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 .
Claim Objections
Claims 18-20, 25, 26, 31, and 32 are objected to because of the following informalities: capitalization of words that are not proper nouns, e.g., “Arachidyl Glucoside”.
Claims 24-26 are objected to because of the following informalities: it appears a “further” is necessary before the “comprises”.
Claims 27 and 28 are objected to because of the following informalities: "the" or "said" should precede "myristyl alcohol".
Appropriate corrections are 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 16-35 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites “at least one wax component having a melting point of less than 43°C” whose meaning is unclear. “Wax” in general means any firm, pliable material made from plants, animals, or petroleum (like beeswax or paraffin). The specification does not define “wax” or “wax component”. It does describe “wax component” as having a melting point of less than 43 °C (para.0056, pre-grant publication US 2025/0262135), and states, “[f]atty alcohols and fatty acids having alkyl chains with 10 to 20 carbon atoms by definition are not considered to be wax components” (id. para.0058 (emphasis added)). The specification gives three examples of wax components: “Myristyl Myristate, Hydrogenated Coco-Glycerides and/or Cetyl Ricinoleate” (id. para.0060). Example formulations in the disclosure include Butyrospermum parkii (shea) butter which has melting points below 43°C. However it is unclear whether shea butter is a “wax component” according to the claim or the disclosure.
The temperature of 43 °C is about 109 °F, meaning the was component could be in melted or liquid form at standard ambient temperature. Both shea butter and olive oil are liquids at room temperature, but start solidifying in slightly colder environments. However it is unclear whether they comprise “wax component”. Chen (cited below) for example teaches olive oil which starts solidifying at around 34-40 °F. Therefore “wax component” alone, with the lack of adequate defining characteristics in the disclosure renders the term unclear. None of the dependent claims resolves this issue and therefore they are also rejected on this ground.
Claim 23 recites “the emulsion comprises …of cetearyl glucoside”. It is ambiguous whether the “at least one fatty alcohol glucoside” of claim 16 comprises the cetearyl glucoside of claim 23, or whether the emulsion of claim 15 “further” comprises the cetearyl glucoside in the concentration in claim 23.
Claims 33 recites “at least one starch”, and claims 34 and 35 recite “at least one wax”. These claims depend from claim 16, which recites “at least one polysaccharide”, and “at least one wax”. A starch is a polysaccharide. Thus claim 33 is ambiguous whether it requires the emulsion to further comprise a starch, in addition to a polysaccharide in claim 16. Claims 34 and 35 are ambiguous regarding whether they require the emulsion of claim 16 to further comprise a wax having the melting point within the ranges in claims 34 and 35, or whether the ranges limit “the” or “said” wax of claim 16.
Claim 29 recites “wherein liquid-crystalline structures in the emulsion”. Claim 16 recites “a liquid-crystalline network”. The absence of a “the” or “said” before the phrase, the different terms “structures” in claim 29 and “network” in claim 16, and the plural versus singular forms render claim 29 ambiguous regarding whether the “structures” are the same as the “network” of claim 16.
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) 16-20, 26, 29, and 30 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Swisscare (Anonymous. "Facial Mask" 27 October 2011 Database accession no. 1660731. Retrieved from: GNPD [online] MINTEL; see IDS).
Swisscare teaches a facial mask comprising water, cetearyl glucoside, myristyl alcohol, polysaccharides such as glalactoarabinan, and waxes such as myristyl myristate (title; p.4 Ingredients). Further ingredients include glyceryl stearate.
Regarding the properties of the composition including “forms a liquid-crystalline network in the emulsion” in claim 16 and the “globular structures” in claim 29 it is noted that for product claims, “when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent”. MPEP §2112.01(I). Therefore although Swisscare does not expressly discuss these limitations, its facial mask composition is presumed to exhibit the recited features.
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.
Claim(s) 16-23, 27-30, 34, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Khayat (US 6,284,257) in view of Chen (CN 109528503A; see IDS).
Khayat teaches acrylate-free oil-in-water (O/W) emulsions comprising (a) a vegetable oil, (b) 2-7% by weight of a self-emulsifiable composition comprising from 60 to 90 percent by weight of at least one fatty alcohol having from 12 to 22 carbon atoms, from 10 to 40 percent by weight of at least one alkylpolysaccharide wherein the alkyl moiety has from 12 to 22 carbon atoms, and from 0 to 5 percent by weight of polysaccharide, (c) from 0.5 to 5 percent by weight of a coemulsifying agent selected from the group consisting of at least one saturated fatty alcohol having from 16 to 32 carbon atoms, a saturated fatty acid having from 16 to 32 carbon atoms and a mixture thereof, (d) from 0.1 to 1 percent by weight of a gelling agent, and water (see entire document including title; abstract; Examples 1, 3; claims 1-10).
