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 1-20 are pending. Claims 1, 5 and 9 are amended. Claim 20 is newly added.
Claims 13-19 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.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 and 20 are examined on their merits.
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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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Rejections Withdrawn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 1-4 and 6-12 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failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention is withdrawn.
In light of the amendments to the claims the rejection of claim 9 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claim 5 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 WO 2017/100421 (6/15/2017) as evidenced by the instant specification and Evonik TEGO Turmerone brochure (“Evonik”) is withdrawn.
New Rejections/Rejections Maintained
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 1-4 and 6-12 and newly applied to claim 20 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]).
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 20. 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’s composition can also include steareth-20 as a suitable emulsifier which is called for in instant claim 1. (See [0248]).
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. Wang does not teach palmitoyl tetrapeptide-7. 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 that the composition can also include the anti-wrinkle agent Palmitoyl tetrapeptide-7. (See page 36). Palmitoyl tetrapeptide-7 is called for in instant claim 1.
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, palmitoyl tetrapeptide-7, 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]).
Claim 5 is rejected 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”) as applied to claims 1-4, 6-12 and 20 and further in view of Pernodet et al. US 2017/0027854 (2/2/2017).
The teachings of Wang in view of Alminana are described supra. Wang in view of Alminana do not teach chlorhexidine digluconate or potassium sorbate. These deficiencies are made up for with the teachings of Pernodet et al.
Pernodet et al. (Pernodet) teaches a topically applied composition that stimulates collagen synthesis in aging skin and improves the appearance of skin by improving lines and wrinkles. (See Abstract). The composition comprises various plant extracts and includes glycerin. (See [0003], [0010] and [0143]).
Pernodet teaches that suitable preservatives for its topical composition include chlorhexidine digluconate and potassium sorbate. (See [0121] and [0214]). Chlorhexidine digluconate is called for in instant claim 5. Potassium sorbate is called for in instant claim 5.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Wang in view of Akminana 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 derived from lemon extract to add chlorhexidine digluconate and potassium sorbate as taught by Pernodet in light of Pernodet’s teaching that these are suitable preservatives for a topically applied cosmetic for improving skin containing natural extracts and glycerin.
Response to Arguments
Applicants’ remarks filed July 2, 2026 have been fully considered and are found to be somewhat persuasive in light of the amendments to the claims and somewhat 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 also assert that neither Wang nor Alminana teach DHEA or DHEA-like components.
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.
Applicants assert that the combination of Wang and Aliminana proposed by the Examiner can only be assembled with knowledge of the instant application. Applicants assert that there is nothing in the cited documents that would have led the skilled person to select the specific ingredients now required by claim 1 and combine them. Applicants assert that the rejection therefore relies on impermissible hindsight reconstruction and does not establish a prima facie case of obviousness.
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 is found to be persuasive in light of the amendments to the claims. The rejection has been amended and withdrawn above in light of the amendments to the claims. Please note the new rejections applied above.
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 also assert that neither Wang nor Alminana teach DHEA or DHEA-like components. Wang teaches both glycerin and steareth-20, so there is clearly a suggestion that glycerin and steareth-20 should be combined. Glycerin is taught as a suitable humectant and steareth-20 is taught as a suitable emulsifier. Alminana teaches palmitoyl tetrapeptide-7 and 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 to add palmitoyl tetrapeptide-7 since it is taught as a beneficial ingredient for skin in that it can filter IV rays in Alminana.
Applicants’ arguments that the rejection relies on impermissible hindsight reconstruction is not found to be persuasive because all of the elements are expressly taught in the prior art references themselves. Hindsight has not been used in making any obviousness rejections; this is evident in that all of the claimed elements are taught or suggested in the prior art references themselves and so is the motivation to combine them. Since both the teaching of the components and the motivation to use it is found in the prior art references themselves, the rejection relies on only knowledge from the prior art references themselves.
As described in the rejections above, 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, palmitoyl tetrapeptide-7, 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.
Additionally, it would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Wang in view of Akminana 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 derived from lemon extract to add chlorhexidine digluconate and potassium sorbate as taught by Pernodet in light of Pernodet’s teaching that these are suitable preservatives for a topically applied cosmetic for improving skin containing natural extracts and glycerin.
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 a compound which impact biological signaling and gene regulation are still 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 remains unpersuasive. The newly applied reference, Pernodet is also directed to composition containing natural extracts that improve the condition and appearance of the skin and treat damage to the skin.
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.
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 and 20 are rejected.
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.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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