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 .
Status of Claims
Receipt of Remarks/Amendments filed on 06/03/2026 is acknowledged. Claims 1-20 are amended. Claims 14-20 remain withdrawn as being directed to a non-elected invention. Claims 1-13 are examined on the merits herein.
Priority
The instant application, filed 10/31/2023, claims no priority.
Withdrawn Objections/Rejections
Claims 1-3, 5-6, and 8-10 were rejected under 35 U.S.C. 103 as being unpatentable over Rochette and Presperse. Applicant’s amendment’s to the claims have overcome the rejection and the rejection is withdrawn.
Claims 1-11 were rejected under 35 U.S.C. 103 as being unpatentable over Rochette, Presperse, Newman, and Manning. Applicant’s amendment’s to the claims have overcome the rejection and the rejection is withdrawn.
Claims 1-13 were rejected under 35 U.S.C. 103 as being unpatentable over Rochette, Presperse, Newman, Manning, and ULTRUS Prospector. Applicant’s amendment’s to the claims have overcome the rejection and the rejection is withdrawn.
The following grounds of rejections are new and maintained, with any new grounds necessitated by amendment:
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2, 9, and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 2 and 13, Applicants claim a composition which is free or essentially free from plant extracts. However, Applicant has not disclosed in the instant specification every “plant extract” that is to be excluded. The state of the art is vast and unpredictable with regards to plant extracts and undue experimentation is involved with elucidating an active ingredient of a plant, since an extract is dependent on the plant and extraction method used. As such, undue experimentation would be required to identify every plant extract to exclude in the instant composition without Applicants’ explicit disclose of the specific extracts to avoid. Moreover, as discussed in the 112(b) rejection below, a nature based plant derived gum thickener can be considered a plant extract. As such, Applicant has not adequately described a composition free or essentially free from all existing plant extracts, as instantly claimed.
Regarding claim 9, Applicants claim a composition comprising one or more additives selected from fruit extracts. However, Applicant has not disclosed in the instant specification what the fruit extracts are, specifically in regard to the fruit which is extracted and the extraction method used, both of which play a crucial part in defining an extract. The state of the art is vase and unpredictable with regards to plant extracts and undue experimentation is involved with elucidating an active ingredient of a fruit. As such, Applicant has not provided a description that explicitly conveys which fruit extracts they were in possession of, how they were obtained, and which ones may be incorporated into the cosmetic composition.
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 2 and 13 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.
Claims 2 and 13, recite wherein the composition is free or essentially free of ingredients selected from plant extracts. However, their parent claims, claims 1 and 12, both recite a composition compromising a nature based plant derived gum thickener. Since the excluded “plant extracts” are not explicitly defined in the instant specification, as discussed in the 112(a) issue above, a plant derived thickener reads on a plant extract. It is unclear how a composition can be free or essentially free of plant extracts when it is explicitly defined to comprise one as an essential component.
Further regarding claim 13, claim 13 recites wherein the composition is free or essentially free of ingredients selected form the group consisting of polyol plasticizers. However, parent claim 12 recites a composition comprising 0.3% of butylene glycol (i.e., a polyol plasticizer). As such, it is unclear how the composition can be free of a polyol plasticizer when it is explicitly defined to comprise one as an essential component.
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.
Claims 1-3, 5-6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Rochette, S., et al. (US 20170105908 A1, 04/20/2017, on record), hereinafter Rochette, in view of Elle. (2017). This (somewhat creepy) Korean facial is taking over the beauty world, by Mansi Shah (PTO-892), hereinafter Shah, and Presperse (2022), Sodium Hyaluronate Technical Data Sheet (on record), hereinafter Presperse.
Rochette discloses emulsions created by producing several phases and mixing these phases in a specific order and a specific way to create a natural cold emulsion ([0010]).
Regarding claim 1: Rochette teaches a hyaluronic eye serum comprising sodium magnesium silicate, water, xanthan gum (i.e., a plant derived gum thickener), citric acid, montmorillite, illite, kaolin (i.e., clays), and sodium hyaluronate (Ex. 2; Table 2). The serum is prepared by exfoliating sodium magnesium silicate and mixing it with water to form a hydrated soft gel ([0050]-[0051]), which reads on the instantly claimed lifting serum. Sodium hyaluronate and xanthan gum are then pre-mixed. Then, the clays are added to the above gel along with the pre-mixed sodium hyaluronate and xanthan gum. Citric acid is added to correct pH and the remaining water is added ([0052]-[0053]). These remaining ingredients read on the instantly claimed gelling solution. The mixture is mixed in a high shear mixer until a smooth gel is obtained ([0053]), which reads on the final cosmetic composition.
