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 Application
The Amendments and Remarks filed on 03/05/26 are acknowledged.
Claims 1 and 17-19 were amended.
Claims 1-20 are pending and are included in the prosecution.
Response to Amendments/Arguments
Objection to claim 18
In light of the amendment of claim 18, the objection to this claim is withdrawn.
Rejection of claims under 35 USC § 103
Applicant amended claims 1 and 19 to recite that the sodium cocoyl isethionate is present in an amount of 5% to 15% by weight of the acne care composition. In light of this amendment, Applicants’ arguments (Pages 6-14, filed 03/05/26) regarding the following rejections under 35 U.S.C. 103 have been fully considered and are persuasive.
Rejection of claims 1-4, 6-16, and 18-20 under 35 U.S.C. 103 as being unpatentable over Tan et al. (WO 2022/162620 A2 – “Tan”) in view of Schelges et al. (US 2017/0071842 A1 – “Schelges”)
Rejection of claims 5 and 17 under 35 U.S.C. 103 as being unpatentable over Tan in view of Schelges and Blotsky et al. (US 2010/0129465 A1 – “Blotsky”)
Since Tan, Schelges, and Blotsky do not expressly teach or suggest that the sodium cocoyl isethionate is present in an amount of 5% to 15% by weight of the acne care composition, the previous obviousness rejections are withdrawn.
However, upon further consideration of the amended claims, a new ground(s) of rejection is made in view of a new supporting reference, Bhatia et al. (US 7,479,289 B2).
Since the new grounds of rejection were necessitated by Applicant’s amendment, this action is made FINAL.
New Objection necessitated by Applicant’s Amendment
Claim Objections
Claims 1 and 19 are objected to because of the following informalities: In claims 1 and 19, part a), the phrase “… present from 5% to 15% …” should be amended to recite “… present in an amount of from 5% to 15% … Appropriate correction is required.
Notice for all US Patent Applications filed on or after March 16, 2013
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 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.
New Rejections Necessitated by Amendment
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 of this title, 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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed 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 1-4, 6-16, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (WO 2022/162620 A2 – “Tan”) in view of Bhatia et al. (US 7,479,289 B2 – “Bhatia”) and Schelges et al. (US 2017/0071842 A1 – “Schelges”).
The claimed invention is an acne care composition, comprising:
a) at least one surfactant comprising sodium cocoyl isethionate present from 5% to 15%, by weight of the acne care composition;
b) at least one glycolipid;
c) at least one beta hydroxy acid;
d) at least one clay; and
e) at least one cosmetically acceptable solvent comprising water and glycerin,
wherein the acne care composition demonstrates peak shear stress in a range from about 100 to about 1000 Pa at shear rate in the range from 1 1/s - 100 1/s, followed by a sharp drop in viscosity when shear stress is maintained.
Tan teaches a cleansing composition providing enhanced deposition of salicylic acid for acne treatment (Title, Abstract, Examples – [00102] – [00133], and claims 1-20). A cosmetic composition that is a cleanser includes at least one surfactant (Abstract), wherein the surfactant is sodium cocoyl isethionate ([0064]). A cosmetic composition for treating acne includes at least one acne treatment active that includes at least one beta hydroxy acid (Abstract), wherein the at least one beta hydroxy acid comprises salicylic acid ([0008], claims 1 and 5). Optional ingredients in the composition include the clay kaolin ([0018], [0091], [0092]). The cosmetic composition includes water ([0068]-[0070]) and glycerin ([0073]-[0075]).
Tan does not expressly teach that the sodium cocoyl isethionate is present from 5% to 15%, by weight of the acne care composition; or part b) at least one glycolipid.
Bhatia teaches stable cleanser compositions for the treatment of acne rosacea and acne vulgaris (Abstract, Example 2 – Col. 9, lines 30-40, and claim 1). Sodium cocoyl isethionate is disclosed as a suitable emulsifier (Col. 3, lines 20-27), and as a preferred surfactant that behaves as an emulsifier (Col. 7, lines 12-19). Skin treatment compositions comprise sodium cocoyl isethionate (EXAMPLE 3 – Col. 9, lines 58-62) at 8.50% (TABLE 3), and at 6.50% (TABLES 4 and 5, claim 1) by weight of the composition.
