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 .
Formal Matters
Receipt of Applicant’s response, dated 09/16/2025, is acknowledged.
Claims 1, 3-7, 11-15, and 21-27 are pending.
Claims 2, 8-10, and 16-20 are canceled.
Claims 1, 3-7, 11-12, and 15 are amended.
Claims 21-27 are new.
Claim 15 remains withdrawn from consideration as being drawn to a nonelected invention.
Claims 5-7 remain withdrawn from consideration as being drawn to nonelected species.
Claims 1, 3-4, 11-14, and 21-27 are under consideration in the instant Office action to the extent of the elected species, i.e., the kit comprises three compositions: (1) an oil-in-water emulsion, (2) a water-in-silicone emulsion, and (3) an anhydrous composition; the oil-in-water emulsion comprises retinol; and the anhydrous composition comprises the combination of ascorbic acid and ferulic acid.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objection to the specification regarding the recitation of trade names and/or marks without the proper symbol on at least pages 152-155 of the specification set forth in the Office action dated 05/20/2025 is hereby withdrawn in light of Applicant’s amendments to the specification.
Claim Objections
The objections to claim 1 represented by bullet points 2 and 3 set forth in the Office action dated 05/20/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 1-4 and 8-14 over Matsuda et al in view of Yabusaki, Chiou et al, Asahi et al, and Baek set forth in the Office action dated 05/20/2025 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the claims.
OBJECTIONS MAINTAINED
Specification
The disclosure remains objected to because the table spanning pages 64 and 65 of the specification is difficult to read due to the decimals taking up more space than the column width. Applicant has not taken any action regarding this objection which was set forth in the Office action dated 05/20/2025. Applicant is requested to amend the table to improve its readability, e.g., the table may be formatted landscape on the page to remedy the issue of available column width.
Appropriate correction is required.
Claim Objections
Claim 1 remains objected to because of the incomplete remedy of the typesetting objection which was set forth in the Office action dated 05/20/2025, i.e., line 7 remains indented under (b) rather than consistent with the rest of the claim. Applicant is requested to ‘align left’ line 7 in order to overcome this objection.
Appropriate correction is required.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Claim 1 is objected to because in line 16 “, based on the total weight of the water in silicone emulsion” should be added following the recitation of “about 15 to about 45 wt. % of hydroxypropyl tetrahydropyrantriol” in order to improve claim readability and consistency (e.g., See claim 24);
Claims 26-27 are objected to because each recitation of temperature should be amended for grammatical correctness, i.e., a space should be inserted between each number and “°C” (e.g., “25°C” should be amended to “25 °C”); and
Claim 26 is objected to because “Pa.s” in line 2 should be amended to “Pa·s” for grammatical correctness, i.e., ‘Pascal-seconds’ is abbreviated with a ‘middle dot’ (vertically centered dot), not a period.
Appropriate correction is required.
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, 3-4, 11-14, and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al (US 2020/0281340 A1, published 09/10/2020, cited in Notice of References Cited dated 05/20/2025) in view of Yabusaki (EP 3903762 A1, published 11/03/2021, cited in Notice of References Cited dated 05/20/2025), Chiou et al (WO 2015/095711 A1, published 06/25/2015), and Baek (WO 2021/212077 A2, published 10/21/2021, priority date of 04/16/2020, cited in Notice of References Cited dated 05/20/2025) as evidenced by Basco Usa (“Viscosity Charts & Conversion Tables”, cited in Notice of References Cited dated 05/20/2025).
Matsuda et al teach a cosmetic kit including a plurality of cosmetic bases (i.e., cosmetic compositions) used for customized cosmetics which are prepared by mixing the plurality of cosmetic bases in accordance with recipe information determined on the basis of user unique information (See entire document, e.g., Abstract, [0041]). Because a plurality of cosmetic bases included in the kit have original features and are prepared to be mixable with each other, a user may, easily and without stress, mix cosmetic bases dispensed according to recipe information based on user-unique information and obtain a customized cosmetic (e.g., [0013]).
