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 prosecution are claims 1-18.
Restriction Requirement
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-18, drawn to skin perfecting compositions, classified in A61Q 19/00.
II. Claims 19-20, drawn to a skin treatment method, classified in A61B 2018/0047.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the process for using the product as claimed can be practiced with another materially different product where a different product such as a moisturizing composition is topically applied.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification;
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with R. James Balls on 11/25/25 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Joint Inventors
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Rejoinder
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 112
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.
1. Claims 1-18 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “optionally, one or more fibers”, and the claim also recites “preferably comprising the one or more fibers” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 1-18 are replete with instances of a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) such as the use of “preferably”, “more preferably”, “e.g.”, and instances of components recited in parentheses.
As such, Applicant is advised to carefully review and address each instance in the indicated claims.
2. Claim 17 is 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.
Claim 17 recites the limitation "wherein the polyurethane" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 17 depends, makes no mention of any polyurethane.
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.
1. Claim(s) 1-5 and 9-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Montoya et al. (US 2020/0345596, Nov. 5, 2020) (hereinafter Montoya).
Montoya teaches skin-tightening compositions which may be in the form of an oil-in-water emulsion (satisfies claim 15) (Abstract). Suitable polyvalent silicates for use in the composition include magnesium aluminum silicate and aluminum silicate (¶ [0041]). In Table 1 Montoya exemplifies a skin tightening compositions which comprise: (a) 5 wt. % magnesium aluminum silicate (satisfies particulate fillers of claim 1 & 5); (b) 2 wt. % hydroxypropylcellulose (satisfies hydrophilic film-forming polymer of claim 1-3); (c) 3 wt. % stearalkonium hectorite (satisfies clays of claim 1 & 4); (d) 1 wt. % pullulan and/or galactoarabinan (satisfies pullulan of claim 3 & 16); (e) either 13.6 or 5.6 wt. % of pentylene glycol, glycerin, propylene glycol, and/or caprylyl glycol (satisfies solvents of claim 9-11); (f) 0.8 wt. % sodium acrylates copolymer and/or acrylates copolymer; (g) either 69 or 78 wt. % water (satisfies water of claim 1); (h) 2 wt. % caprylic/capric triglyceride; (i) 1.2 wt. % polyglyceryl-3 methylglucose distearate steareth-20, and/or lecithin acrylates/polytrimethylsiloxymethacrylate copolymer, either 1.2 or 1.1 wt % licorice root extract, caffeine, biotin and/or adenosine (satisfies claim 12-13), and ≤1 wt. % preservatives, chelating agents, pH adjusters, etc. (satisfies claim 14). (Table 1 “H” and “I”). Montoya teaches that hydroxypropyl cellulose is a water soluble cellulose derivative ([0124]).
Regarding the particulate fillers recited in instant claim 5, a reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). See MPEP 2131.02(III). As discussed above, magnesium aluminum silicate and aluminum silicate are specifically taught by Montoya to be equivalents used for the same purpose either alone or in mixtures (reference claim 2). As such, one of ordinary skill in the art would ‘at once envisage’ the composition of Montoya to comprise aluminum silicate instead of magnesium aluminum silicate in the same amounts since they are taught to be equivalents.
The prior art anticipates the indicated claims because it discloses a skin care composition comprising particulate fillers, hydrophilic film-forming polymers, mineral clays, solvents, water, actives, and miscellaneous ingredients as instantly claimed in amounts that fall within claimed ranges.
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.
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. Claim(s) 6-8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Montoya et al. (US 2020/0345596, Nov. 5, 2020) (hereinafter Montoya) in view of Lubart et al. (May, 2022, J. Clin. Aesthet. Dermatol., 15(5), 59-64) (hereinafter Lubart).
The teachings of Montoya are discussed above.
Montoya differs from the instantly recited claims insofar as not disclosing wherein the composition comprises fibers such as collagen fibers/modified collagen fibers in an amount ranging from about 0.01 to about 15 wt.%.
