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 .
Status of the Claims
Claims 2 and 7-9 have been cancelled in a previous communication.
Claims 1, 3-6 and 10-23 are currently under examination.
All rejections not reiterated have been withdrawn.
Terminal Disclaimer
A terminal disclaimer is on file for copending application no. 17/603,327.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 10, and 22-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US11260021 in view of Ma (CN104224644A, Published 12/24/2014) and Ferrari et al. (WO2017193186A1, Published 11/16/2017; cited in the IDS filed 10/12/2021).
The claims of the ‘021 patent embrace a cosmetic complex for bioactive hydration comprising at least one vegetable oil, and trehalose; wherein the vegetable oil comprises Fevillea oil. The ‘021 patent also embraces the complex comprising 0.005 to about 2% Fevillea oil and about 0.05 to about 4% of trehalose. Lastly, the complex further comprises glycerin.
The ‘021 patent does not teach betaine, sodium hyaluronate, and cosmetically acceptable excipients. However, Ma teaches a skin care preparation which comprises the components which are dissolved in water to form an aqueous solution of betaine, sodium hyaluronate, and trehalose (abstract). Ma also teaches the concentration by weight percentage of sodium hyaluronate as 0.005-0.03%. Ma further teaches the concentration by weight percentage of betaine as 0.1-3% (paragraph 3). Ma further teaches the present invention has beneficial effects as efficient moisturizing for the skin (i.e., body or face) (paragraph 8) and spraying the skin care formulation onto the skin (i.e. applying, paragraph 9). Ferrari teaches a skin-repairing cosmetic compositions comprising at least one oil selected from Fevillea trilobata and cosmetically acceptable excipients (page 1, paragraph [1]). It would be obvious to add betaine, sodium hyaluronate, and cosmetically acceptable excipients to the ‘021 cosmetic complex because Ma teaches that these components of the skin care preparation have the beneficial effect of efficient replenishing of water and preserving moisture to the skin (paragraph 8). It would be obvious to use cosmetically acceptable excipients because they are known in cosmetic compositions. Regarding the concentration of the cosmetically acceptable excipients that it would be obvious to optimize the amount that is used in the composition because it is obvious to find the effective amount of the active agents and to vary concentration amounts depending on the desired result. 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. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
With regards to the concentration of sodium hyaluronate, Ma teaches concentration by weight percentage of sodium hyaluronate as 0.005-0.03%. The instantly claimed lower limit for the concentration of sodium hyaluronate is 0.05%. Therefore, the concentration taught by Ma would have been obvious to one of ordinary skill in the art because 0.03% taught by Ma is merely close to the claimed concentration of 0.05%. See MPEP 2144.05 (I).
With regards to claim 10 recites an active method of applying the cosmetic composition. The composition of the ‘021 patent, Ma and Ferrari would be suitable for applying because Ferrari teaches applying the composition to the skin, body, or face an effective amount (claim 6) and the instant specification teaches that trehalose maintains and balances skin microorganisms and helps to strengthen the skin barrier (page 8, lines 10-11) and betaine improves the skin barrier (page 8, line 14) making it an inherent property of the composition.
Claims 3-6 and 11-12, 14-17 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US11260021 in view of Ma (CN104224644A, Published 12/24/2014) and Ferrari et al. (WO2017193186A1, Published 11/16/2017; cited in the IDS filed 10/12/2021) as applied to claims 1, 10, and 22-23 in further view of Buckley et al. (US20120189684, Published 09/04/2012).
The relevant limitations of ‘021 patent are set forth above.
