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 18-37 are pending and are under consideration in the instant office action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/04/2024 complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits. See attached copy of the PTO-1449.
Priority
This application is a U.S. National phase application under 35 U.S.C 371 of PCT application PCT/EP2022/065646, filed 06/09/2022 which claims benefit under Title 35 U.S.C 119 to German patent application no. DE10 2021 206 043.9 filed on 06/14/2021. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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.
Claims 22, 27-28 , 31 33, 34, 35 and 37 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 27-28 are indefinite because they recite "wherein (b) is free of polyacrylates polyethylene glycol ethers, polyethylene glycol esters". This claim is indefinite because it is not clear whether the composition is free of one of these components (i.e., wherein (b) is free of polyethylene glycol ethers, or polyethylene glycol esters) or the composition is polyacrylates free of all of these components (i.e., wherein (b) is free of polyacrylates polyethylene glycol ethers, and polyethylene glycol esters). To overcome this rejection either "or" or "and" can be added before the last term in each claim.
Claim 31 recites the limitation "an oil phase of (b)" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 22, 33, 34, 35 and 37 do not contain the word "and" or "or" before the last element of the Markush group. This renders the claim indefinite because it fails to define a closed group. Please refer to MPEP 2117(I), which states: "alternatives may be set forth as 'a material selected from the group consisting A, B, and C' or "wherein the material is A, B, or C".
Claim Rejections - 35 USC § 102
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, 21-22, 24-30, 29-30, 33 and 37 are rejected under 35 U.S.C. 102 (a) (1) and under 35 U.S.C 102(a)(2) as being anticipated by Mintel GNPD record ID 1651982 “Baby Bodymilk” Oct 2011, ( Hereinafter referred to as Mintel ‘982, referenced in instant IDS)
.Instant claims are drawn to a cosmetic product, wherein the product comprises (a) a packaging of high-density polyethylene (HDPE), low-density polyethylene (LDPE), polypropylene (PP) or polyethylene terephthalate (PET), and(b) a cosmetic preparation comprising one or more propylene glycol diesters.
Mintel ‘982 discloses a cosmetic product consisting of the following ingredients
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And they disclose their packaging as follows:
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Therefore they explicitly disclose
(a) bottle made of HDPE and a cosmetic preparation which contains propylene glycol diester (propylene gylcol dicaprylate/dicaprate), with no protective layer, which his free from dimethicone, silicone oil, mineral oil, paraffin wax, microcrystalline wax, shellac wax, polyethylene waxes, is free of polyacrylates, crosslinked acrylate/C10-C30 alkyl acrylate polymers, vinylpyrrolidone/hexadecene copolymers, 3-(4-methylbenzylidene)camphor, 2-hydroxy-4-methoxybenzophenone, 2- ethylhexyl 4-methoxycinnamate, ethylhexyl 2-cyano-3,3-diphenylacrylate, parabens, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, polyethylene glycol ethers, polyethylene glycol esters. They disclose their product to be in the form of an oil-in-water emulsion and that their compound further comprises of caprylic/capric triglycerides and almond oil (Prunus dulcis oil). (see the entire document)
Therefore the cosmetic composition disclosed by Mintel ‘982 fully anticipates instant claims 18-19, 21-22, 24-30, 33 and 37.
Claims 18-19, 21-22, 24-26, 29-30 and 36 are rejected under 35 U.S.C. 102 (a) (1) and under 35 U.S.C 102(a)(2) as being anticipated by Mintel GNPD record ID 1796793 “Invisible Dry oil Sun Spray SPR 50” June 2012, ( Hereinafter referred to as Mintel ‘793 referenced in instant IDS)
Instant claims are as stated above. Mintel ‘793 discloses a cosmetic compositions with the following ingredients
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And the following package:
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As such they explicitly disclose (a) bottle made of HDPE and a cosmetic preparation, Sun screen, which contains propylene glycol diester (propylene gylcol dibenzoate ), with no protective layer, which his free from dimethicone, silicone oil, mineral oil, paraffin wax, microcrystalline wax, shellac wax, polyethylene waxes. They disclose their product to be in the form of an oil-in-water emulsion and that their compound further comprises of tocopherol (see the entire document)
Therefore the cosmetic composition disclosed by Mintel ‘793 fully anticipates instant claims 18-19, 21-22, 24-26, 29-30 and 36.
