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 .
Claims 1-19 are pending examination.
Claim Objections
Claim 10 is objected to because of the following informalities: the abbreviations “EDTA”, “GLDA” and “EDDS” need to include their plain names “ethylenediaminetetraacetic acid”, “tetrasodium glutamate diacetate” and “ethylenediamine-N,N’-disuccinic acid”, respectively. Appropriate correction is required.
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 1-8, 12-14 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/789,328 (herein ‘328). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are drawn to a composition comprising antioxidant, fatty alcohol and oil and ‘328 claims a composition comprising 10-95% vegetable oils, 0.1-10% surfactants, 0.1-10% fatty alcohol and 0.1-5% sensorially active agents. The formulations further comprise 1-50% emollients selected from isopropyl palmitate, isopropyl myristate and ethylhexyl palmitate. The claims do not specify cinnamic acid derivatives, however they are encompassed by the scope of the sensorially active agents which are cooling agents (claim 14) and these are defined as including 3,4-methylenedioxycinnamic acid [0083]. Therefore, the present claims are prima facie obvious in view of the teachings of ‘328.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8, 12, 13 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,343,411 (herein ‘411) in view of Drovetskaya et al. (US 9,592,187; patented March 14, 2017). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to a composition comprising antioxidant, fatty alcohol and oil and ‘411 claims a gel comprising cetearyl alcohol, at least one ester of a fatty acid selected from isopropyl myristate, an emulsifier and one fatty compound other than the fatty alcohol which has a lamellar crystalline phase.
‘411 does not include cinnamic acid derivatives. It is for this reason that Drovetskaya et al. is joined. Drovetskaya et al. disclose a baby sunscreen stick comprising 10% castor oil and up to about 30% castor oil to q.s., 3% stearyl alcohol (C18 fatty alcohol) and 0.05% pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (Example 3, column 21, lines 52-62). The preferred antioxidant is pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (column 11, lines 59-62). Therefore, the present claims are prima facie obvious in view of the teachings of ‘411 in view of Drovetskaya et al. because one of ordinary skill in the art would have been motivated to include cinnamic acids as antioxidants with a reasonable expectation of success.
Claims 1-8, 12, 13 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,296,041 (herein ‘041) in view of Drovetskaya et al. (US 9,592,187; patented March 14, 2017). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to a composition comprising antioxidant, fatty alcohol and oil and ‘041 claims a hair care composition comprising surfactants, C14-22 alcohols, isopropyl myristate and water.
‘041 does not include cinnamic acid derivatives. It is for this reason that Drovetskaya et al. is joined. Drovetskaya et al. disclose a baby sunscreen stick comprising 10% castor oil and up to about 30% castor oil to q.s., 3% stearyl alcohol (C18 fatty alcohol) and 0.05% pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (Example 3, column 21, lines 52-62). The preferred antioxidant is pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (column 11, lines 59-62). Therefore, the present claims are prima facie obvious in view of the teachings of ‘041 in view of Drovetskaya et al. because one of ordinary skill in the art would have been motivated to include cinnamic acids as antioxidants with a reasonable expectation of success.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/787,508 (herein ‘508) in view of Drovetskaya et al. (US 9,592,187; patented March 14, 2017). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to a composition comprising cinnamic acid antioxidant, fatty alcohol and oil and ‘508 claims a retinol composition comprising retinol, di-t-butyl pentaerythrityl tetrahydroxy cinnamate and an ethylenediaminedisuccinic acid salt.
‘508 does not include retinol and ethylenediaminedisuccinic acid salt. It is for this reason that Drovetskaya et al. is joined.
