DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
The listing of claims filed 24 October 2024, have been examined. Claims 1-16 are pending. Claims 1-16 are amended and are supported by the originally-filed disclosure.
Claim Objections
Claims 7, 9, 14, and 16 are objected to because of the following informalities:
Claim 7 is objected to for duplicate language. Anti-aging appears twice. The list includes anti-aging agents and later soothing agents and/or anti-aging agents. The applicant is advised to correct the redundancy by removing one of the duplicate entries.
Claim 9 is objected to for omission of a comma. Amended claim 9 now recites, “comprises at least one lipophilic gelling agent at least one oil, and a mixture thereof.” In amending the claim, a comma has been inadvertently deleted and the claim currently reads as though "lipophilic gelling agent at least one oil" is a single ingredient. The claim should read , “…comprises at least one lipophilic gelling agent, at least one oil, or a mixture thereof.” Appropriate correction is advised.
Claim 14 is objected to for inconsistent punctuation. The step transition (ii) and (iii) should end with at a semicolon rather than a comma. This is a minor objection.
Claim 16 is objected to for reciting, “…applying to said keratin material at least the solid composition according to claim 1”, which is grammatically incorrect and awkward, and should recite, “…applying to said keratin material at least one solid composition according to claim 1”, or more preferably, “…applying to said keratin material the solid composition according to claim 1”.
The examiner also notes that the expressions “cavity(ies)”, “is/are”, “active agent(s)”, etc. are not preferred in U.S. practice, wherein consistent singular or plural terminology is preferred. However, no formal objection for such is made, as it is clear to one of ordinary skill in the art, with reference to the specification, what is intended by the claim language.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 1-16 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, regards as the invention.
Claim 1 recites, “A solid cosmetic care composition of a keratin material…”, wherein the specification makes clear that the invention relates to a solid cosmetic composition intended for the care of a keratin material, rather than being composed of a keratin material, as suggested by claim 1. This phrase is reasonably susceptible to multiple interpretations. Thus, the phrase "composition of a keratin material" is ambiguous.
It is unclear whether the claimed composition contains keratin material, is formed from keratin material, or is merely intended for cosmetic care treatment of keratin material (e.g., skin, hair, nails). The specification and the remainder of the claims describe cosmetic compositions for application to keratin materials, not compositions comprising keratin. Accordingly, the metes and bounds of the claim cannot be determined with reasonable certainty (see Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). The applicant is advised to correct the claim, to recite for example , "A solid cosmetic care composition for treating a keratin material..." or "A solid cosmetic composition intended for application to a keratin material...". Dependent claims 2-16 are included in this rejection because they do not cure the defect noted above.
Claim 5 is rejected as indefinite for claiming the shape of a paving. "Paving" is not a recognized geometric shape, does not have a reasonably well-understood geometric meaning in the cosmetic arts, nor does the claim or specification provide objective boundaries (i.e., define this term) for determining the scope of this limitation. Using the alternative “(or cutout)” does not make clear if paving is intended to mean a cutout or a cutout can be used as an alternative to paving. Thus, the phrase "shape of a paving" lacks a reasonably certain meaning and appropriate correction is required.
Claim 9 is indefinite because it is unclear if the composition must contain a mixture of a lipophilic gelling agent and an oil or a lipophilic gelling agent, an oil, and a mixture of another distinct lipophilic gelling agent and oil. Clarification is required to particularly point out and distinctly claim the invention.
Claim 12 is rejected as indefinite for, “…-at least one second liquid composition…”. It is unclear as to what “second” liquid composition is referred to in the claim. Claim 1, from which claim 12 depends, does not recite a “first liquid composition”, nor does claim 12. Thus, the claim fails to particularly point out and distinctly claim the invention, and appropriate correction is required to clarify the claim.
Claim 13 is also rejected as indefinite for claiming “…the solid compositions according to claim 1…”, wherein it is unclear what other solid compositions are referred to from claim 1, as only one solid composition is claimed in claim 1. The applicant is advised to correct the claim to recite, “…the solid composition according to claim 1…”.
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 1-7, and 10-16 are rejected under 35 U.S.C. § 103 as being unpatentable over Khamis and Conway (US20170181934A1; published 29 June 2017, hereinafter “Khamis”), in view of Westphal et al. (DE102019219714A1; published 17 June 2021, hereinafter “Westphal”), in further view of Glenn et al. (US20130303419A1; published 14 November 2013, hereinafter “Glenn”), and Cassin and Simonnet (US20090022700A1; published 22 January 2009, hereinafter “Cassin”).
