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 .
The amendment filed 06 July 2026 has been received, entered and considered. The following information has been made of record in the instant amendment:
1. No Claims have been canceled.
2. No new Claims have been added.
3. Claims 1, 10, 18, 20, and 22 have been amended.
4. Remarks drawn to rejections under 35 USC 112, and 103.
The following objection(s)/rejection(s) has/have been overcome:
The rejection of claims 1-17, 19-20 and 22 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for recitation of ‘functional polymer’ has been overcome by amendment. Support is seen at paras 0074-0075 in the specification.
Claims 1-23 are pending in the case.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 18 recites the limitation "rheology modifying polymer" in claim 13. Claim 13 is drawn to an emulsifier. There is insufficient antecedent basis for this limitation in the claim since claim 18 does not modify the emulsifier recited in claim 13.
Response to Applicant’s Remarks
Applicant has traversed the rejection of claim 18 for lack of antecedent basis arguing that claim 18 depends from claim 13, which depends from claim 1. Claim 18 previously had an antecedent basis in claim 1 via claim 13 for functional polymer and now claim 18 also has an antecedent basis in claim 1 via claim 13 for a rheology modifying polymer. Reconsideration and withdrawal of the rejection is requested.
Applicants’ arguments are not persuasive. Claim 13 is drawn to an emulsifier. There is insufficient antecedent basis for this limitation in the claim since claim 18 does not modify the emulsifier recited in claim 13. The rejection is maintained.
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) 1-23 are rejected under 35 U.S.C. 103 as being unpatentable over KR 101817765 B1 (‘KR765; machine English Translation, pages 1-11; cited in IDS filed 1/31/202; of record5) in view of Moncuit (WO 2023/217774 A1; cited in IDS filed 1/31/2025; of record) and further in view of Nguyen et al (US 2019/0240120 A1; of record).
KR765, drawn to skin whitening compositions, teaches a composition comprising water, an oil (cyclohexasiloxane; 5 wt%), ascorbyl glucoside (AA2G, 6 wt%), sodium polyacrylate and carbomer (functional polymers, total of 0.45 wt%) and polysorbate 60-emulsifier, 0.50 wt%, EDTA, 0.03%, glycerin humectant, 3 wt%. the composition also has preservative (para 0031, Example 4; components recited in claims 1, 4, and 7-AA2G; limitation of claim 12-no silicone, no polyethylene glycol and no alcohol; limitation of claim 20-oil-in-water emulsion, limitation of claim 12-no silicone; limitation of claim 22-humectant and percentage and preservative; ascorbyl glucoside is also an antioxidant as in claim 22). The composition of KR765 is a skin whitening cosmetic composition (page 1, Subject of Invention). Therefore, this renders obvious the use of the composition in a method of treating skin as in claims 21 and 23 with and without the additional second ascorbyl derivative as recited in claim 1.
Even though KR675 does not expressly teach using two or more ascorbic acid derivatives selected from SAP, MAP and AA2G as in claim 1 it teaches sodium ascorbyl phosphate (SAP) and magnesium ascorbyl phosphate (MAP) also as components in its composition (para 0012; components recited in claim 1).
KR765 does not teach the limitations of claims 2-11, 13-19, and part of the limitation of claim 22 regarding the percentages of the components.
Moncuit teaches a cosmetic composition in the form of an oil-in-water emulsion, having a pH of about 4.5 to 6.5 comprising ascorbic acid derivative at least 5% by weight, an emulsifier, and a polymer. The composition comprises water (page 3, lines 4-7; page 27, claims 1-2 and 11 of Moncuit; page 17, lines 10-22; part of the limitations of claim 1; pH limitation of claims 5 and 8). Example 1, discloses Table 1 at page 22, wherein the disclosed composition has glycerin (humectant, 7%), emulsifier, disodium EDTA, water, ammonium polyacryloyldimethyl taurate, potassium hydroxide (pH adjuster). This reads on part of the limitations of claim 1, claim 18- polyacryloyldimethyl taurate, and pH adjuster as in claim 22. The substitution of the sodium salt of polyacryloyldimethyl taurate for the ammonium salt is rendered obvious since it is an obvious variant (limitation of claim 19), Moncuit also suggests the use of sodium salt of polyacryloyldimethyl taurate (page 8, lines 12-14).
