The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to the amendment filed on July 28, 2026.
Claims 2-11 are pending. Claim 1 is cancelled. Claims 2-9 are currently amended. Claim 11 is newly added.
The objection to the disclosure is withdrawn in view of Applicant’s amendment.
The rejection of claims 1-10 on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8-9 of U.S. Patent No. 11,492,573 is withdrawn in view of Applicant’s amendment. However, please see new ground of rejection below.
The rejection of claims 1-5 on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,037,566 is withdrawn in view of Applicant’s amendment. However, please see new ground of rejection below.
The rejection of claims 1-10 on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,129,447 is withdrawn in view of Applicant’s amendment. However, please see new ground of rejection below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 11, line 13 (second from last line), “dimethicone,” by itself, lacks support in the original specification and is considered as new matter. While the specification recites “silicones” in paragraphs [0007] and [0019], there is no specific mention of “dimethicone.” In addition, while Table 1 in paragraph [0022] of the specification recites “PEG-8 Dimethicone” this compound is different from “dimethicone.”
Claims 2-10, being dependent from claim 11, inherit the same rejection as in claim 11 above.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kanga et al. (US Patent No. 5,798,111), hereinafter “Kanga” in view of JP 3574318 B2, hereinafter “JP ‘318.
Regarding claims 2-5 and 11, Kanga teaches clear emulsion cosmetic compositions that include an aqueous phase having 2-methyl-1,3-propanediol (a diol, which reads on the diol of instant claims 11, 3-5) and an oily phase containing silicones (see abstract), wherein the composition exhibits improved make-up removal efficacy (see col. 1, lines 5-8). The compositions may be water-in-oil emulsions, wherein the amounts of the aqueous phase of the emulsion, which includes the 2-methyl-1,3-propanediol, will range from 10 to 97%, the amounts of the water in the aqueous phase may range from 1 to 90%, and the oily phase of the emulsion, which contains the silicones, will constitute from 2 to 90% by weight (see col. 2, lines 18-26). One example of the silicones is dimethicone (see col. 3, lines 33-44). Kanga also teaches cosmetic compositions in Examples 1-10 without propylene glycol (see Table 1). Kanga, however, fails to disclose a make-up remover composition comprising a dispersal composition comprising a water-in-oil emulsion including water, 2-methyl-1,3-propanediol and dimethicone, as recited in claim 11, at least 30 wt% 2-methyl-1,3-propanediol as recited in claim 2; and a wipe, wherein the wipe comprises a substrate formed from fibers coated with a binder composition comprising carboxymethylcellulose, polyvinyl alcohol and/or polyvinyl acetate, and a divalent salt, and wherein the make-up remover composition is loaded onto the substrate as recited in claim 11.
JP ‘318, an analogous art, teaches water-disintegrable wet tissue, used for cleaning, that is easily dispersed by a large amount of water, like a septic tank when thrown away in a toilet or the like (see paragraphs [0001]-[0002] of the English translation). JP’ 318 also teaches that the water-disintegrable tissue may contain a water-soluble or water-swellable binder to increase the strength of the tissue (see paragraph [0024] and an electrolyte to enhance the function of the binder, and when carboxymethylcellulose is used as the binder, divalent salts are the preferred electrolytes from the viewpoint of increasing the strength of the water-disintegrable tissue (see paragraph [0027]).
Considering that Kanga teaches water-in-oil emulsions, wherein the amounts of the aqueous phase of the emulsion, which includes the 2-methyl-1,3-propanediol, will range from 10 to 97%, and the oily phase of the emulsion contains the dimethicone, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have prepared a water-in-oil emulsion including at least 30 wt% 2-methyl-1,3-propanediol because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
It would also have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have loaded the composition of Kanga, i.e., water-in-oil emulsion containing 30 wt% 2-methyl-1,3,propanediol, onto the water-disintegrable tissue, i.e., wipe, of JP ‘318 because this will provide a strong support for the composition thus enhancing make-up removal, and the wipe is flushable as taught by JP ‘318.
Regarding claim 6, Kanga further teaches other polyhydric alcohols in the aqueous phase of the composition and one example is sorbitol (see col. 2, lines 52-58).
Regarding claim 7, as discussed above, Kanga teaches that the compositions may be water-in-oil emulsion, wherein the 2-methyl-1,3-propanediol, a polar solvent, is present in the water phase of the water-in-oil emulsion (see abstract and see col. 2, lines 18-26).
