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 .
DETAILED ACTION
Pursuant to the preliminary amendment dated 1/25/2024, claims 1-13 are amended and claim 14 is newly added.
Claims 1-14 are pending in the instant application and are examined on the merits herein.
Priority
The application is a National Stage entry of PCT/CN2021/115542 filed on 8/31/2021.
Information Disclosure Statement
The information disclosure statements (IDS) dated 1/25/2024, 4/11/2025 and 4/17/2026 comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, except where noted. Accordingly, the IDS documents have been placed in the application file and the information therein has been considered as to the merits.
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 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tao et al. (CN 112545920 A, April 2021, PTO-892).
Tao et al. exemplifies a skin care composition comprising 4 kg of polyglycerol-3-
methylglucose distearate, 0.8 kg of bis-PEG/PPG-20/5PEG/PPG-20/5 polydimethylsiloxane, methoxy PEG/PPG-25/4 polydimethylsiloxane, 3.2 kg polyglycerol-10, 4.2 kg hydroxypropyl tetrahydropyranotriol, and 2 kg hydroxyethyl acrylate/sodium acryloyl dimethyl taurate copolymer. (Example 1, see also Examples 2-6 and claims 1-9) Tao further discloses that:
The emulsifier, bis-PEG/PPG-20/5PEG/PPG-20/5 polydimethylsiloxane, may be present at 0.1-1 parts by weight and the emulsifier, polyglycerol-3-methylglucose distearate, may be present at 1-5 parts by weight; (¶0022)
The thickener, hydroxyethyl acrylate/sodium acryloyl dimethyl taurate copolymer, may be present at comprises 0.1-2 parts by weight; (¶00206)
The moisturizer, polyglycerol-10, may be present at 1-5 parts by weight; (¶0047).
Tao also discloses that the purpose or desired effect of using face cream is to cover the skin surface to form an oily protective film, which can effectively lock in moisture and nutrients, in the field of cosmetic technology. (¶0001-0002, 0007)
Accordingly, the instant claims are anticipated by the prior art.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito et al. (WO 2014/098267, IDS).
Saito et al. exemplifies O/W cosmetic emulsions containing 3wt.% proxylane (a.k.a. C-beta-D-xylopyranoside-2-hydroxypropane), 0.12 wt.% of sodium methyl stearyol taurate, 0.3 wt.% of PPG-6 decyltetradeceth-30 and 4.5 wt.% of polyglyceryl-5 laurate. (Examples 1-2; Claims 1-18) Saito also discloses a non-therapeutic process for treating the skin, the hair, mucous membranes, the nails, the eyelashes, the eyebrows and/or the scalp, by applying to the envisioned compositions. (Claim 19)
Accordingly, the instant claims are anticipated by the prior art.
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 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 of this title, 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 3, 5, 8 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (CN 112545920 A, April 2021, PTO-892).
The disclosure of Tao is referenced as discussed above. Tao does not disclose the identical concentration ranges as claimed. Tao also does not exemplify or claim a non-therapeutic method of caring for keratin material.
With respect to the claimed concentration ranges of components, the disclosure of Tao overlaps those claimed, In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (MPEP § 2144.05(I)) Moreover, 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (MPEP § 2144.05(II)) “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 Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the composition of Tao would be used in a non-therapeutic, or cosmetic, method for caring for keratin materials, thereby arriving at the invention of claim 13, because Tao teaches that the purpose of the composition is to cover the skin surface to form an oily protective film, which can effectively lock in moisture and nutrients.
Accordingly, the instant claims are prima facie obvious over the teachings of the prior art.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (CN 112545920 A, April 2021, PTO-892) or in the alternative over Saito et al. (WO 2014/098267, IDS), in view of Willemin et al. (US 2008/0226756A1, PTO-892).
The disclosure of Tao or Saito are referenced as discussed above. Neither Tao nor Saito discloses the genus or sub-set of C-glycosides, as claimed.
Willemin et al. discloses a cosmetic composition comprising 0.00016 to 25% by weight relative to the total weight of the composition of at least one C-glycoside compound of formula: S-CH2-X-R, where the C-glycoside is preferably selected from among the following: (Claims 17 and 18)
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that any of the C-glycosides discloses by Willemin could have been used in the composition of Tao or Saito, thereby arriving at the instant invention. One would be motivated to perform such an equivalent C-glycoside substitution because Tao/Saito and Willemin are all directed to cosmetic emulsion based compositions with C-glycosides as the active ingredient and one of ordinary skill would predict similar behavior for the composition of Tao/Saito containing any of the art recognized C-glycosides, as detailed by Willemin.
