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 .
Election/Restriction
Applicant’s election without traverse of Group I (claims 18-36) in the reply filed on 04/23/2026 is acknowledged. Applicant’s election of xanthan gum in response to the species election is also acknowledged. Accordingly, claims 27 and 37 are withdrawn as being drawn to non-elected invention and species. In addition, the nonelected species are withdrawn from each corresponding claim.
Status of Claims
The preliminary amendment of 11/07/2023 is acknowledged. Claims 1-17 are cancelled and claims 18-37 are new. Claims 27 and 37 are withdrawn. Claims 18-26 and 28-36 are examined on the merits herein.
Priority
The instant application filed 11/07/2023, is a 371 filing of PCT/EP22/64066, filed 05/24/2022, which claims foreign priority to DE10 2021 208 999.2, filed 08/17/2021, and DE10 2021 205 299.1, filed 05/25/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/01/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 18-19, 22-26, 28, and 30-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Neuhoff, H., et al. (DE 102016003804 A1, 09/28/2017, patent translation dated 03/01/2024 used, IDS dated 03/01/2024), hereinafter Neuhoff.
Neuhoff teaches cosmetic preparations and their use to support the skin’s natural cell renewal (abstract).
Regarding claims 18 and 19: The preparations of Neuhoff may be in the form of a hydrodispersion gel ([0014]). Sample recipes comprise dehydroxanthan gum, xanthan gum, and water (table following [0017]).
Regarding claim 22: The sample recipes comprises dehydroxanthan gum in amounts ranging from 0.3 to 1%, all of which fall within the instantly claimed range (i.e., 0.1-5%). The amounts discloses by Neuhoff are percentages by weight based on the total weight of the preparation ([0016]).
Regarding claim 23: The third and last sample recipes comprise dehydroxanthan gum at an amount of 1% and 0.7%, respectively, both of which fall within the instantly claimed range (i.e., 0.6-2%).
Regarding claims 24-26: The sample recipes comprises xanthan gum in amounts ranging from 0.2 to 0.7%, all of which fall within the instantly claimed ranges (i.e., 0.1-3% and 0.2-0.7%).
Regarding claim 28: The third sample recipe, for example, comprises 1% of dehydroxanthan gum and 0.2% of xanthan gum, which results in a weight ratio of 5:1 of dehydroxanthan to xanthan. A ratio of 5:1 falls within the instantly claimed range (i.e., 10:1 to 1:1).
Regarding claim 30: Based on Examiners calculations, the sample recipes appear to contain around 45 to 50% water, which reads on not more than 99% as claimed.
Regarding claim 31: The sample recipes also appear to be free of vinyl pyrrolidone and (meth)acrylic acid polymers.
Regarding claims 32 and 34: The sample recipes comprise glycerin, which reads on the instantly claimed short-chain polyol.
Regarding claim 33: The sample recipes comprises glycerin in amounts ranging from 2 to 8%, all of which fall within the instantly claimed range (i.e., 0.1-3% and 0.2-0.7%).
Claim Rejections - 35 USC § 102/103
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.
Claims 18-19, 22-24, 26, and 28-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in alternative, under 35 U.S.C. 103 as obvious over Knappe, T., et al. (WO 2009156293 A1, 12/30/2009, patent translation dated 03/01/2024 used, IDS dated 03/01/2024), hereinafter Knappe.
Knappe teaches cosmetic agents which contain water, xanthan gum which is optionally heat-treated, and at least one additional polysaccharide material, which agents are suitable for temporarily shaping keratin fibers (abstract).
Regarding claims 18 and 19: The cosmetic agent of Knappe comprises water and xanthan gum (claim 1; [0011]-[0013]). In one embodiment the xanthan gum is a mixture of xanthan gum and heat-treated xanthan gum (claim 2; [0026]-[0028]; Table 1). The heat-treated xanthan gum is sold by Kelco under the trade name Amaze® XT (INCI name: dehydroxanthan gum) ([0040]). The agents of Knappe comprise the xanthan gum components in a water-containing cosmetic carrier or an aqueous-alcoholic cosmetic carrier. Carriers include gels ([0126]). Overall, the composition of Knappe comprises dehydroxanthan gum, xanthan gum, and water, which would inherently form a hydrogel as evidenced by the instant claims and specification (Ex. 8 of spec.).
Regarding claims 22 and 23: The styling paste of Table 1 comprises 1.2 wt% of heat-treated xanthan gum (i.e., dehydroxanthan gum) ([0165]), which falls within the instantly claimed ranges (i.e., 0.1-5% and 0.6-2%).
