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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-7, in the reply filed on 6/26/2026 is acknowledged. Applicant has not presented any arguments traversing the restriction as such the requirement is still deemed proper and is therefore made FINAL.
Claim 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/26/2026.
Information Disclosure Statement
The information disclosure statement filed 5/29/2026 has not been considered as the IDS filed 6/8/2026 contains the same references as cited on the IDS filed 5/29/2026 and was filed to correct an error on the 5/29/2026 IDS. The 6/8/2026, 11/14/2024 and 9/11/2024 IDS have been considered.
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.
Claim(s) 1-3 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walling (US 6,455,055). Walling is cited on the 9/11/2024 IDS.
Regarding claims 1 and 7: Walling discloses as cosmetic composition comprising 0.01-50% by weight of crystalline vitamin B3 compound having an average particle size ranging from 0.01-200µm, reading on powder (Abs). Walling teaches the average particle size to preferably range from 0.01-20µm (col. 4, lines 60-65). The vitamin B3 compound is preferably niacinamide, reading on a nicotinic acid derivative (col. 3, lines 65-67).
While Walling does not teach the average particle size to be diameter of the powder, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 2: Walling teaches the cometic to comprise at least 3% of the powder (Abs).
Regarding claim 3: Walling teaches niacinamide to be the preferred vitamin B3 compound for use.
Claim(s) 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gadient (WO 2015/011264). Gadient is cited on the 6/8/2026 IDS.
Regarding claim 7: Gadient, Example 1, discloses improved powderous formulations (abs). Gadient teaches a powder composition comprising 850g Nicotinamide (reading on a derivative of nicotinic acid) and 150g particulate sodium chloride (i.e. an inorganic powder). The final powder is taught to be a median size of 31µm.
While Gradient does not teach the average particle size to be diameter of the powder, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding the claimed “cosmetic”, this is a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. The prior art discloses a powder as claimed and therefore is capable of performing the intended use.
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.
Claim(s) 1-3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walling (US 6,455,055).
Regarding claims 1 and 7: Walling discloses as cosmetic composition comprising 0.01-50% by weight of crystalline vitamin B3 compound having an average particle size ranging from 0.01-200µm, reading on powder (Abs). Walling teaches the average particle size to preferably range from 0.01-20µm (col. 4, lines 60-65). The vitamin B3 compound is preferably niacinamide, reading on a nicotinic acid derivative (col. 3, lines 65-67).
While Walling does not teach the average particle size to be diameter of the powder, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 2: Walling teaches the cometic to comprise at least 3% of the powder (Abs).
Regarding claim 3: Walling teaches niacinamide to be the preferred vitamin B3 compound for use.
Regarding claim 5: Walling teaches the composition to preferably be free of water (col. 10, lines 1-17).
Regarding claim 6: Walling teaches that the cosmetic can be formulated as a powder (col. 2, lines 25-30 and col. 10, lines 5-10).
Claim(s) 1-3, 4 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walling (US 6,455,055), as applied to claims 1-3 and 5-7 above, and further in view of Breyfogle (US 2013/0189332).
Waling makes obvious the limitations of claims 1-3 and 5-7. Walling further teaches the inclusion of 1-20% of a coloring agent including inorganic colors/pigments (col. 9, lines 158-30), however, Walling does not teach these to be powders.
Breyfogle teaches cometic compositions including colored pigments selected from inorganic powders [0010].
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 modify the teachings of Walling with those of Breyfogle. One of skill in the art would have been motivated to use inorganic colored powdered pigments as the inorganic colors/pigments of Walling as its prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended purpose (MPEP 2144.07).
Claim(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gadient (WO 2015/011264).
Regarding claims 1 and 7: Gadient, Example 1, discloses improved formulations (abs). Gadient teaches a powder composition comprising 850g Nicotinamide (reading on a derivative of nicotinic acid) and 150g particulate sodium chloride (i.e. an inorganic powder). The final powder is taught to be a median size of 31µm.
While Gadient does not teach the average particle diameter of the powder, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding the claimed “cosmetic”, this is a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. The prior art discloses a powder as claimed ad therefore is expected to be capable of performing the intended use.
Regarding claim 2: The nicotinamide can be calculated to make up 85% of the composition (850/(850+150) * 100).
Regarding claim 4: The composition contains particulate sodium chloride (i.e. an inorganic powder).
Regarding claim 5: The composition does not contain water.
Regarding claim 6: The composition is a powder.
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.
Claim 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/846120 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose powdered cosmetic compositions comprising at least 3% of a powder of nicotinic acid or a derivative thereof (including niacinamide, tocopherol nicotinate etc.) having an average particle diameter of 40µm or less in combination with an inorganic powder, wherein the composition comprise less than 1% water.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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