DETAILED ACTION
This is an initial Office action for non-provisional application 18/556825 filed October 23, 2023, which is a 371 of PCT/CN2022/086724 filed April 13, 2022, which claims foreign priority to CN202110458173.8 filed April 27, 2021.
Claims 1-18 are pending.
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 . 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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to neither a “product’ nor a “process" but rather embraces or overlaps two different statutory classes set forth in 35 U.S.C. 101 which is drafted so as to set forth the statutory classes in the alternative only (MPEP 2173.05(p) (II)). In the instant case, claim 9 appears to embrace or overlap a product (an oil-in water emulsion/a preparation of cosmetics and/or medicines) and a process for using the product (a method of using the emulsion for infantile eczema).
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.
Claims 1-18 are 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.
i.) Claims 1-5 recite multiple ranges of each ingredient ((a)-(d) or (a)-(e)) in an oil-in-water emulsion. Such amounts are preceded by the limitation “preferably” and “especially preferably”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1-5 recite broad parts by weight ranges of each ingredient, and the claim also recites narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination and applying prior art, the Office action will interpret the broadest range of each ingredient as being the only required amount in claims 1-5.
ii.) Claim 9 is drawn to a product (an oil-in water emulsion/a preparation of cosmetics and/or medicines) and a process (a method of using the emulsion for infantile eczema). A single claim that claims both a product and a method of using the product is ambiguous (MPEP 2173.05(p) (II)). For the purpose of examination on the merits and application of the prior art, claim 9 will be interpreted as a product claim and the limitations drawn to an application of the medicine for infantile eczema will be interpreted as intended use.
iii.) Claims 6-8 and 10-18 are rejected as being dependent on a rejected base claim (i.e., claims 1-5) and not remedying the deficiencies of such claims.
Claim Rejections - 35 USC § 103
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.
Claims 1-5, 7, 9 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Elliott et al (WO 03/041667; cited in attached PTO-892) in view of Tatebe (JP 2012241006; cited in attached PTO-892) and Steinberg (Cosmetics & Toiletries, 2011; cited in attached PTO-892).
Regarding claim 1, Elliott et al teach compositions containing enzymes stabilized with osmo-protectants and methods for using such compositions in personal use including skin care benefits (abstract; whole document). The compositions may be formulated as oil-in-water emulsions (pg. 18, Section G; pg. 36, Methods of Manufacture) and comprise betaine as osmo-protectants in amounts of 1-50% by weight (pp. 9-10, Section D), at least 30% by weight water (pg. 7, Section B), and 0.1-60% by weight oil selected from petrolatum (pg. 18, Section G). According to Elliott et al, its compositions will have a water activity greater than 0.65 (pg. 8, Section B), which overlaps with the claimed water activity of 0.75 or less. According to MPEP 2144.05, “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).
Elliott et al do not teach compositions comprising Sclerotium Gum in amounts of 0.1-2 parts by weight.
Tatebe teaches oil-in-water emulsified cosmetic makeups comprising a polysaccharide thickener including sclerotium gum in amounts of 0.05-5% by mass (pg. 2, last two paragraphs of the translation).
Therefore, it would have been obvious before the effective filing date to include sclerotium gum in amounts of 0.05-5% by weight in the compositions of Elliott et al. A skilled artisan would have been motivated to do so with a reasonable expectation of success since Elliott et al suggest the addition of thickeners within its compositions (pg. 15-16, Section E) and Tatebe et al teach sclerotium gum is a suitable thickener in oil-in-water emulsions applied to the skin. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Further, even though Elliott et al teach an emulsion with a water activity that overlaps with the claimed water activity; Steinberg teaches that "[t]he concept of water activity to prevent the growth of microorganisms is as old as time and as new as the 1960s" (pg.1). Steinberg teaches that some molds can grow with water activities as low as 0.7, so a good rule is to keep the water activity below 0.7 in order for the product to not need the addition of chemical preservatives (pg. 2).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention to keep the water activity of Elliott’s compositions below 0.75. A skilled artisan would have been motivated to do so since Steinberg teaches keeping the water activity below 0.7 prevents the growth of microorganisms in compositions and does not require the presence of preservatives in compositions.
Regarding the amounts of (a)-(d), the combined teachings of Elliott et al and Tatebe teach amounts that overlap with the amounts recited in the instant claims. According to MPEP 2144.05, “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). Furthermore, it would have been obvious to an artisan of ordinary skill to manipulate and optimize the amount of each ingredient. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success. It should be noted that generally difference in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a concentration is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) & MPEP 2144.05.
