DETAILED ACTION
Status of Application
The claim set filed 1/7/2025 is acknowledged.
Claims 4, 5, 9-17, 22-26, and 28 are cancelled.
Claims 1-3, 6-8, 18-21, and 27 are under consideration
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statements (IDS) filed on 10/29/2024 are acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the examiner is considering the information disclosure statement. Please see the attached copy of PTO-1449.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-3, 6-8, 18-21, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Loechel (WO2012154918A2).
It is noted that the instant claim 1 is set forth in the form of product-by-process claims, which are considered product claims by the Office. Applicants are reminded that process limitations cannot impart patentability to a product that is not patentably distinguished over the prior art. In re Thorpe et al. (CAFC 1985), supra; In re Dike (CCPA 1968) 394 F2d 584, 157 USPQ 581; Tri-Wall Containers, Inc. v. United States et al. (Ct CIs 1969) 408 F2d 748, 161 USPQ 116; In re Brown et al. (CCPA 1972) 450 F2d 531, 173 USPQ 685; Ex parte Edwards et al. (BPAI 1986) 231 USPQ 981.
Regarding claims 1-3, 6-8, 18-21, and 27, Loechel is drawn to a cosmetic composition in a container comprising at least one inner bag and an outer container, wherein the outer container encloses the inner bag and is filled with a propellant (abstract).
Loechel discloses the cosmetic composition contained in a flexible bag with a valve, the bag is filled with the cosmetic composition and the at least one propellant (skincare active agent and whipping agent co-mingled), and inserted into an aerosol can, and the remaining interior space in the aerosol can is then filled with a propellant, such as a compressed gas, e.g. nitrogen, or compressed air, or any other desired propellant (filled under pressure into package prior to being expelled from the package). The valve of the bag can serve for sealing the bag as well as the can. For this purpose, two sealings can be provided. A first or outer sealing can serve to seal the space between the can and the bag. A second, or inner sealing can serve to seal the valve of the bag. A dispenser cap is favorably attached to the valve. If the dispenser cap is agitated, the valve moves into its open position and any compressed gas between the can and the bag causes the mousse to escape from the bag and to be discharged through the dispenser cap, and foaming the composition with a propellant comprising carbon dioxide or consisting essentially entirely of carbon dioxide, results in a stable mousse, which is very smooth and dense and has a consistency and look resembling whipped cream (whipped formulation) [0021].
Loechel discloses the composition comprising bees wax as a conditioning agent (skincare active agent being a solid ingredient) [0085].
Loechel is directed to a cosmetic composition (can include a sunscreen) in a pressurized container with 2 compartments (one for the formulation and one for the gas: CO2 or nitrous oxide, etc.). The container is pressurized and the 2 components mix upon expressing of the composition from the container. A thick foam is expelled (See abstract, pp 3-4, etc.), it is a bag-in-container system, whereby a propellant and formulation are in the bag with a valve on the bag and a two-way sealing provided (p 4 and claims 1 and 11 of Loechel). The bag filled with cosmetic composition is inserted into the aerosol can and the remaining interior space in the can filled with a propellant such as nitrogen or air or any other propellant (CO2) and topped with a valve/dispenser for mixing 2 when dispensing and the result is a 'whipped cream' consistency (p 4, line 10-27, etc.).
Loechel does not explicitly disclose wherein the pressurized package is under sufficient pressure suitable to maintain the whipping agent dispersed in the formulation prior to the whipped formulation being expelled.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Loechel to arrive at the instant invention, with the motivation that with the motivation that Loechel discloses a dispenser cap is favorably attached to the valve that foams the composition with a propellant comprising carbon dioxide and causes the mousse to escape from the bag and to be discharged through the dispenser cap, producing a stable mousse, which is very smooth and dense and has a consistency and look resembling whipped cream [0021]. Further, one having ordinary still in the art would reasonably expect success in combining prior art elements according to known methods to yield predictable results, see MPEP 2141.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Loechel discloses wherein a cosmetic composition contained in a flexible bag with a valve, where the composition in the bag contains at least one propellant, preferably at least carbon dioxide and can be discharged from the bag as foam, especially as a mousse. The bag containing the composition can be combined with any type of container which can be filled with any type of propellant in order to achieve (minimal amount of pressure) a maximum exhaustion (substantially all) of the composition from the bag [0021]. Loechel further discloses wherein a propellant is contained in a space between the outer container and the inner bag wherein the pressure of the propellant is preferably set to 0.3 to 1.0 MPa, from the perspective of stably discharging the content of the bag until the preferably complete exhaustion of the composition contained in the bag [0094].
Loechel discloses the cosmetic composition contained in a flexible bag with a valve, the bag is filled with the cosmetic composition and the at least one propellant, and inserted into an aerosol can, and the remaining interior space in the aerosol can is then filled with a propellant, such as a compressed gas, e.g. nitrogen, or compressed air, or any other desired propellant (pressure generating and maintaining component comprising one or more gas and/or liquid propellants which are not co-mingled with the formulation) [0021].
