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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/20/2026 has been entered.
Formal Matters
Receipt of Applicant’s response dated 04/20/2026 is acknowledged.
Claims 1-5 and 7-20 are pending.
Claim 6 is canceled.
Claims 1, 3-5, 9, and 17 are amended.
Claim 20 remains withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-5 and 7-19 are under consideration in the instant Office action to the extent of the elected species, i.e., the at least one ethylenediaminedisuccinic acid salt is trisodium ethylenediamine disuccinate; the at least one polyol is the mixture of glycerol, propylene glycol, pentylene glycol, butylene glycol, and caprylyl glycol; the at least one hydrophilic gelling agent is the mixture of ammonium polyacryloyldimethyltaurate, xanthan gum, sodium hyaluronate; the at least one derivative of polyethylene glycol and of mono-, di-, and tri-glycerides of an acid including at least one C6 to C16 alkyl chain and containing at least two ethylene oxide groups is synthetic triglyceride oils; the at least one non-volatile ether oil containing from 10 to 40 carbons is dicaprylyl ether as Cetiol® OE from BASF; the at least one non-volatile monoester oil is non-volatile monoesters of C6 to C30 fatty acids with C2 to C24 alcohols; the non-volatile oil other than the non-volatile ether oil containing from 10 to 40 carbon atoms and the non-volatile monoester oil is dicaprylyl carbonate as Cetiol® CC from BASF; the at least one surfactant is the mixture of glyceryl isostearate as Peceol® Isostearique from Gattefossé and PPG-6-decyltetradeceth-30 as Nikkol® PEN-4630 de Nikkol.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections to claims 5 and 9 set forth in the Office action dated 11/18/2025 are hereby withdrawn.
Claim Rejections - 35 USC § 112(b)
The rejection of claim 17 set forth in the Office action dated 11/18/2025 is hereby withdrawn.
Claim Rejections - 35 USC § 103
The rejection of claims 1-17 and 19 and the rejection of claim 18 set forth in the Office action dated 11/18/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF OBJECTION/REJECTION
Specification
The disclosure is objected to because the section “Cross-reference to related applications” is missing. See MEPEP 608.01(a).
Appropriate correction is required.
Claim Objections
Claim 17 is objected to because “a water phase” should be amended to “an aqueous phase” in order to be consistent with the terminology used in the specification (See e.g. Page 18 Lines 10-25 of the specification.)
Appropriate correction is required.
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.
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 1-5, 7-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al (US 2004/0170670 A1, published 09/02/2004, cited in Notice of References Cited dated 05/02/2025) in view of Bohnenblust (KR 20170131349 A, published 11/29/2017, cited in Notice of References Cited dated 05/02/2025), Noll et al (US 5,370,876 A, published 12/06/1994, cited in Notice of References Cited dated 05/02/2025), and Suzuki et al (US 2019/0240125 A1, published 08/08/2019, cited in Notice of References Cited dated 05/02/2025) as evidenced by Millipore Sigma (“1,2-Octanediol”, cited in Notice of References Cited dated 05/02/2025).
Smith et al teach flexible, fine-pored foam pads impregnated with liquids, formed in situ from a composition formulated as an emulsion, used for the cosmetic and dermatological treatment of the skin, hair, mucosa and appendages of the skin (See entire document, e.g., Abstract, [0012], [0207]-[0208]). The foam pads have a pleasant slip on the skin and hair surfaces to be treated and allow controlled, drip-free delivery, of the liquid bound in the pores (e.g., [0009]).
The liquid aqueous phase of the composition contains at least one surface-active substance, at least one dispersed fatty substance, and at least one cosmetic or dermatological active ingredient or care and maintenance ingredient (e.g., [0012]).
