FINAL 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 the Claims
This action is in response to papers filed 07/18/2025 in which claims 12-15 were withdrawn; and claim 1 was amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-11 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 6 introduces new matter as the claim recite the limitation: “further comprising one or more benzene-1,3-diol, a derivative thereof other than phenylethyl resorcinol, or combination thereof.” There is no support in the specification for the solid cleansing composition of claim 1 to further contain one or more benzene-1,3-diol or a combination of benzene-1,3-diol and a derivative thereof other than phenylethyl resorcinol.
It is noted that paragraph [0036] of the specification discloses “the term or expression “resorcinol” may refer to resorcinol (C6H4(OH)2; Benzene-1,3-diol), a derivative thereof, or any combination thereof. This disclosure is not support for the solid cleansing composition to further contain one or more benzene-1,3-diol or a combination of benzene-1,3-diol and a derivative thereof other than phenylethyl resorcinol. Paragraph [0036] defines benzene-1,3-diol as the chemical name of resorcinol. It is noted that claim 1 recites that the solid cleansing composition contains phenylethyl resorcinol. There is no indication in paragraph [0036] that the solid cleansing composition can contain phenylethyl resorcinol and one or more benzene-1,3-diol, or a combination of phenylethyl resorcinol, benzene-1,3-diol and a derivative thereof other than phenylethyl resorcinol. Paragraph [0036] only provide support for the resorcinol (and not the solid cleansing composition) to be one or more benzene-1,3-diol, a derivative thereof other than phenylethyl resorcinol, or combination thereof.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 6 as amended at the time of filing of the instant application.
Response to Arguments
Applicant's arguments filed 07/18/2025 have been fully considered but they are not persuasive.
Applicant argues that “the support of claim 6 can be found in original paragraph [0011] of the specification which teaches that in “at least one implementation, the resorcinol may include one or more of benzene-1,3-diol, a derivative thereof, or combination thereof.” Applicant alleges that the claimed phenylethyl resorcinol and that benzene-1,3-diol is also known as (AKA) resorcinol (Remarks, bottom of page 5).
In response, the Examiner disagrees. As discussed in the standing 112(a) New Matter rejection, dependent claim 6 is drawn to further limiting the solid cleansing composition to further comprising one or more of benzene-1,3-diol, a derivative thereof other than phenylethyl resorcinol, or combinations thereof. Similar to paragraph [0063], paragraph [0011] of the specification (as cited by Applicant as support for claim 6), is also drawn to disclosing “the resorcinol may include one or more of benzene-1,3- diol, a derivative thereof, or combinations thereof.” Thus, as discussed in the standing 112(a) New Matter rejection, it is maintained that claim 1 recites that the solid cleansing composition contains phenylethyl resorcinol, and thus there is no indication in paragraph [0011] or [0036] that the solid cleansing composition can contain phenylethyl resorcinol and one or more benzene-1,3-diol, or a combination of phenylethyl resorcinol, benzene-1,3-diol and a derivative thereof other than phenylethyl resorcinol. It is maintained that paragraphs [0011] and [0036] of the specification only provide support for the resorcinol (and not the solid cleansing composition) to be one or more benzene-1,3-diol, a derivative thereof other than phenylethyl resorcinol, or combination thereof.
Accordingly, it is maintained that the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 6 as previously amended at the time of filing of the instant application.
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 6 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.
Regarding claim 6, the limitation of “further comprising one or more benzene-1,3-diol, a derivative thereof other than phenylethyl resorcinol, or combination thereof” renders the claim indefinite because benzene-1,3-diol is the UIPAC chemical name of resorcinol. It is noted that claim 1 (to which claim 6 depends from) recites that the solid cleansing composition contains phenylethyl resorcinol and thus, it is unclear how the solid cleansing composition of claim 6 can further contain one or more benzene-1,3-diol when the phenylethyl resorcinol that is part of the solid cleansing composition of claim 1 already contains benzene-1,3-diol. To obviate this rejection, it is suggested that claim 6 be canceled.
As a result, claim 6 does not clearly set forth the metes and bounds of patent protection desired.
Response to Arguments
Applicant's arguments filed 07/18/2025 have been fully considered but they are not persuasive.
Applicant argues by indicating that claim 1 was corrected to overcome the rejection under 35 USC 112(b) (Remarks, page 6, 1st paragraph).
