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 .
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.
Claim Status
Applicant’s amendment of 11/19/2025 is acknowledged. Claims 1, 3-5, 7, 9, 11-13, 16, and 18-20 are amended. Claims 1-20 are currently pending and are examined on the merits herein.
Priority
The instant application claims domestic benefit to U.S. Application No. 63/352,271 filed on 06/15/2022 as reflected in the filing receipt dated on 07/06/2023.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/29/2025 and 01/08/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Withdrawn Objections and Rejections
Applicant’s amendment to the specification has overcome/rendered moot the previous objection to the disclosure. Thus, the objection is hereby withdrawn.
Applicant’s amendments to the claims have overcome/rendered moot the previous objections to the claims. Thus, the objections are hereby withdrawn. Applicant’s amendment and introduction of new claims have prompted the new grounds of objection presented herein.
Applicant’s amendments to the claims have overcome/rendered moot the previous 112(b) rejections, except for the rejection over claim 19, which is maintained for the reasons discussed below. Thus, the other 112(b) rejections are hereby withdrawn. Applicant’s amendment and introduction of new claims have prompted the new/revised grounds of rejection presented herein.
Applicant’s amendments to the claims have overcome/rendered moot the previous rejections under 35 U.S.C. 102 and 103 and on the grounds of nonstatutory double patenting. Thus, the rejections are hereby withdrawn. Applicant’s amendment and introduction of new claims have prompted the new/revised grounds of rejection presented herein.
Claim Objections
Claims 1, 4, 7, 9, and 11 are objected to because of the following informalities:
Claims 1, 7, and 9 each recite the typographical error “wherein the composition wherein the composition is formulated without ethoxylated ingredients”. The recitation “wherein the composition” should only appear once in each claim.
Claim 4 recites “the emulsifier are”, which is grammatically incorrect and should read “the emulsifier is”.
Claim 7 recites the limitation “n average tack force”, which is a typographical error and should read “an average tack force”.
Claim 7 recites the limitation “wherein the composition is formulated without polyacrylamides and ethoxylated ingredients” (line 18) followed by the recitation “wherein the composition is formulated without ethoxylated ingredients” (line 22). The limitation “without […] ethoxylated ingredients” appears twice in the claim, which is redundant, and should only appear once.
Claim 11 recites “anhydrides of a natural or naturally derived sugars”, which is grammatically incorrect and should read “anhydrides of natural or naturally derived sugars”.
Appropriate correction is required.
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 1-20 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.
Claim 1 (lines 12-13) and claim 7 (lines 16-17) each recite the limitation “average tack force between 20 and 40 minutes of less than 750 g”. It is unclear what is meant by the limitation “between 20 and 40 minutes”. Can the tack force be measured at 20 to 40 minutes from any point in time, or 20 to 40 minutes after the composition is made, or 20 to 40 minutes after the composition is applied, etc.? Because the parameters of the claimed property are unclear, the scope of the claim is indefinite. In the interest of compact prosecution in the prior art rejections below, the Examiner is interpreting the claim to mean that the average tack force is measured between 20 and 40 minutes from initial application of the product, which is consistent with the guidance provided in Applicant’s instant specification (Page 5, lines 6-19).
Claims 2-6 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claims 8, 11, and 13 are rejected by virtue of their dependency on claim 7, as they fail to resolve the ambiguity in question.
Claim 7 recites the limitation “the liquid emollient” in line 6. There is insufficient antecedent basis for this limitation in the claim. Because the preceding portion of the claim does not recite “a liquid emollient”, it is unclear to which liquid emollient the limitation refers. Therefore, the scope of the claim is indefinite.
Claims 8, 11, and 13 are rejected by virtue of their dependency on claim 7, as they fail to resolve the ambiguity in question.
Claim 7 recites the limitation “the two or more emollients” in line 20. There is insufficient antecedent basis for this limitation in the claim. Because the preceding portion of the claim does not recite “two or more emollients”, it is unclear to which two or more emollients the limitation refers. Therefore, the scope of the claim is indefinite.
Claims 8, 11, and 13 are rejected by virtue of their dependency on claim 7, as they fail to resolve the ambiguity in question.
Claim 7 recites the limitation wherein “the liquid emollient” comprises “a liquid emollient” and “a fatty alcohol”. It is unclear whether “the liquid emollient” is chemically distinct from the subsequent limitation “a liquid emollient” or if the two limitations are chemically the same. If they are the same, then “a liquid emollient” also comprises a fatty alcohol, which raises the question of how many fatty alcohols are required to be present in “the liquid emollient”? Further, fatty alcohols having an average carbon chain length ranging from about 12 to about 22 are known to be solids at room temperature rather than liquid, as evidenced by Applicant’s instant specification (Page 14, lines 10-16). Therefore, it is unclear how the limitation “the liquid emollient” can be met when it is also required to comprise a solid. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting a fatty alcohol having an average carbon chain length ranging from about 12 to about 22 as sufficient to meet the limitation “the liquid emollient”.
