Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claims 1, 3, and 8 are pending. Note that, Applicant’s response filed June 30, 2026, has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 3/30/26 have been withdrawn:
The rejection of claims 1 and 3 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inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, has been withdrawn.
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.
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 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 1, 3, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fhaner et al (US 10,137,071), Dhamdhere et al (US 9,452,119), or WO2005/041905.
With respect to independent, instant claim 1, Fhaner et al teach compounds and compositions that are useful as antioxidants in personal care formulations. The compounds contain both nitrone and phenolic functionalities, wherein these compounds clearly would fall within the scope of the instant claims. See Abstract. Compositions of the invention can also include a dermatologically acceptable carrier. Such material is typically characterized as a carrier or a diluent that does not cause significant irritation to the skin and does not negate the activity and properties of active agent(s) in the composition. Examples of dermatologically acceptable carriers that are useful in the invention include, without limitation, emulsions, creams, aqueous solutions, oils, ointments, pastes, gels, lotions, milks, foams, suspensions, powders, or mixtures thereof. In some embodiments, the composition contains from about 99.99 to about 50 percent by weight of the dermatologically acceptable carrier, based on the total weight of the composition. The dermatologically acceptable carrier of the invention may also include, for instance, water, etc. See column 10, lines 1-35. Note that, the Examiner asserts compound as taught by Fhaner et al would inherently release a ketone or aldehyde when exposed to water and/or air as recited by the instant claims because Fhaner et al specifically teach compounds which are the same as recited by the instant claims in the presence of water and/or air. Fhaner et al disclose the claimed invention with sufficient specificity to constitute anticipation.
With respect to independent, instant claim 1, Dhamdhere et al teach compounds and compositions that are useful as antioxidants in personal care formulations. The compounds contain both nitrone and phenolic functionalities, wherein these compounds clearly would fall within the scope of the instant claims. See column 1, lines 15-20. Compositions of the invention also include a dermatologically acceptable carrier. Such material is typically characterized as a carrier or a diluent that does not cause significant irritation to the skin and does not negate the activity and properties of active agent(s) in the composition. Examples of dermatologically acceptable carriers that are useful in the invention include, without limitation, emulsions, creams, aqueous solutions, oils, ointments, pastes, gels, lotions, milks, foams, suspensions, powders, or mixtures thereof. In some embodiments, the composition contains from about 99.99 to about 50 percent by weight of the dermatologically acceptable carrier, based on the total weight of the composition. See column 7, lines 25-60. The dermatologically acceptable carrier of the invention may also include, for instance, water, a thickener, an emollient, an emulsifier, a humectant, a surfactant, a suspending agent, a film forming agent, a foam building agent, a preservative, an antifoaming agent, a fragrance, a lower monoalcoholic polyol, a high boiling point solvent, a propellant, a colorant, a pigment, glycerin, a mineral oil, silicon feel modifiers, preservatives, emollients, or mixtures thereof. See column 7, lines 25-60. Note that, the Examiner asserts compound as taught by Dhamdhere et al would inherently release a ketone or aldehyde when exposed to water and/or air as recited by the instant claims because Dhamdhere et al specifically teach compounds which are the same as recited by the instant claims in the presence of water and/or air. Dhamdhere et al disclose the claimed invention with sufficient specificity to constitute anticipation.
With respect to independent, instant claim 1, ‘905 a stabilized composition comprising (a) a body care product, household product, textile or fabric and (b) an effective stabilizing amount of at least one compound selected from the group consisting of the dialkylhydroxylamine stabilizers, the dialkylhydroxylamine stabilizer salts, the nitrone stabilizers, and the amine oxide stabilizers. See pages 1 and 2. The nitrone stabilizers taught by ‘905 are the same as recited by the instant claims. See page 5. Example 10 discloses compounds which are the same as recited by the instant claims. See page 25. The present body care products can be in the form of creams, ointments, pastes, foams, gels, lotions, powders, make-ups, sprays, sticks or aerosols. The present stabilizer systems may be present in the oil phase or in the aqueous or aqueous/alcoholic phase. See page 16. Note that, the Examiner asserts compound as taught by ‘905 would inherently release a ketone or aldehyde when exposed to water and/or air as recited by the instant claims because ‘905 specifically teach compounds which are the same as recited by the instant claims in the presence of water and/or air. ‘905 disclose the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of Fhaner et al, Dhamdhere et al, or ‘905 anticipate the material limitations of independent, instant claim 1 and the respective dependent claims.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 102 using Fhaner et al, Dhamdhere et al, or WO2005/041905, Applicant states that while it is possible to remove the nitrone from the compounds taught by Fhaner et al, Dhamdhere, pr ‘905, it is not necessarily so. Additionally, Applicant states that because nitrone is essential to Fhaner et al, Dhamdhere et al, or ‘905, the skilled person would have avoided any processes that remove the nitrone group (as it would no longer function as a radical scavenger).
In response, note that, as stated above, note that, the Examiner asserts that the compounds as taught by Fhaner et al, Dhamdhere et al, or ‘905 would inherently release a ketone or aldehyde when exposed to water and/or air as recited by the instant claims because Fhaner et al, Dhamdhere et al, or ‘905 specifically teach compounds which are the same as recited by the instant claims (i.e., the same as Formula I) in the presence of water and/or air. This is evidenced by pages 11 and 12 of the instant specification in which it states that a ketone or aldehyde of Formula (II) is released from the compound of Formula (I) when the compound of Formula (I) is simply exposed to oxygen in the air or water, wherein this method is clearly taught by Fhaner et al, Dhamdhere et al, or ‘905. Thus, the Examiner asserts that the teachings of Fhaner et al, Dhamdhere et al, or ‘905 are sufficient to anticipate the claimed invention under 35 USC 102.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/August 24, 2026
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