The claims do not recite emollients, skin conditioners, skin protectors, viscosity controllers, denaturants, humectants, opacifiers, emulsifiers, preservatives, antioxidants, emulsion stabilizers, plasticizers, chelators, anti-foaming agents, perfumes and buffering agents as cosmetically acceptable excipients. The ‘021 patent also do not teach wherein the topical cosmetic composition is an emulsion, gel, aqua gels, and serums. However, Buckley et al teaches a skincare composition suitable for topical application (page 13, claim 1). Buckley teaches excipients selected from the group emulsifiers, emollients, humectants, preservatives, chelating agents, etc. (page 14, claim 31; instant claim 3). Buckley continues to propylene glycol (i.e., propanediol) (page 3, paragraph [0059]; instant claim 4). Buckley also teaches about gels, wherein aqueous gels are preferred (e.g., aqua gels)(page 2, paragraph [0050]), emulsions ( page 2, paragraph [0046]), serums (page 4, paragraph [0074]; instant claims 5-6). Buckley also teaches dimethicone as an emollient (page 3, paragraph [0058]), dimethicone as a skin conditioner (page 10, paragraph [0086]; instant claim 11) and dimethicone (page 2, paragraph [0047]; instant claim 19). Buckley continues to teach acryloyldimethyltaurate copolymer (page 2, paragraph [0050]; instant claim 12), phenoxyethanol (page 7, paragraph [0081]; instant claim 14), tocopherol (page 10, paragraph [0085]; instant claim 15), Carbopol (i.e., carbomer, CAS registry no. 9007-20-9) (page 2, paragraph [0051]; instant claim 16), sorbitol ( page 4, paragraph [0059]; instant claims 12 and 17), sodium hydroxide as a buffering agent (page 10, paragraph [0085]; instant claim 20); and perfumes (page 3, paragraph [0067]; instant claim 21).
With regards to instant claims 5 and 6, it would have been prima facie obvious to one of ordinary skill in the art to formulate an aqua gel as Ma’s composition which comprises betaine, sodium hyaluronate, and trehalose. Ma teaches that the skin care preparation comprises the components which are dissolved in water to form an aqueous solution (abstract). One having ordinary skill in the art would have understood in view of Buckley that the cosmetic composition can be in the form of an aqueous gel. It would be obvious to formulate Ma’s composition as an aqueous gel because Ma teaches that the composition forms an aqueous solution (abstract) and Buckley teaches that adding a gelling agent gives sufficient viscosity to the composition (page 2, paragraph [0050]). The rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). See MPEP 2143(A).
Regarding claims 11-12, 14-17 and 19-21, it would have prima face obvious to use any of these excipients taught by Buckley in Ma and Ferrari’s composition because they are well known excipients for cosmetics. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). See MPEP 2143(A).
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US11260021 in view of Ma (CN104224644A, Published 12/24/2014) and Ferrari et al. (WO2017193186A1, Published 11/16/2017; cited in the IDS filed 10/12/2021) in further view of Buckley et al. (US20120189684, Published 09/04/2012) as applied to claims 3-6 and 11-12, 14-17 and 19-21 in further view of Mabille (US 20140308227, Published 10/16/2014).
The relevant limitations of ‘021 patent are set forth above.
The claims do not teach opacifiers and emulsifiers. However, Buckley teaches a skincare composition suitable for topical application ( page 13, claim 1). Buckley teaches excipients selected from the group emulsifiers, emollients, humectants, preservatives, chelating agents, etc. (page 14, claim 31). Buckley further teaches opacifying agent titanium dioxide (page 3, paragraph [0064]. Buckley also teaches emulsifiers for example polyglyceryl-2-sesquioleate (page 2, paragraph [0048]). Mabille teaches that opacifying agents are agents deliberately added to cosmetic products to reduce their clear or transparence (paragraph [0144]). Mabille further teaches that examples of opacifiers are polymethylsilsesquioxane and titanium dioxide (paragraph [0145]). One having ordinary skill in the art would have understood that in view of Buckley that an opacifier can be used in the composition wherein the opacifier can be titanium dioxide. One would have understood in view of Mabille that examples of opacifiers are polymethylsilsesquioxane and titanium dioxide. It would be obvious to one of ordinary skill in the art to use Mabille’s opacifier with Ma and Ferrari’s skin care cosmetic composition because polymethylsilsesquioxane and titanium dioxide described in Mabille can both be used as a opacifier (paragraph [0145]). Therefore, one of ordinary skill would have recognized using polymethylsilsesquioxane for the same purpose of a opacifier. See MPEP 2144.06.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US11260021 in view of Ma (CN104224644A, Published 12/24/2014) and Ferrari et al. (WO2017193186A1, Published 11/16/2017; cited in the IDS filed 10/12/2021) in further view of Buckley et al. (US20120189684, Published 09/04/2012) as applied to claims 3-6 and 11-12, 14-17 and 19-21 in further view of Yu et al. (US 20090068255, Published 03/12/2009).
