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 .
Applicant canceled claim 15.
Claim Objections
Claim 9 is objected to because of the following informalities: on line 11, applicant need to change “mass,” to --- mass, based on a total mass of the stock solution, ---. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 9-14, 16 and 19-26 are rejected under 35 U.S.C. 103 as being unpatentable over Moriyama et al (JP 2001-172124 and its English translation) in view of Heinsohn et al (US 2004/0258637 A1) and Guillou et al (US 2003/0165455 A1) (with (i) a product sheet on SOFCARECERAMIDE-SL-E obtained from the website: https://chemical.kao.com/en/products/B0007001_en/?region=gl , which is being cited here merely to show that Moriyama’s Softcare Ceramide SL-E is cetyl-PG hydroxyethyl palmitamide; (ii) Compound Summary on Hydroxyethyl palmityl oxyhydroxypropyl palmitamide obtained from the website: https://pubchem.ncbi.nlm.nih.gov/compound/3082568 , which is being cited here merely to show the chemical structure for cetyl-PG hydroxyethyl palmitamide; and (iii) Compound Summary on Sodium Methyl Stearoyl Taurate obtained from the website: https://pubchem.ncbi.nlm.nih.gov/compound/Sodium-methyl-stearoyl-taurate , which is being cited here merely to show that “Nikkol SMT” is sodium methyl stearoyl taurate).
Moriyama teaches ([0001]) an aerosol cosmetic composition which contains plant ingredients or polyunsaturated fatty acids or derivatives thereof and which is less susceptible to deterioration in odor and color over time. Moriyama teaches ([0021]) that (as an ejected product) the aerosol cosmetic of its invention may be in the form of cream, gel, foam, mist, liquid and the like and teaches that that the aerosol cosmetic can be used in skin cosmetics such as creams, lotions, beauty essences, makeup cosmetics, shaving cosmetics, hair cosmetics and skin and hair cleaning agents.
Specifically, in its Example 8 (see [0040]-[0041]), Moriyama teaches a foam cream composition obtained by filling a stock solution, which contains (a) 3.0 wt.% of Ceramide analogs (Kao Corporation, Softcare Ceramide SL-E) (instant ceramide lipid (A)), (b) 0.6 wt.% total of sodium stearyl methyl taurate (Nikko Chemicals, Nikkol SMT) and lauroyl lysine (instant ionic surfactants (B)), (c) 0.1 wt.% of Carbopol 980, (d) 68.4 wt.% of purified water (instant water (D)) and 5.0 wt.% of 1,3-butylene glycol (instant polyhydric alcohol of claims 20-22), in an aerosol can together with 2.5 pbw of carbon dioxide (instant propellant comprising carbon dioxide gas (E)) and 2.5 pbw of nitrogen gas relative to 100 pbw of the stock solution.
Thus, Moriyama’s Example 8 composition shown above contains instant components (A), (B), (D) and (E). Moriyama’s Carbopol 980, which is present in the amount of 0.1 wt.%, does not teach instant water-soluble polymer (C) which is selected from hydroxypropyl methylcellulose or an acrylic acid/alkyl (meth)acrylate copolymer. However, as evidenced by Heinsohn et al ([0070]-[0072]), it is well known in the art that Moriyama’s Carbopol 980, hydroxypropyl methylcellulose and copolymers of C10-30 alkyl acrylate and acrylic acid are equivalently or interchangeably used as thickeners in cosmetic or dermatological formulations. Thus, it would be obvious to one skilled in the art to substitute 0.1 wt.% of hydroxypropyl methylcellulose (HPMC) or a copolymer of C10-30 alkyl acrylate and acrylic acid (instant acrylic acid/alkyl (meth)acrylate copolymer) for 0.1 wt.% of Carbopol 980 in Moriyama’s Example 8 composition with a reasonable expectation of success.