Regarding claims 24 and 26: The styling paste of Table 1 comprises 0.15 wt% of xanthan gum ([0164]), which falls within the instantly claimed range (i.e., 0.1-3%).
Regarding claim 28: When using a mixture of xanthan gum and heat-treated xanthan gum, it has proven to be particularly effective to use the xanthan gum and the heat-treated xanthan gum in a ratio 1: 2 to 1: 10 ([0029]), which is equivalent to a dehydroxanthan gum to xanthan gum ratio range of 10:1 to 2:1, which falls within the instantly claimed range (i.e., 10:1 to 1:1). The styling paste of Table 1 has a dehydroxanthan to xanthan ratio of 8:1, which also falls within the instantly claimed range.
Regarding claims 29 and 30: The proportion of water in the agents of Knappe is most preferably 50 to 80% by weight, based on the weight of the entire agent ([0019]). The end point of 80% reads on at least 70% and not more than 99% as instantly claimed. As such, one of ordinary skill in the art would have readily envisage the claimed invention from the teachings of Knappe. See MPEP 2131.03.
Regarding claim 31: Vinyl pyrrolidone and (meth)acrylate polymers are not required in the composition of Knappe nor are they present in any of the examples or the claimed composition.
Regarding claim 32: To improve the effects the active substance combinations, the further addition of at least one compound of the formula (I) is preferably suitable: HO-CH2-(CHOH)n-CH2-OH; where n means an integer form 1 to 4 ([0051]-[0053]; claim 10). Such a compound reads on a short-chain polyol having 2 to 8 carbon atoms as claimed.
Regarding claim 33: The compounds of formula (I) are in the range of 0.2 to 10% by weight ([0055]), with the end point of 10% falling within the instantly claimed range (i.e., 1-30%). The styling paste of Table 1 comprises 2.1% by weight of sorbitol which also falls within the instantly claimed range.
Regarding claim 34: Particularly effective compounds of formula (I) are glycerin and/or sorbitol ([0054]; Tables 1 and 2; claim 11), wherein glycerin reads on the short-chain polyol as claimed.
Alternatively, the formation of a hydrogel would have been obvious in view of the broader teaching of Knappe. Knappe differs from the instantly claimed invention in that Knappe does not explicitly teach a “hydrogel” composition.
As discussed above, Knappe teaches water-containing and aqueous-alcoholic cosmetic carriers including gels. Thus, in the case where the compositions cited in Knappe do not inherently form a hydrogel, it would have been prima facie obvious to one of ordinary skill in the art to formulate the compositions as such since water-containing and aqueous-alcoholic gels (i.e., hydrogels) are known and routine carriers for the cosmetic agents of Knappe. One of ordinary skill in the art could have combined embodiments of Knappe via known methods to predictably yield the instant invention. One of ordinary skill in the art would have had a reasonable expectation of success since gels comprising water are preferred carriers for the cosmetics of Knappe.
Claim Rejections - 35 USC § 103
Claims 18-26 and 28-34 are rejected under 35 U.S.C. 103 as being unpatentable over Knappe, T., et al. (WO 2009156293 A1, 12/30/2009, patent translation dated 03/01/2024 used, IDS dated 03/01/2024), hereinafter Knappe.
The teachings of Knappe are discussed above, as are the rejections of claims 18-19, 22-24, 26, and 28-34.
Knappe further teaches that the aqueous-alcoholic carriers include aqueous compositions containing 3 to 70% by weight of a C1-C4 alcohol, particularly ethanol ([0127]).
The teachings of Knappe differ from that of the instant invention in that Knappe does not explicitly teach an embodiment comprising ethanol as recited in claims 20 and 21, nor does Knappe explicitly teach the amount of xanthan gum as defined in claim 25.
Regarding claims 20 and 21, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to include ethanol in the compositions of Knappe since ethanol is a known and effective carrier in the art as taught by Knappe. One of ordinary skill in the art could have combined any of the embodiments of Knappe with ethanol, according to known methods, to predictably yield the instantly claimed invention. Furthermore, it would have been prima facie obvious to one of ordinary skill in the art to include ethanol at an amount within the range of 3 to 70% by weight as taught by Knappe, since this is a known and effective amount at which to incorporate ethanol in the disclosed compositions. Such a range encompasses the instantly claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. One of ordinary skill in the art would have had a reasonable expectation of success in adding 3 to 70% ethanol into any of the embodiments of Knappe since Knappe teaches ethanol as a preferred carrier in the disclosed compositions at these amounts.
