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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 08/28/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claims 1, 4, 7, 11-16 and 18 are pending and under examination.
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 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.
Claims 1, 4, 7, 11-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Baldo et al. (WO2010078985) in view of Pan et al. (US20170281503).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Baldo et al. teaches cosmetic method for controlling browning of the skin induced by UV radiation, in particular browning of dark skin, consisting in applying, to the surface of the skin, at least one composition comprising, in a cosmetically acceptable carrier: a) at least one depigmenting agent and b) at least one system for screening out both UV A radiation and UVB radiation; c) and optionally at least one keratolytic agent (abstract). The amount of depigmenting agent in the compositions of the invention preferably ranges from 0.0001% to 20% by weight (page 4, line 35-40). According to one particularly preferred embodiment of the invention, a hydroxylated diphenylmethane derivative will be chosen as depigmenting agent. 4-(l-phenylethyl)-1,3-benzenediol or 4-(1- phenylethyl)-1,3-dihydroxybenzene or otherwise known as phenylethyl resorcinol is mentioned (page 5, line 5-20; page 6, 1-20). Benzophenone-3 is included as UVA and UVB screen agent (page 12, line 1-10) from 1-10% (page 18, 10-20). The composition also comprises a desquamating agent such as capryloyl salicylic acid (page 19, line 1-10) from 0.01-2% (page 19, 15-25). The composition also comprises active agent antioxidant such as bioflavonoid (page 57, line 20-25) and agent for stimulating the synthesis of dermal macromolecules such as isoflavones (page 60, line 25-30) from 0.01 to 10% (page 85, line 5-15). Active agent caffeine (page 71, line 20) as stimming agent; nicotinate and derivatives (page 72, line 25-30) for promoting the cutaneous capillary circulation; both from 0.01 to 10% (page 85, line 5-15). The composition also includes various additive such as gelling agent and nonionic surfactant, each from 0.01 to 20% (page 42, line 1-10), and nonionic emulsifier such as oxyalkylenated fatty acid esters of sorbitan from 0.5-20% (page 41, line 1-25).
Pan et al. teaches a composition for providing broad spectrum photo protection to skin comprising topically applying to the skin of a subject a cosmetic composition comprising: (a) one or more antioxidants selected from the group consisting of baicalin, Venuceane™, ferulic acid, polydatin, silymarin, punica granatum extract, mango leaf extract, soliprin, catechin, hesperetin, astilbin, and DHC V; (b) optionally, one or more solubilizers; and (c) a cosmetically acceptable carrier; wherein the combination of (a), optional (b), and (c) alone, provides at least broad spectrum protection from both infrared (IR) radiation and visible light (claim 20).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Baldo et al. is that Baldo et al. do not expressly baicalin, the deficiency of Baldo et al. is cured by Pan et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Baldo et al. as suggested by Pan et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to use baicalin as antioxidant in the composition of Baldo et al. because baicalin is a suitable antioxidant in topical composition for skin. MPEP 2144.07. Under guidance from Baldo et al. teaching antioxidant, Pan et al. teaching antioxidant such as baicalin, it is obvious for one of ordinary skill in the art to use baicalin as antioxidant in the composition of Baldo et al. and produce instant claimed invention with reasonable expectation of success.
Regarding claims 1, 4,7, 14, 16 and 18, prior art teaches a skin composition comprising antioxidant such as baicalin from 0.01 to 10%; phenylethyl resorcinol 0.001% to 20%; capryloyl salicylic acid 0.01-2% and caffeine (ingredient iv) at 1-10%. According to applicant’s specification (page 6), Phenylethyl Resorcinol meets the formula (I) in claims 1 and 4; caffeine reads on xanthine base according to applicant’s specification (page 10).
Regarding claims 11-12, Baldo et al. teaches a skin composition further comprising gelling agent 0.01 to 20%.
Regarding claim 13, Baldo et al. teaches a skin composition further comprising oxyalkylenated fatty acid esters of sorbitan.
Regarding claim 15, Baldo et al. teaches a process for controlling browning of the skin, that reads on brightening or whitening the skin. In arguendo that controlling browning of the skin does not read on brightening or whitening the skin, the brightening or whitening the skin is the results of prior art process because the same skin composition is applied at the same amount by the same manner to the skin.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument:
Applicants argue there is no teaching of amended claims. All arguments are incorporated herein by reference.
In response to this argument: this is not persuasive. This argument is moot since the modified 103 rejection teaches each limitation of applicant’s claimed invention including baicalin. It is well settled, however, that the teachings of a reference are not limited to the working examples. See in re Miiis and Pairner, 470 F.2d 649 (CCPA 1972) ("[A] reference is not limited to the disclosure of specific working examples."), In re Chapman and Cosby, 357 F.2d 418, (CCPA 1966) ("A reference can be used for all it realistically teaches, and is not limited to the disclosures in its specific illustrative examples."), and In re Widmer, Batzer and Nikles, 353 F2d 752 (CCPA 1965) ("Examples in a reference are merely that, exemplary of the broader disclosure, all of which is available for what it clearly teaches."), Thus, the 103 rejection is still proper.
Applicants argued about unexpected results from product E compared with producer D in the specification.
In response to this argument: this is not persuasive. Applicant’s data are not sufficient to overcome the 103 rejection at least for the following reasons. Firstly, applicants failed to make proper comparison because product E comprise flavone and caffeine, product D does not comprise flavone and caffeine, it is unclear whether the effects result from flavone or caffeine (skin active); Secondly, applicants failed to compare with closest prior art composition because Baldo et al. teaches antioxidant, when product D does not include flavone, product D should include an antioxidant to be compared with product E comprising caffeine. Thirdly, applicant’s data is not commensurate in scope with the claims because claim 1 is so broad without reciting any range of ingredients while product E includes only one percentage for each ingredient. Thus, no unexpected result has been demonstrated, and the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613