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 .
Claim Interpretation
The claimed invention is interpreted as a cosmetic composition for personal cleansing comprising an aqueous medium; a trioctahedral smectite clay that is unmodified; an ester that is either a fatty acid ester 4-16C and polyglycerol ester 2-10G; and wherein said ester:clay ratio is greater than 1.
Claim Rejections - 35 USC § 112
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 1-20 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 states “ratio being strictly greater than 1” is indefinite due the adjective “strictly” which is confusing for the specification does not adequately defines what encompasses the term “strictly”. One skilled in the art would be unable to determine the metes or bounds of the invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO (2020109500) as evidenced by Mineral Data Publishing (Hectorite, 2001, IDS of 06/20/2023, hereafter "MDP") and Brittanica (Clay mineral, Earth Sciences, Encyclopedia Britannica, 09/29/2019 or earlier by Wayback Machine Archive)
WO ‘500 discloses a composition for topical application, comprising pectin and unmodified hectorite, and to the use of said composition notably in the cosmetic field and in particular for caring for, cleansing, protecting and/or making up keratin materials such as the skin, notably bodily or facial skin, or the hair, preferably for caring for bodily or facial skin (page 1, lines 1-10). WO ‘500 further teaches the unmodified hectorite is present in a content of between 0.1% and 10% by weight, relative to the total weight of the composition (page 4, lines 29-32). Furthermore, the composition is a gel type and preferably a aqueous gel type (page 13, lines 27-28). In addition, WO’500 disclose an emulsifier and the are generally present in the composition in a proportion possibly ranging, for example, from 0.3% to 30% by weight relative to the total weight of the composition (page 7, lines 1-7). The emulsifiers consist of polyglycerol isostearate and esters of polyols and of fatty acids with a saturated or unsaturated chain including, for example, from 8 to 24 carbon atoms and better still from 12 to 22 carbon atoms, and the oxyalkylenated derivatives thereof, i.e. derivatives including oxyethylenated and/or oxypropylenated units, such as the glyceryl esters of C8-C24 fatty acids, and the oxyalkylenated derivatives thereof; the polyethylene glycol esters of C8-C24 fatty acids, and the oxyalkylenated derivatives thereof; the sorbitol esters of C8-C24 fatty acids, and the oxyalkylenated derivatives thereof (col. 7, lines 8-24). With respect to claim 12, WO ‘500 teach thickeners/gelling agents such as polymers including carboxyvinyl polymers, such as the products sold under the names Carbopol (CTFA name: carbomer) and Pemulen (CTFA name: Acrylates/C 10-30 alkyl acrylate crosspolymer) by the company Goodrich; and polyacrylamides in an amount from 0.01-10% (page 8, lines 1-25).
As evidenced by MDP, hectorite contains SiO2 at about 53% and MgO at about 25% (Chemistry) (corresponding to magnesium salt as magnesium oxide in instant claims 2 and 3, overlapping with at least 30% of SiO2 and at least 10% MgO in instant claim 2), resulting in SiO2/MgO ratio at about 2 (calculated from 53/25) (falling within ratio range from 1 to 3 in instant claim 2), and also resulting in unmodified clay to magnesium salt ratio at about 100/25 = 4 (falling within weight ratio 10/1 to 1/10 in instant claim 3), when there is unmodified hectorite in a composition with no other additional magnesium salt. The general molecular formula in instant claim 4 is inherent property of unmodified natural clay, because whatever molecules present in the unmodified clay, they exist as natural. Also as evidenced by Britannica, clay minerals contain natural components based on their classifications and the molecular formula are known as general physical properties. For instance, structural formula of dioctahedral aluminous species may be represented by nH₂O, where M⁺ is the interlayer exchangeable cation expressed as a monovalent cation and where X and y are the amounts of tetrahedral and octahedral substitutions, respectively (0.2 ≤ + y ≤ 0.6); while trioctahedral ferromagnesian smectites, is given by formula (Mg, Alₓ)O₁₀(OH)₂M+/x nH2O (Smectite session, Britannica), indicating general tetrahedral cations Si4+ and AI3+, as well as trioctahedral cations Mg2+ and Fe2+, and M+ as interchangeable cation.
