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 .
Applicant’s arguments, filed 07/06/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claims 1-5 are pending and under examination.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over, Evans et al (WO 2021094429 A1, hereinafter “Evans”), in view of Sawada (JP 2021011463 A), as evidenced by the U.S. Food and Drug Administration (Cosmetics Safety Q&A: Personal Care Products, 2022, hereinafter “FDA”) and GetChem Co. LTD (2-Octyl-1-dodecanol, retrieved 2026 from https://getchem.com/products/2-octyl-1-dodecanol-cas-5333-42-6/).
Evans discloses a deodorant aerosol comprising 4.55 wt% or 3.625 wt% undecane and tridecane (C11 and C13 straight-chain saturated hydrocarbons), 0.1 wt% octyldodecanol (C20 monovalent alcohol), etc. (table 1, examples 1 and 2). Table 2 also discloses embodiments comprising undecane and tridecane at 3.54 wt% and octyldodecanol at 0.10 wt%, 9.08 wt% undecane and tridecane and 0.20 wt% octyldodecanol, and 9.1 wt% undecane and tridecane and 0.20 wt% octyldodecanol (table 2, examples 8-10). As evidenced by FDA, deodorants are cosmetics. As evidenced by GetChem Co. LTD, octyldodecanol is synonymous with 2-octyl-1-dodecanol, has a freezing point of < -40 °C, and comprises 20 carbon atoms.
Evans does not specifically disclose the newly amended ratio of claim 1.
Sawada teaches an oil-in-water skin cleanser comprising, among other components, component C and higher alcohols (¶¶ 11, 62, examples). Component C includes hydrocarbon oils comprising 19 or less carbon atoms at 1.0-20.0 mass% (¶¶ 27, 31). The higher alcohols preferably include 12-24, and more preferably 14-22 carbon atoms, and may be selected from stearyl alcohol, oleyl alcohol, behenyl alcohol, etc. (¶¶ 62, 63, examples). The higher alcohols can be included at 0.05 to 5.0 mass% (¶ 64, examples). The higher alcohols contribute to a refreshing feeling with reduced stickiness and greasiness after application (¶ 64).
Regarding the mass% of claim 1, where examples 1 and 2 of Evans comprise 4.55 wt% and 3.625 wt% undecane and tridecane, and 0.1 wt% octyldodecanol, the resulting weight percentages relative to the other component are 97.85 wt% undecane and tridecane and 2.15 wt% octyldodecanol, 97.32 wt% undecane and tridecane and 2.68 wt% octyldodecanol, respectively. Likewise, examples 8-10 comprise, relative to the other component, 97.27 wt% undecane and tridecane and 2.74 wt% octyldodecanol, 97.84 wt% undecane and tridecane and 2.16 wt% octyldodecanol, and 97.85 wt% undecane and tridecane and 2.15 wt% octyldodecanol, respectively. Therefore, where Evans discloses deodorant (i.e., a cosmetic) composition comprising the instantly claimed components falling within the claimed ranges, and in the claimed amounts relative to each other, the limitations of claim 1 are met. Further, where the instantly claimed composition is recited to be in the form of an oil, and where the same components as instantly claimed, and in the same amounts, are disclosed, it appears that the combination of the two components within the cosmetic are in the form of an oil. The ability for the components to be in the form of an oil appears to be inherent to the components themselves, and their amounts. See MPEP 2112(II) and (III). Note, since mass and weight are directly proportional under normal Earth gravity, the numerical values for mass% and wt% are the same.
Regarding the freezing point of claims 1 and 3, Evans discloses octyldodecanol (i.e., 2-octyl-1-dodecanol), which is evidenced above as having a freezing point falling within the claimed range.
Regarding the mass ratio of claim 1, the resulting (A)/(B) ratio of examples 1, 2, 8, 9, and 10, are 45.51, 36.25, 35.4, 45.3, and 45.51 respectively, and where Sawada teaches higher alcohols were known to be included in cosmetic compositions in combination with hydrocarbon oils from 0.05 to 5.0 mass%, where they contribute to a refreshing feeling with reduced stickiness and greasiness after application, it would have been obvious for the skilled artisan to have adjusted the amount of higher alcohol of Evans to within the known ranges of Sawada, in order to achieve desired properties, thereby resulting in a mass ratio overlapping those instantly claimed. 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(I). Further, where Sawada teaches the amount of higher alcohol as a results-effective variable for achieving refreshing feeling with reduced stickiness and greasiness, it would have been well within the relative skills of the skilled artisan to have routinely optimized the amount of the alcohol in order to achieve desired and optimal properties, with a reasonable expectation of success. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. 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).
Regarding claim 2, where the combination of undecane and tridecane and octyldodecanol are present in the cosmetic at 4.65 wt%, for example in example 1, and where it would have been obvious to adjust the amount of alcohol up to within the claimed ratios for the reasons discussed above, the limitation of a cosmetic composition comprising 1-80 mass% of the cosmetic oil agent is met. Note, since mass and weight are directly proportional under normal Earth gravity, the numerical values for mass% and wt% are the same.
Regarding claims 4 and 5, where octyldodecanol (i.e., 2-octyl-1-dodecanol) is included in the embodiments made obvious above, and is evidenced as having 20 carbon atoms, the limitations are met.
