Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/11/2026 has been entered.
Status of the Claims
Claims 1, 3-13 and 15 are pending.
Withdrawn objection/ rejections:
Applicant's amendments and arguments filed 05/11/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
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 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-7 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hebditch et al. (WO03/075862A2).
Applicant claims the below claims 1 and 15 filed on 05/11/2026:
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Prior Art
Hebditch discloses a moisturizer for oily skin which reads on the claimed topical composition comprising 1% panthenol which reads on the claimed polyhydroxy compound and the amount 1% is within the range 0.01 to 25% of instant claim 5, 0.02% phytosphingosine which reads on the claimed antimicrobial lipid and the amount 0.02% is within the range of 0.001 to 1% of instant claim 1 or 0.01 to 0.1% of instant claim 5, and 2% tetrahydroxypropyl ethylenediamine (THPE) which reads on the claimed THPE and the amount 2% is within the range of 0.01 to 10% of instant claim 6 (Example 6 of prior art) and wherein the ratio 0.01 of the said lipid (0.02%) to THPE (2%) is within the range of 1:10,000 (=0.0001) to 1:10 (=0.1) of instant claim 1 or 1:20 (=0.05) to 20:1 (=20) of instant claim 7 (instant claims 1, 3-7 and 15).
In light of the foregoing, instant claims 1, 3-7 and 15 are anticipated by Hebditch.
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 of this title, 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 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 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hebditch et al. (WO03/075862A2) as applied to instant claims 1, 3-7 and 15 as evidenced by Martin et al. “Sphingosine's role in epithelial host defense: A natural antimicrobial and novel therapeutic”, Biochime 141 (2017), pp. 91-96.
Applicant claims instant claims 1 and 15 as noted above.
Prior Art
Hebditch was discussed with respect to instant claims 1, 3-17 and 15.
Hebditch does not expressly teach the formulation type of instant claim 8; and the methods of instant claims 9-12.
However, such claimed features would be implicit because Hebditch discloses the same composition as claimed, and it is well known that the moisturizer of prior art is typically formulated as a lotion, cream, ointment, spray, etc. in cosmetic or personal care product (instant claim 8); and Hebditch teaches the same composition as claimed, and in particular, phytosphingosine is natural antimicrobial in tissues such as the skin, respiratory and the oral cavity as evidenced by Martin (see e.g., “2. Review” on pages 91-92), and therefore, when the moisturizer of Hebditch is applied to the skin and/or oral cavity, it would implicitly disinfect the skin and/or oral cavity including the tongue and the teeth, and would implicitly remove the composition after application onto the said skin and/or oral cavity by rinsing with water (instant claims 9-12). In this regard, please see MPEP2112.01: "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
In light of the foregoing, instant claims 1, 3-12 and 15 are obvious over Hebditch.
Claims 1 and 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Farwick et al. (US2015/0118173A1) in view of Chu et al. (WO2018/166758A1, IDS of 05/17/2023, antimicrobial species other than those of Farwick).
Applicant claims instant claim as noted above:
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a medical/pharmaceutical/cosmetic sanitizing product research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetics, medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02); and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Farwick discloses antimicrobial active ingredients are used widely in cosmetic deodorants or antiperspirants, antidandruff and antiacne formulations, etc. ([0002]); this prior art teaches lauric acid isopropanolamide was used as antimicrobial ([0008]). Farwick teaches antimicrobial agent such as phytosphingosine, tretinoin, isotretinoin, etc. ([0035])
In the below embodiment, a deodorant formulation comprising polyol, antimicrobial lipid such as lactic acid, and THPE (see the below embodiment) and the deodorant is topically applied to skin. Although the lactic acid is not disclosed as an antimicrobial agent, it is well known that the said acid is an antibacterial agent as evidenced by Budhian et al. (claim 1 of US2018/0303090A1), and when the lactic acid is used in the formulation of Farwick, it will reveal antimicrobial properties, and thus, the range of antimicrobial agent can be derived from lactic acid in the below formulation.
