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 .
Status of Application
The Preliminary Amendment filed on 04/30/24 is acknowledged.
Claims 1-22 were amended and are included in the prosecution.
Priority
This Application is a 371 of PCT/EP2022/085437 filed on 12/12/22. This Application also claims foreign priority to FR 2113832 filed on 12/17/21. Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119 (a)-(d), which papers have been placed of record in the file.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) an English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 06/06/24 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the examiner is considering the information disclosure statement. Please see the attached copy of PTO-1449.
Claim Objections
Claims 6 and 22 are objected to because of the following informalities:
In claim 6, line 2, the term “additional” should be added before the term “polymer” in order to align with terminology in dependent claims 7-14.
In claim 22, formula (3) is depicted on a dark background. According to MPEP 608.01(I), “Legibility includes ability to be photocopied and scanned so that suitable reprints can be made and paper can be electronically reproduced by use of digital imaging and optical character recognition. This requires a high contrast, with black lines and a white background. Gray lines and/or a gray background sharply reduce photo reproduction quality and if present in application papers, will likely result in a notification (e.g. Notice to File Corrected Application Papers) that the papers are not in compliance with 37 CFR 1.52. In order to enhance readability of electronic submissions, the USPTO strongly recommends use of a black colored font for text on a white background.”
Appropriate correction is required.
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 2, 7-18, and 20 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 pre-AIA the applicant regards as the invention.
Claim 2 recites the merocyanines of formula (3) in table form. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable. See MPEP 2173.05(s). When such a patent is printed, however, the table will not be included as part of the claim, and instead the claim will contain a reference to the table number. Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant' s convenience.” Ex parte Fressola, 27USPQ2d 1608, 1609 (Bd, Pat. App. & Inter. 1993) (citations omitted). In the instant case, there is a more practical way to define the invention without the use of a table.
Claims 7-14 recite the limitation "… wherein, in the additional polymer …" Claims 7-14 are dependent on claim 6. However, claim 6 does not recite “additional polymer.” There is insufficient antecedent basis for this limitation in the claim.
Claims 16-18, which are dependent on claim 14, are included for not correcting the defects of the claims from which they depend.
Claim 16 recites the limitation “… wherein the alkylene carbonate(s) …” Claim 16 is dependent on claim 14. However, claim 14 does not recite “alkylene carbonate.” There is insufficient antecedent basis for this limitation in the claim. It is recommended that claim 16 be dependent on claim 15 which recites “alkylene carbonate.” For examination purposes, claim 16 is construed to be dependent on claim 15.
Claim 20 recites “… one or more additional UV-screening agents.” Claim 20 is dependent on claim 1, but claim 1 does not recite any UV-screening agents. It is unclear how the UV-screening agents recited in claim 20 can be “additional UV-screening agents.” Clarification and/or amendment are required.
Notice for all US Patent Applications filed on or after March 16, 2013
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 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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Safouane et al. (WO 2020/002537 A1 – “Safouane”).
Instant claim 1 is drawn to a cosmetic or dermatological composition comprising:
at least one merocyanine corresponding to formula (3) below, and also the geometrical isomer forms thereof:
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wherein:
A is -O- or -NH-;
R is a C1-C22 alkyl group, a C2-C22 alkenyl group, a C2-C22 alkynyl group, a C3-C22 cycloalkyl group or a C3-C22 cycloalkenyl group, it being possible for said groups to be interrupted by one or more O; and
dipropylene glycol.
Safouane teaches a cosmetic or dermatological composition comprising: a) at least one merocyanine of formula (1) or (2) (claims 1-12) which are chosen from those corresponding to formula (3) below and also the E/E- or E/Z- geometrical isomer forms thereof:
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(Page 12, lines 1-15 and claim 13). The composition comprises at least one aqueous phase which contains water-soluble or water-miscible solvents (Page 21, line 30 to Page 22, line 4) such as dipropylene glycol (Page 22, line 2 and Page 31, lines 30-34). The composition may be in the form of a simple or complex emulsion (O/W, W/O, O/W/O or W/O/W), such as a cream, a milk or a cream gel (Page 34, lines 6-9). The merocyanines of formula (3) are chosen from the E/E- or E/Z- geometrical isomer forms which include:
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(Page 13 and claim 14). Compound (25) in its E/E and/or E/Z geometrical configuration is used in a preferred mode of the invention (Page 14, line 3 to Page 15, line 4). The E/Z form has the following structure:
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The E/E form has the following structure:
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The merocyanines are present in the compositions in a concentration ranging from 0.1% to 25% by weight, and preferentially from 0.2% to 20% by weight and better still from 0.5% to 10% by weight relative to the total weight of the composition (Page 15, lines 5-8 and claim 16). The composition includes at least one alkylene carbonate (Abstract, Page 16, lines 8-38, and claim 1), and preferably, the alkylene carbonate is propylene carbonate (Page 16, line 38). The composition also contains one or more additional UV-screening agents (Page 22, line 19 to Page 31, line 18, and claim 26).
