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 .
Claim Status
Applicant’s claim amendments and arguments, filed 13 August 2025, are acknowledged.
Claims 30-32 & 41-58 are pending.
Claims 41-58 are new.
Claims 1-29 & 33-40 are cancelled.
Claims 30 & 31 are amended.
No claims are withdrawn.
Claims 30-32 & 41-58 are under consideration.
Withdrawn Objections/ Rejections
Specification
The objection to the specification is withdrawn due to Applicant filing a substitute specification on 01 October 2022.
The objections to claims 34 and 36 are withdrawn due to cancellation of the claims.
The rejection of claim 40 is rejected under 35 U.S.C. 112(a)-New Matter is withdrawn due to cancellation of the claim.
The rejection of claims 2-6 & 22 under 35 USC 112(b) is withdrawn due to cancellation of the claims.
The rejection of claims 1-3, 21, 23, 24, 26-28, 34 & 40 under 35 U.S.C. 103 as being unpatentable over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] in view of Miyeon House; claim 4 under 35 U.S.C. 103 over Choulot [as evidenced by Skinasensyl and Monica Wilde] and Miyeon House and further in view of Skinasensyl; claims 5 & 6 under 35 U.S.C. 103 over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] and Miyeon House, and further in view of Holtkoetter, Good Scents Company and Dermatology; claim 7 under 35 U.S.C. 103 as over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] and Miyeon House and further in view of Shire; claim 22 over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] and Miyeon House, and further in view of Givaudan; claim 25 under 35 U.S.C. 103 over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] and Miyeon House and further in view of Active Peptide; claim 29 under 35 U.S.C. 103 over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] and Miyeon House and further in view of Citric Acid; claims 35 and 36 under 35 U.S.C. 103 over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] and Miyeon House, and further in view of Treatment (as evidenced by Cosmobeauty); claims 1-3, 5-7, 21, 23-25 & 27-29 under 35 U.S.C. 103 over Illumi-Bright Skin Brightening Formula [as evidenced by Niacinamide and Hexapeptide-2] and Shibuya; claims 34-36 under 35 U.S.C. 103 over Illumi-Bright Skin Brightening Formula [as evidenced by Niacinamide and Cosmetics & Toiletries] and Shibuya, and further in view of Treatment (as evidenced by Cosmobeauty); claim 22 under 35 U.S.C. 103 over Illumi-Bright Skin Brightening Formula [as evidenced by Niacinamide and Cosmetics & Toiletries] and Shibuya and further in view of Mathieu; claim 4 under 35 U.S.C. 103 over Illumi-Bright Skin Brightening Formula [as evidenced by Niacinamide and Cosmetics & Toiletries] and Shibuya, and claim 26 under 35 U.S.C. 103 over Illumi-Bright Skin Brightening Formula [as evidenced by Niacinamide and Cosmetics & Toiletries] and Shibuya, and further in view of Hood is withdrawn due to cancellation of the claims.
The rejection of claim 30 under 35 U.S.C. 103 over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] and Miyeon House and further in view of Givaudan; claim 31 under 35 U.S.C. 103 over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom], Miyeon House and Givaudan, and further in view of Skinasensyl; claim 32 under 35 U.S.C. 103 over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom], Miyeon House, Givaudan, and Skinasensyl, and further in view of Active Peptide; claims 30-32 under 35 U.S.C. 103 as over Illumi-Bright Skin Brightening Formula [as evidenced by Niacinamide and Cosmetics & Toiletries] and Shibuya, above, and further in view of Mathieu and Fournial is withdrawn due to claim 30 amendments which require the oligosaccharides to include one or more hydrolyzed Manihot esculenta tuber extract or porphyridium polysaccharide.
New Objections/ Rejections
Claim Objections
Claims 31 & 58 are objected to because of the following informalities:
Claim 31 is not compliant with 37 CFR 1.121 in that it has the claim status identifier “Previously Presented” but contains underlining indicating claim amendments have been made.
