspect ratio of 1)) or discoidal (circular (aspect ratio of 1)) shape, characterized by a length, width and height (page 4, 1st and 2nd full paragraphs under “Platelet solid particles”). The length of the lamellar particles is 0.01 to 100 microns, the width from 0.01 to 100 microns and the height (thickness) from 0.1 to 1000 nm, preferably 1 to 500 nm (page 4, 3rd full paragraph under “Platelet solid particles”), as required by instant claim 5.
Lihard teaches compact powders comprising a pulverulent phase comprising at least mica particles; the mica particles are chosen from inter alia sericites and fluorophlogopite synthetic micas (title; abstract; claims, in particular 1, 9; pages 9-10, “Micas”), as required by instant claim 3. The mica particles or flakes have a mean size less than or equal to 100 microns, preferably from 1 to 20 microns; the mean size means the median volume size (page 9, lines 21-39). Exemplary synthetic fluorophlogopite micas have a mean size of 7.6 microns (page 10, lines 3-4, 7-9), as required by instant claim 3.
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 filler particles of the compositions of Cantin inclusive of the mica and the metal soaps inclusive of magnesium myristate to take the form of platelets as taught by Styczen characterized by a length of 0.01 to 100 microns, a width of 0.01 to 100 microns and a height (thickness) from 0.1 to 1000 nm, preferably 1 to 500 nm such that the shape of the filler particles encompasses squares (aspect ratio of 1) because such shaped particles are suitable for cosmetics. There would be a reasonable expectation of success because Cantin expressly teaches the filler particles may be lamellar and because Lihard teaches mica particles are usually in the form of flakes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute mica particles or flakes as taught by Lihard inclusive of synthetic fluorophlogopite micas having a mean size of 7.6 microns for the mica filler particles of the compositions of Cantin in view of Styczen because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. See MPEP 2144.6 and 2144.07.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Cantin et al. (US 6,395,301, published May 28, 2002) in view of Styczen et al. (FR 3,045,367 A1, published June 23, 2017, as evidenced by the Google translation) and Lihard et al. (WO 2018/166991 A1, printed September 20, 2018) as applied to claims 1, 3, 5 and 6 above, and further in view of Elliot et al. (US 5,340,569, published August 23, 1994, IDS reference filed February 28, 2023).
Cantin is applied herewith under a different interpretation of claim 5 in the interest of compact prosecution
The teachings of Cantin, Styczen and Lihard have been described supra.
They do not specifically teach 15 to 35 micron magnesium myristate particles.
This deficiency is made up for in the teachings of Elliot.
Elliot teaches a color cosmetic composition comprising ultrafine boron nitride and from about 0.001 to 30 wt% magnesium fatty acid salt (title; abstract; claims). The magnesium fatty acid salt may comprise magnesium myristate (C14) having an average particle size of about 4 to 20 microns (claim 1; column 2, lines 12-20), as required by instant claim 5.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify magnesium myristate platelet filler particles of the compositions of Cantin in view of Styczen and Lihard to have an average particle size of about 4 to 20 microns as taught by Elliot because this size is suitable for cosmetic compositions. There would be a reasonable expectation of success because the size of Elliot is consistent with the size of the platelets.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s statement that the cited references do not teach elements of claim 1 as currently amended is unpersuasive as set forth in the modified grounds of rejection infra of claim 1 over Elliot.
Applicant’s rehashed statement that prima facie obviousness is overcome by the results provided in the specification as filed remains unpersuasive for reasons of record. Applicant’s statement that the scope of Examples 1-7 is the scope of claim 1 is unpersuasive. Claim 1 is limited to two ingredients. The proffered data have limited nexus with the genus of generic compositions claimed. See MPEP 716.02 for information regarding allegations of unexpected results. Applicant bears the entire burden of establishing the significance of any proffered data in comparison with the prior art and in a manner commensurate in scope with the broadest claim(s).
The totality of evidence of record weighs toward the obviousness of the compositions instantly claimed and therefore the rejections over Elliot are properly maintained and new grounds of rejection are applied infra over Cantin as necessitated by Applicant’s amendments.
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, 5 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable (1) over claims 1-5 and 7 of copending Application No. 18/043,550; (2) over claims 1-6 of copending Application No. 18/043,558; (3) over claims 1 and 2 of copending Application No. 18/043,559; and (4) over claims 1-12 of copending Application No. 18/713,334 in view of Elliot et al. (US 5,340,569, published August 23, 1994, IDS reference filed February 28, 2023) and Hoshino et al. (JP 2016-074590 A, published May 12, 2016, as evidenced by the Google translation, of record).