Example 1 (col.3 lines 15-55), “Moisturizing cream”, comprises 2.5 g Montanov 68® which contains about 23% cetearyl glucosides (col.2 lines 13-19), cetyl alcohol, sumach wax, and xanthan gum. Example 1 further comprises sumach wax which has a melting point below 43 °C, at 1.5 g or about 2.7% of the cream, within the ranges in claims 34 and 35.
Khayat does not specifically teach using myristyl alcohol as in claim 16.
Chen teaches an emulsifier composition capable of producing liquid crystal structures comprising 5-20 parts of an emulsifier, 5-20 parts of higher alcohols, and 5-25 parts of liquid grease including olive oil (title; abstract; claims 1-10). The emulsifier specifically includes cetearyl glucoside and the higher alcohols specifically includes myristyl (C14) alcohol (claims 3, 5). Because Chen’s liquid crystal structures comprise the components in claim 16, limitation (a), they would be globular. The emulsifier composition comprises 2-15 wt.% of a cosmetic (claim 10). Chen teaches olive oil which solidifies around 34-40 °F and Table 1 shows ethylhexyl palmitate which has a melting point below 43 °C.
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Khayat and Chen and use myristyl alcohol in place of the cetyl alcohol in Khayat as recited in the instant claim(s). The skilled person would have been motivated to do so because both are drawn to oil-in-water emulsions comprising cetearyl glucoside in combination with a fatty alcohol as emulsifiers, and Chen teaches that an emulsifier comprising glucoside in combination higher alcohols having more than 12 carbons, i.e., myristyl alcohol as well as cetyl alcohol, achieve highly stable liquid crystal structures with uniform shape and particle size (abstract). Substituting equivalents known for the same purpose, myristyl and cetyl alcohol here, where the equivalency has been recognized in the prior art as in Chen, presents strong evidence of obviousness; an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. MPEP §2144.06 (II) (citations omitted).
Regarding claims 21-23, the 23% cetearyl glucoside (col.2 lines 13-19) in the 2.5 g Montanov 68® in Example 1 amounts to about 1% of the total of about 54.2 g of the cream (2.5*0.23/ about 54.2). This concentration is within the ranges in claims 21 and 23 and at least close to the range in claim 22. For result-effective variables, in the case where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05 (citations omitted). Furthermore, optimization within prior art conditions or through routine experimentation does not support patentability absent comparative evidence of criticality of the claimed range. See MPEP § 2144.05 (II) (citations omitted).
Regarding claims 27 and 28, Khayat’s example contains about 1% cetearyl glucoside and 1 g cetyl alcohol or about 1.8%. Chen teaches an emulsifier composition capable of producing liquid crystal structures comprising 5-20 parts of an emulsifier and 5-20 parts of higher alcohols. Therefore the skilled person could experiment within Chen’s guidelines.
Claim(s) 16-35 are rejected under 35 U.S.C. 103 as being unpatentable over Khayat (US 6,284,257) in view of Chen (CN 109528503A; see IDS) and Raschke (US 2021/0338559) as evidenced by Deshayes (US 2019/0160006).
Khayat and Chen do not specifically teach the sorbitan stearate disodium cetearyl sulfosuccinate, or the polysaccharides in claims 24-26 and 31-33.
Raschke teaches acrylate-free cosmetic O/W emulsion comprising 0.5 % by weight to 3.0 % by weight hydroxypropyl starch phosphate, glycerol monostearate and/or sorbitan monostearate, waxes such as hydrogenated coco-glycerides at 0.5-3% by weight (see entire document including title; abstract; paras. 0100, 0117). Raschke expressly teaches further including other emulsifiers and surfactants (para.0129). Deshayes evidences that glyceryl stearate and disodium cetearyl sulfosuccinate have been used with O/W emulsions comprising cetearyl glucoside and myristyl alcohol (title; abstract; paras.0012-13, 0022, 0025, 0031, 0033, Table 2).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Khayat, Chen, and Raschke as recited in the instant claim(s). The skilled person would have been motivated to do so because all are drawn to O/W emulsions comprising cetearyl glucoside as an emulsifier, and Raschke teaches that inclusion of hydroxypropyl starch phosphate, glycerol monostearate and/or sorbitan monostearate provides an acrylate-free cosmetic O/W emulsions which overcome disadvantages of prior acrylate-free emulsions such as white residues and unpleasant feel (paras.0007-08).
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 16-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-23, 25, 27, 28, and 35 of copending Application No. 18/857689 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to acrylate-free oil-in-water emulsions comprising a liquid-crystalline network emulsifier system and hydroxypropyl starch phosphate and/or distarch phosphate. The difference is the present claims recite myristyl alcohol and a wax component, which appear in claims 27 and 35 of the ‘689 application. The present claims recite a polysaccharide, whereas the ‘689 application recites a gellan gum, which is a polysaccharide.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/H. SARAH PARK/Primary Examiner, Art Unit 1614
Prosecution Insights