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 Status
Claims 1-6,8-10, 12-14, 20, 21, 24, 27, 28, 30, and 32-33 are pending and under current examination.
Applicants' arguments and amendments filed on 07/21/2026 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Information Disclosure Statements
Information Disclosure Statements (IDS) filed on 04/16/2026 and 07/21/2026 have been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
New rejections necessitated by amendments
Claim Rejections - 35 USC § 112(b)-indefinite
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 1-6, 8-10,12,13,14,20-21,24,27,28,30,32,33 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.
Claim 1 requires a film former comprising an acrylates/C12-C22 alkyl methacrylate copolymer, an acrylates/dimethicone copolymer, an acrylates/ethylhexyl acrylate copolymer, an acrylates/lauryl acrylate/stearyl acrylate/ethylamine oxide methacrylate copolymer, an acrylates/polytrimethylsiloxymethacrylate copolymer, a behenyl methacrvlate/t- butyl methacrylate copolymer, a methacryloyl ethyl betaine/acrylates copolymer, a styrene/acrylates copolymer, a vinyl acetate/butyl maleate/isobornyl acrylate copolymer, a vinylpyrrolidone/acrylates/lauryl methacrylate copolymer, or a combination thereof.
Claim 8 recites that the film former comprises Acrylates Copolymer, Acrylates copolymer, Acrylates/Polytrimethylsiloxymethacrylate Copolymer, Acrylates/Octylacrylamide Copolymer, Acrylates/C1-2 Succinates/Hydroxyacrylates Copolymer, , Acrylates/Hydroxyesters Acrylates Copolymer, Acrylates/Octylacrylamide Copolymer, Acrylates/Polytrimethylsiloxymethacrylate Copolymer, Acrylates/t- Butylacrylamide Copolymer, Adipic Acid/Diglycol Crosspolymer, Adipic Acid/Neopentyl Glycol/Trimellitic Anhydride Copolymer, Algin Aluminum Starch Octenylsuccinate Aminomethyl Propanol (AMP)/Acrylates Copolymer, Brassica Campestris/Aleurites Fordi Oil Copolymer, Butyl Acrylate/Hydroxypropyl Dimethicone Acrylate Copolymer, Butyl Ester of poly(methyl vinyl ether-co-maleic anhydride) Copolymer, C24-28 Alkyldimethylsiloxy Trimethylsiloxysilicate, Capryloyl Glycerin/Sebacic Acid Copolymer, Diisostearoyl Polyglyceryl-3 Dimer Dilinoleate, Ethyl Ester of Poly(methyl vinyl ether-co-maleic anhydride) Copolymer, Isobutylene/Ethylmaleimide/Hydroxyethylmaleimide Copolymer, Isopropyl Ester of poly(methyl vinyl ether-co-maleic anhydride) Copolymer, Methacryloyl Ethyl Betaine/Acrylates Copolymer, Octylacrylamide/Acrylates/Butylaminoethyl Methacrylate Copolymer, Phenylpropyldimethylsiloxysilicate, Polyamide-3, Polyamide-8, Polyester-10, Polyester-7, Polyethylene, Polymethylsilsesquioxane, Polyurethane-1, Polyurethane/Aminomethyl Propanol(AMP)/Acrylates Copolymer, Polyurethane-18, Polyurethane-34, Polyurethane-35, Polyurethane-48, Polyurethane-64, Polyurethane-93, Polyvinyl Stearyl Ether, Polyoxypropylene (17)/Isophorone Diisocyanate/Dimethylolpropionic Acid Copolymer, Polyoxypropylene (26)/Dimer Dilinoleate Copolymer, Pullulan, Polyvinylpyrrolidone, Polyvinylpyrrolidone Crosspolymer, Sodium Polyacrylate, Sodium Polystyrene Sulfonate, Styrene/Acrylates Copolymer, Styrene/Vinylpyrrolidone Copolymer, Triacontanyl Polyvinylpyrrolidone, Trifluoropropyldimethylsiloxy/Trimethylsiloxy Silsesquioxane, Trimethylpentanediol/Adipic Acid/Glycerin Crosspolymer, Trimethylsiloxysilicate, Vinyl Acetate Crotonates Copolymer, Copolymer Vinyl Acetate/Crotonates/Vinyl Neodecanoate,Vinyl Caprolactam/Vinylpyrrolidone/Dimethylaminoethyl Methacrylate Copolymer, Vinylpyrrolidone/Hexadecene Copolymer, Vinylpyrrolidone/Dimethylaminoethylmethacrylate Copolymer, Vinylpyrrolidone/Dimethylaminopropyl Acrylamide Acrylates Copolymer, Vinylpyrrolidone/Eicosene Copolymer, Vinylpyrrolidone/Methacrylamide/Vinyl Imidazole Copolymer, Vinylpyrrolidone/Vinyl Acetate Copolymer, Vinylpyrrolidone/Vinyl Caprolactam/Dimethylaminopropyl Acrylamide Acrylates Copolymer, or mixtures thereof;
Claim 9 requires a sodium polyacrylate for the film former.