Regarding claim 25, as discussed above, Knappe teaches a specific embodiment to comprise 0.15 wt% of xanthan gum (Table 1; [0164]). While 0.15 does not fall within the instantly claimed range (i.e., 0.2-0.7%), it is well within the abilities of an ordinary artisan to optimize the amount of xanthan gum in the composition depending on the desired consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of claim 25 through no more than routine experimentation. 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). Furthermore, 0.15% is very close to the bottom value of the instantly claimed range of 0.2%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art by are merely close. See MPEP 2144.05.
Claims 18-26 and 28-36 are rejected under 35 U.S.C. 103 as being unpatentable over Knappe as applied to claims 18-26 and 28-34 above, and further in view of Schmaus, G., et al. (US 20100216892 A1, 08/26/2010, PTO-892), hereinafter Schmaus.
The teachings of Knappe are discussed above.
The teachings of Knappe differ from that of the instant invention in that Knappe does not explicitly teach hexane-1,2-diol as defined in claims 35 and 36.
Schmaus discloses synergistically active mixtures of straight-chain 1,2-alkanediols having 5 to 10 carbon atoms and their use as skin moisture-regulating compositions. Binary and ternary mixtures of 1,2-pentanediol, 1,2-hexanediol and 1,2-octanediol have proved to be particularly active (abstract). The cosmetic and/or dermatological and/or keratological formulations of Schmaus comprising synergistically active skin moisture-regulating 1,2-alkanediol mixtures are used for the treatment of skin and/or hair ([0024]). The formulations and ready-to-use cosmetic products can be in various forms such as are conventionally employed such as gels, a hydrodispersion, etc. ([0026]). Specifically, Example 1 of Schmaus teaches incorporating 0.5 wt. % of a 1,2-alkanediol mixture comprising 1,2-hexanediol and 1,2-octanediol at a ratio of 1:1 in an O/W cream ([0144]), which means 1,2-hexanediol is present at 0.25% by weight. Formulation example 2 comprises 3% of 1,2-hexanediol, 3% of 1,2-octanediol, 0.1% of xanthan gum, and water among other ingredients (Table for Example 3). The 1,2-hexanediol of Schmaus reads on the hexane-1,2-diol of claims 35 and 36.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporate 1,2-alkanediols, such as 1,2-hexanediol, into the compositions of Knappe since these components are known and routine in the art as taught by Schmaus. One of ordinary skill in the art could have combined the 1,2-hexanediol and other 1,2-alkanediols of Schmaus into the cosmetic agents of Knappe according to known methods to predictably yield the instant invention of claim 35. One of ordinary skill in the art would have been motivated to incorporate 1,2-alkanediols such as 1,2-hexanediol into the cosmetic of Knappe since it is a particularly active skin moisture-regulating compound for the treatment of skin and/or hair, which would benefit the cosmetic of Knappe which is used for treating hair.
Regarding the amount of 1,2-hexanediol to incorporate into the cosmetic of Knappe, Schmaus teaches several amounts at which to incorporate 1,2-hexanediol into cosmetic compositions, ranging from 0.25% to 3% by weight. It would have been prima facie obvious to incorporate 1,2-hexanediol in and around these amounts in the cosmetics of Knappe since these are known and routine amounts at which to incorporate 1,2-hexanediol. While 0.25% falls within the instantly claimed range of claim 36, it would have also been well within the abilities of an ordinary artisan to optimize the amount of 1,2-hexanediol in the combined composition depending on the desired moisturizing effects of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of claim 36 through no more than routine experimentation. 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).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modification since Schmaus teaches that 1,2 alkanediols such as 1,2-hexanediol are compatible in cosmetic compositions with xanthan gum.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
1. Claims 19, 22-26, 28-29, and 31-36 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 15-20, 24, 26, and 28-33 of copending Application No. 18/556,904 (reference application).
Copending claim 15 recites a cosmetic hydrogel, wherein the hydrogel comprises a. dehydroxanthan gum; b. xanthan gum and/or carrageenan; and c. water. Such a composition is identical to the cosmetic hydrogel of instant claim 19. Copending claims 16-20, 24, 26, and 28-33 are identical to instant claims 22-26, 28-29, and 31-36, respectively.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Nonstatutory 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.
1. Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18/556,904 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 15 recites a cosmetic hydrogel comprising dehydroxanthan gum; xanthan gum and/or carrageenan; and water, which anticipates the hydrogel of instant claim 18..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims allowed.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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