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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/2025 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
Applicant’s arguments, filed 11/25/2025, have been fully considered.
In particular, Applicant traverses the rejection of claims under 35 U.S.C. 103(a) based primarily on Dose of Colors Hydra-Dose Daily Facial Moisturizer (Database GNPD Record ID 8260605, 11/2020; of record). As argued by Applicant and supported by a declaration under 37 C.F.R. 1.132 of Nicholas D. Stebbins, Ph.D. (Declaration of Dr. Stebbins), analysis of the Dose of Colors Hydra-Dose Daily Facial Moisturizer reveals that the amount of L-ascorbic acid contained therein is “well under 0.01%” (Declaration of Dr. Stebbins, Paragraph 5; Applicant Arguments, Page 7).
In view of the foregoing, and further considering that Dose of Colors Hydra-Dose Daily Facial Moisturizer comprises vitamin C derivatives including ethyl ascorbic acid listed ahead of ascorbic acid, it is found persuasive that it would not have been obvious to formulate the Dose of Colors Hydra-Dose Daily Facial Moisturizer composition wherein the amount of ascorbic acid is from about 2 to about 20 wt.%, as instantly claimed, with a reasonable expectation of success.
As such, the rejections of claims under 35 U.S.C. 103(a) based primarily on Dose of Colors Hydra-Dose Daily Facial Moisturizer (Database GNPD Record ID 8260605, 11/2020; of record) are WITHDRAWN.
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.
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, 4, 7 and 17 are rejected under 35 U.S.C. 103(a) as being unpatentable over La Roche-Posay Redermic C Vitamin C Eye Cream (available online at https://incidecoder.com/products/la-roche-posay-redermic-c-vitamin-c-eye-cream, 11/19/2019 – also known as Pure Vitamin C Anti-Aging Eye Cream (available online at https://www.laroche-posay.ca/en_CA/redermic-c-eyes/3337872413735.html since at least 2013)) in view of Johnson Jr. et al (In J Toxicol 37(Suppl 3):80S-89S, 2018; of record) and Delaune et al (US 2021/0161793).
As amended, claim 1 is drawn to a cosmetic composition in the form of an oil-in-water emulsion comprising:
(a) pure L-ascorbic acid in an amount of from about 2 to about 20 wt.% based on the total weight of the composition;
(b) di-t-butyl pentaerythrityl tetrahydroxycinnamate in an amount of from about 0.05 to about 0.5 wt.% based on the total weight of the composition;
(c) hydroxyacetophenone; and
(d) a chelating agent;
wherein the cosmetic composition is free of sodium phytate.
La Roche-Posay Redermic C Vitamin C Eye Cream, which is understood to entail an oil-in-water emulsion, comprises:
(a) 5% pure L-ascorbic acid;
(b) pentaerythrityl tetra-di-t-butyl hydroxyhydrocinnamate (i.e., di-t-butyl pentaerythrityl tetrahydroxycinnamate);
(c) caprylyl glycol;
(d) the chelating agent disodium EDTA,
wherein the cosmetic composition is free of sodium phytate.
As such, La Roche-Posay Redermic C Vitamin C Eye Cream differs from the instantly claimed composition in the following ways:
(a) La Roche-Posay Redermic C Vitamin C Eye Cream does not define the amount of di-t-butyl pentaerythrityl tetrahydroxycinnamate as between about 0.05 and about 0.5 wt.%; and
(b) La Roche-Posay Redermic C Vitamin C Eye Cream comprises caprylyl glycol but does not comprise hydroxyacetophenone.
Yet, as to (a): 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))). As indicated by the court in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282, 1293 (Fed. Cir. 2015), every ordinary artisan in medicine performs “merely routine optimization of drug dosage to maximize therapeutic effect.”
