Detailed Action
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. 1 This application was filed on February 7, 2024 as a divisional application of parent application that issued as US 11896696 on February 13, 2024. Accordingly, the examined application receives safe harbor status under 35 USC 121 to the parent patent.
Status of Claims
Claims 1-18 is/are under examination.
Election/Restrictions
Applicant’s election of the species in the reply filed on May 28, 2026 acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). See below.
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Claims 1-18 read on the elected species. Upon search and examination, the species has been expanded to include the glucosinolate singrin, ascorbic acid/Vitamin C and sunblock agent Butyl methoxydibenzoylmethane (aka avobenzone).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/7/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-2 and 4-18 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kozlowska et al. (Chapter 11: Phenolic and Tannins in Rapeseed and Canola, Canola and Rapeseed, 1990, Published by Van Nostrand Reinhold, pp. 193-197, 201-202, 205, 207 and 209 in view of Banister et al. (US Pub 2003/0072726, published April 17, Markert 2003) and et al. (EP 1 967 175 A1, published September 10, 2008).
Kozlowska, Banister and Markert are cited on the IDS dated 2/7/2024 as references NPL reference 16, US Patent reference 7 and Foreign patent reference 1.
Regarding claim 1 and the claimed cosmetic composition comprising a canola extract and carrier, the following phenolic compounds of the canola extract have the following structures.
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Kozlowska teaches that canola oil (aka rapeseed) comprises phenolic compounds such as sinapic acid, p-coumaric acid, syringic acid, caffeic acid, vanillic acid and protocatechuic acid, see pages 194-195 and Figure 11-1.
Kozlowska does not teach the claimed concentration range of the phenolic acid canola extracts, does not teach an acceptable carrier, or does not teach the claimed concentration of sinapic acid.
Banister teaches compounds from natural plant materials that display unexpectedly good skin lightening properties of formula I to be used for lightening agents, see abstract; paragraph 1 and claim 1. These skin whiteners include the claimed canola extract phenolic acids and equivalents (known to be skin whiteners, see specification at paragraphs 8-9) as well as other equivalent skin whiteners.
Banister teaches canola phenolic acid, protocatechuic acid as a compound of formula I
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(the taught skin lightening compounds), see paragraph 14, Example 5, Example 9, Table 7 and claim 9.
Banister teaches a compound of formula I wherein R1 is COOH, R2, R5 and R6 are hydrogen, R4 is OH and R3 is OCH3, which is canola extract phenolic acid, vanillic acid.
Banister teaches canola extract phenolic acid, caffeic acid for use in a method for skin depigmentation, see paragraph 4.
Regarding the concentration limitations of the canola extract phenolic acids, Banister teaches the use of skin whitening compositions with agent such as protocatechuic acid in concentrations that are encompassed by applicant’s claimed ranges of claim 1, i.e., 0.01 mg/ml to 0.6 mg/ml, which are equivalent to 1% to 6% w/v, see paragraph 94. See MPEP 2144.05 I-II.2 It is noted the below Table of paragraph 94 teaches melanogenesis inhibition activities in ranges of skin whitening compositions in concentrations (from 0.015, 0.05, 0.15, 0.5 mg/mL) claimed by applicant.
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Banister teaches its various skin whitening compounds in concentrations claimed (from 0.015, 0.05, 0.15, 0.5 mg/mL). A PHOSITA would routinely apply these concentrations to all the canola acid extracts, that are known skin whitening compounds, claimed and taught Kozlowska that fall within the broad claimed range between about 0.1 μg/ml and about 1000 μg/ml (note where 500 μg/ml is equivalent to 0.5 mg/ml, 150 μg/ml is equivalent to 0.15 mg/ml, etc.). See MPEP 2144.05 I-II regarding overlapping ranges.
Regarding the carrier limitation of claim 1, Banister’s Table 4 recites a photostable sunscreen lotion comprising skin whitening compounds of its invention with deionized water as a carrier. See paragraph 96. Banister does not teach claimed concentration amounts of sinapic acid.
Markert teaches sinapic acid, see paragraph 3. Markert teaches that compounds of formula I that encompass sinapic acid, i.e. where Y, R1 and R2 are defined as H, as per paragraph 8. Markert teaches the use of sinapic acid derivatives of formula I for methods and compositions for skin whitening (decreasing abnormal pigmentations such as freckles or spots, or lightening skin color of individuals), see title, abstract, paragraphs 1 and 2; claims 1, 2 and 4.
Regarding the limitation that sinapic acid occurs in an amount of from 0.1 % to 5% sinapic acid by weight of the formulation, Markert teaches that compounds of formula I can be used in cosmetic and/or topical compositions in an amount preferably from 0.001 to 5% wt. based on total weight of the composition, especially 0.1 to 3% wt., see paragraph 23.
