DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
AIA Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
In the previous Action mailed on 6/18/2025, claims 1-10 and 22-23 were MAINTAINED rejected under 35 U.S.C. 103(a) as being unpatentable over Chevreau (US 2015/0306022; of record) in view of About Face Skincare (https://about-face-skincare.com/blogs/news/meet-the-vitamin-c-that-boosts-niacinamide, June 16, 2017; of record), Woodruff (Male Grooming, available online at http://creative-developments.co.uk/wp-content/uploads/2013/10/Male-Grooming-2016.pdf, 2016; of record) and Chaudhuri (US 2018/0116927; of record).
Applicant’s arguments, filed 12/18/2025, have been fully considered. In particular, Applicant argues via a Declaration Under 37 C.F.R. 1.132 by Stephen Y. Liu (the Liu Declaration), that “[t]he About Face Skincare reference... relied upon in the September 28, 2024, Office Action for teaching ‘the topical use of THDA helps to alleviate UV/environmental damage, brightens the skin, promotes a more even skin tone, and may even boost collagen’, was not accessible via the URL provided in the Office Action, i.e., https://about-face-skincare.com/blogs/news/meet-the-vitamin-c-that-boosts-niacinamide. Instead, the About Face Skincare reference was only available via the Wayback Machine®” (Liu Declaration, Paragraph 5).
To be clear, the About Face Skincare reference (having a self-contained publication date of June 16, 2017) relied upon in the September 28, 2024, Office Action was, in fact, available online via the URL provided in the Office Action as of September 26, 2024, and a copy of that article was provided to Applicant with the Action. However, as Applicant correctly notes, the About Face Skincare reference is no longer available at the ULR and is now only accessible via the Wayback Machine Internet Archive.
Nevertheless, Applicant further argues that “[t]he earliest archived date for the About Face Skincare reference on the Wayback Machine® is May 18, 2022” (Liu Declaration, Paragraph 6). And, pointing to MPEP 2128(II)E) which states that “[p]ublications obtained via the Wayback Machine® are prima facie deemed to be publicly accessible at the date and time provided in the time stamp” (Liu Declaration, Paragraph 7), Applicant argues that “the Wayback Machine® can be used to establish that the About Face Skincare reference was accessible at least as early as the time stamp of May 18, 2022, but no earlier” (Liu Declaration, Paragraph 8). As further indicated by Applicant, the instant invention’s “filing date is January 28, 2019, a few years before the timestamp of the About Face Skincare reference on the Wayback Machine®” (Liu Declaration, Paragraph 8).
Regarding the “self-contained date of June 16, 2017” on the About Face Skincare reference, Applicant argues that “the reference does not describe whether the date is a self-contained publication date or a date on which the reference was first authored” (Liu Declaration, Paragraph 9). As argued by Applicant, “[t]he only comments on the About Face Skincare reference were from May 3, 2023, almost six years after the self-contained date and about four years after Applicant’s filing date, further calling into question whether the About Face Skincare reference was actually available on June 16, 2017” (Liu Declaration, Paragraph 10). As such, Applicant argues that “the About Face Skincare reference should be withdrawn” (Liu Declaration, Paragraph 11).
Applicant’s arguments are not found persuasive. As acknowledged by Applicant, “[t]he About Face Skincare reference includes a self-contained date of June 16, 2017” (Liu Declaration, Paragraph 9). While the earliest Wayback Machine® accessibility date of the URL of the article entitled “The Vitamin C that Boosts Niacinamide” (i.e., the About Face Skincare prior art reference originally available online at https://about-face-skincare.com/blogs/news/meet-the-vitamin-c-that-boosts-niacinamide) is May 18, 2022 – and, as such, is prima facie evidence that the publication was publicly accessible as of that date and time (see MPEP 2128(II)(E)) – the earliest Wayback Machine® accessibility date is not evidence that the website was not publicly accessible earlier. Indeed, in the instant case, the URL of the About-Face Skincare homepage (i.e., https://about-face-skincare.com) has a Wayback Machine® accessibility date as of July 9, 2017. Notably, on July 9, 2017, the homepage contained a “News” link – later replaced with a “Blog” link as of at least October 9, 2017 based on the Wayback Machine® – both of which direct to the URL https://about-face-skincare.com/blogs/news which is the location of the prior art reference entitled “The Vitamin C that Boosts Niacinamide”. Additionally, while the earliest Wayback Machine® accessibility date of the URL https://about-face-skincare.com/blogs/news is January 19, 2019, the page on that date lists articles in descending chronological order of publication date, ranging from January 13, 2019 to November 23, 2018 with further links to at least 8 additional pages of earlier published articles. Considering that the Wayback Machine® timestamp of this page is January 19, 2019 and the page contains an article dated January 13, 2019, only six days prior, it is evident that the self-contained date of each article corresponds to the date of publication, not the date of authorship.
