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 .
Status of Claims
Claims 1-19 are pending. Claims 5 and 9 are amended.
Claims 13-19 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-12 are examined on their merits.
New rejections have been applied herein that were not necessitated by amendment, and this action has been made Non-Final as a result.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Rejections Withdrawn
Claim Rejections - 35 USC § 112(b)
In light of the amendments to the claims the rejection of claims 5 and 9 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention is withdrawn.
New Rejections/Rejections Maintained
Claim Rejections - 35 USC §112(b)
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.
Claims 1-4 and 6- 12 are 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.
Claim 1 is rejected under 35 USC 112(b) for reciting the limitation “a DHEA-like component”. This phrase is vague and confusing and it is not clear whether any of the components recited in claim 5 are enough by themselves to be DHEA-like components or if all or a portion of the components recited in claim 5 are enough to be DHEA-like components. This phrase is only explained in the specification by a recitation of what the use of a DHEA-like component can do. There is no definition of what a DHEA-like component actually is.
The specification states at [0039]:
The DHEA-like component may comprise glycerin, steareth-20, palmitoyl tetrapeptide-7, chlorhexidine digluconate and potassium sorbate. It may be water based. It may be derived from a concentrated extract of monk’s pepper berries.
This description uses the permissive word “may” in describing what can be a DHEA-like compound. This description creates further confusion because it is unclear what exactly is required in order to constitute a DHEA-component. The specification describes preferred embodiments of a DHEA-component, but there is no guidance as to what at minimum must be present in order to constitute a DHEA-like component.
Respectfully, Applicant’s statement in their December 16, 2025 comments that “the DHEA-like component is not described as a single ingredient, but a combination of components that together perform . . function” is completely wrong. Without a definition or a description of what is minimally required of a DHEA-like component and only a description of what “may” be a DHEA-like component and preferred embodiments, it is thus unclear what exactly is required in order to constitute a DHEA-component.
What a DHEA-like component is also it cannot be determined by reference to any other claims. As a result, one of ordinary skill in the art would not be reasonably apprised of how to determine what this phrase means.
For the purposes of this office action “DHEA-like component” will be interpreted as if glycerin alone is a DHEA-like component.
Claims 2-4 and 6-12 are rejected as depending from a rejected claim.
Claim 9 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.
Claim 9 recites the limitation “the alpha hydroxy acid” in lines 1-2 and depends from claim 8. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 8 recites “at least one alpha hydroxy acid” in lines 1-2. The phrase “at least one alpha hydroxy acid” encompasses multiple one or more alpha hydroxy acids, so it is unclear whether just one, more than one, or all of the at least one alpha hydroxy acids are being addressed in claim 9.
It is suggested that amending claim 9 to recite “the at least one alpha hydroxy acid” such as is recited in claim 8 would overcome this lack of clarity.
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 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.
The rejection of claims 1-12 under 35 U.S.C. 103 as being unpatentable over Wang US 2016/0193132 (7/7/2016) in view of Alminana et al. WO 2017/100421 (6/15/2017) as evidenced by the instant specification and Evonik TEGO Turmerone brochure (“Evonik”) is maintained.
Wang teaches a topically applied composition that contains naturally occurring light absorbing molecules for preventing damages from light exposure, including fluorescent proteins from Brachiostomas lanceolatum. (See Abstract). The composition can be formulated as a cream as called for in instant claim 12. (See [0284]).
Wang teaches that the composition can include niacinamide and glycerin. (See [[0072] and [0134]). Wang teaches that niacimamide is preferred to be used in the composition. (See [0072]).
In light of the indefiniteness of the claims, glycerin is a DHEA -like component as called for in instant claim 1 and it is also taught to be a humectant in Wang. (See [0134]). Ubiquinone may also be present in the composition as called for in instant claim 1. (See [0221]). Ubiquinone is also known as coenzyme Q10. (See [0221]). Wang’s composition may also contain various skin care actives including arbutin. (See [0051]). Arbutin is called for in instant claim 1. Wang’s composition may also include hyaluronic acid as called for in instant claim 10. (See [0131]). Wang’s composition may also include caffeine as called for in instant claim 10. (See [0112]). Wang teaches that caffeine is an anti-cellulite agent. (See [0112]).
