DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed May 19, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claims 5 and 7 are objected to because of the following informalities:
Claim 5 should read “the total amount of vitamin E to niacinamide is from about 1:1 to about 1:2.”
Claim 7 should read “the total amount of vitamin E to ascorbyl phosphate is from about 6:1 to about 4:1.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103 (Maintained)
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 13-18, and 20 are rejected under 35 U.S.C. 103 as being as being obvious over Mahashabde et al. (US 6,436,378 B1).
Regarding claim 1, Mahashabde discloses at Col 3, lines 25-55 a personal care composition for the skin with 0.1 wt.% vitamin E acetate, 0.5 wt.% niacinamide, and the carrier, water (Example 2). Mahashabde teaches that vitamin E may be present in the compositions of the disclosure in an amount of 0.05 to 5 wt.% (Col 3, lines 5-7).
Mahashabde is not believed to anticipate claim 1 because Mahashabde does not disclose a single embodiment where the total weight ratio of vitamin E to niacinamide is from about 1:1 to about 1:3. The weight ratio taught at Example 2 is 1:5.
Nevertheless, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 A. Furthermore, 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 conditions of the amounts of vitamin E and niacinamide have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation, especially as Mahashabde teaches that vitamin E may be present in the compositions of the disclosure an amount of 0.05 to 5 wt.% (Col 3, lines 5-7).
Regarding claim 2, Mahashabde discloses at Col 3, lines 25-55 a personal care composition for the skin with 0.1 wt.% vitamin E acetate, 0.01 wt.% ascorbyl phosphate, and the carrier, water (Example 2). Mahashabde teaches that vitamin E may be present in the compositions of the disclosure an amount of 0.05 to 5 wt.% (Col 3, lines 5-7).
Mahashabde is not believed to anticipate claim 2 because Mahashabde does not disclose a single embodiment where the total weight ratio of vitamin E to ascorbyl phosphate is from about 7:1 to about 3:1. The weight ratio taught at Example 2 is 10:1.
Nevertheless, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 A. Furthermore, 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 conditions of the amounts of vitamin E and ascorbyl phosphate have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation, especially as Mahashabde teaches that vitamin E may be present in the compositions of the disclosure an amount of 0.05 to 5 wt.% (Col 3, lines 5-7).
Claim 3 is rendered prima facie obvious because Mahashabde discloses the vitamin E is vitamin E acetate (Example 2, Col 3, lines 25-45).
Claim 4 is rendered prima facie obvious because Mahashabde discloses more than one vitamin can be present in the composition such as alpha-tocopherol and vitamin E acetate (Col 2, lines 9-23).
Claims 5-6 are rendered prima facie obvious because it would not have been inventive to have discovered the optimum ratio of vitamin E to niacinamide via routine experimentation, as discussed above, especially as Mahashabde teaches that vitamin E may be present in the compositions of the disclosure an amount of 0.05 to 5 wt.% (Col 3, lines 5-7).
Claims 7-8 are rendered prima facie obvious because it would not have been inventive to have discovered the optimum ratio of vitamin E to ascorbyl phosphate via routine experimentation, as discussed above, especially as Mahashabde teaches that vitamin E may be present in the compositions of the disclosure an amount of 0.05 to 5 wt.% (Col 3, lines 5-7).
Claim 13 is rendered prima facie obvious because Mahashabde discloses the composition further includes 0.01 wt.% of ascorbyl phosphate (Example 2, Col 3, lines 25-45).
Claims 14-15 are rendered prima facie obvious because Mahashabde discloses the composition further includes 0.5 wt.% niacinamide (Example 2, Col 3, lines 25-45).
Claims 16-18 are rendered prima facie obvious because a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the prior art teaches a composition with the same components (i.e., vitamin B, vitamin E and a carrier), the properties the applicant discloses and/or claims (reducing the amount of color change by at least 25 % by the claimed methods) are reasonably expected to be necessarily present.
Claim 20 is rendered prima facie obvious because Mahashabde discloses the composition is a leave-on composition (Example 2, Col 3, lines 25-55; Col 2, lines 24-25).
