DETAILED ACTION
Claims 39-62 are pending. Of these, claims 50-51, 53-55, and 58 are withdrawn as directed to a nonelected species. Therefore, claims 39-49, 52, 56-57, and 59-62 are under examination on the merits.
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 Rejections
The 103 rejections are withdrawn in view of the amendment and replaced with new rejections incorporating the teachings of a new secondary reference, Snehal et al.
The 112(b) rejection is withdrawn in part in view of the amendments and maintained in part as detailed below.
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 44-49, 52, 56-57, and 61-62 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as 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.
Claim 44 recites a cosmetic “comprising the combination according to claim 39, in a cosmetically acceptable medium.” This language contradicts the language of claim 39 which recites a composition that is “consisting of” five constituents, none of which is a “cosmetically acceptable medium.” A dependent claim must have all limitations of the base claim, but since claim 44 adds an additional ingredient that is a “cosmetically acceptable medium,” it fails to meet the “consisting of” requirement of base claim 39. Clarification is required.
Similarly, claim 48 depends from claim 39 but recites that the composition further comprises an additional ingredient which is not recited by claim 39 and is therefore excluded by the “consisting of” language recited by claim 39. A dependent claim must have all limitations of the base claim, but since claim 48 adds an additional ingredient, it fails to meet the “consisting of” requirement of base claim 39. Clarification is required.
Similarly, claim 52 depends from claim 39 but recites that the composition comprises ingredients that are excluded by the “consisting of” language of claim 39, including Ghassoul, bamboo, powder, and herbal and tea perfume. Clarification is required.
Similarly, claim 56 depends from claim 39 but recites that the composition comprises ingredients that are excluded by the “consisting of” language of claim 39, including flower acid and ascorbyl glucoside. Clarification is required.
Similarly, claim 57 depends from claim 39 but recites that the composition comprises ingredients that are excluded by the “consisting of” language of claim 39, i.e., spirulina. Clarification is required.
Since dependent claims 45-47, 49, and 61-62 do not clarify the points of confusion discussed above, they are also rejected.
Response to Applicant’s Arguments
Applicant argues that base claim 39 has been amended to delete “the following 5 constituents,” and argues that the claimed combination should be interpreted as a single active ingredient which has been added to the cosmetic composition of claim 44.
In response, the amendment does not overcome the rejection because a dependent claim must incorporate all limitations of its base claim, and here base claim 39 still recites “consisting of” language which requires the presence of a composition that only contains the recited 5 ingredients. Once the additional ingredients of claims 48, 52, and 56-57 are added to the composition of claim 44, there is not present in the these claims a combination “consisting of” the ingredients recited by claim 39, because these ingredients will mix with the cosmetically acceptable medium recited by claim 44, as well as the additional ingredients discussed above that are recited by claims 48, 52, and 56-57, none of which are one of the ingredients recited by claim 39 and which are therefore excluded.
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 39-49 and 59-62 are rejected under 35 U.S.C. 103 as unpatentable over Lanzaslaco et al. (US Pat. Pub. 2015/0202136; published 7.23.15) in view of Shibuya et al. (US Pat. Pub. 2015/0342854; published 12.3.2015), Hloucha et al. (US Pat. Pub. 2014/0219946; published 8.7.2014), Heath et al. (US Pat. Pub. 2011/0039744; published 2.7.2011), and Snehal et al. (Pharmacophore 2014, Vol. 5 (1), 77-84).
