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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Status
Applicant’s amendment of 10/10/2025 is acknowledged. Claims 1-2, 4-5, 7, and 11-16 are amended, and claims 9-10 are cancelled. Claims 1-8 and 11-16 are currently pending and are examined on the merits herein.
Priority
The instant application is a 371 of PCT/CN2020/136820 filed on 12/16/2020 as reflected in the filing receipt dated on 12/13/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/15/2025 is in compliance with the provisions of 37 CFR 1.97. However, because no English translation was provided for foreign patent documents EP1604637A2, CN101843561A, CN110101606A, or FR2846552A1, or non-patent literature document “Choi Hyun-jung”, these documents have only been considered by the Examiner to the extent to which they were discussed in the non-patent literature document “Combined Chinese Office Action and Search Report” as provided.
Withdrawn Objections and Rejections
Applicant’s amendment to the drawings has overcome the previous objection to the disclosure. Thus, the objection is hereby withdrawn.
Applicant’s amendments to the claims have overcome the previous objections to the claims. Thus, the objections are hereby withdrawn.
Applicant’s amendments to the claims have overcome/rendered moot the previous 112(b) rejections over claims 1-7 and 11-16. Thus, the rejections are hereby withdrawn. Applicant’s amendment to the claims have prompted the new grounds of rejection presented herein.
Applicant’s amendments to the claims have overcome/rendered moot the previous 102 rejections. Thus, the rejections are hereby withdrawn.
Applicant’s amendments to the claims have overcome/rendered moot the previous single-reference 103 rejections over claims 1-5, 7-9, 11, and 15-16 in view of Page. Thus, the rejections are hereby withdrawn. Further, the 103 rejection of claims 9 and 10 in view of Page and Deckner 2014 have been withdrawn due to Applicant’s cancellation of the claims. Applicant’s amendment to the claims have prompted the revised grounds of rejection presented herein.
The following claim objections and rejections are new or modified as necessitated by Applicant’s amendment to the claims.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 was amended to include the limitation “a semi-crystalline…” as an additional component to the anhydrous composition. For consistency with the other numbered claimed components, the limitation should read “(iv) a semi-crystalline”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation “triglyceride type”. Note: MPEP 2173.05(b)(III)(E). The addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). It is unclear whether the claimed vegetable oil is required to be a triglyceride. If it is not, what are the metes and bounds of what is considered a triglyceride “type” of vegetable oil? I.e. how close to triglyceride vegetable oils does applicant’s oil have to be to be considered triglyceride type?
Claim 12 recites the limitation “the linear C15-19 alkane” in line 3. While the recitation falls within the scope of independent claim 1, which recites “a linear alkane containing from 10 to 28 carbon atoms”, the amended claim language makes it unclear whether claim 12 is now requiring the linear alkane of claim 1 to be a C15-C19 alkane, or whether claim 12 is establishing that when the linear alkane of claim 1 is a C15-C19 alkane, it must be present in the recited amount. Therefore, the metes and bounds of the claim are indefinite. If Applicant intends for the claim to be interpreted as the former, which is how the Examiner is interpreting the claim for the purposes of compact prosecution, the Examiner recommends amending the claim to recite “the linear alkane, wherein the linear alkane is a C15-C19 alkane”. The same logic applies to the recitations “a C4-C10 alkyl palmitate” in line 4 and “a poly(C10-C30 alkyl acrylate)” in line 9.
Response to Arguments
Applicant’s Remarks filed 10/10/2025 are acknowledged. Applicant states that the present amendments to the claims correct and address all the cited formality issues. However, claim 8 remains unamended, which appears to be a mistake. Therefore, the rejection over the claim is maintained for reasons of record.
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 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.
Claims 1-8 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Page (US20170143616A1; 05/25/2017; IDS of 06/12/2023) in view of Deckner 2014 (03/14/2014; PTO-892 of 07/10/2025).
Page discloses anhydrous compositions comprising: from 3% to 15% by weight of at least one lipophilic gelling agent; from 20% to 50% by weight of at least one filler; and from 40% to 85% by weight of at least one fatty phase containing at least 20% by weight of at least one oil chosen from hydrocarbon-based oils of plant origin, preferably triglycerides, Guerbet alcohol derivatives, preferably Guerbet alcohols and esters of a fatty acid and of a Guerbet alcohol, fatty alcohol ethers comprising from 6 to 20 carbon atoms, and linear alkanes comprising from 7 to 17 carbon atoms; wherein the weight amounts are relative to the total weight of the composition (Abstract). The compositions may be used as a product for cosmetic use for caring for the skin with regard to hair and/or scalp products, among others (Paragraph 0320).