The relevant limitations of ‘021 patent are set forth above.
The claims do not teach chelators. However, Buckley teaches a skincare composition suitable for topical application ( page 13, claim 1). Buckley teaches excipients selected from the group emulsifiers, emollients, humectants, preservatives, chelating agents, etc. (page 14, claim 31). Buckley further teaches preferred that the composition should comprise a chelating or sequestering agent, wherein examples of chelating agents include ethylenediamine tetraacetic acid (EDTA) and its salts, notable the dipotassium (page 3, paragraph [0054]).
Yu teaches a system for treating or caring for skin (paragraph [0011]). Yu further teaches the inventive skin care system is particularly useful in caring for human skin, in particular, facial skin (paragraph [0011]). Lastly Yu teaches the inventive cosmetic skin care composition may include chelating agents, wherein exemplary useful chelating agents are dipotassium EDTA and sodium gluconate (paragraph [0116]). One having ordinary skill in the art would have understood that in view of Buckley that a chelating agent can be used in the composition wherein the chelating agent can be dipotassium EDTA. One would have understood in view of Yu that exemplary useful chelating agents are dipotassium EDTA and sodium gluconate. It would be obvious to one of ordinary skill in the art to use Yu’s chelating agent with Ma and Ferrari’s skin care cosmetic composition because dipotassium EDTA and sodium gluconate described in Yu can both be used as a chelating agent (paragraph [0116]). Therefore, one of ordinary skill would have recognized using sodium gluconate for the same purpose of a chelating agent. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 10/16/2025 with respect to the non-statutory double patenting rejection have been fully considered but they are not persuasive.
On pages 6-7 of Applicants remarks, Applicants argue that the neither the previous office action nor Ma asserted that the concentration of sodium hyaluronate was a result-effective variable. Applicants also argue that Titanium Metals is not germane to the modification necessary to make the instant rejection based on Ma, as the two specific prior art alloys “bracketed” the claimed concentrations effectively forming a range around the claimed concentrations. Applicants further argue that one of ordinary skill in the art, looking at the teachings of Ma would not have immediately found it obvious to increase the concentration of one active ingredient, at the expense of at least one other component as Ma teaches a composition comprising at least 11 different active ingredients.
This argument is not persuasive. The examiner points out that the addition of the sodium hyaluronate in and of itself is a result effective variable as Ma teaches the present invention has beneficial effects as efficient moisturizing for the skin (i.e., body or face) (paragraph 8) and it is well known in the cosmetic art that sodium hyaluronate has hydrating/moisturizing properties when applied topically to the skin. The examiner also points to Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), wherein “As admitted by appellee's affidavit evidence from James A. Hall, the Russian article discloses two alloys having compositions very close to that of claim 3, which is 0.3% Mo and 0.8% Ni, balance titanium. The two alloys in the prior art have 0.25% Mo--0.75% Ni and 0.31% Mo--0.94% Ni, respectively. The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Appellee produced no evidence to rebut that prima facie case. The specific alloy of claim 3 must therefore be considered to have been obvious from known alloys.” The examiner points out that the Court was clear that what was considered was how close the amounts were between the prior art and the claimed invention. Applicants argument with regards to bracketing the claimed concentration is a consideration that was not considered by the Court as the Court made no assertation that the concentrations are bracketed making a concentration range, but rather the Court merely looked to two different compositions in the prior art and saw that both concentrations in the two compositions were merely close to the claimed concentration. In the instant case the concentration amount of 0.05% of sodium hyaluronate is obvious because the concentration of 0.03% of sodium hyaluronate taught by Ma and 0.05% of Applicants claims are merely close to each other, therefore, it would have been obvious to one of ordinary skill in the art to use the concentration of 0.05% of sodium hyaluronate because Ma teaches that the concentration of sodium hyaluronate can be 0.03%. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Lastly, the examiner points out that the examiner is not arguing that one would adjust the concentration of the active ingredients, one of ordinary skill just as easily adjust the amounts of the inactive ingredients such as the concentration of water in the formulation to make up for the additional sodium hyaluronate.