In one embodiment ([0077]), the formulation has the following ingredients:
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In the above deodorant formulation embodiment, polyols of panthenol and propylene glycol read on the claimed polyhydroxy compound a) and they are present in a total amount of 2.2% that is within the range of 0.01 to 25% of instant claim 4; lactic acid reads on the claimed antimicrobial lipid b) because the lactic acid is well-known antibacterial agent and its amount 0.2% is within the range of 0.0001 to 5% of instant claim 5; Neutrol THPE reads on the claimed THEP c) and its amount 3.75% is within the range of 0.01 to 10% of instant claim 6 and therefore, the ratio of antimicrobial lipid lactic acid (0.2%) to THPE (3.75%) is about 0.05 that is within the ratio of 1:10,000 (=0.0001) to 1:10 (=0.1) of instant claim 1, and the ratio of polyhydroxy (2.2%) to THPE (3.75%) is about 0.59 that is within the ratio of 1:20 (=0.05) - 20:1 (=20) of instant claim 7; this prior art teaches an antiacne product comprises antimicrobial agent phytosphingosine ([0035]) (instant claim 3); and therefore, it would be obvious to replace lactic acid with phytosphingosine because both compounds have same or similar antimicrobial activity in the absence of evidence to the contrary (instant claim 1, in part and instant claims 4-7); the formulation is used as disinfecting or cleaning care compositions such as skincare, face care, body care, dental care, oral care, antiperspirant/deodorant product, haircare product, hairspray, hair cream, hair washing compositions, etc. in the form of cream, gel, lotion, spray, deodorant, etc. ([0022], [0026] and [0034]) (instant claim 8); application of the formulation may be advantageous wherever it is desirable to control microorganisms or their growth, e.g., hygiene articles, which can be present in the form of customary rinse-off formulations, and the composition is applied to the surface of a human or animal body part, in particular the skin, the hair or the teeth ([0040]) (instant claims 9-11); and in embodiment, the formulation can be used to reduce the growth of microorganisms, involving steps a) provision of a formulation according to the invention, in particular of a cosmetic or pharmaceutical formulation, b) application of the formulation to the surface to be treated, in particular skin, hair or teeth, in an effective amount, c) leaving the formulation on the surface to be treated for a time which suffices to ensure the reduction in the growth of the microorganisms and d) optionally washing out or rinsing off the formulation (instant claim 12).
Farwick teaches lactic acid ([0077] - Example) and phytosphingosine ([0035]) but it does not expressly teach other antimicrobial lipid of instant claim 1. The deficiency is cured by Chu.
Chu discloses an antimicrobial composition comprising essential oil and antimicrobial lipid (title) wherein the antimicrobial lipid includes sapienic acid, palmitoleic acid, sphingosine, dihydrosphingosine, phytosphingosine, and 6-hydroxysphingosine. These compositions can be delivered through very many different types of personal care products e.g. shampoo, conditioner; face wash or hand wash product; or a leave on cream/ lotion (abstract and claims 1-2 of prior art) (instant claim 1, antimicrobial agent).
It would have been obvious to modify the teachings of Farwick with antimicrobial lipid of Chu in order to enhance antimicrobial effects, and also replacing lactic acid of Farwick with other species of antimicrobial lipid would be a matter of choice or design because such choice would have yielded no more than the predictable antimicrobial effects.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined 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 at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Further, this rejection is based on the well-established proposition of patent law that no invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients, In re Sussman, 1943 C.D. 518. From MPEP 2143 A: “…all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at ___, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson ’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).”
Response to Arguments
Applicant’s arguments have been fully considered, but are not persuasive.
Applicant argues that Farwick relates to formulations containing caprylic and/or capric acid ethanolamide in combination with aluminum salt; and Farwick cites THPE without any hint on its functionality in the composition and thus the ordinary artisan would not consider it as antimicrobial booster; and instant Table 2 showed unexpected results of the claimed combination comparing panthenol alone, THPE alone and combination thereof.
The Examiner responds that the claimed composition uses “comprising” which does not exclude introduction of any ingredients including lactic acid, caprylic and/or capric acid ethanoamide, aluminum salt, essential oils, etc.; the claimed invention does not recite “THPE” as an antimicrobial booster; and the tested data in instant Table 2 is not commensurate with scope of the claimed invention because the data requires specific species of polyhydroxy compound (i.e., panthenol) and antimicrobial lipid (i.e., phytosphingosine), but ingredients of a) polyhydroxy compound and b) antimicrobial lipid recited in instant claim 1 are broad and it may not be said that any claimed ingredients a)-b) would behave similarly as tested ingredients. In this context, please see MPEP 716.02 stating that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).”
In light of the foregoing, applicant’s arguments are not persuasive.
Conclusion
All examined claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613
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