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 .
Claim Rejections - 35 USC § 102
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.
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-8 and 10-18 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Brandt et al (20210371773).
Brandt et al disclose a personal cosmetic formulation comprising in example 64:
TABLE-US-00066 Ingredient % Aqua ad 100 Sodium Hydroxypropyl Starch Phosphate 6.0 Sodium Laureth Sulfate 5.5 Cocamidopropyl Betaine 3.0 Glucolipid 3.0 Lauric Acid 2.5 Petrolatum 2.0 Sodium Cocoyl Glycinate 2.0 Glycerin 1.7 Sodium Lauroyl Isethionate 1.5 Glycine Soja (Soybean) Oil 1.0 Helianthus Annuus (Sunflower) Oil 1.0 Sodium Chloride 1.0 Stearic Acid 0.7 Guar Hydroxypropyltrimonium Chloride 0.3 DMDM Hydantoin 0.1 Tallow Acid 0.2 Palmitic Acid 0.1 Sodium Isethionate 0.2 BHT 0.1 Tetrasodium EDTA 0.2 Methylisothiazolinone 0.3 Iodopropynyl Butylcarbamate 0.1 Titanium Dioxide 0.1 Parfum, Dyes q.s.
As this reference teach all of the instantly required it is considered anticipatory.
In the alternative, Brandt et al is silent with respect to the pH of the compositions in the working examples. Brandt et al specifically teach a pH in the range from 3.5-9.0 (0031).
One skilled in the art would have envisioned a pH as claimed from 4-8 since the teachings of Brandt specifically lie within said range and one skilled would expect similar pH conditions when the same or similar components are suggested for the same purpose of cosmetic applications.
In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Claim Rejections - 35 USC § 103
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brandt et al (202110371773) in view of Kleinen et al (20220183958).
Brandt et al is relied upon as set forth above. Specifically, Brandt et al is silent with the specific glycolipid being sophorolipid or rhamnolipid and said cationic polymer being a chitosan or polylysine.
Kleinen et al is a cosmetic formulation for skin applications, said formulation comprises glycolipids such as rhamnolipid (0006-0012); and the cationic polymer comprises a chitosan (Table 00011).
It would have been obvious to the skill artisan to include a specific glucolipid such as rhamnolipid for their advantages described in Kleinen et al for cosmetic applications (0006-0012) and said cationic polymer of chitosan for its intended purpose. One skilled in the art, in the absence of a showing to the contrary, would have been envisioned the similar components described in Brandt et al and utilized their species as obvious to try with the expectation of delivering the same or similar characteristics given their teachings in Brandt et al.
As stated in KSR Int'l Co., v. Teleflex, Inc., 550 U.S. 398, 418 (2007):
"[A]nalysis [of whether the subject matter of a claimwould have been prima facie obvious] need not seek out preciseteachings directed to the specific subject matter of thechallenged claim, for a court can take account of the inferencesand creative steps that a person of ordinary skill in the artwould employ."
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/ 756,678 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in similar components for the same purpose.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-1498. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NECHOLUS OGDEN JR/ Primary Examiner, Art Unit 1761
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