In the instant case, the concentration of di-t-butyl pentaerythrityl tetrahydroxycinnamate in a cosmetic formulation is clearly a result-effective variable as taught by Johnson Jr et al, disclosing that di-t-butyl pentaerythrityl tetrahydroxycinnamate “functions as an antioxidant in cosmetic products and is used at concentrations up to 0.8%” (Abstract) which is a concentration at which “incidental inhalation would not be a significant route of exposure that might lead to local respiratory or systemic effects” (Page 88S). Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of di-t-butyl pentaerythrityl tetrahydroxycinnamate to include in the formulation in order to best and safely achieve the desired results.
And, as to (b): as indicated above, La Roche-Posay Redermic C Vitamin C Eye Cream comprises caprylyl glycol which, as further disclosed by La Roche-Posay Redermic C Vitamin C Eye Cream, “gives the skin a nice, soft feel. At the same time, it also boosts the effectiveness of other preservatives” (Page 14).
As taught by Delaune et al – similarly teaching topical cosmetic compositions (Abstract) including oil-in-water emulsions in the form of a cream (Paragraph 0090)– “[t]he cosmetic compositions according to the present invention advantageously comprises preservatives or preservative booster[s]. Preferably, the... preservative booster is selected from... hydoxyacetophenone...[or] caprylyl glycol” (Paragraph 0100).
As such, it would have been obvious to include hydoxyacetophenone as the preservative booster in place of caprylyl glycol in La Roche-Posay Redermic C Vitamin C Eye Cream, with a reasonable expectation of success). As stated by the Court in KSR International Co., v. Teleflex Inc., 127 US 1727 (2007), “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious” (quoting Sakraida v. AG Pro, Inc., 425 US 273 (1976); see also: Merck v. Biocraft (874 F.2d 804, 807 (Fed. Cir. 1989), indicating that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands; Sundance, Inc. v. DeMonte Fabricated, Ltd., 550 F.3d 1356 (Fed. Cir. 2008): a claimed invention is obvious is it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they had been combined; Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945): indicating that “[r]eading a list and selecting a known component to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle”; Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012): finding a “strong case of obviousness based on the prior art references of record [wherein the claim] recites a combination of elements that were all known in the prior art, and all that was required to obtain that combination was to substitute one well-known…agent for another”). And, as noted by the court in In re Fout, 675 F.2d 297 (CCPA 1982), an express suggestion to substitute one equivalent component for another is not necessary to render such substitution obvious.
Based on all of the foregoing, claim 1 is rejected as prima facie obvious.
Claims 4 and 7 are drawn to the cosmetic composition of claim 1, wherein:
the hydroxyacetophenone is present from about 0.1 to about 3 wt.% based on the total weight of the composition (claim 4);
the chelating agent (e.g., disodium EDTA) is present from about 0.05 to about 0.5 wt.% based on the total weight of the composition (claim 7).
At the outset, as taught by Delaune et al, “[w]hen present, the... preservative booster is preferably used... most preferably in an amount of 0.1 to 1.0 wt.%” (Paragraph 0100). Regardless, for largely the same reasons as discussed above, it would have been prima facie obvious to determine the optimal amounts of each of hydroxyacetophenone and chelating agent to include in La Roche-Posay Redermic C Vitamin C Eye Cream in order to best and safely achieve the desired results.
As such, claims 4 and 7 are also rejected as prima facie obvious.
Claim 17 is drawn to a method for treating skin comprising applying a cosmetic composition of claim 1 to the skin.
La Roche-Posay Redermic C Vitamin C Eye Cream teaches the composition as “a daily moisturizer for the eye contour that visibly plumps skin and visibly reduces the appearance of crow’s feet wrinkles. With pure vitamin C and fragmented hyaluronic acid, the eye cream improves skin’s firm feel” (Page 1).
As such, claim 17 is rejected as prima facie obvious.