In the stock solution, the mass ratio of 0.1 wt.% of HPMC or a copolymer of C10-30 alkyl acrylate and acrylic acid (instant component (C)) to 0.6 wt.% of sodium stearyl methyl taurate and lauroyl lysine (instant component (B) would be 0.17 (0.1 wt.% / 0.6 wt.% = 0.17), which does not fall within instant range 0.3 – 0.8, and Moriyama does not give any general teaching of a range for the amount of Carbopol 980 that can be present in its aerosol cosmetic composition. However, as evidenced by Guillou (see [0002], [0065]-[0068]), thickeners, such as Carbopol 980 or modified celluloses (HPMC is a modified cellulose), are known to be used in foaming cosmetic cream in the amount that ranges from 0.05 wt.% to 2 wt.% (Guillou also teaches that its composition can contain ceramides – see claim 10). Since Moriyama’s Example 8 composition is also a foam cream composition, it would be obvious to one skilled in the art to use HPMC or the copolymer of C10-30 alkyl acrylate and acrylic acid (as a thickener) in the amount of 0.05-2 wt.% in Moriyama’s Example 8 composition with a reasonable expectation of success. When one uses HPMC or the copolymer of C10-30 alkyl acrylate and acrylic acid in the amount of 0.05-2 wt.% in Moriyama’s Example 8 composition, the mass ratio of HPMC or the copolymer of C10-30 alkyl acrylate and acrylic acid (instant component (C)) used in 0.05-2 wt.% to sodium stearyl methyl taurate and lauroyl lysine (instant compound (B)) used in 0.6 wt.% would be 0.083-3.33, and such range overlaps with instant range 0.3-0.8 for the mass ratio of instant component (C) to instant component (B), thus rendering instant range prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Also, when one uses HPMC or the copolymer of C10-30 alkyl acrylate and acrylic acid in the amount of 0.05-2 wt.% in Moriyama’s Example 8 composition, the mass ratio of Moriyama’s Ceramide analogs (instant component (A)) used in 3 wt.% to the HPMC or the copolymer of C10-30 alkyl acrylate and acrylic acid (instant component (C)) used in 0.05-2 wt.% would be 1.5-60, and such range overlaps with instant range 0.01-20 for the mass ratio of instant component (A) to instant component (C), thus rendering instant range prima facie obvious. In re Wertheim, supra.
Thus, Moriyama in view of Heinsohn and Guillou renders obvious instant claims 9, 11, 13, 19-22, 24, 29 and 30.
With respect to instant claim 10, Moriyama’s ceramide analog, Softcare Ceramide SL-E (by Kao Corporation) is cetyl PG hydroxyethyl palmitamide, as evidenced by the product sheet on SOFCARECERAMIDE-SL-E (obtained from the website: https://chemical.kao.com/en/products/B0007001_en/?region=gl ), and its chemical structure (which was obtained from the website: https://pubchem.ncbi.nlm.nih.gov/compound/3082568 ) is shown below:
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Such structure teaches instant formula (2) of claim 10: instant R5 = linear saturated hydrocarbon group of 16 carbon atoms; instant X5 = a hydrogen atom; instant R7 = an alkyl group of 2 carbon atoms which is substituted with a hydroxyl group; and instant R6 = a linear saturated hydrocarbon group of 15 carbon atoms. Thus, Moriyama in view of Heinsohn and Guillou renders obvious instant claim 10.
With respect to instant claims 12 and 26, as discussed above, the stock solution in Moriyama’s Example 8 contains sodium stearyl methyl taurate (Nikko Chemicals, “Nikkol SMT”), which is sodium methyl stearoyl taurate (as evidenced by the website: https://pubchem.ncbi.nlm.nih.gov/compound/Sodium-methyl-stearoyl-taurate ), and present specification (see [0038] of US-PGPUB of present application) states that examples of N-acylmethyltaurine and its salts (claimed in instant claim 12) include N-stearoyl-N-methyltaurine and a salt thereof. Thus, Nikkol SMT used in the stock solution of Moriyama’s Example 8 teaches instant salt of N-acylmethyltaurine (instant anionic surfactant of claims 12 and 26). Thus, Moriyama in view of Heinsohn and Guillou renders obvious instant claims 12 and 26.