Claims 18-19, 21-23, 25, 27, 29-30 and 37 are rejected under 35 U.S.C. 102 (a) (1) and under 35 U.S.C 102(a)(2) as being anticipated by Mintel GNPD record ID 9274750 “Pear Blossom Body Moisturizer” June 2012, ( Hereinafter referred to as Mintel ‘750 referenced in instant IDS)
Instant claims are as stated above. Mintel ‘750 discloses a cosmetic compositions with the following ingredients
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And the following package:
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As such they explicitly disclose (a) bottle made of PET and a cosmetic preparation, Moisturizer which contains propylene glycol diester (propylene gylcol diheptanoate ), with no protective layer, no silicone oil, mineral oil, paraffin wax, microcrystalline wax, shellac wax, polyethylene waxes. is free of polyacrylates, crosslinked acrylate/C10-C30 alkyl acrylate polymers, vinylpyrrolidone/hexadecene copolymers, 3-(4-methylbenzylidene)camphor, 2-hydroxy-4-methoxybenzophenone, 2- ethylhexyl 4-methoxycinnamate, ethylhexyl 2-cyano-3,3-diphenylacrylate, parabens, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, polyethylene glycol ethers, polyethylene glycol esters. They disclose their product to be in the form of an oil-in-water emulsion and that their compound further comprises almond oil (Prunus dulcis oil). (see the entire document)
Therefore the cosmetic composition disclosed by Mintel ‘750 fully anticipates instant claims 18-19, 21-23, 25, 27, 29-30 and 37.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 20 is rejected under 35 U.S.C. 103(a) as being unpatentable over by Mintel GNPD record ID 1651982 “Baby Bodymilk” Oct 2011, ( Hereinafter referred to as Mintel ‘982, referenced in instant IDS) in view of Huang et al (Polymers and Polymer Composites, 2018, 26:91-98)
Instant claims are as recited above.
Mintel ‘982 teachings are reiterated below
Mintel ‘982 discloses a cosmetic product consisting of the following ingredients
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And they disclose their packaging as follows:
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Therefore they explicitly disclose
(a) bottle made of HDPE and a cosmetic preparation which contains propylene glycol diester (propylene glycol dicaprylate/dicaprate), with no protective layer, which his free from dimethicone, silicone oil, mineral oil, paraffin wax, microcrystalline wax, shellac wax, polyethylene waxes, is free of polyacrylates, crosslinked acrylate/C10-C30 alkyl acrylate polymers, vinylpyrrolidone/hexadecene copolymers, 3-(4-methylbenzylidene)camphor, 2-hydroxy-4-methoxybenzophenone, 2- ethylhexyl 4-methoxycinnamate, ethylhexyl 2-cyano-3,3-diphenylacrylate, parabens, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, polyethylene glycol ethers, polyethylene glycol esters. They disclose their product to be in the form of an oil-in-water emulsion and that their compound further comprises of caprylic/capric triglycerides and almond oil (Prunus dulcis oil). (see the entire document)
Mintel ‘923 fails to disclose the thickness of the HDPE bottle being used in their cosmetic preparation, has a h a wall thickness of 1.1 mm-1.3 mm.
However, Huang et al. teaches an HDPE bottle with a wall thickness of 1.1 mm-1.3 mm. Huang et al teaches that the thickness of the HDPE bottle has a signi8ficnant effect on the critical load of the bottle (pages 94-95).
Where 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. See MPEP 2144.05(II)(A). In this case, the general condition of the HDPE bottle thickness has been taught by the prior art (Huang et al.); as such, it would not have been inventive for the skilled artisan to have discovered the optimum HDPE thickness via routine experimentation to support the load in the bottle as taught by Huang et al(pg. 94-95).
