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 Claims
Receipt of Applicant’s response, dated 08/01/2025, is acknowledged.
Claims 1-20 are pending.
Claims 1 and 4-16 are amended.
Claim 20 remains withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-19 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 (instant claim 16) 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OBJECTIONS/REJECTIONS WITHDRAWN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The objections to claims 5, 9, 12, and 14 set forth in the Office action dated 05/02/2025 are hereby withdrawn in light of Applicant’s amendment to the claims.
Claim Rejections - 35 USC § 112
The indefiniteness rejections of claims 4-8, 11, and 13-16 set forth in the Office action dated 05/02/2025 are hereby withdrawn in light of Applicant’s amendment to the claims.
REJECTIONS MAINTAINED
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.
Claim 17 is 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.
Claim 17 recites the limitation “the fatty phase” in line 2. There is insufficient antecedent basis for this limitation in the claim because neither claim 17 nor claim 1 earlier recite “a fatty phase”.
Response to Applicant’s Arguments - 35 USC § 112
The reply filed 08/01/2025 states that the rejections under 35 USC 112(b) are believed to be obviated by the present amendments made to the claims. This has been fully considered by the Examiner but is not found persuasive. Claim 17 has not been amended and it remains unclear what “the fatty phase” is referencing and, therefore, the above rejection is maintained.
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 1-17 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).
Note: The instant claims are being examined 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 (instant claim 16) 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.
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 (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 the following elements required by the instant claims:
Trisodium ethylenediamine disuccinate as a suitable metal chelating agent;
The water-soluble polyols being present in at least 11 wt. % based on the total weight of the composition used to form the foam pads or being present from 11 to 25 wt. % based on the total weight of the composition used to form the foam pads; and
The composition comprising ammonium polyacryloyldimethyltaurate nor sodium hyaluronate in addition to xanthan gum.
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 (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 (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 (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 (supra).
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%.
Note that tetrabutyl pentaerythrityl hydroxyhydrocinnamate of Smith et al. is the same as di-t-butyl pentaerythrityl tetrahydroxycinnamate of the instant claims as evidenced by Page 5 Lines 21-26 of the instant specification.
The modified emulsion composition of Smith et al. comprising C2 to C12 diols and glycerol as the water-soluble polyols renders obvious the composition of the instant claims comprising the mixture of glycerol, propylene glycol, pentylene glycol, butylene glycol, and caprylyl glycol as caprylyl glycol is synonymous with 1,2-octanediol (i.e., C8 diol) as evidenced by Millipore Sigma (See “Synonym(s)”).
The modified emulsion composition of Smith et al. comprising monoesters of the C6 to C30 fatty acids with C2 to C24 alcohols as a natural and synthetic cosmetic oil component renders obvious the non-volatile monoesters of C6 to C30 fatty acids with C2 to C24 alcohols required by the instant claims.
The ranges of the compounds in the modified emulsion composition of Smith et al. render obvious the ranges of the compounds in instant claims 1-4 and 7. 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)).
The modified emulsion composition of Smith et al. comprising alpha-cyclodextrin (as Cavamax (TM) W6 Food) and trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30) from 0.05 to 3 wt. % and comprising alpha-cyclodextrin (as Cavamax (TM) W6 Food), trisodium ethylenediamine disuccinate (as Natrlquest (TM) E30), and tetrabutyl pentaerythrityl hydroxyhydrocinnamate from 0.001 to 10 wt. %, render obvious a mass ratio of tetrabutyl pentaerythrityl hydroxyhydrocinnamate to trisodium ethylenediamine disuccinate between 1.5 to 5 as is required by instant claim 6.
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 the composition of instant claim 17 comprising a fatty phase from 2.0 to 20% by weight relative to the total weight of the composition.
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 the composition of instant claim 19 being 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 1-17 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 as is required by instant claim 18.
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 (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 (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 (supra). 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 the composition of 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 at least one surfactant.
NEW GROUNDS OF OBJECTION
Claim Objections
Claims 5 and 9 are objected to because of the following:
In line 3 of claim 5, “salts” appearing after “ammonium” should be deleted in order to improve the readability of the claim, i.e., the claim should read “…potassium, sodium, ammonium and amine salts…”; and
At the end of claim 9, “polyols,.” should be amended to “polyols.” in order to remedy the typographical error.
