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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on July 20, 2026 is acknowledged.
Claims 1-22 are pending of which claims 14-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Pending claims 1-13 have been examined on the merits.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,826,457.
Although the claims at issue are not identical, they are not patentably distinct from each other because whereas the instant claims are drawn to a composition comprising: a topical formulation for the intended use of treating skin irritation, redness or inflammation (see instant claims 1, 6-8,13) and/or sun protection (SPF30 or sun/UV rating; see instant claims 1, 2, 9,12), and comprising niacinamide; Zingiber officinale root extract; bisabolol; Crithmum maritimum extract; Magnolia officinalis bark extract; and Vitamin E;wherein the formulation is a topical formulation in the form of a liquid, cream or gel, and amounts thereof (see instant claims 1-13); however, is not patentably distinguished and practicing at least one of the instant or conflicting reference ‘457 patent invention as claimed, would have at least rendered obvious the other, because ‘457 teaches a formulation for the same “treating skin irritation” (‘457 at claim 1) or for dun protection, Protection Grade of Ultraviolet A (PA) rating (claims 3,6), and which although not identical as claimed, therein the claims recite providing a composition similarly comprising
effective amounts of: (i) Zingiber officinale extract; (ii) at least one of Asteraceae extract or bisabolol; (iii) Crithmum maritimum extract, (iv) antimicrobial and (v) anti-inflammatory agents, and (vi) one or more synthetic antimicrobial preservatives selected from phenoxyethanol, ethylhexylglycerin, benzoic acid, sodium benzoate, and dehydroacetic acid (‘457 at claim 1), and as disclosed based on the shared disclosures, may include Magnolia officinalis, niacinamide, and vitamin E therewith. Additionally, the amounts instantly recited are disclosed and/or as claimed in the reference patent (e.g. see claim 5 which recites “wherein the first skin conditioning agent is provided in a range of 0.005-5% wherein the second skin conditioning agent is provided in a range of 0.05-5%; wherein the third skin conditioning agent is provided in a range of 0.02-5%; wherein the fourth skin conditioning agent is provided in a range of 0.001-5%; wherein the anti-inflammatory agent is provided in a range of 0.05-5%; wherein the anti-inflammatory agent comprises a Vitamin E compound; wherein the ranges are provided as % m/m, % w/w, % w/v, % m/v, or % v/v of the formulation; and wherein the formulation is a paraben-free formulation.
Conclusion
No claims are presently allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON J KOSAR whose telephone number is (571)270-3054. The examiner can normally be reached Mon.-Fri. 9-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at (571)272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON J KOSAR/Primary Examiner, Art Unit 1655
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