It appears that Applicant amended “two or more emollients” to “the liquid emollient” in an attempt to clarify the claim language in response to the Examiner’s objection to claim 7 beginning on Page 3 (line 11) of the Office action dated 08/19/2025. If so, the Examiner recommends amending “the liquid emollient” (line 6) to “two or more emollients”, and amending the limitations “if the emollient comprises isohexadecane” (line 12) and “if the emollient comprises triheptanoin” (line 14) to “if the liquid emollient comprises isohexadecane” and “if the liquid emollient comprises trihepanoin”, respectively, to clarify the antecedent basis of the terms.
Claims 8, 11, and 13 are rejected by virtue of their dependency on claim 7, as they fail to resolve the ambiguity in question.
Claim 9 recites the limitation “from about 3% to about 10% of a liquid emollient” in line 9. The claim is indefinite because it is unclear what property is represented by the percentage (i.e. % mass of the total composition or % volume of the total composition). For the purpose of the prior art rejections below, the claim is interpreted to mean % mass of the total composition.
Claims 10, 12, and 14-20 are rejected by virtue of their dependency on claim 9, as they fail to resolve the ambiguity in question.
Claim 9 recites the limitation “at least two emulsifiers comprising cetearyl olivate and sorbitan olivate”. It is unclear whether the composition must comprise two separate emulsifiers that each comprise cetearyl olivate and sorbitan olivate, or whether cetearyl olivate and sorbitan olivate are each one of two required emulsifier components. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the claim to mean the latter, which is consistent with the exemplary formulations disclosed in Applicant’s instant specification, as well as other instant claims (see claim 1, for example).
Claims 10, 12, and 14-20 are rejected by virtue of their dependency on claim 9, as they fail to resolve the ambiguity in question.
Claim 10 recites the limitation “wherein the average carbon chain length of the fatty alcohol is from about 12 to about 18”. However, claim 10 depends from claim 9, which appears to limit the fatty alcohol to stearyl alcohol (18 carbons), cetyl alcohol (16 carbons), behenyl alcohol (22 carbons), and mixtures thereof. Thus, claim 10 inappropriately broadens the scope of the parent claim. Claims 9 and 10 are considered indefinite because it is unclear whether the claimed fatty alcohol is actually limited to stearyl alcohol, cetyl alcohol, and behenyl alcohol, or if other fatty alcohols are permitted to produce an average carbon chain length of “about 12”, for example. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the fatty alcohol to be limited to stearyl alcohol, cetyl alcohol, behenyl alcohol, or mixtures thereof.
Claims 10, 12, and 14-20 are rejected by virtue of their dependency on claim 9, as they fail to resolve the ambiguity in question.
Claim 12 recites the limitation “the one or more natural or naturally derived emulsifiers”. There is insufficient antecedent basis for this limitation in the claim. Claim 12 depends from claim 9, which does not recite the limitation “one or more natural or naturally derived emulsifiers”. Therefore, it is unclear to which natural or naturally derived emulsifiers claim 12 refers, rendering the scope of the claim indefinite. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the claim to mean that the composition further comprises one or more natural or naturally derived emulsifiers comprising a mixture of waxy esters as claimed.
Claim 12 recites the limitation wherein “the waxy ester” has an average carbon chain length ranging from about 12 to about 22. Because antecedent basis for the term is provided by the recitation “a mixture of waxy esters”, which is plural, it is unclear whether only one waxy ester of the mixture is required to have an average carbon chain length ranging from about 12 to about 22, or whether all waxy esters in the mixture are required to have a collective average carbon chain length within the recited range. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the claim to mean the latter.
Claim 19 recites the limitation "the fatty alcohols". There is insufficient antecedent basis for this limitation in the claim. Claim 19 depends from claim 9, which recites the singular limitation "a fatty alcohol". Therefore, the metes and bounds of the claim are indefinite because it is unclear whether more than one fatty alcohol is required.
Claim 20 recites the limitation "the emulsifier". However, claim 20 depends from claim 9, which requires at least two emulsifiers. Because it is unclear whether the concentration limitation recited in the claim applies to only one of the two or more claimed emulsifiers, or whether the concentration limitation indicates the total amount of emulsifiers present in the composition, the scope of the claim is indefinite. For the purposes of compact prosecution in the prior art rejections below, the Examiner is interpreting the claimed concentration to indicate the total amount of emulsifiers present in the composition.