Applicant may wish to consider whether changing the claim status identifier would obviate the objection.
Claim 58 is further refining the liquid blend, as such the transitional phrase should be “further comprising”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 45 & 53 are 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 45 recites the limitation “the blend of active ingredients” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Applicant may wish to consider whether an amendment to recite “the formulation excludes L-ascorbic acid and derivatives thereof”. Support for this amendment is found at paragraph [00011] of the specification.
Claim 53 recites the limitation “the plurality of peptides” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Applicant may wish to consider whether a claim amendment to recite “the plurality of different peptides” would obviate the rejection.
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.
Claims 31 and 32 are 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 31 depends from claim 30. Claim 30 requires to the peptides to be a plurality of different peptides. However, claim 31 is only requires peptides to be present from about 0.00002 to about 0.5 wt% (i.e. claim 31 does not require the mass recited for the peptides to be the sum of the plurality of different peptides). As such claim 31 fails to include all the limitations of the claim from which it depends.
Claim 32 depends from claim 30. Claim 30 requires to the peptides to be a plurality of different peptides. However, claim 32 is a Markush and only requires one of the peptides to meet the claim (i.e. claim 32 does not require the peptides to be different). As such claim 32 fails to include all the limitations of the claim from which it depends.
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.
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.
Claims 30, 32, 45, 46, 50-54, 57 & 58 are rejected under 35 U.S.C. 103 as being unpatentable over Montiel (US Publication No. 2014/0322307; Published: 10/30/2014) in view of Miyeon House (Published: 05/27/2016; previously cited), Kim (KR 101582974; Published: 01/06/2016) and Nangai Oil (Published: 06/28/2014).
*All references refer to the English language translation.
Claim Interpretation: The claim 30 recitation of “wherein the liquid blend of the cosmetic formulation is selected for to improve the jawline skin and neck appearance by repairing or concealing wrinkles, by reducing stretching and sagging of the skin in areas where age-related loss of dermal elasticity has occurred …” is a statement of intended use. The claim 58 recitation of “for ease of delivery to the skin via a pump dispenser” is a statement of intended use which does not further limit the composition in terms of reagents or amounts. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
With regard to claim 30, Montiel teaches pharmaceutical and cosmetic compositions which can be used to treat discontinuities on the skin such as wrinkles, expression lines, stretch marks, striae, loss of elasticity, loss of firmness, loss of smoothness, loss of the capacity to recover from deformation, loss of resilience, sagging of the skin such as sagging cheeks, the appearance of bags under the eyes or the appearance of a double chin, among others and contain antiwrinkle ingredients (title; [0040]; [0149]). With regard to claims 30, 32, 52 & 53, Montiel teaches inclusion of Thymulen-4 ([INCI: Acetyl Tetrapeptide-2]; stimulates collagen and elastin) and Syn-Coll ([INCI: Palmitoyl Tripeptide-5]; increases collagen production; [0150]). With regard to claim 45, Montiel in the Table 12 Facial Cosmetic composition teaches a composition free of L-ascorbic acid and derivatives (pg. 30). With regard to claims 50 & 57, Montiel teaches pharmaceutical and cosmetic compositions contain cytokine growth factors [0149]. With regard to claim 51, Montiel teaches inclusion of Lumiskin which is caprylic/ capric triglyceride [0151]. With regard to claim 54, Montiel teaches inclusion of sodium carboxymethyl beta glucan (i.e. a glucan biopolymer; [0153]). With regard to claim 58, Montiel teaches pharmaceutical and cosmetic compositions may be emulsions and can contain anti-inflammatory agents ([0147] & [0155]).
Montiel does not teach inclusion of diglucosyl gallic acid, hydrolyzed Manihot esculenta tuber extract or nangai oil.
With regard to claim 30, in the same field of invention of skin care, Miyeon House teaches diglucosyl gallic acid is transformed by the normal skin flora into an active substance that reduces inflammation (i.e. diglucosyl gallic acid is a skin anti-inflammatory agent; pg. 9).
