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 .
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.
Claim Status
Applicant’s preliminary amendment of 08/09/2023 is acknowledged. Claims 1-3 and 6-14 are amended, and claims 4 and 15 are cancelled. Claims 1-3 and 5-14 are currently pending and are examined on the merits herein.
Priority
The instant application is a 371 of PCT/EP2021/053405 filed on 02/12/2021 as reflected in the filing receipt dated on 01/30/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/09/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
Claims 1-3, 5-12, and 14 are objected to because of the following informalities:
Claim 1 recites the terms “Aldehyde C12”, “Allylphenoxyacetate”, “Benzyl acetone”, “Cyclogalbanate”, “Cyclohexylmagnol”, “Phenyl acetaldehyde dimethyl acetal”, which are inappropriately captilized. The terms should read “aldehyde C12”, “allylphenoxyacetate”, “benzyl acetone”, “cyclogalbanate”, “cyclohexylmagnol”, and “phenyl acetaldehyde dimethyl acetal”.
Claims 2-3, 5-12, and 14 each recite at least one instance of the term “Claim”, which is inappropriately capitalized. The term should read “claim”.
Claim 12 recites the term “AHA acids”, wherein the acronym “AHA” is not defined in the claims. When an acronym is used in a claim set, it should be defined the first time it appears in the claims. For the purposes of examination, the term “AHA” is interpreted to mean “alpha hydroxy acids”, as is customary in the field and as supported by Applicant’s instant specification, which teaches hydroxy acids (e.g. citric acid, lactic acid, and malic acid, which are structurally alpha hydroxy acids) as suitable antioxidants (Paragraph 0030). If Applicant intends for the claim to be interpreted as such, the acronym should be defined, and the redundant recitation “acids” following “AHA” should be removed.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-3 and 5-14 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 recites the plural limitation “[a]gonists” in lines 1 and 5, followed by a Markush grouping which lists singular compounds and “mixtures thereof”. The additional limitation allowing for mixtures thereof suggests that non-mixtures of the listed compounds, e.g. singular compounds, are suitable to meet the limitation “[a]gonists”, making it unclear exactly how many agonists are required to meet the claim. Is one agonist sufficient to meet the claim, or is more than one agonist required? Therefore, the scope of the claim is indefinite. The Examiner notes that Applicant’s provided examples test only one agonist at a time (Instant Specification, p. 43-44, Table 1). However, for the purposes of compact prosecution and consistent with Applicant’s claims 5, 6, and 14, which recite plural pronouns they/them when referencing the agonists, the Examiner is interpreting the claim to mean that more than one agonist is required.
Claims 2-3 and 5-14 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim 1 recites “Agonists…showing (i) a molecular weight…and (ii) and evaporation rate…”. In view of the ambiguity surrounding the claimed “agonists” as discussed above, it is unclear whether these properties are required of each individual agonist claimed or to a combination of plural agonists claimed. Therefore, the scope of the claim is indefinite. For the purposes of compact prosecution, the Examiner is interpreting these limitations as required of each agonist individually, as supported by the chemical structures of Applicant’s claimed agonists, which each correspond to a compound with a molecular weight that lies within the claimed range, whereas combinations of agonists would exceed the claimed range.
Claims 2-3 and 5-14 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claims 2 and 3, which respectively recited the limitations “molecular weight” and “evaporation rate” are further rejected as being indefinite for the same reasons as applied to claim 1 above.
Claim 1 recites the limitation “an evaporation rate versus butyl alcohol of about 3 to about 15”. Applicant’s instant specification teaches that this quantity is a ratio, wherein the rate of vaporization of butyl acetate is set as 1 (Paragraph 0005). However, the instant claim language, which recites a singular value “to” another singular value, creates confusion as to whether the limitation represents range within which the ratio of [the evaporation rate of the agonists]:[the evaporation rate of butyl alcohol] must lie within, for example, from about 3:1 to about 15:1, or whether Applicant is claiming a ratio of [the evaporation rate of the agonists]:[the evaporation rate of butyl alcohol] of [about 3]:[about 15], for example, 3:15. For the purposes of compact prosecution and consistent with Applicant’s instant specification wherein the evaporation rate of butyl acetate is 1, the term is interpreted to mean the former.
Further, in view of the Safety Data Sheet for CYCLOGALBANAT® (CAS No. 68901-15-5, also known as cyclogalbanate), which teaches that cyclogalbanate has an evaporation rate lower than the evaporation rate of butyl acetate (page 5; published: 09/12/2018; cited on PTO-892), e.g. less than 1:1, the metes and bounds of the claim are indefinite because the feature Applicant claims, wherein the recited agonists have an evaporation rate versus butyl acetate of about 3 to about 15, is in conflict with known chemical properties of at least one of the claimed agonists. Does the claimed evaporation rate not apply to all claimed agonists? For the purposes of compact prosecution, the Examiner is interpreting the claim to mean that a chemical structure identical to the recited agonists meets the claim limitation.