On pages 7-8 of Applicants remarks, Applicants argue that Ferrari, Buckley, Mabille and Yu do not cure the deficiencies argued above.
This argument is not persuasive due to the same reasons set forth above.
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 1, 10, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ma (CN104224644A, Published 12/24/2014) in view Ferrari et al. (WO2017193186A1, Published 11/16/2017; cited in the IDS filed 10/12/2021).
Applicant’s invention
The applicant’s claims are drawn to a topical cosmetic composition comprising: Fevillea trilobata seed crude oil; trehalose, sodium hyaluronate; betaine; and cosmetically acceptable excipients. The claims are also drawn to the use of the topical cosmetic wherein the cosmetic composition is to hydrate the body or face skin and to preserve the skin’s natural microbiota. Lastly the claims are drawn to a method to hydrate and preserve the skin natural microbiota characterized in that it comprises the topical application of the cosmetic composition.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Ma teaches a skin care preparation which comprises the components which are dissolved in water to form an aqueous solution of betaine, sodium hyaluronate, and trehalose (abstract). Ma also teaches the concentration by weight percentage of trehalose as 1-3%. Ma teaches the concentration by weight percentage of sodium hyaluronate as 0.005-0.03%. Ma further teaches the concentration by weight percentage of betaine as 0.1-3% (paragraph 3).
Regarding claims 10 and 22-23, Ma teaches spraying the skin care formulation onto the skin (i.e. applying, paragraph 9).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Ma does not teach Fevillea trilobata seed and cosmetically acceptable excipients. However, these deficiencies are cured by Ferrari et al.
Ferrari et al. teaches a skin-repairing cosmetic compositions comprising at least one oil selected from Fevillea trilobata and cosmetically acceptable excipients (page 1, paragraph [1]). Ferrari continues to teach the composition provides treatment of dry skin (paragraph [16]), which are suitable for both facial and body use (paragraph [17]). Regarding claim 10, Ferrari teaches applying the skin repairing cosmetic composition to the skin, body, or face an effective amount (claim 6).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to use Fevillea trilobata oil in Ma’s composition which comprises betaine, sodium hyaluronate, and trehalose. One having ordinary skill in the art would have understood in view of Ferrari that a composition comprising Fevillea trilobata oil is good for the treatment of skin regeneration and healing as well as treatment of dry skin. The skilled artisan would have been motivated to add Fevillea trilobata oil from Ferrari’s composition to Ma’s composition to take advantage of the benefit of the biological activity related to skin regeneration/repair (paragraph [0040]). As noted above, the ranges of sodium hyaluronate, betaine, and trehalose are taught by Ma and overlap or fall within the ranges recited in the instant claims. 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). See MPEP 2144.05 (I). The Examiner points out that the instantly claimed concentration amount of 0.05% of sodium hyaluronate is obvious because the concentration of 0.03% of sodium hyaluronate taught by Ma and 0.05% of Applicants claims are merely close to each other, therefore, it would have been obvious to one of ordinary skill in the art to use the concentration of 0.05% of sodium hyaluronate because Ma teaches that the concentration of sodium hyaluronate can be 0.03%. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05(I). Regarding the concentrations of the Fevillea trilobata seed crude oil and cosmetically acceptable excipients that it would be obvious to optimize the amount that is used in the composition because it is obvious to find the effective amount of the active agents and to vary concentration amounts depending on the desired result. 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. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
With regards to claims 10, and 22-23 recites an active method of applying the cosmetic composition. The composition of Ma and Ferrari would be suitable for applying because Ferrari teaches applying the composition to the skin, body, or face an effective amount (claim 6) and the instant specification teaches that trehalose maintains and balances skin microorganisms and helps to strengthen the skin barrier (page 8, lines 10-11) and Betaine improves the skin barrier (page 8, line 14) making it an inherent property of the composition.
