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 . Claims included in the prosecution are claims 1-3, 5-10, 12, 14, 15 and 19-21.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/12/2026 has been entered.
Applicants' arguments, filed 03/12/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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
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.
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.
1. Claims 1, 5-10, 12 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama et al., (US 2020/0093712 A1, March 26, 2020) (hereinafter Uchiyama) in view of Crane et al., (US 2015/0265504 A1, Sept. 24, 2015) (hereinafter Crane).
Uchiyama discloses an oil-in-water emulsion composition comprising component (A): from 0.1 to 5% by mass of a hydrophilic nonionic surfactant, component (B): more than 0.02% by mass to less than 0.5% by mass of an anionic surfactant, component (C): from 0.5 to 6% by mass of a higher alcohol, and component (D): from 2 to 30 mmol/100 g of an organic acid and/or a salt and/or derivative thereof. The component (A) includes a polyoxyalkylene alkyl ether and/or a polyalkylene glycol fatty acid ester (Abstract). Examples of hydrophilic nonionic surfactants (component A) may include PEG (100) monostearate (i.e., an emulsifier) ([0039]). Examples of the anionic surfactants (component (B)) that may be used may include sodium palmitate ([0043]). Examples of the higher alcohol (component C) include stearyl alcohol (i.e., a fatty alcohol having an average carbon chain length ranging from about 12 to about 22) ([0046]). Component (D) is an organic acid such as L-ascorbic acid ([0049]). In addition to the aforementioned components, the composition of the present disclosure may further contain (E) a thickener ([0051]), such as sodium acrylate/sodium acryloyldimethyltaurate copolymer ([0053]). The content by percentage (total amount) of the thickener(s) to the mass of the composition is preferably 0.2% by mass to 1% by mass ([0056]). The oil-in-water emulsion composition may include other components, such as water-soluble polymers, perfumes, and oily components ([0062]). Oily components include liquid oils such as avocado oil (i.e., a liquid emollient comprising triglycerides) ([0080]). Water soluble polymers include polyacrylamide ([0078]). The composition may include an antiseptic agent such as ethylparaben or 2-phenoxyethanol ([0097]). An oil phase was prepared by dissolving oil-soluble components, such as the component (A), the component (C), and the component (F), in an oily component (a portion of the component (G)) at high temperatures. On the other hand, a water phase was prepared by dissolving water-soluble components, such as the component (B), the component (D), and the component (E), in an aqueous solvent (a portion of the component (G)) such as purified water at high temperatures ([0105]). The composition provides upon use, a user with such feelings as skin smoothness (soft feeling) and moistness ([0013]). Formulation Example 1 comprises a balance of water ([0139, Table 8]). The composition can maintain a stable emulsion state (¶ [0102]).
Uchiyama differs from the instant claims insofar as not teaching wherein the composition has a viscosity of greater than or equal to 550 Pa*s or greater than or equal to 900 Pa*s at a shear rate of 0.10 s-1.
However, Crane discloses water-based cosmetic compositions comprising a synthetic non-associative thickening polymer, a synthetic associative thickening polymer, an emulsifier, a film forming polymer, and a liquid fatty substance (abstract). The gels of the invention display a particular viscosity ranging from 2,000 Pa·s to 90,000 Pa·s at low shear rate ([0026]) and low shear is from about 0.01 s-1 to about 1 s-1 ([0028]). Gel compositions of the invention may be in the form of an oil in water emulsion ([0119]). The synthetic associative thickening polymer is ammonium acryloyldimethyltaurate/steareth-8 methacrylate copolymer (i.e., an acrylate/taurate copolymer) ([0111]). For oil-in-water emulsions, emulsifiers include a mixture PEG-100 stearate/glyceryl stearate (i.e., a fatty alcohol having an average carbon chain length ranging from about 12 to about 22) ([0178]). The composition may comprise avocado oil (i.e., a liquid emollient comprising triglycerides) ([0285]).