Safouane does not expressly teach the combination of the at least one merocyanine and dipropylene glycol in a single embodiment.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cosmetic or dermatological composition comprising at least one merocyanine of formula (3), as taught by Safouane, include an aqueous phase which contains dipropylene glycol as a water-soluble or water-miscible solvent, also as taught by Safouane, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because Safouane teaches that the composition may be in the form of a simple or complex emulsion (O/W, W/O, O/W/O or W/O/W) (Page 34, lines 6-9), and such emulsions contain a water or aqueous phase, which would include water-soluble or water-miscible solvents such as the dipropylene glycol (Page 22, line 2).
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 would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding instant claims 1 and 22, the limitations of a cosmetic or dermatological composition and a method for solubilizing a merocyanine corresponding to formula (3) and dipropylene glycol would have been obvious over the cosmetic or dermatological composition comprising: a) at least one merocyanine of formula (1) or (2) (claims 1-12), which are chosen from those corresponding to formula (3) and also the E/E- or E/Z- geometrical isomer forms thereof (Page 12, lines 1-15, claims 13-14), including Compound (25) in its E/E and/or E/Z geometrical configuration (Page 14, line 3 to Page 15, line 4), wherein the composition is in the form of a simple or complex emulsion (O/W, W/O, O/W/O or W/O/W), such as a cream, a milk or a cream gel (Page 34, lines 6-9), and wherein the composition comprises at least one aqueous phase which contains water-soluble or water-miscible solvents (Page 21, line 30 to Page 22, line 4) such as dipropylene glycol (Page 22, line 2, Page 31, lines 30-34), as taught by Safouane.
Regarding instant claims 2 and 3, the limitations of Compound 25 and it’s E/Z and E/E geometrical configurations would have been obvious over Compound (25) in its E/E and/or E/Z geometrical configuration (Page 14, line 3 to Page 15, line 4), as taught by Safouane.
Regarding instant claim 4, the limitation of the merocyanines of formula (3) and/or the geometric isomer forms thereof present in a concentration ranging from 0.1% to 15% by weight relative to the total weight of the composition would have been obvious over the merocyanines present in the compositions in an overlapping concentration ranging from 0.1% to 25% by weight, and preferentially from 0.2% to 20% by weight and better still from 0.5% to 10% by weight relative to the total weight of the composition (Page 15, lines 5-8 and claim 16), as taught by Safouane. According to MPEP 2144.05, “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding instant claim 5, the limitation of the dipropylene glycol present in an amount of between 0.1% and 99% by weight relative to the total weight of the composition would have been obvious over the aqueous phase which is present at 5% to 95% by weight relative to the total weight of the composition (Page 22, lines 12-15), wherein the aqueous phase contains water-soluble or water-miscible solvents (Page 21, line 30 to Page 22, line 4) such as dipropylene glycol (Page 22, line 2, Page 31, lines 30-34), as taught by Safouane. One of ordinary skill in the art would have found that the aqueous phase concentration taught by Safouane, i.e., 5% to 95%, which further contains solvents such as dipropylene glycol, lies within the claimed range of 0.1% and 99%, and would have been obvious. Please see MPEP 2144.05.
Regarding instant claims 15-19, the limitations of at least one alkylene carbonate would have been obvious over the at least one alkylene carbonate (Abstract, Page 16, lines 8-38, and claim 1), and preferably, wherein the alkylene carbonate is propylene carbonate (Page 16, line 38), as taught by Safouane.
Regarding instant claim 20, the limitation of one or more additional UV-screening agents would have been obvious over the one or more additional UV-screening agents (Page 22, line 19 to Page 31, line 18, and claim 26), as taught by Safouane.
Regarding instant claim 21, the limitation of a non-therapeutic cosmetic process for caring for and/or making up a keratin material would have been obvious over the non-therapeutic cosmetic process for caring for and/or making up a keratin material (Abstract and claims 27-29), as taught by Safouane.
Claims 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Safouane et al. (WO 2020/002537 A1 – “Safouane”), as applied to claims 1-5 and 15-22 above, in view of Guiramand et al. (WO 2019/096961 A1 – “Guiramand”).
