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 .
Status of Claims
Amendments filed on 01/28/2026 and 02/02/2028 are acknowledged.
Claims 1-3, 6, 8-9, 11-12, 14, and 16-17 are amended.
Claims 1-20 are pending and being examined on merits herein.
Priority
This instant application 18572229, filed on 12/20/2023, is a 371 of PCT/EP2022/067768, filed on 06/28/2022, claims foreign priority of France 2106896, filed on 06/28/2021. English translation of foreign priority is not provided in record.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 11/18/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 01/28/2026 and 02/02/2026.
Claim Interpretation
Claim 1 is interpreted as a composition comprising from 50% to 90% by weight of water, at least 5% by weight of ascorbic acid, at least one cationic polymer chosen from cationic galactomannan gums and cationic cellulose polymers modified by groups including at least one linear fatty chain.
The phrases of “cosmetic” and “composition having a pH between 5 and 7” are interpreted as intended use, or property of the composition because they do not structurally contribute to the composition.
Claim Rejections - 35 USC § 102
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.
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7, 9-13, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parr et al. (US20020034548, 03/21/2002, IDS of 12/20/2023), as evidenced by Chemical Book (guar hydroxypropyl-trimonium chloride, 2025, PTO-892).
Parr teaches stabilized ascorbic composition including about 2 to about 25 wt. % of ascorbic acid, about 0.1 to about 10 wt. % of at least one cationic polymers and cationic surfactants, and about 0.1 to about 70 wt. % of humectants, polymers with humectant properties, and inorganic driers (e.g., Abstract; Claim 1). Parr throughout the reference teaches cationic polymers are selected from the group consisting of guar cationic gums, cationic celluloses, cationic collagens, cationic keratins, and cationic hydrolyzed proteins (e.g., Claim 6), with exemplary cationic polymers include many polyquats (e.g., [0028] and quaternate cellulose, such as, guar hydroxypropyltrimonium chloride, lauryldimonium hydroxypropyl oxyethyl cellulose, lauryldimonium hydroxyethyl cellulose, cocodimonium hydroxypropyl oxyethyl cellulose, stearyldimonium hydroxyethyl cellulose, stearyldimonium hydroxypropyl oxyethyl cellulose (e.g., [0029]).
Parr exemplifies formulations, e.g., Example 10, containing d.i. water 59.63% (falling within water range from 50% to 90% in instant claim 1, falling within range from 55% to 70% in instant claim 2), hydroxypropyl guar hydroxypropyltrimonium chloride 0.3% (synonyms including guar hydroxypropyl trimethyl ammonium chloride, as evidenced by Chemical Book; also evidenced by instant specification that this compounds is cationic galactomannan guar gum having trialkylammonium groups, Pg. 5, lines 4-14)(corresponding to cationic polymer from cationic galactomannan gums in instant claim 1, guar gum comprising trialkylammonium cationic groups in instant claims 5 and 20, with amount range falling within from 0.05% to 5% in instant claim 6), ascorbic acid 15% (falling within ranges of at least 5% in claim 1, at least 7% in instant claims 4 and 18-19, and 5% to 30% in instant claim 13), panthenol (having 9 carbon atoms) 0.3%, glycerin (polyol with 3 carbon atoms) 15%, PEG-4 (polyethylene glycol) 10% (corresponding to alcohols, polyols, or sequestering agent in instant claims 3, 9, and 16-17, and carbon atoms falling within carbon atom ranges C1-C10 alcohols and 2 to 20 carbon atoms of polyols in instant claim 12), pH 2.20 (Pg. 5, Example 10, [0051]. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Parr indicates the compositions capable of stabilizing ascorbic acid over a wide range of pH about 2 to about 7 (e.g., Claim 3; [0024]) (overlapping with pH ranges between 5 and 7 in instant claim 1, and 5.5 to 6.5 in instant claim 7) by controlling the ratio of ascorbic acid to cationic polymers and/or cationic surfactants [0024]. In Example 1, Parr teaches using 10% sodium hydroxide solution present at 4.54% weight amount of the composition comprising ascorbic acid 2.0% and polyquaternium -6 (polycationic polymer) at amount 2.17%, along with panthenol and propylene glycol, wherein the pH of the composition is 6.65 (Pg. 3, Example 1, [0039], pH falling within the claimed ranges between 5 and 7 in instant claim 1, and the pH is 98% close to upper end of range between 5.5 and 6.5 in instant claim 7).