Lastly, regarding Applicant’s argument that “[t]he only comments on the About Face Skincare reference were from May 3, 2023... further calling into question whether the About Face Skincare reference was actually available on June 16, 2017”, it must be noted that a single comment was posted by a reader on May 3, 2023 along with the author’s response on that same date, and these are the only comments that were ever posted to this article. It is not found persuasive that the single post by a reader on May 3, 2023 calls into question whether the About Face Skincare reference was actually available on June 16, 2017. Indeed, Applicant’s argument would require that the prior art reference article entitled “The Vitamin C that Boosts Niacinamide” was authored on June 16, 2017, withheld from publication for several years (despite no comparable practice of withholding publication based on the other accessible articles on the site), later published with a backdated June 16, 2017 publication date, and then commented on by a reader on May 3, 2023, approximately one year after its actual publication date. A far more plausible explanation is that the article was, in fact, published on June 16, 2017 as indicated and consistent with the other accessible articles on the site, and, several years later, a single reader commented on the article.
In view of all of the foregoing, Applicant’s arguments are not found persuasive. Applicant’s ontological musings as to the publication date of the About Face Skincare reference do not overcome the presumption that the reference was, in fact, publicly available as of the self-contained publication date printed thereon of June 16, 2017.
Accordingly, the rejection of claims is MAINTAINED.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) 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.
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 1-10 and 22-23 are MAINTAINED rejected under 35 U.S.C. 103(a) as being unpatentable over Chevreau (US 2015/0306022; of record) in view of About Face Skincare (https://about-face-skincare.com/blogs/news/meet-the-vitamin-c-that-boosts-niacinamide, June 16, 2017; of record), Woodruff (Male Grooming, available online at http://creative-developments.co.uk/wp-content/uploads/2013/10/Male-Grooming-2016.pdf, 2016; of record) and Chaudhuri (US 2018/0116927; of record).
As amended, claim 1 is drawn to a topical skin care formulation comprising, commingled in a base (wherein the base is an oil-in-water base or water-in-oil base (claim 2)), the formulation comprising:
(a) tetrahexyldecyl (THD) Ascorbate;
(b) a deglycosylated isothiocyanate (more specifically, sourced from extracts of crucifers that include deglycosilated isothiocyanates (claim 22));
(c) a phenylpropanoid (more specifically, sourced from an extract of Plantago lanceolata leaf (claim 23)); and
(d) acetyl zingerone;
wherein the THD ascorbate is in “an effective amount sufficient to cause at least a 10% further reduction in melanin in skin tissue after 14 days, relative to a test solution only including THD ascorbate in the base in an amount equal to the effective amount”; and
wherein (as recited by claims 5-7) “the effective amount of THD ascorbate comprises between 15 wt. % [and] 60 wt. % of the formulation (claim 5) and, even more specifically, between 15 wt. % and 30 wt. % (claim 6) or between 30 wt. % and 60 wt. % (claim 7).
Chevreau teaches “[a] composition for the topical application on a mammalian skin [which] comprises one or more Brassica plant extracts” (Abstract). In particular, Chevreau teaches an “Anti-aging Cream” comprising “Brassica oleracea capitatata (cabbage) leaf extract… Plantago lanceolata leaf extract” (Paragraph 0111; see also Paragraph 0113, Example 2), further disclosing that “Brassica refers to a genus of plants in the mustard family, informally known as cruciferous vegetables, cabbages or mustard plants” (Paragraph 0039) which “contain isothiocyanates (ITCs)” (Paragraph 0040). And, as further taught by Chevreau, “[t]he anti-aging cream may further comprise one or a combination of additional ingredients, including… tetrahexyldecyl ascorbate” (Paragraph 0112).
As such, Chevreau specifically discloses a cream (i.e., an oil-in-water/water-in-oil composition) comprising isothiocyanate and phenylpropanoid and which may optionally include THD ascorbate, but which differs from the instantly claimed formulation as follows:
(1) Chevreau does not specify that THD Ascorbate is included in the formulation nor does Chevreau define the amount to include;
(2) Chevreau does not specify that the isothiocyanate is deglycosylated; and
(3) Chevreau does not teach the further inclusion of acetyl zingerone.
