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 17-36 are pending and under current examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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 26, 27, 32-34, and 36 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 26 and 27 contain a list of components that the cosmetic preparation of claim 17 may not contain. However, the list of components does not contain a conjunction before the last element in the list (i.e. “and” or “or”). This renders the claim indefinite because it is not clear if the cosmetic preparation must be free of all of the elements on the list or just one element of the list.
Claim 32 recites the limitation "an oil phase of (b)" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 33, 34, and 36 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 § 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.
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.
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.
Claims 17, 18, 20, 21, and 23-36 are rejected under 35 U.S.C. 103 as being unpatentable over Mongiat (WO 2009/016064, publication date: 2/5/2009) in view of Alanya-Rousseau (U.S. Patent Application Publication No. 2018/0318183, publication date: 11/8/2018).
Applicant’s Invention
Applicant’s claim 17 is 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 ethylhexyl oxystearate esters.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 17, 18, 20 and 21, Mongiat teaches cosmetic formulations that may contain ethylhexyl acetoxystearate as a lipophilic emollient (pg. 25 line 13).
Regarding claims 28 and 29, Mongiat teaches that the end formulation may be a liquid O/W emulsion (pg. 45).
Regarding claim 23, Mongiat teaches that dimethicones may be present as an emulsifier (pg. 17) or an emollient (pg. 24, 25, 37, and 39). However, the dimethicones 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.
Regarding claims 24 and 25, 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 24.
Regarding claims 26 and 27, 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. 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 26 and 27.
Regarding claims 28 and 29, Mongiat teaches that the end formulation may be a liquid O/W emulsion (pg. 45).
Regarding claim 30 and 31, 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).
Regarding claim 32, 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).
Regarding claim 33, 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.
Regarding claim 34, Mongiat teaches that triolein (pg. 35) and propylene glycol dibenzoate (pg. 27) may be present as the lipophilic component.
Regarding claim 35, Mongiat teaches that an additional antioxidant present in the composition is preferably selected from a group consisting of tocopherols (pg. 10).
Regarding claim 36, Mongiat teaches that almond oil, sunflower oil (pg. 41), and hydrogenated castor oil (pg. 34) may be present as the lipophilic component.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 17, 18, and 20, 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)
Regarding claims 17, 18, and 20, 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].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Mongiat (WO 2009/016064, publication date: 2/5/2009) in view of Alanya-Rousseau (U.S. Patent Application Publication No. 2018/0318183, publication date: 11/8/2018), as applied to claims 17, 18, 20, 21, and 23-36 above, and further in view of XinFuDa (available 6/2/2021).
Applicant’s Invention
Mongiat, in view of Alanya-Rousseau, renders obvious the relevant limitations of claim 17 above. Applicant’s claim 19 further adds the limitation of the cosmetic product of claim 17, wherein (a) has a wall thickness of from 1 mm to 8 mm.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Mongiat, in view of Alanya-Rousseau, teaches the relevant limitations above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Mongiat, in view of Alanya-Rousseau, does not teach a wall thickness of the packaging. However, this deficiency is cured by XinFuDa.
XinFuDa teaches that HDPE bottles are particularly prone to deformation and that if the wall thickness difference between the longitudinal wall thickness and the radial wall thickness is too large, it is easy to deform the bottle (pg.1 no. 5).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
The wall thickness of the packaging is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal wall thickness in order to best achieve the desired results as such would provide advantageous structural effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. 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. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, XinFuDa teaches that HDPE bottles are particularly prone to deformation and that if the wall thickness difference between the longitudinal wall thickness and the radial wall thickness is too large, it is easy to deform the bottle (pg.1 no. 5). The Examiner considers it prima facie obvious to optimize the wall thickness of the cosmetic packaging, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the wall thickness would have a direct effect on the durability of the bottle against deformation and therefore be an optimizable variable.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Mongiat (WO 2009/016064, publication date: 2/5/2009) in view of Alanya-Rousseau (U.S. Patent Application Publication No. 2018/0318183, publication date: 11/8/2018), as applied to claims 17, 18, 20, 21, and 23-36 above, and further in view of Biosynthetic Technologies (available 2020).
Applicant’s Invention
Mongiat, in view of Alanya-Rousseau, renders obvious the relevant limitations of claim 17 above. Applicant’s claim 22 further adds the limitation of the cosmetic product of claim 17, wherein (b) comprises acetyl ethylhexyl polyhydroxystearate.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Mongiat, in view of Alanya-Rousseau, teaches the relevant limitations of claim 17 above.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Mongiat does not teach the inclusion of acetyl ethylhexyl polyhydroxystearate in the cosmetic composition. However, this deficiency is cured by Biosynthetic Technologies.
Biosynthetic Technologies teaches that ethylhexyl acetoxystearate and acetyl ethylhexyl polyhydroxystearate are both stable bio-derived sustainable emollients suitable for inclusion in various cosmetic compositions (pg. 1). Both compounds may serve as a biobased silicone replacement (pg. 2 Products Features and Benefits).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (ethylhexyl acetoxystearate and acetyl ethylhexyl polyhydroxystearate as cosmetic emollients). See MPEP 2144.06 (II).
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 17-29 and 33-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 18-37 of copending Application No. 18/568,375,
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 ‘375, ‘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, ethylhexyl acetoxystearate, and acetyl ethylhexyl polyhydroxystearate. 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.
Claims 30-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 18-37 of copending Application No. 18/568,375,
claims 16-35 of copending Application No. 18/568,928,
and claims 18-37 of copending Application No. 18/580,223,
as applied to claims 17-29 and 33-36 above, and further in view of Mongiat (WO 2009/016064, publication date: 2/5/2009).
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 ‘375, ‘928, and ‘223 applications embrace the relevant limitations above. The claims of the ‘‘375, ‘928, and ‘223 applications do not teach a weight percentage of ethylhexyl oxystearate esters present in the cosmetic composition. However, this deficiency is cured by Mongiat. Mongiat teaches nanodispersion cosmetic formulations that may contain ethylhexyl acetoxystearate as a lipophilic emollient (pg. 25 line 13). Mongiat also 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). 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).
Regarding the weight percentage of ethylhexyl oxystearate esters as specified in the instant claims 30-32, MPEP 2144.05 states:
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, Mongiat teaches that ehthylhexyl oxystearate esters may be present as an emollient in a O/W emulsion cosmetic in a weight percentage range of 0.1 to 80% by weight based on the total weight of all components of the composition (pg. 42). The Applicants' specification provides no evidence that the selected weight percentages in the instant claims 30-32 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the emollient properties of the ethylhexyl oxystearate esters, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage to lie within the range embraced by Mongiat. One of ordinary skill in the art would have been motivated to change the weight percentage as this could be expected to be advantageous for the emollient properties of the composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617 /ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614