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 .
Status of the Claims
Claims 1-16 are pending.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Instant application claims priority of foreign application KR10-2023-0006945, filed 01/17/2023. Therefore, the effective filing date is 01/17/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/16/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Objections – Drawings
37 C.F.R. 1.84:
(t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section.
The drawings are objected to because the sheets of the drawings are not numbered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 5 and 13 are objected to because of the following informalities:
Claims 5 and 13 read “…comprises an oil phase; and an aqueous phase; wherein…”, and should read “…comprises an oil phase and an aqueous phase, wherein…”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102 or 103
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.
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.
Claims 1, 5-9, and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or alternatively, under 35 U.S.C. 103 as unpatentable over Takayuki (JP 2009292734 A), cited by Applicant in the IDS.
Takayuki et al. teaches, in claim 1, an oil-in-water emulsion skin cosmetic comprising β-alanyl-L-histidine, a compound of formula (1), a compound of either formula (2) or formula (3), and a water-containing oil selected from N-lauroyl-L-glutamic acid ester, N-myristoyl-N-methyl-β-alanine ester, and pentaerythritol ester, as in instant claims 1, 8, 9, and 16.
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MPEP 2131.02 III states: “A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015)”. Therefore, one of ordinary skill in the art would at once envisage using N-myristoyl-N-methyl-β-alanine ester in the above described invention, since it is to be selected from a list of only three compounds. Alternatively, it would be prima facie obvious to select N-myristoyl-N-methyl-β-alanine ester as the water-containing oil since it is in a list of only three compounds to select from.
The “emulsifier”, β-alanyl-L-histidine, is soluble in water, and would therefore be present in the aqueous phase, as in instant claims 5 and 13.
It is taught, in claim 4, that the cosmetic composition comprises the water-containing oil component at 1.0-5.0%, as in instant claims 6 and 14. It is taught, in claim 2, that the composition comprises the basic component in an amount of 3.0% by mass, as in instant claims 7 and 15.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code can be found above.
Claims 2, 4, 10, and 12 are rejected under 35 U.S.C. 103 as unpatentable over Takayuki (JP 2009292734 A), cited by Applicant in the IDS, as applied to claims 1, 5-9, and 13-16 above.
Takayuki et al. teaches, in claim 1, an oil-in-water emulsion skin cosmetic comprising β-alanyl-L-histidine and N-myristoyl-N-methyl-β-alanine ester. See above rejection.
β-alanyl-L-histidine is an amino acid with a pH of 6.83, which is merely close to a pH of 7-9, as in instant claims 2, 4, 10, and 12. MPEP 2144.05 states: “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997)”.
Advisory Notice
Claims 3 and 11 appear allowable if rewritten in independent form. The prior art does not teach the use of arginine, histidine, or lysine in the cosmetic composition.
Conclusion
Claims 1, 2, 4-10, and 12-16 are rejected.
Claims 3 and 11 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RILLA M SAMSELL whose telephone number is (703)756-5841. The examiner can normally be reached Monday-Friday, 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.M.S./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
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