Khamis teaches a cosmetic/personal care device comprising a solid porous material with multiple cavities containing at least one skin care composition to be applied to the skin surface (claims 1-5; ¶[0005]-[0007]; multiple cavities ¶[0020]), wherein the skin care composition includes at least one personal care compound comprises a moisturizer, a lotion, an antibacterial compound, an acne treatment, a sun block compound, an exfoliating compound, a deodorizing compound, a shaving cream compound, a body wash compound, an anti-oxidant compound, and a fragrance compound and the active antibacterial agent comprises at least one of triclosan, triclocarban, benzalkonium chloride, or benzethonium chloride (claims 11-13).
The system also comprises multiple and distinct types of additive composition (claim 15; ¶[0034]), wherein the additive composition may be configured to perform any variety of personal care functions, for example, an additive composition may include ingredients to provide additional moisturization, prevent or reduce acne, or exfoliate skin. A user may select which additive compositions to place in the base carrier such that the cleansing device may be selected, and customized, by a user depending on their particular needs or desires (¶[0015]). Khamis teaches applying the solid carrier (which can be a cosmetic or personal care composition) to skin, a keratin material, for cosmetic/personal care use in a non-therapeutic manner (for cleansing) (¶[0018]).
Khamis does not explicitly teach that at least one cavity such that the composition comprises a porosity ≥20% or ≥30% by volume relative to the total volume of the solid composition. However, assuming accurate relative scale, the depiction of the invention in Fig. 3 indicates approximately 50% volume porous region covering half of the cross-sectional area, given it appears to run the entire thickness of the total bar as depicted in Fig.1-2. The cavities are indicated as through holes (claim 19, ¶[0020], ¶[0036], and Fig.1) and contain at least one cavity, wherein multiple cavities may be the shape and size (identical; ¶[0019] and ¶[0027]) or may have any number of cavities (¶[0020]) that can be any particular size and shape so long as it fits the shape and size of the cavity (¶[0027]) that are different (¶[0034]). Fig. 1-3 explicitly depict an ovoid form cutout shape, including a polygonal square grid geometry. A honeycomb shape polygonal grid geometry is made of hexagons rather than squares, and is a known alternative polygonal geometry.
The teaching of cavities can be “of any shape” would have rendered it obvious to select any of the conventional enumerated shapes (i.e., round, oblong, polygonal, honeycomb, etc.), because they are well-known generic geometric forms that would have been obvious alternatives to one of ordinary skill in the art. It would have been obvious to employ a honeycomb cavity arrangement because honeycomb is a well-known polygonal pattern, it provides an even distribution of void space while maintaining structural integrity, and one of ordinary skill in the art would have readily recognized it as a species within the genus of polygonal shapes (see KSR Int'l Co. v. Teleflex, 550 U.S. 417 (2007) and MPEP §2144.04).
Khamis does not discuss volume ratios or suggest any particular percentage of void space, including wherein the ratio between the volume of the cavity or cavities and the total volume of the composition is between 0.2 and 0.9. Khamis does not teaches or suggests a weight percentage range for the active agent relative to the total weight of the composition, including 0.0001-60%. No amounts are disclosed by Khamis.
Khamis teaches the carrier may include salts of fatty acids (which may act as a gelling agent), a surfactant, glycerol and an number of other ingredients (¶[0021]), and emollient or conditioner, which could be an oil (¶[0034). Khamis teaches the carrier may be present in a semi-solid form (which includes gels; ¶[0021]). However, Khamis does not require that the composition explicitly comprises a mixture of at least one lipophilic gelling agent and at least one oil. Khamis refers to water interacting with the soap (¶[0018] and ¶[0029]), but does not describe a dispersed aqueous phase within the solid composition itself. No paragraph explicitly teaches an aqueous phase dispersed in the solid.