Regarding claim 8, as discussed above, Kanga teaches that the compositions may be water-in-oil emulsions (see col. 2, lines 18-26), hence, the water-in-oil emulsion comprises at least 25 wt% of the composition.
Regarding claims 9-10, Kanga in view of JP ‘318 teaches the features as discussed above.
Considering that the composition of Kanga, i.e., water-in-oil emulsion containing 30 wt% 2-methyl-1,3,propanediol; and dimethicone, was loaded onto the water-disintegrable tissue, i.e., wipe, of JP ‘318, as discussed above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have applied the resulting make-up remover wipe onto a personal care surface, i.e., face, to effectively remove make-up and place the wipe within a waste water stream because the wipe is flushable as taught by JP ‘318.
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 2-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8-9 of U.S. Patent No. 11,492,573 in view of Bonner et al. (US 2015/0272836), hereinafter “Bonner.”
US ‘573 teaches similar cleaning wipes and methods of cleaning a surface using the cleaning wipes, the cleaning wipes comprising the same substrate and binder composition and similar dispersal composition loaded onto the substrate, the dispersal composition comprising a water-in-oil emulsion including a polar solvent like 1,3 diol and/or a polyhydric alcohol in the water phase of the emulsion, wherein the polar solvent does not include propylene glycol, wherein an external emulsion oil phase is at least 30% w/w of the weight percent of the dispersal composition, differing only in that US ‘573 fails to disclose the composition wherein the oil is dimethicone.
Bonner, an analogous art, teaches wet wipe product comprising a substrate and an emulsion (see abstract), such as water-in-oil emulsion (see [0050]) and wherein the emulsion comprises moisturizers like silicones such as dimethicone to improve the sensory properties as well as regulate skin hydration (see [0058]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated dimethicone in the cleaning wipe of US ‘573 because this will improve the sensory properties as well as regulate skin hydration as taught by Bonner.
Claims 2-5 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,037,566 in view of Bonner.
US ‘566 teaches similar cleaning wipes comprising a substrate comprising overlapping binders, i.e., carboxymethyl cellulose and a divalent salt, and a similar dispersal composition impregnated into the substrate, the dispersal composition comprising a polar solvent in a water-in-oil emulsion, differing only in that US ‘566 fails to disclose the composition includes dimethicone.
Bonner, an analogous art, teaches wet wipe product comprising a substrate and an emulsion (see abstract), such as water-in-oil emulsion (see [0050]) and wherein the emulsion comprises moisturizers like silicones such as dimethicone to improve the sensory properties as well as regulate skin hydration (see [0058]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated dimethicone in the cleaning wipe of US ‘566 because this will improve the sensory properties as well as regulate skin hydration as taught by Bonner.
Claims 2-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,129,447 in view of Bonner.
US ‘447 teaches similar cleaning wipes and methods of cleaning a surface using the cleaning wipes, the cleaning wipes comprising the same substrate and binder composition and similar dispersal composition loaded onto the substrate, the dispersal composition comprising a water-in-oil emulsion including a polar solvent in the emulsion, wherein the polar solvent is selected from the group consisting of a diol, a polyhydric alcohol, and combinations thereof, wherein the polar solvent does not include propylene glycol, and wherein an external oil phase of the emulsion is at least 30% w/w of the dispersal composition, differing only in that in US ‘447 fails to disclose the composition wherein the oil is dimethicone.
Bonner, an analogous art, teaches wet wipe product comprising a substrate and an emulsion (see abstract), such as water-in-oil emulsion (see [0050]) and wherein the emulsion comprises moisturizers like silicones such as dimethicone to improve the sensory properties as well as regulate skin hydration (see [0058]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated dimethicone in the cleaning wipe of US ‘447 because this will improve the sensory properties as well as regulate skin hydration as taught by Bonner.
Response to Arguments
Applicant's arguments filed on July 28, 2026 have been fully considered but they are not persuasive.
With respect to the obviousness rejection over Kanga in view of JP ‘318, Applicant argues that neither Kanga nor JP ‘318 discloses dimethicone as required by new claim 11.
The Examiner respectfully disagrees with the above arguments because as stated in paragraph 11, Kanga teaches that the water-in-oil emulsion contains silicones (see col. 2, lines 18-26), and one example of the silicones is dimethicone (see col. 3, lines 33-44).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORNA M DOUYON whose telephone number is (571)272-1313. The examiner can normally be reached Mondays-Fridays; 8:00 AM-4:30 PM.
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/LORNA M DOUYON/Primary Examiner, Art Unit 1761
