DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Preliminary Amendment
2. Examiner notes that the preliminary amendment filed on 12/05/2023 has been entered into the record.
Priority
3. This application claims foreign priority to PCT/CN2021/099576 filed 06/11/2021 and EP21189146.8 filed 08/03/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 12/03/2023 complies with the provisions of 37 CFR 1.97, 1.98, and MPEP § 609. The information disclosure statement (IDS) submitted on 01/04/2024 complies with the provisions of 37 CFR 1.97, 1.98, and MPEP § 609. Accordingly, they have been placed in the application file and the information therein has been considered on the merits. See attached copies of PTO-1449.
Status of the claims
5. The claims filed on 12/05/2023 have been entered. Claims 1-20 are pending and currently examined.
Claim Objections
6. Claim 10 is objected to because of the following informalities: claim 10 should read “the composition further comprises a fatty ester” since the fatty ester is an additional component not required by claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 103
7. 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.
10. Claims 1- 20 are rejected under 35 U.S.C. 103 as being unpatentable over Lou et al. (WO 2017/194486 A1, Published November 16, 2017 as cited in the IDS filed December 02, 2023).
11. Regarding claims 1-20, Lou et al teaches a skin care benefit composition (see pg. 2, lines 1-7) comprising a retinoic acid precursor and which may further include modified starches, and esters. Lou et al. differs from the instantly claimed invention in that it does not teach all of the components of the instantly claimed invention in a single embodiment. However, based on the teachings of Lou et al., one of skill in the art at the time of filing of the instant application would be motivated to combine the disclosed components into a single composition that reads on the instantly claimed invention with a reasonable expectation of success.
12. Regarding claim 1-7 and 16, Lou et al. teaches a composition comprising a retinoic acid precursor (e.g., retinoids) (see pg. 2, line 32), including retinyl propionate, retinyl palmitate, or a mixture thereof (see pg. 3, lines 28-29; pg. 5, lines 6-9), in amounts from 0.001 to 10% (see pg. 5, lines 16-19), and which may optionally include chemically modified starches (see pg. 10, lines 14) including “chemically modified starches such as sodium hydroxypropyl starch phosphate and aluminum starch octenylsuccinate” (see pg. 10, lines 15-17) in amounts from 0.001 to 5% (see pg. 10, lines 30-33). The amount of the retinoid required by the instant claim 3 and 16 are “0.005% to 3%” and “0.1% to 0.5%”, respectively, which overlap with the amounts taught by Lou et al. The amount of the first modified starch required by the instant claim 5 is 0.01-8% and the amount of the second modified starch required by the instant claim 7 is 0.01-12% which partially overlaps with amounts taught by Lou et al.
It would be prima facia obvious to one of skill in the art at the time of filing of the instant application to make a composition comprising an amount of modified starches according to the teachings of Lou et al. that read on the claimed range of the instant application where the ranges overlap and where there is no showing of criticality of the higher end point of the instantly claimed range. See MPEP 2144.05 (I) and In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941).
Further, based on the disclosed amounts of each of the components, Lou et al. reads on the “weight ratio of the total modified starches to the retinoid is at least 7:1” as required by the instant claim 1. For example, a composition based on the teachings of Lou et al., can comprise 0.1% retinyl propionate, 0.35% sodium hydroxypropyl starch phosphate and 0.35% aluminum starch octenylsuccinate, thus maintaining the 7:1 ratio of total modified starches to retinoid required by instant claim 1.
13. Regarding claim 8 and 17-18, Lou et al. is silent on a weight ratio of one modified starch to another. However, as discussed above, Lou et al. teaches a composition comprising the modified starches of instant claims 1, 4-7 in ranges of amounts (i.e., 0.001 to 5% by weight of the composition). Therefore, it is possible that a composition based on the teachings of Lou et al. may comprise amounts of hydroxypropyl starch phosphate and aluminum starch octenylsuccinate that read on the weight ratios of instant claims 8, 17, and 18. For example, a composition based on the teachings of Lou et al. may comprise 2% of hydroxypropyl starch phosphate and 2% aluminum starch octenylsuccinate at 1:1 weight ratio of the first modified starch to the second modified starch, as required by instant claims 8 and 17. Furthermore, the same composition may further comprise 0.5 % retinyl propionate at an 8:1 weight ratio of total modified starches to retinoid, as required by claim 18.
MPEP 2144.05 (II) states “differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” and, the instant application fails to provide evidence that the claimed 1:30 to 5:1 weight ratio of the first modified starch to the second modified starch required by claim 8 is critical.
See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) “It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”
Based on the teachings of Lou et al., it would be prima facia obvious to one of skill in the art at the time of filing of the instant application to make a composition comprising an amounts of modified starches that read on the claimed weight ratios of the instant application.
14. Regarding claim 9 and 18, as discussed above in section 12, a composition according to the teachings of Lou et al. may comprise amounts of total modified starches and retinoids in a 7:1 weight ratio, and, for example, 0.01% retinoid and 2% total modified starches in a 200:1 weight ratio, and all ranges subsumed therein (e.g., 8:1, 50:1, …) as required by claims 9 and 18.
15. Regarding claims 10-14, 19, Lou et al. further teaches the composition may include a “cosmetically acceptable carrier components” (see pg. 7, line 11), including esters and oils (see pg. 7, line 27-28) in amounts “from 0.1 to 99%, and preferably, from 0.1 to 45%, and most preferably, from 1 to 20% by weight of the composition” (see pg. 7, lines 28-30). Lou et al. discloses isopropyl palmitate and isopropyl myristate (see pg. 8, line 16) among suitable esters and caprylic capric triglyceride as an oil (see pg. 8, line 32). Therefore, a composition according to the teachings of Lou et al. may comprise amounts of total fatty esters and total modified starches in a weight ratio no greater than a 9:1, for example, 9% total fatty esters and 1% total modified starches as required by claim 14
16. Regarding claim 15, Lou et al teaches “Ordinarily the compositions of this invention will be water and oil emulsions, most preferably, of the oil-in-water variety” (see pg. 7, lines 18-19).
17. Regarding claim 20, as discussed above, a composition according to the teachings of Lou et al. may comprise esters and oils in amounts from 0.1-99% by weight and modified starches in amounts from 0.001 to 5%, and thus, for example 1% of total fatty esters and 2% of modified starch at a 1:2 weight ratio or 8% of total fatty esters and 1% modified starch at an 8:1 weight ratio and all ranges subsumed therein as required by claim 20.
18. Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of Lout et al.
Conclusion
19. Claims 1-20 are rejected. No claims are allowed in this action.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN JEROME FOWLER whose telephone number is (571)272-0195. The examiner can normally be reached Monday - Friday 9-4PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN J FOWLER/ Examiner, Art Unit 1691
/RENEE CLAYTOR/ Supervisory Patent Examiner, Art Unit 1691