Khamis does not teach or suggest a single-dose form or a kit including a liquid second composition or container. The carrier is depicted as a hand-held bar usable multiple time including a carrier and solid additive compositions. No liquid is mentioned. Khamis teaches
Khamis ¶[0036] and ¶[0037] teaches, “…the carrier (FIG. 1, 100) may be formed by a molding process. In this example, the cavities (FIG. 1, 102) that are defined in the carrier (FIG. 1, 100) may be part of the mold and formed at the same time. In a similar, example when the carrier (FIG. 1, 100) is formed out of a soap material, the soap material may be positioned with in a mold (FIG. 1,100) and formed into the desired shape, such as a solid bar, or a stick [implying a liquid/semi-liquid state for the soap material to be cast in a mold and drying occurs to obtain the solid state]. As another example, the carrier (FIG. 1, 100) may be formed by compressing particulate matter into the desired shape. As described above, in some examples, the cavities (FIG. 1, 102) are through holes. In this example, the method (400) includes forming cavities (FIG. 1, 102) in the carrier (FIG. 1, 100) by punching holes through the carrier (FIG. 1, 100). The method (400) also includes forming (block 402) additive personal care soaps, which are examples of additive compositions. The additive personal care soaps are formed in a similar fashion to the carrier (FIG. 1, 100) that is formed of a soap-like material. That is the additive personal care soaps may be formed by compression or molding. As the additive personal care soaps are disposed within the cavities (FIG. 1, 102) of the carrier (FIG. 1, 100), forming (block 402) the additive personal care soaps includes forming them to be the same size and shape as the cavities (FIG. 1, 102) of the carrier (FIG. 1, 100).” Thus, Khamis therefore teaches the method of manufacturing the solid cosmetic composition consisting of having available a composition in liquid or semi-liquid form [to be amenable to molding described- by having the soap material cast in a mold it implies a liquid/semi-liquid state], casting the composition in a mold and drying to a solid [molding into the desired shape including a solid bar which implies drying], cutting into the desired shape, and forming cavities [forming cavities by punching is a form of cutting]. Khamis does not however teach a method of manufacturing including an extrusion of the composition via an extrusion device equipped with a shaped die for forming a solid bar and cutting the bar created by extrusion.
Westphal teaches porous solid cosmetic compositions, referencing EP 2355783A1 (in the family of patents of US20130303419A1) as a method for making flexible, porous, dissolvable products suitable for cleansing the human body having a very high content of open cells, as a result of which they dissolve quickly in water and foam well (¶[0001], ¶[0008], and ¶[0017]). The invention of Westphal has a porosity defined by open‑cell content <80% (¶[0029]-[0033]) and densities 0.05-0.8 g/cm³ (¶[0031]) formed by gas introduction and drying (¶[0017] steps e-g) yielding porous solid cleansing compositions suitable for single‑dose use (¶[0033]-[0035]), containing surfactants, polyols, oils, conditioning agents (¶[0017], ¶[0011]-[0013]). The porous cell content obtained in the embodiment of the invention having 67-71% porosity level (¶[0138]), encompassing the ≥20% and ≥30% of the instant claims and within the cavity‑volume ratio 0.2-0.9 (i.e., 0.67-0.71; see MPEP § 2123 (I)).
Glenn, within the family of patents referenced by Westphal (i.e., EP 2355783A1 family), further teaches a porous solid structure with an open cell content of from about 80-100%" (claims 1 and 4, and ¶[0051]). While open cell content is not identical to porosity, both are measures of void volume. The claimed porosity of ≥20% is a subset of the porous structures taught by Westphal and Glenn. The selection of a specific porosity percentage would have been obvious to one of ordinary skill in the art as a routine optimization to achieve desired dissolution, lathering, or active-agent release properties (see In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003), holding that a range is obvious where the prior art discloses the general class and the claimed range is merely a matter of routine optimization). The skilled artisan would have had a reasonable expectation of success in selecting a porosity of at least 20% because such porosity is conventional for solid porous materials (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
Cassin further teaches a water-soluble composition with a water-dispersible film-forming polymer, and at least one live, in particular probiotic, microorganism (Abstract, claims 1, and 9-15) with at least one liquid fatty phase (claim 20) and a gelling agent (claim 22) including of solid consistency (¶[0183] and ¶[0188]), as well as a kit containing such a composition, in combination with a physiologically acceptable medium (liquid; Abstract, claim 17) for cosmetic or dermatological application (claim 23). Example 1, Film 1, an embodiment containing 3% of the bioactive agent Bifidobacterium longum, based on the total weight of the composition, and Example 2 Films 2-5 containing 16% active agent (Lactobacillus paracasei, Lactobacillus johnsonii, Bifidobacterium lactis, or Saccharomyces cerevisae, respectively) (¶[0266]) which encompass the instant claimed range of 0.0001% to 60% by weight of active agent (see MPEP § 2123(I)).
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Khamis, Westphal, Glenn, and Cassin. Khamis provides the fundamental concept of a solid carrier with cavities for receiving additive compositions. Cassin provides the knowledge of cosmetic compositions, including solid forms, for keratin materials with biological/cosmetic active agents, expanding active agents to bioactive agents and includes at least one liquid fatty phase and a gelling agent. Westphal and Glenn provide the complementary knowledge of porous, dissolvable solid cosmetic compositions with specific open cell content and porosity.