Schelges teaches cosmetic cleansing agents including biosurfactants in combination with anionic surfactants (Abstract and claims 1-10). The cosmetic cleansing agent is formulated for cosmetically treating acne (claims 8 and 9). Anionic surfactants include sodium salts ([0053]) of acyl isethionates having 8 to 24 C atoms in the acyl group ([0057]). The biosurfactant includes the glycolipids rhamnolipids ([0016] - # 5 and 7, claim 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cleansing cosmetic composition for acne treatment comprising the surfactant sodium cocoyl isethionate, the beta hydroxy acid salicylic acid, the clay kaolin, water, and glycerin, as taught by Tan, in view of the use of sodium cocoyl isethionate at 8.50% and 6.50% by weight of a skin treatment composition used for treating acne, as taught by Bhatia, and the cosmetic cleansing agent formulated for cosmetically treating acne which contains anionic surfactants in combination with biosurfactants such as the glycolipids rhamnolipids, as taught by Schelges, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because all three references are drawn to cosmetic cleansing compositions for treating acne and it is obvious to combine prior art elements according to known methods to yield predictable results. Please see MPEP 2141(III)(A). One of ordinary skill in the art would have found it obvious to use sodium cocoyl isethionate at 8.50% and 6.50% by weight of a skin treatment and cleansing composition as taught by Bhatia in the composition of Tan and have a reasonable expectation of success in treating acne. One of ordinary skill in the art would have found it obvious to include the rhamnolipids taught by Schelges in the cosmetic cleansing composition of Tan because the latter reference teaches that the composition comprises at least one surfactant, i.e., more than one surfactant can be included.
Moreover, one of ordinary skill in the art would have been motivated to use the rhamnolipids biosurfactant since Schelges teaches the advantage of using biosurfactants such as rhamnolipids conferring a prebiotic effect on the skin ([0012]-[0013]), wherein “prebiotic effect” means that “… the growth and/or the survivability of the desired, in particular skin-friendly, skin bacteria or microflora is promoted over the growth and/or the survivability of the undesired, in particular skin-unfriendly, skin bacteria or microflora” ([0017]).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding instant claims 1 and 19, the limitations of an acne care composition and a method for cleansing skin would have been obvious over the cleansing composition for acne treatment (Title, Abstract, Examples – [00102] – [00133], and claims 1-20) and a method for delivering to skin that is prone to acne a cleansing composition ([0019]), as taught by Tan, the stable cleanser compositions for the treatment of acne rosacea and acne vulgaris (Abstract, Example 2 – Col. 9, lines 30-40, and claim 1), as taught by Bhatia, and the cosmetic cleansing agent formulated for cosmetically treating acne (claims 8 and 9), as taught by Schelges.
Regarding instant claims 1 and 19, the limitations of a) at least one surfactant comprising sodium cocoyl isethionate would have been obvious over the surfactant sodium cocoyl isethionate ([0064]), as taught by Tan. The newly added limitation of sodium cocoyl isethionate present in an amount from 5% to 15% by weight of the acne care composition would have been obvious over the skin treatment compositions comprise sodium cocoyl isethionate (EXAMPLE 3 – Col. 9, lines 58-62) at 8.50% (TABLE 3), and at 6.50% (TABLES 4 and 5, claim 1) by weight of the composition. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding instant claims 1 and 19, the limitation of b) at least one glycolipid would have been obvious over the glycolipids rhamnolipids ([0016] - # 5 and 7, claim 4), as taught by Schelges.
Regarding instant claims 1 and 19, the limitation of c) at least one beta hydroxy acid would have been obvious over the salicylic acid ([0008], claims 1 and 5), as taught by Tan.
Regarding instant claims 1 and 19, the limitations of d) at least one clay comprising kaolin would have been obvious over the kaolin ([0018], [0091], [0092]), as taught by Tan.
Regarding instant claims 1 and 19, the limitations of at least one cosmetically acceptable solvent comprising water and glycerin would have been obvious over the cosmetic composition that includes water ([0068]-[0070]) and glycerin ([0073]-[0075]), as taught by Tan.
