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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 11, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 1 – 21 are examined here-in.
Claim Objections
Claim 21 is objected to because of the following informalities:
Claim 21 reads “The ingredient blend of claim 1, wherein the phenoxazone and/or phenoxazine compound, or a salt thereof, compound comprises 0.4 wt. % of the ingredient blend.” The word compound after “a salt thereof” is believed to be a typographical error.
Appropriate correction is required.
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.
Claims 3, 5, 8, and 16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 3 recites the limitation "the at least one cross-linkable polymer". Claim 3 depends on claim 2 which depends on claim 1. Neither claims 1 or 2 recite “at least one cross-linkable polymer”. Therefore, there is insufficient antecedent basis for this limitation in the claim.
The term “natural” in claim 5 is a relative (and subjective) term which renders the claim indefinite. The term “natural” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While the specification does provide possible examples for “natural” there is no definition.
The term “naturally derived” in claim 8 is a relative (and subjective) term which renders the claim indefinite. The term “naturally derived” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “unaggregated” in claim 16 is a relative (and subjective) term which renders the claim indefinite. The term “unaggregated” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
(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, 15, 17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Deravi (US 11,464.719 B2).
Deravi teaches cosmetic and dermatologic compositions which include phenoxazone, phenoxazine, or derivative pigment (abstract, column 2 lines 36 – 41, 44 – 50).
Deravi teaches compositions with phenoxazone-based pigments are suitable for anti-aging applications (column 12 lines 13 – 16, 37 – 48), anticipating instant claim 1.
Deravi teaches anti-aging cosmetic composition includes the phenoxazone-based pigment derivative xanthommatin (column 12 lines 37 – 48), anticipating instant claims 15 and 17.
Deravi teaches xanthommatin suspended in water (column 16 lines 63 – 64), anticipating instant claim 19.
Deravi teaches the phenoxazone-based pigments make up 0.01 – 0.9 wt. % of the cosmetic or dermatological formulations (column 10 lines 27 – 29), falling within the instantly claimed range of 0.01 – 1 wt. % as recited in claim 20. Claimed ranges that overlap the prior art range with sufficient specificity are anticipated according to MPEP 2131.03(ii). In the instant case, the taught range of 0.01 to 0.9 wt. % falls completely within the claimed range of 0.01 – 1 wt. %, i.e. the prior art range is narrower than the instantly claimed range, therefore the prior art range is sufficiently specific and thus claim 20 is anticipated.
However, in the event that the previous does not have sufficient specificity to rise to anticipation, claims 1, 15, 17, 19, and 20 are also rejected under 35 U.S.C. 103 below.
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 non-obviousness.
Claims 1 and 15 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Deravi (as cited above).
For the purposes of this ground of rejection only, and purely arguendo, the examiner will take the position that Deravi does not teach a specific embodiment (i.e., preferred embodiment, working example, etc.) having all of the claimed elements arranged as required by the claim without resorting to some “picking and choosing” within the prior art disclosure. That being said, although Deravi thus would not be anticipatory by this interpretation of the facts, it nevertheless does fairly suggest the claimed invention, as shown below.
Deravi teaches cosmetic and dermatologic compositions which include phenoxazone, phenoxazine, or derivative pigments, such as xanthommatin (abstract, column 2 lines 36 – 41, 44 – 50, column 12 lines 13 – 16, 37 – 48).
Deravi teaches xanthommatin can be suspended in water (column 16 lines 63 – 64), and that phenoxazone-based pigments make up 0.01 – 0.9 wt. % of the cosmetic or dermatological formulations (column 10 lines 27 – 29).
Deravi teaches compositions with phenoxazone-based pigments are suitable for anti-aging applications (column 12 lines 13 – 16, 37 – 48).
Claims 1 and 15 – 21 are rendered prima facie obvious over the teachings of Deravi, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., phenoxazone and/or phenoxazine-based pigments) were known in the prior art (e.g., cosmetic and dermatologic compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., a cosmetic composition comprising phenoxazone and/or phenoxazine-based pigments) to one of ordinary skill in the art (MPEP 2143(i)(a)).
Deravi’s teaching that cosmetic and dermatologic compositions which include phenoxazone, phenoxazine, or derivative pigments are suitable for anti-aging compositions (abstract, column 2 lines 36 – 41, 44 – 50, column 12 lines 13 – 16, 37 – 48) reads on instant claim 1.
Deravi’s teaching that the anti-aging cosmetic composition includes the phenoxazone-based pigment derivative xanthommatin (column 12 lines 37 – 48), reads on instant claims 15 and 17.
