DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-13 are pending and examined.
Claim of Foreign Priority
Applicant’s claim of foreign priority and receipt of Certified Copy of Foreign Priority documents are acknowledged.
Claim Objections
Claim 10 is objected to for including bullet points, failing to include a “:” or other punctuation after the word “steps” and for not including “A” or an article at the beginning of the claim.
Claims 12 and 13 similarly do not recite an article at the beginning of the claim. The term “products” should be changed to “product” when an article is added to the claims.
Claim Rejections - 35 USC § 112
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. The use of the term “preferably” in parenthesis is not clear. The claims are intended to include required limitations and as such the description of a preference, which is not required, renders the claim indefinite.
Claim 11 is also rejected because it claims a “use” without any active step of administration. This is not definite and it is unclear if claim 11 is a product or a method claim.
Claims 2, 8, and 10 are rejected for stating “essentially” in parenthesis, which calls into question why the parenthesis are recited. Claim 8 refers to other than the mixed tocopherol in parenthesis. Claim 10 also includes parenthesis in multiple instances and should be removed. “Consisting essentially of” is a well-known transition phrase and the use of parenthesis in this phrase are not typically used.
Claim 10 refers to cooling down the mixture slowly. The term “slowly” is a relative term that is not defined in the Specification. The metes and bounds of slowly are not clear.
Claim Rejections - 35 USC § 112 (Antecedent basis)
Claim 10 recite the limitation "the retinol and the mixed tocopherol" prior to referring to a mixture. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112
Claims 12 and 13 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 12 and 13 include “at least one formulation” where claim 1 from which they depend are directed to a formulation, which is interpreted in the singular. 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.
Moreover, claims 12 and 13 merely refer to the same structural limitations of claim 1 from which they depend for a different use. There is no additional structural limitation added to claims 12 and 13. As such, they are not further limiting of claim 1 because they are the identical product claimed in claim 1.
Claim Rejections - 35 USC § 101
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a method step of administration, e.g., or an asserted utility or a well-established utility. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claims recite a “use” without an accompanying step for administering or applying the claimed product.
Claim 11 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a step for administration or a category of patent eligible subject matter asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9, 12, and 13 do not fall within at least one of the four categories of patent eligible subject matter because they are naturally occurring compositions of matter.
Tocopherol, retinol and a solvent are each naturally occurring.
Szewczyk et al., Tocopherols and Tocotrienols—Bioactive Dietary Compounds;
What Is Certain, What Is Doubt?,” Int. J. Mol. Sci. 2021, 22, 6222: teaches: Tocopherols are natural compounds of plant origin. See Abstract.
Zasada et al., Retinoids: active molecules influencing skin structure formation in cosmetic and dermatological treatments,” Adv Dermatol Allergol 2019; XXXVI (4): 392–397, teaches: Retinoids are compounds of both natural, biologically active forms of Vitamin A (retinol, retinal and retinoic acid) as well as synthetic analogues of retinol (Figures 1, 2).” See p392, 3rd full par.
According to PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/Tridecane), Tridecane is obtained from natural sources natural gas and petroleum, either by isolation or fractional distillation, e.g.
Claims 1-9, 12, and 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural products without significantly more.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. Applicant’s claims 1-9, 12, and 13 are directed to a product; thus, the answer to Step 1 is Yes.
The analysis then moves to Step 2A, Prong One, which asks if a claim recites to a product of nature. In this case, instant claims are directed to a composition comprising a compound of formula (I) which is found in nature, and therefore patent ineligible judicial exceptions (natural products) under 35 USC 101.
MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception…”. To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”.
It appears that the claimed components merely function as a component part of additive feature when combined.
Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. The additional element is a concentration or amount of a naturally occurring form is not sufficient, per se, to integrate the judicial exception into a practical application. Thus, the answer to Step 2A, Prong Two, is No.
Thus, the analysis must move to Step 2B which asks if claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.”
In this case, the additional element in the claims is an extract and/or an extract applied to a seed. However, MPEP § 2106.05(d) states that well-understood, routine, and conventional activities are not sufficient to show that the claims amount to significantly more than the judicial exception.
Thus, the answer to Step 2B is No. Therefore, the claims are not directed to patent eligible subject matter."