Regarding claim 2: The eye serum is free of peptides and petrochemical based thickeners. Since the claim recites a composition free of ingredients “selected form the group consisting of […]”, there is no requirement that the composition is free of every ingredient listed, only that it is free of ingredients in at least one of the groups to be selected from.
Regarding claim 3: Rochette teaches that the silicates present in the in the initial gel can include but are not limited to sodium magnesium silicate and calcium silicate.
Regarding claim 5: The composition comprises sodium hyaluronate.
Regarding claim 6: The composition comprises montmorillite.
Regarding claim 9: The composition further comprises Senisiva PA40 as an antimicrobial stabilizer, reading on an antimicrobial agent, as well as green tea and chamomile extract which read on skin actives.
The eye serum comprises a mixture of sodium magnesium silicate, xanthan gum, and citric acid at 4% in an aqueous gel. The gel is included in the total composition at 50 wt%, meaning the silicate, xanthan gum, and citric acid mixture make up 2 wt% of the entire composition. Thus, the individual amounts of each ingredient in the gel mixture must be between 0% and 2%. Xanthan gum is additionally present at a concentration of 0.1 wt% and citric acid is additionally present at 0.2 wt%. Sodium hyaluronate is present at 0.1 wt% which falls within the instantly claimed range (i.e., 0.01-0.1%), of claim 10. The montmorillite, illite, and kaolin clays are present at 5 wt% and water is present at ~80 wt% total (i.e., 31.95% + 0.96(50%)).
The teachings of Rochette differ from the instantly claimed invention in that Rochette does not explicitly teach a separately contained lifting serum and gelling solution as defined in claim 1, nor a glycosaminoglycan having a molecular weight in the range of 1 to 1.4 million Dalton as recited in claim 1, nor does Rochette teach a specific embodiment comprising the silicates of claim 3. Rochette also fails to explicitly teach the ratio of claim 8, and every concentration of claim 10.
Shah discloses an at-home facial known as Hanacure which addresses multiple signs of ageing from wrinkles to hyperpigmentation to loss of elasticity (p. 1-2). It works with a two-step system, compromised of a lifting serum and a gelling solution. When they are mixed together pre-application, they create what is called the purifying compound (p. 3, para. 2). In order to mix up the formula, peel back the foil on the gelling solution package then pour in the lifting serum. After, re-cover the solution with the foil and vigorously shake the container for twenty seconds. Then slathered an even layer all over your face, neck, and hands (p. 6, para. 1).
Presperse discloses sodium hyaluronates of varying molecular weight. Generally, sodium hyaluronate comes in four variations based on molecular weight, with medium sodium hyaluronate having a molecular weight of 1.2-15 MDa (p. 1, overview). Sodium hyaluronate has various benefits including skin hydrating, film forming, anti-aging, and anti-wrinkle properties (p. 1, benefits). The medium molecular weight is the most common form with moisturizing, film forming, and good skin-feel properties (p. 1, grades).
Regarding the separately contained parts of claim 1, it would have been prima facie obvious to one of ordinary skill in the art to provide the composition of Rochette as separately contained combinable parts since two-part products are known and routine in the art as taught by Shah. Additionally, as discussed above, the serum of Rochette is prepared by exfoliating sodium magnesium silicate and mixing it with water to form a hydrated soft gel ([0050]-[0051]). The gel can then be stored for later use ([0010]). The remaining ingredients (i.e., hyaluronate, xanthan gum, montmorillonite, citric acid) are then added to the gel ([0053]). As such, one of ordinary skill in the art would have found it obvious to store the gel comprising silicate and water, reading on the lifting serum, separately from the other ingredients, which read on the gelling solution, until application is desired and the two parts are combined to form the final cosmetic composition. Such a modification requires no more than the combination of known prior art elements according to known methods to predictably yield the instant invention.
Regarding the molecular weight of claim 1, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to use a medium molecular weight sodium hyaluronate in the composition of Rochette since medium molecular weight sodium hyaluronate is known and routine in the art as taught by Presperse. The composition of Rochette contains sodium hyaluronate at an unspecified molecular weight. Since medium molecular weight is the most common form of sodium hyaluronate and has good moisturizing, film-forming, and skin-feel properties, one of ordinary skill in the art could have easily selected and incorporated a medium molecular weight sodium hyaluronate in the composition of Rochette. 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.