Response to Arguments
Applicant's arguments filed 05/19/2026 have been fully considered but they are not persuasive
Applicant argues at pg. 8-9 that Mahashabde fails to teach or suggest claim 1 as a whole particularly “wherein the weight ratio of the total amount of vitamin E to niacinamide is from about 1:1 to about 1:3” in claim 1 as amended. Applicant also argues that Mahashabde fails to teach or suggest claim 2, particularly, “wherein the weight ratio of the total amount of vitamin E to ascorbyl phosphate is from about 7:1 to about 3:1” in claim 2, as amended.
The Examine disagrees. Mahashabde discloses at Col 3, lines 25-55 a personal care composition for the skin with 0.1 wt.% vitamin E acetate, 0.01 wt.% ascorbyl phosphate, 0.5 wt.% niacinamide, and the carrier, water (Example 2). Mahashabde teaches that vitamin E may be present in the compositions of the disclosure an amount of 0.05 to 5 wt.% (Col 3, lines 5-7).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 A. Furthermore, 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 conditions of the amount of vitamin E, niacinamide, and ascorbyl phosphate, have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratios via routine experimentation, especially as Mahashabde teaches that vitamin E may be present in the compositions of the disclosure an amount of 0.05 to 5 wt.% (Col 3, lines 5-7).
Analysis of Alleged Unexpected Results
The applicant argues at pg. 11-12 that applicant’s compositions A-F were evaluated to asses if the respective compositions reduce degradation of pigments associated with tattoos and all compositions A-F demonstrated lower values (indicating higher antioxidant effect) over a placebo which is unexpected over the prior art.
The Examiner has fully reviewed and considered the unexpected results alleged by the applicant.
Based on the data shown in Fig 1 and Table 1, compositions A-F do show a reduction in degradation of pigments associated with tattoos compared to a placebo control. The difference appears to be most significant in composition A, which includes alpha-tocopherol in an amount of 0.01 wt.%, niacinamide in an amount of 0.2 wt.%, and tocopherol acetate in an amount of 0.1 wt.% and in Composition B, which includes alpha-tocopherol in an amount of 0.01 wt.%, tocopherol acetate in an amount of 0.1 wt.%, and sodium ascorbyl phosphate in an amount of 0.02 wt.%.
However, it is not clear that these differences are unexpected over the prior art, as is discussed further below, (“Aftercare Instructions for New Tattoos”) vitamin E is known to keep tattoo colors and lines looking sharper for longer (pg. 2, bottom) and vitamin E is a known antioxidant (Dreher, [0018]). Therefore, reduction in degradation of pigments would be expected in a composition with higher amounts of vitamin E (vitamin E is included in a higher amount in compositions A and B compared to the other compositions tested).
Finally, assuming purely arguendo that unexpected results have been established, (the Examiner does not believe at this time that they have), the claims would still not be “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has allegedly demonstrated reduce degradation of pigments associated with tattoos, but even if this is so, then it would only have been shown for with the specific combination and amounts vitamin E (specifically alpha-tocopherol and tocopherol acetate), niacinamide, and ascorbyl phosphate. It is unclear that a comparative composition containing these specific components and in these specific percentages would be reasonably representative of compositions containing other components (i.e., other forms of vitamin E) and in differing amounts, falling within the broader scope currently claimed.
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being as being obvious over Mahashabde et al. (US 6,436,378 B1) in view of Dreher (US 2014/0315995 A1).
The 35 U.S.C. 103 rejection over Mahashabde was previously discussed.
Mahashabde does not disclose that the composition includes from about 0.5 to about 9 wt.% of lactic acid and/or a salt therefore, as recited in claim 9.
Dreher discloses a composition for the skin with an anti-wrinkle/anti-atrophy active, such as lactic acid, in an amount of 0.0001-25 wt.% [abstract] [0187]-[0188].