Wang’s composition may also include alphahydroxy acid as called for in instant claim 8. (See [0120]). Wang teaches that alphahydroxy acid is a useful desquamating agent. (See [0112]). Wang’s composition may also include a skin lightening agent such as ascorbyl glucoside as called for in instant claim 2. (See [0141]). Wang’s composition may also include a skin lightening agent such as tranexamic acid as called for in instant claim 1. (See [0141]).
Wang teaches alphahydroxy acid but does not teach wherein it is derived from lemon fruit. Wang does not teach curcuma longa root extract or helianthus seed oil or alteromonas ferment extract. These deficiencies are made up for with the teachings of Alminana et al.
Alminana et al. (Alminana) teaches cosmetic compositions containing compounds that are useful in the treatment and care of the skin, hair and nails that are in a cosmetically acceptable delivery system, anti-wrinkle and anti-aging components and cosmetically acceptable excipients. (See Abstract and claims 10-11). Alminana teaches that anti-wrinkle or anti-aging ingredients include PEGO Turmerone which is Curcuma Longa Extract marketed by Evonik Goldschmidt. (See page 46, lines 9-10). The Curcuma Longa Extract marketed as PEGO Turmerone is curcuma longa root extract as evidenced by the Evonik reference. Curcuma longa root extract is called for in instant claim 3. Alminana also teaches Helianthus Annus Seed Extract which is Helianthus Annus Seed Oil as called for in instant claim 4. (See page 47, lines 10-11).
Alminana teaches anti-wrinkle or anti-aging ingredients include extract of lemon, which contains alphahydroxy acid as evidenced by the instant specification at paragraph [0051]. (See page 44, lines 20-21). Lemon fruit extract as the source of alphahydroxy acid as called for in instant claim 9. Alminana also teaches alteromonas ferment extract (see page 45, lines 4) and also teaches Alteromonas Exopolysacchairde extract. (See page 39, line 15) which is called for in instant claim 7.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Wang cosmetic composition with ubiquinone, glycerin, arbutin, tranexamic acid and niacinamide to add curcuma longa root extract, helianthus annus seed oil, exopolysacchriade from alteromonas ferment extract and have the alpha hydroxy acids of Wang’s composition be derived from lemon extract as taught by Alminana in light of Alminana’s teaching that these are suitable anti-wrinkle or anti-aging cosmetic ingredients in a composition that is beneficial to the skin, hair and nails.
Alminana teaches that curcuma longa extract and Helianthus Annus Seed Oil is an anti-wrinkle and/or anti-aging agent. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), MPEP 2144.07.
With respect to claim 6, the exopolysaccharide from alteromonas ferment extract comprises glucose as called for in instant claim 6, as evidenced by the instant specification at [0046]. With respect to claim 1, the exopolysaccharides derived from Aletromonas are marine exopolysaccharides as evidenced by the instant specification at [0046]).
Response to Arguments
Applicants’ remarks filed December 16, 2025 have been fully considered and are found to be mostly unpersuasive.
Applicants note the amendments to the claims to address the indefiniteness rejections and assert that these amendments to the claims have addressed the indefiniteness issues. The Office agrees and the indefiniteness rejections have been withdrawn above.
II. Claim Rejections under 35 USC Sec. 103
With respect to the obviousness rejection Applicants argue that glycerin on its own does not meet the requirements of a DHEA-like component and therefore the DHEA-like component is not disclosed in Wang because the instant specification at page 8, lines 6 states that glycerin is included in the DHEA-like component, the DHEA-like component is not a single component. Applicants assert that the DHEA-like component is not described as a single component, but a combination of components that together perform the functions of selectively minimizing the overproduction of IL-6 in keratinocytes and fibroblasts and stimulates the activities of endorphin and DHEA and the biosynthesis of DHEA.
Applicants assert that the DHEA-like component is not described as a single ingredient, but a combination of components that together perform these functions. Applicants do not cite any portion of the instant specification in support for this.
