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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 18 August 2026 has been entered.
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 .
Applicant’s arguments, filed 03 September 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 27-29, 32, 36, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0092357 A1 (Premachandran et al., 04/05/2018) (hereinafter Premachandran) in view of US 2005/0222276 A1 (Schmaus et al., 10/06/2005) (hereinafter Schmaus), as evidenced by Gen (“Deciphering the skin care ingredient caprylyl glycol”, 12/09/2020).
Premachandran discloses a synergistic preservative composition capable of providing broad spectrum antimicrobial activity comprising about 0.1 wt. % to about 99.9 wt. % of one or more organic compounds and optionally about 0.1 wt. % to 99.0 wt. % of one or more preservative compounds (abstract) suitable for aqueous and non-aqueous applications including cosmetic products (¶ 18). The preservative may hinder or kill the growth of bacterial and fungal strains that can be present in consumer products (¶ 30). The one or more organic compounds may include triglycerides, oils derived from natural products, and/or C2-C20 alkanediols (¶ 44). Triglyceride is an ester derived from glycerol and three fatty acids of saturated and unsaturated nature (¶ 55). Suitable oils include chamomile oil (¶ 56). An alkanediol based organic compound include those containing at least two carbon atoms, and wherein any two hydrogen atoms of a saturated aliphatic hydrocarbon of the alkanediol compound are substituted with hydroxyl groups (¶ 46). Examples of the alkanediol compounds include, but are not limited to, 1,2-octanediol and 2,3-octanediol (i.e. claimed at least one first linear alkanediol and one or more second linear alkanediols) (¶ 48). The synergistic preservative compositions can be aqueous or non-aqueous, delivered through different known formulations technique, including a non-limiting exemplary formulation of emulsion (¶ 72).
As evidenced by page 149, para. [0294] of the instant specification, chamomile oil is a perfume oil suitable as the at least one cosmetically or pharmaceutically active substance and/or additive.
Premachandran differs from the instant claim insofar as not explicitly disclosing a claimed plant oil as the triglyceride.
Schmaus discloses mixtures of two, three or more straight-chain 1,2-alkanediols as antimicrobial actives (abstract). The mixture may be contained in a cosmetic or dermatological formulation such as in the form of an emulsion (¶ 136). The oil phase of the emulsion may comprise fatty acid triglycerides, specifically, the triglycerol esters of saturated and/or unsaturated, branched and/or straight-chain alkanecarboxylic acids having a chain length of 8 to 24 C atoms. The fatty acid triglycerides may include natural oils, for example, olive oil (¶ 143).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP § 2144.07. Premachandran discloses wherein the composition may comprise triglycerides derived from glycerol and three fatty acids of saturated and unsaturated nature. Accordingly, it would have been obvious to one of ordinary skill in the art to have included olive oil as the triglyceride in the composition of Premachandran since it is a known and effective natural oil suitable as a fatty acid triglyceride for cosmetic compositions comprising antimicrobial alkanediols as taught by Schmaus.
Regarding the claim reciting 0.1 to 5.0% by weight of the mixture of alkanediols, the claimed range would have been obvious to one of ordinary skill in the art since it overlaps with the range of the prior art (i.e. about 0.1 wt.% to about 99.9 wt.% one or more organic compounds). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding the instant claim reciting 1.0 to 40.0% by weight of at least one liquid lipophilic component, the claimed range would have been obvious to one of ordinary skill in the art since it overlaps with the range of the prior art (i.e. about 0.1 wt.% to about 99.9 wt.% one or more organic compounds). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 28, as discussed above, Premachandran discloses 2,3-octanediol. As noted in paragraphs [0164] and [0165] of the instant specification, 2,3-octanediol has a maximum water solubility of less than or equal to 10% by weight. Thus, Premachandran teaches a linear alkanediol having a maximum water solubility of less than or equal to 10% by weight.
Regarding claim 29, Premachandran differs from the instant claim insofar as not explicitly disclosing the ratio of the mixture of alkanediols.
However, as discussed above, Premachandran discloses about 0.1 wt. % to about 99.9 wt. % of one or more organic compounds. Accordingly, it would have been obvious to one of ordinary skill in the art to have selected individual amounts of 1,2-octanediol and 2,3-octanediol from the amount range of one or more organic compounds. One of ordinary skill in the art would have arrived at the claimed ratios from the individual amounts selected. As such, the claimed ratios would have been obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP § 2144.05(A).
Regarding claim 32 reciting a plant oil having a melting point range, as noted by page 60, para. [0215] of the instant specification, Olea europaea (olive) fruit oil has a melting point range of -20 °C to 5 °C. Thus, the olive oil of Schmaus meets the limitation of a plant oil having a melting point in the range of -20 °C to ≤30 °C as claimed.