The cosmetic kit of Matsuda et al is used with a cosmetic dispenser including a plurality of cartridge slots configured to hold cartridges containing cosmetic bases, each cartridge detachable with each cartridge slot; and a dispenser configured to dispense the cosmetic base contained in the cartridge held by each of the plurality of cartridge slots according to recipe information indicating a usage amount or the like of each cosmetic base, the usage amount determined based on user-unique information (e.g., [0040]).
Suitable cosmetic bases may have forms such as aqueous, oil, oil-in-water type emulsions, water-in-oil type emulsions, and multiple emulsions (e.g., [0507]). Each cosmetic base is preferably contained in a separate container, each cosmetic base is contained in a cartridge capable of being held by a slot of the cosmetic dispenser, and the cosmetic base contained in each cartridge may be used individually and/or may be mixed with the cosmetic bases contained in other cartridges (e.g., [0096], [0508]).
The cosmetic dispenser of the kit includes a memory, processor, an input and output interface, and a communication interface (e.g., [0079]), wherein the memory is configured to store a program and data (e.g., [0080]). The program may include an operating system program and a program of application for executing information processing (e.g., [0081]-[0085]). The data may include a database referred to in information processing and data obtained by executing information processing (e.g., [0086]-[0088]). The processor is configured to activate a program stored in the memory, the input and output interface is configured to receive a user instruction from e.g., a touch panel and output information to the output device e.g., a display, and the communication interface is configured to control communication between the cosmetic dispenser and the server (e.g., [0089]-[0091]).
Matsuda et al do not teach the kit specifically including any of 1) an oil in water emulsion comprising at least 40 wt. % of water and about 1 to about 20 wt. % of an oil phase and comprising retinol, 2) a water in silicone emulsion comprising at least 70 wt. % of an aqueous phase (internal phase) and comprising about 15 to about 45 wt. %, or about 20 to about 40 wt. %, of hydroxypropyl tetrahydropyrantriol, one or more silicone oils being dimethicone, one or more non-emulsifying silicone elastomers being a dimethicone crosspolymer, one or more dimethicone copolyol emulsifiers comprising at least one oxyethylene group and at least one oxypropylene group, water from about 25 to about 45 wt. %, and one or more water-soluble solvents being selected from propylene glycol, butylene glycol, pentylene glycol, dipropylene glycol, ethanol, isopropanol, and tert-butyl alcohol, and/or 3) an anhydrous composition wherein at least 90 wt. % of ingredients forming the anhydrous composition have a log P value of 2 or less and comprising ascorbic acid and ferulic acid.
These deficiencies are made up for in the teachings of Yabusaki, Chiou et al, and Baek.
Yabusaki teaches that cosmetic products containing vitamins in the vitamin A family, such as retinol, as beauty components exhibit wrinkle alleviation effects; however, retinol is an extremely unstable substance and tends to be easily degraded by heat, light, air (i.e., oxygen) and the like (See entire document, e.g., [0002]). Yabusaki teaches that it is common for cosmetic products to blend retinol together with an antioxidant to suppress the deterioration of retinol due to oxidation; however, the antioxidant itself is oxidized over time, and discoloration and odor generation form (e.g., [0003]). Yabusaki teaches a retinol-containing oil-in-water emulsion cosmetic using substantially no antioxidants that has excellent emulsion stability while stably retaining retinol, that has a good fitting sensation when applied, and that has a watery and fresh feeling in use achieved by adjusting the blended amount of oils and the percentage of the total weight of oils occupied by ester oils so as to be within prescribed ranges in an oil-in-water emulsion cosmetic containing retinol and alkyl-modified carboxyvinyl polymer as active ingredients (e.g., [0010]).
