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 .
DETAILED ACTION
Claims 1-10, 12 and 13 are currently pending in the instant application. Applicants have amended claims 1-10, 12 and 13 and canceled claim 11 in an amendment filed on June 30, 2026. Claims 1-9, 12 and 13 are rejected and 10 is withdrawn from consideration in this Office Action.
I. Priority
The instant application is a 371 of PCT/EP2022/059825, filed on April 13, 2022 and claims benefit of Foreign Application EPO 21168788.4, filed on April 16, 2021.
II. Information Disclosure Statement
The information disclosure statements (IDS) submitted on October 12, 2023, October 6, 2025 and March 30, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
III. Restriction/Election
A. Election: Applicant's Response
Applicant’s election of Group I in the reply filed on June 30, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Subject matter not encompassed by elected Group I are withdrawn from further consideration pursuant to 37 CFR 1.142 (b), as being drawn to nonelected inventions.
IV. Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 12 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. Specifically, claim 12 is drawn to “Food, feed, pharma and personal care products”. However, it is unclear if the claimed product needs to only be one of the four groups listed or does the claimed product have to be apart of all of the four groups. Applicants have failed to clearly define what the claimed invention in claim 12 and therefore the claim is considered indefinite. Applicants are suggested to amend claim 12 so that it is drawn to “A food product”, “A feed product” or “A pharma product” to overcome the above rejection.
Claim 13 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. Specifically, claim 13 is drawn to “Personal care products”. However, it is unclear if the claim product can be a single product or is a product that has multiple personal care products present. Applicants have failed to clearly define what the claimed invention in claim 13 and therefore the claim is considered indefinite. Applicants are suggested to amend claim 13 so that it is drawn to “A personal care product” to overcome the above rejection.
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 obviousness-type 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 USPQ 2d 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-9, 12 and 13 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 and 13-14 of copending Application No. 18/838,710. Although the conflicting claims are not identical, they are not patentably distinct from each other because the instant claims 1-9, 12 and 13 provide products which generically overlap with the copending application’s claimed products. The instant claims are drawn to “a formulation comprising retinol” whereas the copending application’s claims are drawn to “a formulation comprising a retinol mixture of cis and trans isomers of retinol”. The instant claimed formulation encompasses the narrower claim scope of the copending application’s claims.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
V. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/ Primary Examiner, Art Unit 1626
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