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
Claims 1-21 are pending in this application. Claims 18-21 are newly added. Claim 14 is amended.
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 1-14 and 16-21 are examined in the application.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
New Rejections/Rejections Maintained
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The rejection of claims 1-7, 9-14, 17 and newly applied to added claims 18-21 under 35 U.S.C. 103 as being unpatentable over Cooper WO 2000/054892 A2 (9/21/2000)(9/19/2023 IDS) in view of Poret WO 2002/000176 (1/3/2002), Fuller WO 98/00100 (1/8/1998) and Laughlin US 6251374 (6/26/2001)(9/19/2023 IDS) is maintained and made again.
Cooper discloses a system for delivering skin coating chemical compositions directly to the skin using electrostatic spraying. (See Abstract).
Cooper teaches that small amounts of water are possible in certain embodiments and teaches less than 5% as an amount that is known in the prior art. Less than 5% overlaps with the 2 to 15% called for in the instant claim 1. Less than 5% is close enough to the 6% called for in instant claim 14 that it would be expected to have the same properties.
One Example of a coating composition that might be used is a sunless tanning solution which is made of water (70%), dihydroxyacetone (8.75%), bronzing dye (7%), Carbopol 940 solution (4.20 %), Propylene Glycol (1%), Lexorez TC-8 (3%), Octyl Palmitate (2%), and the following components in amounts of less than 1%: Methyl Paraben, German lI, Aloe Vera 10X, L- Tyrosine, Stearic Acid, Stearyl Alcohol, Glyceryl Monostearate SE, Isopropyl Myristate and Triethanolamine. (See page 11, line 30-page 12 line 4). The dihydroxyacetone is the tanning agent and 8.75% is an effective amount of the tanning agent as indicated by Cooper’s teaching of a sunless tanning effect. (See page 11, line 30-page 12 line 4). 8.75% falls within the between 0.5 and 10 wt% called for in instant claim 2. Dihydroxyacetone as a tanning agent is called for in instant claim 6. The composition does not contain a propellant as called for in instant claim 13.
Cooper teaches Aloe Vera 10X but does not expressly teach aloe-barbadensis extract. Cooper teaches propylene glycol but does not teach ethanol, glycerin and propylene glycol mixtures, antioxidants or tocopherol. These deficiencies are made up for with the teachings of Poret, Fuller and Laughlin.
Poret teaches cosmetic compositions that ameliorate the adverse effects of aging and environment by modulating the keratinization of superficial epithelial cells by contacting the keratinous surfaces with the cosmetic composition. (See Abstract). Poret teaches that its cosmetic compositions can comprise humectants and the preferred humectants include glycerin and propylene glycol. The amounts of humectants can be from 0.1-15% which overlaps with the 2 to 12% called for in instant claim 3.
Poret also teaches that the composition can comprise mixtures and exemplifies mixtures of glycerin and propylene glycol as well as mixtures of propylene glycol and aloe barbadensis extract in the Examples. (See Examples 1 and 2). The amount of the propylene glycol is 4.0% which falls within the 2 to 12% called for in instant claim 3. (See Example 3).
Poret also uses aloe barbadensis extract in its Examples. (See Example). In light of the teaching of the desirability of glycerin and propylene glycol as preferred humectants and the use of aloe barbadensis in the elected mixture of glycerin, propylene glycol and aloe barbadensis extract as called for in instant claims 10 and 17. Poret teaches that antioxidants can be part of its composition. (See page 20, lines 30-31). Antioxidants are called for in instant claim 1.
Poret teaches that dibutyl adipate is an acceptable oil. Dibutyl adipate is the elected species of emollient called for in instant claim 7. Poret teaches that dibutyl adipate can be present in an amount of from 0.01 to 30% which overlaps with the 8 to 22% called for in instant claim 14 as well as the 5 to 25% in claim 1. (See page 16, lines 10-15).