A person of ordinary skill in the art would know that including a xanthommatin salt in the composition rather than xanthommatin in a non-ionic form would increase solubility of the compound. Therefore, the inclusion of ammonium xanthommatin, as recited in instant claim 18, is prima facie obvious. Generally, salts of compounds are recognized as equivalents of the compound that serve the same purpose. Substituting known equivalents for the same purpose is prima facie obvious according to MPEP 2144.06(II). As noted above, a person of ordinary skill in the art would be motivated to substitute ammonium xanthommatin for xanthommatin because ammonium xanthommatin would be more water-soluble than xanthommatin.
Deravi teaches the inclusion of a stabilizing material in the cosmetic composition to prevent phenoxazone clumping (column 4 lines 57 – 59), reading on instant claim 16.
Deravi’s teaching that xanthommatin can be suspended in water (column 16 lines 63 – 64), reads on instant claim 19.
Deravi’s teaching that phenoxazone-based pigments make up 0.01 – 0.9 wt. % of the cosmetic or dermatological formulations (column 10 lines 27 – 29) reads on instant claims 20 and 21. Phenoxazone-based pigments in an amount ranging from 0.01 – 0.9 wt. % overlaps on the instantly claimed range of 0.1 – 1 wt. % and the amount of 0.4 wt. % as recited in claims 20 and 21. Claimed ranges are prima facie obvious according to MPEP 2144.05(i).
Claims 2 – 7 and 9 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Deravi (as cited above) in view of Friedman (US 2015/0202139 A1).
Deravi’s teachings are discussed above.
Deravi does not teach a liposome composition.
Friedman teaches the missing elements of Deravi.
Friedman teaches skin care formulations wherein ingredients are encapsulated in liposomes to facilitate effective delivery (abstract).
Friedman teaches that liposomes are well-suited to deliver anti-aging actives in cosmetic compositions (paragraph 0077).
Freidman teaches that liposomes are composed of phospholipids, which preferably have a natural origin (paragraphs 0078, 0083). Friedman teaches that lecithin can be integrated into liposome structure (paragraph 0083).
Friedman teaches liposomes have a diameter ranging from 200 to 400 nm and a pH in a range from 5 to 8 (paragraph 0085). Friedman teaches that liposomes in the 200 – 400 nm size range can penetrate the stratum corneum and release their cargoes via diffusion (paragraph 0085).
Friedman teaches propanediol is an ingredient that can be included in the liposome composition (paragraph 0031). Friedman teaches propanediol is a humectant and that humectants help restore hydration to the skin (paragraphs 0019, 0035).
Friedman teaches that thickening agents (also known as film-formers) can be included with a liposomal composition to increase the stability of the composition (paragraph 0066). Friedman teaches crosslinkable polymers as suitable thickening agents (paragraphs 0067 – 0068).
The combination of Deravi and Friedman renders claims 2 – 7 and 9 – 14 prima facie obvious as combining prior art elements according to known methods to yield predictable results. A person of ordinary skill in the art would be motivated to encapsulate phenoxazone and/or phenoxazine-based pigments as taught by Deravi in a liposome because Friedman teaches that liposomes are well-suited to deliver anti-aging actives in cosmetic compositions because they penetrate the stratum corneum and release their cargoes via diffusion (paragraphs 0077, 0085). The combination of Deravi and Friedman’s teachings would yield predictable results (i.e. phenoxazone and/or phenoxazine-based pigments encapsulated in liposomes), therefore this combination is prima facie obvious according to MPEP 2143(i)(a).
Deravi’s teaching that cosmetic and dermatologic compositions which include phenoxazone, phenoxazine, or derivative pigments are suitable for anti-aging compositions (abstract, column 2 lines 36 – 41, 44 – 50, column 12 lines 13 – 16, 37 – 48) in combination with Friedman’s teaching that skin care formulations wherein ingredients are encapsulated in liposomes to facilitate effective delivery (abstract) reads on instant claim 2. A person of ordinary skill in the art would be motivated to include Deravi’s phenoxazone, phenoxazine, or derivative pigments in a liposomal composition as taught by Friedman because Friedman teaches that liposomes are well-suited to deliver anti-aging actives in cosmetic compositions (paragraph 0077).
Friedman’s teaching that crosslinkable polymers can be included with a liposomal composition as thickening agents to increase the stability of the composition (paragraphs 0066 - 0068) reads on instant claim 3.
