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 .
Claim Status
Claims 1-14 are cancelled. Claims 15-31 are pending and under examination.
Priority
This application is a national stage entry of PCT/EP2021/084556 filed on 12/7/2021, which claims priority from EP20212306.3 filed on 12/7/2020.
Information Disclosure Statements
The information disclosure statements filed on 7/25/2023 and 2/5/2025 have been considered by the examiner.
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 15-31 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 15 and 18 recite the limitation "the cosmetic treatment of skin" in the claim for the first time without a first recitation of “cosmetic treatment of skin”. There is insufficient antecedent basis for this limitation in the claim.
Claims 16, 17 and 19-31 are rejected as being dependent on an indefinite claim.
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.
Claim(s) 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benson US 20180125767.
In claim 15, “cosmetic treatment of skin” is toward an intended use of the composition that is found in the preamble of the claim (MPEP 2111.02). If the prior art teaches the composition, it may be used for such a use.
Benson teaches a compound of formula (3) (component A) that is the compound of formula (I) in applicant’s claims (see abstract and paragraphs 13-17). n in Benson may be 1 to 10 or 2 to 8 while R is selected from branched or linear C.sub.3-20-alkyl, preferably from C.sub.6-18-alkyl, more preferably C.sub.10-16-alkyl, even more preferably C.sub.12-14-alkyl ((paragraphs 15-17). Benson provides for conditioning of keratin fibers (paragraph 66). Benson teaches a hydroxy value of 1 to 60 or 10 to 46 KOH/g (paragraph 40). Benson teaches molecular weight of 1200 to 2200 g/mol or 900 to 5000 g/mol for the component A (paragraph 42).
Claim Rejections – 35 USC § 103
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 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 18-31 are rejected under 35 U.S.C. 103 as being unpatentable over Benson US 20180125767 and Parson US 20150045430.
Benson teaches claims as discussed above. Benson also teaches surfactant, thickener, and conditioning component (paragraphs 18-21). Thickeners modify the rheology of substances (paragraph 61). Benson teaches coloring agents (paragraph 84). Benson teaches sun protectors like titanium dioxide and benzophenone (paragraph 85). Benson teaches 0.5 to 20% by weight or 0.5 to 5% by weight of component A (paragraph 91). Benson teaches component A is useful for shampoos and conditioners (paragraph 43 and paragraph 96). Benson teaches applying the shampoo and then rinsing it (paragraph 113). Benson teaches washing the hair, and thus, is in the form of a wash (claim 11 of Benson). Benson teaches all products being creamy liquids (paragraphs 147 and 173). Creamy liquids can be construed as creams. Benson teaches its formula compounds as estolide esters (abstract).
Although Benson allows for treatment of keratin, it does not teach treating skin by applying to skin.
Parson teaches estolide compounds suitable for use in personal care and cosmetic formulations (abstract and claim 1 of Parson). Parson teaches estolides provide lubricity properties (abstract). Parson teaches various products such as “shampoo, conditioner, hair lotion, tonic, hair spray, hair mousse, hair gel, hair dyes, moisturizer, suntan lotion, color cosmetic, body lotion, hand cream, baby skin-care product, facial cream, lipstick, lip balm, mascara, blush, eyeliner, nail products, baby shampoo, baby moisturizer, baby lotion, shower gel, soap, shaving product, deodorant, bath cream, body wash, serum, cream, solid, gel, lubricant, gelly, balm, tooth paste, whitening gel, disposable towel, disposable wipe or ointment” (paragraph 136). Parson teaches lotions being applied to the forearms of subjects (paragraph 189) for skincare testing. Parson teaches lotions applied to the stratum corneum of the forearm of subjects to test hydration and moisturization (paragraph 190). Parson teaches estolide compounds provide “improved elasticity; moisture retention; hydrating/moisturizing properties; and anti-aging properties” (paragraph 138), and thus, estolide compounds for personal care/cosmetic products are used for such properties. Parson teaches additives like surfactants and viscosity modifiers (paragraph 140). Parson teaches UV absorber (paragraph 143).
One of ordinary skill in the art before the time of filing would have utilized compositions applicable for conditioning of keratin for the skin by the combined teachings of Benson and Parson as both recognize the use of estolide compounds for personal care products and Parson realizing estolide compounds have utility in products applied to the skin for conditioning and moisturizing. Therefore, there would be a reasonable expectation of success in utilizing the keratin-appropriate estolide compound containing compositions of Benson as compositions in the methods of skin treatment of Parson for the skin which also provides for personal care products with estolide compounds and obtain moisturizing and/or conditioning of the skin.
Non-Statutory 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 15-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 9, 10, and 20 of U.S. Patent No. US 10238591. Although the claims at issue are not identical, they are not patentably distinct from each other because each claim set provides for a composition having the similar compound of the same general formula.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached M-F 9:00 am to 6:00 pm EST.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613