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 .
Priority
This application is a CON of PCT/US2022/045826 filed 10/05/2022.
PCT/US2022/045826 is a CON of 17696494 filed 03/16/2022 (PAT 11839669).
17696494 has PRO of 63252752 filed 10/06/2021.
However, at least the subject matters of independent claim 21 including “20% or less by weight…,” “about 20% to about 58% by weight…” and “…about 30% by weight” are not present in the PCT/US2022/045826, parent application of 17696494 or the PRO application of 63252752.
In addition, the following subject matters are not present in the PCT/US2022/045826, parent application of 17696494 or the PRO application of 63252752:
“an acrylic acid and C10-30 alkyl acrylate copolymer crosslinked with allyl pentaerythritol” of claim 23;
the subject matters of claims 27 and 28;
“a cationic surfactant and a nonionic surfactant” and “an anionic surfactant and a nonionic surfactant” of claim 29;
“a cetearyl glucoside” of claim 31;
“about 2% to about 4% by weight” and “about 35% to about 58% by weight” of claim 35;
“10% or less by weight of the composition of at least one cationic water soluble polymer, at least one nonionic water soluble polymer, or any combination thereof” and “about 10% to about 30% by weight of the composition of at least one high HLB cationic surfactant, the at least one high HLB cationic surfactant having a HLB number greater than 10” of claim 37;
“about 20% to about 55% by weight of the composition of at least one low hydrophilic/lipophilic balance (HLB) surfactant, the at least one low HLB surfactant has a HLB number lower than 10” of claim 39.
“a cetearyl glucoside,” “sorbitan olivate”, and “sorbitan stearate” of claim 40.
Thus, claims 21-40 will not receive priority filing date benefit of the PCT/US2022/045826, parent application of 17696494 or the PRO application of 63252752.
Accordingly, claims 21-40 are afforded the effective filing date of 04/04/2024 (actual filing date).
Information Disclosure Statement
The information disclosure statement (IDS) submitted 04/04/2024 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Status of the claims
This action is in response to preliminary papers filed 01/16/2026 in which claims 1-20 were canceled; and claims 21-40 were newly added. All the amendments have been thoroughly reviewed and entered.
Claims 21-40 are pending in this instant application, and examined herein on the merits for patentability.
Claim Objections
Claims 23 and 38 objected to because of the following informalities: please add a space between “guar” and “hydroxypropyltrimonium”. Appropriate correction is required.
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 introduces new matter as the claim recites the limitations: “20% or less by weight of the composition of at least one water soluble polymer,” “about 20% to about 58% by weight of the composition of least one low hydrophilic/lipophilic balance (HLB) surfactant,” and “about 7% to about 30% by weight of the composition of at least one high HLB surfactant.” There is no support in the specification for these limitation as it pertains to the range of “20% or less by weight,” “about 20% to about 58% by weight,” and “about 7% to about 30% by weight.”
Claim 23 introduces new matter as the claim recites the limitation: “an acrylic and C10-30 alkyl acrylate copolymer crosslinked with allyl pentaerythritol.” There is no support in the specification for this limitation.
Claim 27 introduces new matter as the claim recites the limitation: “the fatty sorbitan ester is a sorbitan olivate or sorbitan stearate.” There is no support in the specification for this limitation.
Claim 28 introduces new matter as the claim recites the limitation: “the one or two mole fatty acid ethoxylate is stearic acid ethoxylate or a behenic acid ethoxylate.” There is no support in the specification for this limitation.
Claim 29 introduces new matter as the claim recites the limitation: “a cationic surfactant and a nonionic surfactant” and “an anionic surfactant and a nonionic surfactant.” There is no support in the specification for these limitations.
Claim 31 introduces new matter as the claim recites the limitation: “cetearyl glucoside” There is no support in the specification for this limitation.
Claim 35 introduces new matter as the claim recites the limitation: “about 2 to about 4% by weight of the composition of at least one anionic water soluble polymer, at least one nonionic water soluble polymer, or any combination thereof” and “about 35% to about 58% by weight of the composition of at least one low hydrophilic/lipophilic balance (HLB) surfactant.” There is no support in the specification for these limitations.