Instant claims 12 and 13 recite additional elements such as “Food, feed pharma, or personal care” although these characterizations do not alter the state of the natural components.
As elaborated above, claims 1-9, 12, and 13 do not provide sufficient limitation beyond the judicial exceptions or provide anything that adds significantly more to the judicial exceptions. Consequently, it is not directed to patent eligible subject matter.
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.
Claims 1-6, 8, 9, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al., (US2020/0383895), in view of Froix et al., (U.S. Pat. No. 5,851,538), in view of Clavel et al., (U.S. Pat. No. 8,992,953).
Hwang teaches a stable cosmetic composition that includes C18-C21 alkanes. See par. 5. The composition includes a fat-soluble antioxidant, which includes one more of tocopherol, retinol, and lycopene. See par. 28 and prior art claims 1, 7, and 11. The amount of antioxidant can be up to 35% weight of the composition. Tocopherol is used in Examples 6-19, e.g., in a concentration of 0.5%. Ascorbic acid can be used. See Tables 1-3.
Froix teaches compositions including emulsions that are stable and comprise retinol in a form that in can be up to 90% and preferably up to 60% retinol. One type of additional antioxidant ingredient can include tocopherol as it is an oil-soluble antioxidant. Ascorbic acid is contemplated as an active agent.
Clavel teaches cosmetic compositions comprising volatile linear alkanes. See Title. In particular Clavel teaches cosmetic emulsions having at least one C9 to C15 volatile linear solvent. The stability of an emulsion is enhanced by the addition of n-undecane and n-tridecane, e.g. Other examples of alkane solvents include dodecane, tetradecane, pentadecane, and mixtures. A compositions con contain up to 90% and in particular up to 40 or 50% volatile linear alkanes. An example of a composition includes a low concentration of a mixture of tocopherols. See Examples 1-7 and prior art claim 15. Examples 4-7 use 0.5% by mass tocopherol.
It would have been prima facie obvious prior to the filing of the instant application to arrive at the claimed products and process for producing the same. Hwang teaches a cosmetic topical composition having retinol, tocopherol, and an alkane. Tocopherol and retinol are teach taught as oil/fat soluble. Hwang also teaches the claimed concentration of tocopherol and a similar concentration of retinol (i.e., up to 35%). Similarly, Froix teaches also teaches an emulsion that is stable and comprises a claimed concentration of retinol (up to 90% and preferred up to 60%) and can include tocopherol. Finally, Clavel teaches an emulsion that uses the claimed alkanes, including undecane and tridecane at a claimed concentration of 40 and 50%, and the mixture can also include tocopherol. Moreover, the compositions taught by Hwang and Froix can also incorporate ascorbic acid. There are stability and other that are known for using the claimed alkanes as a solvent and using tocopherol, including a mixture of tocopherols and retinol in pharmaceutical compositions. Overall, the claimed components at the claimed concentration are each known and used in stable formulations that delivery known antioxidants to the skin of a subject in a cosmetic formulation. Further, Hwang teaches retinol, tocopherol, and alkanes for use in a single composition while the secondary references provide the claimed concentrations.
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); Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); and Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-6 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al., (US2020/0383895), in view of Froix et al., (U.S. Pat. No. 5,851,538), in view of Clavel et al., (U.S. Pat. No. 8,992,953), and in view of CN101156648A (published April 9, 2008).
Hwang teaches a stable cosmetic composition that includes C18-C21 alkanes. See par. 5. The composition includes a fat-soluble antioxidant, which includes one more of tocopherol, retinol, and lycopene. See par. 28 and prior art claims 1, 7, and 11. The amount of antioxidant can be up to 35% weight of the composition. Tocopherol is used in Examples 6-19, e.g., in a concentration of 0.5%. Ascorbic acid can be used. See Tables 1-3.
Froix teaches compositions including emulsions that are stable and comprise retinol in a form that in can be up to 90% and preferably up to 60% retinol. One type of additional antioxidant ingredient can include tocopherol as it is an oil-soluble antioxidant. Ascorbic acid is contemplated as an active agent.