Poret teaches tocopherol and even exemplifies its use. (See Example 11). The tocopherol is present in an amount of 0.025. Tocopherol is called for in instant claim 12 and it is a vitamin as called for in instant claim 11. Vitamins may be present as cosmetic additives in an amount of from 0.001-10% which overlaps with the 0.1 to 2.5 % cosmetic additive as called for in instant claim 14. (See page 20 lines 29-31). 0.001-10% also overlaps with the 0.01 to 4.0 % called for in instant claim 4. Antioxidants may also be present in the Poret composition in the amount of from 0.001-10% which overlaps with the 0.15 to 0.8 % antioxidant called for in instant claim 14, the 0.15 to 1 % antioxidant called for in instant claim 1 and the 0.15 to 0.5 % antioxidant called for in instant claim 5. (See page 20, lines 29-31). Poret teaches that suitable antioxidants are ingredients that assist in slowing or preventing spoilage. (See page 21, lines 8-12).
Fuller teaches a composition that promotes tanning of the human skin comprising a carrier and a prostaglandin effective in stimulating synthesis of melainin thereby enhancing pigmentation of human skin. (See Abstract). The tanning compositions have preferred carriers which comprise an alcohol such as ethanol in the amount of 70%. (See page 17, lines 30-39). Fuller teaches that the composition can be applied by spraying. (See page 18, lines 10-12). The 70% ethanol overlaps with the 52% to 80% called for in instant claim 1 and also overlaps with the 52 to 70% called for in instant claim 14.
Laughlin teaches tanning compositions comprising DHA (3% or 12%), ethanol (1-50%), and water. Laughlin teaches that alcohol can be added to the composition to accelerate the rate of drying.
It would have been prima facie obvious for one of ordinary skill in the art making the Cooper sprayable composition of 8.75% dihydroxyacetone, less than 5% water and aloe vera to make the aloe vera 4% propylene glycol/glycerin/aloe barbadensis extract and add 0.1 to 30% dibutyl adipate in order to have preferred humectants in the composition as taught by Poret.
It would have been prima facie obvious for one of ordinary skill in the art making the Cooper sprayable composition of 8.75% dihydroxyacetone, less than 5% water, and aloe vera to add 0.001-10% tocopherol and 0.001-10% antioxidants in order to have vitamins and antioxidants that can prevent or slow spoilage in the composition as taught by Poret.
It would have been prima facie obvious for one of ordinary skill in the art making the Cooper sprayable composition of 8.75% dihydroxyacetone, less than 5% water and aloe vera to add 70% ethanol as taught by Fuller since Fuller teaches such an amount is suitable in a sprayable tanning composition and also in order to accelerate the rate of drying of the composition as taught by Laughlin.
With respect to the electrical resistance in claim 18, the surface tension in claim 19, the relative permittivity in claim 20 and the viscosity in claim 21, the prior art is silent as to these properties. The prior art, however, teaches all of the claimed components in the same amounts (at the overlap of the ranges). Cooper in view of Poret, Fuller and Laughlin teaches a sprayable composition of 8.75% dihydroxyacetone, less than 5% water, 4% propylene glycol/glycerin/aloe barbadensis extract, 0.1 to 30% dibutyl adipate, 0.001-10% tocopherol, 0.001-10% antioxidants and 70% ethanol.
This composition would necessarily have an electrical resistance of 15 to 100 GOhm.mm2/m as evidenced by the specification at [0032], and [0119-120]. This composition would necessarily have a surface tension of 15 to 50 nN/m as evidenced by the specification at [0033], [0042-0043] and [0119-120]. This composition would necessarily have a relative permittivity of at least 10 as evidenced by the specification at [0034], and [0119-120]. This composition would necessarily have a viscosity of from 0.65 mPa.s to 5000 mPa.s as evidenced by the specification at [0035], and [0119-120].
See Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). The court found that pharmacokinetic limitations of the asserted claims were inherently met by combining prior art references because the limitations were necessarily present in the prior art combination. Id. See also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329-32, 2020 USPQ2d 6227 (Fed. Cir. 2020).
The rejection of claims 8 and 16 under 35 U.S.C. 103 as being unpatentable over Cooper WO 2000/054892 A2 (9/21/2000)(9/19/2023 IDS) in view of Poret WO 2002/000176 (1/3/2002), Fuller WO 98/00100 (1/8/1998) and Laughlin US 6251374 (6/26/2001)(9/19/2023 IDS) as applied to claims 1-7, 9-14 and 17-21 above and further in view of Chaudhuri US 2011/0117036 (5/19/2011) is maintained.
The teachings of Cooper in view of Poret, Fuller and Laughlin is described supra. Cooper in view of Poret, Fuller and Laughlin does not teach bis-ethylhexyl hydroxydimethoxy-benzylmalonate or octyldodecanol. The teachings of Chaudhuri remedy this deficiency.
Chaudhuri teaches compositions for skin conditions that improve skin hydration and barrier function thereby improving skin appearances. (See Abstract). Chaudhuri teaches bis ethylhexyl hydroxydimethoxy benzyl malonate. Chaudhuri teaches it is an antioxidant that is useful in providing photostability to compositions and the compounds contained therein. (See [0079]). Bis-ethylhexyl hydroxydimethoxy-benzylmalonate is called for in instant claim 8.
Chaudhuri teaches that suitable emollients for its composition are those agents known for softening skin and include octyldocecanol. Octyl dodecanol is called for in instant claim 16. (See [0082]).
It would have been prima facie obvious for one of ordinary skill in the art making the Cooper in view of Poret, Fuller and Laughlin tanning composition containing 8.75% dihydroxyacetone, less than 5% water, 4% propylene glycol/glycerin/aloe barbadensis extract, 0.1 to 30% dibutyl adipate, 0.001-10% tocopherol, 0.001-10% antioxidants and 70% ethanol to add bis-ethylhexyl hydroxydimethoxy-benzylmalonate to have an antioxidant that can provide photostability to the composition and octyldodecanol in order to have an additional emollient that is known to soften the skin as taught by Chaudhuri.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The provisional rejection of claims 1-14 and 16-17, and newly applied to added claims 18-21 on the basis of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of copending U.S. Patent Appn. No. 17/548397 in view of Cooper WO 2000/054892 A2 (9/21/2000)(9/19/2023 IDS), Poret WO 2002/000176 (1/3/2002) and Chaudhuri US 2011/0117036 (5/19/2011) is maintained and made again.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims are directed to an electrostatically sprayable cosmetic formulation comprising ethanol, emollients including dibutyl adipate, antioxidants bis-ethylhexyl hydroxydimethoxy benzylmalonate, a tanning agent including dihydroxyacetone, moisture agents and cosmetic additives with 2 to 15% water.
The claims of copending U.S. Patent Appn. No. 17/548397 are directed to an electrostatically sprayable cosmetic formulation comprising ethanol, emollients including dibutyl adipate, UVA/UVB filters including bis-ethylhexyloxyphenyl methoxyphenyl triazine, a polymeric film forming mixture of polyoxyalkylene terminated polyamide and an acrylate/amide copolymer, a moisture agent and cosmetic additives with less than 5% water. The claims of U.S. Patent Appn. No. 17/548397 do not expressly recite dihydroxyacetone, the mixture of moisture agents glycerin, propylene glycol and aloe-barbadensis extract and emollients octyldodecanol and bis-ethylhexyl hydroxydimethoxy benzylmalonate. These deficiencies are made up for with the teachings of Cooper, Poret and Chaudhuri.
The teachings of Cooper are described supra. It would have been prima facie obvious for one of ordinary skill in the art following the claims of copending U.S. Patent Appn. No. 17/548397 to add 8.75% dihydroxyacetone in order to have the composition have the capability of tanning skin.