Uchiyama teaches oil in water emulsions comprising an acrylate/taurate copolymer as a thickener. Crane teaches emulsions comprising an acrylate/taurate copolymer as a thickener with a viscosity ranging from 2,000 Pa·s to 90,000 Pa·s at 0.01 s-1 to about 1 s-1. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the oil in water emulsion of Uchiyama to have a viscosity ranging from 2,000 Pa·s to 90,000 Pa·s at a shear rate of about 0.01 s-1 to about 1 s-1 since this is a known and effective viscosity for an oil in water emulsion comprising acrylate/taurate copolymer as a thickener, as taught by Crane.
Regarding claim 1 reciting a liquid emollient in a dispersed phase, Uchiyama discloses wherein the oil phase was prepared by dissolving oil soluble components. Avocado oil (i.e., a liquid emollient comprising triglycerides) is an oil soluble component. Therefore, it would have been obvious to one of ordinary skill in the art to have avocado oil in the oil phase of the oil in water emulsion.
Regarding the limitation of claims 1 and 13 reciting wherein the composition is formulated without acrylamide and polyacrylamide, as discussed above, Uchiyama teaches that water soluble polymers such as polyacrylamide are optional. Accordingly, it would have been obvious to one skilled in the art that the composition of Uchiyama may be formulated without acrylamides and polyacrylamides.
Regarding claim 5, as discussed above, Uchiyama teaches that an antiseptic agent such as ethylparaben or 2-phenoxyethanol is optional. Accordingly, it would have been obvious to one skilled in the art that the composition of Uchiyama may be formulated without phenoxyethanol by choosing an alternate antiseptic agent or not including any antiseptic agents.
Regarding the limitation of claim 6, as discussed above, the composition of Uchiyama requires PEG (100) monostearate + polyoxyalkylene alkyl ether (component (A)), sodium palmitate (component (B)), stearyl alcohol ((component C)) and component (D) is l-ascorbic acid, in addition to sodium acrylate/sodium acryloyldimethyltaurate copolymer ([0053]), water ([0105]), and avocado oil (i.e., a liquid emollient comprising triglycerides). Accordingly, it would have been obvious to one of ordinary skill in the art to have formulated the composition of Uchiyama without ethoxylated ingredients since the required ingredients are free of ethoxylation.
Regarding the limitations of claims 1 and 19 reciting wherein the composition comprises a tack force between 20 and 40 minutes of less than 900 g and less than 880 g, respectively, as noted in the instant specification on page 4, lines 12-13, the composition can have an average tack force between 20 and 40 minutes of less than 800 g, and alternatively less than 790 g. Uchiyama discloses oil in water emulsions containing sodium acrylate/sodium acryloyldimethyltaurate copolymer (i.e., an acrylate/taurate copolymer) in 0.2% by mass to 1% by mass, from 0.5 to 6% by mass of stearyl alcohol (i.e., a fatty alcohol having an average carbon chain length ranging from about 12 to about 22), from 0.1 to 5% by mass PEG (100) monostearate (i.e., an emulsifier), the oily component avocado oil (i.e., a liquid emollient comprising triglycerides) and a balance of water. Accordingly, because Uchiyama discloses substantially the same components in substantially the same amounts as the claimed invention, the composition of Uchiyama necessarily has the claimed tack force.
Regarding the limitations of claims 20-21 reciting wherein the composition comprises at least 50% natural or naturally derived ingredients and at least 70% natural or naturally derived ingredients, respectively, as discussed above, the composition of Uchiyama requires from 0.1 to 5% by mass of a hydrophilic nonionic surfactant (component (A)), more than 0.02% by mass to less than 0.5% of an anionic surfactant (component (B)), from 0.5 to 6% by mass of a higher alcohol ((component C)) and component (D) is an organic acid such as L-ascorbic acid, in addition to optional ingredients such as, 0.2% by mass to 1% by mass of sodium acrylate/sodium acryloyldimethyltaurate copolymer (i.e., an acrylate/taurate copolymer), water, avocado oil (i.e., a liquid emollient comprising triglycerides). Accordingly, it would have been obvious to one of ordinary skill in the art to have formulated the composition of Uchiyama to comprise, at most, a total mass percentage of required components A-C and optionally sodium acrylate/sodium acryloyldimethyltaurate copolymer (i.e., an acrylate/taurate copolymer) equaling 12.5% of ingredients that are not naturally derived, with the remaining ingredients comprising required component (D) L-ascorbic acid, water, and optional component avocado oil (i.e., a liquid emollient comprising triglycerides), which are natural or naturally derived, equaling 87.5%. Thus, it would have been obvious to formulate the composition of Uchiyama comprising at least 87.5% natural or naturally derived ingredients.
2. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama et al., (US 2020/0093712 A1, March 26, 2020) (hereinafter Uchiyama) in view of Crane et al., (US 2015/0265504 A1, Sept. 24, 2015) (hereinafter Crane), and further in view of Duprat-de-Paule et al., (Augmented bio-based lipids for cosmetics, June 15, 2018) (hereinafter Duprat-de-Paule).
The teachings of Uchiyama and Crane are discussed above. Uchiyama and Crane do not teach wherein the composition comprises sodium acrylate/sodium acryloyldimethyl taurate copolymer & C15-19 Alkane & Polyglyceryl-6 Laurate, Polyglycerin-6.
However, Duprat-de-Paule discloses wherein Sodium Acrylate/Sodium Acryloyldimethyl Taurate Copolymer & C15-19 Alkane & Polyglyceryl-6 Laurate & Polyglycerin-6 is a sustainably designed liquid rheology modifier characterized by a light skin feel with a high gliding effect (page 6, left column, last paragraph).
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. Uchiyama discloses wherein the composition comprises a thickener (i.e., rheology modifier) such as sodium acrylate/sodium acryloyldimethyltaurate copolymer. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated Sodium Acrylate/Sodium Acryloyldimethyl Taurate Copolymer & C15-19 Alkane & Polyglyceryl-6 Laurate & Polyglycerin-6 into the composition of Uchiyama since it is a known and effective thickener that additionally provides skin with a light skin feel and has high gliding effect as taught by Duprat-de-Paule.
3. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama et al., (US 2020/0093712 A1, March 26, 2020) (hereinafter Uchiyama) in view of Crane et al., (US 2015/0265504 A1, Sept. 24, 2015) (hereinafter Crane), and further in view of SNF (Personal Care Brochure, 2021).
The teachings of Uchiyama and Crane are discussed above. Uchiyama and Crane do not teach wherein the composition comprises sodium acrylate/sodium acryloyldimethyl taurate copolymer & C15-19 alkane & lauryl glycoside.
However, SNF discloses wherein NatursolTM EMI 132 is a multifunctional rheology modifier providing thickening, stabilizing, and texturizing benefits (Slide 5). NatursolTM EMI 132’s INCI name is sodium acrylate/sodium acryloyldimethyl taurate copolymer, C15-19 alkane, and lauryl glucoside (Slide 6).
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. Uchiyama discloses wherein the composition comprises a thickener (i.e., rheology modifier) such as sodium acrylate/sodium acryloyldimethyltaurate copolymer. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated Sodium Acrylate/Sodium Acryloyldimethyl Taurate Copolymer & C15-19 Alkane & Lauryl Glucoside into the composition of Uchiyama since it is a known and effective thickener that additionally provides stabilizing and texturizing benefits as taught by SNF.
4. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama et al., (US 2020/0093712 A1, March 26, 2020) (hereinafter Uchiyama) in view of Crane et al., (US 2015/0265504 A1, Sept. 24, 2015) (hereinafter Crane), and further in view of Burgo et al., (WO 2021/237207 A2, Nov. 25, 2021) (cited by applicant on IDS 11/07/2023) (hereinafter Burgo).
The teachings of Uchiyama and Crane are discussed above. Uchiyama and Crane do not teach wherein the composition comprises methylheptylglycerin.
However, Burgo teaches biobased alkyl glyceryl ether compounds and compositions, and applications thereof that include inter alia cosmetic applications ([0002]). The invention is directed to a biobased compound of Formula (I) ([0011]), which is 1-methylheptyl glycerin ([0014]). Formulations comprising Formula (I) include cosmetic products ([0021]). The formulation is an oil-in-water emulsion ([Claim 37). The formulation may comprise one or more biobased BAGE compounds. Biobased BAGE compounds will impart an antimicrobial or preservative effect in the formulation and/or composition to preserve the formulation and/or composition against contamination by microorganisms and/or improve antimicrobial efficacy on surfaces — e.g. skin, hair, etc. ([0060]). The biobased BAGE compound is a biobased methylheptylglycerin (“bio-MHG”) ([0063]).