The gelling agent(s) may be organic, polymeric or molecular lipophilic gelling agents (Paragraph 0035), including dextrin palmitate (Paragraph 0036). Preferably, the ester of a fatty acid and an alcohol is derived from a fatty acid containing from 6 to 16 carbon atoms and an alcohol comprising from 3 to 15 carbon atoms, including 2-ethylhexyl palmitate, among a limited list of others (Paragraph 0150). Suitable examples of volatile linear alkanes include n-nonane (C9), n-decane (C10), n-undecane (C11), n-dodecane (C12), n-tridecane (C13), n-tetradecane (C14), n-pentadecane (C15), n-hexadecane (C16) and n-heptadecane (C17), and mixtures thereof (Paragraph 0139).
In an exemplary embodiment (Paragraph 0330, Example 2), a composition comprises 35% silica, 7.5% dextrin palmitate, 28.2% caprylic/capric triglyceride, 10% Prunus armeniaca kernel oil (also known as apricot oil), 14.25% isopropyl palmitate, 5% undecane and tridecane, and 0.05% antioxidant, and does not comprise water.
Undecane (C11) and tridecane (C13) read on the linear alkane recited in instant claim 1. Tridecane reads on the linear alkane recited in instant claim 2. The amount of undecane and tridecane lies within and thus anticipates the range recited in instant claim 3.
Apricot oil reads on the triglyceride vegetable oil recited in instant claims 1, 7, and 8 as evidenced by instant claim 7. The amount of apricot oil lies within and thus anticipates the range recited in instant claim 8.
Because the composition of Page does not comprise water, it meets the limitation of instant claim 1 wherein the composition is anhydrous.
Page further discloses a cosmetic treatment process for hiding skin color imperfections and/or skin relief imperfections, the process comprising: applying the composition to the skin (Claim 23).
Regarding the oil of the formula R1COOR2 as recited in instant claims 1, 4, 5, and 16, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the isopropyl palmitate of Page’s exemplary composition with 2-ethylhexyl palmitate-—an ester of the C16 monocarboxylic acid, palmitic acid, and the C8 branched alcohol, ethylhexyl alcohol—which is taught by the same reference as a suitable alternative ester of a fatty acid and of a Guerbet alcohol, according to known methods to yield the predictable result of a composition for use for caring for the skin.
Regarding the amount of the oil of the formula R1COOR2 recited in instant claim 6, as discussed above Page teaches that the composition should contain at least 20% by weight of at least one oil chosen from hydrocarbon-based oils of plant origin (e.g. apricot oil), Guerbet alcohol derivatives (e.g. 2-ethylhexyl palmitate), fatty alcohol ethers comprising from 6 to 20 carbon atoms, and linear alkanes comprising from 7 to 17 carbon atoms (e.g. undecane and tridecane). Because the modified composition of Page comprises 10% apricot oil and 5% undecane and tridecane, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to use 5% 2-ethylhexyl palmitate, which lies within the instantly claimed range, as a starting point for routine optimization. One of ordinary skill in the art would have been motivated to adjust the amount of 2-ethylhexyl palmitate in order to give the final composition desired properties, especially rheological properties like flow and consistency, or in terms of texture and stability, as taught by Page (Paragraph 0131). 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). Note MPEP 2144.05.
It is generally noted that differences in concentrations do 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that Applicant did not point out the criticality of the at least one oil of formula R1COOR2 concentration of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
Regarding the method recited instant claims 13 and 14, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the modified composition to the skin, specifically the scalp, using the method disclosed by Page. One of ordinary skill in the art would have been motivated to apply the composition to the scalp, which Page discloses as a possible use of the composition, in order to hide skin color and or skin relief imperfections, as taught by Page.
One of ordinary skill in the art would reasonably expect success in modifying the exemplary composition of Page and implementing the method of Page as proposed above because 2-ethylhexyl palmitate is taught by the same reference as an alternative ester for producing a composition suitable for use in skin care applications, and Page notes that the fatty substances may be chosen by a person skilled in the art in accordance with desired properties of the final composition (Paragraph 0131).
