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 .
Claim Status
Claim 2 is cancelled. Claims 1 and 3-26 are pending and under examination.
Priority
This application is a national stage entry of PCT/EP2022/065271 filed on 6/3/2022, which claims priority from Belgium application BE2021/5448 filed 6/4/2021.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/09/2026 has been entered.
Information Disclosure Statements
The information disclosure statement filed on 07/14/2026 has been considered by the examiner.
Objections and Rejections Withdrawn
The rejection under USC 101 is withdrawn per applicant’s arguments and amendments.
The rejections under USC 103 over KR20200109179A, over KR20200109179A and Abramowitz, over KR20200109179A, Abramowitz and Smith, and over KR20200109179A, Abramowitz US 20020158018 and Park are withdrawn per applicant’s arguments and amendments.
As these rejections are withdrawn, applicant’s arguments toward the rejections are moot.
Claim Objections
Claims 2-13 and 18-26 are objected to as they should begin with “The” to refer to “The composition” or “The plur-ionic composition”.
Claims 15-17 are objected to as they should begin with “The” to refer to “The method”
Appropriate corrections are required.
Claim Rejections - 35 USC § 112(b)
Claims 1, and 3-26 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.
Claims 1 and 14 and 15 are indefinite for the recitation of “at least one mineral salt of lithium, magnesium and potassium” as it is unclear if this refers to one mineral salt that would have each of lithium, magnesium and potassium (e.g. note that a mineral salt like lithium carnallite naturally contains lithium, magnesium, and potassium ions in a single salt structure) or if it refers to “at least one mineral salt of lithium, at least one mineral salt of magnesium and at least one mineral salt of potassium”. For the purpose of compact prosecution, the examiner will consider as there being three separate mineral salts (at least).
Claims 3-13 and 15-26 are rejected for being dependent on an indefinite claim.
In claims 1 and 14, applicant recites “following molar ratios: lithium 1 – magnesium [0.13-0.34] – potassium [1.20-2.40]”. The use of the brackets makes it unclear if what is within the brackets is necessary or an exemplified amount for these numbers of the molar ratio. Additionally, it is unclear if this could represent a ratio within a ratio, as applicant seems to use “-“ between lithium, magnesium and potassium as well as within the bracket along with the plural of “molar ratios”. For the purpose of compact prosecution, the examiner will consider the claim as with the molar ratio of lithium : magnesium : potassium where the bracketed range represent a range for that particular item within the ratio. Applicant may consider using language such as “characterized by the molar ratio of lithium : magnesium : potassium of 1 : 0.13-0.34 : 1.20-2.40” to clarify the issue.
Claims 3-13 and 15-26 are rejected for being dependent on an indefinite claim.
Claims 3-4 are indefinite for “the molar ratio of potassium is comprised between 1.55 and 1.75” and “the molar ratio of magnesium is comprised between 0.15 and 0.30” which makes it unclear if they are referring to these as part of the lithium : magnesium : potassium molar ratio as in claim 1 or if other molar ratios with other substances including either potassium or magnesium could also apply. Applicant should consider a recitation such as “wherein the potassium of the molar ratio is between 1.55 and 1.75.” and “wherein the magnesium of the molar ratio is between 0.15 and 0.30.”
Claim 25 recites the limitation "said silicon salt" in the claim, but the recitation in claim 10 is “at least one silicon salt”. There is insufficient antecedent basis for this limitation in the claim. Applicant should consider saying “said at least one silicon salt” to refer back to what is provided in claim 10.
Claim 26 is indefinite for being dependent on an indefinite claim.
Claim Rejections - 35 USC § 112(d)
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.
Claim 17 is 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. Claim 14 provides for “one or more concentrated solutions comprising at least one mineral salt of lithium, magnesium and potassium”, while claim 17 provides for “one or more concentrated solution comprising at least one mineral salt of lithium, magnesium and/or potassium”. Thus, claim 14 requires all of lithium, magnesium and potassium while claim 17 appears to open this up to allowing optional “lithium, magnesium and/or potassium”. 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. Applicant may replace the “and/or” with “and” to be in agreement with the scope of claim 14, on which it depends.
Claim Rejections - 35 USC § 103
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 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.
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.
Claim(s) 1, 3-11, 13-15 and 17-26 are rejected under 35 U.S.C. 103 as being unpatentable over KR101439206B1 (published 2014, Espacenet English translation), Horrobin US 5594031, and Tanojo US 20060182770A1.