The oil-in-water emulsion cosmetic of Yabusaki contains (a) retinol; (b) an alkyl-modified carboxyvinyl polymer; and (c) an oil, wherein a blended amount of the (c) oil is 10% to 40% by mass relative to a total amount of the cosmetic, and the (c) oil contains at least 50% by mass of an ester oil relative to a total amount of the oil (e.g., Abstract, [0011]). The oil-in-water emulsion cosmetic of Yabusaki represented as Example 1 in Table 1 comprises > 50 mass % of water (e.g., [0051]-[0052], [0057]). The cosmetic of Yabusaki is suitable to be provided in forms including a cream or a beauty lotion for use on the face, particularly around the eyes (e.g., [0049]).
Chiou et al teach a water-in-oil emulsion, specifically water-in-dimethicone (i.e., a silicone oil) emulsion, cosmetic composition capable of stably carrying water-soluble active ingredients, which is also tactilely pleasing to consumers upon application, wherein when deposited onto a target keratinous substrate, the cream composition quickly releases the aqueous phase containing the water-soluble ingredients in the form of bead-like droplets, thereby enabling the water-soluble ingredients present in the aqueous phase to be forced into the surface of the target keratinous substrate (See entire document, e.g., [0007], [0026], [0046]). Chiou et al define “stable” as meaning that the emulsion remains intact without phase separation, color and/or odor change over the stability monitoring period and the water-soluble active ingredients remain solubilized in the water phase without crystallization or precipitation out of the emulsion (e.g., [0021]).
The aqueous phase, which comprises at least one water-soluble ingredient, water, and other aqueous phase ingredients, is present from about 60% to about 92% based upon the total weight of the composition (e.g., [0028], [0044]). The aqueous phase comprises at least one water-soluble active ingredient from about 0.1% to about 20% based upon weight of the composition (e.g., [0031]). Suitable water-soluble active ingredients include hydroxypropyl tetrahydropyrantriol (e.g., [0068], claim 12). The oil phase, which comprises dimethicone, is present from about 1% to about 25% based upon weight of the composition (e.g., [0047]). The oil phase may comprise a dimethicone crosspolymer as well as dimethicone (and) PEG/PPG- 18/18 dimethicone available under the tradename of ES-5226 DM from Dow Corning Corporation (Midland, Michigan) (e.g., [0051], [0054]). The composition may comprise propylene glycol/propanediol (e.g., [0069]).
Baek teaches that ascorbic acid (also commonly known as vitamin C) is a potent antioxidant widely used in topical compositions to treat or prevent a range of cosmetic and/or dermatological conditions as well as to reduce the appearance of chronological and/or environmentally-caused skin aging, such as facial fine lines and wrinkles, dyschromia/uneven pigmentation, and dark circles under the eyes) and that vitamin C can help neutralize the damaging effects of free radicals and plays a role in stimulating the growth and bundling of collagen, important in maintaining skin elasticity (See entire document, e.g., [0003]). However, topical products being water-containing formulations of vitamin C are unstable (e.g., [0006]).
Baek has discovered that the addition of cinnamic acids or derivatives thereof, such as ferulic acid, and urea with ascorbic acid in a non-aqueous solvent provides enhanced stabilization to the formulation (e.g., [0034]). In addition to the added stability, the specific combination of ferulic acid with vitamin C can provide two to four times as much photoprotection against ultraviolet radiation thus helping to minimize the harmful effects (e.g., erythema or formation of sunburn cells) caused by ultraviolet radiation (e.g., [0073]).
The non-aqueous topical formulations of Baek include stabilizing vitamin C formulations in a variety of forms, including creams for cosmetic use for addressing dermatological conditions, and/or for reducing the appearance of chronological and/or environmentally-caused skin aging, such as facial fine lines and wrinkles, dyschromia or uneven pigmentation, and dark circles under the eyes (e.g., [0015], [0025], [0022]). Non-aqueous is defined by Baek to mean substantially anhydrous, e.g., 0.1% or less by weight water (e.g., [00268]). Baek teaches a storage stable non-aqueous topical formulation comprising about 15% by weight ascorbic acid, about 8% by weight urea agent, about 1% by weight ferulic acid, and a solvent that comprises 1,3-propanediol (e.g., Claim 3).