The scope of the film forming polymer required by claim 1 is indefinite because claims 8-9 introduces further polymers not recited in claim 1. It is unclear if sodium polyacrylate is included within the scope of film formers in claim 1. Thus, claim 1 is being interpreted as “selected from the group comprising” rendering the scope of the film former recited unclear since it is unclear what other alternatives are intended to be encompassed by claims 1 and 8-9. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022) ( Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. Claims 8-9 introduces polymers that are outside of the Markush grouping recited in claim 1 (e.g. sodium polyacrylate). Therefore, it is unclear what other alternatives are meant to be encompassed by claims 1 and 8-9 for the film forming agent.
Claim Rejections - 35 USC § 112-failure to further limit
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8-9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 8-9 introduce several polymers that fall outside the scope of the film forming agent of claim 1. For example, claim 1 does not encompass sodium polyacrylate polymers.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-6,8-10, 12, 14, 20, 21, 24,27, 28, 30 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (DE102017215011A1) in view of Cao et al. (United States Patent Publication 2005/0112080) and Novoseletsky (Provital Group Launches Ingredient to Reduce Skin Shine).
Banowski et al. teach antiperspirant compositions which comprise sodium polyacrylate (film former) present from 0.1-15% by weight, see abstract and page 15. The composition comprises an antiperspirant active such as aluminum sesquichorohydrate or aluminum chlorohydrate present from 2-40% by weight, see pages 12, 18 and 22. Aluminum sesquichorohydrate has the formula of Al2(OH)4Cl2XH20 wherein Q=chlorine, x=4 y=2, x+y=6. Aluminum chlorohydrate has the formula of Al2 (OH)5 Cl 2H20 meeting where Q is a chlorine, x is 5, y is 1, x+y=6, and wherein X is 2. Propellant (inactive component) can be present from 10-95% by weight which overlaps and renders obvious the instantly claimed inactive component from about 70-90% by weight, see pages 18-19. The formulation may further comprise at least one plant extracts taken from the flowers of plants present from 0.01-5% by weight, see pages 7 and 13-15. The antiperspirant can comprise an aerosol form, see pages 18-19. The aluminum antiperspirant and the sodium polyacrylate together (active components) encompass 2.1-55% by weight thus rendering obvious the active component of claim 1 present in a range of about 10-30% by weight of the composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The formulation can further comprise preservatives and perfume, see pages 2-3, 5, 8, 11-14, 17-18, and 20. Carriers include water (solvent), see pages 6-7. The composition can comprise C10-20alkyl acrylate/acrylic acid/methacrylic acid copolymers meeting an acylates/C12-C22 methacrylate copolymer.
Banowski does not teach that their acrylates are an acrylates/C12-C22 alkyl methacrylate copolymer in the recited amount (instant claims 1 and 6).
However, Cao et al. teach that acrylate copolymers provide excellent water resistance, see abstract. Such acrylate compositions provide film forming properties and moisturizing effect, see paragraph [0018]. The acrylate composition is incorporated from 0.2-10% of a cosmetic product to achieve the desired functionality, see paragraph [0010]. Such personal care products include antiperspirants, see paragraph [0016]. The acrylates include acrylate/C10-20 alkyl acrylate cross polymer and/or Dermacryl AQF, see Example 1. Example 3 at paragraphs [0027]-[0028] teaches acrylates/C12-22 alkylmethacrylate copolymers. Such acrylate C12-22 alkylmethacrylate copolymers also provide increased viscosity (i.e. increased thickness) to the formulation, see paragraph [0028].
It would have been prima facie obvious to provide the antiperspirant of Banowski with an acrylates/C12-C22 alkylmethacrylate copolymer in order to impart increased viscosity and film forming plus moisturizing properties to the topical antiseptic of Banowski.