Parr points out that “the detailed description and specific examples, while indicating preferred embodiments of the present invention, are given by way of illustration and not limitation. Many changes and modifications within the scope of the present invention may be made without departing from the spirit thereof, and the invention includes all such modifications”. Adjustment of pH is a routine practice in the field, and it can be anticipated for obtaining specific pH as fit. Further, in light of claim interpretation, the pH is interpreted as intended use or property of the composition. The pH would necessarily be present or be capable of being achieved as property or intended use of the composition, which has already been taught by prior art.
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. biocrust Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
MPEP 2112.01.I states that “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). For this instance, the composition taught by Parr is substantially identical to the claimed invention. The substantially identical composition would necessarily constitute the same properties as claimed invention, and thus, the composition in Parr comprising the same substantial ingredients would be transparent as claimed in instant claim 10.
Parr teaches that ascorbic acid stabilized composition has been used in skin care creams as well as hair care products (e.g., [0008]), and the compositions are for topical application [0001]. MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Prada, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). The composition taught by Parr as indicated proper as hair care products, one skilled in the art would reasonably be expected to draw wherefrom that a cosmetic method for the care of hair would be as default by applying the composition to keratin material, as recited in instant claim 11.
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Parr et al. (US20020034548, 03/21/2002, IDS of 12/20/2023) evidenced by Chemical Book (guar hydroxypropyl-trimonium chloride, 2025, PTO-892).
As discussed in great detail applied to claims 1-7, 9-13, and 16-20 above, and incorporated herein, Parr exemplifies a cosmetic composition comprising water 59.63%, cationic galactomannan guar gum hydroxypropyl guar hydroxypropyltrimonium chloride (same as guar hydroxypropyl trimethyl ammonium chloride as evidenced by Chemical Book) 0.3%, ascorbic acid 15%, panthenol (having 9 carbon atoms) 0.3%, glycerin (polyol with 3 carbon atoms) 15%, PEG-4 (polyethylene glycol) 10% (Example 10). Parr teaches that the composition pH can be between 5 and 7 as recited in instant claim 1.
Parr does not expressly teach the cationic polymer guar gums being modified from a salt of 2,3-epoxypropyl trimethylammonium and hydroxyethylcellulose of formula (Ib) as recited in instant claim 14. Pass also does not teach in the same embodiment, e.g., Example 10, comprising at least one base as recited in instant claim 8, and the base is an alkaline metal hydroxide as recited in instant claim 15.
In Example 1, Parr teaches using 10% sodium hydroxide solution present at 4.54% weight amount of the composition comprising ascorbic acid 2.0% and polyquaternium -6 (polycationic polymer) at amount 2.17%, along with panthenol and propylene glycol, wherein the pH of the composition is 6.65 (Pg. 3, Example 1, [0039]. In Example 2, Parr teaches using 10% sodium hydroxide at amount of 5.68% of the ascorbic acid-comprising composition (Example 2, [0040]) (corresponding to base component in instant claim 8, alkaline metal hydroxide in instant claim 15).
As discussed above, Parr teaches in Example 10 the cationic galactomannan guar gum species hydroxypropyl guar hydroxypropyltrimonium chloride, which constitutes close structural similarity with 2,3-epoxypropyl trimethylammonium, and therefore, guar gum modified by a salt of 2,3-epoxypropyl trimethylammonium can be expected, as recited in instant claim 14. MPEP 2144.09.I states that “[a] prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990).
