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 .
DETAILED ACTION
The Applicant’s reply filed on 8/4/25 is acknowledged. Claims 1-20 are pending. Claim 16 has been withdrawn. Claims 1, 15 and 19 have been amended. Claims 1-15 and 17-20 are under consideration.
Rejections Withdrawn
The rejection of Claim 19 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form is withdrawn in view of the amended claim.
The rejection of Claims 1-11, 13, 15, 18 and 19 under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 2020/0022899) in view of Kim et al. (US 2017/0312216 A1) is withdrawn in view of the amended claims.
The rejection of Claims 12 and 20 under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 2020/0022899) and Kim et al. (US 2017/0312216 A1), and further in view of Wu (US 2015/0238405) is withdrawn in view of the amended claims
The rejection of Claim 14 under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 2020/0022899) and Kim et al. (US 2017/0312216 A1), and further in view of Derrips et al. (US 2016/0317416) is withdrawn in view of the amended claims.
The rejection of Claim 17 under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 2020/0022899) and Kim et al. (US 2017/0312216 A1), and further in view of Brieva et al. (US 2013/0261093) is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
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 1-11, 13, 15, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 2020/0022899) in view of Kim et al. (US 2017/0312216 A1) and Cavezza et al. (Bioorganic & Medicinal Chemistry Letters; 2009).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Roux et al. exemplify a composition comprising:
(i) 1 wt% of behenyl alcohol;
(ii) 2 wt% of myristyl/cetyl/stearyl myristate/palmitate/stearate mixture;
(iii) 0.2 wt% of sodium stearoyl glutamate;
(iv) 3 wt% Emulium Mellifera ® (INCI name : Polyglyceryl - 6 Distearate ( and ) Jojoba Esters ( and ) Polyglyceryl - 3 Beeswax ( and ) Cetyl Alcohol);
(v) 0.15 wt% capryloyl salicylic acid (i.e. acidic cosmetic ingredient);
which is an oil-in-water emulsion for caring for skin (e.g. Example 1, paragraphs 0330-0337).
Roux et al. teach the inclusion of one or more cosmetic active agents, including antioxidants, anti-wrinkle agents, and agents for stimulating the synthesis of dermal or epidermal macromolecules and/or for preventing their degradation (e.g. paragraphs 0296-0298), but do not teach the inclusion of saccharomyces/xylinum/black tea ferment and hydroxypropyl tetrahydropyrantriol. This is made up for by the teachings of Kim et al. and Cavezza et al.
Kim et al. teach a cosmetic composition for improving anti-oxidation, anti-inflammation and atopic skin using fermented black tea liquid as an effective ingredient, wherein the cosmetic composition comprises the fermented black tea liquid obtained by primarily fermenting black tea with saccharomyces, secondarily fermenting the black tea with gluconacetobacter xylinum, and tertiarily fermenting the black tea with bacillus (i.e. saccharomyces/xylinum/black tea ferment) (e.g. Claim 1, paragraphs 0048 and 0084-0093). Kim et al. teach that there is a need to develop a natural extract having excellent effect on anti-oxidation, anti-inflammation and atopic skin in order to improve skin trouble due to free radical and inflammation and no aftereffect, cosmetics contain the extract and an optimal extracting method (e.g. paragraph 0018). Kim et al. teach that the black tea fermented extract may be in the range of 0.01 to 20.0% in a cosmetic composition, which overlaps the claimed range (e.g. paragraphs 0080 and 0081). 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) (MPEP 2144.05.I). Kim et al. teach that the cosmetic composition may be an emulsion (e.g. paragraph 0056).
Cavezza et al. teach Pro-xylane (i.e. hydroxypropyl tetrahydropyrantriol) was identified as the best activator of GAGs biosynthesis (e.g. abstract; Figure 1). Cavezza et al. teach human aged skin contains less GAGs than young skin, which contributes to the differences in their mechanical properties. These considerations raised the concept of a new class of potential skin anti-aging molecules that could help maintaining unaltered matrix structure through stimulating GAGs and PGs synthesis (e.g. page 845; column 1). Cavezza et al. further teach that Pro-xylane is the first example of a “Green” chemical in cosmetics. It is made from a renewable feedstock, is biodegradable, and has no bioaccumulation and no ecotoxicity (e.g. page 847; column 2).