Regarding claim 2, Elliott et al teach compositions containing enzymes stabilized with osmo-protectants and methods for using such compositions in personal use including skin care benefits (abstract; whole document). The compositions may be formulated as oil-in-water emulsions (pg. 18, Section G; pg. 36, Methods of Manufacture) and comprise betaine as osmo-protectants in amounts of 1-50% by weight (pp. 9-10, Section D), at least 30% by weight water (pg. 7, Section B), 0.1-50% by weight glycerin (pp. 8-9, Section C) and 0.1-60% by weight oil selected from petrolatum (pg. 18, Section G). According to Elliott et al, its compositions will have a water activity greater than 0.65 (pg. 8, Section B), which overlaps with the claimed water activity of 0.75 or less. According to MPEP 2144.05, “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).
Elliott et al do not teach compositions comprising Sclerotium Gum in amounts of 0.1-2 parts by weight.
Tatebe teaches oil-in-water emulsified cosmetic makeups comprising a polysaccharide thickener including sclerotium gum in amounts of 0.05-5% by mass (pg. 2, last two paragraphs of the translation).
Therefore, it would have been obvious before the effective filing date to include sclerotium gum in amounts of 0.05-5% by weight in the compositions of Elliott et al. A skilled artisan would have been motivated to do so with a reasonable expectation of success since Elliott et al suggest the addition of thickeners within its compositions (pg. 15-16, Section E) and Tatebe et al teach sclerotium gum is a suitable thickener in oil-in-water emulsions applied to the skin. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Further, even though Elliott et al teach an emulsion with a water activity that overlaps with the claimed water activity; Steinberg teaches that "[t]he concept of water activity to prevent the growth of microorganisms is as old as time and as new as the 1960s" (pg.1). Steinberg teaches that some molds can grow with water activities as low as 0.7, so a good rule is to keep the water activity below 0.7 in order for the product to not need the addition of chemical preservatives (pg. 2).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention to keep the water activity of Elliott’s compositions below 0.75. A skilled artisan would have been motivated to do so since Steinberg teaches keeping the water activity below 0.7 prevents the growth of microorganisms in compositions and does not require the presence of preservatives in compositions.
Regarding the amounts of (a)-(e), the combined teachings of Elliott et al and Tatebe teach amounts that overlap with the amounts recited in the instant claims. According to MPEP 2144.05, “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). Furthermore, it would have been obvious to an artisan of ordinary skill to manipulate and optimize the amount of each ingredient. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success. It should be noted that generally difference in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a concentration is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) & MPEP 2144.05.
Regarding claim 3, Elliott et al teach compositions containing enzymes stabilized with osmo-protectants and methods for using such compositions in personal use including skin care benefits (abstract; whole document). The compositions may be formulated as oil-in-water emulsions (pg. 18, Section G; pg. 36, Methods of Manufacture) and comprise betaine as osmo-protectants in amounts of 1-50% by weight (pp. 9-10, Section D), at least 30% by weight water (pg. 7, Section B), 0.1-50% by weight sorbitol (pp. 8-9, Section C) and 0.1-60% by weight oil selected from petrolatum (pg. 18, Section G). According to Elliott et al, its compositions will have a water activity greater than 0.65 (pg. 8, Section B), which overlaps with the claimed water activity of 0.75 or less. According to MPEP 2144.05, “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).
Elliott et al do not teach compositions comprising Sclerotium Gum in amounts of 0.1-2 parts by weight.
Tatebe teaches oil-in-water emulsified cosmetic makeups comprising a polysaccharide thickener including sclerotium gum in amounts of 0.05-5% by mass (pg. 2, last two paragraphs of the translation).
Therefore, it would have been obvious before the effective filing date to include sclerotium gum in amounts of 0.05-5% by weight in the compositions of Elliott et al. A skilled artisan would have been motivated to do so with a reasonable expectation of success since Elliott et al suggest the addition of thickeners within its compositions (pg. 15-16, Section E) and Tatebe et al teach sclerotium gum is a suitable thickener in oil-in-water emulsions applied to the skin. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Further, even though Elliott et al teach an emulsion with a water activity that overlaps with the claimed water activity; Steinberg teaches that "[t]he concept of water activity to prevent the growth of microorganisms is as old as time and as new as the 1960s" (pg.1). Steinberg teaches that some molds can grow with water activities as low as 0.7, so a good rule is to keep the water activity below 0.7 in order for the product to not need the addition of chemical preservatives (pg. 2).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention to keep the water activity of Elliott’s compositions below 0.75. A skilled artisan would have been motivated to do so since Steinberg teaches keeping the water activity below 0.7 prevents the growth of microorganisms in compositions and does not require the presence of preservatives in compositions.
