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 .
Claims Status
Claims 18-37 are pending and under current examination.
Claim Objections
Claim 34 is objected to because of the following informalities: Claim 34 recites “ore”. It is believed the claim meant to recite “or” oils and not “ore”. Appropriate correction is required.
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 22, 33, 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.
Claim 22 recites b) comprises one or more of followed by a selection of alternatives for b). The Markush grouping for part b) is being interpreted as selected from group comprising. It is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196.
Claim 33 does not contain the word “and” or “or” before the last element in the Markush group. Furthermore, the claim is being interpreted as an open ended Markush claim. This renders the claim indefinite because it fails to define a closed group. MPEP 2117(I) states that “alternatives may be set forth as a material selected from the group consisting of A, B, and C or wherein the material is A, B, or C.
Claim 34 recites further comprises one or more oils selected from however the scope of the claim is unclear because it is unclear if the Markush is open ended or closed (i.e. selected from the group consisting of). Therefore, it is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196.
Claim 36 recites further comprises one or more oils selected from however the scope of the claim is unclear because it is unclear if the Markush is open ended or closed (i.e. selected from the group consisting of). Therefore, it is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022). A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196.
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.
Claims 18-19, 21-28, 33 and 36 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Mintel GNPD record ID 1651982 “Baby Bodymilk” Oct 2011, ( Hereinafter referred to as Mintel ‘982-IDS filed 5/20/24).
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 1,2-diol ester. According to the instant specification, 1-2 diol esters include propylene glycol dicaprylate/dicaprate, see page 4 at lines 8-13.
Mintel ‘982 discloses a cosmetic product consisting of the following ingredients
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Therefore, Mintel ‘982 explicitly discloses a bottle made of HDPE ( high density polyethylene) and a cosmetic preparation which contains the propane 1-2 diol ester of propylene glycol dicaprylate/dicaprate which is 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.
Mintel ‘982 discloses 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, 21-28, 33 and 36.
Claims 18-19, 21-23, 24, 26-28, 35, and 37 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Mintel GNPD record ID 1796793 “Invisible Dry oil Sun Spray SPR 50” June 2012, ( Hereinafter referred to as Mintel ‘793-IDS filed 5/20/24).
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 1,2-diol ester. According to the instant specification, 1-2 diol esters include propylene glycol dibenzoate, see page 4 at lines 8-13
Mintel ‘793 discloses a cosmetic compositions with the following ingredients
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As such Mintel ‘793 explicitly disclose (a) bottle made of HDPE and a cosmetic preparation, Sun screen, which contains propylene glycol diester (propylene glycol 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) and denatured alcohol (i.e. includes ethanol).
Therefore the cosmetic composition disclosed by Mintel ‘793 fully anticipates instant claims 18-19, 21-23, 24, 26-28, 35, 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-IDS filed 5/20/24) 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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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 to 8 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 significant 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 21-33 and 35-37 are rejected under 35 U.S.C. 103(a) as being unpatentable over by Sonti et al. (United States Patent Publication 20190192445) in view of Alany-Rousseau (US 2018/0318183-IDS filed 5/20/24).
Sonti et al. teach topical formulations which include oil in water emulsions comprising an ester component in the oil phase which includes an ester such as propylene glycol dicaprylate, see paragraph [0062] and [0102]. The oil phase which can include the ester individually is present from 5-45% by weight, see paragraph [0074]. Antioxidants including tocopherol may be added to the emulsion , see paragraph [0095]. The oil phase can include cosolvents which include caprylic capric triglyceride, see paragraph [0121]. The oil phase can include mixtures of esters with vegetable oils including sunflower oil , see paragraphs [0059] and [0070]. The oil phase may be free of acrylates given these are in the alterative to agar gelling agents, see paragraph [0136], thus polyacrylates are not required. Examples of further cosolvents include ethanol, see paragraph [0121]. The product can be placed into storage container. See paragraph [0397].
However, Sonti et al. does not teach a packaging for the cosmetic which comprises high density polyethylene (HDPE), low-density polyethylene (LDPE), polypropylene or polyethylene terephthalate.
