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 .
Priority
The instant application was filed 18 December 2023 and the Applicant does not claim priority to any other documents. Therefore, the effective filing date of the instant application is 18 December 2023.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-19) and isobutyl methacrylate and capric/caprylic triglyceride in the reply filed on 15 January 2026 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 January 2026.
It is noted that the Applicant elected “capric/capric triglyceride” for species b from the restriction/election requirement. Applicant’s election is interpreted as a typo and will be examined as caprylic/capric triglyceride.
The Applicant elected “isobutyl methacrylate” as the “hydrophobic polymer.” Applicant’s election was unclear to the Examiner because isobutyl methacrylate is interpreted as the monomer for the hydrophobic polymer and not the hydrophobic polymer as recited in instant claim 1. A call was made to the Applicant’s representative on 02 February 2026 for clarification. The Applicant’s representative confirmed that the elected species should instead be the product of linseed oil and poly(isobutyl methacrylate) or polymers of isobutyl methacrylate.
Claim Objections
Claims 10-20 are objected to because of the following informalities: Claim 10 is listed twice, so the following claims after claim 10 are misnumbered. The Applicant is suggested to cancel duplicate claim 10 and add it as a new claim instead of renumbering all of the misnumbered claims. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Claim 12 lists “isoindolinone” twice. Appropriate correction is required.
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.
Claim 11 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.
Regarding claim 11, the word "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim(s) 1-13, 15-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitra (US 2022/0249342 A1) and Pernodet (US 9125843 B2).
Mitra teaches a cosmetic composition (abs; entire teaching) comprising a coagulant system that is prepared through a reaction product of an oil component and synthetic polymer component (para. 14), such as linoseed oil and poly(isobutyl methacrylate) (para. 45), addressing claims 2-4, 7-9. Applicant’s election is interpreted as addressing the limitations in claims 5 and 6. The composition may be an oil-in-water emulsion (para. 33) and may comprise oils/oily components (para. 25) or oil solvents (para. 27). The cosmetic product may further comprise colorants/coloring material (paras. 25, 66, 138), isododecane (para. 76), and triglycerides (para. 80), addressing claim 10b (the second claim 10). The composition may comprise 1-25% of the coagulant system (para. 23), 10-90% of an oily phase (para. 69), and 0.001-20% (para. 139) or coloring materials (para. 138), which addresses claim 15. Since the oily phase may be in an amount of 10-90% (para. 69) and water phase may be 1-90% (para. 89), it is interpreted as addressing the ratio in claim 17. The cosmetic composition in the form of an oil-in-water emulsion (para. 33) is interpreted as partially addressing claims 16, 18, and 19.
Mitra does not specifically teach caprylic/capric triglycerides from the Applicant’s election, pigment particles dispersed in the solvents in claim 1, or specific pigments recited in claims 11-13.
Pernodet teaches a cosmetic composition comprising particulate material, such as pigments (col. 14, lns. 29-37), and may be in the form of an emulsion and may comprise an oil and an aqueous phase (Example 5). Suitable thickeners include caprylic/capric triglyceride (col. 4, lns. 14-22) and particulate materials include titanium dioxide (col. 14, lns. 39-57) and anthraquinone (col. 14, lns. 59-67), addressing claims 10a (first claim 10), 11-13. The pigment particulate materials are interpreted as dispersed within the emulsion system or solvent. The Hansen Solubility Parameter of claim 10a is interpreted as an inherent property of Applicant’s elected species, caprylic/capric triglyceride. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)).
Since Mitra does not specifically teach caprylic/capric triglycerides from the Applicant’s election, pigment particles dispersed in the solvents in claim 1, or specific pigments recited in claims 11-13, one of ordinary skill in the art would have been motivated to use the teaching from Pernodet with a reasonable expectation of success. Mitra’s composition includes a coagulating system and colorant/coloring material and may be used as a cream or lotion (para. 33) and Pernodet’s composition includes dispersed pigment particles for use as a cosmetic to improve skin appearance. Therefore, a skilled artisan would have recognized the advantage and benefit of incorporating Pernodet’s composition for improved skin appearance with Mitra’s cosmetic composition to improve softness and smoothness of the skin (paras. 33, 43). Generally, it is prima facie obvious to combine or substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitra (US 2022/0249342 A1), Pernodet (US 9125843 B2), and peijinchem.com.
In regards to claim(s) 1-13, 15-19, Mitra and Pernodet, as applied supra, is herein applied in its entirety for its teachings of a skin cosmetic composition comprising a coagulating system, solvent, and pigment particles.
Mitra does not teach a particle size of pigment particles in claim 14.
Peijinchem.com teaches that titanium dioxide used for pigments has the best particle size when in the range of 0.2-0.35 microns due to its particular surface area relative to the particle size, addressing claim 14.
Since Mitra does not teach a particle size of pigment particles in claim 14, one of ordinary skill in the art would have been motivated to use Peijinchem.com’s teaching that titanium dioxide used as pigment has superior properties when in the size range of 0.2-0.35 microns. Mitra teaches coloring agents in their cosmetic composition and Pernodet’s composition may comprise titanium dioxide as their colored or non-colored pigment particles powders. Therefore, a skilled artisan, would have recognized the benefit of using titanium dioxide in this size range to improve the compositions of Mitra and Pernodet.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/544,195 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application are identical to the instant claims.
Claim 1 of the reference patent recites components that are similar to the ones in the instant claims, such as the hydrophobic polymer formed as a reaction product of a natural or food-derived oil and a methacrylate or acrylate polymer, a solvent to solubilize the hydrophobic polymer, and water. It would have been obvious to a skilled artisan to include a surfactant in a cosmetic composition and the cleaning substrate and cleansing wipe are interpreted as intended use.
Claims 2-11 of the instant application recite identical limitations (for the hydrophobic polymer and solvent) to the ones in instant claims 2-11. Instant claim 11 as recited here is used to mean the corrected renumbering of the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613