Since Mahashabde generally teaches a composition for the skin, it would have been prima facie obvious to one of ordinary skill in the art to include 0.0001-25 wt.% of lactic acid, within the teachings of Mahashabde, because Dreher teaches this amount of lactic acid in a composition for the skin. An ordinarily skilled artisan would be motivated to use this amount of lactic acid for its anti-wrinkle/anti-atrophy effect as taught by Dreher [0187]-[0188]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claim 19, Mahashabde does not disclose that the composition is a rinse off composition.
Dreher discloses that the topical composition contains vitamins, such as vitamin E, and may be in the form of a rinse. Dreher teaches that administering the composition containing these vitamins as a cosmetic product, such as a rinse, is sufficient to treat and/or prevent free radical damage to the skin [abstract] [0155].
Since Mahashabde generally teaches a composition for the skin containing vitamins, it would have been prima facie obvious to one of ordinary skill in the art to use the composition as a rinse because Dreher teaches that administering the composition containing vitamins as a cosmetic product, such as a rinse, is sufficient to treat and/or prevent free radical damage to the skin [abstract] [0155].
Claims 10-12 are rejected under 35 U.S.C. 103 as being as being obvious over Mahashabde et al. (US 6,436,378 B1) in view of Newell et al. (US 6,113,892).
The 35 U.S.C. 103 rejection over Mahashabde was previously discussed.
Mahashabde does not disclose that the composition comprises from about 0.5 to about 9 wt.% of an oil, the oil comprising castor oil, as recited in claim 10.
Newell teaches a composition for the skin [abstract] with an emollient, such as castor oil, in an amount of 0.01 to 30 wt.% (Col 4, line 66- Col 5, line 28). Newell teaches that the emollient helps to maintain the soft, smooth, and pliable appearance of the skin and it acts as a lubricant to reduce flaking and to improve the skin’s appearance (Col 5, lines 1-4).
Since Mahashabde generally teaches a composition for the skin, it would have been prima facie obvious to one of ordinary skill in the art to include an emollient, such as castor oil, in an amount of 0.01 to 30 wt.% because Newell teaches an emollient, such as castor oil, in a composition for the skin in this amount. An ordinarily skilled artisan would be motivated to use the emollient, such as castor oil, because Newell teaches that the emollient helps to maintain the soft, smooth, and pliable appearance of the skin and it acts as a lubricant to reduce flaking and to improve the skin’s appearance (Col 5, lines 1-4). A prima facie case of obviousness exists because of overlap, as previously discussed.
Mahashabde does not disclose that the composition comprises from about 5 to about 45 wt.% of one or more surfactants, as recited in claim 11, where the one of more surfactants comprises cocamidopropyl betaine, as recited in claim 12.
Newell teaches the composition for the skin [abstract] includes an amphoteric surfactant, such as cocamidopropyl betaine, in an amount of 0.1 to about 5% by weight of the composition (Col 6, lines 1-9; Col 7-8). Newell teaches that the amphoteric surfactant improves skin mildness and composition esthetics (Col 5, lines 55-56).
Since Mahashabde generally teaches a composition for the skin, it would have been prima facie obvious to one of ordinary skill in the art to include an amphoteric surfactant, such as cocamidopropyl betaine, in an amount of 0.1 to 5 wt.% because Newell teaches an amphoteric surfactant, such as cocamidopropyl betaine, in a composition for the skin in this amount. An ordinarily skilled artisan would be motivated to use an amphoteric surfactant, such as cocamidopropyl betaine because Newell teaches that the amphoteric surfactant improves skin mildness and composition esthetics (Col 5, lines 55-56). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 16-18 are rejected under 35 U.S.C. 103 as being as being obvious over Mahashabde et al. (US 6,436,378 B1) in view of “Aftercare Instructions for New Tattoos” (www.captaintattoos.com/captains-log/aftercare-instructions-for-new-tattoos).
While claims 16-18 are believed to be prima facie obvious over Mahashabde based on inherency, as discussed above, Mahashabde does not explicitly disclose that the personal care composition reduces the amount of color change by at least 25 %, as recited in claim 16, that the color change is assessed by a malondialdehyde evaluation relative to a placebo, as recited in claim 17, or a difference in color change is accessed by the method described in claim 18.