Claims 3-6 and 11-12, 14-17 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Ma (CN104224644A, Published 12/24/2014) in view Ferrari et al. (WO2017193186A1, Published 11/16/2017; cited in the IDS filed 10/12/2021) as applied to claims 1-2 above in further view of Buckley et al. (US20120189684, Published 09/04/2012).
Applicant’s invention
Applicant’s claims 3-4, 11-12, 14-17 and 19-21 further add the limitations wherein the cosmetically acceptable excipients comprises at least one of the following classes: solvents, viscosity controllers, anti-foaming agents, emollients, skin conditioners, skin protectors, denaturants, perfumes, moisturizers, opacifiers, emulsifiers, preservatives, antioxidants, vegetable oils, emulsion stabilizers, plasticizers, chelators, buffers and colorants. Applicant’s claims 5-6 further adds the limitations wherein the topical cosmetic composition is an emulsion, cream, creamy emulsion, gels, cream gels, aqua gels, and serums.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Ma and Ferrari are set forth above. Ma and Ferrari render obvious all the limitations of instant claim 1. Regarding claim 3 Ferrari teaches cosmetically acceptable excipients (page 1, paragraph [1]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Ma and Ferrari do not teach emollients, skin conditioners, skin protectors, viscosity controllers, denaturants, humectants, opacifiers, emulsifiers, preservatives, antioxidants, emulsion stabilizers, plasticizers, chelators, anti-foaming agents, perfumes and buffering agents as cosmetically acceptable excipients. Ma and Ferrari also do not teach wherein the topical cosmetic composition is an emulsion, gel, aqua gels, and serums. However these deficiencies are cured by Buckley et al.
Buckley teaches a skincare composition suitable for topical application (page 13, claim 1). Buckley teaches excipients selected from the group emulsifiers, emollients, humectants, preservatives, chelating agents, etc. (page 14, claim 31; instant claim 3). Buckley continues to propylene glycol (i.e., propanediol) (page 3, paragraph [0059]; instant claim 4). Buckley also teaches about gels, wherein aqueous gels are preferred (e.g., aqua gels)(page 2, paragraph [0050]), emulsions ( page 2, paragraph [0046]), serums (page 4, paragraph [0074]; instant claims 5-6). Buckley also teaches dimethicone as an emollient (page 3, paragraph [0058]), dimethicone as a skin conditioner (page 10, paragraph [0086]; instant claim 11) and dimethicone (page 2, paragraph [0047]; instant claim 19). Buckley continues to teach glycerin (page 3, paragraph [0059]; instant claim 12), ammonium acryloyldimethyltaurate copolymer (page 2, paragraph [0050]; instant claim 12), phenoxyethanol (page 7, paragraph [0081]; instant claim 14), tocopherol (page 10, paragraph [0085]; instant claim 15), Carbopol (i.e., carbomer, CAS registry no. 9007-20-9) (page 2, paragraph [0051]; instant claim 16), sorbitol ( page 4, paragraph [0059]; instant claims 12 and 17), sodium hydroxide as a buffering agent (page 10, paragraph [0085]; instant claim 20); and perfumes (page 3, paragraph [0067]; instant claim 21).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
With regards to claims 5 and 6, it would have been prima facie obvious to one of ordinary skill in the art to formulate an aqua gel as Ma’s composition which comprises betaine, sodium hyaluronate, and trehalose. Ma teaches that the skin care preparation comprises the components which are dissolved in water to form an aqueous solution (abstract). One having ordinary skill in the art would have understood in view of Buckley that the cosmetic composition can be in the form of an aqueous gel. It would be obvious to formulate Ma’s composition as an aqueous gel because Ma teaches that the composition forms an aqueous solution (abstract) and Buckley teaches that adding a gelling agent gives sufficient viscosity to the composition (page 2, paragraph [0050]). The rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). See MPEP 2143(A).
