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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Eckart et al. (EP 0884046 A1, published December 16, 1998) (“Eckart” hereunder) in view of Dahm (WO 2002015862 A1, published on February 28, 2002), Kim et al. (KR 1020130088226, published on August 8, 2013) (“Kim” hereunder), Tomlinson et al. (US 2018/0318202 A1, published November 8, 2018) (“Tomlinson” hereunder).
Eckart teaches a cosmetic composition for improved photoprotective properties, the composition comprising water (76.225 wt %), vitamin C phosphate 0.1 wt %, panthenol 1 wt %, glycerin 3 wt %, xanthan gum 0.1 wt %, tocopherol acetate 1 wt % and sodium hydroxide (45 %) 0.45wt %. The reference further teaches adding preservatives such as 4-hydroxybenzoic acid and salts, etc. See p. 4, col. 2, lines 29 – 40.
Although Eckart suggests any vitamin C or derivatives can be used, the reference fails to teach L-ascorbic acid.
Dahm teaches a photoprotective composition comprising 0.1-10wt % of L-ascorbic with light protective agents in cosmetic emulsions. The reference teaches that L-ascorbic acid potentiate the light protection effect and reduces the lipid peroxide exposure of the skin.
It is prima facie obvious to combine or substitute art-recognized equivalents in order to form a third composition useful for the same purpose. See MPEP 2144. 06. In this case, since Eckart and Dahm establish that vitamin C phosphate and L-ascorbic acid are used in photoprotective composition, combining the two vitamin C derivatives or substituting one for the other to make another photoprotective composition with vitamin C properties would have been prima facie obvious.
Eckart fails to teach flaxseed extract.
Kim teaches a cosmetic composition comprising flaxseed extract, which is effective in reducing skin pore and improving acne. The reference teaches that 0.01-97 wt % of flaxseed extract can be used based on the weight of the composition. See translation, abstract. Examples show formulations comprising 10 wt % of flaxseed extract. See translation, Examples 1-3. Suitable formulations include cream, lotion, ointment, etc. See translation.
It would have been obvious to one of ordinary skill in the art before the time of the effective filing date of the present application to modify the teachings of Eckart and incorporate to the composition flaxseed extract as motivated by Kim, as the latter teaches its efficacy in reducing skin pore and improving acne. Since both references are directed to cosmetic compositions in similar forms, the skilled artisan would have had a reasonable expectation of successfully producing a stable and improved external composition that can reduce skin pores and treats acne.
Eckhard fails to teach gluconolactone. Although Eckhard teaches using preservatives such as sorbic acid salts, 4-hydroxybenzoic acid and benzyl alcohol among others, the reference fails to specifically disclose potassium sorbitan and sodium benzoate. See p. 4, col. 2, lines 31.
Tomlinson teaches that gluconolactone is an acidic compound that is gentle on the skin and provides anti-wrinkle effects on the skin, optimally functioning at a lower pH condition. The reference teaches that a combination of gluconolactone and a form of vitamin C improves skin care condition, which include improving skin exfoliation, moisturization, wrinkles and fine lines, skin sagging or hyperpigmentation from UV exposure, increase skin firmness or skin laxity. See [0018]. The reference teaches that 0.001 to 10 wt % of an O-substituted ascorbic acid or its derivatives and 0.01-20 wt % of gluconolactone or derivatives can be used in a composition comprising up to 90 wt % of an aqueous phase. See [0029]. Tomlinson teaches that suitable preservatives for the skin care composition include potassium sorbate, benzoic acid, sodium benzoate, benzyl alcohol, etc, used in an amount from 0.01 to 10 wt %. See [0096].
It would have been obvious to one of ordinary skill in the art before the time of the effective filing date of the present application to modify the teachings of Eckart and incorporate to the composition gluconolactone as motivated by Tomlinson, as the latter teaches combined use with vitamin C in improving skin exfoliation, moisturization, wrinkles and fine lines, skin sagging or hyperpigmentation from UV exposure, increasing skin firmness or skin laxity. Since both references are directed to cosmetic compositions comprising vitamin C, the skilled artisan would have had a reasonable expectation of successfully producing a stable and improved external composition that provides improved skin conditioning effects including antiaging properties, exfoliation, moisturization, etc.
Since Eckart teaches using sorbic acid salts as a preservative, using specific salt such as potassium sorbate as motivated by Tomlinson would have been prima facie obvious. Since Eckart and Tomlinson disclose cosmetically suitable preservatives including benzyl alcohol, benzoic acid salts such as sodium benzoate, etc, combining these or substituting one for the other would have been prima facie obvious.
Tomlinson further teaches aloe vera and panthenol are skin conditioning agents and used in an amount ranging from 0.1-10 wt % or 0.5 – 7 wt %. See [0091]. Including such skin conditioning agents for the expected cosmetic benefits would have been prima facie obvious.
Regarding claim 2, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, the cited references disclose the suggested concentration ranges of the cosmetic actives and the expected functions and outcome. For example, Dahm teaches that L-ascorbic acid is useful as a light protecting agent and can be used up to 10 wt %; Kim teaches flaxseed extract is used at 10wt % in formulations. Finding suitable concentrations of the ingredients to optimize the efficacy and stability by routine experimentation would have only taken ordinary skill in the art.
Regarding claim 3, although Eckart does not specifically disclose the method step of adding the components, selection of any order of mixing ingredients is prima facie obvious. See MPEP 2144.04, IV C. Furthermore, claim 3 is a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the
a product does not depend on its method of production. If the product in the product-by-
process claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different process.” In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). In this case, prior art teaches, suggests and motivates one of ordinary skill in the art to combine and make the composition as presently claimed as indicated above, and the composition of claim 3 would still be obvious regardless of the method of adding the ingredients, unless shown otherwise.
Regarding claim 4, Tomlinson teaches adjusting the composition with sodium hydroxide to 4.5 and 6.5.
Conclusion
No claims are allowed.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617