In response, the Examiner disagrees. The amendment to claim 1 did not address the 112(b) indefinite rejection, as well as, said amendment is insufficient to obviate the 112(b) indefinite rejection. As discussed in the standing 112(b) indefinite rejection, it is maintained that it remains unclear how the solid cleansing composition of claim 6 can further contain one or more benzene-1,3-diol when the phenylethyl resorcinol in that is part of the solid cleansing composition of claim 1 already contains benzene-1,3-diol. To obviate this rejection, it is suggested that claim 6 be canceled.
As a result, for at least the reason discussed above, claim 6 remains rejected under 35 USC 112(b) as being indefinite.
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.
Claim(s) 1-3, and 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meyer et al (US 2015/0064122 A1) in view of Marini (US 2009/0263513 A1) and Loy et al (US 2013/0259815 A1).
Regarding claim 1, Meyer teaches a skin whitening composition formulated as a soap comprising kojic acid or kojic acid derivative, a resorcinol derivative that is preferably hexyl resorcinol or phenylethyl resorcinol, and a delivery vehicle (Abstract; [0007]-[0045], [0155]-[0156], [0186]-[0208], [0222], formulations 11 and 18; claims 1-16). Meyers teaches the composition further contains soaps and surfactants ([0023], [0025] and [0202]). Meyers teaches resorcinol is a whitening agent that decrease melanin content of the skin, lightens the skin tone, treats uneven skin tones, reduces dark spots, shows skin brightening efficacy, and reduce hyperpigmentation ([0010] and [0210]). Meyer teaches kojic acid is a skin lightening agent ([0155]-[0156], [0222], formulations 11 and 18). Meyer teaches kojic acid is present in a skin whitening composition in an amount from 0.0001 to 5 wt.% based on the total weight of the preparation ([0155]-[0156], and [0158]). Meyer teaches the phenylethyl resorcinol is present in a skin whitening composition in an amount from 0.1 to 0.5 wt.% ([0222]; Formulations 9-19). Meyer teaches the composition provides not only more effective in whitening skin when compared to standard products like kojic acid, but is also stable even at higher temperatures ([0007]), thereby the delivery vehicle that is present in the composition of Meyer would be in an amount that is effective to “prevent or inhibits degradation of any of the one or more whitening agents” as claimed, as the resultant composition is stable.
However, Meyer does not expressly teach the kojic acid and the phenylethyl resorcinol are present in a weight ratio of about 5:1; and the kojic acid is present in an amount of about 0.03 wt% to about 0.07 wt%, of claim 1.
Regarding the kojic acid and the phenylethyl resorcinol are present in a weight ratio of about 5:1 of claim 1, Marini teaches a cosmetic skin care composition for lightening hyperpigmentation comprising a kojic acid, a resorcinol derivative such as hexyl resorcinol, and a cosmetically acceptable vehicle, wherein the kojic acid is present in an amount from about 0.1 to about 10% by weight and the resorcinol derivative is present from about 0.1 to 5% by weight, particularly 5% by weight of a kojic acid and 1% by weight of resorcinol (Abstract; [0008]-[0020], [0037]-[0061]; Example 1; claims 1-3, 6-8, and 14-15). Marini teaches the cosmetic skin care composition is in the form of a solid soap ([0039] and [0059]). Marini teaches the composition contains surfactants ([0042]-[0045]). Marini teaches kojic acid and resorcinol provide synergistic mechanisms of lightening, where kojic acid and resorcinol act to block copper metabolism and inhibit production of tyrosinase and retinol inhibits melanin deposition in the skin ([0008]-[0010] and [0013]). Marini teaches the composition is stable ([0008]-[0010], [0014]-[0015], [0048]), thereby the cosmetically acceptable vehicle that is present in the composition of Marini would be in an amount that is effective to “prevent or inhibits degradation of any of the one or more whitening agents” as claimed, as the resultant composition is stable.