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 provide a cosmetic kit based on the teaching of Matsuda et al comprising 1) the aforementioned oil-in-water emulsion cream cosmetic of Yabusaki, 2) the aforementioned water-in-dimethicone emulsion cream cosmetic of Chiou et al, and 3) the aforementioned non-aqueous (i.e., substantially anhydrous) topical cream formulation of Baek, wherein each of compositions 1-3 are contained in separate cartridges as part of the kit. One of ordinary skill in the art would have been motivated to do so in order to provide a consumer with a customized cosmetic that provides the benefits of each composition, e.g., wrinkle alleviation effect of retinol taught by Yabusaki, stable carrying of water-soluble active ingredients such as hydroxypropyl tetrahydropyrantriol in a form tactilely pleasing to consumers upon application as taught by Chiou et al, effects of maintaining skin elasticity and reducing pigmentation and dark circles of ascorbic acid taught by Baek, and increased UV photoprotection of ferulic acid added in addition to ascorbic acid taught by Baek (see supra), without the drawbacks of incompatibility issues of the ingredients present in a singular formulation, e.g., the incompatibility of ascorbic acid with water-containing formulations taught by Baek (see supra). There would have been a reasonable expectation of success in doing so because Matsuda et al teach the compatibility of the cosmetic kit with a variety of forms of cosmetic compositions.
The modified cosmetic kit of Matsuda et al comprising the oil-in-water emulsion cosmetic of Yabusaki, the water-in-dimethicone emulsion cosmetic of Chiou et al, and the non-aqueous (i.e., substantially anhydrous) topical formulation of Baek as a customized cosmetic, renders obvious the kit of instant claims 1, 3-4, 11-14, and 21-27.
The oil-in-water emulsion cosmetic of Yabusaki renders obvious the oil in water emulsion of the instant claims because it comprises a) retinol, b) an oil phase from 10% to 40% by mass relative to a total amount of the cosmetic, and c) > 50 mass % of water. 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 water-in-dimethicone emulsion cosmetic of Chiou et al renders obvious the water in silicone emulsion of the instant claims because it comprises a) at least one water-soluble active ingredient such as hydroxypropyl tetrahydropyrantriol from about 0.1% to about 20% based upon weight of the composition, b) dimethicone, c) a dimethicone crosspolymer, d) dimethicone (and) PEG/PPG- 18/18 dimethicone available under the tradename of ES-5226 DM from Dow Corning Corporation, e) propylene glycol/propanediol, and f) an aqueous phase, which comprises water, from about 60% to about 92% based upon the total weight of the composition. Specifically regarding the limitation of instant claim 25, it can be understood that the aqueous phase of Chiou et al, which comprises at least one water-soluble ingredient, water, and other aqueous phase ingredients, being present from about 60% to about 92% based upon the total weight of the composition overlaps the required range of water from about 25 wt. % to about 45 wt. % based on the total weight of the emulsion. 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)). Further, it can be understood by one skilled in the art that the stable cosmetic of Chiou et al, wherein stable is defined by Chiou et al as meaning that the emulsion remains intact without phase separation, color and/or odor change over the stability monitoring period and the water-soluble active ingredients remain solubilized in the water phase without crystallization or precipitation out of the emulsion renders obvious the limitation of instant claim 27.
The non-aqueous topical formulation of Baek renders obvious the anhydrous composition of the instant claims because it comprises a) ascorbic acid, b) ferulic acid, and c) ingredients forming the composition having a log P value of 2 or less (1,3-Propanediol is a suitable polyhydric alcohol for use in the anhydrous composition of the instant claims).
