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 1-10 and 13-22.
Previous Rejections
Applicants' arguments in the Request for Continued Examination, filed Apr. 7, 2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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 Rejections - 35 USC § 103 (New)
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. Claim(s) 1-8, 10, and 13-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lazzeri-Vigouroux et al. (US 2009/0324526, Dec. 31, 2009) (hereinafter Lazzeri-Vigouroux) in view of Mahe et al. (US 2001/0044444, Nov. 22, 2001) (hereinafter Mahe) and Tanaka et al. (US 6,019,991, Feb. 1, 2000) (hereinafter Tanaka).
Lazzeri-Vigouroux discloses cosmetic care compositions containing, in a physiologically acceptable medium, one or more compounds selected from among arginines and/or the organic or inorganic acid salts and/or derivatives thereof; and a compound or a mixture of compounds of formula (I), useful for treating human keratin fibers and/or the scalp, for inducing and/or stimulating the growth of these fibers and/or preventing the loss and/or increasing the density thereof (satisfies amino acid of claim 1-2) (Abstract). The arginine(s) and/or the salts thereof and/or the derivatives thereof in accordance with the invention will be present in the compositions in amounts preferably ranging from 0.01 % to 5% by weight (satisfies claim 3 & 13) (¶ [0037]). The compound(s) of formula (I) correspond to the formula below, in which R1= H or -CH3; R2= H or -CH3; R3 = -CH3, with the proviso that R1 and R2 are not being simultaneously H (satisfies claim 6 and 19-21) (¶ [0038-0039]).
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Further, the compounds of formula (I) can in particular be extracts of Centella asiatica (¶ [0041]). According to one preferred embodiment of the invention, a mixture of madecassoside and of terminoloside is formulated (satisfies claim 7) (¶ [0042]). The compound or the mixture of compounds of formula (I) described above may be present in the composition in an amount ranging from 0.001 % to 20% by weight (satisfies claim 8) (¶ [0045]). Suitable physiologically acceptable medium include dispersions of a fatty phase in an aqueous phase (O/W) or vice versa (W/O) and solid dispersions or emulsions (O/W) or (W/O) (satisfies phases of claim 1) (¶ [0050]). When the composition is an emulsion, the proportion of the fatty phase may range from 1 % to 80% by weight, relative to the total weight of the composition, while the aqueous phase is from 5% to 99.9% by weight (¶ [0057]). The fatty phase may contain oily compounds (satisfies oil of claim 1) (¶ [0058]). The composition may be utilized for cleansing (¶ [0053]). The composition may comprise additives preferably in amounts from 0.1 % to 10% by weight (¶ [0067]). Suitable additional active agents include hydroxy acids such as salicylic acid and fruit acids (satisfies salicylic acid of claim 1) (¶ [0074]).
Lazzeri-Vigouroux differs from the instant claim insofar as not disclosing wherein the composition comprises citric acid.
However, Mahe discloses hair growth/hair loss-affecting cosmetic/therapeutic compositions (Abstract). Suitable additional active agents for use include keratolytic agents such as hydroxy acids such as salicylic acid and citric acid (¶ [0162]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Lazzeri-Vigouroux discloses wherein the composition may include additional actives such as hydroxy acids, which includes salicylic acid and fruit acids. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Lazzeri-Vigouroux to comprise citric acid as the fruit acid, since it is a known additional active agent for use in hair growth/hair loss-affecting cosmetic/therapeutic compositions as taught by Mahe.
In regards to the composition comprising both salicylic acid and citric acid, since the use of various hydroxy acids for use in hair growth/hair loss-affecting cosmetic/therapeutic compositions is known individually, the use of the individual species in combination would have been obvious since it is prima facie obvious to combine two compositions, each of which is taught to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea for combining them flows logically from their having been individually taught in the prior art. See MPEP 2144.06. Therefore it would have been obvious to one of ordinary skill in the art prior to filing the instant application to have used a combination of salicylic acid and citric in the composition of Lazzeri-Vigouroux because they are known to be used for the same purpose, as supported by cited precedent.
The combined teachings of Lazzeri-Vigouroux and Mahe do not explicitly disclose wherein the phases are not emulsified in each other at rest.
However, Tanaka discloses a two-phase cosmetic composition (Abstract). It is an object of the invention to provide a cosmetic composition with a strikingly different visual format and still functions to clean (col 1, line 31-40). By the term "two-phase" is meant a separated layer of oil and aqueous phases bounded by a single interface dividing the two phase portions (col 1, line 63-67). Further, the term is meant to describe separated layers which upon agitation form a temporary emulsion visually seen as a single phase but optimally separating within less than five minutes and reverting to the two-phase non-emulsion format (col 1, line 67 – col 2, line 1-6). Suitable compounds for inclusion into the aqueous phase include salicylic acid (col 3, line 22-34). Further, the aqueous phase may comprise salts of citrate (i.e., citric acid) (col 4, line 1-8).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant claims, to have modified the emulsion of Lazzeri-Vigouroux in view of Mahe to have aqueous and oil phases which are not emulsified in each other at rest motivated by the desire to provide a cosmetic composition with a strikingly different visual format which also functions to clean since such forms are known to be useable for emulsions which contain salicylic acid in the aqueous phase as taught by Tanaka.
