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 .
Priority
The instant application is the national stage entry of PCT/EP2022/087647 filed 22 December 2022. Acknowledgement is made of the Applicant’s claim of foreign priority to application FR2114382 filed 23 December 2021.
Status of the Claims
Claims 24-43 are pending.
Claims 24-43 are rejected.
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.
Claim 30 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 30 recites a formula for R1 wherein the variables of “G,” “u,” and “Ra” are undefined. As such, the metes and bounds of the formula and of the claim cannot be determined.
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.
Claims 24-29 and 31-43 are rejected under 35 U.S.C. 103 as being unpatentable over Portal et al. (WO 2020/128050) in view of Krzysztof et al. (US 2003/0191046).
Portal teaches a cosmetic composition comprising a polyhydroxyalkanoate in an oily medium and a method for the treatment of keratinous substances by employing said composition [0002]. There is a need for a solubilized polyhydroxyalkanoate to make it possible to obtain a film exhibiting good cosmetic properties, good resistance to oils and sebum, and good matte quality [0007]. The composition of Portal comprises a polyhydroxyalkanoate copolymer comprising units A, B, and C:
-[-O-CH(R1)-CH2-CO-]- unit A
-[-O-CH(R2)-CH2-CO-]- unit B
-[-O-CH(R3)-CH2-CO-]- unit C
wherein R1 denotes a linear alkyl radical having from 5 to 9 carbon atoms; R2 denotes a linear alkyl radical having a carbon number corresponding to the number of carbon atoms of the R1 radical -2; and R3 denotes a linear alkyl radical having a carbon number corresponding to the number of carbon atoms of the R1 radical -4; and also an oily medium comprising a non-silicone oil selected from the group comprising hydrocarbon oils of 8-14 carbon atoms [0009]. The polymer units may be combined wherein A is present in 40-97.5%, B in 2-40%, and C in 0.5-20% [0012]. The overall copolymer is present in 0.1-30 wt% and the oily medium in 2-99.9 wt% [0018-0019]. The composition can further comprise water and/or other additives [0036] and can also include solvents such as ethanol, also in 2-99.9 wt% [0031].
Portal does not teach wherein the composition further comprises a natural resin. Portal does not teach wherein the copolymer comprises more than three different repeating polymer units.
Krzysztof teaches cosmetic products with amber [0001]. Micronization of the amber to be included in a cosmetic composition can be done without losing the natural energizing properties thereof [0006-0007]. The amber can be included in the cosmetic from 0.001-100% by weight [0013].
It would have been prima facie obvious to prepare the cosmetic composition of Portal which comprises a copolymer and an oily medium (hydrocarbon oil) for use in a method of treating keratin material. The composition can further comprise water and/or ethanol as well as a number of other additives. The copolymer of Portal comprises a PHA with three different repeating units that reads on the copolymer of the instant claims. While Portal only teaches three different repeating units, it would have been obvious to include additional repeating units as it is obvious to duplicate parts taught in the prior art (see MPEP 2144.04 (IV)B). Regarding the R1, R2, R3, etc… units, Portal teaches each R group to be a linear alkyl radical having a carbon chain of 5-9 atoms, or less, thus reading on, for example, A12 of instant claim 35 and 16-18 of instant claim 36.
It would have been prima facie obvious to further include amber, a natural resin as defined in instant claims 38-39, in the cosmetic composition of Portal since Krzysztof teaches that amber can be micronized and included in cosmetics, in 0.001-100%, to provide energizing properties. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).
Claims 24-29 and 31-43 are accordingly rejected as obvious in view of the prior art.
Claims 24-43 are rejected under 35 U.S.C. 103 as being unpatentable over Portal et al. (WO 2020/128050) in view of Krzysztof et al. (US 2003/0191046) in view of Portal et al (US 2023/0120675; filed 23 June 2021).
Portal and Krzysztof, as applied supra, are herein applied in their entirety for their teachings of a cosmetic composition which comprises a copolymer, natural resin, and an oily medium (hydrocarbon oil) for use in a method of treating keratin material.
Portal does not teach wherein the R1 group comprises an X group wherein X is O, S, or N(Ra) as recited in instant claim 30.
Portal ‘675 teaches cosmetic compositions comprising a PHA, a surfactant, and a fatty substance for treating keratin materials [0001]. Portal ‘675 teaches that the PHA polymer repeating units are as follows:
-O-CH(R1)-(CH2)-C(O)-
wherein the R1 group may be a hydrocarbon chain optionally interrupted with O, S, or N(R) [0008-0012]. The PHA copolymers of Portal ‘675 make it possible to obtain homogenous compositions, show good stability, and good resistance to oils and sebum [0007].