The at least one surface-active substance are selected from among anionic, cationic, dipolar-ionic (or zwitterionic), ampholytic, and nonionic surfactants and emulsifiers (e.g., [0016]). The nonionic surfactants and emulsifiers contain, for example, a polyol group, a polyalkylene glycol ether group or a combination of a polyol and polyglycol ether group as the hydrophilic group (e.g., [0042]).
The at least one dispersed fatty substance includes natural and synthetic cosmetic oil components (e.g., [0076]) including a) synthetic triglyceride oils, b) di-n-alkyl ethers of C12 to C36 such as Cetiol OE dicaprylyl ether, c) ester oils being the esters of C6 to C30 fatty acids with C2 to C30 fatty alcohols, where the monoesters of the C6 to C30 fatty acids with C2 to C24 alcohols are preferred, and d) esters of carbon dioxide with fatty alcohols including Cetiol CC dicaprylyl carbonate (e.g., [0081]-[0086], [0206]). The total amount of natural and synthetic cosmetic oil components used is 0.1 to 50 wt% based on the total weight of the composition used to form the foam pads (e.g., [0088]). The total amount of oil components and fatty substances present is usually 0.01 to 60 wt. %, and especially 1 to 20 wt. %, based on the total weight of the composition used to form the foam pads (e.g., [0095]).
The at least one cosmetic or dermatological active ingredient or care and maintenance ingredient is selected from natural and, if desired, chemically modified polymers, where preferred natural and, if desired, chemically modified polymers include xanthan gum (e.g., [0012], [0096]). Preferred synthetic polymers for use are synthetic polymers that do not act as super-absorbers but rather swell with water and are thereby converted to a gel-like true or colloidal solution and may be anionic, cationic, amphoteric, or nonionic (e.g., [0097]).
Smith et al teach that antioxidants such as metal chelating agents, e.g., EDTA (i.e., ethylenediaminetetraacetic acid), may be used to counteract the oxidative decomposition of the components of sweat and in this way inhibit the development of odor (e.g., [0136]), and that antioxidants including tetrabutyl pentaerythrityl hydroxyhydrocinnamate (which is commercially available under the product name Tinogard TT) may be added in order to protect the compositions used to form the foam pads (e.g., [0181]). The total amount of antioxidants used is 0.001 to 10 wt. % based on the total weight of the composition used to form the foam pads (e.g., [0138]).
The compositions used to form the foam pads may contain water-soluble polyols, including diols, where suitable diols are C2 to C12 diols, as well as glycerol (e.g., [0182]).
The compositions used to form the foam pads may contain vitamins, provitamins, and vitamin intermediates of the groups A, E, and F, and their derivatives, where the group of substances designated as vitamin A includes retinol. The vitamin A component is preferably contained in amounts of 0.05 to 1 wt. %, based on the total weight of the cosmetic composition used to form the foam pads (e.g., [0184]).
Smith et al do not teach 1) trisodium ethylenediamine disuccinate as a suitable metal chelating agent, 2) a weight percent amount of water-soluble polyols, or 3) the composition comprising ammonium polyacryloyldimethyltaurate or sodium hyaluronate.
These deficiencies are made up for in the teachings of Bohnenblust, Noll et al, and Suzuki et al.
Bohnenblust teaches a sun protection composition as an oil in water emulsion and formulated as a gel-cream for the protection of skin from UV-A and/or UV-B radiation (See entire document, e.g., Abstract, Technical-field on Page 2 of English translation). Bohnenblust found that the inclusion of two chelating agents and a surfactant in the composition results in excellent sensory and macroscopic parameters (e.g., color, color change, odor, gloss, surface properties, consistency, oily and / or aqueous precipitate, granularity) while providing a stable composition (e.g., Par. spanning Pages 6-7 of English translation). The chelating agents may be alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30), which are preferably used because they enable droplet stabilization (e.g., Page 7 Par. 2 of English translation). The composition preferably comprises 0.05% to 3% by weight based on the total weight of the composition chelating agents which are alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) (e.g., Page 8 of English translation).