Instant claim 6 is drawn to the cosmetic or dermatological composition as claimed in claim 1 comprising at least one polymer comprising monomer units of formulae (A) and (B):
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The teaching of Safouane is discussed above.
Although Safouane teaches 2-acrylamido-2-methylpropanesulfonic acid and of hydroxyethyl acrylate, for instance Simulgel NS® and Sepinov EMT 10® sold by the company SEPPIC (Page 32, lines 3-5), Safouane does not expressly teach the polymer recited in instant claim 6.
Guiramand teaches a composition comprising a UV-screening agent, an acrylic copolymer and an acrylamidomethylpropanesulfonic acid copolymer (Abstract), wherein the copolymer makes it possible to obtain stable compositions which have a high SPF and improved cosmetic properties, including no shiny effect after application to the skin and the skin is neither greasy nor tacky (Page 2, lines 6-10). The polymer comprises monomer units of formulae (A) and (B):
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(Page 5, lines 8-22). “Preferably, at least 70% by weight of the groups R1 are behenyl radicals, preferentially at least 80% by weight, more preferentially at least 90% by weight … Preferably, said weight ratio ranges from 1:15 to 1:1 and preferentially ranges from 1:10 to 1:4 … The polymer has a number-average molecular weight Mn ranging from 2000 to 9000 g/mol, preferably ranging from 5000 to 9000 g/mol ... Preferably, the polymer has a melting point ranging from 60°C to 69°C and preferentially ranging from 63°C to 67°C” (Page 6, lines 1-18). Guiramand teaches the preparation of behenyl acrylate/2-hydroxyethyl acrylate copolymer (Polymer 1) (Page 33, line 21 to Page 34, line 2) and includes it in O/W emulsions (Examples 1-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cosmetic or dermatological composition comprising at least one merocyanine of formula (3) and an aqueous phase which contains dipropylene glycol as a water-soluble or water-miscible solvent, as taught by Safouane, include the polymer comprising monomer units of formulae (A) and (B), as taught by Guiramand, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because the copolymer makes it possible to obtain stable compositions which have a high SPF and improved cosmetic properties, including no shiny effect after application to the skin and the skin is neither greasy nor tacky (Page 2, lines 6-10), as taught by Guiramand.
Regarding instant claims 6-12 and 14, the limitations of the polymer comprising monomer units of formulae (A) and (B) would have been obvious over the 2-acrylamido-2-methylpropanesulfonic acid and of hydroxyethyl acrylate, for instance Simulgel NS® and Sepinov EMT 10® sold by the company SEPPIC (Page 32, lines 3-5), as taught by Safouane, in view of the polymer comprising monomer units of formulae (A) and (B) (Page 5, lines 8-22), wherein “Preferably, at least 70% by weight of the groups R1 are behenyl radicals, preferentially at least 80% by weight, more preferentially at least 90% by weight … Preferably, said weight ratio ranges from 1:15 to 1:1 and preferentially ranges from 1:10 to 1:4 … The polymer has a number-average molecular weight Mn ranging from 2000 to 9000 g/mol, preferably ranging from 5000 to 9000 g/mol ... Preferably, the polymer has a melting point ranging from 60°C to 69°C and preferentially ranging from 63°C to 67°C” (Page 6, lines 1-18), and the preparation of behenyl acrylate/2-hydroxyethyl acrylate copolymer (Polymer 1) (Page 33, line 21 to Page 34, line 2), as taught by Guiramand.
Regarding instant claim 13, the limitation of at least 60% by weight of the R1 groups that are stearyl radicals would have been obvious over the R1 groups that are chosen from alkyl radicals (Page 5, lines 13-14), as taught by Guiramand.
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 1-22 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-24 of copending Application No. 18/706,178 (“the ‘178 Application”) in view of Safouane et al. (WO 2020/002537 A1 – “Safouane”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a cosmetic or dermatological composition comprising at least one merocyanine corresponding to formula (3), and therefore, encompass overlapping or coextensive subject matter.
One difference is that claim 1 of the ‘178 Application recites at least one diol comprising from 4 to 7 carbon atoms whereas instant claims do not recite this limitation.
Another difference is that instant claim 1 recites dipropylene glycol whereas claims of the ‘178 Application do not recite this limitation.
The teaching of Safouane is discussed above. Safouane also teaches diols (Page 22, line 1, Page 31, line 32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cosmetic or dermatological composition comprising at least one merocyanine of formula (3), as recited in the instant claims, include a diol as taught by Safouane, and arrive at the claims of the ‘178 Application.