Regarding claims 27 and 40 reciting improving skin sensation, as evidenced by Gen, 1,2-octanediol, which is also known as caprylyl glycol, is a multifunctional cosmetic ingredient that improves the spreadability and ultimately the feel of a product on your skin (p.1, middle section).
Thus, since the composition of Premachandran comprises 1,2-octanediol (i.e. caprylyl glycol), which is known to possess the property of improving spreadability, one of ordinary skill in the art would reasonably expect the composition of Premachandran to have an improved spreadability and feel of product on skin when applied. See MPEP 2112.
Response to Arguments
Applicant mainly refers to assertions from the Declaration of 03 September 2026 (i.e. Ebbecke Declaration), and mainly asserts on pp. 6-7 regarding the experiments and data disclosed in the application in support of the addition of the specified alkanediol mixtures to a composition containing, e.g., a variety of different plant oils in improving the short term and long term sensory properties as claimed.
The Examiner appreciates the explanations and the amendment regarding species of the plant oils. Regarding the other assertions made by the Applicant regarding the experiments and data demonstrated by the Ebbecke Declaration, the Examiner has explained in detail below regarding the reasons Examiner does not find the assertion of patentability to be persuasive in their current scope.
Response to Declaration
The Examiner appreciates the data provided in the Declaration of Dr. Ebbecke, filed 03 September 2026. Unfortunately, the Declaration is insufficient to overcome the obviousness rejection above because the showing is not commensurate in scope with the claims.
Examiner disagrees that patentability has been demonstrated for the claims (in their current scope). To overcome a prima facie case of obviousness via submission of unexpected results, Applicants must demonstrate not only that the results would have been unexpected to one having ordinary skill in the art at the time of the invention, but also that the instant claims are commensurate in scope with the results provided. See MPEP 716.02(d).
In this instant case, while Applicant’s result does not seem to be predicted by the prior art, conversely the claims do not appear to be commensurate in scope with the results presented. For example, the data referenced in Exhibit B is limited to a mixture of alkanediols at a 99 : 1 ratio, while instant claim 1 does not require any ratio of the first and second linear alkanediols. Furthermore, claim 29, while reciting a ratio of the mixture of alkanediols, appears to recite embodiments that is outside the scope of the showing, namely an upper ratio of 99.9 : 0.1, which would translate into 999 : 1. At best, the Lange Declaration submitted 09 December 2025 supports a mixture of alkanediols at a ratio of 95 : 5. Accordingly, it is unclear to the Examiner how such showing of 99 : 1 and 95 : 5 is reasonably representative of the much broader ratio ranges recited in claim 29, ranging from 50 : 50 to 99.9 : 0.1.
Similarly, Exhibit B of the Ebbecke Declaration contained a specific ratio of the mixture of alkanediols to the at least one liquid lipophilic component of 80 : 20 and 70 : 30; the Lange Declaration supported an 85 : 15 ratio (Lange: [18] and [33]), which is consistent with the instant Specification (see, for example, para. [0384] of the Specification), while the instant claims are not limited at all.
The Examiner further notes the following portions of the instant Specification appear to speak to the embodiment asserted by the Applicant:
Para. [0379], “…leads to an almost identical skin sensation than a liquid lipophilic component containing cosmetic or pharmaceutical composition comprising instead the same amount of a silicone.”
Para. [0340], “…it does not contain a silicone or silicone derivative, in particular a silicone oil.”
Para. [0353], “…has a similar spreading behaviour and significantly reduces the fatty/greasy skin feel of oily ingredients compared to a cosmetic or pharmaceutical oil composition comprising the same amount [of] silicon[e], …suitable to partially or completely replace a silicone in a cosmetic or pharmaceutical composition, in order to achieve a superior skin sensation as usually achieved by the addition of silicone. By the complete or partial replacement of silicone with a green alkanediol in a cosmetic or pharmaceutical composition, the naturality index, which is the criteria for natural and organic cosmetic ingredients, of a cosmetic or pharmaceutical formulation, can be significantly increased.”
Para. [0343], “…the solubility of a combination of a 1,2-alkanediol and a 2,3-alkanediol, in particular 1,2-octanediolwith 2,3-octanediol and 1,2-heptanediol with 2,3-heptanediol, is excellent and results in a clear and non-turbid solution. The use of 2,3-octanediol in mixture with 1,2-octanediol, even in small amounts, can improve the solubility of 1,2-octanediol, which alone tends to precipitate or recrystallize in oily solutions.“
The Examiner suggests amending the claims to more closely reflect the results obtained in the Declaration, and consider further including claim language that would highlight the results achieved by Applicant, such as: the increase in solubility (resulting in a clear and non-turbid solution) when compared to the same composition without the mixture of the alkanediols; and that the composition does not contain a silicone or silicone derivative.