The teachings of Poret are described supra. It would have been prima facie obvious for one of ordinary skill in the art following the claims of copending U.S. Patent Appn. No. 17/548397 to add 4% propylene glycol/glycerin/aloe barbadensis extract and 0.1 to 30% dibutyl adipate in order to have preferred humectants in the composition as taught by Poret.
It would have been prima facie obvious for one of ordinary skill in the art following the claims of copending U.S. Patent Appn. No. 17/548397 to add 0.001-10% tocopherol and 0.001-10% antioxidants in order to have vitamins and antioxidants that can prevent or slow spoilage in the composition as taught by Poret.
The teachings of Chaudhuri are described supra. It would have been prima facie obvious for one of ordinary skill in the art following the claims of copending U.S. Patent Appn. No. 17/548397 to add bis-ethylhexyl hydroxydimethoxy-benzylmalonate to have an antioxidant that can provide photostability to the composition and octyldodecanol in order to have an additional emollient that is known to soften the skin as taught by Chaudhuri.
With respect to the electrical resistance in claim 18, the surface tension in claim 19, the relative permittivity in claim 20 and the viscosity in claim 21, the prior art of claims 1-14 of copending U.S. Patent Appn. No. 17/548397 in view of Cooper, Poret and Chaudhuri is silent as to these properties. Claims 1-14 of copending U.S. Patent Appn. No. 17/548397 in view of Cooper, Poret and Chaudhuri, however, teach all of the claimed components in the same amounts (at the overlap of the ranges). Claims 1-14 of copending U.S. Patent Appn. No. 17/548397 in view of Cooper, Poret and Chaudhuri teach a sprayable composition of 8.75% dihydroxyacetone, less than 5% water, 4% propylene glycol/glycerin/aloe barbadensis extract, 0.1 to 30% dibutyl adipate, 0.001-10% tocopherol, 0.001-10% antioxidants and 70% ethanol.
This composition would necessarily have an electrical resistance of 15 to 100 GOhm.mm2/m as evidenced by the specification at [0032], and [0119-120]. This composition would necessarily have a surface tension of 15 to 50 nN/m as evidenced by the specification at [0033], [0042-0043] and [0119-120]. This composition would necessarily have a relative permittivity of at least 10 as evidenced by the specification at [0034], and [0119-120]. This composition would necessarily have a viscosity of from 0.65 mPa.s to 5000 mPa.s as evidenced by the specification at [0035], and [0119-120].
See Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). The court found that pharmacokinetic limitations of the asserted claims were inherently met by combining prior art references because the limitations were necessarily present in the prior art combination. Id. See also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329-32, 2020 USPQ2d 6227 (Fed. Cir. 2020).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ comments of October 7, 2025 and the Affidavit of Yashar Hajiesmaelian have been carefully considered and are found to be unpersuasive.
Applicants argue that the case for obviousness rests on a mischaracterization of Cooper in that to reach the instant claimed invention Cooper must be modified at three points (1) the amounts of water has to be reduced form 70 wt% to an amount between 2 to 15 wt%; (2) a significant amount of ethanol must be newly added (52 to 80 wt%) and (3) an antioxidant must be added to the formulation. Applicants submit that there is not a singular disclosure of a formulation containing 52 to 80 wt% ethanol and no motivation to make any of the proposed adjustments. Additionally, Applicants assert that there would be no motivation to modify Cooper’s sunless tanning solution to arrive at the claimed invention absent the benefit of impermissible hindsight. Applicant asserts that there is not motivation to make these adjustments and without hindsight, the person of ordinary skill in the art could not know how these modifications would affect the electrosprayability of the formulation and would have no reason to introduce them. Thus there is no reasonable expectation of success.