As taught by “Aftercare Instructions for New Tattoos”, vitamin E is known to keep tattoo colors and lines looking sharper for longer (pg. 2, bottom).
Since Mahashabde teaches the composition with vitamin E is used as a topical composition for the skin [abstract] and vitamin E is known to keep tattoo colors and lines looking sharper for longer (“Aftercare Instructions for New Tattoos”) it would have been prima facie obvious to optimized the vitamin E in a topical composition to reduce the amount of color change. Additionally, it would have been prima facie obvious to one of ordinary skill in the art to determine the amount of color change empirically through necessary methods.
Response to Arguments
Applicant's arguments filed 05/19/2026 have been fully considered but they are not persuasive
Applicant argues that claims 3-20 depend from claims 1-2, which are patentable over the cited references, accordingly the dependent claims are also allowable.
The Examiner disagrees because claims 1-2 are not patentable over the applied references for the reasons discussed above.
Claims 1-9 and 13-20 are rejected under 35 U.S.C. 103 as being as being obvious over Dreher (US 2014/0315995 A1).
Regarding claim 1, Dreher discloses a composition for the skin with vitamin E in an amount between 0.1 and 5 wt.% [abstract] [0016], a skin lightening agent, such as niacinamide, in an amount of 0.01-15 wt.% [0202]-[0203], and a carrier [0026].
Dreher is not believed to be anticipatory because Dreher could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. Namely, one skilled in the art would need to choose to include a skin lightening agent, such as niacinamide, in an amount of 0.01-15 wt.% [0202] and a carrier [0026].
Nevertheless, claim 1 is rendered prima facie obvious over the teachings of Dreher, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., vitamin E, niacinamide, and a carrier) were known in the prior art (e.g., Dreher) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a composition) to one of ordinary skill in the art. MPEP 2143.A.
Regarding the amounts of the components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A. Furthermore, 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 conditions of the amounts of vitamin E and niacinamide have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation.
Regarding claim 2, Dreher discloses a composition for the skin with vitamin E in an amount between 0.1 and 5 wt.% [abstract] [0016], vitamin c, such as ascorbyl phosphate, in an amount between 1 and 30 wt.% [abstract] [0010]-[0012] [0081]-[0083], and a carrier [0026].
Dreher is not believed to be anticipatory over claim 2 because Dreher could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. Namely, one skilled in the art would need to choose to include a carrier [0026] and ascorbyl phosphate as the vitamin C [0081]-[0083] in the amount disclosed at [0012].
Nevertheless, claim 2 is rendered prima facie obvious over the teachings of Dreher, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., vitamin E, ascorbyl phosphate, and a carrier) were known in the prior art (e.g., Dreher) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a composition) to one of ordinary skill in the art. MPEP 2143.A.
Regarding the amounts of the components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A. Furthermore, 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 conditions of the amounts of vitamin E and ascorbyl phosphate have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation.
Claims 3-4 are rendered prima facie obvious because Dreher discloses the compositions include vitamin E and at least one vitamin E analog, such as alpha-tocopherol and vitamin E acetate [0009] [0046] [0078]-[0080] [0181].
Claims 5-6 are rendered prima facie obvious because Dreher discloses vitamin E in an amount between 0.1 and 5 wt.% [abstract] [0016] and a skin lightening agent, such as niacinamide, in an amount of 0.01-15 wt.% [0202]-[0203]. A prima facie case of obviousness exists because of overlap, as previously discussed. Furthermore, 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 conditions of the amounts of vitamin E and niacinamide have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation.
Claims 7-8 are rendered prima facie obvious because Dreher discloses vitamin E in an amount between 0.1 and 5 wt.% [abstract] [0016] and vitamin c, such as ascorbyl phosphate, in an amount between 1 and 30 wt.% [abstract] [0010]-[0012] [0081]-[0083]. A prima facie case of obviousness exists because of overlap, as previously discussed. Furthermore, 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 conditions of the amounts of vitamin E and ascorbyl phosphate have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation.
