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
The Applicant’s reply filed on 10/30/25 is acknowledged. Claims 1 and 3-23 are pending. Claims 21-23 are new. Claims 4, 5, 7, 9, 18 and 20 have been withdrawn. Claims 1, 6, 10, 11, 13, and 14 have been amended. Claims 1, 3, 6, 8, 10-17, 19 and 21-23 are under consideration.
Objections Withdrawn
The objection to the abstract is withdrawn in view of the amended abstract.
The objection to claim 11 is withdrawn in view of the amended claim.
Rejections Withdrawn
The rejections of Claims 1-3, 6, 8, 10-17 and 19 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite are withdrawn in view of the amended claim(s).
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 112
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.
Claims 6, 10 and 21 are 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amended claims 6 and 10 recite "relative to the total weight of polymers i) and ii) contained in said dispersion A". There is no disclosure in the originally filed specification to support the new limitation. Applicant points to [0033] for support, however, the percentages recited in [0033] do not appear to be relative to the total weight of polymers i) and ii) contained in said dispersion A.
New Claim 21 recites "… the dispersion (A) includes from 60% to 98% by weight of monomers in the one or more polymers a) to c) relative to the total weight of polymers i) and ii) contained in said dispersion A and correspondingly from 2% to 40% by weight of (C9-C22)alkyl (C1-C6)(alkyl)acrylate monomers included in d) or e) relative to the total weight of polymers i) and ii) contained in said dispersion A”. There is no disclosure in the originally filed specification to support the new limitation. Applicant points to [0033] for support, however, the percentages recited in [0033] do not appear to be relative to the total weight of polymers i) and ii) contained in said dispersion A.
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, 6, 8, 10-17, 19 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Farcet et al. (US 2011/0243864; PGPub of US 10,745,582 cited in IDS).
Farcet et al. teach a dispersion of polymer particles in a liquid carbon-based medium, the said particles having a flexible polymeric core (i.e. (i)) and being surface-stabilized with a block stabilizing polymer (i.e. (ii)) comprising at least one block that is soluble in the said carbon-based medium and at least one block that is insoluble in the said carbon-based medium (e.g. abstract).
Farcet et al. teach that the
particle core comprises (meth)acrylates of formula CH2═C(CH3)—COOR or CH2═CH—COOR, wherein R represents a linear, branched or cyclic, saturated or unsaturated, alkyl group or aromatic group, comprising 1 to 32 carbon atoms, including methyl acrylate (e.g. paragraph 0030; Claim 4);
block stabilizing polymers comprise a copolymer of methacrylates of formula CH2═C(CH3)—COOR1 in which R1 represents a linear or branched C8-C22 alkyl group including stearyl (i.e. stearyl methacrylate); and of acrylates of formula: CH2═CH—COOR’1 in which R’1 represents a group chosen from a linear or branched alkyl group containing from 1 to 6 carbon atoms, including methyl (i.e. methyl acrylate, which may be random (i.e. statistical)( (e.g. paragraphs 0053, 0054, 0059, 0065, 0083, 0085, 0088, 0106, 0117, 0120; Claims 6 and 7);
hydrocarbon oils, including isododecane (e.g. paragraph 0123, 0135, 0150; Examples; Claim 10). Farcet et al. teach 0.01% to 95% of the fatty phase (e.g. paragraph 0182), and Farcet et al. also exemplify 77.7% isododecane (e.g. Example 2);
0.1% to 80% by weight water (e.g. paragraph 0183);
organic or mineral pigments (e.g. paragraph 0188 and 0189; Claim 14).
Farcet et al. teach that the core may comprise 50-100% of the monomer and the stabilizing polymer may comprise 50-100% of the soluble and insoluble blocks, which overlaps with the claimed ranges (e.g. paragraph 0029, 0059-0061, 0117, 0120).
Regarding Claims 1, 3, 6, 8, 12-15, 17, 21, and 22, while there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. Regarding the concentration of water, the amount taught by Farcet overlaps the claimed range. 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) (MPEP 2144.05.I).
Regarding Claim 10, Farcet teach that the dispersion has a solids content of from 5% to 40% by weight, especially from 6% to 30% by weight, or even from 7% to 25% by weight (e.g. paragraph 0172).
Regarding Claim 11, Farcet et al. exemplify about 3% stabilizer based on the total weight of i) and ii), which is within the claimed range (e.g. Example 2, paragraph 0169).
Regarding Claim 16, Farcet et al. teach surfactants as optional additional ingredients and do not otherwise recite or require them (e.g. paragraph 0193) and exemplify embodiments with 0% surfactant.
Regarding Claim 19, Farcet et al. are silent as to the placement of the ingredients within a kit, however claim 19 allows for i), ii), and additional ingredients to be in the same container, and is therefore covered by the teachings of Farcet et al. In addition, it would have been within the level of one of ordinary skill in the art at the time of filing to store the components as needed in one or more compartments.
