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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 22 September 2023. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Election/Restrictions
Applicant's election without traverse of Species I-VIII in the reply filed on 01 September 2026 is acknowledged. Upon careful consideration, the requirement for a species election has been withdrawn.
Claims 1-3, 5-7, 9, 12, 17-19, 21-23, 29-32, 43, and 45 are under examination.
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.
Claims 6 and 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.
Regarding claims 6 and 18, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1-3, 9, 12, 17-19, 21-23, 29-32, 43, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Gers-Barlag (US-20030003122-A1).
With regard to claim 1, Gers-Barlag teaches an emulsion comprising an oil phase, water phase, a microfine particle (e.g. mint oil/caprylic triglyceride, paras [0133 and 0137]) and at least one cyclodextrin (Abstract). Gers-Barlag further identifies β-Cyclodextrin and γ-cyclodextrin as preferred cyclodextrin (para [0050]) and specifies that oils are preferably incorporated into the oil phase (para [0053]). This disclosure maps onto an emulsion comprising an aqueous phase comprising water, an oil phase comprising perfume oil and an oil miscible solvent, and a β-Cyclodextrin stabilizer.
With regard to the emulsion, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to formulate the aqueous phase to comprise water and the oil phase to comprise oil-miscible solvents and fragrance oils of Gers-Barlag. Gers-Barlag would guide one having ordinary skill in the art to combine oils within the oil phase (para [0053]). A person of ordinary skill in the art prior to the effective filling date would have recognized the utility of this configuration based on the foundational teachings of Gers-Barlag as the invention can be provided with two distinct phases within its emulsion. Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would make the modification with a reasonable level of success.
With regard to claims 2-3, Gers-Barlag Example 1 discloses caprylic/ Capric triglyceride at 5 wt.% (para [0137], Table 1), which reads on the claimed oil miscible solvent and concentration. Gers-Barlag teaches triethyl citrate,
With regard to claim 9, Gers-Barlag discloses β-Cyclodextrin and γ-cyclodextrin are particularly preferred (para [0050]). Gers-Barlag teaches that the total concentration of one or more cyclodextrins in the final cosmetic or dermatological preparation is advantageously less than 10.0 wt.% based on the total weight of the preparation (para. [0051]). This disclosure reads on the claimed range.
With regard to claim 12, while Gers-Barlag notes that alcohols may be customarily used in such formulations, it provides no further specific teachings or working examples thereof (para. [0098]). Because the inclusion of these components is merely optional and left to the discretion of the skilled artisan, the reference teaches formulations that omit these ingredients, thereby reading on the free of C2-C4 limitation.
With regard to claims 17-19, 21, and 23, Gers-Barlag teaches that the amphiphilic character of the microfine particles according to the invention is evident from their ability to disperse in both water and oil at a concentration of 0.1 to 30 wt.% based on the total emulsion (para [0055 and 0057]), which overlaps the claimed ranges. Gers-Barlag teaches that amphiphilic particles, such as polyacrylates (para [0071), polymethacrylates (para [0073]), modified cellulose, and starch esters are advantageous for stabilizing these emulsions (paras [0080-0081]). This teaching is further exemplified in Gers-Barlag’s Example 3, which illustrates the use of 0.5 wt.% cellulose gum (Natrosol Plus 330 CS) ([0137], Table 1), a known cellulose derivative.
With regard to the specific miscible viscosifier phase, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to utilize amphiphilic particles, such as a cellulose derivative as a miscible viscosifier in either the water phase or the oil phase. Gers-Barlag would guide one having ordinary skill in the art to incorporate an amphiphilic character into either phase to achieve emulsion stabilization (paras [0085-0086]). A person of ordinary skill in the art prior to the effective filling date would have recognized the utility of this configuration, as Gers-Barlag can be provided with two distinct phases within its emulsion. Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would make the modification with a reasonable level of success.
With regard to claim 29, Gers-Barlag further teaches that the emulsion may be of either the water-in-oil or oil-in-water type (Abstract).
With regard to claim 30, Gers-Barlag teaches that the water phase proportion of the disclosed W/O Pickering emulsions is preferably selected from the range of 0.5% to 75% by weight, based on the total weight of the formulation (paragraph [0088]).
With regard to claim 31, Gers-Barlag discloses that the fatty (oil) phase proportion of the O/W Pickering emulsions is preferably selected from the range of 0.5% to 75% by weight, based on the total weight of the formulation (paragraph [0091]). This disclosure reads on the claimed range.