The difference between the claimed composition and that taught by the prior art is that the prior art does not expressly teach the use of two or more ascorbic acid derivatives selected from SAP, MAP and AA2G as required by claim 1. However, KR675 teaches that ascorbic acid derivative may be selected from SAP, MAP and AA2G and that the amount of the ascorbic acid derivative may be up to 20 wt% (paras 0010-0012). Moncuit also teaches that the ascorbic acid derivative may be selected from SAP, MAP and AA2G and their total amount may be in the range of 5 to 20wt% (page 4, lines 1-7, and lines 16-21). In view of this teaching one of ordinary skill in the art would find it obvious to use two or more ascorbic acid derivatives in the composition and adjust the amounts of the ascorbic acid derivatives as in claims 3, 4, and 7 in order to make alternative compositions which would provide enhanced skin treatment benefits.
Nguyen et al, drawn to cosmetic compositions, teaches the use of several emulsifiers like sorbitan sesquistearate, dipropylene glycol, etc. (emollients; paras 0012, 0024; components recited in claims 15-16). Tocopheryl acetate can be included as a component (parpara 0032; as in claim 6). Nguyen also teaches the percentage ranges for water, humectant, gellan (emulsifier), emollient and neutralizing agent (pH adjuster; para 0040). In view of this teaching the artisan can substitute/add the emulsifiers and adjust their percentages as in claims 11, 13-17. This also applies to the percentage ranges recited in claims 2-4, 6-12 and 22. The components recited in claim 9 are also oils.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, all the ingredients in the claimed composition and the use of such a composition in a method of treating skin.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. The artisan would be motivated to make the claimed composition in order to look for alternative compositions that have enhanced properties for applying to the skin. KR765 teaches that such compositions stabilize a high content of ascorbic acid derivatives and is excellent in feeling and stability over time (paras 0001 and 0009). Nguyen teaches that water content in the range of 40% to 80% ensures hydration, lightness and freshness of the composition (para0028). Humectant contributes to moisturizing benefits (0030). Tocopheryl acetate provides antioxidant activity and other benefits to the skin (para 0032). In view of these teachings the artisan would look for alternate compositions with enhanced properties for skin application. Such is well within the skill level of one of ordinary skill in the art to recognize and perform in view of the combined teachings of the prior art.
It has been held that it is within the skill in the art to select optimal parameters, such as amounts of ingredients in order to achieve a beneficial effect. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Response to Applicants’ Remarks
Applicant has traversed the rejection of claims 1-23 under 35 USC 103 over KR765, Moncuit and Nguyen arguing that the references teach, show or suggest a composition comprising any two or more ascorbic acid derivatives, much less two or more ascorbic acid derivatives selected form the narrow group of SAP, AA2G, and MAP. They also cannot teach or suggest a total amount of about 9wt% to about 15wt% of the two specific ascorbic acid derivatives.
KR 765 discloses six examples containing compositions. All of these contain no more than one vitamin C derivative. The Examiner relies on Moncuit and Nguyen. Howeer, neither of them discloses these missing elements. Moncuit teaches that the compositions according to its invention comprises ascorbic acid or one of the derivatives thereof. The Examiner has not provided evidence to explain why one of skill in the art would be motivated to modify KR765’s composition, containing a single ascorbic acid derivative, with Moncuit’s composition and Nguyen’s composition and arrive at the claimed subject matter. There is no reasonable expectation of success for the same.