A skilled artisan would have been motivated to combine these teachings to create a solid cosmetic care composition with cavities and a defined porosity, with a reasonable expectation of success because all references are in the field of cosmetic compositions and the combination merely applies known features to a known carrier (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), wherein the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results). Higher porosity would be to improve dissolution and lathering, which are recognized benefits of porous structures in Westphal and Glenn (see Westphal ¶[0018] and ¶[0032] teaching that porosity improves rapid dissolution and foam formation). Khamis teaches cavities sized to fit additive compositions (¶[0019]–[0021]), Westphal and Glenn teach highly porous solids with large void fractions. Adjusting the specific porosity percentage cavity void volume and ratio is a matter of obvious routine optimization of result‑effective variables (see MPEP §2144.05). The active agent concentration ranges are also a matter of routine optimization.
Thus, it would have been obvious to modify Khamis’s solid bar soap carrier to include the porosity taught by Westphal and Glenn to improve dissolution, lather formation, and deposition of actives. A skilled artisan would have readily determined an appropriate cavity volume fraction to achieve the desired balance of structural support and active-agent loading by optimization via routine experimentation (see MPEP §2144.05). The range 0.2-0.9 is a broad, conventional range for porous materials and would have been obvious from the general teaching of a carrier with cavities in Khamis and porous materials in Westphal and Glenn. No unexpected criticality is shown, and one of ordinary skill in the art would have a reasonable expectation of success in doing so because both references teach solid cleansing compositions; porosity is a predictable structural modification.
Glenn teaches that the pre-mixture comprises water and that the final dried article has a moisture content of 0.1% to 25% (¶[0006] and ¶[0055]). While the final solid has low moisture, the presence of a dispersed aqueous phase would be inherent from the preparation process. Westphal also teaches a process involving a mixture containing water, and the final composition is dried (claim 1 and water content 40-50% before drying (¶[0017] step a)). The presence of residual water or a dispersed aqueous phase in a solid composition would have been obvious to provide hydration or enhance dissolution.
Regarding instant claims 14 and 15, in addition to the teachings of Khamis described above, Glenn teaches preparing a pre-mixture, depositing it into molds, and drying to form a solid, and optionally cutting (¶[0055] and ¶[0064]). Glenn also teaches that dissolvable porous solid personal care products produced by an anhydrous extrusion process are known in the art (making reference to US 2004/0048759), however, are less preferable because they are considered harsh to skin and adversely affect dissolution rates (¶[0003]). Thus, it was known in that art at the time of the instant invention that porous solid personal care products could alternatively be produced by means of extrusion, rendering instant claim 15 obvious by substitution of one known forming method for another (see MPEP §2144). The individual steps of the instant claimed methods of manufacturing are known, and combining them would have been obvious.
Regarding instant claims 11 and 12, requiring a single-dose composition, Westphal is explicitly directed to a "Single Dosage Shampoo" and teaches that the composition is provided in portions for single use (title and ¶[0017]). Glenn also teaches that the articles can be packaged for single use or in a plurality of articles included in a kit, including with other products such as a toiletry travel kit for travel on airplanes (¶[0085]) and can be mixed with another composition (¶[0084]). Thus, single-dose configurations and kit configurations are taught. Liquid compositions are routine inclusions in toiletry travel kit for travel on airplanes (e.g., shampoos, conditioners, lotions, etc.) as indicated by Glenn in ¶[0086], noting that a suitable packaging material would protect the composition/product from inadvertent exposure to liquids. Thus, rendering the limitations of instant claims 11 and 12 obvious.
In summary, Khamis provides the teaching of solid bar with cavities for delivering cosmetic actives, Westphal and Glenn provide the teachings of porous solid cleansing compositions and single‑dose and kit formats wherein Westphal teaches porosity improves dissolution and lather, and Cassin provides the teachings of multi‑composition systems including solid formats with bioactive agents encompassing the instant claimed active range, liquid fatty phase and gelling agent components, and packaging as kits with a liquid medium. The instant claimed combination yields predictable improvements in cleansing performance, customization, and packaging flexibility.
Claim Rejections – Nonstatutory 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).
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of co-pending US Application No. 18/860,473 (published as US20260183200A1). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The instant application and the co-pending application share at least one common inventor and are commonly assigned. The instant claims are directed to a solid cosmetic care composition comprising a biological/cosmetic active agent, a cavity, and a porosity ≥20% by volume (claims 1‑11); a kit (claim 12); packaging (claim 13); methods of manufacturing the composition by casting/drying/cavity formation or by extrusion (claims 14‑15); and a non‑therapeutic cosmetic treatment method (claim 16).