One of ordinary skill in the art would have been motivated to do this because the compositions recited in both instant claims and Safouane are drawn to the same cosmetic compositions containing at least one merocyanine of formula (3). One of ordinary skill in the art would have been motivated to include the diols of Safouane and arrive at claims of the ‘178 Application.
Alternatively, one of ordinary skill in the art would have found it obvious to prepare the composition recited in claims of the ‘178 Application, add the propylene glycol taught by Safouane and arrive at the claims of the instant application.
Moreover, claim 5 of the ‘178 Application recites dipropylene glycol and claim 21 of the ‘178 Application recites propylene carbonate.
Claims of both applications recite the transitional phrase “comprising,” which is considered open language and allows the inclusion of additional components.
Therefore, instant claims are obvious over claims of the ‘178 Application in view of Safouane, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-22 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No. 18/706,437 (“the ‘437 Application”) in view of Safouane et al. (WO 2020/002537 A1 – “Safouane”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a cosmetic or dermatological composition comprising at least one merocyanine corresponding to formula (3), and therefore, encompass overlapping or coextensive subject matter.
One difference is that claim 1 of the ‘437 Application recites at least ascorbic acid and/or derivative thereof, whereas instant claims do not recite this limitation.
Another difference is that instant claim 1 recites dipropylene glycol whereas claims of the ‘437 Application do not recite this limitation.
The teaching of Safouane is discussed above. Safouane also teaches vitamins and derivatives thereof (Page 32, line 30).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cosmetic or dermatological composition comprising at least one merocyanine of formula (3), as recited in the instant claims, include a vitamin or derivative thereof as taught by Safouane, and arrive at the claims of the ‘437 Application.
One of ordinary skill in the art would have been motivated to do this because the compositions recited in both instant claims and Safouane are drawn to the same cosmetic compositions containing at least one merocyanine of formula (3). One of ordinary skill in the art would have been motivated to include the vitamins or derivatives thereof of Safouane and arrive at claims of the ‘437 Application.
Alternatively, one of ordinary skill in the art would have found it obvious to prepare the composition recited in claims of the ‘437 Application, add the propylene glycol taught by Safouane and arrive at the claims of the instant application.
Claims of both applications recite the transitional phrase “comprising,” which is considered open language and allows the inclusion of additional components.
Therefore, instant claims are obvious over claims of the ‘437 Application in view of Safouane, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-22 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 19-23, 25-35, and 37-41 of copending Application No. 18/720,237 (“the ‘237 Application”) in view of Safouane et al. (WO 2020/002537 A1 – “Safouane”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a cosmetic or dermatological composition comprising at least one merocyanine corresponding to formula (3), and therefore, encompass overlapping or coextensive subject matter.
One difference is that claim 19 of the ‘237 Application recites at least one hydrotrope chosen from nicotinamide, caffeine, sodium salicylate or mixtures of two or more thereof, whereas instant claims do not recite this limitation.
Another difference is that instant claim 1 recites dipropylene glycol whereas claims of the ‘237 Application do not recite this limitation.
The teaching of Safouane is discussed above. Safouane also teaches vitamins and derivatives thereof (Page 32, line 30) as well as salicylic compounds (Page 23, line 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a cosmetic or dermatological composition comprising at least one merocyanine of formula (3), as recited in the instant claims, include a vitamin or derivative thereof or salicylic compounds as taught by Safouane, and arrive at the claims of the ‘237 Application. One of ordinary skill in the art would have found it obvious to include various suitable vitamins including the nicotinamide recited in claim 19 of the ‘237 Application.
One of ordinary skill in the art would have been motivated to do this because the compositions recited in both instant claims and Safouane are drawn to the same cosmetic compositions containing at least one merocyanine of formula (3). One of ordinary skill in the art would have been motivated to include the vitamins or derivatives thereof or salicylic compounds of Safouane and arrive at claims of the ‘237 Application.
Alternatively, one of ordinary skill in the art would have found it obvious to prepare the composition recited in claims of the ‘237 Application, add the propylene glycol taught by Safouane and arrive at the claims of the instant application.
Claims of both applications recite the transitional phrase “comprising,” which is considered open language and allows the inclusion of additional components.
Therefore, instant claims are obvious over claims of the ‘237 Application in view of Safouane, and they are not patentably distinct over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
No claims are allowed.
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/ARADHANA SASAN/Primary Examiner, Art Unit 1615
Prosecution Insights