Regarding instant claims 1 and 19, the limitations of the acne care composition demonstrating peak shear stress in a range from about 100 to about 1000 Pa at shear rate in the range from 1 1/s - 100 1/s, followed by a sharp drop in viscosity when shear stress is maintained would have been obvious over the acne care composition (Title, Abstract, Examples – [00102] – [00133], and claims 1-20), as taught by Tan and by the cosmetic cleansing agent formulated for cosmetically treating acne (claims 8 and 9), as taught by Schelges. The recited limitation is a property associated with the composition. Since the prior art teaches the claimed composition, including all the components of the composition, arranged in the same form and used for the same purpose, i.e., an acne care cleansing composition, one of ordinary skill in the art would have expected the same properties to be present in the prior art unless there is evidence of criticality or unexpected results.
Regarding instant claim 2, the limitation of the at least one glycolipid would have been obvious over the glycolipids rhamnolipids ([0016] - # 5 and 7, claim 4), as taught by Schelges.
Regarding instant claim 3, the limitation of the at least one glycolipid chosen from rhamnolipids present from about 1% to about 4% by weight, based on the weight of the acne care composition would have been obvious over the biosurfactants glycolipids rhamnolipids ([0016] - # 5 and 7, claim 4), included in an overlapping amount of 1 to 20% by weight ([0016] – # 2, part (a)), as taught by Schelges. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding instant claims 4 and 19, the limitations of the at least one beta hydroxy acid which comprises salicylic acid and is present at from about 0.1% to about 2% by weight, based on the weight of the acne care composition would have been obvious over the beta hydroxy acid salicylic acid ([0008], claims 1 and 5), wherein the at least one beta hydroxy acid is present in the composition in a range from about 0.1% to about 2% by weight, based on the total weight of the composition (claim 6), as taught by Tan.
Regarding instant claim 6, the limitation of glycerin present at from about 10% to about 30% by weight, based on the weight of the acne care composition would have been obvious over the glycerin used as a water soluble solvent ([0076]) wherein the water soluble solvent is present at an overlapping amount of from about 0.5% to about 25% by weight, based on the weight of the composition ([0077]), as taught by Tan. Please see MPEP 2144.05.
Regarding instant claims 7-9 and 19, the limitations of at least one cationic polymer (instant claims 7 and 19), chitosan (instant claims 8 and 19), and chitosan present at from about 0.05% to about 0.5% by weight, based on the weight of the acne care composition (instant claim 9) would have been obvious over the at least one cationic polymer that is chitosan ([0012]) and is present at an overlapping amount of from about 0.1% to about 0.5% by weight ([0014]), as taught by Tan. Please see MPEP 2144.05.
Regarding instant claims 10-12 and 19, the limitations of at least one thickener (instant claims 10 and 19), carrageenan (instant claims 11 and 19), and carrageenan present in a range from about 0.5% to about 1.5% by weight, based on the weight of the acne care composition (instant claim 12) would have been obvious over the at least one cationic polymer that is a cationic nature-based polymer, includes carrageenan ([0012], claim 10), and is present at an overlapping amount of from about 0.01% to about 10% by weight ([0045]), as taught by Tan. Please see MPEP 2144.05.
Regarding instant claims 13-14 and 19, the limitations of at least one additive (instant claims 13 and 19), sodium hydroxide (instant claims 14 and 19), would have been obvious over the sodium hydroxide ([0071] and [0091]), as taught by Tan. The limitation of lactic acid in instant claims 14 and 19 would have been obvious over the lactic acid ([0080] and [0091]), as taught by Tan.
Regarding instant claims 15 and 19, the limitations of the surfactant comprising glyceryl stearate SE would have been obvious over the surfactant glyceryl stearate ([0016], [0058], [0064], and claim 16), as taught by Tan.
Regarding instant claim 16, the limitation of the pH from 4.7 - 5.9 would have been obvious over the overlapping pH ranges of about 3 to about 7 or from about 4 to about 5 ([0071]), as taught by Tan.