With regard to claim 32, Gers-Barlag teaches that the concentration of antiperspirant active ingredients, deodorants, or perfume constituents in the preparations is preferably 0.01% to 30% by weight (paragraph [0135]), which reads on the claimed range.
With regard to claim 43, Gers-Barlag discloses that it is particularly advantageous for the preparations to comprise significantly less than 0.5% by weight of one or more emulsifiers, or to be entirely free of emulsifiers (paragraph [0037]). This disclosure reads on the claimed range. To the extent the claim recites surfactants, emulsifiers represent a specialized type of surfactant.
With regard to claim 45, Gers-Barlag discloses that the subject emulsions serve as base formulations for skin care products (paragraphs [0011] and [0013]). This disclosure reads on the claimed "body care product."
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Gers-Barlag (US-20030003122-A1) as applied to claim 1-3, 9, 12, 17-19, 21-23, 29-32, 43, and 45 above, and further in view of Mentik (AU-2019393137-A1).
The teachings of Gers-Barlag is disclosed above.
With regard to claim 5-7, Gers-Barlag does not explicitly teach the use of the specified oil-miscible co-solvent. However, Gers-Barlag does teach that it is advantageous for the Pickering emulsions to comprise other auxiliaries which can contribute to reducing or preventing a dull or dry feel on the skin following their application (para [0052]).
In the same field of endeavor, Mentik teaches an emulsifying composition capable of forming a liquid oil-in-water emulsion that comprises at least one cyclodextrin and an emulsifier (Abstract). In general, an emulsion is composed of two phases (simple emulsion): a hydrophilic phase (aqueous/water) and a lipophilic phase (fatty/oil) (para [0002]). This overlaps on the reference and the claimed invention.
Furthermore, Mentik discloses that the liquid fatty phase advantageously comprises one or more non-volatile oils to provide an emollient effect on the skin (paragraph [0068]). Mentik defines a volatile oil as an oil susceptible to evaporating from the skin in less than one hour at room temperature and atmospheric pressure, noting that volatile oils—such as silicone oils or short fatty acid triglycerides—may be selected to reduce a greasy feel (paragraph [0069]). Mentik further teaches that these oils can be hydrocarbon-based or siliconized-type oils, such as squalane oil (paragraph [0070]). The explicit disclosure of silicone oil and squalane oil reads directly on the presently claimed limitations. Finally, Mentik establishes that these oils and butters complement the implemented emulsifying system to yield highly stable emulsions with high whiteness and an easily adjustable viscosity within a concentration range of 10 to 65 wt.% of the emulsion (paragraph [0071]), which reads directly on the claimed range.
With regard to the oil miscible co-solvent, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the emulsion of Gers-Barlag. Specifically, to include an additional oil miscible solvent, such as squalene or silicone oil as established in Mentik. Gers-Barlag would guide one having ordinary skill in the art to employ auxiliary agents capable of reducing or preventing a dry or dull skin feel post-application (para. [0052]). Mentik would guide one having ordinary skill in the art to utilization of oils like squalene and silicone precisely for their emollient effects (para [0068-0071]). The emollient effect refers to the softening and smoothing of dry or rough skin. Collectively, the references describe analogous emulsions sharing substantially similar components (e.g., cyclodextrin, water phase, oil phase, and miscible solvents) and identical cosmetic applications. Therefore, a person of ordinary skill in the art would have been motivated to modify Gers-Barlag’s emulsion with the known emollient compounds of Mentik represents a predictable optimization of cosmetic performance to arrive at the claimed invention.
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 1-3, 5-7, 12, 17, 23, 29-32, 43, and 45 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of 1-3, 5, 7, 13, 22-24, 31-34, 47, and 49 U.S. Patent No. 18/552034 in view of Gers-Barlag (US-200300003122-A1). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the reasons listed below.
It is clear that all the elements of the US 18/552042 ('042) are to be found in US 18/552034 ('034). Specifically, the '042 application claims an emulsion comprising an aqueous phase with water, an oil phase containing a perfume oil and an oil-miscible solvent, and a stabilizer. The '042 application directly overlaps with the '034 application regarding the selection of components, oil-miscible solvents, oil-miscible co-solvents, water-miscible viscosifiers, surfactants, and their respective concentration ranges. The primary distinction is that the '034 application specifies the stabilizer as an "organic particle." However, the instant claims of the '042 application remain an obvious variant, as they define the stabilizer as a "cyclodextrin," which reads on the organic particle and the overall emulsion disclosed in the '034 application. A person of ordinary skill in the art would conclude that the invention described in the instant claims would have been an obvious variation.
This is a provisional nonstatutory double patenting rejection because the patentably distinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 14, 2026
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