DETAILED ACTION
The receipt is acknowledged of applicant’s preliminary amendment filed 09/21/2023; and IDS(s) filed: 09/21/2023, 11/15/2023 and 03/17/2025.
Claims 1-8 are pending.
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 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 1-8 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 bracketed limitation: (in the formula(I), n represents an integer of 2 to 5). In it not clear if this limitation is certainly required by the claim. It is suggested to remove the parenthesis. Claims 2-8 are rejected as depending on rejected claim 1.
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.
Claims 1-3, and 5 are rejected under 35 U.S.C. 102(a) as being anticipated by Yoshimura et al. (US 2011/0236447, currently cited on PTO 892).
Claim 1 is directed to a cosmetic comprising:
(A) retinol; and
(B) an organic acid represented by general formula (I) below:
[Chemical 1]
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149
293
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(in the formula (I), n represents an integer of 2 to 5) or a salt thereof.
Yoshimura teaches antiaging cosmetic composition comprising 0.1% vitamin A palmitate (retinol) and 0.1% piperidine propionic organic acid (example 6, paragraph [0149]; and example 9, paragraph [0159]). The composition may further comprise vitamin C (ascorbic acid) as antioxidant agent and as whitening agent (¶¶ 0078, 0083).
All the limitations of claim 1 are met by the reference because the reference disclosed and exemplifies a composition comprising retinol and organic acid.
Regarding claim 2, the reference disclosed the composition comprises 0.1% retinol that falls within the claimed range of 0.01-0.5%.
Regarding claim 3, the reference disclosed the composition comprises 0.1% organic acid that falls within the claimed range of 0.005-5%.
Regarding piperidine propionic acid claimed by claim 5, the reference exemplified the claimed organic acid.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura et al. (US 2011/0236447).
Applicant Claims
Claim 4 recites the formulation of claim 1 comprises mass ratio of amount of retinol to the amount of organic acid is 0.005 to 1.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Yoshimura are previously discussed in this office action.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012) &
Finding of Prima Facie Obviousness Rational and Motivation
(MPEP §2142-2143)
While Yoshimura teaches cosmetic composition comprising the claimed ingredients in the claimed amount, the reference however does not teach the ratio of retinol to organic acid as claimed by claim 4.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to find the desired effective ratio of retinol to organic acid based on the specific intended use. It would have been customary for an artisan of ordinary skill to determine the optimal ratio of vitamin A to organic acid in order to best achieve the desired results. Thus, absent some demonstration of unexpected results from the claimed ratio, this optimization of the ratio would have been obvious at the time of applicant's invention. “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.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. There is no evidence of record as to the criticality of the claimed ratio. The amount of a specific ratio of ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ.
Absent any evidence to the contrary, and based upon the teachings of the prior art, there would have been a reasonable expectation of success in practicing the instantly claimed invention. 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 present invention.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura et al. (US 2011/0236447), combined with the article by Gianeti et al. (“Benefits of combination of vitamin A, C, and E derivatives in the stability of cosmetic formulations”), JP 2012240911 (hereinafter JP ‘911), and Ladislas et al. (US 2004/0136938), all the references are cited on PTO 892, and copy of Gianeti reference and JP ‘911 are currently provided.
Applicant Claims
Claim 6 recites the composition of claim 1 further comprises vitamin C, claim 7 recites the amount of vitamin C is 0.005-1% in the composition, and claim 8 recites the ratio of the amount of vitamin C to the organic acid is 1/300 to 1.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teaching of Yoshimura are previously discussed in this office action Yoshimura teaches all the limitations of claims 1-3 and 5.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
While Yoshimura teaches suggests vitamin C in the composition comprising retinol and organic acid as a whitening or antioxidant agent, the reference however does not teach with sufficient specificity or exemplifies vitamin C and its amount as claimed by claims 6-8.
Gianeti teaches topical composition comprising combination of vitamin C and vitamin A that is able to reverse skin changes induced by chronologic and photoaging. Table 1 of the reference teaches both vitamin A and vitamin C are present in the same concentration. The combination of vitamins provides improved and acceptable stability (see the entire document and in particular: page 2220, third paragraph; conclusion).
JP ‘911 teaches antiwrinkle, antiaging composition comprising 0.001-5% piperidine propionic acid. The composition further comprises antioxidant and whitening agents including vitamin C (abstract; ¶¶ 0006, 0016, 0025-0032).
Ladislas teaches cometic composition comprising combination of vitamin A and vitamin C in synergistic amount that significantly reduce toxic effects of the vitamins. Each vitamins are present in the composition in amount preferably 0.01-10% (abstract; ¶¶ 0010, 0070, 0211, 0212).
Finding of Prima Facie Obviousness Rational and Motivation
(MPEP §2142-2143)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to provide cosmetic antiaging composition comprising retinol and piperidine propionic acid in the amounts taught by Yoshimura wherein the composition may comprise vitamin C, and add vitamin C in the same concentration as vitamin A as taught by Gianeti or JP ‘911. One would have been motivated to do so because Gianeti teaches composition comprising vitamin A and vitamin C in the same amount is able to reverse skin changes induced by chronologic and photoaging while having significant and acceptable stability, and because JP ‘911 teaches combination of piperidine propionic acid with vitamin C in a single antiwrinkle antiaging composition wherein vitamin C adds whitening antioxidant effect to the composition. One would reasonably expect formulating an antiaging cosmetic composition comprising piperidine propionic acid, vitamin A and vitamin C wherein the composition has synergistic antiaging components while being stable and provides additional whitening and antioxidant effect.
Further, it would have been obvious to one having ordinary skill in the art to formulate the cosmetic composition taught by the combination of Yoshimura, Gianeti and JP ‘911 that comprises vitamin A, piperidine propionic and vitamin C wherein the concentration of vitamin A and vitamin C can be equal, and use vitamin C in amount of 0.01-10% as taught by Ladislas because Ladislas teaches such amount of vitamin C works synergistically with vitamin A and significantly reduces toxic effects of the both vitamins.
Regarding vitamin C claimed by claim 6, combination of the cited references suggests cosmetic composition that is beneficially comprises vitamin C.
Regarding the claimed amounts of vitamin C of 0.005 to 1% as claimed by claim 7, Gianeti teaches equal amounts of both vitamin A and vitamin C in cosmetic that would suggest the amount of 0.1% vitamin A taught by Yoshimura that falls within the claimed amount. Further, Ladislas teaches 0.01-10% that overlaps with the claimed amount. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 [R-5].
Regarding claim 8 that the ratio of vitamin C to the organic acid is 1/300 to 1, combination of the cited references teaches 0.01-10% vitamin C and 0.001-5% organic acid that embrace the claimed ratio. It would have been customary for an artisan of ordinary skill to determine the optimal ratio of vitamin C to the organic acid in order to best achieve the desired results. Thus, absent some demonstration of unexpected results from the claimed ratio, this optimization of ingredient amount would have been obvious at the time of applicant's invention. The amount of a specific ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to find the desired effective ratio of vitamin C to organic acid based on the specific intended use. “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.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. There is no evidence of record as to the criticality of the claimed ratio.
Absent any evidence to the contrary, and based upon the teachings of the prior art, there would have been a reasonable expectation of success in practicing the instantly claimed invention. 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 present invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Isis A D Ghali whose telephone number is (571)272-0595. The examiner can normally be reached Monday through Friday, 8:30 AM to 5:00 PM EST.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611 /I.G./