Regarding instant claim 20, the limitation of a cleanser would have been obvious over the cleanser (Abstract) which is resistant to removal by rinsing and/or use of a cleansing apparatus, such as a cleansing brush ([0005], [0025], [0027], claims 1 and 3), as taught by Tan since such a cleanser composition will naturally have a paste-like texture.
Claims 5 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (WO 2022/162620 A2 – “Tan”) in view of Bhatia et al. (US 7,479,289 B2 – “Bhatia”) and Schelges et al. (US 2017/0071842 A1 – “Schelges”), as applied to claims 1-4, 6-16, and 18-20 above, further in view of Blotsky et al. (US 2010/0129465 A1 – “Blotsky”).
Instant claim 5 is drawn to the composition of claim 1, wherein the at least one clay comprises kaolin present from about 5% to about 20% by weight, based on the weight of the acne care composition.
The teachings of Tan, Bhatia, and Schelges are discussed above.
Tan, Bhatia, and Schelges do not expressly teach that kaolin is present in an amount of about 5% to about 20% by weight, based on the weight of the acne care composition.
Blotsky teaches methods and compositions for treating acne (Abstract, claims 1-13). The composition contains kaolin ([0013] and claim 1, Phase B, part (a)) as a filler utilized at overlapping concentrations of 0.1-90% ([0357]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cleansing cosmetic composition for acne treatment comprising the surfactant sodium cocoyl isethionate, the beta hydroxy acid salicylic acid, the clay kaolin, water, and glycerin, as taught by Tan, in view of the use of sodium cocoyl isethionate at 8.50% and 6.50% by weight of a skin treatment composition used for treating acne, as taught by Bhatia, the cosmetic cleansing agent formulated for cosmetically treating acne which contains anionic surfactants in combination with biosurfactants such as the glycolipids rhamnolipids, as taught by Schelges, further in view of the use of kaolin in an overlapping amount of 0.1-90% in a composition for acne treatment, as taught by Blotsky, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because all the references are drawn to compositions for treating acne and it is obvious to combine prior art elements according to known methods to yield predictable results. Please see MPEP 2141(III)(A). One of ordinary skill in the art would have found it obvious to include the kaolin in the amount taught by Blotsky ([0357]) in the cosmetic cleansing composition which contains kaolin ([0018], [0091], [0092]) of Tan and have a reasonable expectation of success in producing a functional composition for the treatment of acne. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding instant claim 5, the limitation of kaolin present from about 5% to about 20% by weight, based on the weight of the acne care composition would have been obvious over the kaolin ([0013] and claim 1, Phase B, part (a)) utilized at overlapping concentrations of 0.1-90% ([0357]), as taught by Blotsky.
Regarding instant claim 17, the limitation of a) surfactant comprising sodium cocoyl isethionate present at about 10% would have been obvious over the surfactant sodium cocoyl isethionate ([0064]) and the surfactant present in an overlapping amount of about 0.1% to about 20% ([0065]), as taught by Tan, and the skin treatment compositions comprise sodium cocoyl isethionate (EXAMPLE 3 – Col. 9, lines 58-62) at 8.50% (TABLE 3) by weight of the composition, as taught by Bhatia. The amount 8.5% taught by Bhatia is close to and renders obvious “about 10%” as recited in instant claim 17.
Regarding instant claim 17, the limitation of a) glyceryl stearate present at about 5% would have been obvious over the surfactant glyceryl stearate ([0016], [0058], [0064], and claim 16), and the surfactant present in an overlapping amount of about 0.1% to about 20% ([0065]), as taught by Tan.
Regarding instant claim 17, the limitation of b) at least one glycolipid present at about 3% would have been obvious over the biosurfactants glycolipids rhamnolipids ([0016] - # 5 and 7, claim 4), included in an overlapping amount of 1 to 20% by weight ([0016] – # 2, part (a)), as taught by Schelges. Please see MPEP 2144.05.