Claim 37 introduces new matter as the claim recites the limitation: “10% or less by weight of the composition of at least one cationic water soluble polymer, at least one nonionic water soluble polymer, or any combination thereof” and “about 10% to about 30% by weight of the composition of at least one high HLB cationic surfactant.” There is no support in the specification for these limitations.
Claim 39 introduces new matter as the claim recites the limitation: “about 20% to about 55% by weight of the composition of at least one low hydrophilic/lipophilic balance (HLB) surfactant.” There is no support in the specification for this limitation.
Claim 40 introduces new matter as the claim recites the limitation: “a cetearyl glucoside,” “sorbitan olivate”, and “sorbitan stearate.” There is no support in the specification for these limitations.
After a thorough review of the disclosure from the specification including the drawings and examples, as well as, the original claims, there appeared to be no support for the above limitations of claims 21, 23, 27-29, 31, 35, 37, 39, and 40.
MPEP §2163.06 states: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments.
Claims 22, 24-26, 30, 43-34, 36, and 38 are also rejected, as they dependent directly or indirectly from claim 21, thereby also containing the conflicting new matter limitations.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of claims 21, 23, 27-29, 31, 35, 37, 39, and 40.at the time of filing of the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 21, 33, 35, 37 and 39, the claims recite “about” several times. The term “about” is relative and therefore indefinite. How different from the recite percentage, for example 40%, would still fall within 40%? Is it +/- 10% or +/- 2%, etc.? Since, the instant specification does not provide a definition, the claim is rendered indefinite with the use of the term “about”.
Furthermore, claim 21 recites “substantially” as an adjective to “uniformly”. The term “substantially” is also a relative term. Again without a definition in the specification, it is not clear the metes and bounds of the term.
Claims 22-32, 34, 36, 38, and 40 are also rejected as they are directly or indirectly dependent from indefinite claim 21.
As a result, claims 21-40 do not clearly set forth the metes and bounds of patent protection desired.
Claim Rejections - 35 USC § 112
Claim 40 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of “at least one low HLB surfactant includes a glyceryl monostearate, a cetearyl glucoside, a sorbitan olivate, a sorbitan stearate, or any combination thereof” is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: while glyceryl monostearate, sorbitan olivate, and sorbitan stearate are low HLB surfactant, cetearyl glucoside is not a low HLB surfactant. It is noted that cetearyl glucoside has an HLB of approximately 11-15 and thus, is a high HLB surfactant.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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.
Claim(s) 21-26, 28-30, 32-35, 37, and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leong (US 5,296,166) in view of Dhingra et al (US 2018/0021349 A1).
Regarding claim 21, Leong teaches an emulsion composition comprising a hydrophilic thickening agent (a water soluble polymer); a fatty alcohol such as lauryl alcohol, stearyl alcohol, cetyl alcohol, myristyl alcohol or behenyl alcohol; and emulsifiers including sorbitan oleate (low HLB surfactant; HLB ~4.3) and polysorbate 80 (high HLB surfactant; HLB 15) (Abstract; columns 1-9; Examples 7-29). Leong teaches the emulsion composition is a uniformly dispersed mixture (Abstract; columns 5-9; Examples 7-29). Leong teaches the fatty alcohol such as cetyl alcohol is present in an amount of about 55% by weight or less based on the total weight of the water immiscible phase, and the hydrophilic thickening agent (i.e., hydroxypropyl methyl cellulose, carbomer, xanthan gum, carboxymethyl hydroxypropyl guar, etc.) is present in amount of about 15% by weight or less based on the total weight of the water immiscible phase (Examples 7-29). It is noted that about 55% by weight of fatty alcohol such as cetyl alcohol and about 15% by weight of the hydrophilic thickening agent meet the claimed range of “20% or less by weight of the composition of at least one water soluble polymer” and “about 40% to about 55% by weight of the composition of at least one fatty alcohol” as recited in claim 21. It is noted that "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
However, Leong does not expressly teach the amounts by weight % of the low HLB surfactant and the high HLB surfactant of claim 21.
