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 .
Status of Claims
Claims 1-15 are pending and under examination in this office action
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed May 13, 2025. The Examiner has considered the references cited therein to the extent that each is a proper citation. Please see the attached USPTO Form 1449.
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.
Claim 1 - 15 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 - 15 of U.S. Patent Application No. 19/105,494. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
· Both sets of claims refer to a composition wherein the copending claims are to a composition comprising:a. an alpha hydroxy acid;b. a volatile emollient; and c. a processed oat ingredient.– the instant claims are to a method of improving using an obvious variation of the copending claims comprising lactic acid. Although instant claim 1 did not recite an alpha hydroxy acid per-se, it is known in the art that an alpha hydroxy acid is lactic acid. Furthermore, the instant pending claims recite that the composition comprises processed oats and volatile emollient as recited in the copending claims. Therefore, the claims are obvious variation of the instant claims.
· Both applications recite using the same compositions and/or derivatives thereof. The compositions recited in the claims are anticipatory of each other.
· Therefore, one of ordinary skill in the art would have been motivated to use the instant claims in practicing the copending claims with a reasonable expectation of success because the claims of the composition would have been used in practicing the instant method claims.
In view of the foregoing, the copending application claims and the current application claims are obvious variations.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Guha Lactic acid (2021).
Guha teaches with regards to instant claim 1, treating skin with eczema (as required by instant claims 1 and 3) applying lactic acid, to the face (as required by instant claim 5), wherein the lactic acid concentration is from 0.5% (as required by instant claim 2).
Claim(s) 1-2,5 and 6 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Migala (2020).
Migala teaches treating skin conditions with lactic acid (for exfoliating the skin) treating wrinkles wherein the concentration is 5% (as required by instant claim 2) applied to the body and face (as required by instant claim5) applied twice a day(as required by instant claim 6).
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guha Lactic acid (2021) in view of Popp et al. (US 2006/0269495) and further in view of Zimmerman (US 5,888,521) and Maunsell et al. (US 20200069569) Guha is applied here as above.
However, fails to teach applying the composition to a lesion and that the composition further comprises processed oat.
Popp et al. teach topical administration of alpha hydroxy acid in the treatment of skin (see abstract) wherein the alpha-hydroxy acid is lactic acid (see 0008) wherein the formulation comprises dimethicone (as required by instant claim 8-9, see 0131) for the treatment of eczema, abnormal skin such as rough skin wrinkles (see claim 19, as required by instant claim 7) in the form of a lotion (see 0165, as required by instant claim 15) and further include dermatological acceptable excipients such as emollient (see 0136 as required by instant claim 14).
Zimmerman teaches a composition for topical use comprising hydroxy carboxylic acid ie., (see abstract) lactic acid (see col. 3, lines 30+) comprising oat extract (processed oat, (as required by instant claim 11, see abstract), wherein the goat extract is a beta-glucan (as required by instant claim 12) having a concentration of 0.01% to about 99% of a hydroxycarboxylic acid and from about 0.01% to about 99% of oat extract (see col. 2, lines 28+, as required by instant claims 2 and 13.
Maunsell teaches an oat lipid extract for treating skin conditions such as aging skin wherein the composition comprises lactic acid and dimethicone wherein the lactic acid is at 0.45%, dimethicone at 3.2 oatmeal at 1% (as required by instant claims 1 and 10, see para 0294) for the treatment of eczema, dry skin (see 0111).
It would have been obvious to one of ordinary skill in the art would have been motivated to combine these references and make the modification because they are drawn to same technical fields (constituted with same ingredients and share common utilities, and pertinent to the problem which applicant concerns about. MPEP 2141.01(a)
Additionally, one would have been motivated to combine these references and make the modification because they are drawn to same technical fields (constituted with same ingredients and share common utilities, and pertinent to the problem which applicant concerns about. MPEP 2141.01(a).
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY V GEMBEH whose telephone number is (571)272-8504. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at 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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/SHIRLEY V GEMBEH/Primary Examiner, Art Unit 1615 9/17/26