Page does not expressly teach that the composition further comprises a semi-crystalline or crystalline lipophilic thickener as recited in instant claim 1, the amount of lipophilic thickener recited in instant claim 11, that the composition comprises all limitations recited in instant claim 12, or the species of linear alkane recited in instant claim 15.
Deckner 2014 teaches that polymeric oil thickeners are useful oil soluble materials with numerous potential personal care applications, including stabilizing anhydrous sticks and gels (Page 1, Paragraphs 1-2). Recommended polymeric oil thickeners include dextrin palmitate and poly C10-30 alkyl acrylate, among others (Pages 1-2, “Recommended materials”). Poly C10-30 alkyl acrylate is a semi-crystalline lipophilic thickener, as evidenced by Applicant’s instant specification (Instant Specification, Page 13, lines 5-7) and falls within the scope of a C8-30 alkyl (meth)acrylate homopolymer.
Regarding the semi-crystalline or crystalline lipophilic thickener as recited in instant claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the dextrin palmitate of the composition of Page with poly C10-30 alkyl acrylate, which is taught by Deckner 2014 as a suitable alternative polymeric oil thickener, according to known methods to yield the predictable result of a stabilized anhydrous composition for use for caring for the skin.
Regarding instant claim 11, because the original composition of Page comprises 7.5% of the gelling agent dextrin palmitate, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to use 7.5% poly C10-30 alkyl acrylate, which lies within the instantly claimed range, as a starting point for routine optimization. One of ordinary skill in the art would have been motivated to adjust the amount of gelling agent in order to ensure suitable gelling of the fatty phase of the composition, as taught by Page (Paragraph 0031). 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). Note MPEP 2144.05.
One of ordinary skill in the art would reasonably expect success in modifying the composition of Page with the teachings of Deckner 2014 as proposed because Page teaches that the gelling agent may be any organic, polymeric, or molecular lipophilic gelling agent, and Deckner 2014 teaches that both polymeric oils are known thickeners suitable for stabilizing anhydrous personal care compositions.
Regarding the linear alkane recited in instant claims 12 and 15, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the undecane and tridecane of the composition taught by the combination of Page and Deckner 2014 with pentadecane (C15), hexadecane (C16), heptadecane (C17), or a mixture thereof, which are taught by Page as suitable alternative linear alkanes, according to known methods to yield the predictable result of a composition for use for caring for the skin.
Regarding the amounts of linear C15-19 alkane, C4-10 alkyl palmitate, and vegetable oil recited in instant claim 12, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the relative amounts of linear alkane(s), 2-ethylhexyl palmitate, and apricot oil using a collective amount of at least 20% by weight of the total composition, which in some combinations overlaps each of the instantly claimed ranges, e.g. 3% linear alkane(s) + 3% 2-ethylhexyl palmitate + 14% apricot oil = 20%, as a starting point for routine optimization, as taught by Page. One of ordinary skill in the art would have been motivated to adjust the amounts of each oil in order to give the final composition desired properties, especially rheological properties like flow and consistency, or in terms of texture and stability, as taught by Page (Paragraph 0131). 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). Note MPEP 2144.05.
Regarding the amount of poly(C10-C30 alkyl acrylate) recited in instant claim 12, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the relative amount of poly C10-30 alkyl acrylate within the range taught by Page, which overlaps the instantly claimed range, because the reference teaches that any amount of gelling agent between 3% to 15% by weight of the total composition is suitable for producing a composition for caring for the skin. 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). Note MPEP 2144.05.
It is generally noted that differences in concentrations do 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that Applicant did not point out the criticality of the linear C15-19 alkane, C4-10 alkyl palmitate, vegetable oil, and poly(C10-C30 alkyl acrylate) concentrations of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
It is noted that the recitation “for caring for the skin” is an intended use of the claimed composition of instant claim 1 and is an intended outcome of applying the claimed composition in the method of instant claim 13. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of Page and Deckner 2014, which is also used for caring for the skin, is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02.
Response to Arguments
Applicant’s arguments submitted on 10/10/2025 with respect to rejections under 35 U.S.C. 103 have been fully considered, but were not found to be persuasive.
Applicant argues that Page does not disclose, teach, or suggest the presence of a semi-crystalline or crystalline lipophilic thickener selected from those recited in amended claim 1. This argument was not found to be persuasive in view of Deckner 2014, as discussed in detail in the prior art rejections above.