The co-pending reference claims are directed to a solid cosmetic composition dedicated to sun protection, comprising a UV filter, a cavity, and a porosity ≥20% by volume (claims 1‑11); a kit (claim 12); packaging (claim 13); methods of manufacturing the composition by casting/drying/cavity formation or by extrusion (claims 14‑15); and a non‑therapeutic cosmetic treatment method for sun protection (claim 16). The co-pending reference specification further discloses that the composition “may comprise at least one biological/cosmetic active agent, in particular chosen from moisturizing agents, cicatrizing agents, anti‑wrinkle or anti‑aging agents, depigmenting agents, UV filters, desquamating agents, antioxidants, active agents stimulating the synthesis of dermal and/or epidermal macromolecules, skin relaxant agents, antiperspirants, soothing agents and/or anti‑aging agents, and mixtures thereof” (¶[0019] of the specification). Thus, the co-pending reference itself treats UV filters as one species of the broader class “biological/cosmetic active agent.”
The structural limitations of the instant claims (i.e., solid composition, at least one cavity, porosity ≥20%, cavity shapes, ratio ranges, lipophilic gelling agent, oil, dispersed aqueous phase, single‑dose format) are identically recited in the co-pending reference claims. The only difference is that the instant claims generically require “at least one biological/cosmetic active agent,” whereas the co-pending claims specifically require at least one UV filter (a particular type of biological/cosmetic active agent). The instant claims thus encompass the exact compositions claimed in the co-pending reference.
The difference between the instant claims and the co-pending claims lies solely in the identity of the active agent: the instant claims call for any biological/cosmetic active agent, while the co-pending claims call for a UV filter. The co-pending reference itself characterizes UV filters as a biological/cosmetic active agent and expressly suggests that the same solid composition can include, instead of or in addition to the UV filter, other biological/cosmetic active agents such as moisturizing agents, anti‑aging agents, vitamins, etc.
Therefore, it would have been obvious to one of ordinary skill in the art to replace the UV filter of the co-pending claims with any other conventional biological/cosmetic active agent to obtain a solid cosmetic care composition having the same cavity structure, because the solid cavity platform is disclosed as a general delivery vehicle for active agents, and the substitution of one known active agent for another is a matter of routine design choice. The generic claim is nothing more than an obvious broadening of the specific active agent limitation (see In re Schneller, 397 F.2d 350, 355 (CCPA 1968), wherein a generic claim is not patentably distinct from a species claim when the genus is old or obvious in view of the species and In re Vogel, 422 F.2d 438, 441 (CCPA 1970) wherein double patenting exists where the only difference is a well‑known variation).
The dependent claims of the instant application (claims 2‑11) are either identical to the corresponding dependent claims of the co-pending reference (claims 2‑6, 9‑11) or recite well‑known alternatives (claims 7‑8) that are explicitly suggested by the co-pending reference. The kit, packaging, manufacturing method, and method of use claims (claims 12‑16) are structurally identical to the co-pending reference claims, with the only difference being the substitution of a UV filter by a generic active agent- a difference that is unsupported by any unexpected result and is fully suggested by the co-pending reference.
Accordingly, the instant claims define the same invention or an obvious variant of the invention claimed in the co-pending application. Granting a patent on the instant claims would impermissibly extend the patent term for the same inventive concept. The applicant may overcome this rejection by filing an appropriate terminal disclaimer in compliance with 37 CFR 1.321 before the expiration of the period for reply, or by establishing that the claims are patentably distinct from the co-pending claims (i.e., by showing that the substitution of the active agent produces an unexpected result or is not otherwise obvious).
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of co-pending US Application No. 18/860,338 (published as US20250281366A1). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The instant claims are directed to a solid cosmetic care composition for a keratin material comprising at least one biological/cosmetic active agent and at least one cavity such that the composition has a porosity ≥20 % by volume (claims 1‑11); a kit (claim 12); packaging (claim 13); methods of manufacturing by casting/drying and cavity formation or by extrusion (claims 14‑15); and a non‑therapeutic cosmetic care treatment method (claim 16).
The co-pending claims are directed to a solid cosmetic composition intended for hygiene, cleaning and/or beautifying of a keratin material, comprising at least one cavity and a porosity ≥20 % by volume (claims 1‑11); methods of manufacturing by casting/drying and cavity formation or by extrusion (claims 11‑12); and a non‑therapeutic cosmetic treatment method for hygiene or beautifying (claim 13). Notably, independent claim 1 of the co-pending application does not explicitly require a biological/cosmetic active agent, but is intended for “hygiene, cleaning and/or the beautifying” of a keratin material.