WO ‘500 teach all of the instantly required except the express teaching of 4 units of polyglycerol ester in claim 9.
One skilled in the art at the time the invention was made would readily interpret and optimize the units of polyglycerol given the teachings of WO ‘500 where polyglycerol units are taught but silent with respect to the amount being 4 (col. 7, lines 8-24). The skilled artisan, in the absence of unexpected results commensurate in scope with the claims, would optimize the units to 4 with the expectation of successive homologs have the same or similar characteristics.
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Compounds which are position isomers (compounds having the same radicals in
physically different positions on the same nucleus) or homologs (compounds differing
regularly by the successive addition of the same chemical group, e.g., by -CH2- groups)
are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601
(CCPA 1978) (stereoisomers prima facie obvious).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 11, 13-14 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by JP (2003192532), as evidenced by Mineral Data Publishing (Hectorite, 2001, IDS of 06/20/2023, hereafter "MDP") and Brittanica (Clay mineral, Earth Sciences, Encyclopedia Britannica, 09/29/2019 or earlier by Wayback Machine Archive).
JP ‘532 discloses an O/W emulsified composition comprises (A) one or more kinds selected from the group consisting of an 8-18C liquid fatty acid diester of diglycerol, an 8-18C liquid fatty acid triester of diglycerol, an 8-18C liquid fatty acid diester of triglycerol and an 8-18C liquid fatty acid triester of triglycerol, (B) a glycol and/or glycerol, (C) a water-swellable clay mineral and (D) water (abstract). JP ‘532 teaches that said emulsion is used for facial or body cleansing (0002) and further exemplifies at (0067) and example 41 a skin cream/gel comprising:
Diglyceryl diisostearate 10.0 (2) Polybutene 10.0 (3) Diisostearyl malate 30.0 (4) Squalane 5.0 (5) Amino acid ester 5.0 (6) 1,3-BG 5.0 (7) Phenoxyethanol Suitable amount (8) Vitamin E proper amount (9) Suitable amount of fragrance (10) Water-swellable clay mineral (* 1) 1.2 (11) Purified water Residue * 1: Laponite XLG (Laporte Industries made by Ltd.).
Note the polyglycerol ester at 10% by mass; laponite clay at 1.2%, which is a trioctahedral hectorite version of a smectite clay that is non-modified; and a balance of water that is aqueous. The ratio of ester:clay is greater than 1 as claimed.
As evidenced by MDP, hectorite contains SiO2 at about 53% and MgO at about 25% (Chemistry) (corresponding to magnesium salt as magnesium oxide in instant claims 2 and 3, overlapping with at least 30% of SiO2 and at least 10% MgO in instant claim 2), resulting in SiO2/MgO ratio at about 2 (calculated from 53/25) (falling within ratio range from 1 to 3 in instant claim 2), and also resulting in unmodified clay to magnesium salt ratio at about 100/25 = 4 (falling within weight ratio 10/1 to 1/10 in instant claim 3), when there is unmodified hectorite in a composition with no other additional magnesium salt. The general molecular formula in instant claim 4 is inherent property of unmodified natural clay, because whatever molecules present in the unmodified clay, they exist as natural. Also as evidenced by Britannica, clay minerals contain natural components based on their classifications and the molecular formula are known as general physical properties. For instance, structural formula of dioctahedral aluminous species may be represented by nH₂O, where M⁺ is the interlayer exchangeable cation expressed as a monovalent cation and where X and y are the amounts of tetrahedral and octahedral substitutions, respectively (0.2 ≤ + y ≤ 0.6); while trioctahedral ferromagnesian smectites, is given by formula (Mg, Alₓ)O₁₀(OH)₂M+/x nH2O (Smectite session, Britannica), indicating general tetrahedral cations Si4+ and AI3+, as well as trioctahedral cations Mg2+ and Fe2+, and M+ as interchangeable cation.
Accordingly, the claims are considered anticipatory.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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/NECHOLUS OGDEN JR/ Primary Examiner, Art Unit 1761