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/Restrictions
Applicant's election with traverse of Group I, claims 1-5 in the reply filed on 02/17/2026 is acknowledged. The traversal is on the ground(s) that:
Chang (EP0109820A1) is not considered an anticipatory reference;
combination of claim categories is expressly permitted by 37 CFR 1.475 (b) (1); Rule 475 (b) is not subservient to or in any way dependent upon Rule 475 (a); Under Section 206 of the Administrative Instructions Section (e ) (ii) of Annex B, examiner is obliged to observe in considering unity of invention;
no lack of unity objection was raised during international phase and according to Art 27(1) PCT, any designated office must accept an international application which complies with the PCT requirement of unity of invention.
This is not found persuasive because:
Chang reference does not have to be considered anticipatory reference, because prior art herein is to identify whether the claimed “special technical features” between the claim categories, when considered as a whole, define a contribution or not over the prior art. For this instance, the “special technical features” as “a copolymer composition comprising poly(itaconate)”, e.g., poly(oxyalkylene)itaconates, is taught by Chang. Further, as presented in this office action, the “special technical features” are taught by both Nabuurs and Shastry. Therefore, the technical feature lacks novelty or inventive step, which renders the combined claim categories lack of unity.
As MPEP 1850 PCT Rule 13.2 (Circumstances in which the requirement of unity of invention is to be considered fulfilled) specifies “[W]here a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.”
In MPEP 1850 I. (The requirement for “unity of invention”) states “PCT Rule 13.2, as it was modified effective July 1, 1992, no longer specifies the combinations of categories of invention which are considered to have unity of invention. Those categories, which now appear as a part of Chapter 10 of the International Search and Preliminary Examination Guidelines, may be obtained from the Patent Examiner’s Toolkit link or from WIPO’s website (www.wipo.int/pct/en/texts/gdlines.html ). The categories of invention in former PCT Rule 13.2 have been replaced with a statement describing the method for determining whether the requirement of unity of invention is satisfied. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more special technical features. The term "special technical features" is defined as meaning those technical features that define a contribution which each of the inventions considered as a whole, makes over the prior art.”
Examiner has taken thorough consideration and examination for unity of invention following MPEP 1850. II. Determination of “unity of invention”. Rule 475 (b) is not subservient to or in any way dependent upon Rule 475 (a), however, at meantime Rule 475 (a) has to be fully considered to determine unity of invention based upon whether the categories of claimed inventions have the “special technical features”, and whether such “special technical feature” define a contribution makes over the prior art. As a result from full consideration, the instant claimed categories lack unity of invention over prior art, because prior art teaches the shared “technical features”.
Art 27(1) PCT states in paragraph (1) “[N]o national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations”. Art 27 (1) only explicitly addresses the situation when the form or contents being different from international application, however, that does not mean if the international application is the same as national, any designated office must accept an international application if unity of invention is satisfied at international phase examination. On the contrary, Art 27(2) points out in paragraph (2) “The provisions of paragraph (1) neither affect the application of the provisions of Article 7(2) nor preclude any national law from requiring, …”. For this instance, national application of PCT case requires full independent examination on unity of invention.
In conclusion, the requirement is still deemed proper and is therefore made FINAL.
Claims 6-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/17/2026.
Status of Claims
Amendments filed on 02/17/2026 are acknowledged.
Claims 1, 6 and 11 are amended. Claims 1-16 are pending.
Claims 6-16 are withdrawn with traverse for being drawn to nonelected group upon restriction.
Claims 1-5 are being examined herein on merits.
Priority
This instant application 18572733, filed on 12/20/2023, is a 371 of PCT/EP2022/067062, filed on 06/22/2022, which claims foreign priority of France FR2106666, filed on 06/23/2021.
Objection to Specification
The use of the term Avène, Vittel, Vichy basin, Uriage, La Roche-Posay, La Bourboule, Enghien-les- Bains, Saint-Gervais-les-Bains, Néris-les-Bains, Allevard-les-Bains, Digne, Maizières, Neyrac-les-Bains, Lons-le-Saunier, Rochefort, Saint Christau, Les Fumades, Tercis-les-Bains, Bronzing SF Peptide Powder, Activos, Mlitane, Liptec, Alban Muller, Biotanning, Silab, etc., which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-5 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.