Regarding the oily/ aqueous phase ratio recited in instant claim 1 (i.e., between 0.75 and 1.25), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Lazzeri-Vigouroux in view of Mahe and Tanaka discloses wherein the fatty phase may range from 1 % to 80% by weight, relative to the total weight of the composition, while the aqueous phase is from 5% to 99.9%. As such, when the fatty phase and the aqueous phase are each present in an amount of 50%, the resulting ratio would be 1. Therefore, the claimed ratios would have been obvious from one selecting amounts of the fatty/aqueous phases from the ranges disclosed by Lazzeri-Vigouroux and arriving at a weight ratio that overlaps with the claimed range.
Regarding the citric/salicylic acid to amino acid ratio recited in instant claim 1 (i.e., between 0.90 and 1.10), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Lazzeri-Vigouroux in view of Mahe and Tanaka discloses wherein the arginine(s) will be present in amounts ranging from 0.01 % to 5% by weight, while actives such as hydroxy acids (i.e., citric/salicylic acid) may be present in an amount of 0.1 % to 10% by weight. As such, when the citric/salicylic acid are each present in an amount of 1% and the arginine(s) is present in an amount of 2%, the resulting ratio would be 1. Therefore, the claimed ratios would have been obvious from one selecting amounts of the citric/salicylic acid and amino acid from the ranges disclosed by Lazzeri-Vigouroux and arriving at a weight ratio that overlaps with the claimed range.
Regarding claim 1 reciting wherein the amount of surfactant (i.e., less than 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. See MPEP 2144.05(A). Additives may be included in the composition of Lazzeri-Vigouroux in view of Mahe and Tanaka in an amount of 0.01 % to 50% (¶ [0067]). Suitable additives include surfactants (¶ [0072]). Accordingly, because the amount recited in the instant claim overlaps with the range disclosed by Lazzeri-Vigouroux in view of Mahe and Tanaka, the range disclosed by Lazzeri-Vigouroux in view of Mahe and Tanaka meets the instantly recited limitations and a composition comprising less than 0.1% surfactant would have been obvious.
Regarding the amounts of citric/salicylic acid recited in claims 4-5 and 14-18 (i.e., between 0.01 % and 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. See MPEP 2144.05(I). As discussed above, Lazzeri-Vigouroux in view of Mahe and Tanaka discloses wherein the hydroxy acids (i.e., citric/salicylic acid) may be present in an amount of 0.01 % to 50% by weight. Accordingly, because the amounts recited in the instant claims overlap with the range disclosed by Lazzeri-Vigouroux in view of Mahe and Tanaka, the range disclosed by Lazzeri-Vigouroux in view of Mahe and Tanaka meets the instantly recited limitations.
Regarding claim 10 reciting wherein the composition is substantially free of a monovalent/divalent inorganic salt, Lazzeri-Vigouroux does not require such salts be present in the composition. Lazzeri-Vigouroux merely requires a composition comprising arginine and/or the organic or inorganic acid salts and/or derivatives thereof; and a compound or a mixture of compounds of formula (I). As such, a composition free of monovalent/divalent inorganic salts would have been obvious.
Regarding claim 22 reciting a makeup removal cosmetic composition, this is merely a recitation of the intended use of the claimed composition. Since the composition of Lazzeri-Vigouroux in view of Mahe and Tanaka is substantially the same as the claimed composition, comprising substantially the same active agent, one amino acid; citric acid; salicylic acid; and a compound or a mixture of compounds of formula (I), one would reasonably conclude that the composition of Lazzeri-Vigouroux in view of Mahe and Tanaka would be suitable for removing makeup, whether the prior art discloses such use or not.
Therefore, the teachings of Lazzeri-Vigouroux, Mahe, and Tanaka render obvious claims 1-8, 10, and 13-22.
2. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lazzeri-Vigouroux et al. (US 2009/0324526, Dec. 31, 2009) (hereinafter Lazzeri-Vigouroux) in view of Mahe et al. (US 2001/0044444, Nov. 22, 2001) (hereinafter Mahe) and Tanaka et al. (US 6,019,991, Feb. 1, 2000) (hereinafter Tanaka), and further in view of Dias et al. (International Journal of Trichology, 2014 Jul-Sep;6(3):95–99) (hereinafter Dias).
The teachings of Lazzeri-Vigouroux in view of Mahe and Tanaka are discussed above.
The combined teachings of Lazzeri-Vigouroux in view of Mahe and Tanaka do not disclose wherein the composition has a pH of between 3.8 and 4.4.
However, Dias discloses that in the shampoo and conditioner formulas, the formula and ingredients must create a final pH no higher than 5.5 so not to damage the scalp via negative electric charges and static interactions which result in frizz (Conclusion).
Accordingly, it would have been obvious for one of ordinary skill in the art to have formulated the composition of Lazzeri-Vigouroux in view of Mahe and Tanaka to have a pH of less than 5.5 motivated by the desire to achieve a composition that avoids hair damage via static interactions and frizz as taught by Dias.
Therefore, the combined teachings of Lazzeri-Vigouroux, Mahe, Tanaka, and Dias render obvious claim 9.
Response to Arguments
Applicant’s arguments with respect to claims 1-10 and 13-22 have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made. As discussed in the current rejections, Lazzeri-Vigouroux discloses a cosmetic care composition comprising emulsions containing arginine, a compound or a mixture of compounds of formula (I) such as extracts of Centella asiatica, madecassoside, terminoloside, etc. along with salicylic acid; but does not expressly disclose wherein the composition contains citric acid. However, Mahe is relied upon for this teaching. Furthermore, Tanaka’s teaching in reference two-phase emulsions which are separate at rest is applied to meet the requirements of the new limitation “are not emulsified in each other at rest”.
Conclusion
Claims 1-10 and 13-22 are rejected.
Claim 11 is withdrawn.
No claims are allowed.
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
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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