However, this deficiency is cured by Alany-Rousseau. Alany-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].
It would have been prima facie obvious to one of ordinary skill in the art of filing to include the cosmetic composition of Sonti et al. with the HDPE packaging embraced by Alany-Rousseau. One of ordinary skill would have been motivated to include the cosmetic composition of Sonti et al. in the packaging embraced by Alany-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 Alany-Rosseau teaches that the packaging is intended to contain a cosmetic preparation in the form of an O/W emulsion [0031]. The cosmetic product of Sonti et al. in view of Alany-Rousseau does not require a protective layer.
Regarding instant claims 23-24, in one embodiment the oil phase can be free of waxes and silanes or siloxanes or mineral oils because the esters can be used alone, see paragraph [0059].
Regarding instant claim 25, polyacrylates or acrylic polymers are not required given the gelling agent can comprise agar alone, see paragraph [0136]. Parabens are not required to be present in the composition given benzoic acid is used in the alternative to parabens as a preservative, see paragraph [0115]. Sonti et al. does not teach vinylpyrrolidone/hexadecane, 3-4-methylbenzylidene camphor, 2-hydroxy-4-methoxybenzophenone, 2-ethylhexyl 4-methoxycinnamate, ethylhexyl 2-cyano 3,3-diphenylacrylate, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, and PEG ethers or PEG esters, thus the composition is free of such components.
Claim 20 is rejected under 35 U.S.C. 103(a) as being unpatentable over by Sonti et al. (United States Patent Publication 20190192445) in view of Alany-Rousseau (US 2018/0318183) as applied to claims 18-19 and 21-33 and 35-37 above and further in view of Huang et al (Polymers and Polymer Composites, 2018, 26:91-98).
Sonti et al. in view of Alany-Rousseau fails to disclose the thickness of the HDPE bottle being used in the cosmetic preparation, of a wall thickness of 1-8 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 significant 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). One of ordinary skill in the art would have been motivated to provide the HDPE package of Sonti in view of Alany-Rousseau in order to provide an effect of the critical load of the bottle.
Claim 34 is rejected under 35 U.S.C. 103(a) as being unpatentable over by Sonti et al. (United States Patent Publication 20190192445) in view of Alany-Rousseau (US 2018/0318183) as applied to claims 18-19 and 21-33 and 35-37 above and further in view of Acme-Hardesty Company (The rising demand for esters and sustainable ingredients in the personal care market-2019).
The teachings of Sonti and Alany-Rosseau are discussed above, however neither Sonti nor Alany-Rosseau teach that the cosmetic further comprises triolein.
Acme-Hardesty teaches triolein is taught to provide high emolliency and rehydrate and soften skin, see page 5. Personal care products that use triolein include skin care products and lotions, see page 5.
It would have been prima facie obvious to include the cosmetic ingredient of triolein with the product of Sonti et al.
One of ordinary skill in the art would have been motivated to do so in order to provide hydration and softness to skin.
There would have been a reasonable expectation of success because both Sonti et al. and Acme-Hardesty teach cosmetic products.
Claims 18-19 and 21-35 and 37 are rejected under 35 U.S.C. 103(a) as being unpatentable over Müller et al. (DE202020003476U1) in view of Burgo (WO2005107685).
Müller et al. teach cosmetic products having HDPE, LDPE or polypropylene PET packaging and polycitronellol acetate, see page 2. The composition can take the form of a water in oil emulsion, see page 2. The formulation can comprise tocopherol in one embodiment which is free of parabens and paraffin and silicone oil and mineral oil and microcrystalline wax and shellac wax and polyethylene waxes and dimethicone, see page 2. In embodiment 4, the composition can comprise caprylic acid/capric acid triglycerides, and tocopheryl acetate. Ethylhexyl glycerin can also be present, see page 3.
Müller does not teach the presence of a propane 1,2-diol ester including propylene glycol dicaprate present at least 3% and within a range of 1-5% by weight.