Appropriate correction is required.
Response to Applicant’s Arguments
Applicant’s arguments filed on 08/01/2025 have been considered.
Regarding the rejection of claims 1-17 and 19, Applicant argues that in the teaching of Smith et al, vitamin A is mentioned among other components, for instance vitamins E and F, and none of the compositions exemplified contain retinol. Applicant argues that in the teaching of Bohnenblust, alpha-cyclodextrin and trisodium ethyl diamine diisosinate as the preferred chelating agents but does not exclude the use of other chelating agents, and makes no mention of retinol or of a composition comprising retinol. Applicant argues that neither Noll et al or Suzuki et al describe or suggest a composition comprising retinol. Applicant argues that in the teaching of Suzuki et al, all of the compositions contain disodium EDTA, which is a compound described in the present applicant to be avoided.
The arguments regarding, in the teaching of Smith et al, vitamin A being mentioned among other components and none of the exemplified compositions containing retinol have been fully considered by the Examiner but are not found persuasive because, firstly, Smith et al do teach retinol as one of the suitable vitamins, provitamins, and vitamin intermediates of the groups A, E, and F, and their derivatives in Par. [0184] (See maintained rejection under 35 USC 103 of claims 1-17 and 19 above for more details), secondly, Applicant is reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)), and lastly, 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)). The arguments regarding the individual teachings of Bohnenblust, Noll et al, and Suzuki et al have been fully considered by the Examiner but are not found persuasive because the maintained rejection under 35 USC 103 of claims 1-17 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. Applicant is remined 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).
Applicant argues that the present disclosure provides a composition having anti-ageing properties which permits using retinol in a controlled way, which is to say that the degradation of retinol is controlled in the composition and that the degradation of retinol in cosmetic compositions was a long-lasting problem that before the filing date of the present application no suitable and efficient solution had been proposed. Applicant argues that none of the cited documents mention or even suggest this technical challenge. Applicant argues that there is no incitation to combine the cited documents since they are not even related from one another by any technical problem or tangible element, the combination of the cited documents is the result of arbitrary picking and choosing, and even when combining the cited documents, they would not help a person skilled in the art to solve the technical problem of the present disclosure and arrive at the disclosure of the present claims.
The arguments regarding the cited documents not mentioning or suggesting the technical problem recognized by Applicant and not helping a person skilled in the art to solve the technical problem of the present disclosure 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). The arguments regarding the cited documents not being related by any technical problem or tangible element and their combination being the result of arbitrary picking and choosing have been fully considered by the Examiner but are not found persuasive because it would have been prima facie obvious to one of ordinary skill in the art, based on the teachings of Smith et al, Bohnenblust, Noll et al, and Suzuki et al, to 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. %, use the polyols of Smith et al. in an amount of 5 to 20 wt. %, and 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, in order to improve the sensory and macroscopic parameters while providing stability (teaching of Bohnenblust), achieve and maintain a desired viscosity (teaching of Noll et al), and decrease skin color defects such as spots and hide pores and fine lines (teaching of Suzuki et al). See the maintained rejection under 35 USC 103 of claims 1-17 and 19 above for more details. Applicant is reminded that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. 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).
Regarding the rejection of claim 18, Applicant argues that each of Plismy and Deckner et al cite retinol among a list of numerous/many compounds, however, neither Plismy nor Deckner et al present/describe the difficulties associated with the use of retinol. Applicant argues that for these reasons and because neither of the teachings of Plismy or Deckner et al relate to an anti-ageing composition nor to a way to stabilize retinol, these two documents fail to complete the teaching of the previous five documents.
The arguments have been fully considered by the Examiner but are not found persuasive because, firstly, the maintained rejection under 35 USC 103 of claim 18 above is based on it being prima facie obvious to one of ordinary skill in the art, 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 emulsion composition of Smith et al in view of Bohnenblust, Noll et al, and Suzuki et al 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. Secondly, Applicant is reminded that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. 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). 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).
Conclusion
No claims are allowable.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619