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 .
In view of applicant’s amendment of claim 1 and cancellation of claims 2-24, previous 112(a) rejections on claim 20, 22 and 24 and previous 112(b) rejections on claims 1, 5-8, 11, 12, 16 and 18-24 are hereby withdrawn.
In view of applicant’s amendment of claim 1, previous 103 rejections over Patel (GB 1314616) in view of (i) Puracy (an internet article on “Glyceryl stearate”), (ii) CN 106214594 A or Li et al (CN 1411797 A) and (iii) Tiiips (an internet article on “Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”) are hereby withdrawn. Patel (GB’616) does not teach or suggest instant personal care product in the form of a cream or a lotion.
Claim Objections
Claim 25 is objected to because of the following informalities: on line 1, applicant needs to change “comprises” to --- is in the form of ---. Appropriate correction is required.
Claims 26-30, 32-37 and 39-42 are objected to because of the following informalities: on line 1 of each of these claims, applicant need to insert --- weight --- between “total” and “of the”. Appropriate correction is required.
Claim 31 is objected to because of the following informalities: on line 1, applicant needs to change “comprises” to --- is in the form of ---. Appropriate correction is required.
Claim 38 is objected to because of the following informalities: on line 1, applicant needs to change “comprises” to --- is in the form of ---. Appropriate correction is required.
Claim 43 is objected to because of the following informalities: applicant need to change “the Erucamide” to --- the erucamide ---. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 25, 26, 31 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tajiri (JP 2017-178856 and its English translation).
Tajiri teaches (see abstract and 10th paragraph under “DESCRIPTION OF EMBODIMENTS” in English translation) hair treatment agent, which can be used in applications, such as hair creams. In Comparative Example 2 (see the paragraph under “Examples 1-3 and Comparative Examples 1-5” in English translation and see the column with the heading “
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” in Table 2 shown on pg.7 of the Japanese document), Tajiri teaches a hair treatment agent, which contains 1 wt.% of N-stearyl erucamide (“
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”), sorbitan monostearate, cetanol, dimethylaminopropylamide stearate, 3 wt.% of glycerin (“
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”), liquid paraffin, phenoxyethanol, lactic acid and 83.35 wt.% of purified water (“
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”). In the paragraph under “Examples 1-3 and Comparative Examples 1-5”, Tajiri teaches that the obtained liquid mixture was emulsified to obtain a hair treatment agent. It is the Examiner’s position that such emulsified composition constitutes a cream (in the 10th paragraph under “DESCRIPTION OF EMBODIMENTS” in English translation, Tajiri teaches that the dosage form of its hair treatment agent is usually an emulsion type and that the hair treatment agent is used for applications such as hair creams). It is also the Examiner’s position that 1 wt.% for the amount of N-stearyl erucamide teaches the lower end (about 1.5 wt.%) of instant range (about 1.5 wt.% - about 3.0 wt.%) for the amount of erucamide under the broadest reasonable interpretation (since applicant do not define the term “about” in present specification). Thus, Tajiri teaches instant claim 1 (instant limitation “wherein the erucamide is present as a non-cationic slip-modifying agent” merely describes intended use or purpose of erucamide and thus carries no patentable weight).
With respect to instant claims 25, 26, 31 and 38, applicant define: “lotion” as a thick, smooth liquid or semi-liquid preparation designed to be applied to the skin or hair for cosmetic or external medicinal use; “cream” as a thick, viscous liquid or semi-liquid preparation designed to be applied to the skin or hair for cosmetic or external medicinal use; and “shaving” as severing hair from any part of the body close to the skin including from one’s face, head, neck, back, and legs. It is the Examiner’s position that Tajiri’s emulsified hair treatment formulation in the form of hair cream meets such definitions and thus teaches instant personal care product in the form of a “body lotion” or “shave cream”. Thus, Tajiri teaches instant claims 25, 26, 31 and 38.
It is to be noted that the hair treatment agent of Tajiri’s Comparative Example 2 (which the Examiner relied on for the prior art rejection) does not contain “about 3 wt.% glyceryl stearate” of instant claim 27, “about 10 wt.% stearic acid” of instant claim 32, “about 2 wt.% glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters” of instant claim 39 or “about 2% of erucamide” of instant claim 43. Also, there would be no motivation to further add those compounds into the hair treatment agent formulation of Tajiri’s Comparative Example 2 since one skilled in the art would not be motivated to modify a comparative example formulation. Thus, if applicant incorporate the subject matter of instant claim 27, 32, 39 or 43, instant prior art rejection over Tajiri would be overcome.
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 1, 25-27, 31, 38, 39 and 43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 10 and 13-15 of copending Application No. 18/961,769 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reason.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In claims 1-4 and 15, App.’769 teaches a personal care product, which can be in the form of a shave cream, a brushless shave cream or a moisturizing lotion, comprising a formulation having about 0.0001wt.% - about 20 wt.% of erucamide and about 0.0001 wt.% - about 98 wt.% of water. The ranges for the amounts of erucamide and water overlap with instant ranges for the amounts of erucamide (about 1.5 wt.% - about 3.0 wt.% as claimed in instant claim 1 as well as about 2% as claimed in instant claim 43) and deionized water (about 60 wt.% - about 95 wt.%), thus rendering instant ranges prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, claims 1-4 and 15 of App.’769 render obvious instant claims 1, 25, 31, 38 and 43 (instant limitation “wherein the erucamide is present as a non-cationic slip-modifying agent” merely describes intended use or purpose of erucamide and thus carries no patentable weight).
Claims 5-6 of App.’769 teach that its formulation comprises about 0.0001 wt.% - about 20 wt.% of glycerin, which range overlaps with instant range about 3 wt.% for the amount of glycerin (as claimed in instant claim 26), thus rendering instant range prima facie obvious. In re Wertheim, supra. Claims 9-10 of App.’769 teach that its formulation comprises about 0.0001 wt.% - about 20 wt.% of glyceryl monostearate, which range overlaps with instant range about 3 wt.% for the amount of glyceryl stearate (as claimed in instant claim 27), thus rendering instant range prima facie obvious. In re Wertheim, supra. Claims 13-14 of App.’769 teach that its formulation comprises about 0.0001 wt.% - about 20 wt.% of glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters, which range overlaps with instant range about 2 wt.% for the amount of glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters (as claimed in instant claim 39), thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, claims 5, 6, 9, 10, 13 and 14 of App.’769 render obvious instant claims 26, 27 and 39.
Allowable Subject Matter
Claims 28-30, 32-37 and 40-42 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (provided that the objections made on these claims are also overcome). Neither Tajiri nor the claims of App.’769 teach or suggest about 5 wt.% of caprylic/capric triglyceride of instant claim 28, about 10 wt.% stearic acid of instant claim 32, or about 2 wt.% polyglyceryl-10 caprylate/caprate of instant claim 40.
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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/SIN J LEE/
Primary Examiner, Art Unit 1613
April 17, 2026
Prosecution Insights