As to claims 39-49 and 59-62, Lanzaslaco discloses a cosmetic composition for improving the health of the skin that may be in the form of a powder (Abstract and paragraphs 1, 20) and wherein the composition comprises a prebiotic such as galactooligosaccharide (paragraph 53-54) in the amount of 0.5 wt% or 2 wt% (paragraph 62), which reads on the range of claims 42 and 47, and a dermatologically acceptable carrier (a “cosmetically acceptable medium” of claim 44) such as an oil or fatty acid ester (paragraphs 21, 68, 73), and wherein the composition further may comprise an emulsifying surfactant in the amount of 1 to 20%, which overlaps the ranges of claims 42-43, 47, and 49 (paragraph 76). Lanzaslaco teaches that the composition may comprise water in the amount of, for example, 1 wt%, which is within the ranges recited by claims 39 and 44-45 (paragraph 67). The composition further may comprise one or more conditioning agents such as mannitol as recited by claim 39 or starch (a “powder adhesion agent” of claim 39) and in the amount of 0.01-20 %, which encompasses the range of claims 42 and 47 and overlaps the ranges for the powder adhesion agent recited by claims 42 and 47 (paragraph 98). Lanzaslaco does not, however, require the presence of mannitol, thereby meeting the negative limitation of claim 40. Lanzaslaco also does not require the presence of any ingredients not recited by base claim 39, thus meeting the “consisting of” language in the preamble. The composition may be a cleanser shampoo (paragraph 99) as recited by claims 43, 49, and 62.
Regarding claim 45, the composition may comprise a pigment (paragraph 115).
Regarding claim 48, the composition may further comprise aloe vera (i.e., the elected species of “active principle”)(paragraph 98).
As to claims 39-49 and 59-62, Lanzaslaco does not further expressly disclose that the prebiotic is the elected species, i.e., alpha-glucan oligosaccharide) or that the fatty acid ester is the elected species of oil of claim, i.e., jojoba oil, or that the surfactant of claims 39 and 41 is the elected species (i.e., sodium cocoyl glutamate), nor that the starch is corn starch (i.e., the elected species of powder adhesion agent of claims 39 and 41), or that the density of the powder composition is within the range recited by claims 39, 44-45, and 60-61, nor that each of the powder adhesion agent, glucan oligosaccharide, surfactant, and oil are in powder form as recited by claims 39 and 59. Nor does Lanzaslaco disclose the amount of oil as recited by claim 42, or the amount of the cosmetic combination relative to the total weight of the cosmetic composition as recited by claim 46.
Shibuya discloses a topical antiaging composition for application to skin, wherein the composition may comprise jojoba oil as a humectant or emollient (67-68 and 76) and corn starch as a thickener (paragraph 105).
Hloucha discloses cosmetic cleaning compositions comprising a moisturizer such as an alpha glucan oligosaccharide (paragraphs 1 and 81-83).
Heath discloses personal cleansing compositions comprising a lathering surfactant such as sodium cocoyl glutamate and sodium cocoyl isethionate (paragraphs 7, 75-76, 79, 85).
Snehal discloses an herbal shampoo in the form of a powder (Abstract), in which all of the ingredients are collected and ground together to form a homogeneous fine powder (Materials and Methods section on page 780). The powder has a density of 0.38, which is within the ranges of claims 39 and 44-45 (Table 2 on page 82).