Claims 2-3 and 5-14 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim 3, which recites the limitation “an evaporation rate versus butyl alcohol of about 5 to about 10” is further rejected as being indefinite for the same reasons as applied to claim 1 above and is interpreted accordingly. Because the metes and bounds of claims 1 and 3 are indefinite, it is unclear how claim 3 further limits the scope of claim 1.
Claims 5 and 6 each recite “Agonists according to Claim 1, wherein they are applied…”. Because “agonists” is a product and “are applied” is an active step of using the product, the claim is directed to more than one statutory class of invention. Note: MPEP 2173.05(p)(II). A single claim which claims both an apparatus (or product) and the method steps of using the apparatus (or product) is indefinite because it creates confusion as to when direct infringement occurs. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).
Claim Interpretation
Regarding the limitation “showing” recited in claim 1: The Examiner is interpreting the limitation to mean “comprising”, which is synonymous with "including," "containing," or "characterized by," and is inclusive or open-ended and does not exclude additional, unrecited elements. Note: MPEP 2111.03(I).
Regarding the limitation “about” recited in claims 1-3, with no limiting definition of the term “about” provided in Applicant’s instant disclosure, the Examiner is interpreting the claim to mean ± 20% of the claimed range.
Regarding the limitation “wherein they are applied in a concentration…” recited in claims 5 and 6: The Examiner is interpreting the claim to mean that the total amount of agonists are applied at the recited concentration range rather than each agonist individually must be applied at the recited concentration range.
Regarding the term “optionally” recited in claim 14: The Examiner notes that the limitation “dissolved in a pharmaceutically acceptable carrier” is not a required feature of the claim.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 7-12, and 14 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Singer et al. (US20130090390A1; published: 04/11/2013; effectively filed: 10/07/2011) as evidenced by Api et al. (Food and Chemical Toxicology, 149, p. 1-8; published: 11/07/2020), McGinty et al. (Food and Chemical Toxicology, 49, p. S109-S111; published: 07/23/2011), and Sarkic (Cosmetics, 5, p. 1-21; published: 01/12/2018).
Singer, throughout the reference, teaches fragrance preparations (Abstract).
Regarding claims 1-3: Singer teaches multiple formulation examples comprising perfume oils H1 or H2, which each comprise Mintonat and Globanone, among other ingredients (Paragraphs 0307-0309, Examples 17-18). Mintonat corresponds to CAS No. 67859-96-5 having a molecular weight of 184.27 as evidenced by Api (Page 2, Identification), and Globanone corresponds to CAS No. 3100-36-5 having a molecular weight of 236.99 as evidenced by McGinty (Page S110, Identification). The molecular weight of Mintonat lies within and thus anticipates the ranges recited in claims 1 and 2. The molecular weight of Globanone lies within and thus anticipates the range recited in claim 1. Under broadest reasonable interpretation, as discussed in the Claim Interpretation section above, the molecular weight of Globanone also lies within and thus anticipates the claimed range of “from about 75 to about 200”. While Api and McGinty are silent on the unit of measure for the molecular weights disclosed, one of ordinary skill in the art would understand that molecular mass is most often expressed in Daltons.
Therefore, the mixture of Mintonat and Globanone, wherein the compounds have identical chemical structures to those recited in the instant claims, reads on the agonists of claims 1-3.
It is noted that the recitation “for use as a medicament for preventing and/or treating hyperpigmentation of human skin” in claim 1 is an intended use of the claimed agonists. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structures of the agonists of Singer are capable of performing the intended use, then they meet the claim. Note: MPEP 2111.02.
Regarding claim 7: Singer’s Examples 17 and 18, which comprise perfume oils H1 and/or H2 further comprising Mintonat and Globanone, are embodied as transparent deodorant sticks, deodorant cream sticks, and antiperspirant roll-on formulations and, thus, meet the limitation “cosmetic composition”.
Regarding claim 8: Singer’s Example 17C is a deodorant cream stick, which reads on the claimed cream.
Regarding claims 9 and 10: Singer’s Example 17C comprises water, which reads on the claimed carrier as evidenced by instant claim 10.
Regarding claims 11 and 12: Singer’s Examples 17 and 18 comprise perfume oils H1 and/or H2, which further comprise orange oil. Orange oil is an essential oil as evidenced by Sarkic (Page 12) and, thus, reads on the instantly claimed biogenic agent or antioxidant as evidenced by instant claim 12.
