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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/5/2025 has been entered.
Status of the Claims
Claims 1, 4, 5, 11, 16, and 17 are pending and under current examination.
Claim Objections
Claims 1, 11, and 16 are objected to because of the following informalities:
Claims 1, 11, and 16 recite the limitation “a molecular weight of 0.5 to 300 Kda”. This is a clear typographical error and should be amended to read “a molecular weight of 0.5 to 300 kDa”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 11 and 17 recite the limitation “a hardness of 5 dyne/cm2 or more”. This renders the claims indefinite because it is not clear what the upper limit of the hardness of the emulsion may be. Therefore, it is impossible to discern the metes and bounds of the claims.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Satoru (JP2840954B2, publication date: 12/24/1998, citations refer to machine translation).
Regarding claims 1 and 4, Satoru discloses a cosmetic product that is prepared just before use and uses sponge-like collagen. In an exemplary embodiment, a solution of 0.1% atelocollagen SS solution, L-arginine, and other ingredients are freeze-dried and used as a first agent (pg. 2, Example 2).
Regarding claim 16, Satoru discloses a cosmetic product that is prepared just before use and uses sponge-like collagen. In an exemplary embodiment, a solution of 0.1% atelocollagen SS solution, L-arginine, and other ingredients are freeze-dried and used as a first agent (pg. 2, Example 2). Satoru also teaches that the invention increases the solubility of a collagen sponges (pg. 2, second paragraph).
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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, 5, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over France-Aimee (FR3017049A1, publication date: 8/7/2015, of record) in view of Kennedy (Organic Materials Review Institute, available 12/2017), as evidenced by Cosmetic Ingredient Review (International Journal of Toxicology, pg. 91-120; publication year: 2006, of record).
Applicant’s Invention
Applicant’s claim 1 is drawn to a solid-phase cosmetic composition comprising a freeze-dried ingredient, wherein the freeze-dried ingredient comprises a water-dispersible polymer and a basic amino acid, provided that when the water-dispersible polymer is hyaluronic acid or hydrolyzed hyaluronic acid, it has a molecular weight of 0.5 to 300 kDa.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
The Examiner notes that the page and paragraph number of France-Aimee cited in this office action refer to the machine translation of the description of the original publication.
Regarding claim 1, France-Aimee teaches a composition comprising a natural polysaccharide of an extract of mucilaginous or animal plant origin which is densified by at least one additional polysaccharide. The composition may include one or more cosmetic active agents, including amino acids such as cysteine, arginine, hydrolyzed rice proteins or glycine (pg. 1, paragraph 4-pg. 2, first paragraph and pg. 4, first paragraph). The polysaccharide extracts of plant origin may originate from marine plants such as algae (pg. 2, fourth paragraph). Cosmetic Ingredient review teaches that hydrolyzed rice proteins contain glutamic acid, arginine, aspartic acid, lysine, and histidine (pg. 96, Table 11). The composition may be dehydrated by freeze-drying (pg. 5, third paragraph).
Regarding claim 3, France-Aimee teaches that the natural polysaccharide may be chosen from starch, amylose, amylopectin, guar gum, agar-agar, carrageenan, or xanthan gum (pg. 3, first and second paragraph).
Regarding claims 4 and 5, France-Aimee teaches that the composition may include a cosmetic active agent (pg. 1, paragraph 4-pg. 2, first paragraph), including amino acids such as cysteine, arginine, hydrolyzed rice proteins or glycine (pg. 4, first paragraph). The active agent is preferably hydrophilic (pg. 5, third paragraph). Cosmetic Ingredient review teaches that hydrolyzed rice proteins contain glutamic acid, arginine, aspartic acid, lysine, and histidine (pg. 96, Table 11).