Prior to the filing of the present patent application, it would have been prima facie obvious to a person having ordinary skill in the art (PHOSITA) following the teachings of the art, to arrive at the invention where Kozlowska teaches phenolic acids/canola extracts, in the claimed concentrations along with an acceptable carrier as per Banister and sinapic acid in the claimed concentrations as per Markert (e.g. MPEP 2143(a)).3
The PHOSITA would have had a reasonable expectation of success because of the combination of prior art elements (canola extract phenolic acids of Kozlowska) according to known methods (using the concentrations of equivalent skin whiteners and an acceptable carrier as taught by Banister and sinapic acid in claimed amounts, per Markert) to predictably yield the result of the claimed composition.
Regarding claim 2, Banister teaches tocopherol. See paragraph 101.
Regarding claim 2, Kozlowska teaches that canola further contains glucosinolate, see Introduction, page 193.
Regarding claims 4-10 and the individual phenolic canola extract compounds and w/w % claimed therein, these are supported and summarized in the specification (identified as the composition Dermytol™) at paragraph 91
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Regarding the concentration limitations of each of the individual the canola extract phenolic acids claimed (and total sum concentration of claim 5), Banister teaches the use of skin whitening compositions with agent such as protocatechuic acid in concentrations that are encompassed by applicant’s claimed ranges of claim 1, i.e., 0.01 mg/ml to 0.6 mg/ml, which are equivalent to 1% to 6% w/v, see paragraph 94. See MPEP 2144.05 I-II. Further, see Banister Table of paragraph 94 above, disclosing
melanogenesis inhibition occurs with whitening compositions in concentrations (from 0.015, 0.05, 0.15, 0.5 mg/mL) where a range of the concentrations overlap those claimed.
Regarding claims 11-12 and the limitations of tocopherol and glucosinolate in a claimed range of about 0.1 μg/ml and about 1000 μg/ml, as detailed above, Banister and Kozlowska teach whitening agents, tocopherol and glucosinolate as claimed.
With regard to the claimed range of concentration, it is noted that Banister teaches its various skin whitening compounds in concentrations claimed (from 0.015, 0.05, 0.15, 0.5 mg/mL). It would be obvious to apply these concentrations to all the canola acid extracts, that are known skin whitening compounds, claimed and taught by Kozlowska and Banister (tocopherol and glucosinolates) that fall within the broad claimed range between about 0.1 μg/ml and about 1000 μg/ml (note where 500 μg/ml is equivalent to 0.5 mg/ml, 150 μg/ml is equivalent to 0.15 mg/ml, etc.). See MPEP 2144.05 I-II, overlapping ranges.
Regarding claim 13, Banister’s skin whiteners compositions disclose ascorbic acid, aka Vitamin C. See Example 14, paragraph 102.
Regarding claims 14-18, Banister teaches skin whitening composition as topical compositions as sunscreens and a sun block concentration within the claimed 0.05% to 50% wt. range. See Table 4, paragraph 96. See paragraph 96 disclosing the sun blocking agent Butyl methoxydibenzoylmethane (aka avobenzone) in a composition at a concentration of 1.00 % wt. (MPEP 2144.05)
Claims 1-18 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kozlowska et al. (Chapter 11: Phenolic and Tannins in Rapeseed and Canola, Canola and Rapeseed, 1990, Published by Van Nostrand Reinhold, pp. 193-197, 201-202, 205, 207 and 209 in view of Banister (US Pub 2003/0072726, published April 17, Markert (EP 1 967 175 A1, published September 10, 2008), further in view of US Pub 20020090405 (US Pub 405).
Kozlowska, Banister and Markert are cited on the IDS dated 2/7/2024 as references NPL reference 16, US Patent reference 7 and Foreign patent reference 1. US Pub reference 405 is cited on the 2/7/2024 IDS as US Patent reference 6.
As detailed above, while claims 1-2 and 4-18 are taught by Kozlowska in view of Banister and Markert, they do not teach the limitations of the glucosinolates, progoitrin and sinigrin of claim 3.
US Pub ‘405 teaches pharmaceutical compositions comprising canola extracts, including the claimed phenolic acids of claim 3 and glucosinolates, see paragraphs 2 and 3-10.
US Pub ‘405 teaches the glucosinolates (progoitrin and sinigrin) in said canola extract, see paragraph 5 and the table below.
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Prior to the filing of the instant application a PHOSITA following the teachings of Kozlowska, Banister and Markert per US Pub ‘405 would have found it prima facie obvious to select the particular glucosinolates taught by US Pub ‘405 per MPEP 2143(a). Combining prior art elements according to known method to yield predictable results, i.e. the claimed topical composition, further comprising tocopherols and glucosinolates such as progoitrin and sinigrin in the amounts claimed.
Conclusion and Correspondence
In conclusion, no claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM LEE whose telephone number is (571)270-3876. The examiner can be reached M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C. Milligan can be reached at (571) 270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM Y LEE/Examiner, Art Unit 1623
/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
1 CONTINUING DATA
This application is a DIV of 16/842,686 04/07/2020 PAT 11896696
16/842,686 is a DIV of 16/242,266 01/08/2019 ABN
16/242,266 is a DIV of 13/755,143 01/31/2013 PAT 10172772
2MPEP 2144.05
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS and II. ROUTINE OPTIMIZATION
3 MPEP 2143(a) combining prior art elements according to known methods to yield predictable results.
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