With regard to claim 30, In the same field of invention of skincare, Kim teaches complex extracts of hydrolyzed Manihot esculenta tuber extract, inhibits inflammatory mediators in cosmetics to improve skin (abstract). With regard to claim 46, Kim teaches the cosmetic composition comprises 0.1 to about 10 % by weight hydrolyzed Manihot esculenta tuber extract (Kim’s claims-pg. 8).
With regard to claim 30, Nangai Oil teaches nangai oil has anti-inflammatory properties (pg. 1).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Here, at least rationale (A), may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Montiel’s anti-inflammatory skin care composition by adding diglucosyl gallic acid, 0.1 to about 10 % by weight hydrolyzed Manihot esculenta tuber extract and nangai oil according to known methods to yield the predictable result of an anti-inflammatory skincare composition. The ordinary skilled artisan would have been motivated to do so with an expectation of success in order to increase the anti-inflammatory properties of Montiel’s anti-inflammatory skin care composition, diglucosyl gallic acid, hydrolyzed Manihot esculenta tuber extract and nangai oil reduce skin inflammation and inflammatory mediators. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
With regard to the recited amounts of oligosaccharides/ hydrolyzed Manihot esculenta tuber extract, the composition suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil teach this reagent in an amount which overlaps or falls within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Montiel, Miyeon House, Kim and Nangai Oil, as applied to claims 30, 32, 45, 46, 50-54, 57 & 58 above, and further in view of Dupont (WO 2009/127058; Published: 10/22/2009) and Widgerow (US 2012/0058076; Published 03/08/2012).
*All references refer to the English language translation.
Claim Interpretation: As above with regard to claims 30 & 58.
The teachings of Montiel, Miyeon House, Kim and Nangai Oil, are addressed above. The composition suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil, is a facial cosmetic which comprises the acetyl tetrapeptide-2, sold under the name Thymulen, and Palmitoyl Tripeptide-5).
Neither Montiel, Miyeon House, Kim nor Nangai Oil teach the amount of peptides in the formulation.
In the same field of invention of skin care, Dupont teaches Thymulen 4 which comprises acetyl tetrapeptide-2 is used in an amount of 0.05% to reinforce the cutaneous immune defense, and cellular renewal in an anti-aging and face serum (Example 34, pg. 106-107).
In the same field of invention of treating aging skin, Widgerow in Table 1 teaches a topical composition comprising palmitoyl tripeptide-5 in an amount of 0.0001-1.0% (abstract).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious before the effective filing date to have modified the composition suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil by adding acetyl tetrapeptide-2 and palmitoyl tripeptide-5 in a combined amount of 0.0501-1.05% as suggested by the combined teachings of Dupont and Widgerow because Montiel, Dupont and Widgerow are directed to topical formulation which may be used to treat wrinkles and skin aging and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to use palmitoyl tripeptide-5 and acetyl tetrapeptide-2 in amounts recognized as suitable for treating aging skin.
With regard to the recited amounts of peptides, the composition suggested by the combined teachings of Montiel, Miyeon House, Kim, Nangai Oil, Dupont and Widgerow teach these reagents in an amount which overlaps or falls within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 41 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Montiel, Miyeon House, Kim and Nangai Oil, as applied to claims 30, 32, 45, 46, 50-54, 57 & 58 above, and further in view of Choulot (FR 2,996,449; Published: 04/11/2014; previously cited) and Calapai (Contact Dermatitis, 74, 131–144; Published: 2015).
*All references refer to the English language translation.
Claim Interpretation: As above with regard to claims 30 & 58.
The teachings of Montiel, Miyeon House, Kim and Nangai Oil, are addressed above. The composition suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil, is a facial cosmetic which may comprise skin conditioners ([0149]).
Neither Montiel, Miyeon House, Kim nor Nangai Oil teach the composition provides Ruscus aculeatus Root Extract.
