DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 9 December 2025, in the matter of Application N° 18/085,312. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-3, 5, 6, and 8-19 have been canceled. Claims 21-26 have been added and are supported by the originally-filed claims.
Of the originally-field claims, claim 20 has been amended, effectively broadening it by removing the narrower limitations of the vegetable oil blend, antioxidant, essential oil, and substance obtained from a plant from the claim and rehoming them in the newly presented dependent claims 21-26. The claim is additionally amended in the preamble to recite the intended use of the composition being “for conditioning and moisturizing the skin.”
Despite having been broadened, the amendment to claim 20 does not appear to have added any new matter.
Thus, independent claim 20, and dependent claims 4, 7, and 21-26 now represent all claims currently under consideration.
Information Disclosure Statement
No new Information Disclosure Statements (IDS) have been filed for consideration.
Withdrawn Rejections
Rejection under 35 USC 101
Applicants’ remarks traversing the patent eligibility rejection are persuasive. The rejection is withdrawn.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 9 June 2025 since the art that was previously cited continues to read on the amended and previously recited limitations.
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 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. Applicants are 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.
Independent claim 20, and dependent claims 4, 7, and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Eberl-Wallimann (EP 3 646 848 A1) in view of Nader (WO 2016/197015 A1) [emphasis added to reflect claim amendments]
The limitations of the claims are previously discussed.
Eberl-Wallimann discloses skin care compositions comprising, among other ingredients, at least one oil component that is present in a total content of at least 3 wt% of the composition (see e.g., claim 1). Claim 2 narrows the presence of this component to 10-60 wt%. Claim 6 discloses that the oil component is one or more selected from the group consisting of plant oils and fatty acid ester compounds. Claim 12 and ¶[0033] disclose that preferred oils include apricot kernel oil, coconut oil, jojoba oil, and argan oil.
Additional oils are taught as being included. Paragraph [0041] further defines the emulsifying agent that may be used in the practiced formulation, stating that it may be for instance, commercially-available Rimulgan, which contains castor oil. Paragraph [0042] discloses that depending on the solvent used to prepare the formulation, the amount of emulsifying agent used will preferably range from 3-12 wt%, whereas if an alcohol solvent is used at a higher amount, then the amount of emulsifier will more preferably range from 1-5 wt%.
Other emulsifying agents defined by the reference include glycerin fatty acid esters (i.e., glycerin oils). Paragraphs [0035]-[0038] define the compounds that embody the practiced glycerin oils.
Claim 12 also discloses that aloe vera oil is an oil of which the oil component may be comprised. See also ¶[0033].
The practiced compositions additionally disclose comprising at least one fat or wax component (see e.g., claim 2), which is further defined in ¶[0045] and ¶[0049] as including a natural wax such as petroleum wax, in such preferred amounts ranging from 3-10 wt% and, more preferably from 4-8 wt%.
Lastly, ¶[0053] discloses that the practiced composition may further comprise additives, such as fragrances. Paragraph [0055] further defines fragrances as being selected from such oils as lavender oil.
Other more specific additives that may be used include vitamin E (aka tocopherol) and aloe vera gel.
Where the teachings of Eberl-Wallimann appear to be deficient are with respect to the specific percentages of the components as well as the ratios of oils to one another and the ratio of the oil blend to the antioxidant.
Nader is considered to remedy this deficiency, of not being similarly drawn to skin care compositions. Therein, the practiced composition may be applied to the skin for the purposes of decreasing the appearance of wrinkles, fine lines, scars, and making a portion of skin appear to be more radiant (see e.g., Abstract; claims). Ingredients that are taught as being used to produced the practiced formulations include: petroleum jelly (see e.g., ¶[0031]), vitamin E (see e.g., claims 149-151), lavender and aloe vera oils (see e.g., claims 82, 83, and 88; ¶[0027]). Of particular note, however, is Nader’s disclosure of the oil component(s). Here, the reference discloses that oils such as argan oil, apricot oil, coconut oil, jojoba oil, castor oil, and glyceryl fatty acids (aka glycerin oil) (see e.g., ¶[0040], ¶[0045], and claims). Amounts for the oils appear to be present in similar amounts regardless of the oil (e.g., 0.01 wt% to 5.0 wt%). See ¶[0045].
Nader, like Eberl-Wallimann, is also deficient with respect to the specific ranges and ratios related to the vegetable oil blend as claimed. However, Nader does more broadly disclose that each ingredient of the composition has a volume by volume (v/v) percent equal to or less than such percents as 9%, and equal to or greater than 5% of the total composition. See ¶[0043] and ¶[0044]. Based on this disclosure as well, it would have been within the purview of the ordinarily skilled artisan to have employed argan oil in an amount ranging from 20-35% (v/v).
Regarding the recited ratios, the Examiner also acknowledges that specific ratios such as 1:1:1:2.5 are not disclosed. However, different formulating different combinations of oils and in different ratios with respect to one another is taught and suggested. Paragraph [0008] for instance, discloses that one of the practiced oil blends is formulated in a 1:1:1 ratio in one formulation and in other varied ratios such as: 1:2:3 or 2:1:3 or 3:1:2 (also see e.g., claims 22-26; ¶[0050]-¶[0058]).