Applicant also asserts that a skilled artisan would find no teaching or suggestion to select the specific components described in Wang, such as arbutin, tranexamic acid and ubiquinone from a laundry list of ingredients and include them in a single formulation.
Applicant also asserts that a skilled artisan would find no reason to consider the teaching of Alminana and combine it with that of Wang because Wang primarily relates to preventing light-induced damage through the use of naturally occurring light absorbing fluorescent proteins from Brachiostoma, as an alternative to convention UV filters. By contrast, Alminana is directed to specific compounds which are useful as anti-aging agent and skin rejuvenating agents. Therefore, Alminana is concerned with compounds which impact biological signaling and gene regulation, whereas Wang is concerned with proteins for photoprotection – different biological properties. In other words the references are non-analogous.
Applicants also assert that even if a skilled artisan were to combine the teachings of Alminana and Wang they would not arrive at the claimed subject matter. Neither document suggests that incorporating curcuma oily extract and marine exopolysaccharides into the protein-based formulations would be compatible and a formulator would have concerns regarding protein denaturation and loss of fluorescence. This would result in no reasonable expectation of success in the combination.
Applicants also assert that the selection of cucuma oily extract and alteromonas exopolysaccharide extract were merely entries in a laundry list without teaching they should be selected and the selection of them could only be done with hindsight.
There is also no teaching that it is beneficial to include a DHEA-like component, thus achieving the benefits of reducing the overproduction of IL-6 in keratinocytes and fibroblasts, stimulating the activities of endorphin and DHEA and stimulating the biosynthesis of DHEA.
Response
Applicants’ argument that glycerin is not sufficient as a DHEA-like component because the DHEA-like component is not described as a single ingredient, but a combination of components that together perform these functions. Applicants do not cite any portion of the instant specification in support for this.
Please note the indefiniteness rejection above regarding the phrase “the DHEA-like component”. The “DHEA-like component” phrase is phrase is vague and confusing and it is not clear whether any of the components recited in claim 5 are enough by themselves to be DHEA-like components, or if all or a portion of the components recited in claim 5 are enough to be DHEA-like components. This phrase is only explained in the specification by a recitation of what the use of a DHEA-like component can do. There is no definition of what a DHEA-like component actually is.
The specification states at [0039]:
The DHEA-like component may comprise glycerin, steareth-20, palmitoyl tetrapeptide-7, chlorhexidine digluconate and potassium sorbate. It may be water based. It may be derived from a concentrated extract of monk’s pepper berries.
This description uses the permissive word “may” in describing what can be a DHEA-like compound. Thus, creates further confusion because it is unclear what exactly is required in order to constitute a DHEA-component. The specification describes preferred embodiments of a DHEA-component, but there is no guidance as to what at minimum must be present in order to constitute a DHEA-like component.
Respectfully, Applicant’s statement in their December 16, 2025 comments that “the DHEA-like component is not described as a single ingredient, but a combination of components that together perform . . function” is completely wrong. Without a definition or a description of what is minimally required of a DHEA-like component and only a description of what “may” be a DHEA-like component and preferred embodiments, it is thus unclear what exactly is required in order to constitute a DHEA-component.
What a DHEA-like component is also it cannot be determined by reference to any other claims. As a result, one of ordinary skill in the art would not be reasonably apprised of how to determine what this phrase means.
The patentee can be their own lexicographer, but they must be clear. The patentee must clearly set forth a special definition in the specification. The specification must offer a clear, consistent and unequivocal definition. Applicant has not done that in this instance. MPEP Sec. 2111.01 states that any special meaning must be clearly stated in the specification, so that a person of ordinary skill in the art is on notice of the redefinition.
It should be noted that even with Applicants comments stating that glycerin alone is insufficient to constitute a “DHEA-like component”, it is still unclear exactly what is needed at minimum, to constitute a “DHEA-like component”. In light of the indefiniteness of the term “DHEA-like component”, Applicants’ arguments that a teaching of glycerin is insufficient to read on the this term in claims 1 and 5 is found to be unpersuasive.