Claim 1 formula (IIf1) describes “or Y and Y’, which are different, representing…”. Since Y and Y’ are not shown in formula (IIf1), there is insufficient antecedent basis for this limitation in the claim. Further, Y and Y’ appeared earlier in formula (AIId1) with different definition and scope. It is unclear whether here the Y and Y’ are further defined by the radical formula (Y61), or Y and Y’ follows previous description under formula (IIf1). Similar unclear Y and Y’ situation appears in formula (IIg1), wherein Y and Y’ seem to be further defined by formula (Y71), while Y and Y’ lacks antecedent basis in formula (IIg1), presenting only Y7 and Y’7. The claim language generates conflicting limitations of Y and Y’ in the claim, and renders the claim indefinite.
Claim 1 also recites under formulas (Y71) and (Y81) “in which R’1-C(=O)-, represents a linear or branched, saturated or unsaturated …”. First, it is unclear how linear or branched, saturated or unsaturated is defined regarding R’1-C(=O)- group. If these structural features are supposed to define R’1 instead, revision is required to make this clear. Secondly, R’1 as same appearance in both (Y71) and (Y81) in same claim 1, the limitation on R’1 should remain the same to be coherent. However, the limitations of R’1 show different carbon atom numbers.
For the purpose of compact prosecution, Y and Y’ presences in formula (IIf1) and (IIg1) are not considered as alternatives of Y6 and Y’6, or Y7 and Y’7, and consequentially, the radical formula Y61 or Y71 does not further define the Y and Y’ as defined under formula (AIId1); the features defining R’1-C(=O)- in formulas (Y71) and (Y81) are interpreted as features for R’1- group alone, and in these two formulas R’1- has different limitation as defined.
Claim 2 recites “… as claimed in claim 1, further comprising between …”. Because claim 1 already indicates comprising oil (H1) and poly(itaconates) (P), using the word “further” makes the limitation scope unclear. It is unclear whether there are additional forms or weights in the composition of claim 1 in addition to the defined mass of oil (H1) and poly(itaconates) (P) in claim 2. This renders the claim indefinite. For the purpose of compact prosecution, the claim scope is interpreted as claim 1 comprising the defined mass amounts of H1 and P.
Claim 2 also recites mass percentage without defining the basis of percentage calculation, e.g., whether the mass of oil (H1) 20% and 80% is based upon the total oil (H2) amount or the total amount of the composition (C) is unknown; similarly, whether between 20% and 80% of poly(itaconates) (P) is based upon the total weight of the composition (C) is not unclear. For the purpose of compact prosecution, the mass percentages are interpreted as based upon total weight of the composition (C ).
Claims 3-5 are rejected accordingly because they directly depend on claim 1 and do not further clarify the issue addressed above of claim 1.
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 non-obviousness.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Nabuurs et al. (WO2013113938, 08/08/2013, PTO-892), in view of Shastry et. al. (CA2592843, 11/01/2011, PTO-892).
Nabuurs throughout the reference teaches a topical and/or personal care composition using biorenewable copolymers comprising various itaconate monomers (e.g., Abstract; Claim 1).
Regarding instant claim 1, Nabuurs teaches the composition can be in nonlimiting examples of personal care compositions including cosmetic compositions, hair care products, oral hygiene compositions, and others, and non-limiting examples of formulation type include creams, emulsions such as water in oil, oil in water, water in oil in water and oil in water in oil, lotions, pastes, salves, etc. (e.g., Pg. 69, bottom), and Nabuurs indicates that plant oils are among the examples of bio-renewable materials or organic materials from non-fossil biological sources (e.g., Pg. 57, middle), suggesting to artisans who have ordinary skills in the art that oil, or plant oil, can be included in the composition.
Nabuurs teaches the copolymer composition comprises at least 23% by weight of at least one monomer represented by Formula 1 (e.g., Pg. 103, Claim 1 (a)), as screenshot shown below:
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This monomer by Formula 1 represents poly(itaconate) (P) monomer unit A derived from formula (AIId1) in instant claim 1 wherein Y and Y’ are same or different, representing by radical R1O-, with R1 representing hydrocarbon-based aliphatic radical containing from 6 to 36 carbon atoms (Nabuurs Formula 1 shows overlapping carbon atom ranges from 4 to 10).
Nabuurs also teaches one or more monomers represented by Formula 2 (e.g., Pg. 103, Claim 1 (c)) , as screenshot shown below:
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Formula 2 above, when R3 and R4 represents H, and X1 and X2 represents O, corresponds to poly(itaconate)(P) monomer unit B derived from monomer of formula IIh1 in instant claim 1 wherein Y8 and Y’8 representing the HO- radical.
