DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 02 March 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. In particular, the obviousness rejection over Shiroya is withdrawn in view of the common ownership statement (see page 8 of the remarks). The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
Claims 1-9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kasai et al. (US Patent Application Publication 2018/0369080).
Kasai et al. discloses compositions comprising at least one particle, the particle comprising a cationic polymer, an anionic polymer, and a non-polymeric acid having two or more pKa values (abstract & claim 1). This particle reads upon the instantly recited element (a). Kasai et al. further discloses that the composition has a volatile medium (abstract & claim 1), and the preferred medium is water (claim 17). Also, the examples all have water. This ingredient reads upon instantly recited element (c).
Independent instant claim 1 further recites the inclusion of a filler. Kasai et al. does not expressly use the term “filler” to describe any of the ingredients present. However, the instant specification provides examples of fillers, and includes metal oxides such as titanium oxide and zinc oxide as examples of fillers (page 22, first full paragraph). Both of these are suggested by Kasai et al. as useful as UV filters (paragraph [223]). As such, these ingredients suggested by Kasai et al. read upon the instantly recited filler.
Thus, Kasai et al. discloses compositions comprising the individual elements of the recited combination of instant claim 1 (particle (a), a filler, and water) and together these would provide a composition as instantly claimed. However, Kasai et al. is not anticipatory insofar as this combinations must be selected from various lists/locations in the reference. It would have been prima facie obvious, however, to make the combination since each ingredient is taught as being useful in making the compositions of the prior art. Since this modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions a prima facie case of obviousness exists. See MPEP 2141. Thus, independent instant claim 1 is rendered prima facie obvious.
Instant claims 2-4 further limit the cationic polymer, of which polylysine is the elected species. Kasai et al. discloses using polylysine in the examples in amounts which read upon these limitations.
Instant claims 5-6 further limit the anionic polymer, of which hyaluronic acid is the elected species. Kasai et al. discloses using hyaluronic acid (claim 7), and in amounts which read upon the recited limitation (claim 12).
Instant claims 7-8 further limit the non-polymeric acid. Kasai et al. discloses using terphthalylidene dicamphor sulfonic acid in the examples in amounts which read upon these limitations.
Instant claim 9 limits the amount of particle element (a), and the amount taught by Kasai et al. (claim 16) overlaps this limitation. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claim 12 further limits the amount of the filler, and the UV filters of Kasai et al. are taught as useful in amounts that overlap the instantly recited range (paragraph [214]).
Instant claim 13 further limits the amount of the water, and the water in the examples disclosed by Kasai et al. and suggested therein (claim 17) read upon and overlap the instantly recited range.
Instant claim 14 further limits the composition to being a cosmetic composition, and Kasai et al. teaches and exemplifies such uses (claim 25).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kasai et al. (US Patent Application Publication 2018/0369080) as applied to claim 1 above, and further in view of Tong et al. (US Patent Application Publication 2015/0352035).
Instant claims 10 and 11 recite all of the limitations of instant claim 1 and also further limit the filler. The elected species of filler (silica silylate) reads upon the limitations recited by instant claims 10 and 11, but is not taught by Kasai et al. However, this deficiency is addressed by Tong et al. The cosmetic compositions disclosed by Tong et al. may have aesthetic modifiers, which optimize the light residue, matte effect, and non-greasy feeling of the composition on the skin paragraph [76]). Useful aesthetic modifiers include silica silylate (paragraph [78]), which is the elected species of filler.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have included silica silylate as an aesthetic modifier in the composition disclosed by Kasai et al. Doing so would provide the benefits taught by Tong et al. and thus improve the composition.
Nonstatutory 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 1-4 and 6-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,389,379 in view of Tong et al. (US Patent Application Publication 2015/0352035).
