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 .
Detailed Action
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12 March 2025 acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner. See attached copy of PTO-1449.
Status of Application
2. The instant application is a continuation of Application 17/225,218 (currently abandoned) filed 8 April 2021. Claims 1-20 are currently pending and examined on the merits within.
Claim Rejections – 35 U.S.C. 112(b)
3. 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.
4. Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
5. Claim 20 recites the limitation "the user" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections – 35 U.S.C. 103
6. 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.
7. Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Traynor et al. (U.S. Patent Application Publication No. 2020/0000693) in view of Kacher et al. (U.S. Patent No. 5,340,492).
Regarding instant claim 1, Traynor et al. teach a composition comprising one or more silicon dioxide based particles comprising one or more active agents. See abstract. The composition additionally comprises anionic surfactants including sodium stearate, sodium palmitate or sodium myristate (crystallizing agent). See paragraph [0227]. The composition can additionally comprise xanthan gum (suspension agent). See Example 9. The composition comprises water. See Example 2.
Regarding instant claim 3, the surfactant (crystallizing agent) may be present in amounts of 0.1 to 1%. See paragraph [0219].
Regarding instant claims 4-5, the composition can additionally comprise xanthan gum (suspension agent). See Example 9.
Regarding instant claim 6, Example 9 comprises 0.03% xanthan gum.
Regarding instant claims 7-8, the composition includes plants oils of menthol crystals. See paragraph [0089].
Regarding instant claim 9, active agents may be present in amounts of about 1 to about 20%. See paragraph [0134].
Regarding instant claims 10-14, the composition may comprise a film former in amounts of 0.5 to 10%. See paragraph [0150]. Examples of film formers including petrolatum. See paragraphs [0143 and 0148].
Regarding instant claim 16, the composition can be in the form of a stick. See paragraph [0184].
Regarding instant claim 17, Traynor et al. teach a composition comprising one or more silicon dioxide based particles comprising one or more active agents. See abstract. The composition additionally comprises anionic surfactants including sodium stearate, sodium palmitate or sodium myristate (crystallizing agent). See paragraph [0227]. The composition can additionally comprise xanthan gum (suspension agent). See Example 9. The composition comprises water. See Example 2. The composition may comprise a film former in amounts of 0.5 to 10%. See paragraph [0150]. Examples of film formers including petrolatum. See paragraphs [0143 and 0148]. The composition may comprise sodium chloride. See paragraph [0190]. Moisturizing agents include glycerin. See paragraph [0083].
Regarding instant claim 20, the active agent may be a decongestant. See paragraph [0122].
Traynor et al. do not teach crystalline mesh.
Kacher et al. teach a shaped solid three-dimensional skeleton structure comprising interlocking mesh of crystalline carboxylic acid, preferably sodium soap fibers. See abstract. The interlocking mesh of fibers imparts strength to the structure. See column 3, lines 37-44. The compositions include sodium soap, water and polysaccharides. See column 7, lines 15-55.
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to use a crystallizing agent that provides fiber like crystalline particles to impart strength to the formulation. One would have been motivated, with a reasonable expectation of success, because Kacher et al. teach the strength imparted in soap formulations comprising crystallizing agents, polysaccharides, and water, and Traynor et al. teach similar formulations can be made into soap. The prior art makes obvious the claimed combination of ingredients and thus it would have been expected to have the same properties, i.e., firmness, thermal stability, liquid expression and/or phase stability.
Double Patenting
8. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
9. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending U.S. Patent No. 12,582,583.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and U.S. Patent No. 12,582,583 are directed to rheological solid compositions comprising a crystallizing agent, a suspension agent, an active agent and an aqueous phase. U.S. Patent No. 12,582,583 is further directed to an oral care product and describes the crystallizing agent as forming a mesh. Thus, the invention of U.S. Patent No. 12,582,583 is in effect a "species” of the "generic" invention of the instant application. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus the two are not patentably distinct. The dependent claims are included in this rejection as further describing the same types of crystallizing agents and amounts thereof, suspension agents and amounts thereof, and properties of the composition.
10. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,138,333.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and U.S. Patent No. 12,138,333 are directed to rheological solid compositions comprising a crystallizing agent and an aqueous phase. The instant application further includes a suspension agent and an active agent which are also taught as components in Example 8 of U.S. Patent No. 12,138,333. Thus the two are not patentably distinct. The dependent claims are included in this rejection as further describing the same types of crystallizing agents, amounts of components, and properties of the composition.
11. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/909342 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and Application No. 18/909342 are directed to rheological solid compositions comprising a crystallizing agent, an aqueous phase, and a benefit agent. The instant application further includes a suspension agent and active agent which are also taught as components in Example 8 of Application No. 18/909342. Thus the two are not patentably distinct. The dependent claims are included in this rejection as further describing the same types of crystallizing agents, amounts of components, and properties of the composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
12. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10-16, and 22-23 of copending Application No. 17/225151 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and Application No. 17/225151 are directed to rheological solid compositions comprising a crystallizing agent, a suspension agent, an active agent and an aqueous phase. Application No. 17/225151 is further directed to a shave care composition. Thus, the invention of Application No. 17/225151 is in effect a "species of the "generic" invention of the instant application. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus the two are not patentably distinct. The dependent claims are included in this rejection as further describing the same types of crystallizing agents and amounts thereof, suspension agents and amounts thereof, and properties of the composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
13. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,138,328.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and U.S. Patent No. 12,138,328 are directed to rheological solid compositions comprising a crystallizing agent and an aqueous phase,. The instant application further includes a suspension agent and active agent which are also taught as components in Example 8 of U.S. Patent No. 12,138,328. Thus the two are not patentably distinct. The dependent claims are included in this rejection as further describing the same types of crystallizing agents, amounts of components, and properties of the composition.
Conclusion
14. No claims are allowed at this time.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WORSHAM whose telephone number is (571)270-7434. The examiner can normally be reached Monday-Friday (8-5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Wax can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WORSHAM/Primary Examiner, Art Unit 1615
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