DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 21 March 2025 has been entered.
Priority
The instant application was filed on 29 October 2021. Applicants’ claim domestic benefit to provisional application no. 63/108, 119 on 30 October 2020. The effective filing date of the application is 30 October 2020.
Examiner’s Note
Applicant's arguments and/or amendments filed 21 March 2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 21 March 2025, it is noted that claims 1 and 11 have been amended, claims 7, 17, 21, and 22 have been canceled, and no new claims have been added. Support for the new claims and/or amendments can be found from the canceled claims. No new matter has been added.
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, 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.
Claims 1-5, 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fares (WO 2010/105052 A1) and shop.skinchakra.eu.
Fares teaches a topical moisturizing (entire teaching, para. 2) composition that may comprise a thickener such as attapulgite and hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer (para. 118). The composition has stabilizing properties (para. 32), which addresses the limitation of stabilizing a skin care composition in claim 1. The product may be in the form of a suspension (para. 119) with a liquid aqueous carrier (para. 67), where if the composition comprises a mineral, such as attapulgite, it is interpreted as becoming a mineral particulate suspension, addressing claims 2, 11, 13 and claim 1 partially. Other possible thickeners include magnesium aluminum silicate, sodium polystyrene sulfonate, sodium sulfate, various carrageenans, and xanthan gum (para. 118), addressing claims 3 and 5. Other optional ingredients include titanium dioxide (para. 70), polyols such as glycols (para. 68), EDTA (para. 142), vitamin E (para. 115), addressing claim 15. The composition may moisturize (para. 35), retain moisture (para. 71), and smooth the skin around the eyes (para. 71) and face (para. 124), addressing claim 11. The composition does not require hectorite or a UV absorption or reflecting agent, addressing claim 1. Fares provides an example where the composition is stable after multiple freeze/thaw cycles (para. 137), addressing claim 1. The amounts of additives, such as thickeners, may be 0-20% (para. 68), addressing the amounts in claims 2, 4, 12, and 14. Highlighting agents, colorants, preservatives (para. 68), emulsifiers (claim 17) may be included.
Fares does not teach Senegal gum-encapsulated xanthan gum or specific amounts of the thickeners in claims 1, 2, 4, 11, and 14.
Shop.skinchakra.eu teaches that Solagum AX is a blend of acacia gum and xanthan gum that is used in cosmetics for modifying texture and viscosity as an emulsion stabilizer and thickening agent (entire teaching, pg. 2). Solagum AX is an example of acacia gum-encapsulated xanthan gum, as evidenced by the Applicants’ specification (pg. 46).
In regards to selecting a combination of attapulgite, taurate copolymer, magnesium aluminum silicate, sodium sulfate, propylene glycol, xanthan gum, sodium polystyrene sulfonate, and titanium dioxide, “[w]hen 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.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various
combination of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Fares teaches a skin composition that may comprise attapulgite, taurate copolymer, magnesium aluminum silicate, sodium sulfate, propylene glycol, xanthan gum, sodium polystyrene sulfonate, and titanium dioxide, as well as a method of stabilizing the composition and moisturizing the skin. The claimed invention is directed towards a method of stabilizing a skincare composition comprising attapulgite clay, taurate copolymer, and acacia Senegal gum-encapsulated xanthan gum. Since Fares teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Since Fares does not teach acacia Senegal gum-encapsulated xanthan gum in claims 1, 2, and 11, one of ordinary skill in the art would have been motivated to use the Solagum AX teaching from shop.skinchakra.eu to address these deficiencies. Shop.skinchakra.eu teaches that Solagum AX is a common thickening agent and modifies the texture of cosmetics and provides the benefits of both xanthan gum and acacia gum in terms of texture and skin feel, and Fares teaches xanthan gum in their thickened skincare product and a method for stabilizing a skincare composition and moisturizing the skin. Therefore, one of ordinary skill in the art would have been motivated to use the teachings to improve the method of stabilizing a skin care composition in Fares with a reasonable expectation of success.
In regards to the amounts of components in claims 2, 4, and 14, Fares teaches 0.1-10% of PVP and thickeners such as magnesium aluminum silicate, sodium polystyrene sulfonate, sodium sulfate, various carrageenans, and xanthan gum (para. 56, 118), as well as 0-20% of additives (para. 68). That being said and in lieu of objective evidence of unexpected results, the % can be viewed as a variable that achieves the recognized result of successfully making the skincare composition. The optimum or workable range of amounts can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicants provide no evidence of any secondary consideration such as unexpected results that would render the optimized amounts of thickener as nonobvious.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, thus addressing the amounts of components in instant claim(s) 2, 4, and 14. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I).
Claims 1-6, 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fares (WO 2010/105052 A1), shop.skinchakra.eu, Mohammadi et al. (US 20060239950 A1), Zhou (CN 104546650 A), cosmetics.specialchem.com (mica), cosmetics.info.org, paulaschoice.com, cosmetics.specialchem.com (sorbitan isostearate), as evidenced by Aerts et al. (Ethylhexylglycerin: a low-risk, but highly relevant, sensitizer in “hypo-allergenic” cosmetics, Contact Dermatitis, 2016) and foodadditives.net.