Regarding instant claim 2, Nabuurs teaches that the copolymer comprises component (a) is from 24 % to 70% by weight of one or more monomers represented by Formula 1, overlapping with between 20% and 80% mass of poly(itaconates).
Regarding instant claim 5, Nabuurs teaches a topical and/or personal care composition using biorenewable copolymers comprising various itaconate monomers (e.g., Abstract; Claim 1).
Nabuurs does not explicitly teach oil in the copolymer composition as recited in instant claim 1, poly(itaconates) mass or oil mass percentage based upon total weight of the composition as interpreted for instant claim 2. Nabuurs does not teach oil feature as specified in instant claim 3, or oil types in instant claim 4.
Shastry throughout the reference teaches tooth whitening composition comprising a porous cross-linked polymer loaded with a peroxide, wherein the porous cross-linked polymer can be polyitaconates (e.g., Abstract; [0007]; [0014]; Claim 1).
Shastry specifies that the composition can comprise acceptable carrier such as silicone polymer, wax, mineral oil, paraffin (e.g., [0035]; Claim 11) (corresponding to oil H1 and H2 in instant claim 1).
Shastry teaches that the composition can comprise hydrophobic organic materials such as waxes, mineral oil, liquid paraffin, at about 1 to about 85% weight of the composition (e.g., [0035]), overlapping with the range between 20% and 80% of oil as interpreted in instant claim 2. Shastry specifies that the porous polymer (e.g., polyitaconates) operable to sorb a peroxide compound [0012] and the resulting in peroxide composite comprises a peroxide compound at a level of about 50% to about 95% optionally about 70 to about 90% by weight of the peroxide composite (e.g., [0013]), revealing the porous polymer, e.g., polyitaconate, amount as about 5% to about 50%, overlapping with about 20% and 80% of polyitaconates in the composition as interpreted in instant claim 2.
Shastry teaches hydrophobic organic materials useful as adhesion enhancing agents including mineral oil (corresponding to instant claim 4), paraffin (e.g., [0035]), polysiloxane fluids with a viscosity, at 25 C (falling within temperature range between 4 C to 45 C in instant claim 3), of from about 1 cS to about 1000 cS [0038], and many others (e.g., [0035-0038]). Regarding the oil feature being liquid between 4 C and 45 C, it is considered the property of the oil, since prior art already teaches the oil, e.g., mineral oil, the property would necessarily present.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to implement teaching of Shastry into the polyitaconate composition of Nabuurs to arrive at current invention. Because Nabuurs already suggests that oil/water, or water/oil emulsion is suitable form for the composition, and points out that plant oil is renewable organic oil, while Shastry teaches using organic non-fossil source oil materials for the polyitaconate composition, it flows naturally to motivate artisans in the field to combine the references for the reasonable expectation of success. Therefore, the claimed invention is a simple combination of reagents known to be obvious materials that all already taught in prior art and discussed above. The idea for combining them flows logically from them having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The carbon numbers, mass amount, and temperature ranges overlap with those taught by prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding the phrase “for thickening polar or apolar oils” in claim 1, it is interpreted as intended use or property of the copolymer composition, which has been taught by Nabuurs and Shastry as discussed above in detail, and consequentially, the property would necessarily present, or the intended use would be capable of being achieved in the composition taught by prior art.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-21 of copending Application No. 18572726 (reference application, hereafter App’726). Although the claims at issue are not identical, they are not patentably distinct from each other.
App’726 recites in claim 17 composition C for thickening polar or apolar oils, comprising at least one oil (H1) and a poly(itaconate) (P), the poly(itaconate)(P) consists overlapping similar monomers as instant claim 1, e.g., formula (I) corresponding to instant claim 1 monomer B of formula IIh1 with substitution option Y81 ; formula (II) with R1 specified structural groups such as (IIb) (corresponding to instant claim 1 monomer unit A as (IIf1) with Y61 substituent), or R1 as (IIc) group corresponding to monomer of formula (IIg1 with Y71 option. Claims 18-21 are identical to instant claims 2-5.
App’726 already recite all instant claims, even though it does not list all the alternatives as in instant claim 1.
It would be obvious for a person with ordinary skills in the art to modify App’726 to arrive at current invention. Because App’726 has same ingredients with identical general structures of the poly(itaconate) (P), using substituents with certain similar variations for same compounds would have motivated artisans to explore and it is routine practice to implement isosteres with same properties. Moreover, simple substitution of one known element for another to obtain predictable results renders obviousness. See The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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