Regarding the silicate of claim 3, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention to incorporate calcium silicate as the silicate in the eye serum of Rochette since calcium silicate is a known and routine silicate in the art as taught by Rochette. One of ordinary skill in the art could have simply substituted calcium silicate in for sodium magnesium silicate according to known techniques to predictably yield the instant invention. As discussed above, calcium silicate is taught as an exemplary silicate for use in the compositions of Rochette.
Regarding the ratio of claim 8, it is discussed above that the total amounts of silicate and xanthan gum in the eye cream of Rochette are unknown. It is known that sodium magnesium silicate is present at some amount above 0% and some amount below 2% while xanthan gum is present at an amount of 0.1 wt% plus an additional amount between 0% and 2%. However, it is well within the abilities of an ordinary artisan to optimize the ratio of the gum thickener to silicate in the composition depending on the desired consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed ratio through no more than routine experimentation.
Regarding the amount of silicate in claim 10, it is known that sodium magnesium silicate is present at some amount above 0% and some amount below 2%. Such a range overlaps with the instantly claimed range (i.e., 1-15%). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Additionally, it is well within the abilities of an ordinary artisan to optimize the amount of silicate in the composition depending on the desired consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range through no more than routine experimentation.
Regarding the amount of thickener (i.e., xanthan gum) in claim 10, it is discussed above that xanthan gum is present at an amount of 0.1 wt% plus an additional amount between 0% and 2%. Such an amount overlaps with the instantly claimed amount of the thickener (i.e., 1-2%). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Additionally, it is well within the abilities of an ordinary artisan to optimize the amount of xanthan gum in the composition depending on the desired consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range through no more than routine experimentation.
Regarding the amount of citric acid in claim 10, it is discussed above that citric acid is present at an amount of 0.2 wt% plus an additional amount between 0% and 2%. Such an amount overlaps with the instantly claimed amount of citric acid (i.e., 0.1-4%). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Additionally, it is well within the abilities of an ordinary artisan to optimize the amount of citric acid in the composition depending on the desired pH of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range through no more than routine experimentation.
Regarding the amount of clay in claim 10, the eye serum of Rochette comprises 5% of clay. While 5% does not fall within the instantly claimed range (i.e., 0.02-0.1%), it is well within the abilities of an ordinary artisan to optimize the amount of clay in the composition depending on the desired consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range through no more than routine experimentation.
The amount of water in the eye serum of Rochette is around 80%, which does not fall within the instantly claimed range of claim 10 (i.e., 89-98%). However, as discussed above, the ordinary artisan could easily optimize the amount of water in the composition depending on how the amounts of the other components are adjusted and the desired consistency of the final product.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since substituting ingredients and adjusting amounts can be performed by one of ordinary skill in the art with little to no change in the ingredients respective function.
Since the composition made obvious by the prior art is identical to the composition of instant claim 1, the composition must necessarily have the characteristics claimed as an inherent property (i.e., ability to form a semi-solid gel film on a substrate). It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Rochette, Shah, and Presperse as applied to claims 1-3, 5-6, and 8-10 above, and further in view of Newman, A., et al. (US 10682292 B2, 06/10/2020, IDS dated IDS dated 01/30/2024), hereinafter Newman, and Manning, L., et al. (US 9999580 B2, 06/19/2018, IDS dated 01/30/2024), hereinafter Manning.
The combined teachings of Rochette, Shah, and Presperse are discussed above, as are the rejections of claims 1-3, 5-6, and 8-10.
The combined teachings of Rochette and Presperse differ from that of the instantly claimed invention in that neither explicitly teach dehydroxanthan gum, as recited in claim 4, nor the pH of claims 7 and 11.
Newman discloses a skin smoothing film made from a skin smoothing composition that comprises sodium silicate, polyvalent silicate and water (abstract). In addition to the silicate and polyvalent silicate film formers, the film forming composition can optionally comprise film forming polymers. Examples of suitable film forming polymeric materials include polysaccharide gums such as xanthan gum and dehydroxanthan gum (col. 8, lines 22-26, 54-59). Polysaccharide gums such as xanthan gum and dehydroxanthan gum are also thickening agents which may be used in the composition (col. 15, lines 17-25). Dehydroxanthan gum reads on the plant derived gum thickener of claim 4. Newman teaches that it is preferred that the polyvalent silicate is stable at a pH of greater than 10.0, specifically it is preferred the overall film forming composition has a pH greater than 10.5 (col. 8, lines 12-20), which overlaps with the pH of claims 7 and 11.