Clavel teaches cosmetic compositions comprising volatile linear alkanes. See Title. In particular Clavel teaches cosmetic emulsions having at least one C9 to C15 volatile linear solvent. The stability of an emulsion is enhanced by the addition of n-undecane and n-tridecane, e.g. Other examples of alkane solvents include dodecane, tetradecane, pentadecane, and mixtures. A compositions con contain up to 90% and in particular up to 40 or 50% volatile linear alkanes. An example of a composition includes a low concentration of a mixture of tocopherols. See Examples 1-7 and prior art claim 15. Examples 4-7 use 0.5% by mass tocopherol.
CN101156648A teaches compositions wherein vitamins A and E are mixed with oil in 50-60 degree heat and dissolving the vitamin E in vitamin A oil with heat of 45-60°C, and dissolving the solvent and components at that temperature prior to cooling. See prior art claims 1-4.
It would have been prima facie obvious prior to the filing of the instant application to arrive at the claimed products and process for producing the same. Hwang teaches a cosmetic topical composition having retinol, tocopherol, and an alkane. Tocopherol and retinol are teach taught as oil/fat soluble. Hwang also teaches the claimed concentration of tocopherol and a similar concentration of retinol (i.e., up to 35%). Similarly, Froix teaches also teaches an emulsion that is stable and comprises a claimed concentration of retinol (up to 90% and preferred up to 60%) and can include tocopherol. Finally, Clavel teaches an emulsion that uses the claimed alkanes, including undecane and tridecane at a claimed concentration of 40 and 50%, and the mixture can also include tocopherol. Moreover, the compositions taught by Hwang and Froix can also incorporate ascorbic acid. There are stability and other that are known for using the claimed alkanes as a solvent and using tocopherol, including a mixture of tocopherols and retinol in pharmaceutical compositions. Overall, the claimed components at the claimed concentration are each known and used in stable formulations that delivery known antioxidants to the skin of a subject in a cosmetic formulation. Further, Hwang teaches retinol, tocopherol, and alkanes for use in a single composition while the secondary references provide the claimed concentrations.
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); Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); and Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to claim 10, CN101156648A teaches mixing vitamin A and E with an oil and/or solvent for fat-soluble vitamins and doing so in 45-60°C heat as the components are mixed and prior to cooling. Hwang teaches combinations that can include retinol, tocopherol, and a solvent. As such, in view of CN101156648A a POSA would mix those components as a vitamin A and E components in the presence of 45-60°C and a known solvent for the same. The components are stirred evenly and mixed evenly prior to cooling. Even further, the Abstract notes that vitamins A and E are fat-soluble and unstable to heat. Thus, it would be obvious to mix and heat at mild temperatures up to about 60°C.
Claims 1-9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al., (US2020/0383895), in view of Froix et al., (U.S. Pat. No. 5,851,538), in view of Clavel et al., (U.S. Pat. No. 8,992,953), and in further view of Benham (US2003/0105157).
Hwang teaches a stable cosmetic composition that includes C18-C21 alkanes. See par. 5. The composition includes a fat-soluble antioxidant, which includes one more of tocopherol, retinol, and lycopene. See par. 28 and prior art claims 1, 7, and 11. The amount of antioxidant can be up to 35% weight of the composition. Tocopherol is used in Examples 6-19, e.g., in a concentration of 0.5%. Ascorbic acid can be used. See Tables 1-3.
Froix teaches compositions including emulsions that are stable and comprise retinol in a form that in can be up to 90% and preferably up to 60% retinol. One type of additional antioxidant ingredient can include tocopherol as it is an oil-soluble antioxidant. Ascorbic acid is contemplated as an active agent.