Applicants assertion that a skilled artisan would find no teaching or suggestion to select the specific components described in Wang, such as arbutin, tranexamic acid and ubiquinone from a laundry list of ingredients and include them in a single formulation is not found to be persuasive. Wang expressly teaches that niacimamide is preferred to be used in the composition. (See [0072]). Wang expressly teaches that in an embodiment a skin care active such as arbutin is included, so Wang teaches that arbutin is to be included. (See [0051]) Wang teaches that its composition may contain enzyme activators such as ubiquinone. (See [0221]) Wang also teaches that its composition may contain skin lightening agents such as transexamic acid. (See [0221]). Applicant has not provided any reason why these express teachings of components should not be included when they are clearly taught to be possible, or even preferred, to be included in the Wang composition.
Applicants’ argument that Wang and Alminana are non analogous art because Wang primarily relates to preventing light-induced damage through the use of naturally occurring light absorbing fluorescent proteins from Brachiostoma, as an alternative to convention UV filters, and Alminana relates to compound which impact biological signaling and gene regulation is not found to be persuasive. Wang and Alminana are analogous art because they both relate to topically applied compositions that contain components that care for skin and treat damage to the skin. Respectfully, Applicants argument that Wang and Alminana address different technical problems using different mechanisms is an unpersuasive argument that stretches credulity too far.
Similarly, it is also unpersuasive to assert that a person of ordinary skill in the art would not look to Aminana for modification of the formulations disclosed in Wang. Alminana teaches that curcuma longa root extract, helianthus annus seed oil, exopolysacchriade from alteromonas ferment extract are all suitable anti-wrinkle or anti-aging cosmetic ingredients for a skin protecting topical composition. Wang and Aminana even taught some of the same components for skin benefit, including alpha hydroxy acids because their purpose of treating skin was the same.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Wang cosmetic composition with ubiquinone, glycerin, arbutin, tranexamic acid and niacinamide to add curcuma longa root extract, helianthus annus seed oil, exopolysacchriade from alteromonas ferment extract and have the alpha hydroxy acids of Wang’s composition be derived from lemon extract as taught by Alminana in light of Alminana’s teaching that these are suitable anti-wrinkle or anti-aging cosmetic ingredients in a composition that is beneficial to the skin, hair and nails.
Applicants argument that a person of ordinary skill in the art would have formulation concerns with adding curcuma longa root extract, helianthus annus seed oil, exopolysacchriade from alteromonas ferment extract to the Wang formulation are also unpersuasive. The person of ordinary skill in the art is a skilled formulator and it would be well within their skill to formulate a topical composition that would not threaten protein denaturation or loss of fluoresence and light absorbing properties.
Wang teaches in its composition preparation section that in an embodiment the active ingredients are mixed with commonly used components of sunscreens including other active or inactive ingredients, or beauty products, or other cosmetic products. (See [0293]). Wang thus teaches that its composition can be formulated with a wide range of commonly used components of sunscreens including other active or inactive ingredients. Wang expresses no formulation concerns whatsoever with adding components of sunscreens and cosmetic products to its formulation.
Applicants’ arguments that there would be no reasonable expectation of success with combining the curcuma longa root extract, helianthus annus seed oil, exopolysacchriade from alteromonas ferment extract to the Wang formulation is also not found to be persuasive. There would be a reasonable expectation of success because Wang expressly teaches that its formulation is compatible and can be combined with commonly used components of sunscreen and cosmetic compositions, so the curcuma longa root extract, helianthus annus seed oil, exopolysacchriade from alteromonas ferment extract from Alminana would be expected to work well in the Wang composition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), MPEP 2144.07.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
For this reason (the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem) there does not need to be a teaching that it would be beneficial to include a DHEA-like component . Respectfully, Applicant does not clearly teach what a DHEA-like component is anyway, and glycerin is a commonly used sunscreen and cosmetic component that would be advantageous to include in the Wang formulation (it is expressly taught to be suitable in Wang by Wang itself).
Conclusion
Claims 1-12 are rejected.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619