DETAILED ACTION
Notice of Pre-AIA or AIA Status
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/13/2026 has been entered.
Claim Status
Applicant’s amendment of 04/13/2026 is acknowledged. Claims 1, 8, and 12 are amended, and claims 9-10 remain 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.
Declaration Under 37 CFR 1.132
Yuanji Guo provided a Declaration under 37 CFR 1.132, filed 04/13/2026. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents results of a composition comprising poly C10-30 alkyl acrylate in an amount of 1.5 wt.% compared to the same composition instead comprising 1.5 wt.% dextrin palmitate. A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
The Declaration under 37 CFR 1.132 filed 04/13/2026 has been fully considered but is irrelevant in view of the new grounds of rejection presented herein, whereby Applicant’s instantly claimed composition is rendered obvious in view of the combination of Lebre et al. (US20050287101A1; published: 12/29/2005; PTO-892 of instant action) in view of Bom et al. (Molecules, vol. 25, pg. 1-18; published: 10/22/2020; PTO-892 of instant action), which does not teach a composition comprising dextrin palmitate. As such, Applicant’s side-by-side comparison of compositions comprising poly(C10-30 alkyl acrylate) or dextrin palmitate is insufficient to overcome the 103 rejections of record.
Withdrawn Objections and Rejections
Applicant’s amendments to the claims have overcome the previous objection to the claims. Thus, the objection is hereby withdrawn.
Applicant’s amendments to the claims have overcome/rendered moot the previous 112(b) rejections. Thus, the rejections are hereby withdrawn.
The previous rejections under 35 U.S.C. 103 and on the grounds of non-statutory double patenting are withdrawn in favor of the new grounds of rejection presented herein.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3 recites the limitation “10 wt” in line 2, which is missing a period, a percentage sign, and a comma. The claim should read “10 wt.%,”.
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.
Claims 1-8 and 11-16 are 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.
Claims 1, 7-8, and 12 each recite the limitation “triglyceride vegetable oil”. However, claims 7 and 12 recite that the triglyceride vegetable oil is selected from specific oils such as jojoba seed oil, coconut oil, etc., which are not all composed entirely of triglycerides. For example, jojoba seed oil is mainly composed of long-chain wax esters and only trace amounts of triglycerides as evidenced by Boven et al. [pg. 1325, l. col.] (JAOCS, vol. 77, pg. 1325-1329; published: 2000; PTO-892 of instant action), and coconut oil comprises mono-, di-, and triglycerides as evidenced by EWG (EWG’s Skin Deep, pg. 1-6; archived: 09/23/2020; PTO-892 of instant action). Therefore, it is unclear whether the claims require that the triglyceride vegetable oil consists only of triglycerides derived from a vegetable oil, or whether the crude composition of a vegetable oil, such as jojoba seed oil or coconut oil, reads on the claimed “triglyceride” vegetable oil. Further, it is unclear whether the amount recited in claim 8 refers to the total amount of vegetable oil or only to the amount of triglyceride component. For the purposes of compact prosecution in the prior art rejections below and consistent with Applicant’s claims and examples, which appear to include jojoba seed oil and coconut oil without modification or extraction of a triglyceride component [see instant specification, table 2], the Examiner is interpreting the claims to mean that “triglyceride” vegetable oil refers to the crude composition of any vegetable oil comprising a triglyceride component, and the claimed amount of triglyceride vegetable oil represents the total amount of vegetable oil comprising a triglyceride component. Claims 2-8 and 11-16 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lebre et al. (US20050287101A1; published: 12/29/2005; PTO-892 of instant action) in view of Bom et al. (Molecules, vol. 25, pg. 1-18; published: 10/22/2020; PTO-892 of instant action) and as evidenced by Vanderbilt Minerals (Formulary Pharmaceuticals, no. 932; pg. 1-28; published: 01/30/2013; PTO-892 of instant action), EWG (EWG’s Skin Deep, pg. 1-6; archived: 09/23/2020; PTO-892 of instant action), and Burke (Allure, pg. 1-16; published: 11/16/2015; PTO-892 of instant action).
Lebre, throughout the reference, teaches cosmetic compositions for making up or caring for the skin, including the scalp, lips, or superficial body growths of human beings, comprising at least one semi-crystalline polymer [abstract; claims; 0002-0003].
Lebre further teaches an exemplary lipstick composition comprising: 11.12 wt.% isononyl isononanoate; 2 wt.% hydrogenated cocoglycerides; and 11 wt.% poly(behenyl acrylate); among other ingredients [0195]. Lebre notes that the poly(behenyl acrylate) is in the form of 60 wt.% polymer in Parleam oil, suggesting that the actual concentration of poly(behenyl acrylate) in the composition is 6.6 wt.%, along with 4.4 wt.% Parleam oil [0095]. Parleam is a registered trademark corresponding to hydrogenated polyisobutene, as evidenced by Vanderbilt Minerals [pg. 9].
