Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/13/2026 has been entered.
Status of claims
The amendment filed on 08/13/2026 is acknowledged. Claims 2-4 and 8-10 have been canceled and claim 7 has been withdrawn. Claims 1, 5, and 67 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 08/13/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejection of the claims is maintained for reasons of record and the following. The rejection is modified based on the amendments and for clarity.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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, 5, and 6 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bulsara et al. (US 2018/0311121 A1).
Bulsara et al. teach a topical moisturizing oil-in-water emulsion in form of lip cream (the instant claim 6) (paragraph 70) comprising at least one lamellar membrane structure comprising a lamellar membrane blend comprising an alkyl amphiphilic component, an ester of a branched fatty acid and a branched fatty alcohol, a fatty acid, and a fatty alcohol (abstract and paragraph 223);
wherein the fatty alcohol includes two or more of C14-26 fatty alcohols including myristyl alcohol (C14), pentadecyl alcohol (C15), cetyl alcohol (C16), heptadecyl alcohol (C17), stearyl alcohol (C18), nonadecyl alcohol (C19), arachidyl alcohol (C20), heneicosyl alcohol (C21), cetearyl alcohol (C16+C18), behenyl alcohol (C22) (paragraph 205 and 208), i.e., the claimed mixture of C14-22 alcohol, cetearyl alcohol, and behenyl alcohol;
wherein lamellar membrane structure is a liquid crystal (paragraph 129);
wherein a fatty alcohol mixture in the lamellar membrane blend including cetyl alcohol and behenyl alcohol and the fatty alcohol mixture is about 50% to about 75% by weight based on the total weight of the lamellar membrane blend (paragraph 215), and
exemplified in example 4 (table 10) a composition comprising
10% by weight of lamellar membrane blend comprising cetyl alcohol and behenyl alcohol, i.e., 5% by weight of the mixture of cetyl alcohol and behenyl alcohol based on the fatty alcohol mixture being about 50% by weight based on the total weight of the lamellar membrane blend (liquid crystal former according to previous claim 2), 1.11% by weight of caprylic/capric triglyceride (liquid crystal former according to previous claim 2), and 2.5% by weight of behenyl alcohol (liquid crystal former according to previous claim 2) (total of 8.61% by weight of crystal formers); and
0.05% by weight of sodium carbomer and 0.05% by weight of acrylates/C10-30 alkyl acrylate crosspolymer (the claimed viscosity modifier in the instant claim 1).
Although Bulsara et al. do not expressly teach the properties of in the instant claims 5 and 6, as a result of the composition having the same components as previously claimed and disclosed in the instant specification, the composition would necessarily have the claimed properties, whether expressly recognized by Bulsara et al. or not. See MPEP 2112.01 II and MPEP 2112.V:
“Products of identical chemical composition can not 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. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
it is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594, second column, first full paragraph).
Bulsara et al. do not teach C14-22 alcohol in example 4.
This deficiency is cured by Bulsara et al.’s teaching of mixture of C14-22 alcohol, cetearyl alcohol, and behenyl alcohol in paragraph 208.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in example 4 and paragraph 208 in Bulsara et al. to replace cetyl alcohol and behenyl alcohol in example 4 with a mixture of C14-22 alcohol, cetearyl alcohol, and behenyl alcohol. Fatty alcohol in the lamellar membrane blend including two or more of C14-22 alcohol, cetearyl alcohol, and behenyl alcohol was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replacing cetyl alcohol and behenyl alcohol in example 4 with a mixture of C14-22 alcohol, cetearyl alcohol, and behenyl alcohol flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Bulsara et al. do not teach the same total weight percentage of sodium carbomer and acrylates/C10-30 alkyl acrylate crosspolymer in example 4 (0.1% vs the claimed 0.3-0.7% in the instant claim 1).
This deficiency is cured by Bulsara et al.’s teaching of thickening agent being the mixture of behenyl alcohol, dehydroxanthan gum, VP/Eicosene copolymer, acrylates/C10-30 alkyl acrylate cross polymer and sodium carbomer and the weight percentage of thickening agent being about 0.5-5% by weight (paragraph 127), i.e., < 0.5-5% by weight of the mixture of acrylates/C10-30 alkyl acrylate cross polymer and sodium carbomer.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in example 4 and paragraph 125 and 127 in Bulsara et al. to modify the weight percentage of the mixture of acrylates/C10-30 alkyl acrylate cross polymer and sodium carbomer in example 4 taught by Bulsara et al. to be < 0.5-5% by weight. About 0.5-5% by weight the mixture of behenyl alcohol, dehydroxanthan gum, VP/Eicosene copolymer, acrylates/C10-30 alkyl acrylate cross polymer and sodium carbomer, i.e., < 0.5-5% by weight of the mixture of acrylates/C10-30 alkyl acrylate cross polymer and sodium carbomer, being suitable was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
A prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection. The claimed range of the mixture of acrylates/C10-30 alkyl acrylate cross polymer and sodium carbomer as a thickener is 0.3-0.7% by weight and the range of the mixture of acrylates/C10-30 alkyl acrylate cross polymer and sodium carbomer as a thickener taught in the prior art is < 0.5-5% by weight and therefor, overlaps with the claimed range. Please refer to MPEP 2144.05.II.A:
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.
Response to Applicants’ arguments:
Applicant’s arguments based on the amendments are addressed in the modified rejection above (newly underlined).
Applicant’s arguments with regard to Bulsara et al.’s not teaching about 0.5-5% by weight of acrylates/C10-30 alkyl acrylate cross polymer carbomer and the criticality of the amount of acrylates/C10-30 alkyl acrylate cross polymer and carbomer as viscosity modifier for the formation of stable liquid crystals demonstrated in examples 1 and 3-5 and Bulsara et al. Bulsara et al.’s not teaching formation of hexagnal liquid crystal were addressed in the advisory action dated 07/22/2026.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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