Regarding the amounts of the low HLB surfactant and the high HLB surfactant of claim 21, Dhingra teaches an emulsion formulation comprising a lipophilic surfactant (a low HLB surfactant) and a hydrophilic surfactant (a high HLB surfactant), wherein the amount of lipophilic surfactant is from 15% to 65% by weight and the amount of hydrophilic surfactant is from 5 to 37.5% by weight (Abstract; [0031]-[0034], [0062]-[0065]; [0114]-[0135]; claims 1-8).
While Leong teaches low amounts of the low HLB surfactant and the high HLB surfactant, it would have been obvious to one of ordinary skill in the art to optimize the concentration/amount of the low HLB surfactant and the high HLB surfactant to higher amounts as claimed in claim 21. One of ordinary skill in the art the art would have been motivated to do so because as discussed above, Dhingra teaches for an emulsion formulation that is uniformly dispersed, the amount of lipophilic surfactant is from 15% to 65% by weight and the amount of hydrophilic surfactant is from 5% to 37.5% by weight, which are ranges that not only overlaps the low amounts disclosed in Leong, but also overlaps the claimed ranges as recited in claim 21. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight % amount of low HLB surfactant and high HLB surfactant in an emulsion base composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claims 22 and 23, Leong teaches suitable hydrophilic thickening agent includes hydroxypropyl methyl cellulose, carbomer, xanthan gum, and carboxymethyl hydroxypropyl guar (columns 8-9; Examples 7-29).
Regarding claim 24, Leong teaches the fatty alcohol is cetyl alcohol or stearyl alcohol (column 10, lines 53-61; Examples 7-29).
Regarding claims 25 and 26, Leong teaches the low HLB surfactant is sorbitan oleate (column 11, lines 4-21; Examples 7-29).
Regarding claim 28, Dhingra provide the guidance for using stearic acid ethoxylates as a lipophilic surfactant (a low HLB surfactant) ([0105]-[0108] and [0201]).
Regarding claims 29 and 30, Leong teaches the high HLB surfactant is polysorbate 80 (a nonionic surfactant) (column 11, lines 4-21; Examples 7-29).
Regarding claim 32, Leong teaches the surfactants and thickener in the water immiscible phase create hydrate structures (Abstract; columns 7-9).
Regarding claim 33, as discussed above, Leong teaches the hydrophilic thickening agent (i.e., hydroxypropyl methyl cellulose, carbomer, xanthan gum, carboxymethyl hydroxypropyl guar, etc.) is present in amount of about 15% by weight or less based on the total weight of the water immiscible phase, and Dhingra for optimizing the amount of lipophilic surfactant from 15% to 65% by weight and the amount of hydrophilic surfactant from 5% to 37.5% by weight. Based on the combined guidance from Leong in view of Dhingra, the weight ratio of surfactant relative to the hydrophilic thickening agent encompassed a weight ratio range which overlaps the claimed weight ratio range of about 9:1 to about 30:1. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the ratio of surfactants to water soluble polymer in the emulsion base composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 34, Leong teaches the emulsion is a nonionic emulsion (columns 4-5; column 7, lines 16-34).
Regarding claims 35, 37 and 39, as discussed above, Leong teaches the emulsion composition is a uniformly dispersed mixture (Abstract; columns 5-9; Examples 7-29). Leong teaches the fatty alcohol such as cetyl alcohol is present in an amount of about 55% by weight or less based on the total weight of the water immiscible phase, and the hydrophilic thickening agent (i.e., hydroxypropyl methyl cellulose, carbomer, xanthan gum, carboxymethyl hydroxypropyl guar, etc.) is present in amount of about 15% by weight or less based on the total weight of the water immiscible phase (Examples 7-29). As discussed above, Dhingra for optimizing the amount of lipophilic surfactant from 15% to 65% by weight and the amount of hydrophilic surfactant from 5% to 37.5% by weight (Dhingra: Abstract; [0031]-[0034], [0062]-[0065]; [0114]-[0135]; claims 1-8). Thus, based on the combined teachings of Leong and Dhingra, the amounts of fatty alcohol, hydrophilic thickening agent (water soluble polymer), lipophilic surfactant (low HLB surfactant), and hydrophilic surfactant (high HLB surfactant) as taught by Leong and Dhingra overlaps the claimed ranges for fatty alcohol, water soluble polymer, lipophilic surfactant (low HLB surfactant), and hydrophilic surfactant (high HLB surfactant) as recited in claims 35, 37 and 39. As discussed above, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight % amounts of fatty alcohol, water soluble polymer, low HLB surfactant, and high HLB surfactant in the emulsion base composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
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 was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 27 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leong (US 5,296,166) in view of Dhingra et al (US 2018/0021349 A1), as applied to claims 21 and 26 above, and further in view of Carter et al (US 2014/0309154 A1).