Regarding claim 16, France-Aimee teaches that the composition may be manufactured by first suspending and mixing the additional polysaccharide in an aqueous solution of the natural polysaccharide with stirring, gelling the mixture, and dehydrating the mixture. The incorporation of the cosmetic active ingredients may be added with the additional polysaccharide or after the gelling step and before dehydration (pg. 4, fourth paragraph).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 1, France-Aimee does not teach the inclusion of a water-dispersible polymer embraced by the instant claims. However, this deficiency is cured by Kennedy.
Kennedy teaches that alginates are polysaccharides derived from marine algae and brown seaweeds and are extracted for use in cosmetic applications (pg. 1, first paragraph).
Regarding claim 16, France-Aimee is silent with regard to the improved re-dissolvability of a water-dispersible polymer.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claim 1, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional algae extracts, such as alginates, used in cosmetics. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Regarding claim 16, although the reference is silent about improving the re-dissolvability of a water-dispersible polymer, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that re-dissolvability of the water-dispersible polymer is achieved by the method in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method.
Thus, France-Aimee teaches, either expressly or inherently implied, each and every limitation of the instant claim 16.
Claims 11 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over France-Aimee (FR3017049A1, publication date: 8/7/2015, of record) in view of Kennedy (Organic Materials Review Institute, available 12/2017), as applied to claims 1, 4, 5, and 16 above, and further in view of Brummer et. al. (Colloids and Surfaces, pages 89-94; publication year: 1999, of record) and SensorsONE (dyn/cm2-Dyne per Square Centimeter Pressure Unit, available 5/26/2014, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 11, the relevant limitations have been rendered obvious in the obviousness rejection of claim 1 above except for a secondary composition and the hardness of the secondary composition.
Regarding claims 11 and 17, France-Aimee teaches the relevant limitations of claims 1 and 16 above. France-Aimee also teaches that the dehydrated composition may be rehydrated and mixed where appropriate with a fatty phase in order to obtain a cream, a gel or a spray depending on the amount of water and/or fatty phase added, depending on the aspect, the texture and the desired product (pg. 5, eighth paragraph).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 11 and 17, France-Aimee does not does not teach that the hardness of the second composition emulsion should be 5 dyne/cm2 or more. However, this deficiency is cured by Brummer and SensorsONE.
Brummer teaches that sheer stress is a measure of viscosity (pg. 91, Figure 1) and that cosmetic creams have a viscosity maximum in the order of magnitude of 1000 Pa (pg. 89, Abstract). SensorsONE teaches that dyne/cm2 is mainly used for pressures associated with the measurement of shear stress (pg. 1, second paragraph) and that there is 0.1 Pa in 1 dyne/cm2, so 1000 Pa is equivalent to 10,000 dyne/cm2 (pg. 1, first paragraph).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 11 and 17, it would merely be a matter of routine for one having ordinary skill in the art to optimize the hardness of the emulsion that comprises the second composition of the age-retarding cream embraced by Abbiati. One of ordinary skill would have been motivated to adjust the hardness of the emulsion in order to optimize the feel of the cream on the skin of the user. The artisan of ordinary skill would have had reasonable expectation of success because Brummer teaches the dynamic viscosity of creams is correlated to the primary skin feeling when applying an emulsion and that cosmetic creams have a viscosity maximum in the order of magnitude of 1000 Pa, or 10,000 dyne/cm2. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 12/5/2025 have been fully considered but they are not persuasive.
On page 4, Applicant argues that neither the France-Aimee or Cosmetic Ingredient Review teaches the water-dispersible polymer as claimed. This is not found persuasive. As described in the obviousness rejection of claim 1 above, France-Aimee teaches that the polysaccharide extracts of plant origin may originate from marine plants such as algae (pg. 2, fourth paragraph). One would have understood in view of Kennedy that that alginates are polysaccharides derived from marine algae and brown seaweeds and are extracted for use in cosmetic applications (pg. 1, first paragraph). The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional algae extracts, such as alginates, used in cosmetics. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Conclusion
No claims allowed.
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/ELIZABETH ANNE MEYERS/Examiner, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614