It would have been prima facie obvious to prepare the composition of Portal and Krzysztof, as taught in the rejection above, and to substitute the PHA copolymers of Portal ‘675 which optionally comprise an ether or thioether group in the R chain. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06). The PHA of Portal and that of Portal ‘675 have the same purpose for treating keratin materials and for imparting good stability and resistance to oils and sebum. The resulting composition renders obvious instant claim 30 as well as 24-29 and 31-43.
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 24-29 and 31-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,257,336 in view of Krzysztof et al. (US 2003/0191046).
The ‘336 claims are towards a cosmetic composition comprising a PHA copolymer that reads on the instant claims and an oily medium. The oily medium can be a hydrocarbon oil, which is considered a fatty substance. The ‘336 claims do not teach more than three repeating units nor does it teach a natural resin. Krzysztof teaches cosmetic products with amber [0001]. Micronization of the amber to be included in a cosmetic composition can be done without losing the natural energizing properties thereof [0006-0007]. The amber can be included in the cosmetic from 0.001-100% by weight [0013]. It would have been prima facie obvious to further include amber, a natural resin as defined in instant claims 38-39, in the cosmetic composition of ‘336 since Krzysztof teaches that amber can be micronized and included in cosmetics, in 0.001-100%, to provide energizing properties. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07). While ‘336 only teaches three different repeating units, it would have been obvious to include additional repeating units as it is obvious to duplicate parts taught in the prior art (see MPEP 2144.04 (IV)B).
Claims 24-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13-20, and 22-24 of copending Application No. 17/794,753 in view of Krzysztof et al. (US 2003/0191046).
The ‘753 claims are towards a cosmetic composition comprising a PHA copolymer that reads on the instant claims, a surfactant, and a fatty substance. The fatty substance can be a alkanes (hydrocarbons) or ester oils. The ‘753 claims do not teach more than three repeating units nor does it teach a natural resin. Krzysztof teaches cosmetic products with amber [0001]. Micronization of the amber to be included in a cosmetic composition can be done without losing the natural energizing properties thereof [0006-0007]. The amber can be included in the cosmetic from 0.001-100% by weight [0013]. It would have been prima facie obvious to further include amber, a natural resin as defined in instant claims 38-39, in the cosmetic composition of ‘753 since Krzysztof teaches that amber can be micronized and included in cosmetics, in 0.001-100%, to provide energizing properties. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07). While ‘336 only teaches three different repeating units, it would have been obvious to include additional repeating units as it is obvious to duplicate parts taught in the prior art (see MPEP 2144.04 (IV)B).This is a provisional nonstatutory double patenting rejection.
Claims 24-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13, and 15-19 of copending Application No. 17/794,727 in view of Krzysztof et al. (US 2003/0191046).
The ‘727 claims are towards a cosmetic composition comprising a PHA copolymer that reads on the instant claims and a fatty substance. The fatty substance can be a alkanes (hydrocarbons) or ester oils. The ‘727 claims do not teach a natural resin. Krzysztof teaches cosmetic products with amber [0001]. Micronization of the amber to be included in a cosmetic composition can be done without losing the natural energizing properties thereof [0006-0007]. The amber can be included in the cosmetic from 0.001-100% by weight [0013]. It would have been prima facie obvious to further include amber, a natural resin as defined in instant claims 38-39, in the cosmetic composition of ‘753 since Krzysztof teaches that amber can be micronized and included in cosmetics, in 0.001-100%, to provide energizing properties. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).
Claims 24-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-12, 14-20, 22-24, and 26-30 of copending Application No. 17/794,708 in view of Krzysztof et al. (US 2003/0191046).
The ‘708 claims are towards a cosmetic composition comprising a PHA copolymer that reads on the instant claims and a fatty substance. The fatty substance can be a alkanes (hydrocarbons) or ester oils. The ‘708 claims do not teach a natural resin. Krzysztof teaches cosmetic products with amber [0001]. Micronization of the amber to be included in a cosmetic composition can be done without losing the natural energizing properties thereof [0006-0007]. The amber can be included in the cosmetic from 0.001-100% by weight [0013]. It would have been prima facie obvious to further include amber, a natural resin as defined in instant claims 38-39, in the cosmetic composition of ‘708 since Krzysztof teaches that amber can be micronized and included in cosmetics, in 0.001-100%, to provide energizing properties. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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