Regarding Claims 1-11 and 13, it would have been obvious to one of ordinary skill in the art at the time of filing to include the saccharomyces/xylinum/black tea ferment of Kim et al. and the hydroxypropyl tetrahydropyrantriol of Cavezza et al. in the compositions of Roux et al. It would have been obvious to one of ordinary skill in the art 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. One of ordinary skill in the art would have predicted success because all of Kim et al., Cavezza, and Roux et al. are directed to cosmetic compositions comprising antioxidants, anti-wrinkle agents, and agents for stimulating the synthesis of dermal or epidermal macromolecules and/or for preventing their degradation, and one or ordinary skill in the art would have been motivated to seek out appropriate agents as Roux et al. suggest their inclusion but do not provide any examples or amounts thereof. One further would have been motivated to obtain the benefits of anti-oxidation, anti-inflammation, improvement of skin trouble due to free radical and inflammation with no aftereffect, as taught by Kim et al. and a ”green” active agent for GAG activation, as taught by Cavezza et al.
Regarding Claim 15, while Roux et al. exemplify 0.2 wt% of sodium stearoyl glutamate, they more broadly teach 0.01% to 5% (e.g. paragraph 0142), which overlaps with the claimed range.
Regarding Claim 18, Example 1 comprises 5 wt% dicapryl ether and 2 wt% coco-caprylate/caprate (i.e. the oils), and 35 wt% water with a total of A1 and A2 (aqueous phases) of 48.67 wt%.
Regarding Claim 19, while Roux et al. exemplify 2 wt% of myristyl/cetyl/stearyl myristate/palmitate/stearate mixture, they more broadly teach 0.5% to 25% by weight (e.g. paragraph 0286), which overlaps with the claimed range. While Roux et al. exemplify 0.2 wt% of sodium stearoyl glutamate, they more broadly teach 0.01% to 5% (e.g. paragraph 0142), which overlaps with the claimed range.
Claims 12 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 2020/0022899), Kim et al. (US 2017/0312216 A1) and Cavezza et al. (Bioorganic & Medicinal Chemistry Letters; 2009) as applied to claims 1-11, 13, 15, 18 and 19 above, and further in view of Wu (US 2015/0238405).
Regarding Claims 1-11, 13, 15, 18 and 19, the teachings of Roux et al., Kim et al. and Cavezza et al. are described supra. Roux et al. further teach the inclusion of cosmetic additives including desquamating agents (e.g. paragraph 0297).
They do not teach that the acidic ingredient (v) further comprises glycolic acid. This is made up for by the teachings of Wu.
Wu teaches cosmetic compositions for skin (e.g. abstract). Wu teaches that the composition includes desquamation agents including glycolic acid, present in a range of 0.1-15 wt% (e.g. paragraph 0094).
Regarding Claims 12 and 20, it would have been obvious to one of ordinary skill in the art at the time of filing to include the glycolic acid of Wu for use in the compositions of Roux et al., Kim et al. and Cavezza et al. It would have been obvious to one of ordinary skill in the art 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. One of ordinary skill in the art would have predicted success because all of Wu, Roux, Kim, and Cavezza are directed to cosmetic compositions for the skin, and one or ordinary skill in the art would have been motivated to seek out appropriate desquamating agents as Roux et al. suggest their inclusion but do not provide any examples or amounts thereof.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 2020/0022899), Kim et al. (US 2017/0312216 A1), and Cavezza et al. (Bioorganic & Medicinal Chemistry Letters; 2009) as applied to claims 1-11, 13, 15, 18 and 19 above, and further in view of Derrips et al. (US 2016/0317416).