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the instantly claimed compositions.
Both the teachings of Eberl-Wallimann and Nader are directed to producing oil-based cosmetic compositions which may be topically applied. To this end, the Examiner submits that it would have been obvious to combine the teachings of the two references to produce the instantly claimed invention. MPEP §2144.06(I) states that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.”
Though neither reference discloses the amounts of the respective oils together or in the amounts or ratios as instantly claimed, the Examiner submits that Nader provides disclosure which would provide the skilled artisan with the requisite guidance to modify the teachings of Eberl-Wallimann to produce a combination of oils that meets the claimed composition. Therein, Eberl-Wallimann discloses compositions which contain the high percentage of vegetable oils blended together; it simply does not disclose, or appear to place any criticality on the specific amounts of the different oils. Nader, similarly appears to be silent to the criticality of the specific amounts of oils, but does teach and suggest amounts for the oils, as discussed above. Thus, Nader’s disclosure is considered to provide more specific guidance in terms of which oils and amounts to use and leaves it to the skilled artisan to calculate the ratios by which the oils and other ingredients may be combined.
MPEP §2144.05(II) states that “[g]enerally, differences in concentration … will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration … is critical. ‘[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 the instant case, the Examiner advances the position that the state of the art, and the cited art highlights there being a lack of criticality in the blending of the different oil ingredients as exemplified by the variety of ratios that may be used. Furthermore, the intended cosmetic uses of the respective formulations align with Applicants’ own improvements and advantages as defined by the instant specification.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Response to Arguments
Applicants’ arguments with regard to the rejection of claims 20 and 4, 7, and 21-26 under 35 USC 103(a) as being unpatentable over the combined teachings of Eberl-Wallimann et al. and Nader have been fully considered but, they are not persuasive.
Applicants traverse the rejection on the grounds that the independent claim has been amended to recite “for conditioning and moisturizing the skin.”
The Examiner, in response, respectfully submits that the added language is broadly and reasonably interpreted as being directed to an intended use and maintains the rejection for the reasons of record.
Applicants next refer to the definitions provided at ¶[0007] of the specification for the terms “conditioning” and “moisturizing.” MPEP §2111.02(II) states that “[t]he claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use ‘can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim’ as drafted without importing ‘‘extraneous’ limitations from the specification.’”
Having considered the totality of the originally-filed disclosure, the Examiner submits that the terms do not provide structural or compositional limitation to the positively recited limitations that follow.
Applicants next argue that “[t]he composition [of Eberl-Wallimann] wound not include a moisturizer as a required component if any of the other components, either alone or in combination, were contemplated to provide a skin conditioning or moisturizing effect.” The reference is argued as providing a moisturizer as a required component, whereas the amended claims are directed specifically to a composition whose intended use is to condition and moisturize.
This position is unpersuasive for two reasons. First, the practiced composition, as admitted to by Applicants on the record contains a moisturizing component (see e.g., claim 1) and is required. Applicants’ intended use is thus disclosed, despite not needing to be.
Second, and more critically, the scope of the recited composition does not exclude the presence of other components in the disclosed composition. Thus, Eberl-Wallimann’s disclosed definitions for moisturizing compounds are similarly not excluded from reading on the amended composition.
The Examiner agrees that Eberl-Wallimann does not expressly disclose that the practiced compositions “condition” the skin. However, the intended use of the recited composition is not considered to contribute to the overall patentability of the claimed composition. Contrary to the remarks, though, the reference is considered to teach that the practiced compositions “moisturize” the skin to which it is applied, namely since the compositions contain a moisturizing component.
The Examiner additionally notes Applicants’ admission on the record regarding Eberl-Wallimann’s disclosure of “nurturing effects”.
Applicants’ remarks regarding the perceived failure to disclose these newly amended intended uses is in no way persuasive in overcoming the rejection.
Applicants next discuss the required inclusion of gelling agents in the compositions practiced by Eberl-Wallimann.
The Examiner again finds this discussion unpersuasive for the same reasons discussed above, namely they are not excluded from the composition as claimed.
Lastly, Applicants assert that independent claim 20 recites a specific skin care formulation for conditioning and moisturizing skin and points to ¶[0027] of the instant specification as discussing the alleged unexpected results.
The Examiner acknowledges the brief discussion of results in ¶[0027], but notes that these are discussed within the context of the composition of the preceding paragraph. The instantly claimed composition is not commensurate in scope with this composition. Furthermore, the Examiner respectfully advances that the broadly presented results are the only results provided with respect to a single composition (i.e., no Control, comparative results, etc.). As such, it is difficult to reconcile any potential results the might be considered to be truly unexpected.
Applicants’ remarks discussing the contributions of Nader have also been considered, but are not persuasive, notably as no evidence of criticality has been demonstrated for the instantly claimed composition.
Applicants’ arguments, for the above reasons, are found unpersuasive. Said rejection is therefore maintained.
All claims under consideration remain rejected; no claims are allowed.
Conclusion
THIS ACTION IS MADE FINAL. Applicants are 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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615