Claims 18-19 and 21-37 are rejected under 35 U.S.C. 103(a) as being unpatentable over by Mongiat et al. (WO 2009/016064) in view of Alany-Rousseau (US 2018/0318183)
Instant claims are as recited above
Regarding claims 17, 18, 20 and 21, Mongiat teaches cosmetic formulations that may contain Propylene Glycol Behenate, Propylene Glycol Caprylate, Propylene Glycol Ceteth-3 Acetate, Propylene Glycol Ceteth-3 Propionate, Propylene Glycol Cocoate, Propylene Glycol Dibenzoate, Propylene Glycol Heptanoate, Propylene Glycol Hydroxystearate, Propylene Glycol Isoceteth-3 Acetate, Propylene Glycol Isostearate, Propylene Glycol Laurate, Propylene Glycol Linoleate, Propylene Glycol Linolenate, Propylene Glycol Myristate, Propylene Glycol Myristyl Ether Acetate, Propylene Glycol Oleate, Propylene Glycol Ricinoleate, Propylene Glycol Soyate, Propylene Glycol Stearate,as a lipophilic emollient (pg. 27 lines 19-25). , Mongiat teaches that the end formulation may be a liquid O/W emulsion (pg. 45). Mongiat teaches that dimethicone may be present as an emulsifier (pg. 17) or an emollient (pg. 24, 25, 37, and 39). However, the dimethicone are presented as one option in a list of alternatives. For example, the emulsifier may also be a sorbitan derivatives such as sorbitan oleate (pg. 14) and the emollient may be chosen from an extensive list of alternatives (pg. 23-28). The Examiner therefore considers the teachings of Mongiat to read on the "free of dimethicone" limitation of the instant claim. Mongiat teaches that the lipophilic component is preferably a natural or synthetic or partially synthetic di-or triglyceride, a mineral oil, silicone oil, wax, fatty alcohol, guerbert alcohol or ester thereof, or a mixture of these substances (pg. 22). Silicone oil may also be present as an active agent protecting against chemical and mechanical attack (pg. 40). The silicone oil, mineral oil, and wax are presented as options in a list of alternatives that are not prohibited by the instant claim. The Examiner therefore considers the teachings of Mongiat to read on the limitations of the instant claim 25-26. Mongiat teaches that polyacrylates may be present as active agents protecting against chemical and mechanical attack (pg. 40), polyparaben may be present as a preservative (pg. 23), and PEG derivatives may be present as an emulsifier (pg. 17 and 22) and an emollient (pg. 23-42, included in several extensive lists). However, these components are presented as options in an extensive list of alternatives for compounds that may serve that specific function in the formulation. The Examiner therefore considers the teachings of Mongiat to read on the limitations of the instant claim 27-28. It is noted that Mongiat is silent with regards to vinylpyrrolidone/hexadecene copolymers, 3-(4- methylbenzylidene)camphor, 2-hydroxy-4-methoxybenzophenone, 2-ethylhexyl 4- methoxycinnamate, ethylhexyl 2-cyano-3,3-diphenylacrylate, methylisothiazolinone, chloromethylisothiazolinone, and DMDM hydantoin and therefore reads on the "free of vinylpyrrolidone/hexadecene copolymers, 3-(4-methylbenzylidene)camphor, 2-hydroxy-4- methoxybenzophenone, 2-ethylhexyl 4-methoxycinnamate, ethylhexyl 2-cyano-3,3- diphenylacrylate, methylisothiazolinone, chloromethylisothiazolinone, and DMDM hydantoin" limitations of instant claims 27 and 28. Mongiat teaches that the end formulation may be a liquid O/W emulsion (pg. 45). Mongiat teaches that the emollient is present in a concentration of preferably 0.1 to 80% by weight based on the total weight of all components of the composition (pg. 42). Mongiat teaches that the nanodispersion pre-phase is formed by first mixing the membrane forming molecule, coemulsifier, and lipophilic component to form a homogeneous liquid is obtained and then added the water of aqueous phase (pg. 2). The emollient is present in a concentration of preferably 0.1 to 80% by weight based on the total weight of all components of the composition (pg. 42). Mongiat teaches that caprylic/capric triglyceride (pg. 34), PEG-9 cocoglycerides (pg. 30 and 32), and tridecyl stearate (pg. 28) may be present as the lipophilic component. Mongiat teaches that triolein (pg. 35) may be present as the lipophilic component. Mongiat teaches that an additional antioxidant present in the composition is preferably selected from a group consisting of tocopherols (pg. 10). Mongiat teaches that almond oil, sunflower oil (pg. 41), and hydrogenated castor oil (pg. 34) may be present as the lipophilic component.