The structural limitations of the instant claims, solid composition, at least one cavity, porosity ≥20 %, cavity shapes, volume ratio ranges, the presence of a lipophilic gelling agent and oil, optional dispersed aqueous phase, single‑dose format, are identically or substantially identically recited in the co-pending claims. The only material difference is that the instant claims expressly require the presence of at least one biological/cosmetic active agent, whereas the co-pending claims do not expressly recite that limitation.
The co-pending application’s claims are directed to a solid cosmetic composition for beautifying a keratin material. The specification of the co-pending application (see e.g., the disclosure at ¶[005]‑[008] and the teaching that the composition may include various cosmetic ingredients) would have made it obvious to one of ordinary skill in the art to incorporate a biological/cosmetic active agent into the solid composition. The selection of a particular active agent from the well‑known list recited in instant claim 7 is a matter of routine design choice in the cosmetic art. There is nothing in the instant claims that unexpectedly modifies the fundamental structure or function of the composition; the cavity and porosity are the core inventive features already claimed in the co-pending application. Adding a conventional active agent does not render the claimed composition patentably distinct.
The kit, packaging, manufacturing method, and method‑of‑use claims of the instant application are identical in structure to the corresponding co-pending claims, except for the explicit reference to a biological/cosmetic active agent in the composition. For the same reasons, these claims do not define an invention that is patentably distinct from the co-pending claims; the incorporation of an active agent is an obvious variant.
Therefore, the subject matter of the instant claims is not patentably distinct from the subject matter of the co-pending claims. Allowing both applications would result in an unjustified extension of patent term for the same inventive concept (see In re Vogel, 422 F.2d 438, 441 (CCPA 1970); In re Schneller, 397 F.2d 350, 355 (CCPA 1968)). The applicant may overcome this rejection by filing an appropriate terminal disclaimer or by establishing that the claims are patentably distinct from the co-pending claims (e.g., by demonstrating unexpected results attributable to the specific biological/cosmetic active agent, not merely the known properties of the agent).
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of co-pending US Application No. 18/859,808 (published as US20250288501A1). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The instant claims are directed to a solid cosmetic care composition for a keratin material comprising at least one biological/cosmetic active agent and at least one cavity such that the composition has a porosity ≥20 % by volume (claims 1‑11); a kit (claim 12); packaging (claim 13); methods of manufacturing by casting/drying and cavity formation or by extrusion (claims 14‑15); and a non‑therapeutic cosmetic care treatment method (claim 16).
The co-pending claims are directed to a solid perfuming cosmetic composition for a keratin material, comprising at least one perfuming agent and at least one cavity such that the composition has a porosity ≥20 % by volume (claims 1‑10); a kit (claim 11); packaging (claim 12); methods of manufacturing by casting/drying and cavity formation or by extrusion (claims 13‑14); and a non‑therapeutic cosmetic treatment method for perfuming (claim 15).
The limitations of the instant claims, a solid composition, at least one cavity, porosity ≥20 %, through‑cavity option, cavity shapes, volume ratio between 0.2 and 0.9, lipophilic gelling agent and oil, optional dispersed aqueous phase, single‑dose format, are identically or substantially identically recited in the co-pending claims. The only material difference is the identity of the active ingredient: the instant claims require a “biological/cosmetic active agent,” while the co-pending claims require a “perfuming agent.” The co-pending application’s specification itself treats perfuming agents as a type of cosmetic active, stating that the composition can include perfuming agents to impart a fragrance (see, e.g., the co-pending application’s specification at ¶[0005], which characterizes the composition as a perfuming cosmetic composition). Moreover, it is well known in the art that perfuming agents are a subclass of biological/cosmetic active agents routinely used in solid cosmetic products.
The instant dependent claims 7‑8 recite specific classes of active agents (moisturizers, vitamins, anti‑aging agents, etc.) and weight ranges. The selection of any particular active agent from this list, in place of the perfuming agent of the co-pending claims, would have been an obvious matter of routine substitution because the co-pending claims already teach that the solid cavity‑containing platform is suitable for delivering a cosmetic active, and the choice of a specific active is dictated by the intended cosmetic effect (care vs. perfuming). No unexpected result is associated with the substitution.
The kit, packaging, and method claims of the instant application correspond identically to those of the co-pending application, except for the reference to a biological/cosmetic active agent rather than a perfuming agent. These claims are thus not patentably distinct for the same reasons.