Regarding claim 14: Singer claims a method for providing skin with an odor note of lily of the valley comprising applying a fragrance preparation to the skin (Claim 13). The perfume oils H1 and H2 of Singer’s Examples 17 and 18 further comprise 3-[(4R)-4-isopropylcyclohexen-1-yl]propanal, which results in an odor impression reminiscent of lily of the valley and Paragraphs 0306-0309). Therefore, the method of Singer, which provides Mintonat and Globanone in water-based composition that is applied to the skin, reads on the instantly claimed method steps.
It is noted that the recitations “non-therapeutic” and “for whitening human skin” in claim 14 are, respectively, an intended use of the claimed composition and an intended outcome of applying the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition of Singer is capable of performing the intended use and achieving the intended outcome when practicing the method as claimed, then it meets the claim. Note: MPEP 2111.02.
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.
Claims 1-3, 5-12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Singer et al. (US20130090390A1; published: 04/11/2013; effectively filed: 10/07/2011), as applied to claims 1-3, 7-12, and 14 above, and further in view of Divišová et al. (Acta Chromatographic, 27, p. 509-523; published: 2015) as evidenced by Api et al. (Food and Chemical Toxicology, 149, p. 1-8; published: 11/07/2020), McGinty et al. (Food and Chemical Toxicology, 49, p. S109-S111; published: 07/23/2011), and Sarkic (Cosmetics, 5, p. 1-21; published: 01/12/2018).
Singer as evidenced by Api, McGinty, and Sarkic teach the invention(s) of claims 1-3, 7-12, and 14 as discussed in detail above and further incorporated herein.
However, Singer reports the concentrations of Mintonat and Globanone as parts by weight and therefore does not expressly teach that the agonists are applied in a concentration of from 0.1 to 100 µg/ml as recited in claim 5 or from 0.5 to 10 µg/ml as recited in claim 6.
Divišová teaches that fragrance components are frequent causes of cosmetic allergies and can result in irritation or allergic reaction when a cosmetic product is applied on eroded skin (Page 509).
Both Mintonat and Globanone are characterized as fragrance ingredients, as evidenced by Api (Title) and McGinty (Title), respectively.
Regarding claims 5 and 6: Divišová teaches that certain suspected allergens must be labeled on cosmetic products when their concentrations exceed 10 µg mL-1 in leave-on cosmetic products (Page 510 and 521), suggesting that concentrations equal to or below 10 µg mL-1 are generally considered unlikely to cause irritation or allergic reaction. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the concentration of fragrances within the composition of Singer, which include Mintonat and Globanone, using 10 µg mL-1 as taught by Divišová, which lies within and thus renders obvious the instantly claimed ranges, as a starting point for routine optimization to yield the predictable result of a leave-on cosmetic composition with low risk of irritation or allergic reaction. It would have then been obvious to apply the optimized composition to the skin using the method of Singer, which meets the limitation wherein the agonists are “applied” at the claimed concentration ranges, in order to deodorize the skin.
It is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that Applicant did not point out the criticality of the concentration of agonists of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. Note: MPEP 2144.05.
One of ordinary skill in the art would reasonably expect success in modifying the teachings of Singer as proposed because the concentrations are routinely used in the art to formulate products that are safe for cosmetic applications, as evidenced by Divišová.
Claims 1-3 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Singer et al. (US20130090390A1; published: 04/11/2013; effectively filed: 10/07/2011), as applied to claims 1-3, 7-12, and 14 above, and further in view of Project Vanity (webpage, <https://www.projectvanity.com/projectvanity/budget-beauty-whiter-underarms; archived: 11/03/2017) as evidenced by Api et al. (Food and Chemical Toxicology, 149, p. 1-8; published: 11/07/2020), McGinty et al. (Food and Chemical Toxicology, 49, p. S109-S111; published: 07/23/2011), and Sarkic (Cosmetics, 5, p. 1-21; published: 01/12/2018).
Singer as evidenced by Api, McGinty, and Sarkic teach the invention(s) of claims 1-3, 7-12, and 14 as discussed in detail above and further incorporated herein.
However, Singer does not expressly teach that the composition further comprises a skin whitening agent selected from the group consisting of kojic acid and resorcinols as recited in claim 13.
While Applicant’s claim 11 does not require that the composition further comprises a skin whitening agent, the claim is further rejected herein to demonstrate that claim 13, which depends from claim 11, is also obvious in view of the prior art.
Project Vanity teaches that kojic acid has powerful exfoliating properties that help to lighten dark spots and uneven skin tone of the underarms (Page 6).
Regarding claims 11 and 13: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Singer by further including the kojic acid of Project Vanity in order to impart desirable properties such as skin lightening and evening effects.