As to claims 39-49 and 59-62, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the composition of Lanzaslaco by 1) selecting alpha-glucan oligosaccharide as the prebiotic instead of, or in addition to, the galactooligosaccharide taught by Lanzaslaco, because Hloucha teaches that an alpha glucan oligosaccharide is useful for imparting moisturizing properties to cosmetic compositions, such that the skilled artisan would have been motivated to incorporate it into the cosmetic composition to provide moisturizing and prebiotic properties, and further by 2) selecting jojoba oil as the species of fatty acid ester, because Shibuya teaches that jojoba oil is useful as a humectant in cosmetic compositions such that the skilled artisan reasonably would have expected that it advantageously could impart humectant properties to the Lanzaslaco composition, and further by 3) selecting sodium cocoyl glutamate and sodium cocoyl isethionate as the surfactants because Heath teaches that these are suitable surfactants for use in personal care compositions such that the skilled artisan reasonably would have expected that they could serve as the surfactants in the Lanzaslaco personal care composition, and further by 4) by selecting corn starch as the type of starch, because Lanzaslaco does not limit the type of starch that should be used and Shibuya teaches that corn starch is suitable for use as a thickener in cosmetic compositions, such that the skilled artisan reasonably would have expected that it could be used as the type of starch in the Lanzaslaco composition, and 5) by using all of the ingredients of the composition in a powdered form, because Lanzaslaco expressly teaches that the overall composition may be in the form of a powder, and Snehal teaches that a powdered personal care composition may be formulated by grinding all of the ingredients together to form a fine, homogeneous powder, such that the skilled artisan reasonably would have expected that a Lanzaslaco composition could be formulated as a powder by grinding all of the ingredients into powders. Regarding the density of the powder composition as recited by claim 39, the modified prior art composition as described will have a density within the recited range because it comprises the same ingredients recited by the claims and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01. Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Additionally, Snehal discloses personal care compositions in the form of powders having densities within the ranges of claims 39 and 44-45 and close to the ranges of claims 60-61, such that the skilled artisan reasonably would have expected that such densities would be suitable for use in the Lanzaslaco powdered personal care composition.
Regarding claims 42 and 46, it further would have been prima facie obvious to select an amount of the oil carrier that is within the range recited by claim 42 and which would result in an amount of the cosmetic combination relative to the total weight of the cosmetic composition including the carrier that is within the range of claim 46, because the amount of the oil is a result effective variable that will affect its ability to meet its function of serving as a carrier for the remaining ingredients of the composition. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 52 is rejected under 35 U.S.C. 103 as unpatentable over Lanzaslaco et al. (US Pat. Pub. 2015/0202136; published 7.23.15) in view of Shibuya et al. (US Pat. Pub. 2015/0342854; published 12.3.2015), Hloucha et al. (US Pat. Pub. 2014/0219946; published 8.7.2014) and Heath et al. (US Pat. Pub. 2011/0039744; published 2.7.2011), and Snehal et al. (Pharmacophore 2014, Vol. 5 (1), 77-84) as applied to claims 39-49 and 59-62 above, and further in view of Golz-Berner et al. (US Pat. Pub. 2003/0044369; published 3.6.2003), Mergaoui et al. (WO2010/137930; published 12/2/2010) as evidenced by the English translation thereof, and the archived Perfumer’s Apprentice Black Tea Fragrance Oil web page (hereinafter “Perfumer’s Apprentice”) from April 30, 2017.
The teachings of Lanzaslaco, Shibuya, Hloucha, Heath, and Snehal are relied upon as discussed above. Lanzaslaco further teaches that the composition may comprise a perfume (see claim 17) and Shibuya further discloses that the composition may comprise a perfume material that may be an herbal perfume such as rosemary oil (paragraph 81), but the cited references do not further expressly disclose that the composition comprises Ghassoul, bamboo powder, and tea perfume as recited by claim 52.
Golz-Berner discloses a cosmetic composition comprising bamboo powder, which Golz-Bernet teaches imparts advantageous texturizing and sebum-absorbing properties to cometic products (paragraphs 2 and 12).
Mergaoui discloses a personal care composition comprising Ghassoul and teaches that it is known for its softening and cleansing properties (paragraphs 2-4).
Perfumer’s Apprentice discloses a black tea fragrance oil for sale (a “tea perfume”).
It would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the personal cleansing composition of Lanzaslaco, Shibuya, Hloucha, Heath, and Snehal as combined supra by incorporating bamboo powder and Ghassoul, because Golz-Berner teaches that bamboo powder is beneficial in cosmetic products due to its texturizing and sebum-absorbing properties, and Mergaoui discloses that Ghassoul is useful for its softening and cleansing properties in personal care compositions. It further would have been prima facie obvious to incorporate herbal perfume such as rosemary oil and tea perfume in order to impart a pleasant fragrance to the composition, because Lanzaslaco expressly teaches that the composition may comprise a perfume and Shibuya teaches that herbal perfumes such as rosemary oil are suitable for use in personal care compositions, and Perfumer’s Apprentice discloses that it was known to make a fragrance from tea such that the skilled artisan reasonably would have expected that a tea perfume and a rosemary perfume could be used to impart a pleasant fragrance to the Lanzaslaco composition as modified above.