However, Burgo teaches a cosmetic composition with propylene glycol dibenzoate as a preferred polyester which provides benefits in skin care application such as improvements in shine gloss, clarity and other aesthetic, and/or comfort properties, see paragraphs [0010], [0016], [0023] and [0044]. Propylene glycol dibenzoate can be added at 10% by weight, see paragraph [0044].
It would have been prima facie obvious to incorporate propylene glycol dibenzoate with the cosmetic product of Müller et al. in amounts including 10% by weight as taught by Burgo inured to improve shine, gloss and clarity of the cosmetic product. There would have been a reasonable expectation of success because both Müller et al. and Burgo are directed to cosmetic formulations.
Regarding instant claim 25, acylates/c10-30 acrylate crosspolymer is not required given examples 1-3 do not contain these polymers. Examples 1-4 are absent parabens thus parabens are not required. Examples 1-4 are also absent ethylhexyl methoxycinnamate thus it is not required and can be free of such. Muller et al. do not teach vinylpyrrolidone/hexadecene, 3-4-methylbenzylidene camphor, 2-hydroxy-4-methoxybenzophenone, , ethylhexyl 2-cyano 3,3-diphenylacrylate, methylisothiazolinone, chloromethylisothiazolinone, DMDM hydantoin, PEG ethers or PEG esters, thus the composition is free of such.
Claim 20 is rejected under 35 U.S.C. 103(a) as being unpatentable over Müller et al. (DE202020003476U1) in view of Burgo (WO2005107685) as applied to claims 18-19 and 21-35 and 37 above, and further in view of Huang et al (Polymers and Polymer Composites, 2018, 26:91-98).
The teachings of Müller et al. and Burgo are discussed above, however a thickness of the bottle is not disclosed as being from 1-8mm.
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 significant 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). One of ordinary skill in the art would have been motivated to provide the HDPE package of Muller in view of Burgo in order to provide an effect of the critical load of the bottle.
Claim 36 is rejected under 35 U.S.C. 103(a) as being unpatentable over Müller et al. (DE202020003476U1) in view of Burgo (WO2005107685) as applied to all claims 18-19 and 21-35 and 37 above, and further in view of Healthline (What’s good about sunflower oil for skin?-2019).
The teachings of Müller and Burgo are discussed above. Neither Müller nor Burgo teach a further oil which includes sunflower oil to the cosmetic product,
However, Healthline teaches that oils such as sunflower oil provide for more effective skin hydration and maintain the integrity of the skin’s outer layer when applied typically, see page 1-2.
It would have been prima facie obvious to incorporate sunflower oil with the cosmetic product of Müller. One of ordinary skill in the art would have been motivated to do so in order to improve the skin hydration.
There would have been a reasonable expectation of success because Müller recognizes that skin care cosmetic products are mostly used to moisturize and re-oil skin, see page 9.
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 34-36 of copending Application No. 18/569,286 in view of Sonti et al. (United States Patent Publication 20190192445).
Claims 18-37 are directed to an invention not patentably distinct from claims of claims 17-29 and 34-36 of commonly assigned Application 18569286.
Specifically, while the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims. The Application ‘286 claims like the instant claims 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 ( ingredient in ‘286 independent claim ). The preparation also contains tocopherol and one or more of almond oil, sunflower oil, and hydrogenated castor oil. Application ‘286 like the instant claims also claims propylene glycol diheptanoate or propylene glycol dicaprylate/dicaprate.
The difference between the instant claims however and that of Application ‘286 is the amount of the propylene glycol dicaprylate/dicaprate.
Sonti et al. teach topical formulations which include oil in water emulsions comprising an ester component in the oil phase which includes propylene glycol dicaprylate, see paragraph [0062] and [0102]. The oil phase which can include the ester individually is present from 5-45% by weight, see paragraph [0074]. Antioxidants including tocopherol may be added to the emulsion , see paragraph [0095]. The oil phase can include cosolvents which include caprylic capric triglyceride, see paragraph [0121]. The oil phase can include mixtures of esters with vegetable oils including sunflower oil , see paragraphs [0059] and [0070]. The oil phase may be free of acrylates given these are in the alterative to agar gelling agents, see paragraph [0136], thus polyacrylates are not required. Examples of further cosolvents include ethanol, see paragraph [0121]. The product can be placed into storage container. See paragraph [0397]. Sonti teaches that propylene glycol dicaprylate/dicaprate can be incorporated to help solubilize the active ingredient in the oil phase in amounts from 1-30% by weight, see paragraphs [0119]-[0121].