It would have been obvious to one ordinary skill in the art to optimize the weight ratio of the kojic acid and the resorcinol derivative in the composition of Meyer to a weight ratio of about 5:1, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Marini provided the guidance to do so by teaching that for a lightening composition, the amounts of kojic acid and resorcinol, can be optimize in that the kojic acid is present in an amount from about 0.1 to about 10% by weight and resorcinol is present from about 0.1 to 5% by weight, such as 5% by weight of kojic acid and 1% by weight of resorcinol, which is a 5:1 weight ratio of kojic acid to resorcinol, thereby meeting the claimed “about 5:1.” Furthermore, it is noted that the ranges of amounts of kojic acid and resorcinol, respectively, as taught in Marini, overlaps the claimed weight ratio of “about 5:1” for kojic acid and resorcinol, as well as the amounts of kojic acid and resorcinol disclosed in Meyer. Thus, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of kojic acid, as well as, the weight ratio of kojic acid to resorcinol so as to achieve a desired synergistic effect of lightening/whitening skin would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
With respect to “the kojic acid is present in an amount of about 0.03 wt% to about 0.07 wt% of claim 1, Loy teaches a soap bar composition for lightening skin comprising at least one skin lightening agents including kojic acid and resorcinol, wherein the skin lightening agents can be present in the composition in any suitable amount from about 0.001% to about 10% by weight (Abstract; [0001], [0013] and [0045]-[0054]).
It would have been obvious to one ordinary skill in the art to optimize the weight amount of kojic acid in the composition of Meyer to a weight amount of about 0.03 wt% to about 0.07 wt%, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Loy provided the guidance to do so by teaching that the amount of kojic acid in a skin lighting composition can be optimize in any amount in the range from 0.001% to about 10% by weight, which is range that overlaps the ranges in Meyer and Marini for kojic acid, as well as, the range of the claimed invention. Thus, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of kojic acid in a solid cleansing composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claims 2, Meyer teaches kojic acid comprises kojic acid derivatives (Meyer: [0155]-[0156]).
Regarding claim 3, Meyers teaches the composition further contains water in an amount of 5 to 80% by weight ([0037]-[0038]), which overlaps the claimed range of “water in an amount of from about 1 weight % to about 10 weight %.” It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of amount of water in the composition to achieve a desired solid product would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 5, as discussed above, Loy teaches and provide guidance for optimizing the amount of kojic acid to an amount from 0.001% to about 10% by weight, which overlaps the claimed range of “from about 0.04 wt% to about 0.06 wt%.” Thus, as discussed above, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of amount of kojic acid in a solid cleansing composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 6, Meyer teaches the resorcinol derivative comprises benzene-1,3-diol or mixtures of resorcinol derivatives (Meyer: [0008], [0011]; claims 1 and 2). Marini teaches the resorcinol contains benzene-1,3-diol or a derivative thereof such as 4-hexylresorcinol (Marini: [0008]-[0010], [0013], [0018]-[0020]; claims 1 and 6).
Regarding claim 7, Meyers teaches the composition further contains water in an amount of 5 to 80% by weight ([0037]-[0038]), which overlaps the claimed range of “water in an amount of from about 10 weight % to about 20 weight %.” It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of amount of water in the composition to achieve a desired solid product would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 8, as discussed above, Marini teaches and provide guidance for optimizing the amount of resorcinol to an amount of from about 0.1 to 5% by weight, or particularly 1% by weight, which overlaps or fall within the claimed range of “from about 0.005 wt% to about 2 wt%.” Thus, as discussed above, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of amount of resorcinol when used in combination with kojic acid to achieve a desired synergistic effect of lightening/whitening skin would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meyer et al (US 2015/0064122 A1) in view of Marini (US 2009/0263513 A1) and Loy et al (US 2013/0259815 A1), as applied to claim 1 above, and further in view of Mourelle Mancini et al (US 2016/0250128 A1).
The solid cleansing composition of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
However, Meyer, Marini, and Loy do not teach the kojic acid is encapsulated kojic acid of claim 4.
Regarding claim 4, Mourelle Mancini teaches a cosmetic composition comprising a skin whitening compound such as kojic acid, wherein the skin whitening compound is encapsulated in microcapsule or nanocapsule (Abstract; [0015]-[0020], [0029], [0057]; claims 1 and 18). Mourelle Mancini teaches the encapsulated skin whitening compound provides a highly efficient delivery system with sustained and controlled release of the encapsulated active ingredient at target site, and also reaches the target site quickly, thereby optimizing the application and bioavailability of the encapsulated active ingredient ([0018]).
