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 . Claims included in prosecution are claims 1-20.
Restriction Requirement
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-9 and 12-20, drawn to a personal care composition.
Group II, claim(s) 10, drawn to a method of providing brightness or an even skin tone to skin.
Group III, claim(s) 11, drawn to method of providing microbiome benefit to skin.
The groups of inventions listed above 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:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a composition comprising a retinoic acid precursor, a carboxylic acid functionalized heteroaromatic compound, an alkyl resorcinol, inulin, and a cosmetically acceptable vehicle this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Lou et al. (US 2020/0163849, May 28, 2020) (hereinafter Lou) in view of Lukaszewska et al. (Polish Journal of Chemical Technology, 21, 1, 44—49, 2019) (hereinafter Lukaszewska).
Lou discloses a composition comprising retinoic acid precursor; a skin benefit agent comprising resorcinol and/or a derivative thereof; and a cosmetically acceptable carrier (¶ [0011-0014]). More preferably the retinoic precursor comprises retinyl propionate or retinyl palmitate (¶ [0021]). More preferably the resorcinol is 4-hexyl resorcinol The composition may include, along with resorcinol and/or derivative thereof, vitamins in addition to the retinoic acid precursor. Suitable vitamins include niacinamide (¶ [0056]). Packaging of the composition is dependent upon the type of personal care end-use (¶ [0068]).
Lou differs from the instant claim insofar as not disclosing wherein the composition comprises inulin.
However, Lukaszewska discloses that inulin is used as a stabilizer in cosmetic emulsions (Pg. 44). For the purpose of producing stable O/W emulsions, inulin is usually used at low concentrations, ranging from 0.2 to 1 wt.% (Pg. 44).
As discussed above, Lou discloses wherein the composition is ordinarily an oil-in-water emulsion. Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have modified the composition of Lou to comprise inulin in an amount of 0.2 to 1 wt.% motivated by the desire to stabilize the O/W emulsion since inulin produces stable O/W emulsions when used in such amounts as taught by Lukaszewska. One of ordinary skill in the art would have had a reasonable expectation of success since inulin is known to be used as a stabilizer in cosmetic emulsions as taught by Lukaszewska.
In view of this document, the common technical feature linking Groups I-III does not constitute a special technical feature as defined by PCT Rule 13.2, as it does not define a contribution over prior art for the reasons set forth above.
During a telephone conversation with Stephanie DelPonte on 8/21/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9 and 12-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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, 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.
1. Claim(s) 1-9 and 12-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lou et al. (US 2020/0163849, May 28, 2020) (hereinafter Lou) in view of Lukaszewska et al. (Polish Journal of Chemical Technology, 21, 1, 44—49, 2019) (hereinafter Lukaszewska).
Lou discloses a composition comprising retinoic acid precursor; a skin benefit agent comprising resorcinol and/or a derivative thereof; and a cosmetically acceptable carrier (¶ [0011-0014]). The composition may be in the form of creams, lotions, or serums (satisfies claim 9) (¶ [0017]). More preferably the retinoic acid precursor comprises retinyl propionate or retinyl palmitate (satisfies claim 12) (¶ [0021]). Typically, the amount of retinoic acid precursor used in the compositions of this invention is from 0.001 to 10% (satisfies claim 2 & 16) (¶ [0023]). More preferably the resorcinol is 4-hexyl resorcinol (satisfies claim 4, 14, & 19) (¶ [0026]). Typically, the amount of skin benefit agent used is from about 0.001 to 10% (satisfies claim 5 & 18) (¶ [0027]). Ordinarily, the composition is an oil-in-water emulsion (¶ [0030]). Often, oils such as caprylic capric triglyceride are preferred as carriers (satisfies claim 7) (¶ [0042]). Thickening agents such as carbomers may be included in an amount of 0.001 to 5% (satisfies claim 8) (¶ [0048-0049]). The composition may include, along with resorcinol and/or derivative thereof, vitamins in addition to the retinoic acid precursor. Suitable vitamins include niacinamide which may be included in an amount of 0.0 to 10% (satisfies claim 3, 13, & 17) (¶ [0056]). Packaging of the composition is dependent upon the type of personal care end-use (¶ [0068]).