Yet, as to (1): as taught by About Face Skincare, “the topical use of THDA helps to alleviate UV/environmental damage, brightens the skin, promotes a more even skin tone, and may even boost collagen” (2nd Paragraph).
Accordingly, in further view of About Face Skincare, it would have been prima facie obvious to select THD ascorbate from among the optional ingredients taught by Chevreau for inclusion in the anti-aging cream. It would have been obvious to do so help alleviate UV/environmental damage, brighten the skin, promote a more even skin tone, and potentially boost collagen.
Furthermore, in doing so, it would have been obvious to determine the optimal amount of THD ascorbate to include in the anti-aging cream. As stated by MPEP 2144.05, “[g]enerally, 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” (see also In re Aller (220 F.2d 454 (CCPA): “where 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…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of THD Ascorbate to include in the formulation in order to best achieve the desired results – namely, in an effort to best alleviate UV/environmental damage, brighten the skin, promote a more even skin tone, and potentially boost collagen.
And finally, is it asserted that the concentration of THD Ascorbate determined through routine optimization would entail an amount sufficient to cause at least a 10% further reduction in melanin in skin tissue after 14 days, relative to a test solution only including THD ascorbate in the base in an amount equal to the effective amount.
As to (2): At the outset, considering that “Brassica refers to a genus of plants in the mustard family, informally known as cruciferous vegetables, cabbages or mustard plants” (Paragraph 0039) and, as instantly claimed, “the deglycosilated isothiocyanates are sourced from extracts of crucifers that include deglycosilated isothiocyanates” (claim 22), it is asserted that the Brassica oleracea capitatata (cabbage) leaf extract contained in the anti-aging formulation of Chevreau would comprise deglycosylated isothiocyanates.
Nevertheless, as further taught by Chevreau, “[o]ne of the major causes of skin aging is oxidative stress” (Paragraph 0002).
And, as taught by Woodruff, “Hydrolyzed Eruca sativa leaf… obtained by enzymatic hydrolysis of rocket salad… soothes and calms irritated skin and is able to effectively promote the synthesis of glutathione in skin to help cells strengthen their natural defenses against radical related stress by increasing their endogenous antioxidant capacity” (Page 2).
As such, even assuming arguendo that the composition of Chevreau does not already comprise deglycosylated isothiocyanates from the Brassica oleracea capitatata (cabbage) leaf extract, it would have been prima facie obvious to further include deglycosylated isothiocyanates from Hydrolyzed Eruca sativa leaf extract in the anti-aging composition of Chevreau based on Woodruff in order to “effectively promote the synthesis of glutathione in skin to help cells strengthen their natural defenses against radical related stress by increasing their endogenous antioxidant capacity” with a reasonable expectation of success.
And as to (3): Chaudhuri teaches a “cosmetic or skin care composition… for inhibiting, preventing or reversing skin damage due to UV radiation exposure and/or chronological aging” comprising “an effective amount of an aryl alkanone” (Claim 15) wherein “the aryl alkanone is acetyl zingerone” (Claim 20).
As such, it would have been prima facie obvious to further include acetyl zingerone in the anti-aging composition of Chevreau based on Chaudhuri in order to treat “skin damage due to UV radiation exposure and/or chronological aging” with a reasonable expectation of success.
For all the foregoing reasons, instant claims 1-2, 5-7 and 22-23 are rejected as prima facie obvious.
Instant claims 3-4 are drawn to the formulation of claim 1 wherein the base is an oil-in-silicone/silicone-in-oil (claim 3) or a gel (claim 4).
As acknowledged in Applicant’s response filed 4/16/2020, “the nature of the base… is not in itself inventive” (Applicant Arguments, Page 8).
As such, instant claims 3-4 are rejected as a prima facie obvious replacement of the oil-in-water/water-in-oil formulation of Chevreau.
Instant claims 8-10 are drawn to the formulation of claim 1 wherein the amounts of acetyl zingerone (claim 8), phenylpropanoid (claim 9) and deglycosylated isothiocyanate (claim 10) are defined.
It would have been prima facie obvious to determine the optimal amount of each of acetyl zingerone, phenylpropanoid and deglycosylated isothiocyanate to include in the prima facie obvious formulation for the same reasons as discussed above regarding the amount of THD ascorbate.
As such, instant claims 8-10 are also rejected as prima facie obvious.
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 C.F.R. 1.114 and could have been finally rejected on the grounds and art of record in the next Office Action if they had been entered in application prior to entry under 37 C.F.R. 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a Request for Continued Examination and the submission under 37 C.F.R. 1.114. See MPEP 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. 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 extension fee pursuant to 37 C.F.R. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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