It would have been obvious to incorporate the cosmetic propylene glycol dicaprylate/dicaprate in amounts from 1-30% by weight to help solubilize the active ingredient of the cosmetic formulation of Application ‘286 in the oily phase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18/569,286, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 18-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-37 of copending Application No. 18/568928 in view of Burgo (WO2005107685).
Claims 18-37 are directed to an invention not patentably distinct from claims of commonly assigned Application 18568928.
Specifically, both the instant claims and that of Application ‘928 recite cosmetic products having HDPE, LDPE, PET or PP and a cosmetic ingredient which is inclusive of triolein and having a wall thickness of 1-8mm of the package. The product is free of silicone oil, mineral oil, dimethicone, paraffin wax, microcrystalline wax shellac wax and polyethylene waxes in both applications. Both Applicants are 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 and polyethylene glycol esters. Both Applications are w/o emulsions and can comprise caprylic capric triglycerides and polycitronellol acetate, tocopherol, sunflower oil and almond oil and propylene glycol dicaprate or propylene glycol dicaprylate/dicaprate.
The difference between the instant claims and that of Application ‘928 is the amount of the 1-2 diol esters present including propylene glycol dicaprate.
However, Burgo teaches a cosmetic composition with propylene glycol dibenzoate as a preferred polyester which provides benefits in skin care application such as improvements in shine gloss, clarity and other aesthetic, and/or comfort properties, see paragraphs [0010], [0016], [0023] and [0044]. Propylene glycol dibenzoate can be added at 10% by weight, see paragraph [0044].
It would have been obvious to incorporate propylene glycol dibenzoate with the cosmetic product Application ‘928 in amounts including 10% by weight as taught by Burgo inured to improve shine, gloss and clarity of the cosmetic product.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18/18568928 , discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 18-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-37 of copending Application No. 18/568375 in view of Burgo WO2005107685.
Claims 18-37 are directed to an invention not patentably distinct from claims of commonly assigned Application 18568375.
Specifically, both the instant claims and that of Application ‘375 recite cosmetic products having HDPE or LDPE or PP or PET packaging and a cosmetic preparation wherein the package has a wall thickness of 1-8mm having no protective layer. Both the instant claims and that of Application ‘375 can include propylene glycol dicaprate or propylene glycol diheptanoate. The composition is free of dimethicone, mineral oil, paraffin wax, microcrystalline wax, shellac was and 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, polyethylene glycol esters. Both the instant claims and that of Application ‘375 are in o/w emulsion form and can further comprise caprylic capric triglycerides, polycitronellol acetate and tocopherol or oils including almond oil.
The difference between the instant claims and that of Application ‘928 is the amount of the 1-2 diol esters present including propylene glycol dicaprate.
However, Burgo teaches a cosmetic composition with propylene glycol dibenzoate as a preferred polyester which provides benefits in skin care application such as improvements in shine gloss, clarity and other aesthetic, and/or comfort properties, see paragraphs [0010], [0016], [0023] and [0044]. Propylene glycol dibenzoate can be added at 10% by weight, see paragraph [0044].
It would have been obvious to incorporate propylene glycol dibenzoate with the cosmetic product Application ‘928 in amounts including 10% by weight as taught by Burgo inured to improve shine, gloss and clarity of the cosmetic product.
Accordingly, the instant claims are obvious over the claims of Application ‘375.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18/568375 , discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
Currently, no claims are allowed and all claims are rejected.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ALAWADI whose telephone number is (571)270-7678. The examiner can normally be reached Monday-Friday 10:00am-6:30pm EST.
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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