Thus, the co-pending claims teach every structural feature of the instant composition except that they require the presence of a perfuming agent rather than the broader class of biological/cosmetic active agents. Perfuming agents are a recognized type of cosmetic active, and one of ordinary skill in the art would have readily appreciated that the same solid porous structure could be used to deliver any other conventional biological/cosmetic active agent, such as moisturizers, vitamins, or anti‑aging agents, by simply replacing the perfuming agent with the desired active. The motivation to do so would be to provide a different cosmetic benefit, e.g., skin care rather than merely fragrance. The substitution would yield a predictable result, a solid care composition with the same handling, application, and dissolution properties. There is no indication of any unexpected interaction between the cavity structure and the particular active that would render the substitution inventive.
Accordingly, the instant claims define the same invention as or an obvious variant of the invention claimed in the co-pending application. Granting a patent on the instant claims would impermissibly extend the period of exclusivity for the same inventive concept. The applicant may overcome this rejection by filing an appropriate terminal disclaimer or by presenting evidence that the substitution of the biological/cosmetic active agent for the perfuming agent produces unexpected results that could not have been foreseen, thereby rendering the claims patentably distinct. No response to this portion of the Office action is required unless Applicant wishes to overcome the rejection.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of co-pending US Application No. 18/859,467 (published as US20250325455A1). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The instant claims are directed to a solid cosmetic care composition for a keratin material comprising at least one biological/cosmetic active agent and at least one cavity such that the composition has a porosity ≥20 % by volume. The composition may include a lipophilic gelling agent and oil, a dispersed aqueous phase, and be a single dose. Additional claims cover kits, packaging with different actives, manufacturing methods (casting/drying and cavity formation, or extrusion through a die and cutting), and a non‑therapeutic method of cosmetic care treatment.
The co-pending claims are directed to a solid cosmetic make‑up composition for a keratin material comprising at least one pigment and at least one cavity such that the composition has a porosity ≥20 % by volume. The composition likewise may include a lipophilic gelling agent and oil, a dispersed aqueous phase, and be a single dose. The co-pending claims also include kits, packaging with different pigments/shades, identical manufacturing methods, and a non‑therapeutic make‑up treatment method.
The structural limitations of the two sets of claims, a solid composition, cavity, porosity ≥20 %, through‑cavity option, cavity shapes, volume ratio 0.2–0.9, lipophilic gelling agent and oil, optional dispersed aqueous phase, single‑dose format, and the manufacturing and use methods, are identical or substantially identical. The only difference is the identity of the active ingredient, the instant claims require a biological/cosmetic active agent (e.g., moisturizers, anti‑aging agents), while the co-pending claims require a pigment. The co-pending specification itself treats pigments as a particular type of cosmetic agent that can be incorporated into the solid cavity platform; it further explicitly teaches that the same solid composition may include other cosmetic active agents, including the biological/cosmetic active agents recited in the instant claims.
For instance, the co-pending specification (see, e.g., ¶[0018]-[0020]) describes that the composition may be a “make‑up or care composition” and can contain “at least one biological/cosmetic active agent, in particular chosen from moisturizing agents, anti‑wrinkle or anti‑aging agents, depigmenting agents, UV filters, desquamating agents, antioxidants, active agents stimulating the synthesis of dermal and/or epidermal macromolecules, skin relaxant agents, antiperspirants, soothing agents and/or anti‑aging agents.” Thus, the co-pending application itself expressly suggests replacing or supplementing the pigment with a biological/cosmetic active agent to obtain a solid care composition.
The difference between the instant claims and the co-pending claims is the substitution of a known cosmetic care active for a known make‑up pigment in an otherwise identical solid porous platform. The co-pending application teaches that the cavity‑containing solid composition is a general delivery system suitable for both make‑up and care applications. One of ordinary skill in the art would have been motivated to replace the pigment with a biological/cosmetic active agent to achieve a solid care product, because the two types of actives are recognized alternatives in the cosmetic field and the structural delivery vehicle is the same. There is no indication that the substitution produces any unexpected result; the care active would simply perform its known function (e.g., moisturizing, anti‑aging) in the same way as in other solid forms.
Therefore, the instant claims define a mere obvious variant of the invention claimed in the co-pending application (see In re Vogel, 422 F.2d 438, 441 (CCPA 1970), wherein a generic claim is not patentably distinct from a species claim when the genus is old or obvious and In re Schneller, 397 F.2d 350, 355 (CCPA 1968), where the only difference is the substitution of one known ingredient for another to obtain a predictable result, claims are not patentably distinct).
All dependent claims in the instant application (claims 2‑11) either mirror corresponding limitations in the co-pending claims (porosity ranges, cavity shapes, etc.) or are explicitly suggested by the co-pending disclosure (the use of biological/cosmetic active agents in the same concentration ranges). The kit, packaging, manufacturing method, and method‑of‑use claims (claims 12‑16) differ only in the purpose of the active agent, which, for the reasons given, is an obvious variation.