There would have been a reasonable expectation of success because Banowski already suggests the use of acrylates/methacrylic acid copolymers as thickening agents and per the teachings of Cao et al., acrylate copolymers function as film forming agents which impart moisturizing properties.
Neither Banowski or Cao expressly teach nymphaea coerulea flower extract and nelumbo nucifera flower extract as the flower extracts in the presence of glycerin and propanediol.
However, Novoseletsky teaches that NELUPRURE® containing propanediol, glycerin and the extracts of nelumbo nucifera flower extract with nymphaea coerulea flower extract provide the cosmetic benefits of reduction in sebum production and inflammation, see page 1.
Accordingly, it would have been prima facie obvious to provide the at least one flower extract of Banowski et al. as a combination of nymphaea caerulea, and nelumbo nucifera flower extract in propanediol and glycerin to help reduce over production of sebum in the cosmetic formulation of Banowski et al.
There would have been a reasonable expectation of success because the cosmetic formulation of Banowski further includes flower extracts.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (DE10201721501A1) Banowski et al. (DE102017215011A1), Cao et al. (United States Patent Publication 2005/0112080) and Novoseletsky (Provital Group Launches Ingredient to Reduce Skin Shine) applied to all claims 1-6,8-10,12,14,20,21,24,27,28,30, and 32-33 above, and further in view of Happi as evidenced by SpecialChem (NELUPRURE® Provital).
The teachings of Banowski et al. Cao et al. and Novoseletsky are discussed above.
Neither Banowski et al. , Cao et al. nor Novoseletsky teach that the nymphaea coerulea flower extract can comprise about 0.000075 to about 0.04% by weight the extract; the nelumbo nucifera flower extract can comprise about 0.00075 to about 0.04% by weigh the extract and the propanediol from about 0.08 to about 4% by weight the extract and glycerin from about 0.01 to about 1% by weight of the extract.
However, as evidenced by SpecialChem, the NELUPRURE® product of Novoseletsky has from 0.5-1% by weight nymphaea coerulea flower extract, from 0.5-1% nelumbo nucifera flower extract, 70-90% propanediol, and from 10-30% glycerin, see page 1.
Happi teaches that NELUPRURE® suggested use is at a level of 2% the composition, see page 17. NELUPRURE® is a blended extract from two types of lotus flower, that delivers several benefits to the skin resulting in a flawless complexion. NELUPRURE® balances sebum secretion, diminishes skin shine and reduces blemishes. It reduces the expression of the leptin cellular receptor in sebocytes, which prevent it from triggering sebum production and inflammatory processes that cause skin blemishes. The results of in vivo studies on both male and female subjects showed that NELUPRURE® reduces excess sebum production in the skin and the processes that cause inflammation of the pores, leaving a smooth, radiant and pure complexion. NELUPRURE® yields a clearer, more radiant complexion after just one application, see page 17.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to provide the cosmetic antiperspirant NELUPRURE® product of Banowski et al. in view of Novoseletsky at 2% by weight because Happi teaches the suggested use of NELUPRURE® is at 2% for cosmetic products.
Providing the NELUPRURE® ingredients at 2% by weight wherein there is 0.5% nymphaea coerulea flower extract, 0.5% nelumbo nucifera flower extract, 70% propanediol, and 10% glycerin (i.e. 81 parts total for a 2% solution) would equal 0.0123% wt. of the nymphaea coerulea flower extract, 0.0123% of nelumbo nucifera flower extract, 1.728% of propanediol and 0.247% weight of the glycerin. These amounts overlap and render obvious the range of about 0.000075 to about 0.04% by weight the extract; the nelumbo nucifera flower extract can comprise about 0.00075 to about 0.04% by weigh the extract and the propanediol from about 0.08 to about 4% by weight the extract and glycerin from 0.01-1% by weight of the extract. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration 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).
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 1-6,8-10,12-14,20,21,24,27,28,30 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-16, 18-19 of copending Application No. 18994988 (reference application) in view of Banowski et al. (DE102017215011A1), Cao et al. (United States Patent Publication 2005/0112080), Novoseletsky (Provital Group Launches Ingredient to Reduce Skin Shine), Happi, and as evidenced by SpecialChem (NELUPRURE® Provital).
