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
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/14/2025 was filed after the mailing date of the non-final rejection on 11/05/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of claims
The amendment filed on 02/05/2026 is acknowledged. Claims 3, 4, 9, and 10 have been canceled and claims 7 and 8 have been withdrawn. Claims 1, 2, 5, and 6 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 02/05/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the35 U.S.C. 102(a)(1) rejections of claims 1-3, 5, and 6 over Albrecht et al. (US 2018/0071190 A1) and of claims 1-6 over Bulsara et al. (US 2018/0311121 A1) from the previous Office Action. 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.
New ground of rejections necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejection.
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, 2, 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 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 (the claimed liquid crystal former in the instant claims 1 and 2), 1.11% by weight of caprylic/capric triglyceride (the claimed liquid crystal former in the instant claims 1 and 2), and
2.5% by weight of behenyl alcohol (the claimed liquid crystal former in the instant claims 1 and 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 the same total weight percentage of sodium carbomer and acrylates/C10-30 alkyl acrylate crosspolymer (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, filed on 02/05/2026, have been fully considered but they are moot in view of new ground of rejections.
Conclusion
No claims are 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 extension fee 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.
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.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HONG YU/
Primary Examiner, Art Unit 1614
Prosecution Insights