Claim 9 is rendered prima facie obvious because Dreher discloses the composition includes an anti-wrinkle/anti-atrophy active, such as lactic acid, in an amount of 0.0001-25 wt.% [0187]-[0188]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 13 is rendered prima facie obvious because Dreher discloses the composition further includes vitamin c, such as ascorbyl phosphate, in an amount between 1 and 30 wt.% [abstract] [0010]-[0012] [0081]-[0083]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 14-15 are rendered prima facie obvious because Dreher discloses the composition includes a skin lightening agent, such as niacinamide, in an amount of 0.01-15 wt.% [0202]-[0203]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 16-18 are rendered prima facie obvious because a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the prior art discloses a composition with the same components (i.e., vitamin E) the properties the applicant discloses and/or claims (reducing the amount of color change by at least 25 % by the claimed methods) are reasonably expected to be necessarily present.
Claims 19-20 are rendered prima facie obvious because Dreher discloses the composition may be in the form of a rinse off composition (e.g., a rinse) or a leave on composition (e.g., a lotion) [0155].
Response to Arguments
Applicant's arguments filed 05/19/2026 have been fully considered but they are not persuasive
Applicant argues at pg. 9-10 that Dreher fails to teach or suggest claim 1 as a whole particularly “wherein the weight ratio of the total amount of vitamin E to niacinamide is from about 1:1 to about 1:3” in claim 1 as amended. Applicant also argues that Dreher fails to teach or suggest claim 2, particularly, “wherein the weight ratio of the total amount of vitamin E to ascorbyl phosphate is from about 7:1 to about 3:1” in claim 2, as amended.
The Examine disagrees. Claim 1 and 2 are rendered prima facie obvious over the teachings of Dreher, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements were known in the prior art (e.g., Dreher) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a composition) to one of ordinary skill in the art. MPEP 2143.A.
Regarding the amounts of the components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A. Furthermore, 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 conditions of the amounts of the components (vitamin E, niacinamide, and ascorbyl phosphate) have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum ratio via routine experimentation.
Claims 10-12 are rejected under 35 U.S.C. 103 as being as being obvious over Dreher (US 2014/0315995 A1) in view of in view of Newell et al. (US 6,113,892).
The 35 U.S.C. 103 rejection over Dreher was previously discussed.
Additionally, Dreher discloses that the composition includes castor oil [0194] [0228].
Dreher does not disclose that the composition comprises from about 0.5 to about 9 wt.% of castor oil as recited in claim 10.
Newell teaches a composition for the skin [abstract] with an emollient, such as castor oil, in an amount of 0.01 to 30 wt.% (Col 4, line 66- Col 5, line 28). Newell teaches that the emollient helps to maintain the soft, smooth, and pliable appearance of the skin and it acts as a lubricant to reduce flaking and to improve the skin’s appearance (Col 5, lines 1-4).
Since Dreher generally teaches a composition for the skin with castor oil, it would have been prima facie obvious to one of ordinary skill in the art to include castor oil in an amount of 0.01 to 30 wt.% because Newell teaches an emollient, such as castor oil, in a composition for the skin in this amount. An ordinarily skilled artisan would be motivated to use this amount of castor oil because Newell teaches that the emollient in this amount helps to maintain the soft, smooth, and pliable appearance of the skin and acts as a lubricant to reduce flaking and to improve the skin’s appearance (Col 5, lines 1-4). A prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claims 11-12, Dreher discloses that the composition includes a surfactant such as cocamidopropyl betaine [0237].
Dreher does not disclose that the composition comprises from about 5 to about 45 wt.% of one or more surfactants, as recited in claim 11, where the one of more surfactants comprises cocamidopropyl betaine, as recited in claim 12.
Newell teaches the composition for the skin [abstract] includes an amphoteric surfactant, such as cocamidopropyl betaine, in an amount of 0.1 to about 5% by weight of the composition (Col 6, lines 1-9; Col 7-8). Newell teaches that the amphoteric surfactant improves skin mildness and composition esthetics (Col 5, lines 55-56).