KR ‘206 teaches “a cosmetic composition for skin improvement comprising Suanbong hot spring water as a main component, and more particularly to a cosmetic composition for skin improvement comprising Suanbong hot spring water, ethanol, rose fragrance, butylene glycol, glycerin, betaine, sodium citrate, methylparaben, phenoxyethanol and citric acid A skin-improving cosmetic composition capable of confirming skin compatibility such as skin care” (abstract and paragraph 1 of English translation). KR ‘206 teaches a composition with magnesium and lithium along with silicon dioxide (under table 1). KR ‘206 teaches a composition with potassium and magnesium in its claim. KR ‘206 teaches a composition with lithium and potassium and silicon dioxide (under table 2, paragraph 28). KR ‘206 lithium concentrations of 0.16 mg/L to 0.19 mg/L (correspond to 23.1 to 27.4 micromolar). KR ‘206 potassium concentrations correspond to 2.03 to 2.56 mg/L (51.9 to 65.5 micromolar). This allows twice as much potassium as lithium in the formulation based on molar amounts. KR ‘206 provides for magnesium amounts but does not teach this amount range is absolutely needed, since the formulation of paragraph 28 under table 2 has lithium and potassium but no magnesium. KR ‘206 teaches alkaline hot spring water can smooth the skin and it can be effective in skin care and prevention of skin aging and is mineral water (paragraph 7). KR ‘206, thus, provides for the skin care benefits of mineral water compositions. KR ‘206 teaches the water having minerals (paragraphs 8-21 of English translation). Paragraph 39 provides for applying it to skin. The compositions of KR ‘206 are mostly water. Alkaline in KR ‘206 provides for pH values above 7. KR ‘206 teaches other ingredients including ethanol, rose fragrance, glycerin, betaine, sodium citrate, citric acid and others (abstract). KR ‘206 provides for manganese as an ingredient (claim of KR ‘206).
Although KR ‘206 provides for a skin composition that can have lithium, potassium and magnesium as minerals, KR ‘206 does not provide amounts of lithium of the claim or amounts of magnesium that would produce the ratio of lithium to magnesium to potassium of the claims. KR’206 does not provide for other cosmetic skin forms. KR ‘206 does not teach silicon/silicate salts. KR ‘206 does not teach the method steps of claims 14, 15 and 17.
Horrobin teaches topically applying a composition a composition with an excipient and lithium ion with topically effective amounts of lithium salt (abstract). Claim 7 of Horrobin teaches 0.001 to 30% weight of lithium ions (1.44 mM corresponds to 0.001 wt%). Claim 8 provides for cream base (claim 8 of Horrobin). Horrobin provides for lithium salts including lithium chloride (claim 4 of Horrobin). The detailed description provides for creams and other example compositions for lithium. In Horrobin, lithium is seen as effective to reduce sebum production from the skin (abstract).
Tanojo teaches compositions for skin having magnesium ions in a physiological acceptable medium (abstract). Tanojo teaches treating skin disorders or improving skin condition (abstract). Tanojo teaches 0.01 to 8% w/w of magnesium (paragraphs 20-21, 0.01% w/w corresponds to 4.11 mM). Tanojo teaches magnesium chloride (paragraph 20). Tanojo also allows for other monovalent cation salts including potassium chloride (paragraph 21, also claims 6 and 7 of Tanojo). Tanojo teaches gels and creams (paragraph 38). Tanojo provides for the cations to maintain homeostasis of the skin barrier (paragraph 10). Tanojo provides for potassium amounts of 0.027 (3.62 mM for potassium chloride) or 0.029 % (2.3 mM for potassium bromide) (paragraph 215). Tanojo teaches creams and other forms (claim 30 of Tanojo). Tanojo teaches sodium magnesium silicates, hydrated aluminum silicate and other powders (paragraphs 121 and 182). Tanojo teaches at least 80% water (claim 2 of Tanojo). Tanojo teaches various ingredients like gelling agents, antioxidants, preservatives and others (paragraph 39). Tanojo teaches heating to 75 C then dissolving calcium chloride which is the other option of divalent cation (paragraph 217).
One of ordinary skill in the art would have been capable of providing mineral containing compositions for skin benefit and adjusted amounts and ratios by the combined teachings of the prior art as KR ‘206 provides for a mineral containing formulation that can have lithium, potassium and magnesium with skin benefit while Horrobin and Tanojo provide reasons to adjust amounts of lithium, magnesium and potassium for their benefits to topical treatment of skin as wells to make topical forms like gels and creams. Tanojo provides addition of silicate salt powders for such skin formulations as well as additives/other ingredients of applicant’s claims. Therefore, there was a reasonable expectation of success in combining the teachings of the references to provide for a topical skin treatment gel, cream or gel cream formulation with benefits to maintain the skin barrier, reduce sebum and treat skin conditions when combining the teachings of the prior art. One of ordinary skill in the art would routinely adjust the amounts within ranges of the prior art in order to produce new formulations with effective amounts of lithium, magnesium (a divalent ion in Tanojo) and potassium (a monovalent ion in Tanojo) for skin maintenance and improvement in treatment (see MPEP 2144.05). KR ‘206 provides for an alkaline pH formulation made with agents like citric acid while Horrobin and Tanojo provide for adding lithium salts, magnesium salts and potassium salts along with excipients that can form formulations like creams or gels. Tanojo teaches heating to 75 C before adding the mineral salt, and thus, one of ordinary skill in the art would adjust their process to heat the water in order to dissolve the mineral salt. In regards to claim 17, one of ordinary skill in the art would have provided composition with the mineral salts in amounts to add to the total formulation to provide the desired molar ratios. It is routine and conventional to mix/combine different concentrations of ingredients to obtain a total formulation with the desired final concentrations that provide the effective formulation. The cited prior art teaches combining the different mineral salts in making effective skin formulations.