Regarding instant claim 17, the limitation of c) at least one beta hydroxy acid comprising salicylic acid or a derivative thereof present at about 2% would have been obvious over the beta hydroxy acid salicylic acid ([0008], claims 1 and 5) and the beta hydroxy acid present in the composition in a range from about 0.1% to about 2% by weight, based on the total weight of the composition (claim 6), as taught by Tan. Please see MPEP 2144.05. The upper limit of the disclosed range is the same as the claimed range.
Regarding instant claim 17, the limitation of d) at least one clay comprising kaolin present at about 15% would have been obvious over the kaolin ([0013] and claim 1, Phase B, part (a)) used at overlapping concentrations of 0.1-90% ([0357]), as taught by Blotsky. Please see MPEP 2144.05.
Regarding instant claim 17, the limitation of e) at least one cationic polymer comprising chitosan present at about 0.1% would have been obvious over the at least one cationic polymer that is chitosan ([0012]) and is present at an overlapping amount of from about 0.1% to about 0.5% by weight ([0014]), as taught by Tan. Please see MPEP 2144.05. The lower limit of the disclosed range is the same as the claimed range.
Regarding instant claim 17, the limitation of f) at least one thickener comprising one of carrageenan, xanthan gum, sclerotium gum, or a combination thereof present at about 1% would have been obvious over the at least one cationic polymer that is a cationic nature-based polymer, includes carrageenan ([0012], claim 10), and is present at an overlapping amount of from about 0.01% to about 10% by weight ([0045]), as taught by Tan. Please see MPEP 2144.05.
Regarding instant claim 17, the limitation of g) at least one cosmetically acceptable solvent comprising water, and comprising glycerin present from about 10% to about 30% would have been obvious over the cosmetic composition that includes water ([0068]-[0070]) and glycerin ([0073]-[0075]), as taught by Tan, and the glycerin used as a water soluble solvent ([0076]) wherein the water soluble solvent is present at an overlapping amount of from about 0.5% to about 25% by weight, based on the weight of the composition ([0077]), as taught by Tan. Please see MPEP 2144.05.
Regarding instant claim 17, the limitation of h) at least one additive which is sodium hydroxide or lactic acid would have been obvious over the sodium hydroxide ([0071] and [0091]), and the lactic acid ([0080] and [0091]), as taught by Tan.
Regarding instant claim 17, the limitation of the acne care composition demonstrating peak shear stress in a range from about 100 to about 1000 Pa at shear rate in the range from 1 1/s - 100 1/s, followed by a sharp drop in viscosity when shear stress is maintained would have been obvious over the acne care composition (Title, Abstract, Examples – [00102] – [00133], and claims 1-20), as taught by Tan and by the cosmetic cleansing agent formulated for cosmetically treating acne (claims 8 and 9), as taught by Schelges. The recited limitation is a property associated with the composition. Since the prior art teaches the claimed composition, including all the components of the composition, arranged in the same form and used for the same purpose, i.e., an acne care cleansing composition, one of ordinary skill in the art would have expected the same properties to be present in the prior art unless there is evidence of criticality or unexpected results.
Regarding instant claim 18, the limitation of at least one additive which is sodium hydroxide or lactic acid would have been obvious over the sodium hydroxide ([0071] and [0091]), and the lactic acid ([0080] and [0091]), as taught by Tan.
Maintained Rejections
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.
Claim 1-20 are again provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of copending Application No. 19/067,315 (“the ‘315 Application”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to an acne care composition, comprising: a) at least one surfactant comprising sodium cocoyl isethionate; b) at least one glycolipid; c) at least one beta hydroxy acid; d) at least one clay; and e) at least one cosmetically acceptable solvent comprising water and glycerin, and therefore, encompass overlapping or coextensive subject matter.
One difference is that claim 1 of the ‘315 Application recites at least one polysaccharide derived from ß-linked D-glucosamine and N-acetyl-D-glucosamine, whereas instant claims don’t recite this limitation.
However, instant claims recite the transitional phrase “comprising,” which is considered open language, and allows the inclusion of additional components. Moreover, claim 1 of the ‘315 Application recites that the polysaccharide is a cationic polymer. Since instant claim 7 also recites a cationic polymer, the polysaccharide of the ‘315 Application is rendered obvious.