Since Dreher generally teaches a composition for the skin with a surfactant such as, cocamidopropyl betaine, it would have been prima facie obvious to one of ordinary skill in the art to include cocamidopropyl betaine in an amount of 0.1 to 5 wt.%, because Newell teaches an amphoteric surfactant, such as cocamidopropyl betaine, in a composition for the skin in this amount. An ordinarily skilled artisan would be motivated to use cocamidopropyl betaine in this amount because Newell teaches that this amount of amphoteric surfactant improves skin mildness and composition esthetics (Col 5, lines 55-56). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 16-18 are rejected under 35 U.S.C. 103 as being as being obvious over Dreher (US 2014/0315995 A1) in view of “Aftercare Instructions for New Tattoos” (www.captaintattoos.com/captains-log/aftercare-instructions-for-new-tattoos).
While claims 16-18 are believed to be prima facie obvious over Dreher based on inherency, as discussed above, Dreher does not explicitly disclose that the personal care composition reduces the amount of color change by at least 25 %, as recited in claim 16, that the color change is assessed by a malondialdehyde evaluation relative to a placebo, as recited in claim 17, or a difference in color change is accessed by the method described in claim 18.
As taught by “Aftercare Instructions for New Tattoos”, vitamin E is known to keep tattoo colors and lines looking sharper for longer (pg. 2, bottom).
Since Dreher teaches the composition with vitamin E is used as a topical composition for the skin [abstract] and vitamin E is known to keep tattoo colors and lines looking sharper for longer (“Aftercare Instructions for New Tattoos”) it would have been prima facie obvious to optimized the vitamin E in a topical composition to reduce the amount of color change. Additionally, it would have been prima facie obvious to one of ordinary skill in the art to determine the amount of color change empirically through necessary methods.
Response to Arguments
Applicant's arguments filed 05/19/2026 have been fully considered but they are not persuasive
Applicant argues that claims 3-20 depend from claims 1-2, which are patentable over the cited references, accordingly the dependent claims are also allowable.
The Examiner disagrees because claims 1-2 are not patentable over the applied references for the reasons discussed above.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,938,212 in view of Dreher (US 2014/0315995 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition except for a carrier and ascorbyl phosphate as the vitamin C.
Dreher discloses a composition for the skin with vitamin C, such as ascorbyl phosphate, [0010]-[0012] [0081]-[0083] and a carrier [0026]. Dreher teaches that ascorbyl phosphate is stable and has antioxidant properties [0081]-[0082].
It would have been prima facie obvious to one of ordinary skill in the art to include a carrier and ascorbyl phosphate, within the claims. The ordinarily skilled artisan would have been motivated to formulate the composition to include a carrier as taught by Dreher [0026] and to include ascorbyl phosphate because Dreher teaches that ascorbyl phosphate is stable and has antioxidant properties [0081]-[0082].
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 49, 53-54, 56, 59-61, 64-67, 69-71, and 75-76 of U.S. Patent Application No. 18/194,527 in view of Dreher (US 2014/0315995 A1).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 37-64 of U.S. Patent Application No. 18/585,159 in view of Dreher (US 2014/0315995 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition except for a carrier and ascorbyl phosphate as the vitamin C.
Dreher discloses a composition for the skin with vitamin C, such as ascorbyl phosphate, [0010]-[0012] [0081]-[0083] and a carrier [0026]. Dreher teaches that ascorbyl phosphate is stable and has antioxidant properties [0081]-[0082].
It would have been prima facie obvious to one of ordinary skill in the art to include a carrier and ascorbyl phosphate, within the copending claims. The ordinarily skilled artisan would have been motivated to formulate the composition to include a carrier as taught by Dreher [0026] and to include ascorbyl phosphate because Dreher teaches that ascorbyl phosphate is stable and has antioxidant properties [0081]-[0082].
Double Patenting Arguments
Applicant requests that the Examiner reconsider the rejection for non-statutory double patenting.
The Examiner maintains that U.S. Patent No. 11,938,212 and U.S. Patent Application Nos. 18/194,527 and 18/585,159 remain rejected on the ground of nonstatutory double patenting in view of Dreher.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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