Applicant further argues that inclusion of poly(C10-30 alkyl acrylate) provides the unexpected technical benefit of blocking dye from penetrating into the skin that could not have been predicted. However, the data which demonstrate the alleged unexpected technical benefit are not commensurate in scope with the instant claims, which allow for any semi-crystalline or crystalline lipophilic thickener selected from homopolymers of C8-C30 alkyl(meth)acrylate or C8-C30 alkyl(meth)acrylamide, copolymers of C8-C30 alkyl meth(acrylate) or C8-C30 alkyl(meth)acrylamide and a hydrophilic monomer of a different nature from (meth)acrylic acid, and mixtures thereof. Applicant has only demonstrated criticality of a single species of lipophilic thickener.
Even if Applicant’s results were shown to be commensurate in scope with the claims, Applicant has not provided a direct comparison of the claimed subject matter with the closest prior art. Therefore, Applicant fails to provide sufficient evidence to establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Applicant lastly argues that Deckner 2014 provides no motivation that would have led one of ordinary skill in the art to select Intelimer IPA 13-6 Polymer, which comprises poly(C10-30 alkyl acrylate), from the list provided by Deckner 2014 to replace Hostacerin DP, which comprises dextrin palmitate, and asserts that only in hindsight of the present disclosure would such a selection be made. In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the prior art establishes that the thickeners disclosed in Deckner 2014 are all useful in stabilizing anhydrous personal care compositions. Thus, one of ordinary skill in the art would reasonably expect—based on the prior art alone—that substituting one stabilizing thickener with another from a limited list of suitable alternatives would predictably result in a stabilized anhydrous composition. Regarding Applicant’s argument that Deckner 2014 provides no motivation to make the proposed substitution, “[t]he Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis [supporting a rejection under 35 U.S.C. 103] does not require record evidence of an explicit teaching of a motivation to combine in the prior art.” Note: MPEP 2143. Simple substitution of one known element for another to obtain predictable results is a proper rationale to support the conclusion of obviousness in view of KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). As the prior art rejections of record have established the predictability of substituting Page’s dextrin palmitate with Deckner 2014’s poly(C10-30 alkyl acrylate), the conclusion of obviousness is supported.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of objective evidence to the contrary. Therefore, the prior art rejections of record are maintained.
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 1-8 and 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 9,707,415 B2 in view of Page (US20170143616A1; 05/25/2017; IDS of 06/12/2023) and Deckner 2014 (03/14/2014; PTO-892 of 07/10/2025).
US ‘415 claim 1 recites a method for treating keratin fibers, comprising applying to said keratin fibers: one or more volatile linear alkanes, one or more liquid fatty esters of C12-30 mono- or dicarboxylic acid and of C1-30 monohydric alcohol, and from 1 to 30% of one or more silicone oils, in a medium having a water content below 5 weight %, in a weight ratio of volatile linear alkane(s) to liquid fatty ester(s) of less than 5. A water content below 5 wt% overlaps the definition of “anhydrous” provided in the instant specification, which states that anhydrous means the water content of the composition is less than 2 wt% (Instant Specification, Page 4, lines 11-16). US ‘415 claim 2 recites that the linear alkane has 7 to 15 carbon atoms, which reads on species of the linear alkane recited in instant claims 1-3, 12, and 15. One of ordinary skill in the art could immediately envisage an embodiment wherein pentadecane is the linear alkane of choice. US ‘415 claims 3 and 4 recite narrower limitations to the linear alkanes recited in claim 2, which also read on species of the linear alkane recited in instant claims 1-3 and 15. US ‘415 claim 5 recites that the linear alkane is of vegetable origin. US ‘415 claim 6 recites that the liquid fatty ester is selected from 2-ethylhexyl palmitate, among others, which reads on a species of the oil of formula R1COOR2 recited in instant claims 1, 4-6, 12, and 16. One of ordinary skill in the art could immediately envisage an embodiment wherein 2-ethylhexyl palmitate is the liquid fatty ester of choice. US ‘415 claims 8-13 recite a similar composition and method to the preceding claims. US ‘415 claim 9 recites that the amount of linear alkane is 0.5 to 90 wt% relative to the total weight of the composition, which overlaps the amount recited in instant claim 3. US ‘415 recites that the composition further comprises at least one additive selected from organic thickeners, among others.