Regarding the amounts of (a)-(d), the combined teachings of Elliott et al and Tatebe teach amounts that overlap with the amounts recited in the instant claims. According to MPEP 2144.05, “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). Furthermore, it would have been obvious to an artisan of ordinary skill to manipulate and optimize the amount of each ingredient. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success. It should be noted that generally difference in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a concentration is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) & MPEP 2144.05. With respect to the amount of sorbitol, Elliott et al do not teach amounts as high as 65 parts by weight of the emulsion. However, since Elliott et al teach sorbitol is a polyhydric alcohol that is sufficiently effective to enhance the stability of enzymes in Elliott’s compositions and/or independently hydrate the skin; it would have been obvious to add more sorbitol in Elliott’s composition for further stability and/or hydration purposes.
Regarding claim 4, Elliott et al teach compositions containing enzymes stabilized with osmo-protectants and methods for using such compositions in personal use including skin care benefits (abstract; whole document). The compositions may be formulated as oil-in-water emulsions (pg. 18, Section G; pg. 36, Methods of Manufacture) and comprise betaine as osmo-protectants in amounts of 1-50% by weight (pp. 9-10, Section D), at least 30% by weight water (pg. 7, Section B), 0.1-50% by weight sorbitol and/or glycerin (pp. 8-9, Section C) and 0.1-60% by weight oil selected from petrolatum (pg. 18, Section G). According to Elliott et al, its compositions will have a water activity greater than 0.65 (pg. 8, Section B), which overlaps with the claimed water activity of 0.75 or less. According to MPEP 2144.05, “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).
Elliott et al do not teach compositions comprising Sclerotium Gum in amounts of 0.1-2 parts by weight.
Tatebe teaches oil-in-water emulsified cosmetic makeups comprising a polysaccharide thickener including sclerotium gum in amounts of 0.05-5% by mass (pg. 2, last two paragraphs of the translation).
Therefore, it would have been obvious before the effective filing date to include sclerotium gum in amounts of 0.05-5% by weight in the compositions of Elliott et al. A skilled artisan would have been motivated to do so with a reasonable expectation of success since Elliott et al suggest the addition of thickeners within its compositions (pg. 15-16, Section E) and Tatebe et al teach sclerotium gum is a suitable thickener in oil-in-water emulsions applied to the skin. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Further, even though Elliott et al teach an emulsion with a water activity that overlaps with the claimed water activity; Steinberg teaches that "[t]he concept of water activity to prevent the growth of microorganisms is as old as time and as new as the 1960s" (pg.1). Steinberg teaches that some molds can grow with water activities as low as 0.7, so a good rule is to keep the water activity below 0.7 in order for the product to not need the addition of chemical preservatives (pg. 2).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention to keep the water activity of Elliott’s compositions below 0.75. A skilled artisan would have been motivated to do so since Steinberg teaches keeping the water activity below 0.7 prevents the growth of microorganisms in compositions and does not require the presence of preservatives in compositions.
Regarding the amounts of (a)-(e), the combined teachings of Elliott et al and Tatebe teach amounts that overlap with the amounts recited in the instant claims. According to MPEP 2144.05, “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). Furthermore, it would have been obvious to an artisan of ordinary skill to manipulate and optimize the amount of each ingredient. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success. It should be noted that generally difference in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a concentration is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) & MPEP 2144.05.
Regarding claim 5, Elliott et al teach compositions containing enzymes stabilized with osmo-protectants and methods for using such compositions in personal use including skin care benefits (abstract; whole document). The compositions may be formulated as oil-in-water emulsions (pg. 18, Section G; pg. 36, Methods of Manufacture) and comprise betaine as osmo-protectants in amounts of 1-50% by weight (pp. 9-10, Section D), at least 30% by weight water (pg. 7, Section B), 0.1-50% by weight sorbitol (pp. 8-9, Section C) and 0.1-60% by weight oil selected from petrolatum (pg. 18, Section G). According to Elliott et al, its compositions will have a water activity greater than 0.65 (pg. 8, Section B), which overlaps with the claimed water activity of 0.75 or less. According to MPEP 2144.05, “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).
Elliott et al do not teach compositions comprising Sclerotium Gum in amounts of 0.1-2 parts by weight.
Tatebe teaches oil-in-water emulsified cosmetic makeups comprising a polysaccharide thickener including sclerotium gum in amounts of 0.05-5% by mass (pg. 2, last two paragraphs of the translation).
Therefore, it would have been obvious before the effective filing date to include sclerotium gum in amounts of 0.05-5% by weight in the compositions of Elliott et al. A skilled artisan would have been motivated to do so with a reasonable expectation of success since Elliott et al suggest the addition of thickeners within its compositions (pg. 15-16, Section E) and Tatebe et al teach sclerotium gum is a suitable thickener in oil-in-water emulsions applied to the skin. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Further, even though Elliott et al teach an emulsion with a water activity that overlaps with the claimed water activity; Steinberg teaches that "[t]he concept of water activity to prevent the growth of microorganisms is as old as time and as new as the 1960s" (pg.1). Steinberg teaches that some molds can grow with water activities as low as 0.7, so a good rule is to keep the water activity below 0.7 in order for the product to not need the addition of chemical preservatives (pg. 2).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention to keep the water activity of Elliott’s compositions below 0.75. A skilled artisan would have been motivated to do so since Steinberg teaches keeping the water activity below 0.7 prevents the growth of microorganisms in compositions and does not require the presence of preservatives compositions.