In regards to claim(s) 1-5 and 11-15, Fares and shop.skinchakra.eu, as applied supra, is herein applied in its entirety for its teachings of a skin composition comprising attapulgite, taurate copolymer, magnesium aluminum silicate, sodium sulfate, propylene glycol, xanthan gum, sodium polystyrene sulfonate, and titanium dioxide.
Fares does not teach mica, iron oxide, ethylhexylglycerin, phenoxyethanol, isohexadecane, polysorbate 60, and sorbitan isostearate.
Mohammadi et al. teach ethylhexylglycerin in an anti-aging composition (entire teaching, abs) in an amount of around 0.5% (para. 31). Ethylhexylglycerin may be used in cosmetics as a surfactant or emollient, with skin-conditioning and antimicrobial properties (pg. 1), as evidenced by Aerts et al.
Zhou teaches an anti-aging (entire teaching, abs) facial treatment composition that comprises polysorbate-60 (para. 7), which is primarily used as a solubilizer and surfactant in cosmetics, as evidenced by foodadditives.net (pg. 1).
Cosmetics.specialchem.com (mica) teaches that mica is a mineral commonly added to cosmetics and skincare for a highlighting effect (entire teaching, pg. 1).
Cosmeticsinfo.org teaches that iron oxides are commonly used cosmetic ingredients to impart color (entire teaching, pg. 1).
Paulaschoice.com teaches that isohexadecane is a common ingredient used in cosmetics and skincare as an emulsifier, cleansing agent, solvent, texture enhancer, and skin-conditioning agent (entire teaching, pg. 1).
Cosmetics.specialchem.com (sorbitan isostearate) teaches that sorbitan isostearate is a common and effective moisturizing, conditioning, and emulsifying agent commonly used in cosmetics and skincare (entire teaching, pg. 1).
In regards to claims 6 and 16, Cosmetics.specialchem.com (mica) teaches that mica is a common highlighting ingredient used in cosmetics and skincare, cosmetics.info.org teaches that iron oxides are a common colorant ingredient in cosmetics, Paulaschoice.com teaches isohexadecane as a common emulsifier in cosmetics, and Cosmetics.specialchem.com (sorbitan isostearate) teaches that sorbitan isostearate is a common emulsifying ingredient used in cosmetics. One of ordinary skill in the art would have been motivated to combine these teachings with Fares because Fares teaches colorants, emulsifiers, and highlighting agents as optional ingredients in an amount of 0-20% (para. 68) in their skincare and cosmetic composition and method for stabilizing skincare compositions and moisturizing the skin. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, thus addressing the amounts of components in instant claim(s) 6 and 16. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I).
Response to Arguments
Applicant's arguments filed 21 March 2025 have been fully considered but they are not persuasive.
The Applicant argues that the designation of the Office Action as final is improper (Remarks, pgs. 6-7).
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Applicant’s argument is not found persuasive. All of the previous grounds of rejection besides the amended claims 21 and 22 were maintained. Since the Applicant amended the two dependent claims to overcome the previously cited prior art and rejections, new grounds of rejection were necessitated (MPEP 706.07). No additional art was cited beyond that which was required to reject the newly amended dependent claims (MPEP 2173.06). As the Examiner maintained all of the original rejections other than those overcome by the amended claims and only cited to additional prior art to the extent necessary to reject the amended claims, the finality is considered to be proper.
The Applicant argues that the claims are patentable over Roudot, Shop, Kropke, Li, Mohammadi, Munskin, Zhou, Amended Safety Assessment, Cosmetics Info, Aert, Food Additives, and Seren (Remarks, pgs. 7-8).
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Applicant’s argument is not found persuasive. Roudot, Kropke, Li, Munskin, Amended Safety Assessment, and Seren have been removed as prior art and the arguments against them will not be addressed. Claims 1 and 11 are addressed by Fares. Fares teaches a topical moisturizing (entire teaching, para. 2) composition that may comprise a thickener such as attapulgite and hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer (para. 118). The composition has stabilizing properties (para. 32), which addresses the limitation of stabilizing a skin care composition in claim 1. The product may be in the form of a suspension (para. 119) with a liquid aqueous carrier (para. 67), where if the composition comprises a mineral, such as attapulgite, it is interpreted as becoming a mineral particulate suspension, addressing partially claim 1 and claims 2, 11, 13. Other possible thickeners include magnesium aluminum silicate, sodium polystyrene sulfonate, sodium sulfate, various carrageenans, and xanthan gum (para. 118), addressing claims 3 and 5. Other optional ingredients include titanium dioxide (para. 70), polyols such as glycols (para. 68), EDTA (para. 142), vitamin E (para. 115), addressing claim 15. The composition may moisturize (para. 35), retain moisture (para. 71), and smooth the skin around the eyes (para. 71) and face (para. 124), addressing claim 11. The composition does not require hectorite or a UV absorption or reflecting agent, addressing claim 1.
The Applicant argues that the claims are patentable over Fares and Shop (Remarks, pgs. 8-9).
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Applicant’s argument is not found persuasive. As previously discussed, Fares addresses the limitations of claims 1 and 11. Further, Fares provides an example where the composition is stable after multiple freeze/thaw cycles (para. 137), addressing the limitation in claim 1.
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613