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 .
DETAILED ACTION
This office action is a response to Applicant’s amendments/remarks after non-final rejection filed 6/12/2026.
As filed, claims 1, 2, 5, and 6 are pending; and claims 3, 4, and 7-20 are withdrawn.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 6/12/2026, with respect to claims 1, 2, 5, and 6, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The § 103(a) rejection of claims 1, 2, 5, and 6 by Tsuji is withdrawn per amendments because the claims now require having at least one of the additional compounds depicted in claim 1.
Claim Interpretation
With regards to the intended use statement, such as “moisturizer”, in claim 5 and “cosmetic” in claim 6, they have not been accorded patentable weight for prior art purpose because such statements failed to limit the components of the composition depicted in claim 1.
The Examiner finds that any prior art composition having the same components as the instantly claimed product would be capable of performing the intended use, according to the guidance in MPEP 2111.02(II). Therefore, the Examiner finds that “moisturizer” in claim 5 and “cosmetic product” in claim 6 are synonymous as composition for prior art purpose.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. 103 as being obvious over U.S. Patent No. 8,771,725, hereinafter Chesson.
Regarding claims 1, 5, and 6:
Determining the scope and contents of the prior art:
Chesson, for instance, teaches an example of a topical medicament or composition comprising acetone and ethylene glycol/propylene glycol for treating skin ailment.
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Ascertaining of the difference between the prior art and the claim at issue:
In the abovementioned example, Chesson, for instance, did not explicitly teach the use of 1,3-butylene glycol and did not explicitly teach the acetone content to be less than 65 ppm.
Finding of prima facie obviousness --- rationale and motivation:
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
Based on the teachings of the MPEP and KSR above, by employing the rationale in (B) above, it would have been obvious to one of ordinary skill in the art to substitute the abovementioned ethylene glycol/propylene glycol with 1,3-butylene glycol in order to arrive at the instantly claimed composition because of the preferred embodiments or blazemarks, as shown below, and there is a reasonable expectation of success that 1,3-butylene glycol or ethylene/propylene glycol can be used interchangeably in a medicament or composition for treating skin ailment.
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In addition, the acetone used in the abovementioned medicament or composition of Chessen is a pharmaceutically acceptable carrier that is used to dissolve polyols, such as 1,3-butylene glycol or ethylene/propylene glycol. Chessen teaches that acetone is removed via evaporation. Not all acetone can be removed via evaporation. Therefore, it would have been obvious for a person of ordinary skill in the art that a trace of acetone would be present, and having less than 65 ppm of acetone can be achieved via routine optimization.
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Regarding claim 2:
Determining the scope and contents of the prior art:
Chessen, for instance teaches the abovementioned obvious variant, which is drawn to a topical medicament or composition comprising acetone and 1,3-butylene glycol for treating skin ailment, wherein the content of acetone is less than 65 ppm.
Ascertaining of the difference between the prior art and the claim at issue:
Chessen, for instance, did not explicitly teach the abovementioned obvious variant to have less than 70 ppm of acetone after the medicament or composition is kept at 180oC for 3 hours in air atmosphere.
Finding of prima facie obviousness --- rationale and motivation:
The Examiner finds that it would have been obvious to a person of ordinary skill in the art to recognize that acetone would have been completely removed (i.e. less than 70 ppm) from the medicament or composition if the medicament or composition is kept at 180oC for 3 hours in air atmosphere, since the boiling point of acetone is 56oC.
Conclusion
Claims 1, 2, 5, and 6 are rejected.
Claims 3, 4, and 7-20 are withdrawn.
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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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