With respect to claims 1, 2 and 4-8, Drovetskaya et al. disclose a baby sunscreen stick comprising 10% castor oil and up to about 30% castor oil to q.s., 3% stearyl alcohol (C18 fatty alcohol) and 0.05% pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (Example 3, column 21, lines 52-62). With respect to claims 3, 17 and 18, Drovetskaya et al. teach cosmetically acceptable carriers include aromatic ester oils selected from isopropyl myristate and isopropyl myristate; triglycerides and ethylhexyl palmitate as well as water to form oil-in-water emulsions (column 3, lines 20-40; column 7, lines 20-57). With respect to claims 9-15, Drovetskaya et al. teach the cosmetic formulations include adjuvants selected from surfactants, biogenic active ingredients, antioxidants and preservatives (column 6, lines 11-19). Compositions contain one or more fatty alcohols having C6-C18, selected from cetyl alcohol, stearyl alcohol, cetearyl alcohol and oleyl alcohol (column 6, lines 50-56). The formulations include emulsifiers and surfactants that are zwitterionic, nonionic, cationic and anionic in the range of 1-30% by weight of the formulations (column 8, line 37 through column 10, line 3; column 10, line 21-30). Biogenic active ingredients include vitamins such as tocopherol, panthenol and retinol (column 11, lines 1-7). Antioxidants include chelating agents selected from EDTA, EDDS, phytic acid, citric acid and derivatives thereof in amounts from 0.001-30% by weight (column 11, lines 31-35). A preferred antioxidant is pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (column 11, lines 59-62). Example 2 discloses a sun-care cream comprising 0.1% disodium EDTA (column 20, lines 45-57).
Therefore, the present claims are prima facie obvious in view of the teachings of ‘508 in view of Drovetskaya et al. because one of ordinary skill in the art would have been motivated to include retinol as a biogenic active ingredient and disodium EDTA as a chelating agent with a reasonable expectation of success.
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claims 1, 2 and 4-6 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Brenton et al. (US 6,660,283; patented 9, 2003).
Applicant claims a composition comprising:
an oil phase containing at least one oil,
at least one fatty alcohol being solid at room temperature, and
at least one antioxidant selected from cinnamic acid derivatives.
Brenton et al. disclose compositions 1 & 4: care creams comprising 13% apricot kernel oil, 0.01% cinnamic acid and 3% cetyl alcohol (C16 fatty alcohol) (Example 2, column 8, lines 20-33 & 51-64).
Claims 1, 2 and 4-8 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Drovetskaya et al. (US 9,592,187; patented March 14, 2017).
Applicant claims a composition comprising:
an oil phase containing at least one oil,
at least one fatty alcohol being solid at room temperature, and
at least one antioxidant selected from cinnamic acid derivatives.
Drovetskaya et al. disclose a baby sunscreen stick comprising 10% castor oil and up to about 30% castor oil to q.s., 3% stearyl alcohol (C18 fatty alcohol) and 0.05% pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (Example 3, column 21, lines 52-62).
Claims 1-5, 8, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Mitra et al. (US 2005/0175557; published August 11, 2005).
Applicant claims a composition comprising:
an oil phase containing at least one oil,
at least one fatty alcohol being solid at room temperature, and
at least one antioxidant selected from cinnamic acid derivatives. (claim 1)
Mitra et al. disclose Example 5 a natural sunscreen composition comprising 0.001-8% cinnamic acid esters, 1.5% isopropyl myristate, 1.2% cetyl alcohol (C16 fatty alcohol) and 0.8% Cresmer 1000 (surfactant) [0055, claim 12].
Claims 1-6, 8, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Qingdao (CN103690388; published April 2, 2014).
Applicant claims a composition comprising:
an oil phase containing at least one oil,
at least one fatty alcohol being solid at room temperature, and
at least one antioxidant selected from cinnamic acid derivatives. (claim 1)
Qingdao disclose a sunscreen for swimming comprising 2-5% isopropyl myristate, 2.5-4.5% cetyl alcohol (C16 fatty alcohol) and 0.3-0.7% p-methoxy cinnamic acid (claim 1).
Claims 1, 2, 4-6, 8, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Parris et al. (US 2019/042731; published May 16, 2019).
Applicant claims a composition comprising:
an oil phase containing at least one oil,
at least one fatty alcohol being solid at room temperature, and
at least one antioxidant selected from cinnamic acid derivatives. (claim 1)
Parris et al. disclose a hair care composition comprising 4% cetylstearyl alcohol (C16/C18 fatty alcohol), 1% myristyl palmitate/stearate mixture, 2% wheatgerm oil, 3% palm oil, 0.07% trideceth-6 (surfactant), 0.05% mineral oil and 0.1% pentaerythrityl tetrakis(di-t-butyl) hydroxyhydrocinnamate [0370].