With respect to instant claim 14, Moriyama’s stock solution shown above contains 3.0 wt.% of Ceramide analogs (instant ceramide lipid (A)) and 0.6 wt.% total of sodium stearyl methyl taurate and lauroyl lysine (instant ionic surfactants (B)). Thus, the mass ratio of instant component (A) to instant component (B) would be 5 (3.0 wt.%/0.6 wt.% = 5), and such ratio falls within and thus teaches instant range of 0.003 – 100. Thus, Moriyama in view of Heinsohn and Guillou renders obvious instant claim 14.
With respect to instant claim 16, the Examiner established above that it would be obvious to one skilled in the art to use HPMC or a copolymer of C10-30 alkyl acrylate and acrylic acid (instant component (C)) in the amount of 0.05-2 wt.% in Moriyama’s Example 8 composition. Such range overlaps with instant range of 0.010-2.0 wt.% for the amount of instant component (C), thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Moriyama in view of Heinsohn and Guillou renders obvious instant claim 16.
With respect to instant claim 23, in Moriyama’s Example 8 discussed above, Moriyama’s stock solution including 3.0 wt.% of Ceramide analogs (instant ceramide lipid (A)) is filled in an aerosol can together with 2.5 pbw of carbon dioxide (instant propellant comprising carbon dioxide gas (E)) and 2.5 pbw of nitrogen gas relative to 100 pbw of the stock solution. Since there is 2.5 pbw of carbon dioxide and 2.5 pbw of nitrogen gas per 100 pbw of the stock solution, the amount for carbon dioxide (in parts by weight) would be 0.024 pbw (2.5 / (2.5+2.5+100) = 0.024). The amount for Ceramide analogs (in parts by weight) would be 0.029 pbw (3 / (2.5+2.5+100) = 0.029). Thus, the mass ratio of instant component (E) (carbon dioxide gas) to instant component (A) (ceramide analogs) would be 0.83, which falls within and thus teaches instant range 0.005-3,000. Thus, Moriyama in view of Heinsohn and Guillou renders obvious instant claim 23.
With respect to instant claim 25, Moriyama’s foam cream composition of Example 8 contains sodium hydroxide to adjust the pH to 4.5. Thus, Moriyama in view of Heinsohn and Guillou renders obvious instant claim 25.
Claim(s) 27 is rejected under 35 U.S.C. 103 as being unpatentable over Moriyama et al (JP 2001-172124 and its English translation) in view of Heinsohn et al (US 2004/0258637 A1) and Guillou et al (US 2003/0165455 A1), as applied to claim 9 above, and further in view of Goutsis et al (US 2017/0319441 A1) or Clark et al (US 2016/0184210 A1).
Although Moriyama’s Example 8 composition does not contain instant cationic surfactant of claim 27, as evidenced by Goutsis et al ([0252]-[0253]) or Clark et al ([0003]), it is well known in the cosmetic field that cationic surfactants (such as quaternary ammonium salt compounds) contribute to a considerably improved cosmetic appearance of the skin and hair or good sensory feel (softness and smoothness). It would have been obvious to one skilled in the art to use a quaternary ammonium salt in Moriyama’ Example 8 composition with a reasonable expectation of considerably improving cosmetic appearance of the skin and hair or providing good sensory feel. Thus, Moriyama in view of Heinsohn and Guillou, and further in view of Goutsis or Clark renders obvious instant claim 27.
Claim(s) 28 is rejected under 35 U.S.C. 103 as being unpatentable over Moriyama et al (JP 2001-172124 and its English translation) in view of Heinsohn et al (US 2004/0258637 A1) and Guillou et al (US 2003/0165455 A1), as applied to claim 9 above, and further in view of Goutsis et al (US 2017/0319441 A1) or Clark et al (US 2016/0184210 A1), and Moss et al (WO 96/32921).