It would have been obvious to one of ordinary skill in the art to incorporate encapsulated kojic acid as the kojic acid in the composition of Meyer in view of Marini and Loy, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Mourelle Mancini provided the guidance to do so by teaching that whitening compound such as kojic acid can be encapsulated in microcapsule or nanocapsule, and such encapsulated kojic acid is superior to non-encapsulated kojic acid, as encapsulated skin whitening compound provides a highly efficient delivery system with sustained and controlled release of the encapsulated active ingredient at target site, and also reaches the target site quickly, thereby optimizing the application and bioavailability of the encapsulated active ingredient. Thus, an ordinary artisan seeking maximize the efficiency and bioavailability, as well as, provide controlled release of kojic acid at the target site would have looked to using encapsulated kojic acid as the kojic acid in the composition of Meyer in view of Marini and Loy, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meyer et al (US 2015/0064122 A1) in view of Marini (US 2009/0263513 A1) and Loy et al (US 2013/0259815 A1), as applied to claim 1 above, and further in view of Bortolai et al (US 2017/0049682 A1).
The composition of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 9, Marini teaches a cosmetic skin care composition for lightening hyperpigmentation comprising a kojic acid, a resorcinol derivative, and a cosmetically acceptable vehicle, wherein the kojic acid is present in an amount from about 0.1 to about 10% by weight and the resorcinol is present from about 0.1 to 5% by weight, particularly 5% by weight of a kojic acid and 1% by weight of resorcinol (Abstract; [0008]-[0020], [0037]-[0061]; Example 1; claims 1-3, 6-8, and 14-15). Marini teaches the cosmetic skin care composition is in the form of a solid soap ([0039] and [0059]). Marini teaches kojic acid and resorcinol provide synergistic mechanisms of lightening, where kojic acid and resorcinol act to block copper metabolism and inhibit production of tyrosinase and retinol inhibits melanin deposition in the skin ([0008]-[0010] and [0013]). Marini teaches the composition is stable ([0008]-[0010], [0014]-[0015], [0048]).
It would have been obvious to one of ordinary skill in the art to optimize the weight amount of kojic acid in the composition of Meyer to a weight amount of about 0.05 wt%, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Loy provided the guidance to do so by teaching that the amount of kojic acid in a skin lighting composition can be optimize in any amount in the range from 0.001% to about 10% by weight. Thus, an ordinary artisan would have reasonable expectation of success in routinely optimizing the weight amount of kojic acid in the composition of Meyer to an amount of about 0.05 wt% as claimed to achieve a desired skin lightening composition, as Meyer suggested that it is feasible to do so. Absent some demonstration of unexpected results showing criticality from the claimed amount, the optimization of the weight amount of kojic acid in a solid cleansing composition would have been obvious before the effective filing date of Applicant’s invention. “Where 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP §2144.05 (I)-(II).
However, Meyers, Marini, and Loy do not teach the delivery vehicle is soap chips containing palm oil, palm stearin, and palm kernel oil of claim 9.
Regarding the delivery vehicle is soap chips containing palm oil, palm stearin, and palm kernel oil of claim 9, Bortolai teaches a soar bar formulation comprising soaps containing palm oil, palm stearin, and palm kernel oil (Abstract; [0012]-[0041]).
It would have been obvious to one of ordinary skill in the art to include soaps containing palm oil, palm stearin, and palm kernel oil as the soaps component of the composition of Meyers in view of Marini and Loy, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Bortolai provided the guidance to do so by teaching that soaps containing palm oil, palm stearin, and palm kernel oil are standard ingredients used in formulating a soap bar. Thus, an ordinary artisan seeking to produce a soap bar would have looked to including soaps containing palm oil, palm stearin, and palm kernel oil in the composition of Myers in view of Marini and Loy, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 10, as discussed above, Marini teaches the amounts of kojic acid and resorcinol, can be optimize in that the kojic acid is present in an amount from about 0.1 to about 10% by weight and resorcinol is present from about 0.1 to 5% by weight, such as 5% by weight of kojic acid and 1% by weight of resorcinol, which is a 5:1 weight ratio of kojic acid to resorcinol.
Regarding claim 11, Bortolai teaches the soaps contains a mixture of about 10% to about 40% of palm kernel oil, and about 60% to about 90% of palm stearin and palm oil ([0029]-[0041]).