Response to Arguments
Applicant’s arguments submitted on 11/19/2025 with respect to rejections under 35 U.S.C. 112(b) have been fully considered; however, it appears that Applicant has provided no claim amendment or response to the Examiner’s rejection of claim 19 regarding lack of antecedent basis. Therefore, the rejection is maintained.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 14 recites the limitation “wherein the composition is formulation without ethoxylated ingredients”. Because claim 14 depends from claim 9, which already requires that the composition is formulated without ethoxylated ingredients, the claim fails to further limit the subject matter of the claim upon which it depends.
Claim 15 recites the limitation “wherein the composition is formulation without emulsifiers containing polyethylene glycol repeat units”. However, claim 15 depends from claim 9, which requires that the composition is formulated without ethoxylated ingredients. Because an emulsifier containing polyethylene glycol repeat units is an ethoxylated ingredient, which is already excluded from the composition, claim 15 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
Claim 4 recites the limitation “the emollients”, for which antecedent basis is provided in claim 1 as it relates to the dispersed phase. Therefore, the Examiner is interpreting only the emollients in the dispersed phase as being required to be naturally derived, distinguished from any emollients which may be found in the continuous phase.
Claims 4 and 7 each recite the limitation “naturally derived”. The Examiner is interpreting a cosmetic ingredient of greater than 50% natural origin by molecular weight as being “naturally derived”, as is consistent with the definition provided in Applicant’s instant specification (Page 7, lines 3-8).
Claim 7 recites the limitations “comprises a viscosity of…if the emollient comprises isohexadecane” and “comprises a viscosity of…if the emollient comprises of triheptanoin”, which are interpreted by the Examiner to be conditional limitations dependent on the presence of isohexadecane and/or triheptanoin in the composition, which as written are not required components of the composition. Therefore, in the absence of isohexadecane and/or triheptanoin emollients, the respective conditional limitations do not apply and the composition is not required to have any particular viscosity.
Claim 8 recites the limitation “clean”. The Examiner is interpreting a composition to be “clean” if it is formulated without the ingredients listed on Page 6, lines 10-26, of Applicant’s instant specification, as defined by Applicant.
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.
Claims 1-11, 13-15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (WO2020159121A1; published: 08/06/2020; PTO-892 of instant action) in view of Duprat-de-Paule et al. (Oilseeds & fats Crops and Lipids, vol. 25, p. 1-12; published: 08/08/2018; IDS of 09/29/2025) as evidenced by Ingredients to Die For (webpage, <https://www.ingredientstodiefor.com>; archived: 01/13/2014; PTO-892 of instant action) and Ecostore AU (webpage, <https://ecostore.com>; archived: 04/13/2021; PTO-892 of 08/19/2025).
Hwang teaches that it is difficult to design oil-in-water dispersion formulations with both a desired viscosity and a suitable stability, particularly when the formulation contains a pH-sensitive component (Paragraph 0008), and exemplifies acrylate thickeners as preferred in order to achieve these properties at low concentrations of 0.1 to 2.5 wt.% thickener, based on the total weight of the composition (Paragraphs 0075-0079).
Hwang exemplifies oil-in-water skin whitening cosmetic compositions comprising: 0.05 wt.% disodium EDTA; 1-2 wt.% potassium cetyl phosphate; 5 wt.% glycerin; 1 wt.% cetearyl olivate (and) sorbitan olivate; 0.1 wt.% caprylyl glycol; 0.06 wt.% citric acid; 0.05 wt.% sodium citrate; 13 wt.% ethyl ascorbyl ether; 3-5 wt.% cetearyl alcohol; 4 wt.% caprylic/capric triglyceride; 2 wt.% pentaerythrityl tetraethylhexanoate; 5 wt.% dimethicone; and water (Paragraph 0092, Table 2, Examples 1-5; see p. 14 for translated ingredients). Examples 1-4 further comprise 0.6 wt.% hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer (and) water (and) sorbitan isostearate (Table 2).
Regarding claim 1: Hwang teaches that the water and oil parts are each heated then mixed and emulsified, and the compositions are characterized as having excellent stability (Paragraphs 0093-0094 and Table 2). Thus, Hwang’s oil-in-water skin composition reads on the instantly claimed skin care composition comprising a stable emulsion comprising a continuous, i.e. water, phase and a dispersed, i.e. oil, phase.
Regarding the claimed continuous phase: Hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer reads on the instantly claimed acrylate/taurate copolymer. Because the copolymer is formulated with water, an ordinarily skilled artisan would reasonably conclude that the copolymer is in the continuous, i.e. water, phase. Water reads on the same as instantly claimed.