Clavel teaches cosmetic compositions comprising volatile linear alkanes. See Title. In particular Clavel teaches cosmetic emulsions having at least one C9 to C15 volatile linear solvent. The stability of an emulsion is enhanced by the addition of n-undecane and n-tridecane, e.g. Other examples of alkane solvents include dodecane, tetradecane, pentadecane, and mixtures. A compositions con contain up to 90% and in particular up to 40 or 50% volatile linear alkanes. An example of a composition includes a low concentration of a mixture of tocopherols. See Examples 1-7 and prior art claim 15. Examples 4-7 use 0.5% by mass
It would have been prima facie obvious prior to the filing of the instant application to arrive at the claimed products and process for producing the same. Hwang teaches a cosmetic topical composition having retinol, tocopherol, and an alkane. Tocopherol and retinol are teach taught as oil/fat soluble. Hwang also teaches the claimed concentration of tocopherol and a similar concentration of retinol (i.e., up to 35%). Similarly, Froix teaches also teaches an emulsion that is stable and comprises a claimed concentration of retinol (up to 90% and preferred up to 60%) and can include tocopherol. Finally, Clavel teaches an emulsion that uses the claimed alkanes, including undecane and tridecane at a claimed concentration of 40 and 50%, and the mixture can also include tocopherol. Moreover, the compositions taught by Hwang and Froix can also incorporate ascorbic acid. There are stability and other that are known for using the claimed alkanes as a solvent and using tocopherol, including a mixture of tocopherols and retinol in pharmaceutical compositions. Overall, the claimed components at the claimed concentration are each known and used in stable formulations that delivery known antioxidants to the skin of a subject in a cosmetic formulation. Further, Hwang teaches retinol, tocopherol, and alkanes for use in a single composition while the secondary references provide the claimed concentrations.
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); Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); and Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Benham teaches a composition that can be a cosmetic that can be added to skin products, e.g. See par. 6. The composition comprises tocopherol including a mixture of alpha, beta, gamma, and delta forms. See par. 9. Further, the concentrations include 8-20% alpha, 1.5-4.5% beta, 55 to 75% gamma, and 15 to 27% delta. See par. 9 Ascorbic acid is incorporated as an active agent.
As such, it would have been further prima facie obvious to use a known and used claimed mixture of tocopherols taught by Benham as they are used in a composition that comprises the claimed concentrations of tocopherols and an overall percentage of mixture tocopherols that are claimed. Further, Benham also teaches formulations that include antioxidants, such as ascorbic acid. Thus, in view of the teachings of Hwang and Froix to use tocopherols and the teaching of Clavel to use mixed tocopherols, a POSA would consider using the concentrations of mixed tocopherols taught by Benham for use in a cosmetic formulation that, similar to Hwang and Froix, can also use ascorbic acid.
As such, no claim is allowed.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/555,070. Although the claims at issue are not identical, they are not patentably distinct from each other because the sole difference in these claims is the formula (I) for a solvent set forth in the ‘070 application. In particular, the solvents in the ‘070 application are claimed to include a formula (I) which encompasses hundreds of permutations in view of the w, x, y, and z variables being any sum up to 20. This is different from the solvent category instantly claimed and is not identical and the instant claims requiring no alcohol group or ester. Without this distinction, this would be considered for a statutory Double Patenting Rejection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/838,710. Although the claims at issue are not identical, they are not patentably distinct from each other because the sole difference in these claims is the formula (I) for a solvent set forth in the ‘710 application. Without this distinction, this would be considered for a statutory Double Patenting Rejection. The instant claims require at solvent that is apolar lipophilic hydrocarbon having no alcohol or ester group and the ‘710 application includes esters. The ’710 application also requires a specific ratio of cis and trans isomers of retinol.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/555/154. Although the claims at issue are not identical, they are not patentably distinct from each other because the sole difference in these claims is the formula (I) for a solvent set forth in the ‘154 application. Without this distinction, this would be considered for a statutory Double Patenting Rejection. The instant claims require at solvent that is apolar lipophilic hydrocarbon having no alcohol or ester group and the ‘154 application does not exclude esters in a specific formula (I) of potential solvents.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/838,971. Although the claims at issue are not identical, they are not patentably distinct from each other because the sole difference in these claims is the formula (I) for a solvent set forth in the ‘971 application. Without this distinction, this would be considered for a statutory Double Patenting Rejection. The instant claims require at solvent that is apolar lipophilic hydrocarbon having no alcohol or ester group and the ‘971 application includes esters. The ’710 application also requires a specific ratio of cis and trans isomers of retinol of less than 0.01
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/838,904. Although the claims at issue are not identical, they are not patentably distinct from each other because the sole difference in these claims is ratio of cis and trans isomer of retinol and the concentration therein. The claims require a cis/trans ratio of less than 0.01. Without this distinction, this would be considered for a statutory Double Patenting Rejection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
As such, no claim is allowed.
Conclusion
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/JARED BARSKY/Primary Examiner, Art Unit 1628