The emulsion base composition of claims 21 and 26 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claims 27 and 31, Carter teaches a emulsion composition comprising fatty alcohol, surfactants (emulsifiers), and thickening polymers (i.e., carbomers, xanthan gum), wherein the surfactants are selected from the group consisting of anionic, nonionic, cationic, amphoteric, and mixtures thereof, and wherein the surfactants have an HLB 6-16 ([0007], [0016]-[0018], [0039]-[0079], [0164]-[0165], [0182]-[0185]). Carter teaches sorbitan stearate as one of the suitable surfactants, and distearyldimonium chloride (distearyl dimethyl ammonium chloride) as one of the suitable cationic surfactants ([0042]-[0043] and [0049]-[0056]).
It would have been obvious to one of ordinary skill in the art to incorporate sorbitan stearate as the low HLB surfactant and distearyldimonium chloride as the high HLB surfactant in the emulsion of Leong in view of Dhingra, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Carter provided the guidance to do by teaching that aside from sorbitan oleate, sorbitan stearate is also suitable for use as the low HLB surfactant, and aside from polysorbates, cationic surfactants (emulsifiers) such as distearyldimonium chloride is also suitable for use as the high HLB surfactant so as to produce a cationic emulsion (Carter: [0042]-[0044] and [0049]-[0056]). Thus, an ordinary artisan would have looked to other known fatty sorbitan esters including sorbitan stearate and other known high HLB surfactants including cationic surfactants (emulsifiers) such as distearyldimonium chloride, and use them as the low HLB surfactant and the high HLB surfactant in the emulsion of Leong in view of Dhingra, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 36, 38, 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leong (US 5,296,166) in view of Dhingra et al (US 2018/0021349 A1), as applied to claims 21, 34, 35, 37, and 39 above, and further in view of Arditty et al (US 2010/0278770 A1) and Carter et al (US 2014/0309154 A1).
The emulsion base composition of claims 21, 34, 35, 37, and 39 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claims 36, 38, and 40, Leong teaches an emulsion composition comprising a hydrophilic thickening agent (i.e., hydroxypropyl methyl cellulose, carbomer, xanthan gum, and carboxymethyl hydroxypropyl guar); a fatty alcohol such as lauryl alcohol, stearyl alcohol, cetyl alcohol, myristyl alcohol and behenyl alcohol; and emulsifiers including sorbitan oleate (low HLB surfactant; HLB ~4.3) and polysorbate 80 (high HLB surfactant; HLB 15) (Abstract; columns 1-9; Examples 7-29).
Arditty teaches an emulsion composition comprising fatty alcohols, surfactants, and water soluble gelling polymers, wherein suitable fatty alcohols include lauryl alcohol, myristyl alcohol, cetyl alcohol, stearyl alcohol, isostearyl alcohol, palmityl alcohol, oleyl alcohol, cetearyl alcohol (a mixture of cetyl alcohol and Stearyl alcohol), behenyl alcohol, and suitable surfactants include polysorbates such as polysorbate 60 ([0040]-[0065], [0224]-[0272], [0199]-[0205], [0289]-[0313]).
Carter teaches a emulsion composition comprising fatty alcohol, surfactants (emulsifiers), and thickening polymers (i.e., carbomers, xanthan gum), wherein the surfactants are selected from the group consisting of anionic, nonionic, cationic, amphoteric, and mixtures thereof, and wherein the surfactants have an HLB 6-16 ([0007], [0016]-[0018], [0039]-[0079], [0164]-[0165], [0182]-[0185]). Carter teaches sorbitan stearate as one of the suitable surfactants, and distearyldimonium chloride (distearyl dimethyl ammonium chloride) as one of the suitable cationic surfactants ([0042]-[0043] and [0049]-[0056]).