It would have been obvious to one of ordinary skill in the art to optimize the content of palm oil, palm stearin, and palm kernel oil in the soaps of Bortolai that is included in the composition of Meyers, to the contents of about 42.5% palm oil, about 42.5% palm stearin, and about 15% palm kernel oil, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Bortolai teaches that the contents of palm kernel oil, palm stearin, and palm oil in a bar soap can be optimize to amounts from about 10% to about 40% of palm kernel oil, and about 60% to about 90% of palm stearin and palm oil. Thus, an ordinary artisan would have reasonable expectation of success in routinely optimizing the contents of palm oil, palm stearin, and palm kernel oil included in the composition of Meyer to the contents of about 42.5% palm oil, about 42.5% palm stearin, and about 15% palm kernel oil, as claimed so as to achieve a desired soap bar, as Bortolai suggested that it is feasible to do so. Absent some demonstration of unexpected results showing criticality from the claimed amount, the optimization of the contents of palm oil, palm stearin, and palm kernel oil in a solid cleansing composition would have been obvious before the effective filing date of Applicant’s invention. “Where 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP §2144.05 (I)-(II).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 07/18/2025 have been fully considered but they are not persuasive.
Applicant argues that Meyers fails to teach or suggest claim 1 as a whole, particularly “wherein the kojic acid and the phenylethyl resorcinol are present in a weight ratio of about 5:1” in claim 1 as amended. Applicant alleges that the kojic acid and the phenylethyl resorcinol in Meyer’s formulations 11 and 19 are present in a weight ratio of 1:1 and 2:1. (Remarks, page 7).
In response, the Examiner disagrees. The 103 rejection over claim 1 is based on the combined teachings of Meyer, Marini, and Loy. Meyer taught the claimed combination of kojic acid and phenylethyl resorcinol (see 103 rejection, page 8 of this office action). Marini teaches and provide guidance for the weight ratio of kojic acid to resorcinol to be 5:1, which is the same weight ratio used in Applicant’s composition (6). Marini further established that the combination of kojic acid and resorcinol in said weight ratio of 5:1 provides synergistic in lightening skin or reducing hyperpigmentation of the skin (Marini: Abstract; [0008]-[0020], [0037]-[0061]; Example 1; claims 1-3, 6-8, and 14-15). Also see 103 rejection, pages 9-10 of this office action.
As previously discussed, it is reiterated that while Applicant alleges that Marini used a combination of kojic acid dipalmitate and hexyl resorcinol (and not kojic acid and phenylethyl resorcinol), Meyers already taught the claimed kojic acid and phenylethyl resorcinol (see 103 rejection, pages 7-8 of this office action). Meyers also indicated that the suitable kojic acid can be the parent compound, kojic acid or a kojic acid derivative such as kojic acid dipalmitate ([0055]-[0056]). Furthermore, Meyers also indicated that aside from phenylethyl resorcinol, hexylresorcinol is also suitable for use as the resorcinol ([0011]; claim 2). The teaching from Marini drawn to using kojic acid dipalmitate as the kojic acid and hexyl resorcinol as the resorcinol in a weight ratio of 5:1 of kojic acid to resorcinol is indeed sufficient guidance and motivation for optimizing the kojic acid and resorcinol derivative used in Meyer to the a weight ratio of 5:1, as Meyer not only teach weight amounts of kojic acid and resorcinol derivative that encompassed the weight ratio of 5:1, but also teaches weight amounts that substantially overlaps the weight amounts of kojic acid and resorcinol of Marini (see 103 rejection, pages 8-10 of this office action). Furthermore, Meyer also indicated that the kojic acid dipalmitate and hexyl resorcinol used in the lighting lotion of Example 1 from Marini are suitable sources of kojic acid and resorcinol when used in a skin lightening/whitening composition (Meyer: [0011], [0055]-[0056]; claim 2). Thus, regardless of whether it is a kojic acid or a kojic acid derivative that is used as the kojic acid source, the active principle is kojic acid and whether it is hexyl resorcinol or phenylethyl resorcinol as the resorcinol derivative, the active principle is resorcinol. As such, there is reasonable expectation that the weight ratio of kojic acid and phenylethyl resorcinol of Meyer can be optimize to 5:1 in a skin lightening/whitening composition based on the guidance from Marini, absence evidence to the contrary providing comparative data showing that a combination of kojic acid dipalmitate and hexylresorcinol in a weight ratio of 5:1 as taught in Marini would not achieve the significant reduction of melanin in the epidermis to the same extent as shown in Applicant’s data from Tables 1-8 of the specification. It is noted that the comparative data in Tables 1-8 of the specification, to which Applicant’s alleged as showing unexpected superior results of significant reduction of melanin in the epidermis were drawn to comparing a combination of kojic acid and phenylethyl resorcinol to kojic acid alone and phenylethyl resorcinol alone. As such, in the absence of evidence to the contrary, regardless of the sources of kojic acid and resorcinol, it is the combination of the active principles kojic acid and resorcinol that provides the improved skin lightening/whitening properties.