Loechel discloses a container with at least one inner bag, as a bag-on-valve-system, in an outer container (rigid container) [0015], the bag is filled with the cosmetic composition and the at least one propellant, and inserted into an aerosol can, and the remaining interior space in the aerosol can is then filled with a propellant, such as a compressed gas, e.g. nitrogen, or compressed air, or any other desired propellant (pressurized BOV assembly). The valve of the bag can serve for sealing the bag as well as the can. For this purpose, two sealings can be provided. A first or outer sealing can serve to seal the space between the can and the bag. A second, or inner sealing can serve to seal the valve of the bag. A dispenser cap is favorably attached to the valve. If the dispenser cap is agitated, the valve moves into its open position and any compressed gas between the can and the bag causes the mousse to escape from the bag and to be discharged through the dispenser cap (adapted to holding positive pressure affixed to the valve) [0021].
Loechel discloses the outer container is formed from metal [0094].
Loechel discloses when the dispenser cap is agitated, the valve moves into its open position and any compressed gas between the can and the bag causes the mousse to escape from the bag and to be discharged through the dispenser cap [0021]. The limitation “wherein the BOV ... dispenses the formulation in a metered dispensing system" is a recitation of intended use. Loechel discloses that the composition is dispensed when the dispenser cap is agitated, which then moves the valve from a closed to an open position to dispense the formulation and then returns to a closed position when the dispenser cap is not agitated, which does not move the valve, and the formulation is not dispensed, therefore, the composition is capable of being dispensed in a metered dispensing system as dispensing is not necessarily continuous and is controlled by the activation of the dispensing cap and valve during use which can be intermittent.
Loechel discloses the composition provides a good perception of spreading upon application (readily spreadable) [0091].
Loechel discloses bees wax as a conditioning agent from 0.1 % to about 20% (skincare active agent being a solid ingredient between about 10-85 wt%) [0085-0086].
Loechel discloses silicone containing materials as silicone hair conditioning agent that comprises a mixture of a polydimethylsiloxane gum, having a viscosity greater than about 1,000,000 centistokes and polydimethylsiloxane fluid having a viscosity of from about 10 centistokes to about 100,000 centistokes at 25 degrees Celsius, wherein the ratio of gum to fluid is from about 30:70 to about 70:30, preferably from about 40:60 to about 60:40 (one of ordinary skill in the art would reasonably expect success in combining the mixture in the ratios such as a 30 part ratio of a polydimethylsiloxane gum with a viscosity of 1,000,000 centistokes and a 70 part ratio of a polydimethylsiloxane fluid having a viscosity of from about 10 centistokes provides a 30:70 mixture with resulting viscosity of about 300,000 centistokes, which converts to a viscosity between 75,000-450,000 cps) [0081].
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 §§ 706.02(l)(1) -
706.02(l)(3) 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.
Claims 1-3, 6-8, 18-21, 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of US Patent No. 11,964,035.
Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose whipped formulations expelled from a package, wherein the whipped formulation comprises a whipping agent (nitrous oxide) co-mingled with active agents, wherein the formulated is filled under pressure into a package, the package is pressurized to maintain the whipping agent dispersed and the formulation is dispensed as whipped when an external pressure is applied. Both teaches a pressure generating and maintaining component, and the same BOV pressurized assembly.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 6-8, 18-21, 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of US Patent 11,622,922.
Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose whipped formulations, expelled from a package, wherein the whipped formulation comprises a whipping agent (nitrous oxide) co-mingled with active agents, wherein the formulated is filled under pressure into a package, the package is pressurized to maintain the whipping agent dispersed and the formulation is dispensed as whipped when an external pressure is applied. Both teaches a pressure generating and maintaining component, and the same BOV pressurized assembly.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 6-8, 18-21, 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Patent 11,612,551.
Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose whipped formulations expelled from a package, wherein the whipped formulation comprises a whipping agent (nitrous oxide) co-mingled with active agents, wherein the formulated is filled under pressure into a package, the package is pressurizes to maintain the whipping agent dispersed and the formulation is dispensed as whipped when an external pressure is applied. Both teach a pressure generating and maintaining component, readily spreadable, the same metal BOV pressurized assembly and metered dispensing system.
This is a nonstatutory double patenting rejection.
Claims 1-3, 6-8, 18-21, 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Patent 12,138,332.
Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose whipped formulations expelled from a package, wherein the whipped formulation comprises a whipping agent (nitrous oxide) co-mingled with active agents, wherein the formulated is filled under pressure into a package, the package is pressurizes to maintain the whipping agent dispersed and the formulation is dispensed as whipped when an external pressure is applied. Both teach a pressure generating and maintaining component, readily spreadable, the same metal BOV pressurized assembly and metered dispensing system.
This is a nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/QUANGLONG N TRUONG/Examiner, Art Unit 1615
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