With respect to claim 36, it would have been obvious to one of ordinary skill in the art to incorporate cetearyl alcohol as the fatty alcohol and sodium stearate as the high HLB surfactant in the emulsion of Leong in view of Dhingra, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Arditty teaches that aside from cetyl alcohol and stearyl alcohol, cetearyl alcohol is also suitable for use as the fatty alcohol (Arditty: ([0040]-[0065], [0224]-[0272], [0199]-[0205], [0289]-[0313]), and Carter teaches that aside from polysorbates, sodium stearate is also suitable as the high HLB surfactant (Carter: [0042]-[0045] and [0049]-[0056]). Thus, an ordinary artisan would have looked to other known fatty alcohols including cetearyl alcohol and other known high HLB surfactants including sodium stearate, and use them as the fatty alcohol and the high HLB surfactant in the emulsion of Leong in view of Dhingra, and achieve Applicant’s claimed invention with reasonable expectation of success.
With respect to claim 38, it would have been obvious to one of ordinary skill in the art to incorporate cetearyl alcohol as the fatty alcohol and distearyldimonium chloride as the high HLB surfactant in the emulsion of Leong in view of Dhingra, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Arditty teaches that aside from cetyl alcohol and stearyl alcohol, cetearyl alcohol is also suitable for use as the fatty alcohol (Arditty: [0040]-[0065], [0224]-[0272], [0199]-[0205], [0289]-[0313]), and Carter teaches that aside from polysorbates, cationic surfactants (emulsifiers) such as distearyldimonium chloride is also suitable for use as the high HLB surfactant so as to produce a cationic emulsion (Carter: [0042]-[0045] and [0049]-[0056]).Thus, an ordinary artisan would have looked to other known fatty alcohols including cetearyl alcohol and other known high HLB surfactants including distearyldimonium chloride, and use them as the fatty alcohol and the high HLB surfactant in the emulsion of Leong in view of Dhingra, and achieve Applicant’s claimed invention with reasonable expectation of success.
With respect to claim 40, it would have been obvious to one of ordinary skill in the art to incorporate cetearyl alcohol as the fatty alcohol, sorbitan stearate as the low HLB surfactant and polysorbate 60 as the high HLB surfactant in the emulsion of Leong in view of Dhingra, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Arditty teaches that aside from cetyl alcohol and stearyl alcohol, cetearyl alcohol is also suitable for use as the fatty alcohol, and also provides guidance for using polysorbate 60 as the suitable nonionic surfactant (Arditty: ([0040]-[0065], [0224]-[0272], [0199]-[0205], [0289]-[0313]). Furthermore, Carter teaches that aside from sorbitan oleate, sorbitan stearate is also suitable for use as the low HLB surfactant (Carter: [0042]-[0045] and [0049]-[0056]). Thus, an ordinary artisan would have looked to other known fatty alcohols including cetearyl alcohol, other known low HLB surfactants including sorbitan stearate, and other known high HLB surfactants including polysorbate 60, and use them as the fatty alcohol, the low HLB surfactant, and the high HLB surfactant, respectively, in the emulsion of Leong in view of Dhingra, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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.
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Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11839669.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘669 significantly overlap with the subject matter of instant claims, i.e., while the claims in the Patent ‘669 being method of making cosmetic emulsions, the cosmetic emulsions made are substantially the same in structure as the instantly claimed emulsion base composition drawn to having at least fatty alcohol (i.e., cetyl alcohol, stearyl alcohol), at least one low HLB surfactant (glyceryl monostearate), at least one high HLB surfactant (Distearyldimethylammonium Chloride, Polysorbate 60, Cetearyl Glucoside, Polyglyceryl 10 Stearate), and a water soluble polymer.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11839669.
Conclusion
No claim is allowed.
Pertinent prior arts: Lin (J. Soc. Cosmet. Chem., March 1978, 29: 117-125) and Lin (J. Soc. Cosmet. Chem., December 1978, 29: 745-756). Both Lin references teach processes of producing a cosmetic emulsion using a low-energy emulsification technique, wherein the low-energy emulsification technique, instead of heating the entire external phase (i.e., water phase) (as in the conventional method of producing emulsion), only half of the water phase is first heated to make a concentrated emulsion and the remaining half is then added at room temperature (cold form).
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613