Claims 1-6,8-10,12-14,20,21,24,27,28,30 and 32-33 are directed to an invention not patentably distinct from 13-16, 18-19 of commonly assigned Application No. 18994988 Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and that of Application ‘988 claim an antiperspirant comprising Nelumbo nucifera and Nymphaea caerulea flower extracts in overlapping ranges wherein the compositions can comprise a spray. The claims of Application ‘988 does not recite the presence of aluminum sesquichorohydrate, film forming polymer of sodium acrylate in the recited amount or the presence of glycerin and propanediol, preservative and fragrance or the prescience of acrylates/C12-C22 alkylmethacrylate film former.
Banowski et al. teach antiperspirant compositions which comprise sodium polyacrylate (film former) present from 0.1-15% by weight, see abstract and page 15. The composition comprises an antiperspirant active such as aluminum sesquichorohydrate or aluminum chlorohydrate present from 2-40% by weight, see pages 12, 18 and 22. Aluminum sesquichorohydrate has the formula of Al2(OH)4Cl2XH20 wherein Q=chlorine, x=4 y=2, x+y=6. Aluminum chlorohydrate has the formula of Al2 (OH)5 Cl 2H20 meeting where Q is a chlorine, x is 5, y is 1, x+y=6, and wherein X is 2. Propellant (inactive component) can be present from 10-95% by weight which overlaps and renders obvious the instantly claimed inactive component from about 70-90% by weight, see pages 18-19. The formulation may further comprise at least one plant extracts taken from the flowers of plants present from 0.01-5% by weight, see pages 7 and 13-15. The antiperspirant can comprise an aerosol form, see pages 18-19. The aluminum antiperspirant and the sodium polyacrylate together (active components) encompass 2.1-55% by weight thus rendering obvious the active component of claim 1 present in a range of about 10-30% by weight of the composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The formulation can further comprise preservatives and perfume, see pages 2-3, 5, 8, 11-14, 17-18, and 20. Carriers include water (solvent), see pages 6-7.
Cao et al. teach that acrylate copolymers provide excellent water resistance, see abstract. Such acrylate compositions provide film forming properties and moisturizing effect, see paragraph [0018]. The acrylate composition is incorporated from 0.2-10% of a cosmetic product to achieve the desired functionality, see paragraph [0010]. Such personal care products include antiperspirants, see paragraph [0016]. The acrylates include acrylate/C10-20alkyl acrylate cross polymer and/or Dermacryl AQF, see Example 1. Example 3 at paragraphs [0027]-[0028] teaches acrylates/C12-22 alkylmethacrylate copolymers. Such acrylate C12-22 alkylmethacrylate copolymers also provide increased viscosity (i.e. increased thickness) to the formulation, see paragraph [0028].
Novoseletsky teaches that NELUPRURE® containing propane diol, glycerin and the extracts of Nelumbo Nucifera flower extract with Nympheae Coerulea Flower extract provide the cosmetic benefits of reduction in sebum production and inflammation, see page 1.
Accordingly, it would have been obvious to provide the antiperspirant of Application ‘988 with aluminum sesquichorohydrate in amounts from 2-40% by weight, and sodium polyacrylate from 0.1-15% by weight, to include propellant from 10-90% by weight, preservative and perfume because Banowski teaches antiperspirant compositions which comprise aluminum salts as the antiperspirant which can further comprise preservatives and perfumes.
As evidenced by SpecialChem, the NELUPRURE® product of Novoseletsky has from 0.5-1% nymphaea coerulea flower extract, from 0.5-1% nelumbo nucifera flower extract, 70-90% propanediol, and from 10-30% glycerin.
Happi teaches that NELUPRURE® suggested use is at a level of 2% the composition, see page 17. NELUPRURE® is a blended extract from two types of lotus flower, that delivers several benefits to the skin resulting in a flawless complexion. NELUPRURE® balances sebum secretion, diminishes skin shine and reduces blemishes. It reduces the expression of the leptin cellular receptor in sebocytes, which prevent it from triggering sebum production and inflammatory processes that cause skin blemishes. The results of in vivo studies on both male and female subjects showed that NELUPRURE® reduces excess sebum production in the skin and the processes that cause inflammation of the pores, leaving a smooth, radiant and pure complexion. NELUPRURE® yields a clearer, more radiant complexion after just one application, see page 17.