The present invention provides surprising and unexpected results. In the present application, when two or more ascorbic acid derivatives are used. Compositions of the present disclosure can be emulsions that are storage stable for extended periods of time with reduced or eliminated degradation and/or crystallization of the ascorbic acid-based compounds while maintaining or improving the efficacy of the ascorbic acid-based compounds (para 0032 in specification). The combination of a hydrophilic emulsifier and a salt tolerant functional polymer, such as taurate polymer, can provide compositions having efficacious amounts of ascorbic acid derivatives without degradation of the ascorbic acid derivatives and without crystallization. For at least these reasons the rejection should be withdrawn. (Remarks-pages 6-11).
Applicants’ arguments are not persuasive. KR765, drawn to skin whitening compositions, teaches a composition comprising water, an oil (cyclohexasiloxane; 5 wt%), ascorbyl glucoside (AA2G, 6 wt%), sodium polyacrylate and carbomer (functional polymers, total of 0.45 wt%) and polysorbate 60-emulsifier, 0.50 wt%, EDTA, 0.03%, glycerin humectant, 3 wt%. The composition also has preservative. Even though KR675 does not expressly teach using two or more ascorbic acid derivatives selected from SAP, MAP and AA2G as in claim 1 it teaches sodium ascorbyl phosphate (SAP) and magnesium ascorbyl phosphate (MAP) also as components in its composition (para 0012; components recited in claim 1).
Moncuit teaches a cosmetic composition in the form of an oil-in-water emulsion, having a pH of about 4.5 to 6.5 comprising ascorbic acid derivative at least 5% by weight, an emulsifier, and a polymer. The composition comprises water. Example 1 discloses Table 1 at page 22, wherein the disclosed composition has glycerin (humectant, 7%), emulsifier, disodium EDTA, water, ammonium polyacryloyldimethyl taurate, potassium hydroxide (pH adjuster). This reads on part of the limitations of claim 1, claim 18- polyacryloyldimethyl taurate, and pH adjuster as in claim 22. The substitution of the sodium salt of polyacryloyldimethyl taurate for the ammonium salt is rendered obvious since it is an obvious variant (limitation of claim 19), Moncuit also suggests the use of sodium salt of polyacryloyldimethyl taurate.
Nguyen et al, drawn to cosmetic compositions, teaches the use of several emulsifiers like sorbitan sesquistearate, dipropylene glycol, etc. (emollients; paras 0012, 0024; components recited in claims 15-16). Tocopheryl acetate can be included as a component (parpara 0032; as in claim 6). Nguyen also teaches the percentage ranges for water, humectant, gellan (emulsifier), emollient and neutralizing agent (pH adjuster; para 0040). In view of this teaching the artisan can substitute/add the emulsifiers and adjust their percentages as in claims 11, 13-17. This also applies to the percentage ranges recited in claims 2-4, 6-12 and 22. The components recited in claim 9 are also oils.
Therefore, the cited references teach all of the components that can be used as in the instant composition. Both KR765 and moncuit the use of any of the three ascorbic acid derivatives recited in claim 1. KR 765 teaches that the ascorbic acid derivative can be present up to 20%. Moncuit teaches that the ascorbic acid derivative can be present in the range of 5-20%. Both these references teach compositions that are stable. According to both references either one of the ascorbic acid derivatives when used singly in the percentage range disclosed gives stable compositions. This means that a composition that has two or more of the same ascorbic acid derivatives along with the other claimed components should also be stable in the claimed percentage range of 9 to about 15%. There is a reasonable expectation of success for arriving at the claimed composition form the combined teachings of the prior art. The artisan would have found the same stability as disclosed by the applicant. The results regarding the stability argued by the applicant as unexpected are not unexpected in view of the teachings of the prior art. Motivation for making the claimed compositions is also set forth in the rejection. The combined teaching also renders obvious the use of the claimed composition in the methods as in claims 21 and 23. The rejection is maintained.
Conclusion
Pending claims 1-23 are rejected
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693
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