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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 12, 2025 has been entered.
The previous claim rejection made under 35 U.S.C. 102 (a)(1) over Lorenzi et al. (US 20010018068 A1) as indicated in the Office action dated December 12, 2024 is withdrawn in view of applicant’s amendment made to claim 13, which requires a specific concentration range of one or more sugar alcohols.
The previous claim rejection made under 35 U.S.C. 103 over Zhu et al. (US 9675533 B2) is withdrawn in view of further consideration.
New rejections have been made to address the amended claims.
Allowable Subject Matter
Claim 31 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13 and 26 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Takada et al. (US 2009/0041875 A1, published on February 12, 2009) (“Takada” hereunder).
Amended claim 13 requires a cosmetic product comprising one or more sugar alcohols, the cosmetic product further comprising one or more other sebum reducing agents and/or anti-acne agents, and further optionally comprising auxiliary substances and/or perfumes, wherein the cosmetic composition or cosmetic product is a skin and/or hair care product, and wherein the one or more sugar alcohol is selected from the group consisting of sorbitol, xylitol, erythritol, maltitol and mixtures thereof.
and wherein the amount of the one or more sugar alcohols is 0.0001 to 1 wt % in the cosmetic product.
Takada discloses a lotion comprising 0.3 wt % nicotinamide (niacinamide, anti-acne agent) and 0.05 wt % of erythritol. See Embodiment 11.
Claims 13 and 26 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Lu (CN 107661222 A, published on July 30, 2016).
Lu discloses a cosmetic composition for moisturizing mask comprising 0.05-0.5 wt % niacinamide and 0.005-0.5 wt % of erythritol. See translation.
Claims 13, 23, 24 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (CN 106726799 A, published on May 31, 2017).
Li discloses a moisturizing lotion comprising 1 % of niacinamide and 0.5 wt % xylitol. See translation, p. 2, claim 2. See present claims 13 and 26.
Regarding claim 23, the Li composition further contains the following components in percentage by weight: 1 % of niacinamide, 0.5 wt % xylitol, 4% propylene glycol and 2% glycerol, which make up 5 wt % of a liquid carrier. See also claim 24. The composition further contains 1% hydroxyethyl urea, 1% sodium polyglutamate, 1% ethylhexyl palmitate, 1% aloe oil, 1% cyclomethicone, 1% niacinamide, 0.5% betaine, 0.5% xylitol, 0.4% ammonium acryloyldimethyltaurate/VP copolymer, 0.03% sodium hyaluronate, 0.2% PEG-20 methyl glucose sesquistearate, 0.04% sodium polyacrylate, 0.5% red algae oligosaccharide, 0.7% willow bark extract, 0.4% enteromorpha flatula extract, 0.6% red algae extract, 0.5% pine mushroom extract, 0.3% preservative, and the balance is water.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Strodtholz et al. (WO 2005079745 A1, published on September 1, 2005) (“Strodtholz” hereunder).
Strodtholz discloses a lotion comprising salicylic acid (anti-acne agent) and 0.5 wt % of sorbitol (70 % = 0.35wt %). See Example 7.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Bajor et al. (US 6599936 B1, published on July 29, 2003) (“Bajor” hereunder).
Bajor discloses a water-in-oil emulsion comprising an anti-sebum ingredient, Exxate ® 71 (acetate ester of branched and straight chain isomers of dimethyl pentanols) 5 wt % and sorbitol 0.5 wt %. See col. 15, line 45 – col. 16, line 15.
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 13, 26 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No.11786570 B2.
The reference claim 1 is a composition comprising: a sugar alcohol and a Tetraselmis extract, wherein the total sugar alcohol content is in an amount of ≥16 wt. % in the overall composition, calculated based on the extract dry weight. The reference claim 7 depends on the claim 1 and is directed to a dermatological product comprising a composition according to claim 1, wherein the amount of the composition of claim 1 is 0.001 to 10 wt % in the total weight of the dermatological product. Thus, the disclosed product of claim 7 would contain the sugar alcohol in the amount of greater than equal to 0.016-0.16 wt % based on the total weight of the dermatological product, which overlaps with the presently claimed range of 0.0001-1 wt % in a cosmetic product. Since the Tetraselmis extract in the reference claims meets the present limitation “a sebum-reducing agent”, the present claim 13 is an obvious variation of the reference claims 1 and 7. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 26 and 30, the combination of niacinamide and a sugar alcohol is disclosed in the reference claim 4.
Oath/Declaration
The Declaration filed under on May 12, 2025 under 37 CFR § 1.132 has been fully considered but is not persuasive. Citing a 2024 reference which finds sebostatic function of niacin, the declarant/co-inventor asserts that niacinamide, due to its structural similarly to niacin, must have a sebum reducing action. However, applicant’s original disclosure indicates that it is not the case, as niacinamide alone does not reduce sebum production in vitro. Thus, applicant’s claim that the sugar alcohols produce synergistic effects across all types of sebum reducing agents is not persuasive.
Response to Arguments
Applicant’s arguments with respect to claims 13, 15, 23, 24 and 26 have been considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
Claims 30 and 31 are free of prior art.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
1 It is assumed to be Exxate ® 700 which is disclosed in Example 2.