Regarding claims 11-12, 14-17 and 19-21, it would have prima face obvious to use any of these excipients taught by Buckley in Ma and Ferrari’s composition because they are well known excipients for cosmetics. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). See MPEP 2143(A).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ma (CN104224644A, Published 12/24/2014), Ferrari et al. (WO2017193186A1, Published 11/16/2017; cited in the IDS filed 10/12/2021) and Buckley et al. (US20120189684, Published 09/04/2012) as applied to claims 3-6 and 11-12, 14-17 and 19-21 above in further view of Mabille (US 20140308227, Published 10/16/2014).
Applicant’s invention
Ma and Ferrari render obvious all the limitations of instant claim 1. Applicant’s claim 13 further adds the limitation wherein the opacifier comprising polymethylsilsesquioxane; the emulsifier can be trilaureth-4 phosphate, polyglyceryl-2 sesquiisostearate or combination thereof. The phrase “can be” in the claim makes these emulsifier substances optional.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Ma and Ferrari are set forth above. Regarding claims 13 Ferrari teaches cosmetically acceptable excipients (page 1, paragraph [1]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Ma and Ferrari do not teach opacifiers and emulsifiers. However, these deficiencies are cured by Buckley et al. and Mabille.
Buckley teaches a skincare composition suitable for topical application ( page 13, claim 1). Buckley teaches excipients selected from the group emulsifiers, emollients, humectants, preservatives, chelating agents, etc. (page 14, claim 31). Buckley further teaches opacifying agent titanium dioxide (page 3, paragraph [0064]. Buckley also teaches emulsifiers for example polyglyceryl-2-sesquioleate (page 2, paragraph [0048]).
Mabille teaches that opacifying agents are agents deliberately added to cosmetic products to reduce their clear or transparence (paragraph [0144]). Mabille further teaches that examples of opacifiers are polymethylsilsesquioxane and titanium dioxide (paragraph [0145]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add the opacifier comprising polymethylsilsequioxane to Ma and Ferrari’s skin care cosmetic comprising Fevillea trilobata seed crude oil, trehalose, sodium hyaluronate, betaine, and cosmetically acceptable excipients. One having ordinary skill in the art would have understood that in view of Buckley that an opacifier can be used in the composition wherein the opacifier can be titanium dioxide. One would have understood in view of Mabille that examples of opacifiers are polymethylsilsesquioxane and titanium dioxide. It would be obvious to one of ordinary skill in the art to use Mabille’s opacifier with Ma and Ferrari’s skin care cosmetic composition because polymethylsilsesquioxane and titanium dioxide described in Mabille can both be used as a opacifier (paragraph [0145]). Therefore, one of ordinary skill would have recognized using polymethylsilsesquioxane for the same purpose of a opacifier. See MPEP 2144.06.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ma (CN104224644A, Published 12/24/2014), Ferrari et al. (WO2017193186A1, Published 11/16/2017; cited in the IDS filed 10/12/2021) and Buckley et al. (US20120189684, Published 09/04/2012) as applied to claims 3-6 and 11-12, 14-17 and 19-21 above in further view of Yu et al. (US 20090068255, Published 03/12/2009).
Applicant’s invention
Ma and Ferrari render obvious all the limitations of instant claim 1. Applicant’s claim 18 further adds the limitation wherein the chelator comprising sodium gluconate.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The relevant disclosure of Ma and Ferrari are set forth above. Regarding claims 18 Ferrari teaches cosmetically acceptable excipients (page 1, paragraph [1]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Ma and Ferrari do not teach chelators. However, this deficiency is cured by Buckley et al., and Yu et al.
Buckley teaches a skincare composition suitable for topical application ( page 13, claim 1). Buckley teaches excipients selected from the group emulsifiers, emollients, humectants, preservatives, chelating agents, etc. (page 14, claim 31). Buckley further teaches preferred that the composition should comprise a chelating or sequestering agent, wherein examples of chelating agents include ethylenediamine tetraacetic acid (EDTA) and its salts, notable the dipotassium (page 3, paragraph [0054]).