Noll et al teach a protective composition as an oil-in-water emulsion as a skin cream (See entire document, e.g., Col. 2 Lines 29-31), wherein use of a polyol, or polyols, in 5 to 20 wt. % of the composition achieves and maintains desired viscosity, as well as prevents excessive drying and cracking of the surface film (e.g., Col 4 Lines 23-31).
Suzuki et al teach a composition for a keratin substance, such as skin, that provides coverage of imperfections while providing brightness and natural finish (See entire document, e.g., Abstract, [0005]). The composition may be formulated as an oil-in-water emulsion (e.g., [0220]) and may comprise anionic, non-ionic, cationic, amphoteric or zwitterionic polymers (e.g., [0214]). Suzuki et al teach an exemplified composition comprising the following combination of said polymers: ammonium polyacryloyldimethyl taurate in 0.2 wt. %, Acrylates/C10-30 Alkyl Acrylate Crosspolymer in 0.4 wt. %, xanthan gum in 0.2 wt. %, sodium hyaluronate in 0.1 wt. %, where wt. % is based on the weight of the composition (e.g., [0267). This exemplified composition decreased skin color defects such as spots, hid pores and fine lines, and provided a natural finish and translucent aspect (e.g., [0268]).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to 1) use alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) as the chelating agents in the composition of Smith et al in 0.05 to 3 wt. %, 2) use the polyols of Smith et al in an amount of 5 to 20 wt. %, and 3) use the combination of 0.2 wt. % ammonium polyacryloyldimethyl taurate, 0.4 wt. % Acrylates/C10-30 Alkyl Acrylate Crosspolymer, 0.2 wt. % xanthan gum, and 0.1 wt. % sodium hyaluronate as the at least one cosmetic or dermatological active ingredient or care and maintenance ingredient in the composition of Smith et al, where wt. % is based on the weight of the composition. One of ordinary skill in the art would have been motivated to do so in order to modify the composition of Smith et al by improving the sensory and macroscopic parameters while providing stability (teaching of Bohnenblust), achieving and maintaining a desired viscosity (teaching of Noll et al), and decreasing skin color defects such as spots and hiding pores and fine lines (teaching of Suzuki et al). There would have been a reasonable expectation of success in making the aforementioned modifications because the composition of Smith et al is taught as compatible with metal chelating agents, polyols, and polymers.
The modified emulsion composition of Smith et al in view of Bohnenblust, Noll et al, and Suzuki et al comprising the following compounds in the following amounts, where wt. % is based on the total weight of the composition, renders obvious the composition of instant claims 1-17 and 19:
retinol as the vitamin A component from 0.05 to 1 wt. %;
antioxidants comprising 1) tetrabutyl pentaerythrityl hydroxyhydrocinnamate and 2) alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) from 0.05 to 3 wt. %, where the total amount of antioxidants is from 0.001 to 10 wt. %;
C2 to C12 diols and glycerol as the water-soluble polyols from 5 to 20 wt. %;
the combination of 0.2 wt. % ammonium polyacryloyldimethyl taurate, 0.4 wt. % Acrylates/C10-30 Alkyl Acrylate Crosspolymer, 0.2 wt. % xanthan gum, and 0.1 wt. % sodium hyaluronate as the at least one cosmetic or dermatological active ingredient or care and maintenance ingredient (total of 0.9 wt. % of the at least one cosmetic or dermatological active ingredient or care and maintenance ingredient); and
synthetic triglyceride oils, Cetiol OE dicaprylyl ether, monoesters of the C6 to C30 fatty acids with C2 to C24 alcohols, and Cetiol CC dicaprylyl carbonate as the natural and synthetic cosmetic oil components totaling from 0.1 to 50 wt%.