Accordingly, the instant claims are not patentably distinct from the co-pending claims. Allowing both applications would unjustly extend patent protection for the same inventive concept. The applicant may overcome this rejection by filing an appropriate terminal disclaimer or by showing that the claimed biological/cosmetic active agent produces an unexpected result in the solid cavity composition that would not have been foreseen from the co-pending disclosure.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of co-pending US Application No. 18/584,735 (published as US20240285480A1). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons outlined below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The instant claims are directed to a solid cosmetic care composition for a keratin material, comprising at least one biological/cosmetic active agent and at least one cavity, wherein the composition has a porosity of at least 20 % by volume relative to the total volume of the solid composition. The composition optionally contains through‑cavities, specific cavity shapes, a lipophilic gelling agent and oil, a dispersed aqueous phase, and may be a single dose. Additional claims cover kits, packaging with different actives, manufacturing methods (casting/drying and cavity formation, or extrusion through a die and cutting), and a non‑therapeutic cosmetic care treatment method.
The co-pending claims are directed to a product comprising at least one first composition and at least one second composition, wherein the first composition is a solid composition with at least one cavity and a porosity ≥20 % by volume, the second composition is a liquid composition, and all or part of the second composition is housed in the cavities of the first composition. The product is described as a cosmetic, pharmaceutical, or food product, and specifically as a cosmetic product dedicated to the care and/or make‑up of a keratin material (claim 13). Dependent claims further specify the porosity, cavity shapes, presence of lipophilic gelling agents and oils, aqueous phases, single‑dose characteristics, kits, and methods of preparation and use.
The solid first composition required by the co-pending claims is structurally identical to the solid composition of the instant claims, it has at least one cavity, a porosity ≥20 %, and can contain cosmetic active agents. The co-pending specification teaches that the first composition may include biological/cosmetic active agents such as those recited in instant claim 7.
The product claim encompasses a solid composition that, by itself, is a cosmetic care composition, with the only difference being that the instant claims explicitly recite a biological/cosmetic active agent, while the co-pending claims require the solid composition to be combined with a liquid in the cavities. However, the co-pending product claim inherently includes the solid composition; the addition of a liquid to the cavities is an optional feature that does not change the fundamental nature of the solid composition. The instant claims essentially claim the same solid composition but without the liquid, and with the active agent explicitly required.
The difference between the instant claims and the co-pending claims lies in two aspects. First, the instant claims explicitly require a biological/cosmetic active agent, whereas the co-pending product claim does not (though it implicitly allows it, as the product is a cosmetic care product), and second, the instant claims do not require the second liquid composition, whereas the co-pending product requires it. Both differences are obvious.
First, the co-pending application’s specification clearly contemplates that the solid first composition may contain cosmetic active agents. For example, dependent claims 9 and 10 refer to lipophilic gelling agents, oils, and aqueous phases, common in solid cosmetic formulations, and claim 13 defines the product as a cosmetic care and/or make‑up product. One of ordinary skill would therefore understand that the solid first composition of the co-pending product contains appropriate cosmetic active agents, including the biological/cosmetic actives listed in instant claim 7. The explicit recitation of such an active agent is nothing more than an obvious clarification of a feature already inherent in the co-pending claims. There is no unexpected result associated with this limitation.
Second, the omission of the second liquid composition from the instant claims is an obvious simplification. The co-pending specification itself describes the solid composition as a self‑standing, single‑dose care article that can be used directly on the skin (see, e.g., the extensive disclosure of the solid composition and its benefits without the liquid). The liquid is presented as an optional extra component that can be housed in the cavities to create a transformative effect. A person skilled in the art would have recognized that the solid composition, with its porosity and active agents, would function perfectly well as a care product on its own, and the decision to omit the liquid is a matter of routine design choice.
The instant claims thus claim a known sub-combination (the solid composition alone) that is fully disclosed and enabled by the co-pending application (see In re Schneller, 397 F.2d 350, 355 (CCPA 1968), wherein generic claims covering a sub-combination are not patentably distinct from claims to the combination when the sub-combination is old or obvious and In re Vogel, 422 F.2d 438, 441 (CCPA 1970)). Therefore, the subject matter of the instant claims is not patentably distinct from the subject matter claimed in the co-pending application. Allowing both applications would result in an unjustified extension of patent term for the same inventive concept. The applicant may overcome this rejection by filing an appropriate terminal disclaimer or by presenting evidence that the claimed solid composition without a liquid provides an unexpected result not suggested by the co-pending application.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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