Regarding the claimed dispersed phase: Caprylic/capric triglyceride reads on the instantly claimed liquid emollient, and cetearyl alcohol, which comprises a mixture of cetyl alcohol (C16H34O) and stearyl alcohol (C18H38O), reads on the instantly claimed fatty alcohol. Because these components are primarily fatty, an ordinarily skilled artisan would reasonably conclude that these components are in the dispersed, i.e. oil, phase.
Regarding the claimed emulsifier: Cetearyl olivate and sorbitan olivate read on the same as instantly claimed.
The composition does not comprise ethoxylated ingredients and thus meets the claimed limitation.
Regarding claim 4: As indicated in their names, the emulsifier comprising cetearyl olivate and sorbitan olivate is derived from olives. The emollient caprylic/capric triglycerides is derived from plant sugars and coconut or palm kernel oils, as evidenced by Ingredients to Die For (Page 2). The emollient cetearyl alcohol is derived from palm oil, as evidenced by Ecostore AU (Page 1).
Importantly, whether the caprylic/capric triglyceride and cetearyl alcohol of Hwang are derived from nature or synthetically produced, there is no structural difference between the two forms of each compound such as to patentably distinguish the invention as claimed from the prior art.
Regarding claim 5: The composition does not comprise polyacrylamides and thus meets the claim limitation.
Regarding claim 6: The composition does not comprise phenoxyethanol and thus meets the claim limitation.
Regarding claim 7: The composition of Hwang reads on the skin care composition, stable emulsion, continuous phase, and dispersed phase as instantly claimed for the same reasons as applied to claim 1 above.
The composition does not comprise polyacrylamides, ethoxylated ingredients, or petroleum derived ingredients and thus meets the claim limitations.
Regarding claim 8: Because the composition is formulated without the ingredients listed on Page 6, lines 10-26, of Applicant’s instant specification, the composition meets the claim.
Regarding claim 9: The composition of Hwang reads on the on the skin care composition, stable emulsion, continuous phase, and dispersed phase as instantly claimed for the same reasons as applied to claim 1 above.
Regarding the claimed fatty alcohol: As discussed above, cetearyl alcohol is a mixture of stearyl alcohol and cetyl alcohol and thus meets the claim.
Regarding the claimed concentration of liquid emollient: The concentration of caprylic/capric triglycerides in the composition of Hwang reads on the instantly claimed range.
The composition does not comprise ethoxylated ingredients and thus meets the claim limitation.
Regarding claim 10: The average carbon chain length of cetearyl alcohol necessarily falls within the range of 16-18, which reads on the instantly claimed range.
Regarding claim 11: Sorbitan olivate is a mixture of esters formed from olive oil fatty acids and sorbitol and thus meets the claim.
While Hwang is silent as to the production method of the esters, it is noted that the recitation “made from anhydrides of natural sugars” is a product-by-process limitation. The patentability of a product-by-process claim is based on the product itself and does not depend on its method of production. Note: MPEP 2113(I). Because the mixture of esters taught by Hwang is structurally the same as the product of the instant claims, then it meets the claim.
Regarding claim 13: Cetearyl olivate and sorbitan olivate read on the same as instantly claimed.
Regarding claim 14: The composition does not comprise ethoxylated ingredients and thus meets the claim limitation.
Regarding claim 15: The composition does not comprise emulsifiers containing polyethylene glycol repeat units and thus meets the claim limitation.
Regarding claim 18: While Hwang does not specify what portion of the 0.6 wt.% hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer (and) water (and) sorbitan isostearate is comprised of the hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer component, because Hwang teaches that the thickener is present in an amount of 0.1 to 2.5 wt.% of the composition, an ordinarily skilled artisan would reasonably conclude that the copolymer is present in the range of 0.1 to 0.6 wt.% of the composition, which overlaps and thus renders obvious the claimed range.
Regarding claim 19: While cetearyl alcohol is present in amounts of 3-5 wt.% of the exemplary compositions of Hwang, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of cetearyl alcohol within the range of 2 to 10 wt.% of the composition, which overlaps and thus renders obvious the instantly claimed range, because Hwang teaches that any amount within this range is suitable for stabilizing an emulsion composition comprising a pH-sensitive component (Paragraphs 0065-0067).
Regarding claim 20: The amount of cetearyl olivate and sorbitan olivate reads on the instantly claimed range.
However, Hwang does not expressly teach that the composition is formulated without silicone as recited in claims 1, 7, and 9. Further, the prior art is silent as to the average tack force of the composition recited in claims 1 and 7, as well as the viscosity of the composition recited in claims 7 and 9. Additionally, Hwang does not expressly teach the acrylate/taurate copolymer recited in claims 2 or 3.
