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 .
Status of Claims
Preliminary amendment filed on 06/20/2023 is acknowledged.
Claims 1-18 are amended.
Claims 1-18 are pending and being examined on merits herein.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 12/09/2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Priority
This instant application 18258494, filed on 06/20/2023, is a 371 of PCT/EP2021087097, filed on 12/21/2021, and claims foreign priority of France FR2013900, filed on 12/22/2020, no English translation of the foreign priority is provided.
Maintained Claim Rejections - 35 USC § 102
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-18 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Meunier et al. (WO2020109500, 06/04/2020 or earlier, IDS of 06/20/2023), as evidenced by Mineral Data Publishing (Hectorite, 2001, IDS of 06/20/2023, hereafter “MDP”) and Brittanica (Clay mineral, 09/29/2019 or earlier, record of 12/09/2025).
Meunier teaches a skin/or hair composition comprising unmodified hectorite (corresponding to instant claims 5 and 6) and pectin, and directs to a cosmetic process comprising at least one step that consists in applying the composition to skin and/or hair (e.g., Abstract) (corresponding to instant claim 18, and natural polymer and unmodified clay in instant claims 1 and 12), in the form of cream, lotion, gel or foam, serum, etc. (e.g., Pg. 12, lines 19-24) (corresponding to instant claim 17). As evidenced by MDP, hectorite contains SiO2 at about 53% and MgO at about 25% (Chemistry) (corresponding to magnesium salt as magnesium oxide in instant claims 1 and 8, overlapping with at least 30% of SiO2 and at least 10% MgO in instant claim 2), resulting in SiO2/MgO ratio at about 2 (calculated from 53/25) (falling within ratio range from 1 to 3 in instant claim 3), and also resulting in unmodified clay to magnesium salt ratio at about 100/25 = 4 (falling within weight ratio 10/1 to 1/10 in instant claim 10), when there is unmodified hectorite in a composition with no other additional magnesium salt. The general molecular formula in instant claim 4 is inherent property of unmodified natural clay, because whatever molecules present in the unmodified clay, they exist as natural. Also as evidenced by Britannica, clay minerals contain natural components based on their classifications and the molecular formula are known as general physical properties. For instance, structural formula of dioctahedral aluminous species may be represented by (Al2 - yMg2+/y)(Si4 -xAlx)O10(OH)2M+/x + y · nH2O, where M+ is the interlayer exchangeable cation expressed as a monovalent cation and where x and y are the amounts of tetrahedral and octahedral substitutions, respectively (0.2 ≤ x + y ≤ 0.6); while trioctahedral ferromagnesian smectites, is given by formula (Mg, Fe2+)3(Si4-x Alx)O10(OH)2M+/x · nH2O (Smectite session, Britannica), indicating general tetrahedral cations Si4+ and Al3+, as well as trioctahedral cations Mg2+ and Fe2+, and M+ as interchangeable cation.
Meunier teaches that the unmodified hectorite is present in a content of between 0.1 % and 10% by weight (Pg. 4, lines 31-32) (corresponding to less than or equal to 10% in instant claim 7). Meunier teaches that polyol chosen from propylene glycol, 1,3-propanediol, dipropylene glycol, and many others can be used in aqueous phase of the composition (e.g., pg. 5, lines 26-27) (corresponding to instant claims 1 and 11), present in an amount ranging from 0.01% -70% and preferably from 1% to 40% (Pg. 5, lines 30-31) (falling within range from 1% to 60% in instant claim 15). As MPEP 2112.01.II. states, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. For this instance, the polyols as mutual compounds that constitute inherent property as antisyneresis agents. Meunier also teaches to include at least one an organic or inorganic filler in the composition (Pg. 6, lines 5-10)(corresponding to instant claim 13). Meunier teaches that many fatty substances can be used in the oily phase of the composition, including hydrocarbon based oils, silicone oils, fatty acids containing 8 to 30 carbon atoms (e.g., stearic acid, waxes like microcrystalline waxes), and others (Pg. 9 bottom -Pg. 9 top) (corresponding to instant claim 14).
Meunier exemplifies in compositions comprising hectorite 5% (which results in MgO 5*25% =1.25% in the composition) (falling within 0.5% to 10.0% as in instant claim 9), pectin (natural polymer) 0.25-0.63%, xanthan gum (polysaccharide) 0.2-0.5%, scleroglucan gum 0.2-0.5%, caprylyl glycol 0.5% and water over 90% (Pg. 15, Table 1, Example 1: Compositions 1 to 7) (falling within from 30% to 98% in instant claim 16). Meunier in the other embodiment with hectorite 3% (resulting in magnesium salt MgO 3*25% = 0.75% in composition), pectin 1%, 1,3-propanediol 4%, apricot kernel oil 1.5%, sunflower oil 0.2%, fatty acids 0.2%, cetylstearyl alcohol 3%, water 57% (Pg. 23, Table 9, Example 8: Composition 39) (corresponding to instant claim 1).
MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). MPEP 2131.03.I states “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)).
