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 .
It is to be noted that the effective filing date of instant application is not September 21, 2018 (on which the provisional application 62/734,790 was filed), but September 20, 2019 because the subject matter of instant claim 1 is not supported in the provisional application: at least the presence of instant glyceryl stearate as well as the weight percentage ranges for some of the ingredients are not supported in the provisional application.
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim 8 (i.e., claim 8 that follows instant claim 11) been renumbered 12.
Claim Objections
Claim 5 is objected to because of the following informalities: on line 2, applicant need to change C12 alkanes.” to --- C12 alkane ---. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: applicant need to specify that the percentages are based on the total weight of the moisturizing composition (to make the meaning/scope of the claim clearer). Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 recites that the texture enhancer is a mixture consisting essentially of coconut alkanes, coco-caprylate/caprate, bio-silicate fermentation product, and polysaccharide conditioner. Yet, instant claim 5, which depends from claim 1, recites that the texture enhancer “consists of” coconut alkanes that is about 85.0 to about 90.0% C12 alkanes. Thus, instant claim 5 fails to further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim 5 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.
Claim 5 recites that the texture enhancer (of claim 1) consists of coconut alkane that is about 85.0 to about 90% C12 alkanes. The phrase “coconut alkane that is about 85.0 to about 90.0% C12 alkanes” is very confusing and indefinite. Did applicant meant to say that the coconut alkane contains about 85.0 to about 90.0% of C12 alkane? Also, what is the percentage based on?.
It is to be noted that instant claim 5 was not examined on the merit do to the reason explained above in Paragraphs 5 and 7.
Claim 15 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.
Claim 15 recites that the composition has a specific gravity of between 0.99 to 1.1, and/or wherein the density ratio is in comparison to water at 4oC and 1 atom. First of all, there is insufficient antecedent basis for the limitation “the density ratio” in the claim. Secondly, the claim does not specify the density ratio of “what” (i.e., is applicant referring to density ratio of the composition?).
For the purpose of examining the claim on the merit, the Examiner assumed that applicant meant claim 15 to state --- The moisturizing composition of claim 13, wherein the composition has a viscosity of . . ., and/or wherein the composition has a specific gravity of between 0.99 to 1.1, wherein the specific gravity is a density ratio of the composition to water at 4oC and 1 atom. --- (as recited in claim 19 of the parent application 17/719,283).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-4 and 6-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4 and 6-26 of prior U.S. Patent No.12,151,012 B2. This is a statutory double patenting rejection.
Instant claims 1-4 are the same as claims 1-4 of Pat.’012. Instant claim 6 is the same as claim 6 of Pat.’012. Instant claim 7 is the combination of claims 7-9 of Pat.’012. Instant claim 8 is the same as claim 10 of Pat.’012. Instant claim 9 is the combination of claims 11 and 12 of Pat.’012. Instant claim 10 is the same as claim 13 of Pat.’012. Instant claim 11 is the same as claim 14 of Pat.’012. Instant claim 12 (misnumbered as claim 8) is the same as claim 15 of Pat.’012. Instant claim 13 is the same as claim 16 of Pat.’012. Instant claim 14 is the same as claim 17 of Pat.’012. Instant claim 15 is the combination of claims 18 and 19 of Pat.’012. Instant claim 16 is the same as claim 20 of Pat.’012. Instant claim 17 is the same as claim 21 of Pat.’012. Instant claim 18 is the same as claim 22 of Pat.’012. Instant claim 19 is the combination of claims 23-25 of Pat.’012. Instant claim 20 is the same as claim 26 of Pat.’012.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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 .
/SIN J LEE/
Primary Examiner, Art Unit 1613
June 13, 2026
Prosecution Insights