Applicant argues unexpected results shown in Table 4 of paragraph [0094] of the specification and alleges that Applicant has “proved that the claimed weight ratio of about 5:1 demonstrates unexpected results as compared to Myer’s weight ratio of 1:1 or 2:1.” Applicant alleges that paragraph [0104] states that “[i]t was further surprisingly and unexpectedly discovered that bar soap composition (6), including about 0.01 wt% phenylethyl resorcinol and about 0.05 wt% kojic acid (i.e., ratio of 1:5), significantly reduced melanin in the epidermis. This was especially surprisingly since bar soap composition (7), which also included about 0.01 wt% phenylethyl resorcinol and about 0.01 wt% kojic acid (i.e., ratio of 1:1), while demonstrating reduced amount of melanin, did not signifcantly reduce the amount of melanin as compared to the control bar soap composition (1).” Applicant cited MPEP 716.02(a)(I) to support Applicant’s position. (Remarks, pages 7-8).
In response, the Examiner disagrees. Applicant citation of MPEP 716.02(a)(I) does not support Applicant’s position of unexpected results because per MPEP 716.02(a)(I), a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.).
As discussed above, Marini teaches and provide guidance for the weight ratio of kojic acid to resorcinol to be 5:1, which is the same weight ratio used in Applicant’s composition (6). Marini further established that the combination of kojic acid and resorcinol in said weight ratio of 5:1 provides synergistic in lightening skin or reducing hyperpigmentation of the skin (Marini: Abstract; [0008]-[0020], [0037]-[0061]; Example 1; claims 1-3, 6-8, and 14-15). Also see 103 rejection, pages 9-10 of this office action. Thus, Applicant’s alleged unexpected results using a combination of kojic acid and resorcinol derivative in a weight ratio of 5:1 in significantly reducing melanin in the epidermis, is an expected result from the teachings of Marini. As such, it is noted that "[e]xpected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
As discussed above, it is reiterated that while Applicant alleges that Marini used a combination of kojic acid dipalmitate and hexyl resorcinol (and not kojic acid and phenylethyl resorcinol), Meyers already taught the claimed kojic acid and phenylethyl resorcinol (see 103 rejection, pages 7-8 of this office action). Meyers also indicated that the suitable kojic acid can be the parent compound, kojic acid or a kojic acid derivative such as kojic acid dipalmitate ([0055]-[0056]). Furthermore, Meyers also indicated that aside from phenylethyl resorcinol, hexylresorcinol is also suitable for use as the resorcinol ([0011]; claim 2). The teaching from Marini drawn to using kojic acid dipalmitate as the kojic acid and hexyl resorcinol as the resorcinol in a weight ratio of 5:1 of kojic acid to resorcinol is indeed sufficient guidance and motivation for optimizing the kojic acid and resorcinol derivative used in Meyer to the a weight ratio of 5:1, as Meyer not only teach weight amounts of kojic acid and resorcinol derivative that encompassed the weight ratio of 5:1, but also teaches weight amounts that substantially overlaps the weight amounts of kojic acid and resorcinol of Marini (see 103 rejection, pages 8-10 of this office action). Furthermore, Meyer also indicated that the kojic acid dipalmitate and hexyl resorcinol used in the lighting lotion of Example 1 from Marini are suitable sources of kojic acid and resorcinol when used in a skin lightening/whitening composition (Meyer: [0011], [0055]-[0056]; claim 2). Thus, regardless of whether it is a kojic acid or a kojic acid derivative that is used as the kojic acid source, the active principle is kojic acid and whether it is hexyl resorcinol or phenylethyl resorcinol as the resorcinol derivative, the active principle is resorcinol. As such, there is reasonable expectation that the weight ratio of kojic acid and phenylethyl resorcinol of Meyer can be optimize to 5:1 in a skin lightening/whitening composition based on the guidance from Marini, absence evidence to the contrary providing comparative data showing that a combination of kojic acid dipalmitate and hexylresorcinol in a weight ratio of 5:1 as taught in Marini would not achieve the significant reduction of melanin in the epidermis to the same extent as shown in Applicant’s data from Tables 1-8 of the specification. It is noted that the comparative data in Tables 1-8 of the specification, to which Applicant’s alleged as showing unexpected superior results of significant reduction of melanin in the epidermis were drawn to comparing a combination of kojic acid and phenylethyl resorcinol to kojic acid alone and phenylethyl resorcinol alone. As such, in the absence of evidence to the contrary, regardless of the sources of kojic acid and resorcinol, it is the combination of the active principles kojic acid and resorcinol that provides the improved skin lightening/whitening properties.