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3, 5-6, 12-14, and 17-20 of copending Application No. 18258571 (hereafter, US’571) in view of Meunier et al. (WO2020109500, 06/04/2020 or earlier, IDS of 06/20/2023), as evidenced by MDP (Hectorite, 2001, IDS of 06/20/2023) and Britannica (Clay mineral, 09/29/2019 or earlier, record of 12/09/2025).
US’571 recites an aqueous gel composition for skin and/or skin appendage application (Claim 14) (corresponding to instant claims 17-18) comprising at least one non-modified clay selected from trioctahedral smectites and at least one fatty acid ester (Claim 1) (corresponding to unmodified clay of trioctahedral smectites in instant claims 1 and 6). US’571 recites non-modified clay comprising SiO2 greater than or equal to 30% and MgO greater or equal to 10% of the clay (Claim 2) with SiO2/MgO2 ratio between 1 and 3 (claim 3) (same as instant claims 2 and 3), selected from non-modified hectorite, stevensite and saponite (Claims 5 and 17-19) (corresponding to instant claim 5), present between 0.1% and 10% by weight in the composition (Claims 6 and 20) (corresponding to instant claim 7). US’571 indicates the composition comprises at least one polymer selected from oligo- or polysaccharides, or other types of polymers (Claim 12) (corresponding to natural polymer in instant claims 1 and 12), water and optional water-soluble organic solvents (Claim 13) (corresponding to water in instant claim 1).
US’571 does not recite magnesium salt as recited in instant claims 1 and in instant claim 9 with amount, antisyneresis agent and species as recited in instant claims 1 and 11 with weight amount as recited in instant claim 15, unmodified clay formula as recited in instant claim 4, unmodified clay/magnesium salt ratio as recited in instant claim 10, at least one organic or nonorganic filler as recited in instant claim 13, one crystallizable fatty substance as recited in instant claim 14, and water amount as recited in instant claim 16.
As discussed above in great detail and incorporated herein, Meunier, as evidenced by MDP and Britannica, teaches compositions comprising natural hectorite which contains magnesium salt MgO, with overlapping weight ratio of unmodified clay to magnesium salt, antisyneresis agents including propylene glycol, 1,3-propanediol, dipropylene glycol with overlapping amounts, water with overlapping amount, filler, and crystallizable fatty substance in the composition.
It would have been prima facie obvious for a person with ordinary skill in the art to incorporate teaching from Meunier into US’571 to reach current invention, as evidenced by MDP and Britannica regarding known clay mineral common knowledge and components, because Meunier discloses a composition sharing major components with US’571, selecting components from Meunier to incorporate into US’571 for the same intended use renders obviousness. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s remarks/arguments filed on 12/24/2025 have been fully considered, but they are not persuasive, both art rejection and nonstatutory double patenting rejection are maintained.
Applicant asserts that Meunier directs to a composition obtained from a clay without the addition of magnesium salt to the clay, implying that the instant claim requires both unmodified clay and “the addition of magnesium salt to the clay”. Examiner’s interpretation based upon a composition including clay would inherently contain both clay and magnesium salt because clay can include MgO cannot be followed.
In response to the claim interpretation, the instant claim language does not recite “the addition of magnesium salt to the clay”, or express “adding magnesium salt to the clay”. The claim language is interpreted as a composition comprising “an unmodified clay chosen from trioctahedral smectites”, which Meunier directly explicitly teaches that; and “a magnesium salt chosen from magnesium oxide, …”, and the unmodified clay comprising a magnesium oxide as MgO, as evidenced by MDP (Hectorite, 2001, IDS of 06/20/2023) and Britannica (Clay mineral, 09/29/2019 or earlier, record of 12/09/2025), as presented in office action. Thus, the magnesium oxide as MgO is present in Meunier’s composition, and it reads into the instant claim language. The claim interpretation based on how the instant claim is written and is followed through clearly using BRI.
Applicant asserts that examiner’s interpretation is not technically founded, because MgO in clay refers to atoms of Mg and O that are part of the structure of the clay sheets, while MgO salt added to an unmodified clay would not be incorporated into the structure of sheets, but in the space between these sheets. There is a clear technical difference between a clay taken alone and a clay to which a MgO salt has been added (wherein the MgO salt is entrapped between the sheets and is therefore identifiable as an added salt).
MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Contrary to applicant’s assertion, the Mineral Data Publishing on Hectorite clearly listed the compound of Magnesium Oxide (i.e. MgO) as one of the components in Hectorite. Without evidence to the contrary, the MgO compound contained within Hectorite is the same claimed chemical of “magnesium salt” as recited in claim 1. The properties of such a compound are inseparable despite of where the compound is located or how it is incorporated into. Magnesium salt as MgO would not change property inside the clay sheets or in between the space of the sheets.
Furthermore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., magnesium salt technical differences between added salt and salt in the clay) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). For instance, instant Claims 2 and 3, MgO is called MgO in the unmodified clay, not being called “atoms of Mg and O as part of the structure of the clay sheets”; meanwhile, instant claim 1 also is not written as “magnesium salt as added salt and supposedly to be entrapped between clay sheets”, rather applicant’s argument indicates the limitation scope is meant to be such.
Therefore, the arguments do not have support from current claim language and limitation scope. The arguments are not persuasive.
Conclusion
No claim is allowed.
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.
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616