Claim 56 is rejected under 35 U.S.C. 103 as unpatentable over Lanzaslaco et al. (US Pat. Pub. 2015/0202136; published 7.23.15) in view of Shibuya et al. (US Pat. Pub. 2015/0342854; published 12.3.2015), Hloucha et al. (US Pat. Pub. 2014/0219946; published 8.7.2014), Heath et al. (US Pat. Pub. 2011/0039744; published 2.7.2011), and Snehal et al. (Pharmacophore 2014, Vol. 5 (1), 77-84) as applied to claims 39-49 and 59-62 above, and further in view of Alison (author of “What does “Antiglycation” Mean? Article (published July 31, 2014).
The teachings of Lanzaslaco, Shibuya, Hloucha, Heath, and Snehal are relied upon as discussed above. Lanzaslaco further discloses that the composition may comprise ascorbyl glycoside as a skin anti-aging ingredient (paragraphs 18 and 42). Heath further discloses that the personal cleansing composition disclosed therein may comprise an oil such as almond oil (synonymous with “sweet almond oil”) as recited by claim 56 (paragraph 70). Lanzaslaco, Shibuya, Hloucha, and Heath do not further expressly disclose, however, that the composition comprises flower acid and in the amount as recited by claim 56.
Alison discloses that flower acid is useful in skin care compositions for the treatment of eczema and psoriasis (see “Correcting and balancing the skin” section).
It would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the personal cleansing composition of Lanzaslaco, Shibuya, Hloucha, Heath, and Snehal as combined supra by selecting almond oil as the type of fatty acid ester carrier, because Lanzaslaco expressly teaches that its composition may comprise an oil carrier comprising a fatty acid ester, and Heath expressly teaches that almond oil is a type of fatty acid ester oil that is suitable for use in personal care cleansing compositions, such that the skilled artisan reasonably would have expected that it could serve as the fatty acid ester in the Lanzaslaco personal skin care composition. It further would have been prima facie obvious to incorporate a flower acid, because Alison discloses that this ingredient is useful in skin care compositions in order to treat psoriasis and eczema. The amounts of the almond oil, ascorbyl glucoside, and flower acid are considered prima facie obvious because they are result effective variables that will influence their ability to carry out their functions of being a carrier, anti-aging ingredient, and skin treatment ingredient. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 57 is rejected under 35 U.S.C. 103 as unpatentable over Lanzaslaco et al. (US Pat. Pub. 2015/0202136; published 7.23.15) in view of Shibuya et al. (US Pat. Pub. 2015/0342854; published 12.3.2015), Hloucha et al. (US Pat. Pub. 2014/0219946; published 8.7.2014), Heath et al. (US Pat. Pub. 2011/0039744; published 2.7.2011) and Snehal et al. (Pharmacophore 2014, Vol. 5 (1), 77-84) as applied to claims 39-49 and 59-62 above, and further in view of Kusano et al. (US Pat. Pub. 2007/0140984; published 6.21.2017) and Litner et al. (US Pat. Pub. 2009/0017147).
The teachings of Lanzaslaco, Shibuya, Hloucha, Heath, and Snehal are relied upon as discussed above, but they do not further expressly disclose that the composition comprises spirulina or safflower oil as recited by claim 57.
Kusano discloses a powder composition for topical application to skin (paragraph 1) wherein the composition may comprise a substance having an antioxidant effect such as spirulina (paragraph 38).
Litner discloses cosmetic compositions for application to skin that may be in the form of a powder (paragraphs 14 and 389), wherein the composition may comprise a fatty ester such as safflower oil as a conditioning oil (paragraphs 273 and 278).