However, Lubart teaches that collagen protein plays a key role maintaining skin firmness; topical creams containing collagen fibers are widely available, but their usefulness is questionable due to the limited skin penetration of collagen (p. 59 “Background”). Micronized marine collagen (m-collagen) fibers were prepared and subsequently inserted into a cream; the micronized collagen fibers in the cream is found to penetrate the stratum corneum (SC) barrier (p. 60 L. Col. 2nd para). The m-collagen was inserted at a 0.2% concentration into a basic cream (p. 60 “Preparation of a cream with micronized collagen”). The resulting facial collagen cream allows for fully functional collagen fibers to penetrate deeper layers of human skin samples (p. 63 “Conclusion”).
It would have been obvious for a person of ordinary skill in the art, before the filing of the instant application, to insert micronized marine collagen fibers into the skin-tightening composition of Montoya at a 0.2% concentration relative to the total weight of the composition motivated by the desire to obtain the skin firmness benefits that collagen provides and achieve deeper skin penetration taught by Lubart.
2. Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Montoya et al. (US 2020/0345596, Nov. 5, 2020) (hereinafter Montoya) in view of Behrens (Cosmetics & Toiletries, Jun. 18th, 2021) (hereinafter Behrens) and Covestro (Baycusan® eco E 1001, 2021) (hereinafter Covestro).
The teachings of Montoya are discussed above.
Montoya differs from the instant claims insofar as not disclosing wherein the composition comprises polyurethanes such as polyurethane-99.
However, Behrens teaches that Covestro’s Baycusan eco E 1001 is a naturally derived polymer that acts as a film former and is suitable for water-based products (1st para). Behrens teaches that Baycusan eco E 1001 is a partially bio-based alternative to synthetic film formers and imparts wear resistance for cosmetics that lasts all day (2nd para). Behrens teaches the chemistry of the liquid polymer allows for the introduction of high amounts of renewable materials into polymers without losing the key benefits of synthetics; e.g., water resistance, rub-off resistance and anti-smudge effects; furthermore, the natural content of the active is above 50% which fulfills the bio-based content criteria for a naturally derived ingredient (3rd para).
The combined teachings of Montoya and Behrens do not explicitly disclose that Baycusan eco E 1001 is polyurethane-99 or the desirable use amount.
However, Covestro discloses that the INCI name for Baycusan eco E 1001 is Polyurethane-99 (“General information”). Covestro recommends a formulating use level of 3-10% when formulating with Baycusan eco E 1001 (“Use level”).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant claims, to have formulated the composition of Montoya to comprise polyurethane-99 in an amount of 3-10% motivated by the desire to obtain its water resistance property, rub-off resistance and anti-smudge effects as well long-lasting wear-resistance since it is a naturally derived polymer that is suitable for water-based products as taught by Behrens and Covestro.
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/533,442 in view of Montoya et al. (US 2020/0345596, Nov. 5, 2020) (hereinafter Montoya).
Although the conflicting claims are not identical, they are not patentably distinct from each other because both claim sets are drawn to skin perfecting compositions comprising the same hydrophilic film forming polymers (particularly the combination of pullulan and polyurethane-99), the same mineral clays, the same particulate fillers, water, the same fibers, the same water-soluble organic solvents, the same skin active agents, and the same miscellaneous ingredients, wherein both compositions are optionally free or essentially free from acrylate and/or methacrylate polymers and copolymers regardless of what other monomer units appear in the polymer and copolymer (and crosspolymer).
The copending claims differ insofar as they recite a skin tightening composition.
However, Montoya discloses a composition comprising particulate fillers, hydrophilic film-forming polymers, mineral clays, solvents, water, actives, and miscellaneous ingredients as instantly claimed and as claimed in the copending claims which is a skin tightening composition.
Accordingly, it would have been obvious for one of ordinary skill in the art to have used the instant composition in a skin tightening composition since this is a suitable use for such compositions as taught by Montoya.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1-18 are rejected.
Claims 19-20 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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, Frederick Krass can be reached at (571) 272-0580. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612