The cosmetics of Yabusaki, Chiou et al, and Baek meet the functional limitations of the instant claims because each of the cosmetics can be formulated as creams for the face and around/under the eyes (see supra) and face creams necessarily have viscosities of 10,000 cPs as evidenced by Basco Usa (see “Face Cream” in “Pharmaceuticals”). 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)). Further, because each of the cosmetics of Yabusaki, Chiou et al, and Baek necessarily have viscosities of 10,000 cPs, each of the cosmetics of Yabusaki, Chiou et al, and Baek would necessarily have a maximum yield stress of 9,000 Pa.
The modified cosmetic kit of Matsuda et al renders obvious the kit of instant claims 12-14 because the modified cosmetic kit of Matsuda et al is an apparatus for independently dispensing a specified amount of each of a plurality of cosmetic compositions, wherein the apparatus comprises a dispensing assembly configured to receive a plurality of cartridges in which the cosmetic compositions are separately contained and a receiving area into which each of the cosmetic compositions is dispensed, each cosmetic composition is preferably contained in a separate container, and the apparatus further comprises a memory configured to receive and store dispensing information which includes the specified amount of cosmetic composition to be dispensed from each cartridge and circuitry configured to obtain the dispensing information from the memory and to control the dispensing assembly to dispense the specified amount of the cosmetic composition to be dispensed from each cartridge (See teachings of Matsuda et al supra).
Response to Applicant’s Arguments
Applicant’s arguments filed on 09/16/2025 have been considered.
Applicant argues there is no rational basis to substitute the concentrated cosmetic bases used in the mixing and dispensing device of Matsuda with the ready-to-use compositions taught by the other prior art references because Matsuda explains that the “cosmetic bases are prepared to be mixable with each other” and therefore are not themselves ready-to-use compositions. Applicant argues that Matsuda’s concentrated cosmetic bases are fundamentally different in purpose and design from the ready-to-use formulations of the other prior art references and substituting Matsuda’s concentrated mixable bases with final cosmetic products would undermine Matsuda’s core teaching of customizing compositions through on-demand mixing.
The above arguments have been fully considered by the Examiner but are not found persuasive because the teaching of Matsuda et al does not prohibit the use of ready-to-use compositions as the cosmetic bases and teach the cosmetic kit as a “customized cosmetic” in consideration of user-unique factors that are considered to possibly affect the skin condition, for example, an environment where the user spends time, a user's action, and a user's psychosomatic state (See e.g. [0008]). As is argued in the new grounds of rejection under 35 USC 103 above, there would have been motivation based on the prior art teachings to use each of the cosmetics of Yabusaki, Chiou et al, and Baek in the kit of Matsuda et al in order to provide a consumer with a customized cosmetic that provides the benefits of wrinkle alleviation effect of retinol (Yabusaki), tactilely pleasing form upon application that stably carries hydroxypropyl tetrahydropyrantriol (Chiou et al), effects of maintaining skin elasticity and reducing pigmentation and dark circles of ascorbic acid (Baek), and increased UV photoprotection of ferulic acid added in addition to ascorbic acid (Baek), without the drawbacks of incompatibility issues of the ingredients present in a singular formulation, e.g., the incompatibility of ascorbic acid with water-containing formulations (Baek). The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination (In re Sernaker, 702 F.2d 989, 994-95 (Fed. Cir. 1983)).
Applicant’s specific arguments regarding the teaching of Chiou et al are moot because the rejection set forth in the Office action dated 05/20/2025 wherein the teaching of Chiou et al was applied as prior art has been withdrawn and this teaching of Chiou et al has not been applied in the new grounds of rejection under 35 USC 103 set forth above. The Examiner notes that the new prior art reference applied in the instant Office action as “Chiou et al” is a different teaching (i.e., WO 2015/095711 A1) than the reference applied in the Office action dated 05/20/2025. The Examiner notes that in the new grounds of rejection set forth above, the teaching of “dimethicone crosspolymer” by Chiou et al meets the requirements of the instant claims of the ‘one or more non-emulsifying silicone elastomers of the water in silicone emulsion’ being ‘a dimethicone crosspolymer’.
Conclusion
No claims are allowable.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached at (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
Prosecution Insights