Accordingly, the instant claims are prima facie obvious over the teachings of the prior art.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (CN 112545920 A, April 2021, PTO-892), in view of Cheng et al. (US 2020/0148980A1, PTO-892).
The disclosure of Tao is referenced as discussed above. Tao does not disclose the claimed anionic surfactants.
Cheng discloses skin care compositions comprising taurate compounds including potassium cocoyl taurate, potassium methyl cocoyl taurate, sodium caproyl methyl taurate, sodium cocoyl taurate, sodium lauroyl taurate, sodium methyl cocoyl taurate, sodium methyl lauroyl taurate, sodium methyl myristoyl taurate, sodium methyl oleoyl taurate, sodium methyl palmitoyl taurate, sodium methyl stearoyl taurate, sodium n-isostearoyl methyltaurate, calcium lauroyl taurate, magnesium methyl cocoyl taurate, sodium methyltaurate isopalmitamide, sodium methyltaurine cocoyl methyltaurate, sodium taurine cocoyl methyltaurate and mixtures thereof. (¶0017)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the taurate of Tao with any art recognized taurate, suitable for use as an anionic surfactant, where suitable substitutes are taught by Cheng. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)
Accordingly, the instant claims are prima facie obvious over the teachings of the prior art.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Willemin et al. (US 2008/0226756A1, PTO-892).
Willemin et al. discloses a cosmetic composition comprising 0.00016 to 25% by weight relative to the total weight of the composition of at least one C-glycoside compound of formula: S-CH2-X-R, where the C-glycoside is preferably selected from among the following: (Claims 17 and 18)
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Willemin further discloses that:
The composition may contain anionic surfactants including alkyl methyl taurates; (¶0438)
The composition may contain non-ionic surfactant including: (A) polyglycerolated fatty alcohols or polyglyceryl-3 hydroxylauryl ether or polyglycerolated dodecanediol, such as CHIMEXANE® by Chimex; or (B) PPG-15 stearyl ether or copolymers of polyethylene oxide/propylene oxide; (¶0291, 0303, 0424, 0434, 0456, 0731)
The ionic or non-ionic emulsifiers may be present at 0.3-30 wt%; (¶0421)
The invention also relates to a cosmetic method for caring for and/or cleansing and/or making up the skin or its appendages that comprises applying a composition as defined previously to the skin or its appendages. (¶0944)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that a combination of anionic and non-ionic surfactants, selected from those detailed by Willemin, could be added to the C-glycoside based cosmetic composition of Willemin, thereby arriving at the instant invention. One would be motivated to modify the composition of Willemin in this way because Willemin suggests the addition of such anionic and non-ionic surfactants, as part of routine formulation and optimization of the disclosed cosmetic compositions.
With respect to the claimed concentration ranges of components, the disclosure of Willemin overlaps those claimed, In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (MPEP § 2144.05(I)) Moreover, 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (MPEP § 2144.05(II)) “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 Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Accordingly, the instant claims are prima facie obvious over the teachings of the prior art.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Willemin et al. (US 2008/0226756A1, PTO-892), in view of Cheng et al. (US 2020/0148980A1, PTO-892).
The disclosure of Willemin is referenced as discussed above. Willemin does not disclose the claimed anionic surfactants.
Cheng discloses skin care compositions comprising taurate compounds including potassium cocoyl taurate, potassium methyl cocoyl taurate, sodium caproyl methyl taurate, sodium cocoyl taurate, sodium lauroyl taurate, sodium methyl cocoyl taurate, sodium methyl lauroyl taurate, sodium methyl myristoyl taurate, sodium methyl oleoyl taurate, sodium methyl palmitoyl taurate, sodium methyl stearoyl taurate, sodium n-isostearoyl methyltaurate, calcium lauroyl taurate, magnesium methyl cocoyl taurate, sodium methyltaurate isopalmitamide, sodium methyltaurine cocoyl methyltaurate, sodium taurine cocoyl methyltaurate and mixtures thereof. (¶0017)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the taurate of Willemin with any art recognized taurate, suitable for use as an anionic surfactant, where suitable substitutes are taught by Cheng. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)
Accordingly, the instant claims are prima facie obvious over the teachings of the prior art.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALE R MILLER whose telephone number is (571) 272-6146. The examiner can normally be reached on M-F 7:00 AM – 3:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached on (571) 270-5341. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DALE R MILLER/Primary Examiner, Art Unit 1693
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