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to select the components from Parr to make the composition, and incorporate sodium hydroxide taught by Parr into the cosmetic composition to arrive at current invention. Because Parr teaches that pH is an important factor for the ascorbic acid-comprising composition stability (e.g., [0063-0066]), and the composition pH is adjustable from about 2 to about 7, and as Parr points out that other objects, features and advantages would become apparent to those skilled in the art from the detailed description, and it is to be understood, however, that the detailed description and specific examples, while indicating preferred embodiments of the invention, are given by way of illustration and not limitation, and hence, many changes and modifications within the scope of the present invention may be made without departing from the spirit thereof, and the invention includes all such modifications ([0015], it would have been convenient for scientists in the field to incorporate pH adjusting agent, e.g., sodium hydroxide, taught by Parr and optimize pH to achieve the desired stability. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Response to Arguments
Applicant’s arguments/remarks filed on 01/28/2026 and 02/02/2026 have been fully considered.
Applicant asserts that none of the embodiments described by Parr covers all the instantly claimed elements in claim 1; combining a pH from Example 1 with embodiment Example 10 features in prior art does not demonstrate the claim is anticipated of all elements either expressly or inherently.
In light of claim interpretation, the instant claim is a composition, and pH is interpreted as property of the composition or intended use of the composition. Prior art teaches the general pH range overlapping with the instantly claimed pH range between 5 and 7 in claim 1, while in Example 1 exemplifying pH 6.65 falling within the instantly claimed range. The anticipation is established based upon that prior art teaches this pH value falling within the claimed scope, even though it does not come from Example 10. Further, as presented in this office action above, and copied below the most relevant statement for reference:
Parr points out that “the detailed description and specific examples, while indicating preferred embodiments of the present invention, are given by way of illustration and not limitation. Many changes and modifications within the scope of the present invention may be made without departing from the spirit thereof, and the invention includes all such modifications”. Adjustment of pH is a routine practice in the field, and it can be anticipated for obtaining specific pH as fit. Further, in light of claim interpretation, the pH is interpreted as intended use or property of the composition. The pH would necessarily be present or be capable of being achieved as property or intended use of the composition, which has already been taught by prior art.
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. biocrust Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Applicant asserts that controlling pH between 5 and 7 constitutes technical effect of limiting the color change of the composition, which prior art does not disclose, teach or suggest such effect. Meanwhile, prior art suggests lower pH would favor for the stability of ascorbic acid, and thus, a person with ordinary skill in the art would be discouraged to prepare the composition such pH as claimed.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., pH having technical effect of limiting color change of the composition) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, prior art teaches using a classical colorimetric assay (Day et al. Clin. Biochem. 1979, 12, pp 22-26) has been used for determining the content of the ascorbic acid in aqueous compositions over the time [0037], indicating that limiting ascorbic acid color change is a property of the composition. Moreover, MPEP 2145 II. states that “prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art”, see In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991). For this instance, even if prior art does not expressly teach that pH and other components in the composition contributes to limit ascorbic acid color change, this property would be necessarily present as prior art teaches the composition.
Regarding prior art shows lower pH favoring ascorbic acid stability, prior art does teach the general pH range with ascorbic acid in aqueous environment with overlapping amounts of both ascorbic acid and water, as discussed in detail in office action. Also, prior art points out even though more degradation is observed in high pH solutions than in low pH solutions, “But overall, after two month, only a slight degradation of ascorbic acid was observed for these compositions at room temperature” [0064]. The teaching of prior art would not have discouraged artisans to implement pH, e.g., 6.39 in Example 4, or pH 6.65 in Example 1, in addition to other lower pH values; rather, it can be anticipated that prior art’s teaching would have encouraged artisans in the field to explore the pH effects with variable water contents and arrive at current invention.
Moreover, “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983), and "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments." Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), and "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
In conclusion, the arguments are not persuasive. Please refer to the entire office action as a complete response to remarks/arguments.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
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/DX.Z./
Examiner, Art Unit 1616
/SUE X LIU/
Supervisory Patent Examiner, Art Unit 1616
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