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 1-6, and 9-20 are presented for examination.
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.
Claim 1 is 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 is indefinite as to the phrase “”derivatives thereof”. The term “derivative” is indefinite because it is unclear how far one can deviate from the parent compound without “the derivative” being so far removed therefrom as to be a completely different compound.
Claim 6 is indefinite in using improper Markush language. The addition of “the group consisting of “ after “from” in line 2 and the addition of “and” before “promoting” in line 6 will overcome the rejection.
The claims dependent on the rejected claims are also indefinite since they have all the limitations of such claims.
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.
Claim(s) 1-6 and 9-20 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Reller et al. (US 4,219,548 submitted by the applicant) in view of Ribeiro et al. (US 6,071,524) and further in view of Piazza et al. (US 5,238,965).
The claims are drawn to a topical composition comprising:(a) a cosmetic skin benefit agent selected from 1-oleoyl-rac-glycerol, (2S)-1- oleoylglycerol, oleoyl-rac-glycerol (ORG), (2R)-1-oleoylglycerol, 2- oleoylglycerol, and/or derivatives thereof, and/or mixtures thereof; (b) a retinoid, wherein the retinoid is retinyl propionate; and (c) a dermatologically acceptable vehicle.
Regarding claim 1, Reller teaches a topical composition comprising monoolein in combination with a dermatologically acceptable carrier for the treatment of sunburn. See Example II. Reller does not teach the use of a retinoid, such as retinyl propionate. Ribier teaches a cosmetic dermatological composition comprising glyceryl monooleate or monoolein in combination with an anti-aging and anti-wrinkle agents retinol derivatives, such as, retinol propionate. See (column 3, lines 20-26, column 6, lines 65-67 and column 7, lines 1-11. Ribier makes clear that retinoids have been previously used in a cosmetic composition for treating aging and wrinkles
Regarding claim 2, Reller and Ribier do not teach the composition is a YAP/TAZ activator. However, the combination of the relied upon references, makes clear that oleoglycerol in combination with the claimed retinoid have been used in a cosmetic formulation. The mechanism of action of such components does not create a patentably distinct composition.
Regarding claim 3, the use of monoolein by Reller and Ribier reads on the use of 1-0leoyl-rac-glycerol, .
Regarding claim 4, the use of monoolein by Reller and Ribier reads the use of 2-oleoylglycerol, which is the same as 2-monoolein.
Regarding claim 5, Reller and Ribier do no teach the use of a phosphatidic acid. However, Piazza teaches to methods for regulating wrinkles in mammalian skin comprising topical application of a lysophosphatidic acid. See the abstract. The cyclic form of phosphatidic acid is also taught in the abstract. The use of retinoids is taught in column 14, lines 10-25.
Regarding claim 6, Reller and Ribier teach the cosmetic formulation for the treatment of conditions such as, sunburn, wrinkles and aging, which read on the conditions as claimed in claim 6.
Regarding claim 9, Reller teaches the use of monoolein, which reads on oleoyl-rac-glycerol.
Regarding claims 10-12, Reller teaches the concentration of 0.1%-10% monoolein. See column 2, lines 50-55. The concentrations of claims 10-12 are within the scope of the concentrations of Reller.
Regarding claims 13-18, the relied upon references do not teach the concentrations of retinoids and the proportions of the cosmetic active agent to the retinoid. However, the determination of optimum proportions or amounts are considered to be within the skill of artisan in the absence of evidence to the contrary. Applicant’s attention is drawn to In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), wherein the court stated that “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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”.
Regarding claim 19, to leave a cosmetic composition on the skin is considered to be within the skill of artisan, based on the purpose of such cosmetic formulation.
Regarding claim 20, to rinse off a cosmetic formulation is considered to be within the skill of artisan based on the purpose of such cosmetic formulation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZOHREH A FAY whose telephone number is (703)756-1800. The examiner can normally be reached Monday-Friday 9:30AM-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZOHREH A FAY/Primary Examiner, Art Unit 1617