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the cosmetic antiperspirant product of Application ‘988 which contains nymphaea coerulea flower extract and nelumbo nucifera flower extract in 2% by weight because Happi teaches the use of NELUPRURE® at 2% for cosmetic formulations which contains said extracts in solvent improves skin sebum secretion and complexion.
Providing the NELUPRURE® ingredients at 2% by weight wherein there is 0.5% nymphaea coerulea flower extract, 0.5% nelumbo nucifera flower extract, 70% propanediol, and 10% glycerin (i.e. 81 parts total for a 2% solution) would equal 0.0123% of nymphaea coerulea flower extract, 0.0123% of nelumbo nucifera flower extract, 1.728% of propanediol and 0.247% of the glycerin.
It would have been obvious to provide the cosmetic of Application ‘988 with acrylates/C12-C22 alkylmethacrylate film former in order to impart increased viscosity and film forming plus moisturizing properties to the topical product of Application ‘988.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18994988 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-3, 6,8-10,12-13,14,20,21,24,27-30,32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3-9,11-18, and 21-22 of copending Application No. 18565018 (reference application) in view of Jimenez et al. (UsPgPub 20230310289-effective filing date of 12/2020).
Claims 1-2, 4, 6,8-10,12-13,14,20,21,24,27-30,32-33 are directed to an invention not patentably distinct from claims 1,3-9,11-18, and 21-22 of commonly assigned Application No. 18565018. Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those of Application ‘018 recite antiperspirant compositions which comprise Nymphaea coerulea flower extract with Nelumbo nucifera extract in overlapping amounts. Both the instant claims and that of Application ‘018 can contain film former from 2-20% such as sodium polyacrylate. The active component is present in overlapping amounts, and the extract comprises propanediol and glycerin in overlapping amounts (see claim 9 of Application ‘018). Both Applications contain propellant in overlapping ranges. Both the instant claims and that of Application ‘018 can include acrylates/C12-22 alkylmethacrylate copolymer as a film former.
The difference between the instant claims and that of Application ‘018 is the inclusion of magnesium salt as the active component since the instant claims do not require aluminum to be present in claim 1. The claims of Application ‘018 require an aluminum free formulation. Furthermore the instant claims have the inclusion of a perfume and preservative.
Jimenez et al. teach that antiperspirant active agents comprise magnesium or aluminum which are present in the alternative to each other and comprise 1-30% by weight, see claims 1 and 11 and paragraph [0037]. Magnesium actives reduce odor causing bacteria on the skin, see paragraph [0157]. The formulation can comprise a fragrance, see paragraph [0003], [0164] and embodiment 1.39.
Accordingly it would have been obvious to incorporate magnesium metal containing antiperspirant actives within the antiperspirant formulation of Application ‘018 in amounts of from 1-30% by weight because magnesium is taught in the alternative to aluminum to provide antiperspirant active properties. It would have been obvious to incorporate fragrances (perfume) and preservatives because Jimenez teaches their suitable incorporation for antiperspirant products.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18565018 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement. A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions
Response to Remarks
Applicants argue that Banowski does not teach or suggest the film former as amened in claim 1. Banowski discloses acrylic acid copolymers but only discloses such as well as sodium polyacrylates as thickeners or absorbers. The acrylate polymers in Banowski differ in function because the polymers in Banowski are thickeners and absorbers and are not disclosed as film formers. Applicants argue that the claimed film formers facilitate homogenation and evenly distributes the solution about a user’s skin.
In response, Examiner respectfully submits that Banowski expressly teaches the use of acrylate copolymers for an antiperspirant and teaches such as thickeners. Although Banowski does not teach them as film formers, it is noted that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty”. In the present case, the prior art teaches the same polymers as claimed thus would necessarily possess the same film forming properties as a composition and its properties are inseparable. Nevertheless, it is well recognized in the art as disclosed by Cao that acrylates polymers impart film forming and thickening properties to cosmetic products. Cao teaches that such polymers can be used in amounts of 0.2-10% by weight. Furthermore, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
In regards to the Double Patenting rejections, Applicants take note of the rejection but take no further action at this time as no pending claim has yet to be allowed.
In response, examiner respectfully submits that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejections of record have been maintained as no action regarding these rejections has been taken by applicants at this time.
Conclusion
Claims 1-6,8-10,12-14,20,21,24,27,28,30, and 32-33 are rejected and no claims are allowed.
Applicant’s arguments/remarks are considered unpersuasive and the amendment to the claims necessitated new grounds of rejections. 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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
