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 . Claims included in prosecution are claims 1-7 and 15-20.
Previous Rejections
Applicants' arguments, filed Oct. 31, 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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.
1. Claims 1-7 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Faig et al. (US 2023/0165777, priority date of Nov. 30, 2021) (hereinafter Faig) in view of Zhang et al. (US 10,959,933, Mar.30, 2021) (hereinafter Zhang).
Faig teaches a cosmetic composition (Abstract). The composition may be used to reduce the appearance of fine lines and wrinkles (¶ [0071]). In an embodiment, the composition comprises (a) retinol, (b) a plurality of nonionic emulsifiers comprising (i) one or more ethoxylated fatty acids and (ii) one or more nonionic emulsifiers having a Hydrophile-Lipophile Balance (HLB) from about 9 to about 12, (c) one or more fatty alcohols, (d) one or more fatty compounds, (e) one or more thickening polymers, and (f) water (¶ [0079-0089]). Suitable (c) fatty alcohols include cetyl alcohol, stearyl alcohol, behenyl alcohol and mixtures thereof (i.e., claimed solid oil) (¶ [0098]). The total amount of the one or more fatty alcohols may be about 0.1 to about 4 wt.% (¶ [0099]). Suitable (d) one or more fatty compounds include dimethicone (i.e., claimed non-volatile silicone fluid) (¶ [0100]). Suitable (e) one or more thickening polymers include polyacrylate crosspolymer-6 (i.e., claimed crosspolymer) and polyacrylamide (i.e., claimed synthetic water-soluble polymer) in an amount of about 0.1 to about 8 wt.% (¶ [0102-0103]). The composition may include water-soluble solvents such as glycerin (i.e., claimed humectant) (¶ [0105]). Suitable (b)(ii) one or more nonionic emulsifiers include, but are not limited to, nonionic surfactants such as laureth-7 (HLB 12-3) and polysorbate-20 (HLB 16.7) (i.e., claimed nonionic surfactants) (¶ [0627-0628]). The total amount of the (b)(ii) one or more nonionic emulsifiers having an HLB of from about 9 to about 12 is from about 0.1 to about 5 wt. % (¶ [0095]). The amount of water may be about 55 to about 85 wt.% (¶ [0104]). The cosmetic composition has a pH of about 4 to about 8 (¶ [0236]). In example 11, Faig discloses the use of lauroyl lysine in an inventive composition (satisfies claim 12) (¶ [0507]).
Faig differs from the instant claims insofar as not disclosing wherein the composition is in the form of a lotion.
However, Zhang teaches a low-pH skin care composition which comprises, among other components, polyacrylate crosspolymer-6 and has a pH of 2.0 to 5.0 (Abstract). Suitable conditions to be improved by said skin care composition improving the appearance of fine lines and/or wrinkles (col 3, line 59). The composition may be provided in various product forms such as lotions, creams, and gels (col 4, line 37-39). In some instances, the composition may be in the form of an essence which is a form of topical skin care composition in a relatively concentrated formula that typically has a lower viscosity than conventional cream or lotion type skin care compositions (col 4, line 45-50).
Accordingly, it would have been obvious for one of ordinary skill in the art to have formulated the composition of Faig to be in the form of a lotion, essence, or cream, since these are known forms of cosmetic compositions that comprise a polyacrylate crosspolymer-6 used to improve the appearance of fine lines and/or wrinkles, wherein the composition have a pH of 2.0 to 5.0, as taught by Zhang.
In regards to the amount of polyacrylate crosspolymer-6 recited in instant claims 1-3 & 15 (i.e., about 1.5% to about 2.4%, about 1.8% to about 2.44%, about 2% to about 4%, and about 2.0% to about 2.4%), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A. As discussed above, Faig discloses about 0.1 to about 8 wt.% polyacrylate crosspolymer-6. Accordingly, the claimed amounts would have been obvious since they overlap with the amounts disclosed by Faig.
In regards to the amount of nonionic surfactant recited in instant claim 1 (i.e., about 0.24% to about 2%), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. As discussed above, Faig discloses about 0.1 to about 5 wt. % one or more nonionic emulsifiers where suitable nonionic emulsifiers include laureth-7 and polysorbate-20. Accordingly, the claimed amount would have been obvious since it overlaps with the amount disclosed by Faig.