One of ordinary skill in the art would reasonably expect success in modifying the teachings of Singer as proposed because Project Vanity teaches that kojic acid is known in the art to be used in antiperspirant deodorants as a deodorant and whitening agent in one (Page 7).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 7, and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-7, and 9 of U.S. Patent No. US 9,631,165 B2 as evidenced by Sarkic (Cosmetics, 5, p. 1-21; published: 01/12/2018).
Although the claims at issue are not identical, they are not patentably distinct from each other because one of ordinary skill in the art could at once envisage an embodiment wherein 2,4,4,7-tetramethyloct-6-en-3-one (molecular weight: 182.30 Daltons, calculated by Examiner) and benzylacetone (molecular weight: 148.20 Daltons, calculated by Examiner), which have identical chemical structures and properties to the agonists of instant claims 1-3, are selected as the ketone fragrances in the method recited in the claims of US ‘165. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Note MPEP 2112.01.
The method recited in US ‘165 produces a washing and cleaning composition comprising the claimed agonists, and therefore reads on instant claim 7.
US ‘165 recites that the fragrance may be obtained from clove oil, orange peel oil, basil oil, etc., which are all essential oils as evidenced by Sarkic (Pages 7-13) and, thus, read on the biogenic agent or antioxidant of instant claims 11 and 12.
It is noted that the recitations “for use as a medicament for preventing and/or treating hyperpigmentation of human skin” in claim 1 and “cosmetic or pharmaceutical” in claim 7 are intended uses of the claimed agonists and composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structures of the agonists of US ‘165 are capable of performing the intended uses and no additional ingredients in the composition claimed in US ‘165 appear to be unsafe for human skin and/or cosmetic use, then they meet the claim. Note: MPEP 2111.02.
Claims 1-3 and 5-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7, and 11-12 of U.S. Patent No. US 9,631,165 B2, as applied to claims 1-3, 7, and 11-12 above, and further in view of Singer et al. (US20130090390A1; published: 04/11/2013; effectively filed: 10/07/2011), Divišová et al. (Acta Chromatographic, 27, p. 509-523; published: 2015), and Project Vanity (webpage, <https://www.projectvanity.com/projectvanity/budget-beauty-whiter-underarms; archived: 11/03/2017) as evidenced by Sarkic (Cosmetics, 5, p. 1-21; published: 01/12/2018).
The claims of US ‘165 teach the invention(s) of instant claims 1-3, 7, and 11-12 as discussed in detail above and further incorporated herein.
However, the claims of US ‘165 do not explicitly recite the limitations of instant claims 5-6, 8-10, and 13, or the method of instant claim 14.
The teachings of Singer, Divišová, and Project Vanity are as set forth above and further incorporated herein.
Regarding claims 5-6: It would have been obvious to one of ordinary skill to optimize the concentration of fragrances within the composition recited in US ‘165 claims, which include 2,4,4,7-tetramethyloct-6-en-3-one and benzylacetone, using 10 µg mL-1 as taught by Divišová, which lies within and thus renders obvious the instantly claimed ranges, as a starting point for routine optimization to yield the predictable result of a composition with low risk of irritation or allergic reaction. It would have then been obvious to apply the optimized composition to the skin using the method of Singer, which meets the limitation wherein the agonists are “applied” at the claimed concentration ranges, in order to cleanse and/or enhance the smell of the skin.
Regarding claim 8: It would have been obvious to one of ordinary skill in the art to formulate the composition taught by the combination of US ‘165 claims and Divišová as a lotion, a cream, or an emulsion because Singer teaches that such formulations are generally used for fragrance preparations (Paragraph 0135).
Regarding claims 9-10: It would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of US ‘165 claims, Divišová, and Singer by using water as a carrier since Singer teaches that it is a suitable carrier for fragrance preparations.
Regarding claim 13: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by the combination of US ‘165 claims, Divišová, and Singer by further including the kojic acid of Project Vanity in order to impart desirable properties such as skin lightening and evening effects.
Regarding claim 14: It would have been obvious to one of ordinary skill in the art to provide 2,4,4,7-tetramethyloct-6-en-3-one and benzylacetone in the form of a composition taught by the combination of US ‘165 claims, Divišová, Singer, and Project Vanity and then apply the composition to the skin using the method of Singer in order to cleanse and/or enhance the smell of the skin.
It is noted that the recitations “non-therapeutic” and “for whitening human skin” in claim 14 are, respectively, an intended use of the claimed composition and an intended outcome of applying the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of US ‘165 claims, Divišová, Singer, and Project Vanity is capable of performing the intended use and achieving the intended outcome when practicing the method as claimed, then it meets the claim. Note: MPEP 2111.02.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616