Response to Arguments
First, Applicants assert the claimed combination demonstrates superior effects as demonstrated by Examples 1-5 in Table 2 and Examples 7-12 in Table 3, compared to the comparative examples. Applicants assert the inventive examples are superior to the comparative examples and assets these results are not taught or suggested by the cited references. Second, Applicants assert the examples of Evan have an (A)/(B) ratio outside of the newly amended range.
First, respectfully, this argument is not persuasive. While the inventive examples do show some improvements to the affinity of the skin, powdery feeling with moisture, and rinsing property with water compared to comparative examples in some cases, but not all, it does not appear that the results show criticality of the claimed ratios, and the examiner notes that the comparative examples are not representative of the closest prior art. For example, inventive example 4 had an (A)/(B) ratio of 39, while inventive example 6 has an (A)/(B) ratio of 199, however, inventive example 4 outperformed inventive example 6 in skin affinity, rinsing, and was close in powdering feeling. The closest prior art of Evans teaches the mass% of (A) and (B) as claimed, but simply has a ratio that is lower than the claimed range, and is similar to that of inventive example 4. Accordingly, it does not appear that the data shows an improvement in the claimed ratios, where the inventive examples, including those with ratios outside the claimed range, produced similar results. Purely arguendo, even if unexpected results were established, while inventive example 3 appears to have the highest numerical score in some categories compared to the other inventive examples, not all, it is not clear if this is due to the specific ratio, the mass% of each component, or the particular combination of n-dodecane and 2-octyl-1-dodecanol, as there appears to be no direct comparison to determine what particular factor contributed to the higher values. Comparing inventive examples 3 and 4, inventive example 4 actually performed better than 3 in affinity to the skin, despite having a ratio outside the claimed range. Additionally, from the results, it does not appear that a trend in the data can be established with the ratios, where some embodiments outside the claimed ratios performed better in some cases than those within, and those within the claimed ratios were not consistently improved over the entire range.
Second, respectfully, this argument is not persuasive. Sawada is newly added to the rejection in view of Evans for teachings and motivation to adjust the amount of the alcohol component, thereby resulting in a mass ratio of (A)/(B) overlapping the claimed range.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/683,882 (reference application), hereinafter ‘882, in view of Evans et al (WO 2021094429 A1, hereinafter “Evans”), Sawada (JP 2021011463 A), and Lewis (Influence of Shear and Temperature on the Crystallization of Long Chain Hydrocarbon Formulation Ingredients, University of Leeds, 2019, pp. 1-255, cited on IDS dated 12/17/2025).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘882 disclose a cosmetic oil agent comprising 30-60 mass% of a straight-chain saturated hydrocarbon having a carbon number of 8 to 13, and 0.1 to 20 mass% of a monovalent alcohol having a carbon number of 16 to 24. The claims also disclose a cosmetic containing 1 to 60 mass% of the cosmetic oil agent. The monovalent alcohol has a freezing point of 20 °C or lower, or 10 °C or lower. The alcohol component is one or more selected from isostearyl alcohol, 2-octyl-1-dodecanol, and 2-decyl-1-tetradecanol.
The claims of ‘882 do not disclose the mass% of (A) and (B) as instantly claimed, nor their ratio.
Evans and Sawada are discussed above.
Lewis discloses mixtures of alkanes, alkanols, and triglycerides that are used to provide structure to cosmetics (abs on pg. 8). Lewis discloses binary mixtures of 1-octadecanol (C18 monovalent alcohol, i.e., stearyl alcohol, see pg. 58 of Lewis) in the amounts of 5.98 or 7.97 mg/ml in dodecane (straight-chain saturated C12 hydrocarbon) (pg. 157 table 5-19). A simple calculation results in about 0.8 wt% 1-octadecanol and 99.2 wt% dodecane, or 1.1 wt% 1-octadecanol and 98.9 wt% dodecane. Lewis notes that changing the formulation composition of a cosmetic product can alter its performance, appearance, sensory feel and stability (section 6.1).
It would have been obvious to modify the cosmetic oil agent of ‘882 with known weight percentages of hydrocarbon oils and monovalent alcohols as instantly claimed, such as 97.85 wt% undecane and tridecane and 2.15 wt% octyldodecanol, resulting in a ratio of 45.51, as taught by Evans. From there, it would have been obvious to adjust the amount of alcohol to those taught by Sawada, for the same reasons discussed above, overlapping the claimed range. 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(I). Further, it would have been well within the relative skills of the skilled artisan to have routinely optimized the ratios, for the same reasons discussed above by Sawada. Note, since mass and weight are directly proportional under normal Earth gravity, the numerical values for mass% and wt% are the same.
Further, purely arguendo, if these mass percentages cannot be achieved with the additional straight-chain saturated hydrocarbon having a carbon number of 14-16, as recited in claim 1 of ‘882, where binary mixtures were known from Lewis, it would have been obvious to formulate the cosmetic oil agent as such, where binary mixtures were known to provide structure to cosmetics and alter properties, depending on the desired use.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants request the provisional rejection be held in abeyance until all other remaining rejections are overcome.
The Examiner acknowledges Applicants assertion. Accordingly, the claims are rejected for the same reasons above and of record.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
Prosecution Insights