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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claims 8, 16 and 18 are objected to because of the following informalities:
Claim 8, line one, should read “The personal care composition according to claim 7, wherein . Appropriate correction is required.
Claim 16, line two, and claim 18, line 2, recites “reduces the amount of color change by at least 25 wt.%”. Color cannot be measured as a weight percent. Appropriate correction is required. The Examiner suggests, for example, amending the claim limitation to “reduces degradation of pigments by at least 25 wt.%”.
Claim Rejections - 35 USC § 112, Second Paragraph
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.
Claim 18 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 18 recites the broad recitation “active ingredients”, and the claim also recites (e.g., free of vitamin B, vitamin C, and vitamin E) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. To overcome this rejection, the parathesis can be removed from the claim.
Further regarding claim 18, the phrase "e.g.," renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1-3, 5, 7, 13-18, and 20 are rejected under 35 U.S.C. 102 as being as being anticipated by Mahashabde et al. (US 6,436,378 B1).
Claim 1 is anticipated because 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). If the prior art discloses a point within the claimed range, the prior art anticipates the claim. See MPEP 2131.03.
Claim 2 is anticipated because 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). If the prior art discloses a point within the claimed range, the prior art anticipates the claim. See MPEP 2131.03.
Claim 3 is anticipated because the vitamin E is vitamin E acetate (Example 2, Col 3, lines 25-45).
Claim 5 is anticipated because the ratio of vitamin E to niacinamide is 1:5 (Example 2, Col 3, lines 25-45).
Claim 7 is anticipated because the ratio of vitamin E acetate to ascorbyl phosphate is 10:1 (Example 2, Col 3, lines 25-45).
Claim 13 is anticipated because the composition further includes 0.01 wt.% of ascorbyl phosphate (Example 2, Col 3, lines 25-45).
Claims 14-15 are anticipated because the composition further includes 0.5 wt.% niacinamide (Example 2, Col 3, lines 25-45).
Claims 16-18 are anticipated 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 necessarily present.
Claim 20 is anticipated because the composition is a leave-on composition (Example 2, Col 3, lines 25-55; Col 2, lines 24-25).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4, 6, and 8 are rejected under 35 U.S.C. 103 as being as being obvious over Mahashabde et al. (US 6,436,378 B1).
Claims 1-3, 5, 7, 13-18, and 20 are anticipated by Mahashabde as discussed above.
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).
Regarding claim 6, Mahashabde discloses 0.5 wt.% niacinamide (Example 2, Col 3, lines 25-45) and that the vitamin E is present in 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. 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 8, Mahashabde discloses 0.01 wt.% ascorbyl phosphate (Example 2, Col 3, lines 25-45) that the vitamin E is present in an amount of 0.05 to 5 wt.% (Col 3, lines 5-7). 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.
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).
1-3, 5, 7, 13-18, and 20 are anticipated by Mahashabde as discussed above.
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).
1-3, 5, 7, 13-18, and 20 are anticipated by Mahashabde, as discussed above.
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 Mahashabde 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 Mahashabde 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).
Mahashabde et al is believed to anticipate claims 16-18 based on inherency as described above, but in the interest of completeness of prosecution, purely arguendo, and for the purposes of this ground of rejection only, Mahashabde will be interpreted as if it is not anticipatory.
In that case, Mahashabde could be construed as not anticipatory because each and every element as set forth in claims 16-18 is not described, such as reducing the amount of color change by at least 25 %, as recited in claim 16, assessing the color change by a malondialdehyde evaluation relative to a placebo, as recited in claim 17, or assessing the difference in color change 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.
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 yielded 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.
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 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 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, 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 yielded 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.
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 which would have been prima facie obvious to combine (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 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].
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 Dreher 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 Dreher 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.
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].
Conclusion
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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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612