Although a Notice of Allowance has been mailed in the ‘550 and ‘558 Applications, because these Applications have not yet issued as Patents these rejections remain provisional.
The instant claims are drawn to a cosmetic containing 1 to 30 wt% of magnesium myristate particles and 15 to 35 wt% of mica particles having an average size of 15 microns or less, wherein the magnesium myristate particles have a thickness of 300 to 450 nm and a ratio of the major/minor axis (length/width) of 1 to 1.5. The mica may comprise synthetic fluorphlogopite, or the magnesium myristate particles may have a median size of 15 to 35 microns, or the compositions may be free of boron nitride.
The copending ‘550 claims are drawn to a cosmetic containing C12-C22 fatty acid magnesium salt plate shaped particles, wherein the particles have a thickness of 300 to 450 nm and a ratio of the major/minor axis of 1 to 1.5.
The copending ‘558 claims are drawn to a cosmetic containing C12-C22 fatty acid magnesium salt particles and titanium oxide, wherein the particles have a thickness of 250 to 600 nm and a ratio of the major/minor axis of 1 to 2.
The copending ‘559 claims are drawn to a cosmetic containing 1 to 30 wt% of magnesium myristate particles and 1 to 20 wt% of pearlescent powder, wherein less than 3 wt% of the pearlescent powder has an average particle size of 40 microns or more, wherein the magnesium myristate particles have a thickness of 250 to 600 nm and a ratio of the major/minor axis of 1 to 2 or of 1 to 1.6.
The copending ‘334 claims are drawn to a solid powder composition comprising 0.1 to 5 wt% of a metallic soap. The metallic soap may be a C12-C22 fatty acid calcium salt or magnesium salt. The C12-C22 fatty acid magnesium salt may have a thickness of 250 to 600 nm and a ratio of the major/minor axis of 1 to 2.
The instant claims differ from the copending claims with respect to the mica, the amount thereof and the size thereof, and the specific type thereof, however, this difference is obvious in view of the teachings of Elliot and of Hoshino as elaborated supra. It would have been obvious to one of ordinary skill in the art to modify the compositions of the copending claims to further comprise mica inclusive of phlogopite and artificial or synthetic mica having a fluorine atom substituted for the hydroxyl group (synthetic fluorphlogopite) in amounts of 27.5 wt% as taught by Elliot in order to provide a color cosmetic composition and it would have been obvious to modify the particle size of the mica to fall within the range of Hoshino of 5 to 30 microns because mica of this size is suitable for cosmetic compositions.
The instant claims also differ from the copending ‘550 and ‘558 claims with respect to the amount of the magnesium myristate (C14) particles, however, this difference is obvious in view of the teachings of Elliot as elaborated supra. It would have been obvious to one of ordinary skill in the art to modify the compositions of the copending ‘550 and ‘558 claims to comprise from about 0.001 to 30 wt% such as 20 wt% of the magnesium fatty acid salt magnesium myristate because this amount is suitable for cosmetic compositions.
The instant claims also differ from the copending claims with respect to the median size of the magnesium myristate particles, however, this difference is obvious in view of the teachings of Elliot as elaborated supra. It would have been obvious to one of ordinary skill in the art to modify the magnesium particles of the copending claims to have an average size of about 4 to 20 microns as taught by Elliot because this size is suitable for cosmetic compositions.
Regarding the exclusion of boron nitride as required by instant claim 6, because the copending claims are silent to boron nitride, they render obvious compositions which are free of boron nitride.
The instant claims are therefore an obvious variant of the copending claims in view of the knowledge of the prior art.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3, 5 and 6 are directed to an invention not patentably distinct from claims 1-5 and 7 of commonly assigned Application No. 18/043,550, from claims 1-6 of commonly assigned Application No. 18/043,558 and from claims 1-12 of commonly assigned Application No. 18/713,334. Specifically, see 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 Application Nos. 18/043,550, 18/043,558 and No. 18/713,334, 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 Arguments: Double Patenting
Applicant’s statement that the double patenting rejections will be addressed if they ever become non-provisional is non-responsive. See pages 10-11 of the Final Rejection mailed August 6, 2025. Because Applicant has not addressed these rejections, these rejections are properly maintained and made again.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
Prosecution Insights