Choulot in Example 5 teaches a soothing and nourishing cream which may be formulated as an antiwrinkle treatment (pg. 4 & 9).
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(Translation courtesy of Google Translate). With regard to claims 41 & 42, the composition comprises Ruscus Aculeatus Root Extract (i.e. an ingredient to improve skin capillary circulation for removal of fat accumulations; pg. 9; instant specification-pg. 11).
With regard to claims 41 & 42, Calapai teaches Ruscus Aculeatus Root Extract is a recognized cosmetic product that provides skin conditioning and soothing (pg. 137).
Here, at least rationale (A) may be used in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the facial cosmetic suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil by adding Ruscus Aculeatus Root Extract as suggested by the combined teachings of Choulot and Calapai because Montiel teaches inclusion of skin conditioners and Ruscus Aculeatus Root Extract is an art recognized skin conditioner used in the skincare compositions which may be anti-wrinkle treatments. The ordinary skilled artisan would have been motivated to do so with an expectation of success in order to increase the skin conditioning properties of the composition. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claims 43 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Montiel, Miyeon House, Kim, Nangai Oil, Choulot, and Calapai as applied to claims 30, 32, 41, 42, 45, 46, 50-54, 57 & 58 above, and further in view of Treatment (Published: 07/06/2017, previously cited; as evidenced by Cosmobeauty (2003); previously cited).
*All references refer to the English language translation.
Claim Interpretation: As above with regard to claims 30 & 58.
**Note: Paragraph [00038] of the disclosure states Solidago Virgaurea (Goldenrod) Extract, Citrus Medica Limonum (Lemon) Peel Extract (rutin, naringin, hesperidin) contain flavonoid glycosides.
The combined teachings of Montiel, Miyeon House, Kim, Nangai Oil, Choulot, and Calapai are teach a facial composition which may used to treat skin irritation and dry skin (Montiel -[0158] & [0159]).
Neither, Montiel, Miyeon House, Kim, Nangai Oil, Choulot, and Calapai teach inclusion of flavonoid glycosides, Solidago vigaurea Extract, and Citrus medica limon Peel Extract.
Treatment teaches a treatment for dry and sensitive skin with wrinkles that comprises the phytocomplexes of BSASM and Legactif which provide a unique, synergistic effect that removes irritation. They reduce itching, erythema and redness, and strengthen and seal blood vessels (pg. 20). As evidenced by Cosmobeauty, Legactif comprises golden rod which is disclosed by Cosmobeauty to comprise rutin/rutina, lemon which comprises naringin and hesperidin, and Gilbarbeira (i.e. Butchers Broom) which comprises ruscogenin (pg. 2).
Here, at least rationale (A) may be employed in which it would have been obvious to a person of ordinary skill of the art at the time of filing to have modified the formulation suggested by the combined teachings of Montiel, Miyeon House, Kim, Nangai Oil, Choulot, and Calapai by adding the treatment taught by Treatments which comprises Butchers Broom/ruscogenin, Golden rod/rutin/rutina, and lemon/naringin and hesperidin because the composition suggested by Montiel, Miyeon House, Kim, Nangai Oil, Choulot, and Calapai is a skin treatment to treat skin irritation and dry skin and Legactif comprises golden rod which is disclosed by Cosmobeauty to comprise rutin/rutina, lemon which comprises naringin and hesperidin, and Gilbarbeira (i.e. Butchers Broom) which comprises ruscogenin to treat this condition. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order sooth the skin and addressing the causes of irritation through inclusion Golden rod/rutin/rutina, and lemon/naringin and hesperidin extracts. Further, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claim 47 is rejected under 35 U.S.C. 103 as being unpatentable over Montiel, Miyeon House, Kim and Nangai Oil, as applied to claims 30, 32, 45, 46, 50-54, 57 & 58 above, and further in view of Boucher (FR 2918270; Published 01/09/2009).
*All references refer to the English language translation.
Claim Interpretation: As above with regard to claims 30 & 58.