Duprat-de-Paule teaches that the right combination of oils in cosmetic emulsions ensures stability, a good sensorial effect, and targeted emulsion properties such as spreadability, highlighting bio-based nonpolar alkanes, such as C15-C19 alkane, as sensory alternatives to environmentally unfavorable silicones like dimethicone, cyclopentasiloxane, and cyclohexasilioxane (Pages 2-3, Section 2.1, Table 1).
Duprat-de-Paule further teaches a new, sustainably designed rheology modifier comprising Sodium Acrylate/Sodium Acryloyldimethyl Taurate Copolymer & C15-19 Alkane & Polyglyceryl-6 Laurate & Polyglycerin-6, wherein the combination of a plant-based inverting surfactant with a biodegradable alkane results in a light skin feel with a high gliding effect similar to nude skin (Pages 5-6, Section 3.2).
Regarding the limitation wherein the composition is formulated without silicones as recited in claims 1, 7, and 9: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify any of the exemplary compositions of Hwang by replacing the dimethicone component with the Sodium Acrylate/Sodium Acryloyldimethyl Taurate Copolymer & C15-19 Alkane & Polyglyceryl-6 Laurate & Polyglycerin-6 rheology modifier of Duprat-de-Paule in order to achieve an improved sensory effect while implementing a more environmentally sustainable alternative to dimethicone.
Regarding the tack force recited in instant claims 1 and 7: While the combination of Hwang and Duprat-de-Paule is silent as to the tack force of the composition between 20 and 40 minutes, which may in fact lie within the instantly claimed range, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manipulate the tack force of the composition through routine optimization in order to produce a formulation with minimal stickiness, as Hwang teaches that stickiness is an undesirable feeling for the user and, thus, a composition with a high hardness is desired (Paragraph 0075).
Regarding claim 2: Sodium acrylate/sodium acryloyldimethyl taurate copolymer reads on the same as instantly claimed.
Regarding claim 3: C15-19 alkane, polyglyceryl-6 laurate, and polyglycerin-6 each read on the same as instantly claimed.
Regarding the viscosities recited in instant claim 7: Because the composition taught by the combination of Hwang and Duprat-de-Paule does not comprise isohexadecane or triheptanoin, the composition is not required to have a particular viscosity (see “Claim Interpretation” above).
Regarding the viscosity recited in instant claim 9: While the combination of Hwang and Duprat-de-Paule is silent as to the composition’s viscosity, Hwang teaches that viscosity can be increased while maintaining formulation stability by incorporating 0.1 to 2.5 wt.% of a thickener that does not require neutralization (Paragraphs 0074-0079). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the composition’s viscosity by adjusting the relative concentration(s) of acrylate thickener(s) within the prior art range, which overlaps and thus renders obvious the range recited in instant claim 18, in order to achieve a desired sensory profile. Note: MPEP 2144.05(III)(C). “[D]iscovery of an optimum value of a result effective variable…is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276.
An ordinarily skilled artisan would reasonably expect success in modifying the composition of Hwang with the teachings of Duprat-de-Paule as proposed because C15-C19 alkane is explicitly taught in the prior art as a sensory alternative to dimethicone. Moreover, Hwang teaches that acrylate thickeners are preferred components of its compositions and notes that various combinations of oil, wax, silicone-based materials etc. can be used to achieve a formulation with desired properties (Paragraph 0089), which does not require the inclusion of a silicone. Further, Duprat-de-Paule teaches that the new rheology modifier achieves a light skin feel with a high gliding effect, which is particularly desired by Hwang, who teaches that a feeling of high stickiness is undesirable.
Claims 1-15 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (WO2020159121A1; published: 08/06/2020; PTO-892 of instant action) in view of Duprat-de-Paule et al. (Oilseeds & fats Crops and Lipids, vol. 25, p. 1-12; published: 08/08/2018; IDS of 09/29/2025), as applied to claims 1-11, 13-15, and 18-20 above, and further in view of Bektaş et al. (The Online Journal of Science and Technology, vol. 10, p. 152-157; published: October 2020; PTO-892 of instant action) as evidenced by Ingredients to Die For (webpage, <https://www.ingredientstodiefor.com>; archived: 01/13/2014; PTO-892 of instant action) and Ecostore AU (webpage, <https://ecostore.com>; archived: 04/13/2021; PTO-892 of 08/19/2025).
The combination of Hwang and Duprat-de-Paule as evidenced by Ingredients to Die For and Ecostore AU teaches the invention(s) of instant claims 1-11, 13-15, and 18-20 as discussed in detail above and further incorporated herein.