Manning teaches a cosmetic composition that provide immediate skin-tightening and long-lasting improvements to the skin comprising (a) a first film former sodium silicate; (b) at least one second film former; (c) at least one polyvalent silicate thickener; (d) at least one anionic associative polymeric thickener; (e) at least one plasticizer; and (f) optionally at least one cosmetic powder (abstract). The composition has an alkaline pH from about to 10 to about 12 (col. 2, lines 15-17; claim 13). A pH study with a composition containing sodium silicate showed that if the pH is below 10, the composition became more solid. However, it was found that when the pH is in the range of 10 to 12, or 11 to 11.5, the composition exhibits special properties. For example, the composition exhibited excellent film-forming properties on the skin and the film exhibited unexpectedly long-lasting strength, durability, and flexibility (elasticity) (col. 10, lines 10-18; Ex. 4).
Regarding claim 4, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to replace the xanthan gum of Rochette with the dehydroxanthan gum of Newman since dehydroxanthan gum is a known and routine thickener/film forming polymer in the art as taught by Newman. One of ordinary skill in the art could have replaced the xanthan gum of Rochette with the dehydroxanthan gum of Newman via simple substitution of one known element (i.e., polysaccharide thickener) for another to predictably yield the instant invention.
Regarding the pH of claims 7 and 11, it would have been prima facie obvious to one of ordinary skill in the art to adjust the pH in the composition of Rochette to a pH in the range of 10 to 12, since such pHs are known and routine in the art as taught by both Newman and Manning. One of ordinary skill in the art would have been motivated to adjust the pH into this range since compositions containing silicates have special properties when the pH is in the range of 10 to 12, such as excellent film-forming, strength, durability, and flexibility when applied to the skin, as taught by Manning. Such properties would have been beneficial in the eye serum of Rochette, since such a composition comprises silicates and is applied to the skin. A pH range of 10 to 12 overlaps with the instantly claimed pHs of claims 7 and 11. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since Rochette, Newman, and Manning all teach skin care compositions comprising silicates and thickening/gelling agents.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Rochette, Shah, Presperse, Newman, and Manning as applied to claims 1-11 above, and further in view of ULTRUS Prospector (2016). Clays: A fundamental personal-care ingredient. By George Deckner. (on record), hereinafter Prospector.
The combined teachings of Rochette, Shah, Presperse, Newman, and Manning are discussed above. The combined composition comprises sodium magnesium silicate, which reads on a sodium silicate, water, dehydroxanthan gum, citric acid, sodium hyaluronate at the claimed molecular weight, and a clay.
Newman further teaches wherein the compositions may comprise at least one plasticizer present in the composition at from about 1% to about 20%. Polyhydric alcohols which are useful include 1,3-butylene glycol, sodium hyaluronate, and mixtures thereof (col. 9, lines 51-64).
The combined teachings of Rochette, Presperse, Newman, and Manning differ from that of the instantly claimed invention in that none of the references explicitly teach the amounts of claim 12 nor wherein the clay comprises hectorite and the composition comprises butylene glycol, also recited in claim 12.
Prospector teaches that clays used in personal care include hectorite, smectite, montmorillonite, kaolin, and mica (para. 2). Clays have numerous uses in personal care products, such as thickening, suspending, stabilizing suspensions and emulsions, and absorbing oils (para. 4). The most common clays used for thickening water-based products are smectite, hectorite, and montmorillonite (para. 5). Hectorite reads on the clay of claim 12.
Regarding the hectorite, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporated hectorite into the combined composition of Rochette, Presperse, Newman, and Manning since hectorite is a known and routine clay thickener in the art as taught by Prospector. One of ordinary skill in the art could have substituted the montmorillonite of Rochette with the hectorite of Prospector to predictably yield the instant invention. Such a substitution would have been simple since hectorite and motmorillonite clays are the most common clays used for thickening water-based products, specifically in the field of personal care, as taught by Prospector.