In brief, the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil suggest a facial composition comprising nangai oil/medium chain triglycerides which has known anti-inflammatory properties.
Neither Montiel, Miyeon House, Kim nor Nangai Oil teach the amount of nangai oil/medium chain triglycerides.
In the same field of invention, Boucher teaches cosmetic emulsions having anti-inflammatory activity (title; abstract). With regard to claim 47, Boucher teaches the basic emulsion comprises 2 % carnarium indicum seed oil (i.e. nangai oil comprising medium chain triglycerides; pg. 5)
Here at least rationale G may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have adjusted the amount of carnarium indicum seed oil/ nangai oil comprising medium chain triglycerides to be 2.0% of the formulation as taught by Boucher because Montiel and Boucher are directed to cosmetic emulsions and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide the cosmetic emulsion with enough carnarium indicum seed oil/ nangai oil comprising medium chain triglycerides in an amount art recognized as suitable for cosmetic emulsions and to provide the added benefit of anti-inflammatory activity.
With regard to the recited amounts of carnarium indicum seed oil/ nangai oil comprising medium chain triglycerides, the composition suggested by the combined teachings of Montiel, Miyeon House, Kim, Nangai Oil, and Bourcher teach this reagent in an amount which overlaps or falls within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 48 is rejected under 35 U.S.C. 103 as being unpatentable over Montiel, Miyeon House, Kim and Nangai Oil, as applied to claims 30, 32, 45, 46, 50-54, 57 & 58 above, and further in view of Givaudan (Published: 2017; previously cited).
*All references refer to the English language translation.
Claim Interpretation: As above with regard to claims 30 & 58.
In brief, the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil suggest a facial cosmetic comprising diglucosyl gallic acid. Montiel teaches the compositions of their invention may be used to treat marks caused by inflammation or marks from acne [0170].
Neither Montiel, Miyeon House, Kim nor Nangai Oil teach the amount of diglucosyl gallic acid for inclusion in the facial composition.
In the same field of invention of skin care and personal care, Givaudan teaches a mixture comprising diglucosyl gallic acid in a dosage of 1-4% to protect and perfect the skin by its healthy and natural tone (pg.5).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have adjusted the amount of diglucosyl gallic acid in the formulation suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil to be 1-4% of the formulation because this is the amount which is used in other skincare formulations and it is obvious to modify similar formulations in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to identify a starting point/amount for optimization which is suitable for skin care and topical application to the skin to perfect skin’s natural tone.
With regard to the recited amounts of diglucosyl gallic acid, the composition suggested by the combined teachings of Montiel, Miyeon House, Kim, Nangai Oil and Givaudan contain this reagent in an amount which overlaps or falls within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 49 & 56 are rejected under 35 U.S.C. 103 as being unpatentable over Montiel, Miyeon House, Kim and Nangai Oil, as applied to claims 30, 32, 45, 46, 50-54, 57 & 58 above, and further in view of Holtkoetter (DE102006046076; Published: 04/19/2007; previously cited), Good Scents Company (Published 04/09/2017; previously cited) and Dermatology (Published: 02/13/2017; previously cited).
*All references refer to the English language translation.
Claim Interpretation: As above with regard to claims 30 & 58.
In brief, the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil suggest a facial comprising a dimethicone which is a known skin conditioner (Table 12-pg. 30). Montiel teaches inclusion of skin conditioners and antioxidants ([0147] & [0149]).
Neither Montiel, Miyeon House, Kim nor Nangai Oil, teach inclusion of a silanol or polyphenols.
Holtkoetter teaches a cosmetic or topical dermatological composition which may be used to treat irritated skin and teaches creams (title; pg. 22, 23 & 25). With regard to claims 49 & 56, Holtkoetter teaches the topical compositions of their invention comprise at least one active agent which may be vitamins, polyphenols and derivatives of methylated silanol (pg. 24 & 25). With regard to claim 49, Holtkoetter teaches inclusion of methylsilanol mannuronate in an amount of from preferably 0.005-1 wt.% (pg. 16). With regard to claim 56, Holtkoetter teaches inclusion of polyphenols or a polyphenol-rich plant extract in an amount extraordinarily preferably 0.01-3 wt% (pg. 14).
