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 .
Claim Objections
Claim 1 objected to because of the following informalities:
Claim 1 recites “primarily mixing a phase A with a phase B (a); and secondarily mixing the resulting mixture with a phase C (b), the use of the phrases “primarily” and “secondarily” and the placement of (a) and (b) in the claim is grammatically awkward. The originally filed specification on page 7 says “step (a): Primary mixing between phase A and B. This step (a) is a process of mixing phase A and phase B” and pg. 10 says “step (a): Secondary mixing between phase A and B. This step (b) is a process of secondarily mixing phase C with the resultant mixture of (a)”.
Claim 1 also recites “the resultant mixture” it should say “the resultant mixture (a)” as supported by the originally filed disclosure on page 10.
The examiner suggests amending claim 1 to recite:
“…comprising:
(a) mixing a phase A with a Phase B; and
(b) mixing the resulting mixture of (a) with a phase C…”
Claim 1 also recites “…thickener that imparts conductivity to a solution in which the thickener is dissolved in purified water” the use of the phrase “in which” is grammatically awkward. The examiner suggests amending the claim to recite “…thickener that imparts conductivity to a solution, wherein the thickener is dissolved in purified water,”.
Claim 1 also recites “…organic acid or organic acid salt that imparts conductivity to a solution in which the organic acid or organic acid salt is dissolved in purified water” the use of the phrase “in which” is grammatically awkward. The examiner suggests amending the claim to recite “…organic acid or organic acid salt that imparts conductivity to a solution, wherein the organic acid or organic acid salt is dissolved in purified water,”.
Appropriate correction is required.
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.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2023/038353, KR100530107 and CN108743453. All references are cited on the 1/7/2026 IDS. The Examiner has provided the machine translation of CN’453 relied upon below.
Regarding claim 1: WO’353 discloses a O/W liquid crystal emulsion cosmetic composition comprising a water-dispersible emulsifier and a higher alcohol (pg. 3). The water dispersible emulsifier includes at least one of hydrogenated lecithin (i.e. phospholipid), sorbitan olivate (i.e. emulsifier) and teaches various polyglyceryl-based emulsifiers (pg. 5). Skin conditioning agents such as caprylic/capric triglyceride (i.e. oil), apricot kernel oils, coconut palm oil, etc. can be added (pg. 5-6). The emulsion can further comprise moisturizers such as polyols including glycerol, pH regulators in amounts of 0.01-5% and thickening agents including acrylate/C10-30 alkyl acrylate crosspolymer, carbomer, ammonium acryloyldimethyl taurate/VP copolymer (all acryl-based thickeners), etc., these can be used in amounts of 0.001-10% (pg. 6-7).
The emulsion is made by a) preparing a 1st mixture of water with the water-dispersible emulsifier (i.e. water phase), WO’232 teaches using purified water; b) preparing a 2nd mixture comprising a higher alcohol and a skin conditioning agent (i.e. oil phase); c) combining the 1st and 2nd mixture to form a 3rd mixture; d) adding a thickening agent into the 3rd mixture and e) a cooling step that cools the cream to form the liquid crystal emulsion (pg. 7).
WO’353 does not teach the polyol and water-dispersible emulsifier (phospholipid and sorbitan olivate) to be dispersed in the oil phase (i.e. claimed phase A).
WO’353 does not teach dissolving the thickening agent in water prior to adding to the oil phase.
WO’353 does not teach using an organic acid salt as a pH adjusting agent and does not teach dissolving this acid in water and adding this into a mixture of phase A and phase B.
Regarding the placement of the polyol and water-dispersible emulsifier (phospholipid and sorbitan olivate) in the oil phase (i.e. claimed phase A): WO’353 further teaches that the 1st mixture may include one or more of the water-dispersible emulsifier, moisturizer (i.e. glycerin), pH regulator and a solvent [0033], which suggests that these ingredients need not necessarily be present in the 1st mixture but could be added during a different step.
WO’427 teaches liquid crystal emulsions and teaches that when making the emulsion the hydrogenated lecithin and surfactants such as sorbitan fatty acid esters are added to the oil phase and teaches that the polyol can be added to either the oil phase or the water phase (pg. 2 and 6 and working examples).
In view of these teachings one of skill in the art would recognize that the polyol, phospholipid and sorbitan sorbate could be added to either the water or the oil phase with a reasonable expectation of success as such it would have been obvious to add them to the oil phase as the selection of any order of performing method steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.01 IV(C)).