Regarding the butylene glycol, it would have been prima facie obvious to one of ordinary skill in the art to include butylene glycol in the combined composition, since butylene glycol is a known and routine skincare ingredient in the art as taught by Newman. One of ordinary skill in the art would have been motivated to add butylene glycol into the combined composition due to its role as a plasticizer. One of ordinary skill in the art could have combined the butylene glycol of Newman with the combined composition via known methods to predictably yield the instant invention. Regarding the amount at which to incorporate butylene glycol, Newman teaches a broad range of 1-20% when used as a plasticizer. While such an amount does not read on the instantly claimed amount of 0.3%, it would have been well within the abilities of an ordinary artisan to optimize the amount of butylene glycol in the composition depending on the desired consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed amount (i.e., 0.3%) through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the amounts of each additional ingredient, as discussed above in regards to claim 10, it is well within the abilities of an ordinary artisan to optimize the amount of each ingredient in the composition depending on the desired consistency, skin care effect, solubility, and pH of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed amounts of claim 12 through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since all of the discussed ingredients are taught in the context of skin care and adjusting their amounts can be performed by one of ordinary skill in the art with little to no change in the ingredients respective function.
Regarding claim 13: The combined composition is free of peptides and petrochemical based thickeners. Since the claim recites a composition free of ingredients “selected form the group consisting of […]”, there is no requirement that the composition is free of every ingredient listed, only that it is free of ingredients in at least one of the groups to be selected from.
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 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.
1. Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/499,198 in view of Rochette. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Rochette.
Copending claim 1 recites a two-part cosmetic composition, comprising: separately contained combinable parts including a) a lifting serum comprising at least one silicate and water; and b) a gelling solution comprising at least one cross-linked polyacrylic acid thickener; at least one clay; at least one glycosaminoglycan comprising a hyaluronic acid selected from sodium hyaluronate, hydrolyzed sodium hyaluronate, a hyaluronic acid derivative, or a combination thereof, the at least one glycosaminoglycan having a molecular weight in a range from about 1 million Dalton to about 1.4 million Dalton, wherein, upon mixing of the separately contained combinable parts and application of the final cosmetic composition to a substrate, the final cosmetic composition forms a semi-solid gel film.
The only difference between the copending claims and the instant claims is that the copending claims fail to recite at least one nature based plant derived gum thickener and citric acid, as recited in instant claim 1. Rochette discloses a hyaluronic eye serum comprising sodium magnesium silicate, water, xanthan gum (i.e., a plant derived gum thickener), citric acid, montmorillite, illite, kaolin (i.e., clays), and sodium hyaluronate (Ex. 2; Table 2). It would have been prima facie obvious to one of ordinary skill in the art to incorporate the xanthan gum and citric acid of Rochette into the composition of the copending claims since both are routine and known in the art as taught by Rochette. One of ordinary skill in the art could have combined these ingredients with the composition of the copending claims according to known methods to predictably yield the instant invention of claim 1. One of ordinary skill in the art would have had a reasonable expectation of success in making such a modification since both Rochette and the copending claims teach skin care compositions comprising silicates, thickeners, and hyaluronic acid.
This is a provisional nonstatutory double patenting rejection.
Claims 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/499,198 in view of Rochette and Newman. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Rochette and Newman.
Copending claim 12 recites a two-part cosmetic composition, comprising: combinable parts including a) a lifting serum comprising at least one silicate and water; and b) a gelling solution comprising at least one cross-linked polyacrylic acid thickener; at least one clay; at least one glycosaminoglycan comprising a hyaluronic acid selected from sodium hyaluronate, hydrolyzed sodium hyaluronate, a hyaluronic acid derivative, or a combination thereof, the at least one glycosaminoglycan having a molecular weight in a range from about 1 million Dalton to about 1.4 million Dalton, wherein, upon mixing of the separately contained combinable parts and application to a substrate, the composition forms a semi-solid gel film, and wherein the at least one silicate comprises a sodium silicate present at about 3.3%, water is present at about 94% by weight, the at least one thickener comprises a carbomer, present at about 1.3%, the at least one glycosaminoglycan comprises sodium hyaluronate present at about 0.07%, the at least one clay comprises hectorite present at about 0.05% by weight, and the cosmetic composition includes butylene glycol is present at about 0.3%, all amounts by weight based on the weight of the composition.