Good Scents Company teaches methylsilanol mannuronate to be a skin conditioner (pg. 2).
Dermatology teaches green tea polyphenols are soothe the skin and are antioxidants (pg. 2).
Here, at least rationale (A), may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have the facial cosmetic composition suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil by combining it with 0.005-1 wt.% methyl silanol mannuronate (i.e. a silanol) and 0.01-3 wt% green tea polyphenols as suggested by the combined teachings of Holtkoetter, Good Scents Company, and Dermatology according to known methods to yield the predictable result of a facial cosmetics that conditions, provides antioxidant properties and soothes irritated skin. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to increase the conditioning properties of the facial cosmetic because the cosmetic contains the dimethicone and 0.005-1 wt.% methyl silanol mannuronate is a conditioner used in the compositions that treat irritated skin as suggested by the combined teachings of Holtkoetter and Good Scents Company. The ordinary skilled artisan would have also been motivated to increase the antioxidant and soothing properties of the cosmetic because Montiel teaches inclusion of antioxidants and 0.01-3 wt% green polyphenols are antioxidants which sooth the skin and are used in cosmetics that treat irritated skin as suggested by the combined teachings of Holtkoetter and Dermatology.
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
With regard to the recited amounts of silanol and polyphenols, the composition suggested by the combined teachings of Montiel, Miyeon House, Kim, Nangai Oil, Holtkoetter, Good Scents Company, and Dermatology contain these reagents in amounts which overlaps or fall within the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 55 is rejected under 35 U.S.C. 103 as being unpatentable over Montiel, Miyeon House, Kim and Nangai Oil, as applied to claims 30, 32, 45, 46, 50-54, 57 & 58 above, and further in view of Citric Acid (Published: 11/14/2016; previously cited).
*All references refer to the English language translation.
Claim Interpretation: As above with regard to claims 30 & 58.
The teachings of Montiel, Miyeon House, Kim and Nangai Oil, are addressed above. The composition suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil, is a facial cosmetic which comprises the alpha-hydroxy acid, citric acid (pg. 30-Table 12).
Neither Montiel, Miyeon House, Kim nor Nangai Oil teach the composition is free of alpha-hydroxy acids.
In the same field of invention of cosmetics and personal care products, Citric Acid teaches citric acid can cause contact dermatitis in people with sensitive skin (pg. 1). Citric Acid further teaches “as a rule, it is best not to use citric acid on the face because it can cause photosensitivity and irritations” (pg. 4).
Here at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified the facial cosmetic suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil because the composition is supposed to be anti-inflammatory but includes citric acid which is known to cause irritations, contact dermatitis, and photosensitivity as taught by Citric Acid. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to make the facial cosmetic suggested by the combined teachings of Montiel, Miyeon House, Kim and Nangai Oil more soothing by removing citric acid which is an alpha-hydroxy acid linked to skin irritations and contact dermatitis.
Response to Arguments
Applicant argues Manihot esculenta tuber extract, porphyridium polysaccharide, cocos nucifera fruit extract, and nangai oil were not identified in the cited prior art of Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom] and Miyeon House as applied to claims 1-3, 21, 23-24, 26-28, 34 and 40 above, and further in view of Givaudan (Published 2017; reply pg. 10 & 11). In the rejection of claim 32 under 35 U.S.C. §103 unpatentable over Choulot [as evidenced by Skinasensyl, Monica Wilde and Butchers Broom], Miyeon House, Givaudan and Skinasensyl as applied to claims 1-3, 21, 23-24, 26-28, 30-31, 34 and 40 above, and further in view of Active Peptide, Applicant reiterates claim 30 is distinguished from the prior art (reply, pg. 11 & 12).
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims allowed.
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.
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619