To date, Applicant has failed to provide objective evidence in form of comparative data showing that a combination of kojic acid dipalmitate and hexylresorcinol in a weight ratio of 5:1 as taught in Marini would not achieve the significant reduction of melanin in the epidermis to the same extent as shown in Applicant’s data from Tables 1-8 of the specification.
Applicant argues by alleging that “[t]he kojic acid and the phenylethyl resorcinol in Marini are present in a weight ratio of from 0.02:1 to 100:1 which is broad range as compared to the claimed sub-range of "about 5:1." Kojic acid in Marini is present in an amount of 0.1%-10%, which is much greater than the claimed "about 0.03 wt% to about 0.07 wt%." For example, Marini's lightening lotion in Example 1 contains kojic dipalmitate (5.00%) and hexylresorcinol (1.00%).” Applicant goes on to allege that “Kojic dipalmitate is different from the claimed kojic acid per se. Hexylresorcinol is also different from the claimed phenylethyl resorcinol. The molecular weight of kojic acid dipalmitate is 618.9 g/mol while that for kojic acid is 142.11 g/mol.” Thus, Applicant alleges that Marini fails to teach or suggest “"wherein the whitening agents comprise a combination of a kojic acid and a phenylethyl resorcinol ... wherein the kojic acid and the phenylethyl resorcinol are present in a weight ratio of about 5:1... wherein the kojic acid is present in an amount of about 0.03 wt% to about 0.07 wt%, based on the total weight of the solid cleansing composition" in claim 1 as amended.” (Remarks, pages 8-10).
In response, the Examiner disagrees. Applicant’s amendments to claim 1 to include the chemical structure of kojic acid and phenylethyl resorcinol do not change the scope of claim 1, as these chemical structures are inherent to the claimed “kojic acid” and “phenylethyl resorcinol,” respectively, that have been previously presented in claim 1.