Claims 12 and 16 in addition to Claim(s) 1, 3-11, 13-15, and 17-26 are rejected under 35 U.S.C. 103 as being unpatentable over KR101439206B1 (published 2014, Espacenet English translation), Horrobin US 5594031, Tanojo US 20060182770A1 and Laboureau US20090285770A1.
KR101439206B1 (published 2014, Espacenet English translation), Horrobin US 5594031, and Tanojo US 20060182770A1 teaches the claims as discussed above.
KR ‘206, Horrobin and Tanojo do not teach copper salts nor do they teach the limitation of claim 16 for the method.
Laboureau teaches a composition for topical application to skin that contains “the agent increasing the expression of mechanoreceptors in the cells of the skin is selected from zinc salts, copper salts, manganese salts, derivatives thereof and mixtures thereof.” (abstract, also see claim 39 of Laboureau and paragraphs 101-110). Laboureau teaches mixed silicates as tensing agents with cations like Na (sodium) (paragraphs 144-146). Laboureau teaches tensing agents can be soluble in water and they will be added to water and mixed (paragraphs 117-119 and 123).
One of ordinary skill in the art before the time of filing would have included copper and manganese salts into topical formulations motivated by the prior art as these are seen as functioning to increase expression of mechanoreceptors in skin cells in topical skin products by teachings of Laboureau. Therefore, there was a reasonable expectation of in combining the teachings of the references to also obtain a topical product capable of increasing expression of skin mechanoreceptors for skin benefit. One of ordinary skill in the art would have been able to add the silicate to the aqueous composition and dissolve it to form a composition by teachings of Laboureau. One of ordinary skill in the art would have added the silicate tensing agent to the aqueous solution, which may be done at various times during the process including before other adjustments.
Maintained Rejection – Modified As Necessitated by Amendment
Non-Statutory 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, 3-4, 7-13 and 18-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 5, 7, 9-11, 17 and 18 of copending Application No. 18/871,069 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claim set provides for compositions of mineral salts of lithium, magnesium and potassium in shared molar ratios. ‘069 differs in that it also offers the option of organic salts. Although the claims of ‘069 do not say forms of gel, cream or gel cream, claims of ‘069 allows for ingredients such as gelling agents which would form gels of its compositions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 5 and 6 in addition to Claims 1-4, 7-13 and 18-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 5, 7, 9-11, 17 and 18 of copending Application No. 18/871,069 (reference application) in view of Abramowitz US 20020158018. Although the claims at issue are not identical, they are not patentably distinct from each other because each claim set provides for compositions of mineral salts of lithium, magnesium and potassium in shared molar ratios. ‘069 differs in that it also offers the option of organic salts. Although the claims of ‘069 do not say forms of gel, cream or gel cream, claims of ‘069 allows for ingredients such as gelling agents which would form gels of its compositions.
‘069 does not teach the pH or at least 50% of water in its formulations.
Abramowitz teaches producing improved alkaline water with the resulting water being electrolyzed (abstract). Abramowitz teaches that alkaline water is water with a pH over 7 (paragraph 2). Abramowitz teaches adjusting the pH of water by adding acid, then injecting a concentrated mineral mixture that is adjusted to bring the mineral concentration to the desired level (paragraphs 19-20). Abramowitz teaches added minerals including magnesium, potassium and others (paragraph 20). Abramowitz teaches adding other elements including vitamins like vitamin C (paragraph 21).
One of ordinary skill in the art before the time of filing would have utilized pH values above 7 while also making the formulations by first adjusting the pH of the water and then adding concentrated mineral mixtures by the teachings of Abramowitz when making mineral water compositions of ‘069 to obtain improved alkaline water products with minerals and other components (see paragraph 1 of Abramowitz). The compositions of Abramowitz are primarily water and water would be seen as an acceptable for a carrier for mineral compositions. Both the claims of ‘069 and Abramowitz are to compositions with minerals for administration to a user.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant’s Arguments over the Rejections under Non-statutory Double Patenting
Applicant argues that the claims of the copending application are amended to be a method of oral or parenteral treatment or prevention of inflammation. However, the applicant’s claims in this application are a composition and the method claims of the copending application provide each of the limitations (lithium, magnesium and potassium salts with same molar ratio) of the composition although in method form. Thus, the claims of copending ‘069 provide for the limitations of the composition which obviates applicant’s composition claims. ‘069 in combination with Abramowitz further obviate the amount of water and pH of claims 5-6 as adjusting the total amount of water and the pH are seen as conventions/obvious modifications in the prior art. In addition, the claims of ‘069 allow for gelling agents which obviates the making of gel formulations. Therefore, this rejection is maintained.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached M-F 9:00 am to 6:00 pm EST.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
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