Applicants note that the reference in Cooper to “non-aqueous” electrostatically sprayable composition containing on the order of less than 5% water relates to technology that requires high voltage for deposition and adherence and appears in the background section of the reference. Applicants assert that Cooper does not consider using these compositions (including 5% or less water) for use in connection with the disclosed misting apparatus and method for electrostatically coating a human with a coating composition. Applicants assert that because the only sunless tanning solution Cooper describes as suitable for use in the inventive apparatus contains 70 wt% water. Thus Cooper does not guide toward an electrostatically sprayable topical formulation comprising 2 to 15 wt% water as claimed.
Applicants argue that none of the prior art provides any clear suggestion toward the combination of 52-80 wt% ethanol and 2 to 15% water with at least one tanning agent and at least one emollient having a log Kw of 2-10 (i.e. relatively polar). Specifically, Applicants point to the expert opinion of Yashar Hajiesmaelian and his opinion that one skilled in the art would not look to aerosol formulations such as described by Fuller and Laughlin when modifying an electrostatically sprayable formulation such as taught in Cooper, at least one with the requisite reasonable expectation of successful functional formulation to follow.
Applicants argue that ethanol presents a problem in that one skilled in the art would expect that high amounts of ethanol would effect the atomization properties of the formulation and may modify the formulation by evaporating before skin contact and would not allow DHA to be uniformly applied on the skin. Ethanol presents an additional problem in that it makes the composition flammable.
Applicants argue that they have proceeded against conventional wisdom because conventional wisdom a high ethanol content such as presently claimed ensures that the formulation is electrostatically sprayable, but a high content of ethanol poses problems for the reasons previously described. Applicants that by using both high levels of ethanol and significant amounts of emollients and still producing a functional electrostatically sprayable formulation runs against the conventional wisdom in the prior art and is indicative of nonobviousness.
Applicants point to the expert opinion that one of skill in the art would not consider the formulations of the present invention to be the results of routine optimization but rather a synergistic combination of element that give rise to unexpectedly superior results that cannot be readily predicted.
With respect to the double patenting rejection Applicants opts to defer substantive responses until one or both sets of claims are in condition for allowance, since both sets of claims are otherwise in condition for allowance.
Applicants’ arguments and the Affidavit of Mr. Hajiesmaelian have been carefully reviewed and are not found to be persuasive.
Respectfully, it is concluded that there are decent arguments for the use of ethanol and there are decent arguments against the use of ethanol. High amounts of ethanol, such as those instantly claimed, are known in the prior art to ensure that the formulation is electrostatically sprayable. Ethanol poses drawbacks in terms of flammability and drying of skin but the drying of skin can be addressed through the use of additives such as emollients and skin care ingredients. Flammability does not appear to pose as much of a drawback to cosmetics so as to require special handling requirements.
The prior art encouragement to use ethanol in the disclosed amounts in the Laughlin and Fuller references (Fuller teaching a 70% ethanol carrier sprayable tanning composition and Laughline teaching alcohol can be added to a sprayable tanning composition to accelerate the rate of drying) combined with the advantages of ethanol being recognized by conventional wisdom to ensure electrostatic sprayability, as acknowledged by Applicants’ arguments on page 9, appears to slightly outweigh the disadvantages present.
It is important to note that with regard to the claimed “electrostatically sprayable”, the claimed element that uses capable of-type language does not impose any requirement that the device or composition actually perform the function. A claim that uses “capable of” type language covers devices/composition that have the recited components and which are capable of performing the recited functions. See MPEP 2114.IV.
Applicants’ arguments regarding Cooper are also not found to be persuasive. Cooper teaches the conventional wisdom that ethanol ensures that a tanning composition is electrostatically sprayable. Applicants’ argument regarding the reference in Cooper to “non-aqueous” electrostatically sprayable composition containing on the order of less than 5% water relates to technology that requires high voltage for deposition and adherence is not found to be persuasive because the concern is not the low amount of water but rather the high voltage that is used in these compositions. See at page 8, lines 1 -34 where Cooper also expressly refers to the recent advances and innovations in the field of electrostatic spray nozzles that are suitable for use with solutions, suspensions or emulsions. Given the new innovations in electrostatic spray nozzles, electrostatically sprayable composition containing on the order of less than 5% water are expressly taught in Cooper. This is further reinforced with the teachings of Laughlin’s compositions comprising 1 to 50 wt% ethanol and 16 to 65 wt% water. 16 wt% water is only 1% away from the 15 wt% water claimed in the instant claims. Therefore, both Cooper and Laughlin teach low water content self-tanning compositions.