Tetrabutyl pentaerythrityl hydroxyhydrocinnamate is synonymous with di-t-butyl pentaerythrityl tetrahydroxycinnamate as evidenced by Page 5 Lines 21-26 of the instant specification. The C2 to C12 diols and glycerol as the water-soluble polyols in the modified emulsion composition of Smith et al renders obvious the mixture of glycerol, propylene glycol, pentylene glycol, butylene glycol, and caprylyl glycol as the elected species of the at least one polyol required by the instant claims as caprylyl glycol is synonymous with 1,2-octanediol (i.e., C8 diol) as evidenced by Millipore Sigma (See “Synonym(s)”). The monoesters of the C6 to C30 fatty acids with C2 to C24 alcohols as a natural and synthetic cosmetic oil component polyols in the modified emulsion composition of Smith et al renders obvious the non-volatile monoesters of C6 to C30 fatty acids with C2 to C24 alcohols as the elected species of the at least one non-volatile monoester oil required by the instant claims.
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). 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)). Specifically regarding instant claim 17, the modified emulsion composition of Smith et al comprising a total amount of oil components and fatty substances from usually 0.01 to 60 wt. %, and especially 1 to 20 wt. %, based on the total weight of the composition used to form the foam pads, renders obvious “a fatty phase being present in a content of between 2.0 to 20% by weight relative to the total weight of the composition”.
Regarding instant claim 19, the modified emulsion composition of Smith et al being used for the cosmetic and dermatological treatment of the skin, hair, mucosa and appendages of the skin renders obvious “a cosmetic composition for caring for keratin materials”.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al (as cited above) in view of Bohnenblust (as cited above), Noll et al (as cited above), and Suzuki et al (as cited above) as evidenced by Millipore Sigma (as cited above) as applied to claims 1-5, 7-17, and 19 above, further in view of Plismy (RU 2649816 C2, published 04/04/2018, cited in Notice of References Cited dated 05/02/2025) and Deckner et al (WO 0102479 A1, published 01/11/2001, cited in Notice of References Cited dated 05/02/2025).
The modified emulsion composition of Smith et al in view of Bohnenblust, Noll et al, and Suzuki et al has been discussed supra.
Although the modified emulsion composition is taught as comprising at least one surface-active substance selected from among anionic, cationic, dipolar-ionic (or zwitterionic), ampholytic, and nonionic surfactants and emulsifiers (supra), none of Smith et al, Bohnenblust, Noll et al, or Suzuki et al specifically teach the mixture of glyceryl isostearate as Peceol® Isostearique from Gattefossé and PPG-6-decyltetradeceth-30 as Nikkol® PEN-4630 de Nikkol.
This deficiency is made up for in the teachings of Plismy and Deckner et al.
Plismy teaches a cometic composition in the form of an oil-in-water emulsion having a light, liquid consistency, easy application, a freshness effect, without an oily effect (See entire document, e.g., Abstract). Plismy makes special mention of glyceryl isostearate such as the product of Gattefosse sold under the name Peceol Isostéarique® as an emulsifier that enhances the emulsification of the oil phase (e.g., Page 10 Par. 4-5 of English translation).
Deckner et al teach a cosmetic sheet for topical application to the skin providing unobtrusiveness, ease of handling, conformability, hydration, moisturization and cooling benefits (See entire document, e.g., Abstract, Second to last Par. of Page 4). Deckner et al teach that emulsifiers/surfactants generally help to disperse and suspend the discontinuous phase within the continuous phase and it is useful if the product is intended for skin cleansing, specifically (e.g., Page 29 Lines 1-5). Deckner et al teach that preferred surfactants/emulsifiers are nonionic, and makes mention of polyoxypropylene, polyoxyethylene ethers of fatty alcohols as suitable surfactants/emulsifiers, exemplifying PPG-6-Decyltetradeceth-30, available under the trade name "Pen 4630" from Nikko Chemicals Co. Ltd. (e.g., Page 29 Line 13, Page 30 Line 34-Page 31 Line 5).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use glyceryl isostearate as the product of Gattefosse sold under the name Peceol Isostéarique® and PPG-6-Decyltetradeceth-30 as "Pen 4630" from Nikko Chemicals Co. Ltd. as the at least one surface-active substance in the modified emulsion composition of Smith et al. One of ordinary skill in the art would have been motivated to do so because 1) each of Plismy and Deckner et al teach the aforementioned compounds as preferred or exemplified emulsifiers/surfactants that aid in the emulsification of each composition and 2) each of the aforementioned compounds are commercially available which means they are ready to be used rather than requiring their syntheses. There would have been a reasonable expectation of success in using glyceryl isostearate as the product of Gattefosse sold under the name Peceol Isostéarique® and PPG-6-Decyltetradeceth-30 as "Pen 4630" from Nikko Chemicals Co. Ltd. because the modified emulsion composition of Smith et al is taught as compatible with nonionic surfactants and emulsifiers as the at least one surface-active substance. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)).