It would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the powder composition of Lanzaslaco, Shibuya, Hloucha, Heath, and Snehal as combined supra by incorporating spirulina and safflower oil with a reasonable expectation of success in providing beneficial antioxidant and conditioning properties to the composition in light of Kusano’s teaching that spirulina is useful as an antioxidant in topical cosmetic compositions and LItner’s teaching that safflower oil is useful as a conditioning oil in cosmetic compositions. It further would have been prima facie obvious to vary the amounts of these ingredients to arrive at amounts within the claimed range in order to optimize the degree of antioxidant and conditioning properties of these ingredients in the composition. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Applicant’s Arguments
Applicant argues that Lanzaslaco does not disclose compositions in powder form. Applicant also argues that the cited secondary references do not disclose powders, since Shibuya and Heath disclose liquids, while Hloucha discloses microemulsions.
In response, Lanzaslaco discloses “cosmetic compositions” and expressly discloses that this term encompasses “face powders” (paragraph 20, 4th line from the bottom).
Applicant also argues that claim 39 has been amended to recite that each of the ingredients individually is in “powder form,” which is not disclosed by the cited art.
In response, the new grounds of rejection rely upon the teachings of Snehal to motivate the skilled artisan to formulate the powder composition by grinding all the ingredients of the composition into individual powders and mixing them together.
Applicant argues that the Office action relies on combining at least 4 references despite any teaching, suggestion, or motivation to make the combination, because Lanzaslaco does not cite Shibuya, and Shibuya does not reference Lazaslaco. Applicant alleges that the rejections appear to rely on improperly selecting isolated paragraphs from the cited art under the influence of knowledge of the present invention, and picking and choosing features from different references without regard to the teachings of the references as a whole.
In response, a finding of prima facie obviousness in no way requires that the cited references cite to each other. Additionally, Applicant is reminded that the explicit teaching/suggestion/motivation test is not the only test under which a proper prima facie case of obviousness may be established. For example, the combining of prior art elements according to known methods to yield predictable results, or the simple substitution of one known element for another to yield predictable results, is sufficient, without more, to establish a case of prima facie obviousness. See MPEP 2143.
Here, the rejections in fact provide explicit rationales for making proposed modifications, e.g., that the skilled artisan would have expected that the selection of alpha glucan oligosaccharide and jojoba oil as the species of galactooligosaccharide and fatty acid ester would impart moisturizing and humectant properties to the Lanzaslaco composition as discussed in the rejection, and Applicant has not pointed to any specific modification proposed by the rejection that allegedly lacks a sufficient rationale. The elements of the claims are all found in the prior art as stated in the rejection, and one of ordinary skill, using common sense, would have found it obvious to make the combination for the reasons discussed in the rejections.
Applicant has also submitted the Azancot declaration, which is said to provide clear demonstration of specific unexpected properties of the claimed invention.
In response, the declaration states that testing showed unexpected foaming properties of Applicant’s product with respect to creaminess, stability, speed of dissolving, ease of spread, and caking property, relative to compositions disclosed by references cited by the EP examiner. The declaration asserts that these improved properties are a result of the presence of oil.
In response, evidence of allegedly unexpected results must compare the claimed invention with the closest prior art. MPEP 716.02(e). Additionally, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). MPEP 70602(d).
Here, the Office has reviewed the declaration but could not locate any disclosure of the ingredients in Applicant’s tested compositions. Therefore, it is not possible to determine whether the tested compositions are commensurate in scope with the present claims or whether they are even within the scope of the present claims. The Office further notes that base claim 39 does not recite any ranges for the ingredients except for water, such that the tested inventive compositions likely would not be commensurate in scope with claim 39 even if the declaration disclosed the ingredients in the tested compositions and their amounts.
Conclusion
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.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/BENNETT M CELSA/Quality Assurance Specialist , Art Unit 1600