Regarding claim 1: The exemplary composition of Lebre does not comprise water and thus reads on the instantly claimed “anhydrous composition”. Isononyl isononanoate is an ester of a branched C9 monocarboxylic acid and a branched C9 alcohol and thus reads on the instantly claimed oil of formula R1COOR2. Hydrogenated cocoglycerides comprises a mixture of mono-, di-, and triglycerides of hydrogenated coconut oil, as evidenced by EWG (pg. 1-2, “About the Chemical”), and thus reads on the instantly claimed triglyceride vegetable oil. Poly(behenyl acrylate) is a homopolymer of C22 alkyl acrylate [claims 5-6] and thus reads on the instantly claimed semi-crystalline lipophilic thickener.
While Lebre teaches that both hydrogenated polyisobutene and linear hydrocarbons are suitable nonvolatile hydrocarbon oils for use in its compositions [0140-0144], the reference does not explicitly teach that the composition comprises a linear alkane containing from 10 to 28 carbon atoms as recited in claim 1.
Bom, throughout the reference, teaches that there is a strong market trend to formulate more eco-friendly topical formulations by replacing synthetic emollients with sustainable ingredients [abstract; pg. 2]. The reference further teaches that ingredients having the INCI names C15-19 alkane and hydrogenated polyisobutene are both sustainable alternatives to dimethicone, but EMG is classified as having low viscosity, whereas SQ is classified as having high viscosity [pg. 4, table 1; pg. 5, first para.]. C15-19 alkane is a linear alkane as evidenced by the examples provided in Applicant’s instant specification [pg. 17-18, tables 1-2].
Regarding 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 of Lebre by substituting the polyisobutene with C15-19 alkane, which is another art-recognized sustainable emollient, to yield the predictable result of a lipstick composition with decreased viscosity. One of ordinary skill in the art would have been motivated to manipulate the composition’s viscosity in order to achieve a desired texture. For example, Lebre teaches that tackiness is an undesirable property that can become more pronounced as the oil used increases in viscosity [0132].
Regarding claim 2: The C15-19 alkane in the composition of Lebre and Bom meets the claim.
Regarding claim 3: The amount of C15-19 alkane in the composition taught by Lebre and Bom equates to 4.4 wt.%, which lies within and thus reads on the instantly claimed range.
Regarding claim 4: The isononyl isononanoate in the composition taught by Lebre and Bom, which as discussed above is an ester of a branched C9 monocarboxylic acid and a branched C9 alcohol, meets the claim.
Regarding claim 5: Lebre further teaches a limited list of acceptable ester oils that can be used as alternatives to isononyl isononanoate, including 2-ethylhexyl palmitate, which is an ester of palmitic acid and a C8 branched alcohol [0145]. Thus, it would have been prima facie obvious to substitute the isononyl isononanoate in the composition taught by Lebre and Bom with 2-ethylhexyl palmitate, which is expressly taught in the prior art as suitable ester oil alternative, to yield the predictable result of a lipstick composition having good gloss and hold [Lebre, 0009].
Regarding claim 6: The amount of 2-ethylhexyl palmitate in the composition taught by Lebre and Bom equates to 11.12 wt.%, which closely approaches the instantly claimed range. Lebre further teaches that the amount of nonvolatile oils in the composition can range from 1 wt.% to 70 wt.% relative to the total weight of the composition [0149]. It would have been prima facie obvious to manipulate the concentration of 2-ethylhexyl palmitate within the prior art range in order to achieve a desired level of polymer dispersion, as taught by Lebre [0072]. "[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 oil 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 claim 7: As discussed above, the hydrogenated cocoglycerides in the composition taught by Lebre and Bom comprises triglycerides of coconut oil and thus meets the claim [see claim interpretation above: “Claim Rejections - 35 USC § 112(b)”].
Regarding claim 8: The amount of hydrogenated cocoglycerides in the composition taught by Lebre and Bom lies within and thus reads on the instantly claimed range.
Regarding claim 11: The amount of poly(behenyl acrylate) in the composition taught by Lebre and Bom equates to 11 wt.%, which closely approaches the instantly claimed range. Lebre further teaches that the amount of semi-crystalline polymer in the composition can range from 5 wt.% to 25 wt.% relative to the total weight of the composition [claim 17]. It would have been prima facie obvious to manipulate the concentration of poly(behenyl acrylate) within the prior art range in order to achieve a desired balance of gloss and hold, as taught by Lebre [0009]. "[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 lipophilic thickener 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 claim 12: Regarding the amounts of linear alkane, oil of the formula R1COOR2, and triglyceride vegetable oil, because Lebre teaches that the amount of nonvolatile oils in the composition can range from 1 wt.% to 70 wt.% relative to the total weight of the composition, it would have been prima facie obvious to manipulate the relative concentrations of C15-19 alkane, 2-ethylhexyl palmitate, and hydrogenated cocoglycerides in the composition taught by Lebre and Bom within the prior art range in order to achieve a desired level of polymer dispersion, as taught by Lebre [0072]. Regarding the amount of lipophilic thickener, as discussed above, because Lebre further teaches that the amount of semi-crystalline polymer in the composition can range from 5 wt.% to 25 wt.% relative to the total weight of the composition, it would have been prima facie obvious to manipulate the concentration of poly(behenyl acrylate) within the prior art range in order to achieve a desired balance of gloss and hold, as taught by Lebre [0009]. "[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 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 claim 13: Lebre further teaches a method for making up and/or caring for the skin, lips, and or superficial body growths comprising applying the composition to the skin, lips, and/or superficial body growths [claim 43]. As such, it would have been prima facie obvious to apply the composition taught by Lebre and Bom to the skin in order to make up and/or care for the skin.