The modified emulsion composition of Smith et al further modified by Plismy and Deckner et al comprising glyceryl isostearate as the product of Gattefosse sold under the name Peceol Isostéarique® and PPG-6-Decyltetradeceth-30 as "Pen 4630" from Nikko Chemicals Co. Ltd. renders obvious instant claim 18 further comprising the mixture of glyceryl isostearate as Peceol® Isostearique from Gattefossé and PPG-6-decyltetradeceth-30 as Nikkol® PEN-4630 de Nikkol as the elected species of the at least one surfactant.
Response to Applicant’s Arguments
Applicant’s arguments filed on 04/20/2026 have been considered.
Regarding the teaching of Smith et al, Applicant argues that vitamin A is mentioned among other components and none of the exemplified compositions contain retinol, it is not described or suggested that its compositions may contain an ethylenediaminedisuccinic acid salt. Regarding the teaching of Bohnenblust, Applicant argues that Bohnenblust teaches alpha-cyclodextrin and trisodium ethyl diamine diiosinate as preferred chelating agents and does not exclude the use of other chelating agents, makes no mention of retinol, and neither describes nor suggests that its compositions may contain di-t-butyl pentaerythrityl tetrahydroxycinnamate. Regarding the teaching of Noll et al, Applicant argues that Noll et al does not describe or suggest a composition comprising retinol or tetrabutyl pentaerythrityl tetrahydroxycinnamate or an ethylenediaminedisuccinic acid salt. Regarding the teaching of Suzuki et al, Applicant argues that Suzuki et al does not describe or suggest a composition comprising retinol or tetrabutyl pentaerythrityl tetrahydroxycinnamate or an ethylenediaminedisuccinic acid salt. Applicant argues that it is unlikely that a person having ordinary skills in the art aiming at providing a composition which has anti-ageing properties and which permits to use retinol while controlling its degradation would refer to any one of Smith, Bohnenblust, Noll, or Suzuki, and if they did, said person would not have arrived at the presently claimed invention without numerous trials and errors. Applicant argues that there is no motivation in Smith to modify its teaching by Bohnenblust. Applicant argues that a person having ordinary skills in the art when seeking to solve the technical problem of the instant application would not arrive to the specific claimed content of t-butyl pentaerythrityl tetrahydroxycinnamate and of ethylenediaminedisuccinic acid salt because neither Smith nor Bohnenblust describe or suggest a composition comprising both di-t-butyl pentaerythrityl tetrahydroxycinnamate and ethylenediaminedisuccinic acid salt, the scope of the amount of antioxidants described in Smith is very broad compared to the content presently claimed, and Smith does not particularly focus on the use of t-butyl pentaerythrityl tetrahydroxycinnamate as antioxidant. Applicant argues that neither Noll nor Suzuki mentions di-t-butyl pentaerythrityl tetrahydroxycinnamate and ethylenediaminedisuccinic acid salt, let alone a composition comprising said compounds in specific amounts, nor do they mention retinol. Applicant argues that neither Plismy nor Deckner et al relate to an anti-ageing composition nor a way to stabilize retinol, do not mention a composition comprising t-butyl pentaerythrityl tetrahydroxycinnamate and of ethylenediaminedisuccinic acid salt, let alone a composition comprising both compounds in specific amounts.
