DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ Request for Continued Examination (RCE), Amendments and Remarks, filed 12 January 2026, in the matter of Application N° 18/267,333. Said documents have been entered on the record. The Examiner further acknowledges the following:
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on September 8, 2025 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No claims have been added or canceled.
Claims 1, 4-9, and 15 have been amended. Of particular note is that claims 1, 7-9, and 15 have been amended to further specify that the at least one fatty acid is narrowed to a saturated fatty acid. The fatty acid species recited by claim 8 have also been amended to reflect saturated species.
No new matter has been added.
Thus, claims 1-15 continue to represent all claims currently under consideration.
Information Disclosure Statement
No new Information Disclosure Statements (IDS) have been filed for consideration.
Withdrawn Rejections
Rejection under 35 USC 112
Applicants’ amendments to claims 1 and 15 are sufficient in overcoming the previously raised lack of antecedent basis rejection. Said rejection is withdrawn.
Rejection under 35 USC 103
Applicants’ arguments with respect to the obviousness rejection of record have been considered, but are moot due to the claim amendments and the new rejection applied as a result of claim amendments.
New Rejections
Applicants’ amendments have necessitated the following ground(s) of rejection:
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. Applicants are 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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Marat et al. (WO 2017/102349 A1; IDS/ISR reference) in view of Tsubata et al. (US Pre-Grant Publication Nº 2019/0269581 A1).
The limitations of the claimed invention are directed to a composition comprising at least one compound of formula (I):
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and at least one saturated fatty acid comprising 18 or more carbon atoms, wherein the amount of the fatty acid(s) in the composition is 10% by weight or more, relative to the total weight of the composition. Regarding formula (I), the Examiner submits that disclosures meeting either of the recited formulas in the above reversible reaction will be considered to meet the claimed component.
Claim 14 recites a “cosmetic process for a keratin substance comprising applying to the keratin substance, the composition of claim 1. Claim 14 will be considered met where any showing in the art discloses simple application of the composition of claim 1 to the skin.
Claim 15 recites a method of stabilizing (a) at least one compound of formula (I) and reducing yellowing of a composition containing the (a) at least one compound of formula (I), comprising adding (b) at least one saturated fatty acid comprising 18 or more carbon atoms to the composition comprising the (a) at least one compound of formula (I), in an amount of 10% by weight or more relative to the total weight of the composition.
Marat discloses a non-therapeutic process for depigmenting, lightening, and/or bleaching keratin materials, comprising the application of a cosmetic composition comprising, in a physiologically acceptable medium, at least one compound of formula (I) (see e.g., claims 1-5). The limitations of claims 1-5 of the reference expressly disclose the compositional limitations for component (a) as recited by instant claims 1-5 and 13-15.
Instant claim 6 recites that component (a) will be present in the composition in an amount ranging from 0.01% to 20% by weight of the composition. Claim 6 of the reference expressly meets this limitation disclosing that the one or more compounds represented by formula (I) will be present in an amount ranging from as broadly as 0.01% to 10% by weight, to a most preferred range of 0.5% to 3% by weight, relative to the total weight of the composition.
Regarding instantly amended component (b), Marat discloses that the composition will additionally comprise an adjuvant (see e.g., claims 1 and 7). The adjuvant component is further defined by the reference as including oils, in particular hydrocarbon-based oils and/or silicone oils, of mineral, animal and/or plant origin. Said adjuvant is taught as being present in an amount ranging from 0.001% to 80% by weight, and in particular from 0.1% to 40% by weight of the composition (see pg. 10, lines 1-14).
With respect to amended claims 1, 7-9, and 15, while Marat is considered to encompass the amended limitations, the reference does not expressly disclose the presence of component (b) as claimed.
Tsubata is considered to provided added definition to the adjuvant used by Marat. Tsubata, like Marat, is directed to a cosmetic composition provided in a carrier. While both teach and suggest the addition of a fatty adjuvant component, the former furthers defines it as being a fatty acid-based gelling agent (see e.g., claim 1). Claim 2 discloses that the fatty acid-based gelling agent is selected from saturated fatty acids comprising at least one hydroxyl group and 12-24 carbons. Claim 4 discloses stearic acid for instance. Claim 7 discloses that the fatty acid-based gelling agent ranges from 0.01% up to 20% by weight of the composition. Claim 6 additionally defines the composition as comprising an oil component (claim 1, part (c)) which may be defined as hydrocarbon oil and/or fatty alcohols. Paragraph [0109] further discloses that the fatty alcohols will have a fatty acid base to them such as stearyl (C18), arachidonyl (C20), and behenyl (C22).
The Examiner recognizes that fatty alcohols (R-OH) and fatty acids (R-COOH) differ in chemical structure by a carbonyl group (C=O). However, the Examiner’s reliance upon the fatty alcohol definitions is to provide chemical context and definition to the C12-C24 fatty acid disclosure of claim 2 of the reference. As such, the Examiner considers the reference to disclose fatty acids such as stearic, arachidic, and behenic acids and in amounts as are instantly claimed (i.e., greater than 10% by weight of the composition).
Tsubata further discloses that the practiced composition provides for improved storage and morphological stabilities for the cosmetic compositions embodied. See e.g., Abstract and ¶[0028].
Based on the contribution and definitions provided by Tsubata, the Examiner submits that a person of ordinary skill in the art would have been motivated to modify the teachings of Marat to include such saturated fatty acids as stearic, arachidic, and behenic acids as adjuvants for producing its cosmetic compositions. Though Marat does not speak to advancing the stability of its practiced compositions, a person of skill in the pharmaceutical arts will immediately recognize the continuing goal of improving the stability of such a formulation (e.g., improving lengthening the shelf-life). Modification of Marat’s adjuvant definition to include the aforementioned saturated fatty acids as disclosed by Tsubata, would provide such an expectation.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
The limitations of claims 10-12 are directed to adjuvants that may be added to the composition of claim 1, such as an oil, water, and at least one surfactant. Claim 7 of the reference teaches that each of these adjuvants and mixtures thereof may be used.
Instant claim 13 recites the composition of claim 1 with the intended use of being for whitening a keratin substance. The Examiner considers this claim to be met where the limitations of claim 1 have been met. Since the claim is directed to a composition, the use of that composition is not considered to contribute to the overall patentability of said composition.
Lastly, the limitations of claim 15 are directed to a method of stabilizing (a) at least one compound of formula (I) and reducing yellowing of a composition containing the (a) at least one compound of formula (I). The positively recited steps of the method are that compound(s) (a) are combined with 10% by weight or more of (b) at least one saturated fatty acid comprising 18 or more carbon atoms.
MPEP §2111.02(II) states that “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”
MPEP §2112.02(II) additionally states that “when the claim recites using an old composition or structure and the ‘use’ is directed to a result or property of that composition or structure, then the claim is anticipated.”
In the instant case, the Examiner has presented a showing in the prior art that meets the limitations recited by the body of the claim by combining the claimed formula (I) with fatty acids.
Based on the foregoing teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success at producing the instantly claimed composition and arriving at the recited methods. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615