As discussed above, Marini established that the combination of kojic acid and resorcinol in said weight ratio of 5:1 provides synergistic in lightening skin or reducing hyperpigmentation of the skin (Marini: Abstract; [0008]-[0020], [0037]-[0061]; Example 1; claims 1-3, 6-8, and 14-15). Also see 103 rejection, pages 9-10 of this office action. Thus, Applicant’s alleged unexpected results using a combination of kojic acid and resorcinol derivative in a weight ratio of 5:1 in significantly reducing melanin in the epidermis, is an expected result from the teachings of Marini. As such, it is noted that "[e]xpected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
As discussed above, it is reiterated that while Applicant alleges that Marini used a combination of kojic acid dipalmitate and hexyl resorcinol (and not kojic acid and phenylethyl resorcinol), Meyers already taught the claimed kojic acid and phenylethyl resorcinol (see 103 rejection, pages 7-8 of this office action). Meyers also indicated that the suitable kojic acid can be the parent compound, kojic acid or a kojic acid derivative such as kojic acid dipalmitate ([0055]-[0056]). Furthermore, Meyers also indicated that aside from phenylethyl resorcinol, hexylresorcinol is also suitable for use as the resorcinol ([0011]; claim 2). The teaching from Marini drawn to using kojic acid dipalmitate as the kojic acid and hexyl resorcinol as the resorcinol in a weight ratio of 5:1 of kojic acid to resorcinol is indeed sufficient guidance and motivation for optimizing the kojic acid and resorcinol derivative used in Meyer to the a weight ratio of 5:1, as Meyer not only teach weight amounts of kojic acid and resorcinol derivative that encompassed the weight ratio of 5:1, but also teaches weight amounts that substantially overlaps the weight amounts of kojic acid and resorcinol of Marini (see 103 rejection, pages 8-10 of this office action). Furthermore, Meyer also indicated that the kojic acid dipalmitate and hexyl resorcinol used in the lighting lotion of Example 1 from Marini are suitable sources of kojic acid and resorcinol when used in a skin lightening/whitening composition (Meyer: [0011], [0055]-[0056]; claim 2). Thus, regardless of whether it is a kojic acid or a kojic acid derivative that is used as the kojic acid source, the active principle is kojic acid and whether it is hexyl resorcinol or phenylethyl resorcinol as the resorcinol derivative, the active principle is resorcinol. As such, there is reasonable expectation that the weight ratio of kojic acid and phenylethyl resorcinol of Meyer can be optimize to 5:1 in a skin lightening/whitening composition based on the guidance from Marini, absence evidence to the contrary providing comparative data showing that a combination of kojic acid dipalmitate and hexylresorcinol in a weight ratio of 5:1 as taught in Marini would not achieve the significant reduction of melanin in the epidermis to the same extent as shown in Applicant’s data from Tables 1-8 of the specification. It is noted that the comparative data in Tables 1-8 of the specification, to which Applicant’s alleged as showing unexpected superior results of significant reduction of melanin in the epidermis were drawn to comparing a combination of kojic acid and phenylethyl resorcinol to kojic acid alone and phenylethyl resorcinol alone. As such, in the absence of evidence to the contrary, regardless of the sources of kojic acid and resorcinol, it is the combination of the active principles kojic acid and resorcinol that provides the improved skin lightening/whitening properties.
To date, Applicant has failed to provide objective evidence in form of comparative data showing that a combination of kojic acid dipalmitate and hexylresorcinol in a weight ratio of 5:1 as taught in Marini would not achieve the significant reduction of melanin in the epidermis to the same extent as shown in Applicant’s data from Tables 1-8 of the specification.
Applicant argues by alleging that Marini fails to teach or suggest the unexpected results as described in the specification. (Remarks, page 10, 2nd paragraph).
In response, the Examiner disagrees. As discussed above, it is reiterated that that Marini established that the combination of kojic acid and resorcinol in said weight ratio of 5:1 provides synergistic in lightening skin or reducing hyperpigmentation of the skin (Marini: Abstract; [0008]-[0020], [0037]-[0061]; Example 1; claims 1-3, 6-8, and 14-15). Also see 103 rejection, pages 9-10 of this office action. Thus, Applicant’s alleged unexpected results using a combination of kojic acid and resorcinol derivative in a weight ratio of 5:1 in significantly reducing melanin in the epidermis, is an expected result from the teachings of Marini. As such, it is noted that "[e]xpected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
To date, Applicant has failed to provide objective evidence in form of comparative data showing that a combination of kojic acid dipalmitate and hexylresorcinol in a weight ratio of 5:1 as taught in Marini would not achieve the significant reduction of melanin in the epidermis to the same extent as shown in Applicant’s data from Tables 1-8 of the specification.
Applicant argues that Loy, Mourelle Mancini and Bortolai “are completely silent on the combination of kojic acid and phenylethyl resorcinol, let alone "wherein the kojic acid and the phenylethyl resorcinol are present in a weight ratio of about 5:1... wherein the kojic acid is present in an amount of about 0.03 wt% to about 0.07 wt%, based on the total weight of the solid cleansing composition" in claim 1 as amended.” (Remarks, page 10, 3rd paragraph).
In response, the Examiner disagrees. As discussed above, claim 1 as amended remained to be rendered obvious by the combined teachings of Meyer, Marini, and Loy. See 103 rejection, pages 8-11 of this office action, said pages being incorporated herein in its entirety.
As a result, for at least the reaso