Lou differs from the instant claims insofar as not disclosing wherein the composition comprises inulin.
However, Lukaszewska discloses that inulin is used as a stabilizer in cosmetic emulsions (Pg. 44). For the purpose of producing stable O/W emulsions, inulin is usually used at low concentrations, ranging from 0.2 to 1 wt.% (Pg. 44).
As discussed above, Lou discloses wherein the composition is ordinarily an oil-in-water emulsion. Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have modified the composition of Lou to comprise inulin in an amount of 0.2 to 1 wt.% motivated by the desire to stabilize the O/W emulsion since inulin produces stable O/W emulsions when used in such amounts as taught by Lukaszewska. One of ordinary skill in the art would have had a reasonable expectation of success since inulin is known to be used as a stabilizer in cosmetic emulsions as taught by Lukaszewska.
Regarding the amounts of retinoic acid precursor recited in instant claims 2 and 16, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the composition of Lou in view of Lukaszewska comprises the retinoic acid precursor in an amount of 0.001 to 10%. Accordingly, because the ranges recited in the instant claims overlap with and/or lie inside the range disclosed by Lou in view of Lukaszewska, the range disclosed by Lou in view of Lukaszewska meets the instantly recited limitations.
Regarding the amounts of carboxylic acid functionalized heteroaromatic compound recited in instant claims 3 and 17, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the composition of Lou in view of Lukaszewska comprises niacinamide in an amount of 0.0 to 10%. Accordingly, because the ranges recited in the instant claims lie inside the range disclosed by Lou in view of Lukaszewska, the range disclosed by Lou in view of Lukaszewska meets the instantly recited limitations.
Regarding claims 4, 14, and 19, as discussed above, more preferably the resorcinol is 4-hexyl resorcinol. Accordingly, a composition wherein the resorcinol is 4-hexyl resorcinol would have been obvious.
Regarding the amounts of alkyl resorcinol recited in instant claims 5 and 18, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the composition of Lou in view of Lukaszewska comprises the skin benefit agent (i.e., 4-hexyl resorcinol) in an amount of 0.001 to 10%. Accordingly, because the ranges recited in the instant claims overlap with and/or lie inside the range disclosed by Lou in view of Lukaszewska, the range disclosed by Lou in view of Lukaszewska meets the instantly recited limitations.
Regarding the amounts of inulin recited in instant claims 6 and 20, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the composition of Lou in view of Lukaszewska comprises inulin in an amount of 0.2 to 1 wt.%. Accordingly, because the ranges recited in the instant claims overlap with the range disclosed by Lou in view of Lukaszewska, the range disclosed by Lou in view of Lukaszewska meets the instantly recited limitations.
Regarding claim 7, as discussed above, oils such as caprylic capric triglyceride are preferred as carriers. Accordingly, a composition comprising such oils would have been obvious.
Regarding the amounts of emulsifying polymer recited in instant claim 8, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the composition of Lou in view of Lukaszewska comprises thickening agents such as carbomers in an amount of 0.001 to 5%. Accordingly, because the ranges recited in the instant claims overlap with the range disclosed by Lou in view of Lukaszewska, the range disclosed by Lou in view of Lukaszewska meets the instantly recited limitations.
Regarding claim 9, as discussed above, the composition may be in the form of creams, lotions, or serums. Accordingly, a composition in such forms would have been obvious.
Regarding claim 12, as discussed above, more preferably the retinoic acid precursor comprises retinyl propionate or retinyl palmitate. Accordingly, a composition comprising those components as the retinoic acid precursor would have been obvious.
