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Claims 2-23 are pending of which claims 16-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The restriction requirement is still deemed proper and therefore made FINAL. Pending claims 2-15 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 2-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,833,242.
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 a cosmetic (claims 2+) or and/or sun protection (SPF30; see instant claim 7), and comprising effective amounts of niacinamide, silver ear mushroom extract, bisabolol, salicylate, and disodium laurimindipropionate tocopherol phosphate, and preservative optionally comprising phenoxyethanol (claims 2 and 3+); and in some embodiments iron, titanium, and/or zinc oxides, dimethicone, and triglycerides (e.g. ‘242 at claims 4-6, 8-10); however, is not patentably distinguished over the reference patent as claimed, such that practicing at least one of the instant or conflicting reference ‘242 patent invention as claimed, would have at least rendered obvious the other, because ‘242 teaches a formulation for the same “treating skin irritation” (‘242 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:
“1. A cosmetic formulation comprising:
bisabolol…in an amount between 0.05 to 5%;
disodium lauriminodipropionate tocopheryl phosphates, … between 0.1 and 1%;
Tremella fuciformis sporocarp (silver ear mushroom) extract,…between 0.05 and 0.4%;
niacinamide,… between 0.05 and 5%;
salicylate,…between 1 and 10%;
a preservative,
at least one iron oxide … between 0.01 and 5%; and
at least one of zinc oxide and titanium dioxide, between 5 and 15%;..”
and further recites wherein the formulation provides sun protection and SPF of 30 (‘242 at claims 1, 6; see instant claims 2-15), wherein the preservative comprises phenoxyethanol (claim 2; see instant claim 3), and may further comprise paraben free material (‘242 at claim 10; see instant claim 11). Additionally, instant dependent claims 3-15 although not identical are not patentably distinguished as they are mutually claimed (and supported within the shared disclosures as useful therein) to include such features, including as among dependent claims 2-14 of the reference ‘242 patent. Consequently, practicing at least one of the instant or conflicting reference patent as claimed would have at least been obvious and not patentably distinguished over the other reference patent (or instant invention) as claimed.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AARON J KOSAR/Primary Examiner, Art Unit 1655