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.
Claims 3 and 9-19 are rejected under 35 U.S.C. 103 as being unpatentable over Drovetskaya et al. (US 9,592,187; patented March 14, 2017).
Applicant claims a composition comprising:
an oil phase containing at least one oil,
at least one fatty alcohol being solid at room temperature, and
at least one antioxidant selected from cinnamic acid derivatives.
(claim 1)
Applicant claims a combination comprising at least one oil-soluble or oil-dispersible active ingredient and the composition of claim 1. (claim 14)
Applicant also claims a method for caring for and/or making up keratin materials comprising applying the combination of claim 14 to the keratin materials. (claim 18)
Drovetskaya et al. disclose a baby sunscreen stick comprising 10% castor oil and up to about 30% castor oil to q.s., 3% stearyl alcohol (C18 fatty alcohol) and 0.05% pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (Example 3, column 21, lines 52-62).
With respect to claims 3, 17 and 18, Drovetskaya et al. teach cosmetically acceptable carriers include aromatic ester oils selected from isopropyl myristate and isopropyl myristate; triglycerides and ethylhexyl palmitate as well as water to form oil-in-water emulsions (column 3, lines 20-40; column 7, lines 20-57).
With respect to claims 9-15, Drovetskaya et al. teach the cosmetic formulations include adjuvants selected from surfactants, biogenic active ingredients, antioxidants and preservatives (column 6, lines 11-19). Compositions contain one or more fatty alcohols having C6-C18, selected from cetyl alcohol, stearyl alcohol, cetearyl alcohol and oleyl alcohol (column 6, lines 50-56). The formulations include emulsifiers and surfactants that are zwitterionic, nonionic, cationic and anionic in the range of 1-30% by weight of the formulations (column 8, line 37 through column 10, line 3; column 10, line 21-30). Biogenic active ingredients include vitamins such as tocopherol, panthenol and retinol (column 11, lines 1-7). Antioxidants include chelating agents selected from EDTA, EDDS, phytic acid, citric acid and derivatives thereof in amounts from 0.001-30% by weight (column 11, lines 31-35). A preferred antioxidant is pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (column 11, lines 59-62). Example 2 discloses a sun-care cream comprising 0.1% disodium EDTA (column 20, lines 45-57).
With respect to claim 16, Drovetskaya teaches the biogenic active ingredients can constitute 0.75% of the formulation because Example 5 discloses an SPF treatment formulation comprising 0.75% panthenol (column 23, lines 15-24). Therefore, one of ordinary skill would have been motivated to substitute 0.75% retinol into formulations with a reasonable expectation of success.
With respect to claim 18, Drovetskaya teaches the formulations with high transparency on the skin which comprise cosmetically acceptable carriers suitable for skin contact (column 1, lines 11-12; column 3, lines 38-42).
With respect claims 17 and 19, Drovetskaya teach the formulations are preferably in a carrier selected from oil-in-water emulsions which would inherently possess a lamellar structure.
Therefore, it would have been prima facie obvious to utilize the teachings of Drovetskaya to make a stabilizing formulations comprising fatty alcohol, cinnamic acid derivatives and oil selected from isopropyl myristate, isopropyl myristate, triglycerides and ethylhexyl palmitate as well as water to formulate oil-in-water compositions which inherently have a lamellar structure with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before to time of filing to combine the teachings of Drovetskaya because Drovetskaya teaches formulating oil-in-water emulsions comprising fatty alcohols selected from cetyl alcohol, stearyl alcohol, cetearyl alcohol and oleyl alcohol, an oil carrier selected from isopropyl myristate, isopropyl myristate, triglycerides and ethylhexyl palmitate, and an antioxidant pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate to make sunscreen formulations.
Conclusion
No claims allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 pm.
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DANIELLE D. JOHNSON
Examiner
Art Unit 1617
/BETHANY P BARHAM/ Supervisory Patent Examiner, Art Unit 1611