As discussed in Paragraph 6 above, Moriyama in view of Heinsohn and Guillou, and further in view of Goutsis or Clark renders obvious using a cationic surfactant, such as a quaternary ammonium salt, in Moriyama’s Example 8 composition. Furthermore, Moss teaches (see abstract) that combined use of amphoteric surfactant and quaternary ammonium cationic surfactant in foaming cosmetic compositions provides improved foaming and stability to the foaming cosmetic composition. Among examples for the amphoteric surfactant, Moss teaches (pg.6, 2nd paragraph) cocamidopropyl betaine (instant alkylamidopropyl betaine of claim 28). It would have been obvious to one skilled in the art to use a combination of quaternary ammonium salt (taught by Goutsis or Clark) and cocamidopropyl betaine (as the amphoteric surfactant) in Moriyama’s Example 8 composition with a reasonable expectation of providing improved foaming and stability to the composition. Thus, Moriyama in view of Heinsohn and Guillou, and further in view of Goutsis or Clark, and Moss renders obvious instant claim 28.
Response to Arguments
Applicant first argue that both Moriyama and Guillou by themselves or in combination do not teach or suggest the newly added limitation as to the hydroxypropyl methylcellulose or an acrylic acid/alkyl (meth)acrylate copolymer being the water-soluble polymer. The Examiner believes that applicant’s such argument is already addressed above in instant rejection over Moriyama in view of Heinsohn and Guillou.
Applicant’s argument of superior results of using instant component (C) (HPMC or acrylic acid/alkyl (meth)acrylate copolymer) as opposed to Carbopol 980 was carefully considered but was not found to be persuasive due the following reasons: (i) first of all, the only set of fair comparisons would be the comparison between Example 1 vs. Example 32, with the only difference between the two examples being the use of instant acrylic acid/C10-30 alkyl acrylate copolymer in Example 1 and the use of Carbopol 980 in Example 32 (the comparison between Example 34 (using HPMC) vs. Example 32 (using Carbopol 980) is not fair because Example 32 is using arginine whereas Example 34 is not. Also, the comparison between Example 37 and Example 32 is not fair because Example 37 is using 2 water soluble polymers (0.1 wt.% of HPMC and 0.1 wt.% of acrylic acid C10-30 alkyl acrylate copolymer) whereas Example 32 is using only one water-soluble polymer (0.1 wt.% of Carbopol 980)). Comparing results of Example 1 (present example) and Example 32 (comparative example), the high temperature storage stability (45oC, 1month) is the same between the two examples, and the differences both in moisturizing effect and applicability are only marginal (i.e., 9 vs. 10, which means only one of the five panelists gave 1 point instead of 2). MPEP 716.02 states that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of "a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree." (ii) Secondly, the comparison made is not commensurate in scope with the broadest claim. In Examples 1, 32, 24 and 37, the stock solution: (E) carbon dioxide gas was 100:2.2 which represents the preferred embodiment of dependent claim 24 (with the claimed range of 100:0.01 to 100:5.0 for the stock solution: (E) carbon dioxide gas). Besides, the results shown in Table 7 of present specification clearly indicate that the results in terms of moisturizing effect and applicability are markedly inferior even when the stock solution: (E) carbon dioxide gas is 100:0.01, 100:0.1, 100:0.125 or 100:0.25 (i.e., the results are inferior even when the ratios are within instant range of claim 24). That is, the results are good only when the stock solution: (E) carbon dioxide gas is 100:0.5, 100:1.0 or 100:2.5.
For the reasons stated above, instant 103 rejections over Moriyama in view of Heinsohn and Guillou still stand.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 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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/SIN J LEE/
Primary Examiner, Art Unit 1613
March 21, 2026