The above arguments regarding what each of the individual cited documents do not teach have been fully considered by the Examiner but are not found persuasive because the instant rejection of claims 1-5, 7-17 and 19 is based on the combined teachings of Smith et al, Bohnenblust, Noll et al, and Suzuki et al and not their individual teachings and the instant rejection of claim 18 is based on the combined teachings of Smith et al, Bohnenblust, Noll et al, Suzuki et al, Plismy, and Deckner et al and not their individual teachings. Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The arguments regarding the cited documents not mentioning or suggesting the technical problem of the instant application and not helping a person skilled in the art to solve the technical problem of the instant application have been fully considered by the Examiner but are not found persuasive because the art needs to provide a motivation and not the same motivation as Applicant or necessarily recognize the same problem/solution as Applicant. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co. v. Teleflex lnc., 550 U.S. 398,419 (2007). Instead, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). As can be seen in the rejection of claims 1-5, 7-17 and 19 above, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Smith et al, Bohnenblust, Noll et al, and Suzuki et al, to 1) use alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) as the chelating agents in the composition of Smith et al in 0.05 to 3 wt. %, 2) use the polyols of Smith et al in an amount of 5 to 20 wt. %, and 3) use the combination of 0.2 wt. % ammonium polyacryloyldimethyl taurate, 0.4 wt. % Acrylates/C10-30 Alkyl Acrylate Crosspolymer, 0.2 wt. % xanthan gum, and 0.1 wt. % sodium hyaluronate as the at least one cosmetic or dermatological active ingredient or care and maintenance ingredient in the composition of Smith et al, where wt. % is based on the weight of the composition, one of ordinary skill in the art would have been motivated to do so in order to modify the composition of Smith et al by improving the sensory and macroscopic parameters while providing stability (teaching of Bohnenblust), achieving and maintaining a desired viscosity (teaching of Noll et al), and decreasing skin color defects such as spots and hiding pores and fine lines (teaching of Suzuki et al), and there would have been a reasonable expectation of success in making the aforementioned modifications because the composition of Smith et al is taught as compatible with metal chelating agents, polyols, and polymers. As can be seen in the rejection of claim 18 above, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Smith et al, Bohnenblust, Noll et al, Suzuki et al, Plismy, and Deckner et al, to use glyceryl isostearate as the product of Gattefosse sold under the name Peceol Isostéarique® and PPG-6-Decyltetradeceth-30 as "Pen 4630" from Nikko Chemicals Co. Ltd. as the at least one surface-active substance in the modified emulsion composition of Smith et al, one of ordinary skill in the art would have been motivated to do so because 1) each of Plismy and Deckner et al teach the aforementioned compounds as preferred or exemplified emulsifiers/surfactants that aid in the emulsification of each composition and 2) each of the aforementioned compounds are commercially available which means they are ready to be used rather than requiring their syntheses, and there would have been a reasonable expectation of success in using glyceryl isostearate as the product of Gattefosse sold under the name Peceol Isostéarique® and PPG-6-Decyltetradeceth-30 as "Pen 4630" from Nikko Chemicals Co. Ltd. because the modified emulsion composition of Smith et al is taught as compatible with nonionic surfactants and emulsifiers as the at least one surface-active substance. Regarding the above arguments alleging the requirement of choosing an element from within a list and “trial and error” being required, 1) It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands (Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)) and 2) Applicant is reminded that "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton. "KSR, 550 U.S. at 421, 82 USPQ2d at 1397. "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. "Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ. "Id. at 418, 82 USPQ2d at 1396. Regarding the above arguments of the amount of antioxidants in Smith being more broad than those claimed, 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)).
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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