Regarding the amounts of (a)-(e), the combined teachings of Elliott et al and Tatebe teach amounts that overlap with the amounts recited in the instant claims. According to MPEP 2144.05, “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). Furthermore, it would have been obvious to an artisan of ordinary skill to manipulate and optimize the amount of each ingredient. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success. It should be noted that generally difference in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a concentration is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) & MPEP 2144.05.
Regarding claims 7 and 14-17; Elliott et al teach surfactants are optional in its compositions and exemplifies compositions without surfactants (Examples XII to XV; Section J, pg. 23, listed as optional).
Regarding claim 9; the compositions of Elliott et al are intended for skin care and are applied to skin (abstract; Methods of Use, pg. 37) and thus are capable of treating infantile eczema as recited in claim 9. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claims 6, 10-13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Elliott et al (WO 03/041667; cited in attached PTO-892) in view of Tatebe (JP 2012241006; cited in attached PTO-892) and Steinberg (Cosmetics & Toiletries, 2011; cited in attached PTO-892) as applied to claims 1-5, 7, 9 and 14-17 and in further view of Varvaresou et al (Int. J. Cosmet. Sci., 2009; cited in attached PTO-892).
Regarding claims 6 and 10-13, the disclosures of Elliott et al, Tatebe and Steinberg are discussed above and incorporated herein. Elliott et al in view of Tatebe and Steinberg teach its compositions can optionally include preservatives (Elliott, pg. 36, Section Q) but do not explicitly exclude them.
Varvaresou et al teach that although chemical preservatives prevent microbial growth, their safety is questioned by a growing segment of consumers. Therefore, there is considerable interest in the development of preservative-free or self-preserving cosmetics (Synopsis).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention to exclude preservatives from the compositions of Elliott et al. One would have been motivated to do so since Varvaresou et al teach preservative-free compositions are desired because of safety concerns. A skilled artisan would also have a reasonable expectation of success to exclude preservatives because the combined teachings of Elliott et al and Steinberg suggest a water activity level in its compositions that prevent the growth of microorganisms and does not require the presence of preservatives.
Regarding claim 18; Elliott et al teach surfactants are optional in its compositions and exemplifies compositions without surfactants (Examples XII to XV; Section J, pg. 23, listed as optional).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Elliott et al (WO 03/041667; cited in attached PTO-892) in view of Tatebe (JP 2012241006; cited in attached PTO-892) and Steinberg (Cosmetics & Toiletries, 2011; cited in attached PTO-892) as applied to claims 1-5, 7, 9 and 14-17 and in further view of Deckner et al (DE 68912150; cited in attached PTO-892).
Regarding claim 8, the disclosures of Elliott et al, Tatebe and Steinberg are discussed above and incorporated herein.
Elliott et al in view of Tatebe and Steinberg do not teach a kit comprising the emulsion of claim 1 and a second aqueous solution containing 95-100 parts by weight of water and 0-5 parts by weight of optional water-soluble active ingredients resulting in a final mixture of the emulsion of claim 1 and the second aqueous solution together.
Deckner et al teach concentrated oil-in-water emulsions in the form of lotions for topical application that are diluted with water before use (paragraph 0016). Therefore, Deckner et al teach mixing an oil-in-water emulsion with 100 parts by weight of water where the water is 2-10 times by weight of the concentrated oil-in-water emulsion (see paragraph 0057, Example 1).
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention to create a kit and dilute the emulsions of Elliott et al with water 2-20 times by weight of Elliott’s emulsions. A skilled artisan would have been motivated to do so since Elliott teaches its compositions may be packaged in a kit comprising multiple containers that are integrated (pg. 37, Methods of Manufacture) and Deckner et al teach it is conventionally known in the prior art to dilute emulsions with water before use for stability purposes.
With respect to steps (1)-(3) recited in claim 8; such steps are directed to aspects of a process within a product claim and thus such steps are product-by-process limitations. As a result, a determination of patentability is only based on the product itself. Applicant is directed to MPEP 2113, which states that "If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, it is the examiner’s position that the product rendered obvious by the prior art above meets all the limitations of the structure implied by the process steps of claim 8.
Conclusion
Claims 1-18 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHAEL E BREDEFELD whose telephone number is (571)270-5237. The examiner can normally be reached 8:00-5:00 Monday-Friday.
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/RACHAEL E BREDEFELD/Supervisory Patent Examiner, Art Unit 3786