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. Uchiyama discloses wherein the composition comprises an antiseptic agent. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the composition of Uchiyama wherein the composition further comprises methylheptylglycerin since methylheptulglycerin is a known and effective antiseptic since it imparts an antimicrobial or preservative effect in formulations for the skin as taught by Burgo.
5. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama et al., (US 2020/0093712 A1, March 26, 2020) (hereinafter Uchiyama) in view of Crane et al., (US 2015/0265504 A1, Sept. 24, 2015) (hereinafter Crane), and further in view of Nahrwold (US 2022/0009863 A1, Jan 13, 2022) (hereinafter Nahrwold).
The teachings of Uchiyama and Crane are discussed above. Uchiyama and Crane do not teach wherein the composition comprises phenylpropanol.
However, Nahrwold teaches that 3-Phenylpropan-1-ol (INCI name: Phenylpropanol) is an aromatic alcohol with a mild and pleasant odor. 3-Phenylpropan-1-ol is used as fragrance ingredient in perfumes and personal care products ([0005]). The invention relates to a process for manufacturing of 3-phenylpropan-1-ol from nature derived starting material ([0010]) such as cinnamon bark or cassia bark ([0015]). The 3-phenylpropan-1-ol which is free of allergens and typical odor-affecting impurities is suitable for use in cosmetics and personal care products ([0065]).
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. Uchiyama discloses wherein the composition comprises perfumes. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated phenylpropanol into the composition of Uchiyama since it is a known and effective perfume as taught by Nahrwold.
Response to Arguments
Applicant argues that Examples A-1 and A-2 include both PEG 100 stearate and a sodium acrylate/sodium acryloyldimethyl taurate copolymer and achieves a viscosity of 1082 Pa*s and 877 Pa*s at a shear rate of 0.10s-1. In contrast, when the PEG-100 stearate is replaced with other emulsifiers, the viscosity plummets. For example, Example B-1 (using Polyglyceryl-3 methylglucose distearate) yielded a viscosity of only 167 Pa*s, and Example C-1 (using Polyglyceryl10 Diisostearate) yielded a viscosity of only 141 Pa*s.
The Examiner does not find Applicant’s argument to be persuasive. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. See MPEP 716.02. Thus, because each example comprises a different emulsifier, one of ordinary skill in the art would have reasonably expected different properties, e.g., viscosity, for each example. Also, Applicant has not explained why it is desirable to have a viscosity of 1082 Pa*s. It is known in the art that skin care compositions may be in forms such as creams, gels, solutions, and ointments. Each of those forms have a different viscosity. Therefore, since skin care compositions may have a variety of viscosities, it is unclear why achieving a viscosity of 1082 Pa*s is unexpected. As such, the rejection is maintained.
Applicant argues that there are challenges with identifying a composition that successfully replaces the function of acrylamide and polyacrylamide. The specific combination of the claimed acrylate/taurate copolymer and PEG-100 stearate provides this non-obvious solution, achieving the desired viscosity without resorting to polyacrylamides.
The Examiner does not find Applicant’s argument to be persuasive. If achieving a particular viscosity is the goal, it is not clear how one would not be able to obtain that from using more thickening agents or using various thickening agents. In other words, it is not clear how the claimed invention is unexpected when a desired viscosity can be achieved by other means. Also, as discussed above, it is not clear why the viscosity of a composition with acrylamide and polyacrylamide is desirable. As such, Applicant’s argument is unpersuasive and the rejection is maintained.
Applicant argues that the secondary/tertiary references do not cure the deficiencies.
The Examiner submits that Applicant’s arguments with regards to the main rejection are unpersuasive and are addressed above. Therefore, the other rejections are maintained.
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 1-3, 5-10, 12, 14, 15 and 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, and 5-6 of copending Application No. 18/335,263 in view of Uchiyama et al., (US 2020/0093712 A1, March 26, 2020) (hereinafter Uchiyama). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and co-pending claims both recite a skin care composition comprising substantially the same continuous and dispersed phases.