Regarding claim 13, as discussed above, the composition may include, along with resorcinol and/or derivative thereof, vitamins in addition to the retinoic acid precursor where suitable vitamins include niacinamide. Accordingly, a composition comprising niacinamide would have been obvious.
Accordingly, the combined teachings of Lou and Lukaszewska render obvious claims 1-9 and 12-20.
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.
1. Claims 1-9 and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,826,449 in view of Lukaszewska et al. (Polish Journal of Chemical Technology, 21, 1, 44—49, 2019) (hereinafter Lukaszewska).
Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose a composition comprising a retinoic acid precursor such as retinyl propionate; 4-hexyl resorcinol; niacinamide; and a cosmetically acceptable carrier. The composition of the patented claims may be in the form of oil-in-water emulsion.
The pending claims differ insofar as further reciting inulin.
However, Lukaszewska discloses that inulin is used as a stabilizer in cosmetic emulsions (Pg. 44). For the purpose of producing stable O/W emulsions, inulin is usually used at low concentrations, ranging from 0.2 to 1 wt.% (Pg. 44).
Accordingly, it would have been obvious for one of ordinary skill in the art to have modified the composition of the patented claims to comprise inulin in an amount of 0.2 to 1 wt.% motivated by the desire to stabilize the O/W emulsion since inulin produces stable O/W emulsions when used in such amounts as taught by Lukaszewska. One of ordinary skill in the art would have had a reasonable expectation of success since inulin is known to be used as a stabilizer in cosmetic emulsions as taught by Lukaszewska.
2. Claims 1-9 and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,324,679 in view of Lukaszewska et al. (Polish Journal of Chemical Technology, 21, 1, 44—49, 2019) (hereinafter Lukaszewska).
Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose a composition comprising a retinoic acid precursor such as retinyl propionate; 4-hexyl resorcinol; niacinamide; and a cosmetically acceptable carrier. The composition of the patented claims may be in the form of oil-in-water emulsion.
The pending claims differ insofar as further reciting inulin.
However, Lukaszewska discloses that inulin is used as a stabilizer in cosmetic emulsions (Pg. 44). For the purpose of producing stable O/W emulsions, inulin is usually used at low concentrations, ranging from 0.2 to 1 wt.% (Pg. 44).
Accordingly, it would have been obvious for one of ordinary skill in the art to have modified the composition of the patented claims to comprise inulin in an amount of 0.2 to 1 wt.% motivated by the desire to stabilize the O/W emulsion since inulin produces stable O/W emulsions when used in such amounts as taught by Lukaszewska. One of ordinary skill in the art would have had a reasonable expectation of success since inulin is known to be used as a stabilizer in cosmetic emulsions as taught by Lukaszewska.
3. Claims 1-9 and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,233,144 in view of Lukaszewska et al. (Polish Journal of Chemical Technology, 21, 1, 44—49, 2019) (hereinafter Lukaszewska).
Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose a composition comprising a retinoic acid precursor such as retinyl propionate; 4-hexyl resorcinol; and niacinamide. The composition of the patented claims may be in the form of oil-in-water emulsion.
The pending claims differ insofar as further reciting inulin.
However, Lukaszewska discloses that inulin is used as a stabilizer in cosmetic emulsions (Pg. 44). For the purpose of producing stable O/W emulsions, inulin is usually used at low concentrations, ranging from 0.2 to 1 wt.% (Pg. 44).
Accordingly, it would have been obvious for one of ordinary skill in the art to have modified the composition of the patented claims to comprise inulin in an amount of 0.2 to 1 wt.% motivated by the desire to stabilize the O/W emulsion since inulin produces stable O/W emulsions when used in such amounts as taught by Lukaszewska. One of ordinary skill in the art would have had a reasonable expectation of success since inulin is known to be used as a stabilizer in cosmetic emulsions as taught by Lukaszewska.
Conclusion
Claims 1-9 and 12-20 are rejected.
Claims 10-11 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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