Regarding the step of dissolving the thickening agent in water prior to adding to the oil phase: KR’107 discloses a method of forming a liquid crystal emulsion comprising the step of producing a water phase by sequentially adding “a liquid crystal forming enhancer” and a thickener to water in a dissolution tank, which is then heated and dispersed until dissolved. Suitable thickeners include acrylate thickeners (pg. 6).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of WO’353 to comprise a step of mixing the thickening agent with water before combining the water and oil phases in place of adding the thickeners taught above in the last step of WO’353 because KR’107 teaches that dispersing thickening agents (i.e. acryl-based thickeners) in the aqueous phase is a suitable method for preparing a liquid crystal cosmetic emulsion and the substitution of one known element in place of another in order to achieve predictable results is prima facia obvious (MPEP 2143). Furthermore, the selection of any order of performing method steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.01 IV(C)).
As evidenced by the originally filed specification, acrylate/C10-30 alkyl acrylate crosspolymer, carbomer, ammonium acryloyldimethyl taurate/VP copolymer are suitable thickening agents that impart conductivity.
Regarding the step of using citric acid and dissolving citric acid in water and adding this into the mixture of phase A and phase B: WO’353 teaches that the choice of pH regulators is not limited [0021] and teaches WO’353 further teaches that the 1st mixture may include one or more of the water-dispersible emulsifier, moisturizer (i.e. glycerin), pH regulator and a solvent (pg. 7) and teaches the dissolution of the components in the aqueous phase (working examples, pg. 11). CN’453 teaches cosmetic liquid crystal emulsions (Abs and pg. 12). CN’453 teaches that suitable pH adjusting agents include citric acid and sodium citrate (pg. 6). As evidenced by the originally filed specification, citric acid and sodium citrate are suitable organic salts that impart conductivity when dissolved in water.
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of WO’353 with CN’453 and select citric acid and/or sodium citrate as a pH regulator in the method of WO’353 as these are taught to be suitable pH adjusters for liquid crystal cosmetic emulsions and its prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended purpose (MPEP 2144.017). While WO’353 fails to teach the step of preparing a separate water phase (c) comprising just water and the dissolved organic acid prior to adding this to phase B (i.e. water phase), it is well established that the selection of any order of performing method steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.01 IV(C)).
Regarding the claimed “microcurrent forming liquid crystal emulsion” as discussed above the prior art makes obvious a liquid crystal emulsion, but does not teach it to be microcurrent-forming, however, the prior art makes obvious the use of both the claimed thickening agents and the claimed organic acids dissolved in water which are taught to impart conductivity and the originally filed disclosure teaches that the microcurrent can be formed by increasing electrical conductivity (pg. 1), as such the liquid crystal emulsion made obvious above is expected to be capable of forming microcurrents.
Regarding claim 2: WO’353 teaches that the choice of pH regulators is not limited and includes at least one of tromethamine (i.e. a neutralizer) and mixtures can be used (pg. 6) and WO’353 further teaches that the 1st mixture may include one or more of the water-dispersible emulsifier, moisturizer (i.e. glycerin), pH regulator and a solvent (pg. 7) and teaches the dissolution of the components in the aqueous phase (working examples, pg. 11), thus the inclusion of tromethamine in the aqueous phase is prima facie obvious. While WO’353 fails to teach the step of preparing a separate water phase (D) comprising just water and the neutralizer prior to adding this to phase B (i.e. water phase), it is well established that the selection of any order of performing method steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.01 IV(C)).
Regarding claim 3: WO’353 teaches that the choice of pH regulators is not limited and includes at least one of arginine (i.e. an amino acid) and mixtures can be used (pg. 6) and WO’353 further teaches that the 1st mixture may include one or more of the water-dispersible emulsifier, moisturizer (i.e. glycerin), pH regulator and a solvent (pg. 7) and teaches the dissolution of the components in the aqueous phase (working examples, pg. 11), thus the inclusion of arginine in the aqueous phase is prima facie obvious. While WO’353 fails to adding this to phase (c) comprising water and the organic acid, it is well established that the selection of any order of performing method steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.01 IV(C)).
Regarding claim 4: As discussed above suitable moisturizers for use include glycerin (i.e. a polyol).
Regarding claim 5: As discussed above suitable emulsifiers for use include hydrogenated lecithin (i.e. phospholipid).
Regarding claim 6: As discussed above suitable emulsifiers for use include sorbitan olivate.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
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