Freidman’s teaching that liposomes are composed of phospholipids, which preferably have a natural origin, and that propanediol is an ingredient that can be included in the liposome composition (paragraphs 0031, 0078, 0083) reads on instant claims 4 and 5.
Friedman’s teaching for lecithin as a phospholipid in the liposome structure (paragraph 0083) reads on instant claims 6 and 7.
Friedman’s teaching to include propanediol in the liposomal composition (paragraphs 0019, 0035) reads on instant claims 9 and 10.
Friedman’s teaching for liposomes with a diameter ranging from 200 to 400 nm (paragraph 0085) reads on instant claims 11 – 13. A diameter range from 200 to 400 nm overlaps on the instantly claimed ranges of less than 1000 nm and from about 200 to 400 nm, as recited in claims 11 and 13. The range of 200 to 400 nm also overlaps on the amount of 250 nm as recited in instant claim 12. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i). A person of ordinary skill in the art would be motivated to make liposomes in the 200 to 400 nm size range because Friedman teaches that liposomes in this size range can penetrate the stratum corneum and release their cargoes via diffusion (paragraph 0085).
Friedman teaches the liposomal composition has a pH in a range from 5 to 8 (paragraph 0085), overlapping on the instantly claimed range of 5 to 8 as recited in claim 14.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Deravi (as cited above) in view of Friedman (as cited above) and further in view of Tai (Tai, K. et al. “The effect of sterol derivatives on properties of soybean and egg yolk lecithin liposomes” 2018 Food Research International, 109, pages 24 – 34).
The teachings of Deravi and Friedman are discussed above.
The combination of Deravi and Friedman does not specify lecithin is derived from soybean or egg yolk.
Tai teaches the missing element of the combination of Deravi and Friedman.
Tai teaches that soybean and egg yolk lecithin liposomes (page 25 column 1), showing that soybean and egg yolk lecithin is a known component of liposomal compositions.
The combination of Deravi, Friedman, and Tai’s teachings is prima facie obvious as combining prior art elements according to known methods to yield predictable results. A person of ordinary skill in the art would be motivated to include soybean or egg yolk lecithin as taught by Tai in a liposomal combination because Tai shows that these lecithins are known components of liposomal compositions. Furthermore, a person of ordinary skill in the art would be motivated to include soybean or egg yolk lecithin in order to advertise that the liposomal composition has “natural” ingredients. The combination of Deravi, Friedman, and Tai’s teachings would yield predictable results of a liposomal composition encapsulating phenoxazone and/or phenoxazine based pigments which is prepared with soybean or egg yolk lecithin as the lipid component of the liposomes. This combination is prima facie obvious according to MPEP 2143(i)(a).
The combination of Deravi’s teaching for an anti-aging composition which includes phenoxazone, phenoxazine, or derivative pigments (abstract, column 2 lines 36 – 41, 44 – 50, column 12 lines 13 – 16, 37 – 48) with Friedman’s teaching to encapsulate skin care ingredients in liposomes to facilitate effective delivery (abstract), and Tai’s teaching for soybean and egg yolk lecithins as suitable lipids for liposomes, reads on instant claim 8.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Double Patenting over 18/031,916
Claims 1 and 15 – 21 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 94 – 99 of copending Application No. 18/031,913 in view of Deravi (as cited above).
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 is drawn to a composition comprising an unsaturated solution of a phenoxazone and/or phenoxazine compound, or a salt there-of.
Conflicting claim 1 is drawn to a composition comprising avobenzone and an unsaturated solution of 1 wt. % or less of xanthommatin, or a precursor, derivative, or salt thereof.
The instant and conflicting claims differ because conflicting claim 1 recites the inclusion of avobenzone.
Deravi teaches compositions containing xanthommatin and compositions containing avobenzone (Figure 12, column 4 lines 19 – 21). Deravi teaches xanthommatin and avobenzone both have UV-filtering properties, with xanthommatin filtering wavelengths of 385 – 390 nm and avobenzone filtering 370 – 375 nm (Figure 12).
It would be prima facie obvious to the ordinarily skilled artisan to include, within instant claim 1, avobenzone as taught by Deravi. A person of ordinary skill in the art would be motivated to include both avobenzone and xanthommatin because they filter different wavelength ranges, therefore, a composition containing both compounds would be expected to filter both wavelength ranges. It is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
Conflicting claims 94 – 99 recite different amounts and/or derivatives of xanthommatin to include in the composition, overlapping on instant claims 15 – 21.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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