Claims 5-6 and 16 are rejected under 35 U.S.C. 103(a) as being unpatentable over La Roche-Posay Redermic C Vitamin C Eye Cream (available online at https://incidecoder.com/products/la-roche-posay-redermic-c-vitamin-c-eye-cream, 11/19/2019 – also known as Pure Vitamin C Anti-Aging Eye Cream (available online at https://www.laroche-posay.ca/en_CA/redermic-c-eyes/3337872413735.html since at least 2013)) in view of Johnson Jr. et al (In J Toxicol 37(Suppl 3):80S-89S, 2018; of record) and Delaune et al (US 2021/0161793) as applied to claims 1, 4, 7 and 17 above, in further view of de Oliveira et al (US 2019/0192402).
Claims 5-6 are drawn to the cosmetic composition of claim 1, wherein the chelating agent is trisodium ethylenediamine discuccinate.
As discussed above, La Roche-Posay Redermic C Vitamin C Eye Cream in view of Johnson Jr. et al and Delaune et al teach a cosmetic composition of claim 1, wherein the chelating agent is disodium EDTA as opposed to disodium EDTA.
de Oliveira et al disclose “compositions for topical application to hair” including creams (Paragraph 0012), which may include “a chelating agent/sequestrate (e.g., disodium EDTA, disodium EDTA)” (Paragraph 0032).
Accordingly, in further view of De Oliveira et al, it would have been prima facie obvious to replace the chelator disodium EDTA in La Roche-Posay Redermic C Vitamin C Eye Cream with the chelator trisodium ethylenediamine disuccinate. The simple substitution of one known chelating agent useful in topical compositions for cosmetic use for another known chelating agent useful in topical compositions for cosmetic use is prima facie obvious.
As such, claims 5-6 are also rejected as prima facie obvious.
Claim 16 (drafted in independent form) is drawn to a cosmetic composition comprising all of the limitations of claims 1, 4-5 and 7.
As such, claim 16 is rejected as prima facie obvious for the same reasons as applied to claims 1, 4-5 and 7.
Claims 8-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over La Roche-Posay Redermic C Vitamin C Eye Cream (available online at https://incidecoder.com/products/la-roche-posay-redermic-c-vitamin-c-eye-cream, 11/19/2019 – also known as Pure Vitamin C Anti-Aging Eye Cream (available online at https://www.laroche-posay.ca/en_CA/redermic-c-eyes/3337872413735.html since at least 2013)) in view of Johnson Jr. et al (In J Toxicol 37(Suppl 3):80S-89S, 2018; of record) and Delaune et al (US 2021/0161793) as applied to claims 1, 4, 7 and 17 above, in further view of INCI Decoder (Isononyl Isononanoate, available online at https://incidecoder.com/ingredients/isononyl-isononanoate as of at least 9/01/2017; of record).
Claims 8-12 are drawn to the composition of claim 1, further comprising one or more fatty compounds (most specifically, isononyl isononanoate, as elected by Applicant).
As discussed above, La Roche-Posay Redermic C Vitamin C Eye Cream in view of Johnson Jr. et al and Delaune et al teach the composition of claim 1.
However, the prior art do not teach the inclusion of isononyl isononanoate.
Yet, as taught by INCI Decoder, isononyl isononanoate is a known “emollient ester with a rich and creamy but non-greasy skin feel. It makes skin supple and protects dry skin”.
As such, it would have been obvious to modify the prior art “daily moisturizer for the eye contour” so as to further include isononyl isononanoate. It would have been obvious to do so in order to impart a rich and creamy but non-greasy skin feel and to make skin supple and protect dry skin with a reasonable expectation of success.
As such, claims 8-12 are rejected as prima facie obvious.
Claim 13 is drawn to the composition of claim 8, wherein the fatty compound(s) is/are present in an amount from about 0.5 to about 20.0 wt.% based on the total weight of the composition.
For largely the same reasons as discussed above regarding claims 1, 4 and 7, it would have similarly been obvious to determine the optimal amount of fatty compound to include in the composition.
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))).
As such, claim 13 is also rejected as prima facie obvious.
Conclusion
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/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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