However, the prior art combination does not expressly teach that the emulsifier comprises a mixture of esters as recited in claim 12.
Bektaş teaches the use of coco-caprylate/caprate, which is a wax ester made of C12 – C18 vegetable fatty alcohols and a defined blend of fractionated fatty C8/C10 acids of vegetable origin, as an emollient and emulsifier in cosmetic formulations (Page 153, first paragraph). Bektaş highlights the benefits of the 100% natural wax ester, stating that it leaves a non-greasy, soft after touch on the skin and is a successful sensory alternative to silicones (Page 153, first paragraph). Because coco-caprylate/caprate comprises various waxy esters having carbon chain lengths ranging from 20 to 28, the average carbon chain length of the waxy ester necessarily falls within the range of 20-28, which reads on the instantly claimed range.
Regarding claim 12: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Hwang by further including the coco-caprylate/caprate of Bektaş to improve the sensory profile of the composition in lieu of using silicone-based ingredients.
An ordinarily skilled artisan would reasonably expect success in modifying the composition of Hwang with the prior art teachings as proposed because Bektaş teaches that coco-caprylate/caprate is routinely used as an emollient and emulsifier in cosmetic formulations, particularly in cream formulations, which is the final form of the composition of Hwang (Hwang, Paragraph 0108).
Claims 1-11, 13-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (WO2020159121A1; published: 08/06/2020; PTO-892 of instant action) in view of Duprat-de-Paule et al. (Oilseeds & fats Crops and Lipids, vol. 25, p. 1-12; published: 08/08/2018; IDS of 09/29/2025), as applied to claims 1-11, 13-15, and 18-20 above, and further in view of Making Cosmetics (Phenylpropanol EHG Specification Sheet, p.1; published: 11/02/2018; PTO-892 of 08/19/2025) as evidenced by Ingredients to Die For (webpage, <https://www.ingredientstodiefor.com>; archived: 01/13/2014; PTO-892 of instant action) and Ecostore AU (webpage, <https://ecostore.com>; archived: 04/13/2021; PTO-892 of 08/19/2025).
The combination of Hwang and Duprat-de-Paule as evidenced by Ingredients to Die For and Ecostore AU teaches the invention(s) of instant claims 1-11, 13-15, and 18-20 as discussed in detail above and further incorporated herein.
However, the prior art combination does not expressly teach that the composition further comprises phenylpropanol as recited in claim 16.
Making Cosmetics teaches that pehnylpropanol is incorporated into emulsion systems of leave-on and rinse-off personal care and cosmetic products to provide effective broad-spectrum antimicrobial activity, deodorizing properties, and humectant properties (Page 1).
Regarding claim 16: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by the combination of Hwang and Duprat-de-Paule by further including the phenylpropanol taught by Making Cosmetics. One of ordinary skill in the art would have been motivated to add phenylpropanol in order to improve the antimicrobial, deodorizing, and humectant properties of the composition as taught by Making Cosmetics.
One of ordinary skill in the art would reasonably expect success in modifying the prior art composition with the teachings of Making Cosmetics as proposed because Making Cosmetics teaches that the ingredient is specifically suitable for use in emulsified systems of leave-on personal care products.
Claims 1-11, 13-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (WO2020159121A1; published: 08/06/2020; PTO-892 of instant action) in view of Duprat-de-Paule et al. (Oilseeds & fats Crops and Lipids, vol. 25, p. 1-12; published: 08/08/2018; IDS of 09/29/2025), as applied to claims 1-11, 13-15, and 18-20 above, and further in view of EVchem (Chemists Corner, p. 1-5; published 05/04/2021; PTO-892 of 08/19/2025) as evidenced by Ingredients to Die For (webpage, <https://www.ingredientstodiefor.com>; archived: 01/13/2014; PTO-892 of instant action) and Ecostore AU (webpage, <https://ecostore.com>; archived: 04/13/2021; PTO-892 of 08/19/2025).
The combination of Hwang and Duprat-de-Paule as evidenced by Ingredients to Die For and Ecostore AU teaches the invention(s) of instant claims 1-11, 13-15, and 18-20 as discussed in detail above and further incorporated herein.
However, the prior art combination does not expressly teach that the composition further comprises methylheptylglycerin as recited in claim 17.
EVchem teaches that methylheptylglycerin achieves similar anti-soaping properties to silicones when used with Olivem 1000—a tradename for cetearyl olivate and sorbitan olivate as evidenced by Applicant’s instant specification (Instant Specification, Page 23, line 12)—which is known for soaping in cosmetic formulations (Pages 1 and 4).
