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 .
Claims Status
Applicants' arguments and amendments filed on 02/04/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Information Disclosure Statements
Information Disclosure Statement (IDS) filed on 02/04/2026 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Maintained Rejections
Double Patenting-nonstatutory
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 1-2,5-6,9-14,17-19 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15,18-19 and 26 of copending Application No. 18/248,048 (reference application) in view of Shah et al. (United States Patent Publication 2020/0138681), Fanizza et al. (United States Patent Publication 20150306017), and Termer et al. (WO2017114586) and Happi (Color Cosmetics New Ingredients).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Both instant claim 1 and claim 1 of Application ‘048 claim a water-in-oil emulsion composition comprising: a continuous oil phase comprising: an oleochemical component, a surface treated pigment component and a surfactant component and a disperse water phase comprising of water and at least one solubilized material. Both the instant claim 2 and claim 2 of Application ‘048 recite that the oleochemical is present from about 10-75% by weight. Both the instant claims and that of Application ‘048 recite oleochemical is present from about 10-75% by weight and that the oleochemical has a plurality of constituents with a Mw of 10-600 daltons. Each oleochemical in Application ‘048 can be present from 10-90% by weight which overlaps the claimed 40-60% by weight for each. Both the instant claims and that of Application ‘048 contain a surface treated component comprising metal oxide. The surfactant can be a mixture of glycerol, and an alkyl modified dimethicone present from 0.5-80% by weight. Surfactant can also be present from 1-6% by weight. Both Applications further claim the presence of a preservative in either phase. The emulsion has a total solids content of 1-40%. Both the instant claims and those of Application ‘048 have a surface tension of the W/O emulsion which is inclusive of from 25-30 mN/m. Both Applications recite that the surface energy of the surface treated pigment is 1mJ/m2 to about 20mJ/m2. The surface tension of the oleochemical is greater than the surface energy of the surface treated pigment. Both Applications claim an oil absorber in the oil phase wherein the W/O emulsion has particle sizes from 0.1nm-15microns. The composition can be in the form of a concealer, foundation, cream sunscreen
The difference between the instant claims and that of Application ‘048 is that the oleochemical comprises dicaprylyl carbonate and dicaprylyl ether, wherein iron oxide, chromium oxide or mica is modified with the lauroyl lysine coating, silane coating, a methicone coating, or dimethicone coating, and wherein the surfactant comprises a combination of tri(Polyglyceryl-3/Lauryl) Hydrogenated Trilinoleate and Cetyl PEG/PPG 10/1 Dimethicone.
Shah et al. teach a water-in-oil emulsion (thus continuous oil phase) comprising an aqueous phase and an oil phase, wherein the aqueous phase comprises sodium chloride (solubilized material) and wherein the oil phase comprises titanium dioxide and emollients, and an emulsifier (surfactant) see Table 1. The one or more emollients comprise dicaprylyl carbonate and dicaprylyl ether (oleochemical), see claims 1 and 9. The pigment is present from 1-25% by weight, see Table 1 and such titanium dioxide (a metal oxide) can be surface coated with silane, see paragraph [0079]. The emollients can be present from 15-50% by weight, see Table 1. The pigment can comprise a coated titanium oxide which can be treated with octyltrimethoxysilane, see paragraph [0079]. The cosmetic composition can comprise sunscreen, see abstract. The composition can comprise a preservative present from 0.5-2% by weight, see Table 1 and paragraphs [0266]-[0268].The emulsifier (surfactant) can comprise an alkyl dimethicone, see paragraph [0242]. The emulsifier can be present from 2-7% by weight, see Table 1. The pigments can comprise a particle size from 5nm up to 25 microns, see paragraph [0066]. Given that the thickening agents which can be crystalline form are present in amounts from 0.5-4% by weight and the filler component can be present from about 1-25% by weight, see claims 1 and 16-17, the total solids content present in the composition overlaps and renders obvious the claimed range of 1-40% by weight.
Fanizza et al. teach sunscreen compositions which comprise pigments that are surface treated to make the particles more hydrophobic or more dispersible in a vehicle and include dimethicone, lauroyl lysine, methicone, silane, or dimethicone, see paragraphs [0001], [0020] [0027]. Exemplary pigments include iron oxide or chromium oxide, see paragraphs [0020]-[0021].
It would have been obvious to provide a surface treated iron oxide with lauroyl lysine, silane, methicone, or dimethicone coating.
One of ordinary skill in the art would have been motivated to do so to impart hydrophobic properties to the pigment or to enable the pigment to be easily dispersible as suggested by Fanizza.
It would have been obvious to provide the oleochemical of Application ‘048 as a combination of dicaprylyl carbonate and dicaprylyl ether as taught by Shah.
One of ordinary skill in the art would have been motivated to do so as Shah exemplifies these as emollients useful for w/o emulsions.
Regarding the emollient emulsifiers of: Tri(Polyglyceryl-3/Lauryl) Hydrogenated Trilinoleate; and Cetyl PEG/PPG 10/1 Dimethicone, Termer et al. teaches the oleochemical component of dicaprylyl carbonate and dicaprylyl ether. The titanium dioxide pigment can be surface modified with silane including trimethoyloctylsilane. The composition can comprise emulsifiers for w/o emulsions such as Cetyl PEG/PPG-10/1 Dimethicone.
Though Application ‘048 recites surfactants, Application ‘048 does not recite these are Tri(Polyglyceryl-3/Lauryl) Hydrogenated Trilinoleate and Cetyl PEG/PPG 10/1 Dimethicone.
Termer et al. teach water in oil emulsions which comprise coated titanium dioxide as a UV protecting substance. The composition can further comprise emulsifiers including Cetyl PPG/PEG10/1 dimethicone.
Happi teaches that Tri(polyglyceryl-3/lauryl) hydrogenated Trilinoleate is a nonionic water in oil emulsifier that is bio based and has outstanding efficiency and versatility.
It would have been obvious to one of ordinary skill in the art provide the emulsifiers of Application ‘048 with the art recognized emulsifiers of Tri(polyglyceryl-3/lauryl) hydrogenated Trilinoleate and Cetyl PPG/PEG10/1 dimethicone.
One of ordinary skill in the art would have been motivated to do so because both Cetyl PPG/PEG10/1 dimethicone and Tri(polyglyceryl-3/lauryl) hydrogenated Trilinoleate are taught for suitability in w/o emulsions and the combination of art recognized emulsifiers would have yielded emulsifying properties for w/o emulsions. Furthermore, Tri(polyglyceryl-3/lauryl) hydrogenated Trilinoleate is taught to offer outstanding versatility and emulsifiers such as Cetyl PPG/PEG10/1 dimethicone are known to be useful with emulsions containing pigments such as coated titanium deoxidate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Remarks
Applicants note they will re-evaluate the double patenting rejection upon indication of allowable subject matter.
The double patenting rejections of record have been maintained as no action regarding these rejections has been taken by applicants at this time.
Conclusion
Applicant’s arguments/remarks are considered unpersuasive.
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 mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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