The instant claims differ from the co-pending claims insofar as disclosing an emulsifier comprising PEG-100 stearate.
However, Uchiyama discloses oil-in-water emulsion composition includes component (A): a hydrophilic nonionic surfactant, component (B): an anionic surfactant, component (C): a higher alcohol, and component (D): an organic acid and/or a salt and/or derivative thereof. The component (A) includes a polyoxyalkylene alkyl ether and/or a polyalkylene glycol fatty acid ester (Abstract). Examples of other hydrophilic nonionic surfactants may include PEG (100) monostearate (i.e., PEG-100 stearate) ([0038]). Examples of the higher alcohol include stearyl alcohol (i.e., a fatty alcohol) ([0046]). In addition to the aforementioned components, the composition of the present disclosure may further contain (E) a thickener ([0051]), such as sodium acrylate/sodium acryloyldimethyltaurate copolymer (i.e., an acrylate/taurate copolymer) ([0053]). The oil-in-water emulsion composition may include other components, such as oily components ([0062]). Oily components include liquid oils such as avocado oil (i.e., a liquid emollient) ([0080]). An oil phase was prepared by dissolving oil-soluble components, such as the component (A), the component (C), and the component (F), in an oily component (a portion of the component (G)) at high temperatures. On the other hand, a water phase was prepared by dissolving water-soluble components, such as the component (B), the component (D), and the component (E), in an aqueous solvent (a portion of the component (G)) such as purified water at high temperatures ([0105]).
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. The co-pending claims disclose wherein the composition comprises an emulsifier. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated PEG-100 stearate into the instant claims since it is a known and effective emulsifier for emulsions as taught by Uchiyama.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-10, 12, 14, 15 and 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, and 5-6, 8-9, and 11-16 of copending Application No. 18/335,261 in view of Uchiyama et al., (US 2020/0093712 A1, March 26, 2020) (hereinafter Uchiyama). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending and co-pending claims both recite a skin care composition comprising substantially the same continuous and dispersed phases.
The instant claims differ from the co-pending claims insofar as disclosing an emulsifier comprising PEG-100 stearate.
However, Uchiyama discloses oil-in-water emulsion composition includes component (A): a hydrophilic nonionic surfactant, component (B): an anionic surfactant, component (C): a higher alcohol, and component (D): an organic acid and/or a salt and/or derivative thereof. The component (A) includes a polyoxyalkylene alkyl ether and/or a polyalkylene glycol fatty acid ester (Abstract). Examples of other hydrophilic nonionic surfactants may include PEG (100) monostearate (i.e., PEG-100 stearate) ([0038]). Examples of the higher alcohol include stearyl alcohol (i.e., a fatty alcohol) ([0046]). In addition to the aforementioned components, the composition of the present disclosure may further contain (E) a thickener ([0051]), such as sodium acrylate/sodium acryloyldimethyltaurate copolymer (i.e., an acrylate/taurate copolymer) ([0053]). The oil-in-water emulsion composition may include other components, such as oily components ([0062]). Oily components include liquid oils such as avocado oil (i.e., a liquid emollient) ([0080]). An oil phase was prepared by dissolving oil-soluble components, such as the component (A), the component (C), and the component (F), in an oily component (a portion of the component (G)) at high temperatures. On the other hand, a water phase was prepared by dissolving water-soluble components, such as the component (B), the component (D), and the component (E), in an aqueous solvent (a portion of the component (G)) such as purified water at high temperatures ([0105]).
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. The co-pending claims disclose wherein the composition comprises an emulsifier. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated PEG-100 stearate into the instant claims since it is a known and effective emulsifier as taught by Uchiyama.
This is a provisional nonstatutory double patenting rejection.
Response to Applicant’s Arguments
Applicant argues that upon indication of allowable subject matter but for the non-statutory obviousness-type double patenting rejection, the Applicant will consider filing a terminal disclaimer if necessary.
Applicant’s argument has been fully considered but found not to be persuasive because an appropriate terminal disclaimer has not yet been filed.
For the foregoing reasons, the rejections have been modified and maintained.
Conclusion
Claims 1-3, 5-10, 12, 14, 15 and 19-21 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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