The issued claims recite all of the limitations recited by the instant claims, as well as additional limitations to elements (a) and the composition as a whole. However, the issued claims do not recite the inclusion of a filler (which is an element recited by the instant claims). This deficiency is addressed by Tong et al. The cosmetic compositions disclosed by Tong et al. may have aesthetic modifiers, which optimize the light residue, matte effect, and non-greasy feeling of the composition n the skin paragraph [76]). Useful aesthetic modifiers include silica silylate (paragraph [78]), which is the elected species of filler.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have included silica silylate as an aesthetic modifier in the composition recited by the issued claims. Doing so would provide the benefits taught by Tong et al. and thus improve the composition.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,453,691 in view of Tong et al. (US Patent Application Publication 2015/0352035).
The issued claims recite all of the limitations recited by the instant claims, as well as additional limitations to elements (a) and the composition as a whole. However, the issued claims do not recite the inclusion of a filler (which is an element recited by the instant claims). This deficiency is addressed by Tong et al. The cosmetic compositions disclosed by Tong et al. may have aesthetic modifiers, which optimize the light residue, matte effect, and non-greasy feeling of the composition n the skin paragraph [76]). Useful aesthetic modifiers include silica silylate (paragraph [78]), which is the elected species of filler.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have included silica silylate as an aesthetic modifier in the composition recited by the issued claims. Doing so would provide the benefits taught by Tong et al. and thus improve the composition.
Response to Arguments
The Applicant argues that the rejections over Kasai et al. are not proper. The Applicant states that the titanium oxide and zinc oxide, as UV filters disclosed by Kasai et al., differ from those used as fillers within the scope of the claimed invention. The Applicant cites the instant specification, which states that a filler for the present invention may be, for example one with a size less than 100 µm. In contrast, the Applicant cites a Wikipedia page for titanium dioxide nanoparticles, and states the size is less than 100 nm.
The Applicant also argues that there is evidence of unexpected results demonstrated in the instant specification, which overcomes the obviousness rejections.
The Examiner acknowledges the arguments presented, but does not consider them persuasive. The argument regarding the size of the filler particles is not found persuasive in part because the arguments relate to a limitation not recited by the instant claims. While the instant specification does discuss sizes, this is not recited in the claim, nor is it a definition. And although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See MPEP 2145.
Also, the Wikipedia citation provided by the Applicant is not considered to show what was known at the time of filing to one of ordinary skill in the art, but rather the size of nanoparticles of titanium dioxide. And even if the size in this citation were correct, the instant specification stated that fillers include particles with a size less than 100 µm, and the nanoparticles cited by Applicant are of such a size, and thus within the scope of the term as disclosed in the instant specification.
The Examiner also acknowledges the arguments regarding unexpected results, but does not consider them persuasive. First, it is unclear whether the results are unexpected. The evidence in the instant specification (cited by Applicant) shows an improvement in mattifying effect and moisturizing texture when silica silylate is added to the composition. Tong et al. discloses that aesthetic modifiers optimize the light residue, matte effect, and non-greasy feeling of the composition on the skin paragraph [76]), and that such aesthetic modifiers include silica silylate (paragraph [78]). Thus, it would be expected that silica silylate would optimize the light residue, matte effect, and non-greasy feeling of the composition on the skin. The matte effect thus would be expected, and the moisturizing texture may be expected (depends on this differs from feeling on the skin).
Even if en arguendo the effect shown in the instant specification were unexpected, the rejection would not be overcome. Once unexpectedness has been established, the probative value of the evidence as compared to the invention as claimed must be determined, i.e., claims must be “commensurate in scope” with the showing. See MPEP 716.02(d). In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range or whether or not there is adequate basis for reasonably concluding that the number and variety of species included by the claims would behave in the same manner as those tested. The evidence evaluated one filler (silica silylate), and there is no basis or reasoning to support the effect being present for fillers generally as instantly recited.
The Applicant requests that the nonstatutory double patenting rejections be held in abeyance. The Examiner maintains these rejections as they are still considered proper.
Conclusion
THIS ACTION IS MADE FINAL. 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 Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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/Brian Gulledge/Primary Examiner, Art Unit 1699
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