The only difference between the copending claims and the instant claims is that the copending claims fail to recite wherein the thickener comprises a dehydroxanthan gum, and citric acid is present at about 1%, as recited in instant claim 12. Rochette discloses a hyaluronic eye serum comprising sodium magnesium silicate, water, xanthan gum (i.e., a plant derived gum thickener), citric acid, montmorillite, illite, kaolin (i.e., clays), and sodium hyaluronate (Ex. 2; Table 2). The eye serum comprises a mixture of sodium magnesium silicate, xanthan gum, and citric acid at 4% in an aqueous gel. The gel is included in the total composition at 50 wt% meaning the silicate, xanthan gum, and citric acid mixture make up 2 wt% of the entire composition. Thus, the individual amounts of each ingredient in the gel mixture must be between 0% and 2%. Newman discloses a skin smoothing film made from a skin smoothing composition that comprises sodium silicate, polyvalent silicate and water (abstract). In addition to the silicate and polyvalent silicate film formers, the film forming composition can optionally comprise film forming polymers. Examples of suitable film forming polymeric materials include polysaccharide gums such as xanthan gum and dehydroxanthan gum (col. 8, lines 22-26, 54-59). Polysaccharide gums such as xanthan gum and dehydroxanthan gum are also thickening agents which may be used in the composition (col. 15, lines 17-25). Dehydroxanthan gum reads on the plant derived gum thickener of claim 12. It would have been prima facie obvious to one of ordinary skill in the art to incorporate the xanthan gum thickener and citric acid of Rochette into the composition of the copending claims since both are routine and known in the art as taught by Rochette. One of ordinary skill in the art could have combined these ingredients with the composition of the copending claims according to known methods to predictably yield the instant invention of claim 1.
It would have been further prima facie obvious to select dehydroxanthan gum as the thickener since it is known and routine in that art as taught by Newman. Specifically, one of ordinary skill in the art could have substituted the carbomer thickener of the copending claims with a dehydroxanthan gum thickener via known methods to predictably yield the instant invention. As discussed above, Rochette teaches a composition comprising more than zero and less than 2% of citric acid. It would have been obvious to incorporate citric acid in this amount since this is a known and effective amount at which to incorporate citric acid. Such a range overlaps with the instantly claimed amount (i.e., 1%). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. One of ordinary skill in the art would have had a reasonable expectation of success in making such a modification since both Rochette, Newman, and the copending claims teach skin care compositions comprising silicates, thickeners, and hyaluronic acid.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 06/03/2026 have been fully considered but they are not persuasive:
(1) Applicant argues against the 112(a) rejections, stating that whether or not an ingredient is a “plant extract” or “fruit extract” is a discernible fact.
In response to Applicant’s arguments against the “plant extract”, it is noted that the specification only discloses a short list of plant extracts to exclude. There is no description of how to determine which plant extracts to exclude nor are there enough examples of plant extracts which would lead one of ordinary skill in the art to exclude all plant extracts.
Applicant’s arguments regarding the included fruit extract is not convincing since the instant specification provides no specific disclosure of which fruit extracts may be included and how such extracts were obtained. Not only would undue experimentation be involved in obtaining an undefined “fruit extract” but Applicant has not provided a description that explicitly conveys which fruit extracts they were in possession of and incorporated into the cosmetic composition. As such, there is no written description for a composition comprising any known “fruit extract”.
(2) Applicant argues against the 112(b) rejections, stating that the term “plant extract” has a plain meaning in the art and that a nature-based plant-derived gum thickener is not in fact a plant extract. Applicant also argues that butylene glycol is known as an intermediate in the manufacture of polyester plasticizers, but is not itself a plasticizer.
Regarding the plant extract, Mirhosseini et al. (PTO-892) teaches that natural plant-based gums are mainly extracted from the endosperm of plant seeds (guar gum (GG)), plant exudates (e.g. tragacanth) and tree or shrub exudates (e.g. karaya gum (KG)) (Summary). Thus, Mirhosseini evidences that many “plant-derived” gums are also “plant extracts”. Since the instant claims and specification do not differentiate the two or provide distinct definitions for what is regarded as a desired “plant-derived” gum versus an undesired “plant extract”, the scope of the claims is unclear.
Regarding the butylene glycol, Newman is relied on above for explicitly teaching plasticizers which include polyhydric alcohols such as 1,3-butylene glycol. 1,3-butylene glycol is disclosed as a “commercially available plasticizer” (col. 9-10, lines 51-3), specifically within the context of skin films and cosmetics. As such, Applicant’s assertion that 1,3-butylene glycol is not a plasticizer is found unconvincing.
(3) In response to the 103 rejections, Applicant argues that claims 1 and 12 recited distinctive combinable parts not taught by the cited references.
A new reference, Shah, is now included in the above rejection which teaches separated combinable parts.
Conclusion
No claims 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.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
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