Regarding claim 14: While the composition taught by Lebre and Bom is in the form of a lipstick, Lebre expressly teaches that its cosmetic compositions are for making up or caring for the skin, including the scalp, lips, etc. [0002]. As such, it would have been prima facie obvious to one of ordinary skill in the art to use the method taught by Lebre above to apply the composition to any part of the skin, including the scalp. There is a reasonable expectation of success because lipsticks are known to be applied to the scalp as per broadest teaching of Lebre and are commonly used, for example, to cover gray roots, as evidenced by Burke [pg. 1, “Multitask with brown lipstick”].
Regarding claim 15: The C15-19 alkane in the composition of Lebre and Bom meets the claim.
Regarding claim 16: The 2-ethylhexyl palmitate in the composition of Lebre and Bom is an ester of a C14 monocarboxylic acid and a C8 branched alcohol and thus meets the claim.
It is noted that the recitation “for caring for the skin” is an intended use of the composition recited in claim 1 and is an intended outcome of applying the claimed composition using the method of 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 Lebre and Bom, which is also used for caring for the skin, is capable of performing the intended use when applied to the skin as taught by the prior art references, then it meets the claim. Note: MPEP 2111.02.
Response to Arguments
Applicant’s arguments submitted on 4/13/2026 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 Lebre et al. (US20050287101A1; published: 12/29/2005; PTO-892 of instant action).
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 spec., pg. 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 claims 1, 11, and 12, 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, triglyceride vegetable oil, and homopolymer of C8-C30 alkyl (meth)acrylate recited in instant claim 12, or the method recited in instant claims 13-14.
The teachings of Lebre are as set forth above and further incorporated herein.
Regarding the lipophilic thickener recited in instant claims 1, 11, and 12: It would have been obvious to one of ordinary skill in the art to modify the composition recited in US ‘415 claims by further including the poly(behenyl acrylate) of Lebre as an organic thickener. One of ordinary skill in the art would have been motivated to include the polymer because Lebre teaches that semi-crystalline polymers contribute to improving the hold of cosmetic compositions for keratinous substances which prevents undesirable migration of the product [0002; 0009].
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 to modify the composition taught by the claims of US ‘415 and Lebre by further including a hydrocarbon oil of vegetable origin, such as sunflower, jojoba, soybean, sesame, hazelnut, apricot, macadamia, castor, or avocado oil, as taught by Lebre [0140-0142]. One of ordinary skill in the art would have been motivated to include a vegetable oil because Lebre teaches that these can be used in combination with oil esters in the fatty phase to disperse semi-crystalline polymers [0072].
Regarding the amounts of linear alkane, ester oil, and triglyceride vegetable oil recited in instant claims 3, 6, 8, and 12: It would have been obvious for a person of ordinary skill in the art to adjust the relative amounts of pentadecane, 2-ethylhexyl palmitate, and vegetable oil within the range of 1 wt.% to 70 wt.% relative to the total weight of the composition, as taught by Lebre. One of ordinary skill in the art would have been motivated to manipulate the concentrations of each oil in order to in order to achieve a desired level of polymer dispersion.
Regarding the amount of lipophilic thickener 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(behenyl acrylate) within the range of 5 wt.% to 25 wt.% relative to the total weight of the composition, as taught by Lebre. One of ordinary skill in the art would have ordinary skill in the art would have been motivated to manipulate the concentration of poly(behenyl acrylate) in order to achieve a desired balance of gloss and hold, as taught by Lebre [0009].
"[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 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 to apply the composition taught by US ‘415 claims and Lebre to the skin, specifically the scalp, using the method disclosed by Lebre. One of ordinary skill in the art would have been motivated to apply the composition to the scalp because Lebre teaches that compositions comprising the same ingredients are useful in delivering non-therapeutic treatment and/or care properties [0002-0003].
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 and Lebre, 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 claims of US ‘415 with the teachings of Lebre as proposed because all ingredients and amounts are known in the art to be useful in formulating skin 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 Lebre.
Response to Arguments
Applicant’s request in the Remarks filed 4/13/2026 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
Prosecution Insights