DETAILED ACTION
AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant's election of the species of formula (I) and the species of the form of the personal care composition (concealer) without traverse in the reply filed on 26 January 2026 is acknowledged. Claims 7 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species of compound of formula (I), there being no allowable generic or linking claim. Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species of form of the composition, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, 8-9, 11-13, 15-16, and 19 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Foley et al. (PCT Patent Application Publication WO 2019/028053).
Foley et al. discloses polyether derivatives which are useful in cosmetic and personal care applications, such as being used as lubricants, emollients, or protective barriers (paragraph [2]). Example 15 disclosed uses, as the polyether, one derived from citronellol. There are 3-6 repeating units, with the additional terminal unit being derivatized with acetate (see example 3 for the structure). The concealer in example 15 has the polyether present in 10 wt%, along with water. This example almost anticipates the personal care composition recited by independent instant claim 1 as well as dependent instant claims 11-12, and 19. It differs in that the end group is not fully hydrogenated. However, this alternative is suggested by Foley et al. (claim 11), thus addressing the limitation.
Instant claims 5 and 8-9 further limit the compound of formula (I). The limitations recited by instant claims 8-9 and are read upon by the above cited citronellol polymer. As for the species recited by instant claim 5, while the polyether in the above cited example has an acetate instead of a hydroxyl group, the two end groups are taught as alternatives useful by Foley et al. (embodiments 1.8 and 1.15).
Instant claims 13 and 16 recite additional limitations to the ingredients present, and the above cited example reads upon these limitations.
Instant claim 15 recites a limitation to the function of the polyether derivative. While Foley et al. doesn’t state the function of the polyether in the above cited example in a way that matches the instantly recited limitations, it is noted that the same compound is used. Thus, the properties of the compound are necessarily present.
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Foley et al. (PCT Patent Application Publication WO 2019/028053) as applied to claim 1 above.
Foley et al. discloses polyether derivatives which are useful in cosmetic and personal care applications, such as being used as lubricants, emollients, or protective barriers (paragraph [2]). Example 15 disclosed uses, as the polyether, one derived from citronellol. There are 3-6 repeating units, with the additional terminal unit being derivatized with acetate (see example 3 for the structure). This compound reads upon the instantly recited compound of formula (I). The moisturizing lotion in example 15 has the polyether present in 3.5 wt%, along with water. Instant claim 20 recites limitations to the number of repeating units, and suggested compounds include those with zero, one two, and three repeating units (abstract & figure 1). A mixture of these would read upon the instantly recited limitations. Generally, it is prima facie obvious to combine two compounds, each of which is taught by the prior art to be useful for same purpose, in order to form a mixture to be used for the very same purpose. The idea for combining them flows logically from their having been individually taught in the prior art. See MPEP 2144.06.
Claims 14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Foley et al. (PCT Patent Application Publication WO 2019/028053) as applied to claim 1 above, and further in view of Cantwell et al. (US Patent Application Publication 2007/0189989).
Instant claims 14 and 21 recite limitations to additional ingredients (such as shea butter) which are present in the composition. Foley et al. does not disclose such an ingredient. The concealer cited above (example 15) does comprise an emollient, but Foley et al. does not suggest the specific one of shea butter.
Cantwell et al. discloses cosmetic compositions (abstract) and states that shea butter is useful as an emollients for cosmetic compositions (claim 81).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have used shea butter as an emollient in the concealer taught by Foley et al. 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.
Claims 18 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Foley et al. (PCT Patent Application Publication WO 2019/028053) as applied to claim 1 above, and further in view of Dierker et al. (US Patent 8,895,039).
Instant claims 18 and 22 recite limitations to additional ingredients (such as undecane or tridecane) which are present in the composition. Foley et al. does not disclose such an ingredient. The concealer cited above (example 15) does comprise an emollient, but Foley et al. does not suggest the specific one of undecane or tridecane.
Dierker et al. discloses cosmetic preparations (abstract) and states that undecane and tridecane are useful emollients for cosmetic formulations (claim 1).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have used either undecane or tridecane as an emollient in the concealer taught by Foley et al. 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.
Nonstatutory 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 5, 8-9, 11-16, and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,872,300. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims recite a more limited list of options for the form of the cosmetic (though with some overlap, such as lipstick). Thus, the issues claims read upon the instant claims
Claims 1, 5, and 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21 and 22 of U.S. Patent No. 12,195,588. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims recite a more limited list of options for the form of the cosmetic (though with some overlap, such as hair shampoo). Thus, the issues claims read upon the instant claims
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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/Brian Gulledge/Primary Examiner, Art Unit 1699