Regarding Claim 22, Farcet et al. teach that 0.1-40 wt% of the monomers form the core of the particles (i.e. 0.1-40 wt% (i) and 60-99.9 wt% (ii)) (e.g. paragraph 0025). This results in ratios with overlap the claimed range.
Regarding Claim 23, Farcet et al. teach surfactants to be optional ingredients, and therefore teaches embodiments which are free of surfactants (e.g. paragraph 0193).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3, 6, 8, 10-17, 19 and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 and 24 of copending Application No. 17/617,614 (reference application) in view of Farcet et al. (US 2011/0243864; PGPub of US 10,745,582 cited in IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims recite a dispersion comprising:
i) one or more particles including one or more polymers chosen from:
a) ethylenic homopolymers of (C1-C4)alkyl (C1-C4)(alkyl)acrylate,
b) ethylenic copolymers of bl) (C1-C4)alkyl (C1-C4)(alkyl)acrylate, and of b2) ethylenic monomers comprising one or more groups from among carboxyl, anhydride, phosphoric acid, sulfonic acid and/or aryl such as benzyl; and
ii) one or more polymeric stabilizers chosen from:
d) ethylenic homopolymers of (C9-C22)alkyl (C1-C6)(alkyl)acrylate; and
e) ethylenic copolymers of e1) (C9-C22)alkyl (C1-C6)(alkyl)acrylate, and of e2) (C1- C4)alkyl (C1-C4)(alkyl)acrylate; and
iii) one or more hydrocarbon-based liquid fatty substances.
Copending ‘614 does not claim the inclusion of 2-50 wt% of water. This is made up for by the teachings of Farcet et al.
Farcet et al. teach a dispersion of polymer particles in a liquid carbon-based medium, the said particles having a flexible polymeric core (i.e. (i)) and being surface-stabilized with a block stabilizing polymer (i.e. (ii)) comprising at least one block that is soluble in the said carbon-based medium and at least one block that is insoluble in the said carbon-based medium (e.g. abstract).
Farcet et al. teach that the
particle core comprises (meth)acrylates of formula CH2═C(CH3)—COOR or CH2═CH—COOR, wherein R represents a linear, branched or cyclic, saturated or unsaturated, alkyl group or aromatic group, comprising 1 to 32 carbon atoms, including methyl acrylate (e.g. paragraph 0030 and 0030; Claim 4);
stabilizing polymers comprise a copolymer of methacrylates of formula CH2═C(CH3)—COOR1 in which R1 represents a linear or branched C8-C22 alkyl group including stearyl (i.e. stearyl methacrylate); and of acrylates of formula: CH2═CH—COOR’1 in which R’1 represents a group chosen from a linear or branched alkyl group containing from 1 to 6 carbon atoms, including methyl (i.e. methyl acrylate (e.g. paragraphs 0053, 0059, 0065, 0083, 0085, 0088, 0106, 0117, 0120; Claims 6 and 7);
hydrocarbon oils, including isododecane (e.g. paragraph 0123, 0135, 0150; Examples; Claim 10);
0.1% to 80% by weight water (e.g. paragraph 0183);
organic or mineral pigments (e.g. paragraph 0188 and 0189; Claim 14).
Farcet et al. teach that the aim of their invention is to overcome the limitations of the prior art and to propose dispersions, in oily medium, of polymer particles that make it possible to obtain good cosmetic properties such as good adhesion to the support (skin or hair), and thus good remanence of the cosmetic composition, good resistance to attack and good gloss, while at the same time being non-tacky (e.g. paragraph 0007).
Regarding Claims 1, 3, 6, 8, 10-17, 19 and 21-23, it would have been obvious to one of ordinary skill in the art at the time of filing to include the water, as disclosed by Farcet et al. in the copending compositions. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions are substantially similar dispersions, and one of ordinary skill would have been motivated in order to provide the benefits as taught by Farcet et al.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 9/10/25 have been fully considered but they are not persuasive.
Applicant argues that Farcet does not render obvious the present invention since the present invention as recited in independent claim 1 requires that the stabilizer polymer be a homopolymer and/or a statistical polymer, and the structures of statistical or random copolymers differ significantly from block polymers.
This is not found persuasive. Farcet et al. disclose that “In the present invention, the term “block” means a polymer sequence, formed from several monomers, especially from at least 5 monomers, which may be identical or different, and which may thus be in the form of a homopolymer or a random, alternating, gradient or block, especially diblock, triblock or multiblock, copolymer. Preferably, the block is of homopolymer or gradient type, preferentially a homopolymer”. Farcet’s definition of “block” includes random (i.e. statistical) copolymers.
Accordingly, the rejection is maintained.
Conclusion
No claim is allowed.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619