CTNF 18/693,848 CTNF 95294 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION Election/Restriction Applicant's election with traverse of claims 1-12 in the reply filed on 03/06/2026 is acknowledged. The traversal is on the ground(s) that the claims haven’t been examined nor rejected and that applicant hasn’t had a chance to respond/amend the claims and as such it is incorrect to use the interpretation of the phrase “contribution which each of the inventions, considered as a whole, makes over the prior art.” This is not found persuasive because the groups of inventions listed in the restriction requirement of 01/07/2026 do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: 18-07-02 AIA Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a composition comprising a at least one interface stabilizer , this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US PGPUB 20110064681 A1 (Wendel, 2011; as submitted on IDS of 03/20/2024). Wendel teaches a foaming composition comprising polyurethane, taught as a compound for modifying the rheological properties of the composition (see Wendel, Table 15; paragraphs 0001, 0603-0604). It is also taught that the polyurethane is used to stabilize the viscosity of the composition (see Wendell, paragraph 0140) . The requirement is still deemed proper and is therefore made FINAL. Further it is noted that claims 13-15 have been cancelled by applicant . Information Disclosure Statement The information disclosure statement (IDS) filed on 03/20/2024, 01/31/2025, and 08/15/2025 has been considered here. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 10 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. Claim 10 depends on claim 8, which states that the at least one oil is selected from the “group consisting of oils of plant or animal origin…silicone oils, hydrocarbon oils, and mixtures thereof.” Claim 10 recites that the at least one oil is present in an amount higher than 10 wt relative to the total weight of the composition. The first issue is present here, where it is not clear what “10 wt relative to the total weight of the composition is”. For purposes of search and examination, the claim is understood to read “10 wt.% relative to the total weight of the composition.” Claim 10 further recites that when the silicone oils and/or hydrocarbon oils are present, each is present in an amount equal to or lower than 10 wt.%, relative to the total weight of the composition. The second issue with the claim is that if only silicone oil or only hydrocarbon oil is present, then it is not clear how the equal to or lower than 10 wt.% can be possible while also satisfying the limitation that the at least one oil is present in an amount higher than 10 wt.% relative to the total weight of the composition. As such the metes and bounds of the claim are not clear to one with ordinary skill in the art, thus the claim is indefinite. For purposes of search and consideration, the claim is understood to be dependent on claim 9, wherein the silicone/hydrocarbon oils are optional additions to the at least one oil. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim s 1 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20110064681 A1 (Wendel, 2011; as submitted on IDS of 03/20/2024) . In regards to claims 1 and 4, Wendel teaches a foaming composition comprising polyurethane, taught as a compound for modifying the rheological properties of the composition (see Wendel, Table 15; paragraphs 0001, 0603-0604). It is also taught that the polyurethane is used to stabilize the viscosity of the composition (see Wendell, paragraph 0140) and used in an amount from 0.01 to 10% by weight relative to the total composition (see Wendel, paragraph 0137). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Further in regards to claims 1 and 5-7, Wendel teaches that the composition comprises an anionic surfactant such as alkyl sulfosuccinate, specifically dioctyl sodium sulfosuccinate (see Wendel, paragraph 0178), an amphoteric surfactant, such as cocamidopropyl betaine (see Wendel, paragraphs 0210-0211), and a nonionic surfactant, such as lauryl glucoside (see Wendel, paragraph 0201) (see Wendell, paragraphs 0177-0213 generally). It is also taught that each surfactant is present from 5 to 25% by weight, more preferably from 10 to 20% by weight, of the total composition (see Wendel, paragraph 0213). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Further in regards to claim 1 and 8-11, the composition is taught to comprise at least one oil, specifically animal and vegetable oils, silicone oils, and hydrocarbon oils, among others in an amount from 30-80% by weight based on the total weight of the composition (see Wendel, paragraphs 0171-0176). As silicone/hydrocarbon oils are not a required component of Wendell and the claims recite these components as optional, it is noted that the teachings of Wendel meet the limitations of the instant claims. Further, it is noted that with the amount of polyurethane taught (i.e., 0.01 to 10% by weight) and the amount of oil (i.e., 30-80% by weight), the ratio of interface stabilizer to the at least one oil is from 1:3000 to 1:8. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In regards to claim 12, the composition is taught to be an oil-in-water composition and is taught to be in the form of an aqueous dispersion (i.e., has an aqueous phase) (see Wendel, paragraphs 0135 and 0138 for example). Wendel does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Wendel with a reasonable expectation of success to obtain the composition of the instant claims. A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the composition of the instant claims with predictable results . 07-22-aia AIA Claim s 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20110064681 A1 (Wendel, 2011; as submitted on IDS of 03/20/2024) as applied to claim s 1 and 4-12 above, and further in view of Cosmetics Business (2018) . The teachings of Wendel have been described supra . The teachings of Wendel are silent on the how the polyurethane polymer interface stabilizer is formed. Cosmetics Business teaches that Oilkemia™ 5S polymer is a versatile rheology modifier for skin care (see Cosmetics Business, page 1). It is also taught that the composition comprises polyurethane-79 and is used in emulsions (see Cosmetics Business, page 2). It is noted that Oilkemia™ 5S polymer is an especially preferable polyurethane polymer that is used in the instant composition and meets the requirements set forth in claims 2-3 (see instant specification as filed, page 24, lines 4-9). In regards to claims 1-12, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Wendel and Cosmetics Business to formulate the instant composition as Wendel teaches the use of polyurethane as a rheology modifier and Cosmetics Business teaches that Oilkemia™ 5S polymer is a versatile rheology modifier comprising polyurethane that is known to be used in emulsions, such as the one taught in Wendel. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the polymer of Cosmetics Business with the method of making a polyurethane foaming composition of Wendel (see e.g., Wendel, paragraphs 0494-0499) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results. Further in regards to claims 2-3, a product-by-process claim drawn to a composition directed towards the composition, specifically to the formation of the polyurethane polymer interface stabilizer, the patentability of a product does not depend on its method of production. The combination of Wendel and Cosmetics Business teach the instantly claimed composition. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by- process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. The teachings of Wendel and Cosmetics Business teach the composition as instantly claimed, thus the burden shifts to the applicant to come forward with evidence showing that the process of making the composition as instantly claimed produces a materially different product than the composition of Wendel and Cosmetics Business. Conclusion No claims allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AYAAN A ALAM whose telephone number is (571)270-1213. The examiner can normally be reached M-F 8-5 EST. 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, Bethany Barham can be reached at 571-272-6175. 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. /ISIS A GHALI/Primary Examiner, Art Unit 1611 /A.A.A./Examiner, Art Unit 1611 Application/Control Number: 18/693,848 Page 2 Art Unit: 1611 Application/Control Number: 18/693,848 Page 3 Art Unit: 1611 Application/Control Number: 18/693,848 Page 4 Art Unit: 1611 Application/Control Number: 18/693,848 Page 5 Art Unit: 1611 Application/Control Number: 18/693,848 Page 6 Art Unit: 1611 Application/Control Number: 18/693,848 Page 7 Art Unit: 1611 Application/Control Number: 18/693,848 Page 8 Art Unit: 1611 Application/Control Number: 18/693,848 Page 9 Art Unit: 1611
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