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 27-29, 32, 36, and 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 13-19, 21-22, 24, and 32-38 of copending Application No. 18/009,289 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims recite a more specific version of the instant claims (i.e., the conflicting claims recite the specific mixture of alkanediols, plant oils, and octocrylene) and thus read on the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 27-29, 32, 36, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,911,347 B2 in view of US 2018/0092357 A1 (Premachandran et al., 04/05/2018) (hereinafter Premachandran) and US 2005/0222276 A1 (Schmaus et al., 10/06/2005) (hereinafter Schmaus), as evidenced by Gen (“Deciphering the skin care ingredient caprylyl glycol”, 12/09/2020). The conflicting claims differ from the pending claims insofar as not explicitly teaching all the features of the claimed invention, such as instantly claimed subspecies of lipophilic component. However, these feature are known in the art. As noted in the current rejections, the teachings of Van Haren render obvious claims 1-7, 12, 16-18 and 42. Furthermore, the combined teachings of Premachandran and Schmaus, as evidenced by Gen, render obvious claims 27-29, 32, 36, and 40. Therefore, as claims 1-11 of U.S. Patent No. 11,911,347 B1, Premachandran, and Schmaus all disclose compositions comprising compositions comprising a mixture of alkanediols and lipophilic components such as known oils, it would have been prima facie obvious to one of ordinary skill in the art to have modified the conflicting claims and to include the teachings of Premachandran and Schmaus as discussed in the rejections above, because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as instantly claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP 2144.06(I).
Claims 27-29, 32, 36, and 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 13, 17, 19-21, 23-24, and 26-36 of copending Application No. 18/009,291; claims 1, 17-19, 21-23, and 27-28 of copending Application No. 18/009,295; claims 1, 5, 12-15, 17-28, and 30-40 of copending Application No. 18/009,314; claims 1-2, 14, 16-22, 25-26, and 28-32 of copending Application No. 18/009,324; and claims 16-17 and 19-36 of copending Application No. 18/301,090 in view of US 2018/0092357 A1 (Premachandran et al., 04/05/2018) (hereinafter Premachandran) and US 2005/0222276 A1 (Schmaus et al., 10/06/2005) (hereinafter Schmaus), as evidenced by Gen (“Deciphering the skin care ingredient caprylyl glycol”, 12/09/2020). The conflicting claims differ from the pending claims insofar as not explicitly teaching all the features of the claimed invention, such as instantly claimed subspecies of lipophilic component. However, these feature are known in the art. As noted in the current rejections, the teachings of Van Haren render obvious claims 1-7, 12, 16-18 and 42. Furthermore, the combined teachings of Premachandran and Schmaus, as evidenced by Gen, render obvious claims 27-29, 32, 36, and 40. Therefore, as claims 1-2, 13, 17, 19-21, 23-24, and 26-36 of copending Application No. 18/009,291, claims 1, 17-19, 21-23, and 27-28 of copending Application No. 18/009,295, claims 1, 5, 12-15, 17-28, and 30-40 of copending Application No. 18/009,314, claims 1-2, 14, 16-22, 25-26, and 28-32 of copending Application No. 18/009,324, claims 16-17 and 19-36 of copending Application No. 18/301,090, Premachandran, and Schmaus all disclose compositions comprising compositions comprising a mixture of alkanediols and lipophilic components such as known oils, it would have been prima facie obvious to one of ordinary skill in the art to have modified the conflicting claims and to include the teachings of Premachandran and Schmaus as discussed in the rejections above, because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as instantly claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP 2144.06(I).
Response to Arguments
Applicant asserts the amended claims are not obvious variants of the reference claims and requests reconsideration and withdrawal of the obviousness type double patenting rejections.
The Examiner does not find the assertions to be persuasive. The amended claims, in their current scope, share significant overlap with the conflicting claims. For example, copending Application No. 18/009,289 discloses a mixture of the instantly claimed alkanediol, plant oils, octocrylene, wherein the mixture of alkanediols is 0.001-15% by weight, and octocrylene maybe 0.1-50% by weight, and provides same benefit as instantly claimed. Thus, it is not clear to the Examiner how the pending claims, in their current scope, highlights the distinct effect achieved by the Applicant in formulating the specific combination. As such, the rejection is maintained.
Conclusion
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