Another difference is that instant claim 1 recites an acne care composition whereas claim 1 of the ‘315 Application recites a cosmetic composition. However, claim 5 of the ‘315 Application recites a method for cleansing acne-prone skin comprising applying the composition of claim 1 onto the acne-prone skin, thereby rendering this limitation obvious.
Therefore, instant claims are obvious over claims of the ‘315 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim 1-20 are again provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3 and 8-20 of copending Application No. 18/591,178 (“the ‘178 Application”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to an acne care composition, comprising: a) at least one surfactant comprising sodium cocoyl isethionate; b) at least one glycolipid; c) at least one beta hydroxy acid; d) at least one clay; and e) at least one cosmetically acceptable solvent comprising water and glycerin, and therefore, encompass overlapping or coextensive subject matter.
One difference is that claim 1 of the ‘178 Application recites at least one cationic polymer selected from a polysaccharide derived from ß-linked D-glucosamine and N-acetyl-D-glucosamine, whereas instant claims don’t recite this limitation.
However, instant claims recite the transitional phrase “comprising,” which is considered open language, and allows the inclusion of additional components. Moreover, claim 1 of the ‘178 Application recites that the polysaccharide is a cationic polymer. Since instant claim 7 also recites a cationic polymer, the polysaccharide of the ‘178 Application is rendered obvious.
Another difference is that instant claim 1 recites an acne care composition whereas claim 1 of the ‘178 Application recites a cosmetic composition. However, claims 19 and 20 of the ‘178 Application recite a method for cleansing acne-prone skin, thereby rendering this limitation obvious.
Yet another difference is that instant claim 1 recites sodium cocoyl isethionate whereas claims of the ‘178 Application don’t recite this limitation. However, claims of the ‘178 Application recite the transitional phrase “comprising,” which is considered open language and allows inclusion of additional components. Moreover, since a cleansing composition is recited in claims 19-20 of the ‘178 Application, one of ordinary skill in the art would have found it obvious to include various surfactants.
Therefore, instant claims are obvious over claims of the ‘178 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim 1-20 are again provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No. 18/901,492 (“the ‘492 Application”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to an acne care composition, comprising: a) at least one surfactant comprising sodium cocoyl isethionate; b) at least one glycolipid; c) at least one beta hydroxy acid; d) at least one clay; and e) at least one cosmetically acceptable solvent comprising water and glycerin, and therefore, encompass overlapping or coextensive subject matter.
One difference is that claim 1 of the ‘492 Application recites at least one cationic polymer selected from a polysaccharide derived from ß-linked D-glucosamine and N-acetyl-D-glucosamine, whereas instant claims don’t recite this limitation.
However, instant claims recite the transitional phrase “comprising,” which is considered open language, and allows the inclusion of additional components. Moreover, claim 1 of the ‘492 Application recites that the polysaccharide is a cationic polymer. Since instant claim 7 also recites a cationic polymer, the polysaccharide of the ‘492 Application is rendered obvious.
Another difference is that instant claim 1 recites an acne care composition whereas claim 1 of the ‘492 Application recites a cosmetic composition. However, claims 12 and 13 of the ‘492 Application recite a method for cleansing acne-prone skin, thereby rendering this limitation obvious.
Therefore, instant claims are obvious over claims of the ‘492 Application, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Arguments
Applicant’s arguments (Page 14, filed 03/05/26) with respect to the provisional rejections over the ‘315 Application, the ‘178 Application, and the ‘492 Application have been fully considered but are not persuasive.
Applicant states that they defer addressing the double patenting rejection until such at time at which there is at least one allowable claim.
At this point in prosecution there are still outstanding obviousness rejections. Applicant has not provided any reasons why the provisional double patenting rejections are deficient. Until such time that a terminal disclaimer is filed or claims are amended to obviate the double patenting rejections, the provisional double patenting rejections will be maintained.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARADHANA SASAN whose telephone number is (571)272-9022. The examiner can normally be reached Monday to Friday from 6:30 am to 3:00 pm.
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, Robert A. Wax can be reached on 571-272-6023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARADHANA SASAN/Primary Examiner, Art Unit 1615
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