Applicants’ argument that none of the prior art provides any clear suggestion toward the combination of 52-80 wt% ethanol and 2 to 15% water with at least one tanning agent and at least one emollient having a log Kw of 2-10 (i.e. relatively polar) is not found to be persuasive because there is particular motivation to combine the elements taught by the prior art laid out in the rejections. As described in the rejection it would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Cooper composition to add 4% propylene glycol/glycerin/aloe barbadensis extract and 0.1 to 30% dibutyl adipate in order to have preferred humectants in the composition as taught by Poret and it would have been prima facie obvious for one of ordinary skill in the art making the Cooper composition to add 0.001-10% tocopherol and 0.001-10% antioxidants in order to have vitamins and antioxidants. The addition of preferred humectants and vitamins and antioxidants in a cosmetic would have been highly motivating and standard practice for the ordinarily skilled artisan who would be a skilled formulator. Cooper even expressly teaches at the end of the disclosure that many variations, modifications and alternative constructions are possible and fall within the scope and spirit of its invention. This is encouraging for the addition of helpful and beneficial elements to its invention rather than discouraging. (See Cooper page 17, lines 1-18). 4% propylene glycol/glycerin/aloe barbadensis extract and 0.1 to 30% dibutyl adipate are taught to be preferred humectants for sunless tanning sprays.
Contrary to Applicants’ arguments there would be a reasonable expectation of success in successfully combining the teachings of the prior art in light of Cooper’s teaching that many variations, modifications and alternative constructions are possible and fall within the scope and spirit of its invention. There is also a reasonable expectation of success that the addition of these components would be successful because Cooper, Fuller, Laughlin, Poret and Chaudhuri are all directed to cosmetic compositions and all but Chaudhuri are directed to sprayable tanning compositions.
In light of the lack of a requirement that the sunless tanning composition is not required by the claims to be “electrostatically sprayable”, since it is capable of-type language that does not impose any requirement that the device or composition actually perform the function, so the reasonable expectation of success can be for a sprayable sunless tanning composition.
Respectfully, Applicants’ assertion that hindsight has been employed in making the obviousness rejections is incorrect and unpersuasive. Hindsight has not been used in making any obviousness rejections; this is evident in that all of the claimed elements are taught or suggested in the prior art references themselves and so is the motivation to combine them. Significantly, all of the reasons for combining the teachings of Cooper, Laughlin, Fuller, Poret and Chaudhuri are based on the express teachings of the references themselves.
It would have been prima facie obvious for one of ordinary skill in the art making the Cooper sprayable composition of 8.75% dihydroxyacetone, less than 5% water to make the aloe vera 4% propylene glycol/glycerin/aloe barbadensis extract and add 0.1 to 30% dibutyl adipate in order to have preferred humectants in the composition as taught by Poret, to add 0.001-10% tocopherol and 0.001-10% antioxidants in order to have vitamins and antioxidants that can prevent or slow spoilage in the composition as taught by Poret and to add 70% ethanol as taught by Fuller since Fuller teaches such an amount is suitable in a sprayable tanning composition and also in order to accelerate the rate of drying of the composition as taught by Laughlin.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Applicants request to hold the double patenting rejection in abeyance until there is an indication of allowability of claims is noted. Applicant is reminded that a 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). Thus, he double patenting rejection is maintained (although adjusted to reflect the amendments to the claims) as no action regarding this rejection has been taken by applicants at this time.
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.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619