Yu teaches a system for treating or caring for skin (paragraph [0011]). Yu further teaches the inventive skin care system is particularly useful in caring for human skin, in particular, facial skin (paragraph [0011]). Lastly Yu teaches the inventive cosmetic skin care composition may include chelating agents, wherein exemplary useful chelating agents are dipotassium EDTA and sodium gluconate (paragraph [0116]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add the chelator comprising sodium gluconate to Ma and Ferrari’s skin care cosmetic comprising Fevillea trilobata seed crude oil, trehalose, sodium hyaluronate, betaine, and cosmetically acceptable excipients. One having ordinary skill in the art would have understood that in view of Buckley that a chelating agent can be used in the composition wherein the chelating agent can be dipotassium EDTA. One would have understood in view of Yu that exemplary useful chelating agents are dipotassium EDTA and sodium gluconate. It would be obvious to one of ordinary skill in the art to use Yu’s chelating agent with Ma and Ferrari’s skin care cosmetic composition because dipotassium EDTA and sodium gluconate described in Yu can both be used as a chelating agent (paragraph [0116]). Therefore, one of ordinary skill would have recognized using sodium gluconate for the same purpose of a chelating agent. See MPEP 2144.06.
Response to Arguments
Applicants arguments filed 10/16/2025 have been fully considered but they are not persuasive.
On pages 8-9 of Applicants remarks, Applicants argue that the office action refers to the Titanium Metals case and MPEP 2144.05(I) in a manner similar to the first obviousness-type double patenting rejection and Applicants respectfully points to the discussion above regarding Titanium Metals to explain why one of ordinary skill in the art would not be motivated to modify the sodium hyaluronate concentration taught in Ma to reach the presently recited concentration.
The Examiner reiterates that this argument is not persuasive. The examiner points out that the addition of the sodium hyaluronate in and of itself is a result effective variable as Ma teaches the present invention has beneficial effects as efficient moisturizing for the skin (i.e., body or face) (paragraph 8) and it is well known in the cosmetic art that sodium hyaluronate has hydrating/moisturizing properties when applied topically to the skin. The examiner also points to Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), wherein “As admitted by appellee's affidavit evidence from James A. Hall, the Russian article discloses two alloys having compositions very close to that of claim 3, which is 0.3% Mo and 0.8% Ni, balance titanium. The two alloys in the prior art have 0.25% Mo--0.75% Ni and 0.31% Mo--0.94% Ni, respectively. The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Appellee produced no evidence to rebut that prima facie case. The specific alloy of claim 3 must therefore be considered to have been obvious from known alloys.” The examiner points out that the Court was clear that what was considered was how close the amounts were between the prior art and the claimed invention. Applicants’ argument with regards to “bracketing” the claimed concentration is a consideration that was not considered by the Court as the Court made no assertation that the concentrations are bracketed making a concentration range, but rather the Court merely looked to two different compositions in the prior art and saw that both concentrations in the two compositions were merely close to the claimed concentration. In the instant case the concentration amount of 0.05% of sodium hyaluronate is obvious because the concentration of 0.03% of sodium hyaluronate taught by Ma and 0.05% of Applicants claims are merely close to each other, therefore, it would have been obvious to one of ordinary skill in the art to use the concentration of 0.05% of sodium hyaluronate because Ma teaches that the concentration of sodium hyaluronate can be 0.03%. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Lastly, the examiner points out that the examiner is not arguing that one would adjust the concentration of the active ingredients, one of ordinary skill just as easily adjust the amounts of the inactive ingredients such as the concentration of water in the formulation to make up for the additional sodium hyaluronate.
On pages 9-10 of Applicants remarks, Applicants argue that Ferrari, Buckley, Mabille and Yu do not cure the deficiencies argued above.
This argument is not persuasive due to the same reasons set forth above.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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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AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614