Regarding Claims 1-11, 13, 15, 18 and 19, the teachings of Roux et al., Kim et al., and Cavezza et al. are described supra. Roux et al. further teach the inclusion of additional nonionic surfactants (e.g. paragraph 0116).
They do not teach the inclusion of an alkylpolyglycoside as in claim 14. This is made up for by the teachings of Derrips et al.
Derrips et al. teach a cosmetic composition in the form of a nanoemulsion or microemulsion, comprising: (a) at least one oil; (b) at least one nonionic surfactant with an HLB value from 8.0 to 14.0; (c) at least one C-glycoside compound; and (d) water for use on the skin (e.g. abstract, paragraphs 0018 and 0019). Derrips et al. teach that the surfactant is cetostearyl glucoside, Montanov 68 (e.g. paragraph 0085).
Regarding Claim 14, it would have been obvious to one of ordinary skill in the art at the time of filing to include the alkylpolyglycoside of Derrips et al. for use in the compositions of Roux et al., Kim et al., and Cavezza et al. It would have been obvious to one of ordinary skill in the art 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. One of ordinary skill in the art would have predicted success because both Brieva and Roux et al. are directed to cosmetic compositions comprising nonionic surfactants, and one or ordinary skill in the art would have been motivated to seek out appropriate additional nonionic surfactants agents as Roux et al. suggest their inclusion.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Roux et al. (US 2020/0022899), Kim et al. (US 2017/0312216 A1) and Cavezza et al. (Bioorganic & Medicinal Chemistry Letters; 2009) as applied to claims 1-11, 13, 15, 18 and 19 above, and further in view of Brieva et al. (US 2013/0261093).
Regarding Claims 1-11, 13, 15, 18 and 19, the teachings of Roux et al., Kim et al., and Cavezza et al. are described supra. Roux et al. further teach the inclusion of cosmetic additives including preserving agents (e.g. paragraph 0297).
They do not teach the inclusion of chlorphenesin. This is made up for by the teachings of Brieva et al.
Brieva et al. teach cosmetic compositions which are oil-in-water emulsions for skin (e.g. abstract). Brieva et al. teach that the composition includes preserving agents including chlorphenesin, present in a range of 0.1-0.7 wt% (e.g. paragraph 0094).
Regarding Claim 17, it would have been obvious to one of ordinary skill in the art at the time of filing to include the chlorphenesin of Brieva et al. for use in the compositions of Roux et al., Kim et al., and Cavezza et al. It would have been obvious to one of ordinary skill in the art 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. One of ordinary skill in the art would have predicted success because both Brieva and Roux et al. are directed to cosmetic compositions comprising preserving agents, and one or ordinary skill in the art would have been motivated to seek out appropriate preserving agents as Roux et al. suggest their inclusion but do not provide any examples or amounts thereof.
Response to Arguments
Applicant's arguments filed 8/4/25 have been fully considered but they are not persuasive. Arguments relevant to the current grounds of rejection will be addressed below.
Applicant argues that Roux describes capryloyl salicylic acid in Examples 1 and 2 and does not describe any other acid which may be used as a cosmetic ingredient. Applicant argues that Roux provides no basis for those of ordinary skill in the art on which kind of acid could be used to replace the capryloyl salicylic acid in Roux's compositions, nor any sense that the replacement would predictably maintain or improve the effects of Roux's compositions.
This is not found persuasive. Roux disclose the inclusion of active agents and further that “It is a matter of routine operation for those skilled in the art to adjust the nature and the amount of the additives present in the compositions in accordance with the invention such that the desired cosmetic properties, comfort on application and stability thereof are not thereby affected” (e.g. paragraph 0298). The Examiner notes that obviousness requires a reasonable expectation of success and not absolute predictability. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). Note MPEP 2143.02 II. No such evidence has been provided.
Regarding the results beginning on page 12, the comparative examples lack disodium stearoyl glutamate, however, a glutamate surfactant is present in the compositions of Roux et al.
Conclusion
No claim is 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619