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 the prosecution are claims 1-6 and 8-16.
Applicants' arguments, filed 12/12/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Objections
Claim 16 is objected to because of the following informalities: “glyceryl tri(ethyl hexanonate)” should be recited as --- glyceryl tri(2-ethylhexanoate) --- since the claimed term does not appear to be known in the art. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 and 8-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This is a new matter rejection.
Claims 1 and 9 recite wherein the solid porous particles are the only type of particles in the composition. The claim fails to comply with the written description requirement since this limitation does not appear to be supported in the specification. This is evident in Table 3 of the specification disclosing embodiments with synthetic wax. Synthetic wax may be interpreted as a particle since wax is a solid and there is no limit on particle size in the claim.
Claims 15 and 16 recite methacrylate crosslinked polymer. The claims fail to comply with the written description requirement since this limitation does not appear to be supported in the specification. At best the specification has support for a specific methacrylate crosslinked polymer, which is methyl methacrylate crosslinked polymer, as shown in Table 3.
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 1-6 and 8-16 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.
Claims 1 and 9 recite wherein the solid porous particles are the only type of particles in the composition. The claim is indefinite since it is unclear how the solid porous particles are the only particles in the composition when the composition comprises wax which is a particle since it is solid and the claim does not require the particle to be of a certain size.
Claims 4 and 11 recite wherein the oil absorption is measured as described in Standard NF T 30-022. The claim is indefinite since standards may vary throughout time and it is unclear which year Standard NF T 30-022 is limited to.
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.
1. Claims 1, 3-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Laurent et al. (WO 2021/058469 A1, Filing Date Sep. 22, 2020) (hereinafter Laurent).
Laurent discloses an anhydrous composition comprising ascorbic acid or a derivative thereof and porous silica beads having a particle size Dv50 in the range of 8 to 15 µm and a specific surface area in the range of 100 to 300 m2/g (abstract). The amount of beads is preferably in the range from 1 to 30 wt. % (page 2, fourth paragraph). The term “anhydrous composition” refers to compositions in that no water is added purposively to the composition. While formulations which are completely water free or which have only trace amounts of water are most desired, the term is meant to encompass total water contents of up to about 5 wt. %. In one embodiment the composition contains up to about 0.5 wt. % water (page 2, last paragraph). In one embodiment, the L-ascorbic acid or derivative thereof is a powdered solid (page 3, last paragraph). Preferred anhydrous compositions are skin care preparations or functional preparations intended for topical application (page 5, fourth paragraph). The topical cosmetic composition can also contain usual cosmetic adjuvants and additives, such as fatty substances/oils and surfactants (page 6, last paragraph). The necessary amounts of the cosmetic and dermatological adjuvants and additives can – based on the desired product – easily be chosen by a skilled person in this field (page 7, third paragraph). In a particular advantageous embodiment, the composition comprises at least 40 wt. % of oil (page 7, fifth paragraph). The term oil also encompasses waxes (page 7, sixth paragraph). Suitable oils include mineral oil (i.e., carbon chain-based oil) (page 8, second paragraph) and spent grain wax (page 8, third paragraph).
Laurent differ from the instant claims insofar as not disclosing wherein the composition comprises both spent grain wax and mineral oil.
However, since Laurent discloses the use of various oils 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 by Laurent 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.
In regards to the amount of wax and mineral oil (i.e., carbon chain-based oil) recited in instant claim 1, Laurent discloses at least 40 wt. % oil. Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of wax and mineral oil such that the total amount is at least 40 wt. %. For example, 5% wax and 60% mineral oil for a total amount of 65% oil.
In regards to the amount of surfactant recited in instant claim 1, Laurent discloses wherein surfactants are adjuvants/additives and the amount can be easily chosen by a skilled person in the field based on the desired product. Therefore, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount of surfactant based on the product desired.
In regards to instant claim 1 reciting wherein the primary particles have an average particle size of 0.5 to 20 µm and constitute 90% or more of the solid porous particles, the instant specification discloses in paragraph [0053] wherein primary particles are single particles and secondary particles are aggregated particles. Since Laurent does not disclose wherein the porous silica beads are aggregated, it would have been obvious to one of ordinary skill in the art that the porous silica beads are all primary particles.
In regards to instant claim 1 reciting wherein the solid porous particles are the only type of particles in the composition, Laurent disclose wherein in one embodiment the L-ascorbic acid or derivative thereof is a powdered solid. Therefore, since this is only in one embodiment, the L-ascorbic acid or derivative does not need to be a powdered solid. Thus, making the porous silica beads the only required particles in the composition.
In regards to instant claim 8 reciting a detergent, this is merely a recitation of the intended use of the composition. Since the composition of Laurent comprises surfactants, it is usable as a detergent whether the prior art discloses such use or not.
2. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Laurent et al. (WO 2021/058469 A1, Filing Date Sep. 22, 2020) (hereinafter Laurent) in view of Monsuur (US 2015/0366805, Dec. 24, 2015).
The teachings of Laurent are discussed above. Laurent does not teach wherein the porous silica beads have an average pore diameter of 7.5 to 50 nm.
However, Monsuur discloses a composition comprising porous inorganic oxide, wherein the inorganic oxide particles have a median pore size of 5 nm to 30 nm (claim 106). The inorganic oxide may be silica (¶ [0070]). The composition may be formulated into forms suitable for topical application (¶ [0127]).
Laurent does not disclose the average pore diameter for the porous silica beads. Therefore, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the porous silica beads to have a median pore size of 5 nm to 30 nm since this is a known and effective pore size for porous silica used in topical compositions as taught by Monsuur.
3. Claims 9 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Laurent et al. (WO 2021/058469 A1, Filing Date Sep. 22, 2020) (hereinafter Laurent) in view of Ferraz et al. (WO 2018/076083 A1, May 3, 2018) (hereinafter Ferraz).
The teachings of Laurent as discussed above. Laurent does not teach wherein the composition comprises a hydrophilic non-ionic surfactant and synthetic wax.
However, Ferraz discloses a deodorant antiperspirant composition for masking skin imperfection (abstract). The composition may comprise one or more surfactant (page 23, lines 20-21). Suitable surfactants include PEG-20 glyceryl triisostearate (page 24, line 1) and PEG-10 isostearate (page 24, line 20). The composition may also contain at least one wax (page 17, lines 23-24). Suitable waxes include synthetic waxes. Waxes of synthetic origin are preferable as they are more uniform and provide greater reproducibility than waxes of natural origin (page 18, lines 10-15).
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. Laurent discloses wherein the composition comprises surfactants. Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated PEG-20 glyceryl triisostearate and PEG-10 isostearate (i.e., hydrophilic non-ionic surfactants) into the composition since they are known and effective surfactants for topical compositions as taught by Ferraz.
In regards to incorporating both PEG-20 glyceryl triisostearate and PEG-10 isostearate as the surfactant, since Ferraz discloses the use of various surfactants 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 by Ferraz 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.
Additionally, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated synthetic wax into the composition of Laurent since the composition of Laurent comprises waxes and synthetic waxes are known and effective waxes for topical composition and are preferable over natural waxes as taught by Ferraz.
4. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Laurent et al. (WO 2021/058469 A1, Filing Date Sep. 22, 2020) (hereinafter Laurent) in view of Ferraz et al. (WO 2018/076083 A1, May 3, 2018) (hereinafter Ferraz), and further in view of Monsuur (US 2015/0366805, Dec. 24, 2015).
The teachings of Laurent and Ferraz are discussed above. Laurent and Ferraz not teach wherein the porous silica beads have an average pore diameter of 7.5 to 50 nm.
However, Monsuur discloses a composition comprising porous inorganic oxide, wherein the inorganic oxide particles have a median pore size of 5 nm to 30 nm (claim 106). The inorganic oxide may be silica (¶ [0070]). The composition may be formulated into forms suitable for topical application (¶ [0127]).
Laurent does not disclose the average pore diameter for the porous silica beads. Therefore, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the porous silica beads to have a median pore size of 5 nm to 30 nm since this is a known and effective pore size for porous silica used in topical compositions as taught by Monsuur.
5. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Laurent et al. (WO 2021/058469 A1, Filing Date Sep. 22, 2020) (hereinafter Laurent) in view of Ferraz et al. (WO 2018/076083, May 3, 2018) (hereinafter Ferraz), and further in view of Ledingham et al. (US 2012/0121525, May 17, 2012) (hereinafter Ledingham).
The teachings of Laurent and Ferraz are discussed above. Laurent and Ferraz do not teach wherein the composition comprises glyceryl tri(ethyl hexanoate) and cetyl ethyl hexanoate.
However, Ledingham discloses an antiperspirant composition comprising triethylhexanoin (i.e., glyceryl tri(ethyl hexanoate)) and at least one additional non-volatile oil (abstract). Other non-volatile oils include cetyl ethyl hexanoate (Table 4).
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. Laurent discloses wherein the composition comprises oils. Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated triethylhexanoin (i.e., glyceryl tri(ethyl hexanoate)) and cetyl ethyl hexanoate into the composition since they are known and effective oils for topical compositions as taught by Ledingham.
In regards to incorporating wax, mineral oil, triethylhexanoin (i.e., glyceryl tri(ethyl hexanoate)) and cetyl ethyl hexanoate as the oil, since Laurent and Ledingham disclose the use of various oils 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 by the prior arts 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.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Claims 1-6 and 8-16 are rejected.
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TRACY LIU/Primary Examiner, Art Unit 1614