Mongiat does not teach a packaging for the cosmetic preparation.
However, this deficiency is cured by Alanya-Rousseau. Alanya-Rousseau teaches a cosmetic packaging made of HDPE, LDPE, or PP in combination with 1-propylene-ethylene copolymer [0009]. The packaging has a soft-touch feel and is storage-stable in that the oil absorption of the plastic packaging is significantly reduced, without it being necessary to apply a protective layer to the plastic [0006]. The packaging is intended to contain a cosmetic preparation in the form of an O/W emulsion [0031]. Finding of a Prima Facia Obviousness Rationale and Motivation (MPEP 2142-2143), it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to include the cosmetic formulation of Mongiat in the packaging embraced by Alanya-Rousseau. One would have understood in view of Alanya- Rousseau that the cosmetic packaging comprised of HDPE, LDPE, or PP in combination with 1- propylene-ethylene copolymer has a significantly reduced oil-absorption [0006]. It would have been obvious to one of ordinary skill in the art of filing to include the cosmetic composition of Mongiat in the packaging embraced by Alanya-Rousseau. One of ordinary skill would have been motivated to include the cosmetic composition of Mongiat in the packaging embraced by Alanya-Rosseau in order to reduce the oil-absorption of the packaging and increase the storage-stability of the product. The artisan of ordinary skill would have had reasonable expectation of success because Alanya-Rosseau teaches that the packaging is intended to contain a cosmetic preparation in the form of an O/W emulsion [0031].
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 claims at issue 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); 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 18-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-29 and 33-36 of copending Application No. 18/568,286, claims 16-35 of copending Application No. 18/568,928, and claims 18-37 of copending Application No. 18/580,223.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims. Inter alia, the claims of the '286, '928, and '223 applications embrace a cosmetic product wherein the product comprises a packaging of HDPE, LDPE, PP, or PET with a wall thickness of 1mm to 8mm and a cosmetic preparation. The packaging does not have any protective layer on an inner side which faces the cosmetic preparation. The cosmetic preparation is free of dimethicone, silicone oil, mineral oil, paraffin wax, microcrystalline wax, shellac wax, polyethylene waxes, polyacrylates, crosslinked acrylate/C10-C30 alkyl acrylate polymers, vinylpyrrolidone/hexadecene copolymers, 3-(4-methylbenzylidene)camphor 2-hydroxy-4- methoxybenzophenone, 2- ethylhexyl 4-methoxycinnamate, ethylhexyl 2-cyano-3,3- diphenylacrylate, parabens, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, polyethylene glycol ethers, and polyethylene glycol esters. The cosmetic preparation is in the form of an O/W emulsion. The preparation further comprises one or more of octyldodecanol, caprylic/capric triglyceride, cocoglycerides, tridecyl stearate, and tridecyl trimellitate and one or more oils selected from polycitronellol, polycitronellol acetate, triolein (ingredient in ‘928 independent claim), ethylhexyl acetoxystearate, and acetyl ethylhexyl polyhydroxystearate ( ingredient in ‘286 independent claim ). The preparation also contains tocopherol and one or more of almond oil, sunflower oil, and hydrogenated castor oil.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 18-37 are rejected. No claims are allowed
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAVITHA RAO whose telephone number is (571)270-5315. The examiner can normally be reached on Mon-Fri 7 am to 4 pm..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVITHA M RAO/ Primary Examiner, Art Unit 1691