Regarding claim 17: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by the combination of Hwang and Duprat-de-Paule by further including the methylheptylglycerin taught by EVchem. One of ordinary skill in the art would have been motivated to add methylheptylglycerin in order to improve the anti-soaping properties of the composition as taught by EVchem, wherein soaping is taught as undesirable.
One of ordinary skill in the art would reasonably expect success in modifying the prior art composition with the teachings of EVchem as proposed because EVchem teaches that the ingredient is specifically useful in cosmetic formulations comprising cetearyl olivate and sorbitan olivate.
Response to Arguments
Applicant’s arguments submitted on 11/19/2025 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-15 and 18-22 of copending Application No. 18/335,268 in view of Hwang et al. (WO2020159121A1; published: 08/06/2020; PTO-892 of instant action) and Bektaş et al. (The Online Journal of Science and Technology, vol. 10, p. 152-157; published: October 2020; PTO-892 of instant action).
App. ‘268 claims 1 and 13 recite a skin care composition comprising substantially the same continuous phase and dispersed phase as recited in instant claims 1, 7, and 9, and recites that the composition is formulated without polyacrylamide, which reads on instant claim 5 and the same limitation recited in instant claim 7. App. ‘268 claims 2 and 3 read on the same recited in instant claims 2 and 3, respectively. App. ‘268 claim 5 recites that the composition is formulated without phenoxyethanol, which reads on instant claim 6. App. ‘268 claim 6 recites that the composition is formulated without ethoxylated ingredients, which reads on the same limitation in instant claims 1, 7, 9, and 14-15. App. ‘268 claim 7 recites that the average carbon chain length of the fatty alcohol is from about 12 to about 18, which lies within and thus anticipates the range recited in instant claims 1, 7, and 10 and renders obvious the fatty alcohol recited in instant claim 9. App. ‘268 claims 8-10 respectively recite ranges of acrylate/taurate copolymer, fatty alcohol, and emulsifier that lie within and thus anticipate the ranges recited in instant claims 18-20. App. ‘268 claims 11 and 12 recite viscosities that lie within and thus anticipate the ranges recited in instant claims 7 and 9. App. ‘268 claim 14 recites that the composition comprises methylheptylglycerin, which reads on instant claim 17. App. ‘268 claim 15 recites that the composition comprises phenypropanol, which reads on instant claim 16. App. ‘268 claims 18, 19, and 22 recite tack forces that overlap and thus render obvious the ranges recited in instant claims 1 and 7. App. ‘268 claims 20 and 21 recite that the composition comprises natural or naturally derived ingredients in amounts that read on instant claim 4 (see “Claim Interpretation” above). The composition is formulated without petroleum derived ingredients and thus reads on same limitation recited in instant claim 7. The composition is formulated without the ingredients listed on Page 6, lines 10-26, of Applicant’s instant specification, and thus reads on instant claim 8.
However, the claims of App. ‘268 differ from the instant claims in that the claims of App. ‘268 do not recite that the emulsifier comprises cetearyl olivate and sorbitan olivate as recited in instant claims 1, 9, and 13, the natural or naturally derived emulsifiers as recited in instant claims 7 and 11-12, or that the emulsifier comprises a mixture of esters as defined in instant claims 11 and 12.
The teachings of Hwang and Bektaş are as set forth above and further incorporated herein.
Regarding the cetearyl olivate and sorbitan olivate recited in instant claims 1, 9 and 13 and the mixture of esters recited in instant claims 11: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of App. ‘268 to further include cetearyl olivate and sorbitan olivate, which is a mixture of esters formed from olive oil fatty acids and sorbitol, because Hwang teaches that these are routinely incorporated into skin care cosmetic formulations to achieve a desired hardness and freeze-thaw stability. These olive-derived emulsifiers also read on the two or more natural or naturally derived emulsifiers recited in instant claim 7.
While Hwang is silent as to the production method of the esters, it is noted that the recitation “made from anhydrides of natural sugars” is a product-by-process limitation. The patentability of a product-by-process claim is based on the product itself and does not depend on its method of production. Note: MPEP 2113(I). Because the mixture of esters taught by Hwang is structurally the same as the product of the instant claims, then it meets the claim.
Regarding instant claim 12: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of App. ‘268 claims and Hwang by further including the coco-caprylate/caprate of Bektaş to improve the sensory profile of the composition in lieu of using silicone-based ingredients
One of ordinary skill in the art would reasonably expect success in modifying the skin care composition recited in the claims of App. ‘268 with the prior art teachings as proposed because all components are known in the art to be useful in formulating skin care compositions comprising naturally-derived ingredients, and the open claim language “comprising” used in the copending claims permits the inclusion of additional, unrecited elements.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/335,268 in view of Hwang et al. (WO2020159121A1; published: 08/06/2020; PTO-892 of instant action) and Bektaş et al. (The Online Journal of Science and Technology, vol. 10, p. 152-157; published: October 2020; PTO-892 of instant action).