US ‘415 does not recite that the composition comprises a triglyceride vegetable oil as recited in instant claims 1, 7, 8, and 12, the lipophilic thickener recited in instant claim 1, the amount of linear alkane recited in instant claim 3, the amount of oil of formula R1COOR2 recited in instant claim 6, the amount of lipophilic thickener recited in instant claim 11, the specific composition of linear C15-19 alkane, C4-C10 alkyl palmitate, vegetable oil, and poly(C10-C30 alkyl acrylate) recited in instant claim 12, or the method recited in instant claims 13-14.
The teachings of Page and Deckner are as set forth above and further incorporated herein.
Regarding the triglyceride vegetable oil recited in instant claims 1, 7, 8, and 12, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition recited in the claims of US ‘415 by further including the apricot oil taught by Page. One of ordinary skill in the art would have been motivated to include apricot oil because Page teaches that hydrocarbon-based oils of plant origin, including apricot oil, can be used in combination with volatile linear alkanes and esters of C30-80 fatty acids and of Guerbet alcohols in order to give the final composition desired properties, especially rheological properties like flow and consistency, or in terms of texture and stability.
Regarding the amounts recited in instant claims 3, 6, 8, and 12, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the relative amounts of pentadecane, 2-ethylhexyl palmitate, and apricot oil using a collective amount of at least 20% by weight of the total composition, which in some combinations overlaps each of the instantly claimed ranges, as a starting point for routine optimization, as taught by Page. One of ordinary skill in the art would have been motivated to adjust the amounts of each oil in order to give the final composition desired properties, especially rheological properties like flow and consistency, or in terms of texture and stability, as taught by Page (Paragraph 0131). 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). Note MPEP 2144.05.
Regarding the lipophilic thickener recited in instant claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by the combination of US ‘415 claims and Page by further including the poly C10-30 alkyl acrylate taught by Deckner 2014 as an organic thickener. One of ordinary skill in the art would have been motivated to include poly C10-30 alkyl acrylate because Deckner 2014 teaches that polymeric oil thickeners are useful oil soluble materials with numerous potential personal care applications, including stabilizing anhydrous sticks and gels.
Regarding the amount of poly(C10-C30 alkyl acrylate) recited in instant claims 11 and 12, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the relative amount of poly C10-30 alkyl acrylate within the range taught by Page, which overlaps the instantly claimed range, because the reference teaches that any amount of gelling agent, including those of the organic and polymeric type, between 3% to 15% by weight of the total composition is suitable for producing a cosmetic composition for caring for the skin, which contains keratin fibers. 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). Note MPEP 2144.05.
It is generally noted that differences in concentrations do 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that Applicant did not point out the criticality of the linear C15-19 alkane, C4-10 alkyl palmitate, vegetable oil, and poly(C10-C30 alkyl acrylate) concentrations of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
Regarding instant claims 13 and 14, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the composition taught by the combination of US ‘415 claims, Page, and Deckner 2014 to the skin, specifically the scalp, using the method disclosed by Page. One of ordinary skill in the art would have been motivated to apply the composition to the scalp, which Page discloses as a possible use of compositions comprising a volatile linear alkane, 2-ethylhexyl palmitate, and apricot oil, in order to hide skin color and or skin relief imperfections, as taught by Page.
It is noted that the recitation “for caring for the skin” is an intended use of the claimed composition of instant claim 1 and is an intended outcome of applying the claimed composition in the method of instant claim 13. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of US ‘415 claims, Page, and Deckner 2014, which is also used for caring for keratin fibers such as skin, is capable of performing the intended use when applied to the skin, then it meets the claim. Note: MPEP 2111.02.
One of ordinary skill in the art would have a reasonable expectation of success in modifying the composition recited in the claims of US ‘415 with the teachings of Page and Deckner 2014 and in implementing the method of Page as proposed because all ingredients and amounts are known in the art to be useful in formulating skin care compositions—specifically, Deckner 2014 teaches the benefits of including an organic thickener, which is an acceptable additive recited in the claims of US ‘415, in anhydrous personal care compositions—and the method recited in US ‘415 claims allows for application of the composition to any keratin fibers, which includes skin as taught in the method of Page.
Response to Arguments
Applicant’s request in the Remarks filed 10/10/2025 for the double patenting rejection of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejections will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejection.
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 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.
/Sarah Wistner/ Patent Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616