Regarding the amount of solid oil recited in instant claim 1 (i.e., 0.1%), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. As discussed above, Faig discloses wherein fatty alcohols such as cetyl alcohol, stearyl alcohol, behenyl alcohol and mixtures thereof may be included in an amount of about 0.1 to about 4 wt. %. Accordingly, the claimed amount would have been obvious since it overlaps with the amount disclosed by Faig.
In regards to the weight ratios between the polyacrylate crosspolymer-6 and the nonionic surfactant recited in instant claims 4-7 (i.e., about 15:1 to about 1:15, about 8:1 to about 1:8, about 5:1 to about 1:5, and about 5:1 to about 1:3), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. As discussed above, Faig discloses about 0.1 to about 8 wt.% polyacrylate crosspolymer-6 and about 0.1 to about 5 wt. % of one or more nonionic emulsifiers having a HLB from about 9 to about 12. As such, the claimed weight ratios would have been obvious since they could be derived from selecting an amount of each component resulting in ratios that overlaps with the claimed weight ratios.
In regards to instant claim 1 reciting a pH between about 2.0 to about 5.0, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. As discussed above, Faig discloses a pH of about 4 to about 8. Accordingly, the claimed pH would have been obvious since it overlaps with the pH disclosed by Faig.
In regards to instant claim 1 reciting wherein the composition is substantially free of hydroxyethylcellulose and xanthan gum, Faig does not limit the nonionic thickening polymers to hydroxyethylcellulose (see e.g., ¶ [0612-0617]) and does not disclose wherein the composition comprises xanthan gum. Therefore, a composition free of hydroxyethylcellulose and xanthan gum would have been obvious.
Therefore, the combined teachings of Faig and Zhang render obvious claims 1-7 and 15-20.
Response to Arguments
Regarding Applicant’s allegations of unexpected results (page 1-3 of Applicant’s response), any differences between the claimed invention and the prior art may be expected to result in some difference in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. The burden is on applicant to establish that the results are in fact really unexpected and of statistical and practical significance. Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992). See also MPEP § 716.02.
Applicant does not appear to have discussed same with respect to objective data. Furthermore, Applicant’s data does not appear to be unexpected. For instance, as evidenced by Sachin et al. (Molecular interactions between comb-like associative polymer and nonionic surfactants: Effects of surfactant mixtures and hydrophilic-lipophilic balance, 77th Annual Meeting – Society of Rheology, Pg. 5-6, 2005) (hereinafter Sachin), compositions comprising associative polymers and nonionic surfactants with high HLB had decreased low shear viscosity (Abstract). Accordingly, one of ordinary skill in the art would expect that a composition having a decreased low shear viscosity would have improved flowability since it is more fluid at rest/lower shear and would therefore be more likely to be easier to retrieve from a container as it would have less resistance. As such, it is unclear if Applicant’s findings are truly “unexpected”.
Finally, assuming purely arguendo that unexpected results have been established, the probative value of the evidence as compared to the invention as claimed must then be determined, i.e., the claims must be “commensurate in scope” with the showing. MPEP § 716.02(d). See also MPEP § 2145. Applicant must explain the “manner in which the specific compositions illustrated are considered to be commensurate in scope with the claimed invention”; see Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992); see also MPEP 716.02, citing same.
For instance, Applicant’s claim 1 requires the presences of polyacrylate crosspolymer-6 in an amount ranging from 1.5% to 2.4%. However, the examples tested all contained 2.4% except for Ex. 4-5 which contained 2.1% and 2%, respectively. The probative value of the data cannot be reasonably extended across the full breadth of the claimed range since a trend cannot be reasonably determined. Accordingly, Applicant’s data is not commensurate in scope with the instant claims.
Regarding the alleged picking and choosing, a reference is relied upon for all it teaches, even non-preferred embodiments. See MPEP § 2141.02 (VI). Faig teaches that laureth-7 is a suitable nonionic surfactant, and therefore it would have been obvious for a skilled artisan to select it for use. In regards to choosing laureth-7 over laureth-4, one would reasonably expect that there would be some variation in rheology properties.
Regarding Applicant’s argument that Zhang does not cure the alleged deficiencies of Faig, the Examiner submits that Zhang cures any alleged deficiencies of Faig where Zhang teaches that lotions, essences, or creams, are known forms of cosmetic compositions that comprise a polyacrylate crosspolymer-6 used to improve the appearance of fine lines and/or wrinkles.
In light of the foregoing, the Examiner does not find Applicant’s arguments to be persuasive and the rejection is maintained.
Conclusion
Claims 1-7 and 15-20 are rejected.
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612