App. ‘261 claim 1 recites a physically stable skin care composition comprising the same continuous phase and dispersed phase as recited in instant claims 1, 7, and 9, an emulsifier consisting of polyglyceryl-3 cetearyl ether olivate, and a viscosity that overlaps the ranges recited in instant claims 7 and 9. App. ‘261 claims 2 and 3 read on the same recited in instant claims 2 and 3, respectively. App. ‘261 claim 4 recites that the emollients and emulsifiers are naturally derived, which reads on instant claim 4. App. ‘261 claim 5 recites that the composition is formulated without polyacrylamides, which reads on the same limitation recited in instant claims 5 and 7. App. ‘261 claim 6 recites that the composition is formulated without phenoxyethanol, which reads on instant claim 6. App. ‘261 claim 7 recites that the composition is clean, which reads on instant claim 8. App. ‘261 claim 8 recites that the average carbon chain length of the fatty alcohol is from about 12 to about 18, which lies within and thus anticipates the range recited in instant claims 1, 7, and 10 and renders obvious the fatty alcohols recited in instant claim 9. App. ‘261 claim 9 recites that the composition is formulated without ethoxylated ingredients, which reads on the same limitation recited in instant claims 1, 7, 9, and 14. App. ‘261 claim 10 recites that the composition is formulated without emulsifiers containing polyethylene glycol repeat units, which reads on instant claim 15. App. ‘261 claim 11 recites that the composition comprises methylheptylglycerin, which reads on instant claim 17. App. ‘261 claims 12-14 and 20 recite ranges of acrylate/taurate copolymer, fatty alcohol, and emulsifier that lie within and thus anticipate the ranges recited in instant claims 18-20. App. ‘261 claims 17 and 18 recite that the composition is formulated without silicones and petroleum-based emollients, which read on the same limitation recited in instant claims 1, 7, and 9.
However, the claims of App. ‘261 differ from the instant claims in that the claims of App. ‘261 do not recite that the composition comprises cetearyl olivate and sorbitan olivate as recited in instant claims 1, 9, and 13, the tack force recited in instant claims 1 and 7, that the composition comprises a mixture of esters as defined in instant claims 11 and 12, or that the composition comprises phenypropanol as recited in instant claim 16.
The teachings of Hwang and Bektaş are as set forth above and further incorporated herein.
Regarding the cetearyl olivate and sorbitan olivate recited in instant claims 1, 9, and 13 and the mixture of esters recited in instant claims 11: It would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of App. ‘261 to further include cetearyl olivate and sorbitan olivate, which is a mixture of esters formed from olive oil fatty acids and sorbitol, as nonionic surfactants because Hwang teaches that these are routinely incorporated into skin care cosmetic formulations to achieve a desired hardness and freeze-thaw stability. These olive-derived ingredients also read on the two or more natural or naturally derived emulsifiers recited in instant claim 7. "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. Note MPEP 2112.01.
While Hwang is silent as to the production method of the esters, it is noted that the recitation “made from anhydrides of natural sugars” is a product-by-process limitation. The patentability of a product-by-process claim is based on the product itself and does not depend on its method of production. Note: MPEP 2113(I). Because the mixture of esters taught by Hwang is structurally the same as the product of the instant claims, then it meets the claim.
Regarding the tack force recited in instant claims 1 and 7: While the combination of App. ‘261 claims and Hwang is silent as to the tack force of the composition between 20 and 40 minutes, which may in fact lie within the instantly claimed range, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manipulate the tack force of the composition through routine optimization in order to produce a formulation with minimal stickiness, as Hwang teaches that stickiness is an undesirable feeling for the user and, thus, a composition with a high hardness is desired.
Regarding instant claim 12: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of App. ‘261 claims and Hwang by further including the coco-caprylate/caprate of Bektaş to improve the sensory profile of the composition in lieu of using silicone-based ingredients
One of ordinary skill in the art would reasonably expect success in modifying the skin care composition recited in the claims of App. ‘261 with the prior art teachings as proposed because all components are known in the art to be useful in formulating skin care compositions comprising naturally-derived ingredients, and the open claim language “comprising” used in the copending claims permits the inclusion of additional, unrecited elements.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments submitted on 11/19/2025 with respect to rejections on the grounds of nonstatutory double patenting have been fully considered in so far as they apply to the new or modified rejections of the instant Office action but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616