DETAILED ACTION
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-12 are pending.
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.
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is drawn to a retinol derivative composition, comprising: hydroxypinacolone retinoate and retinyl propionate, wherein the ratio of the hydroxypinacolone retinoate to the retinyl propionate in parts by mass is (5-40):9.
Claim 5 is drawn to a cosmetic and/or skin care product comprising the composition of claim 1.
The broadest reasonable interpretation of the claimed compositions would be the material that is named, that is: a retinol derivative composition, comprising: hydroxypinacolone retinoate and retinyl propionate. Additionally in the cosmetic and/or skin care product, there are no further required non-naturally occurring components. Retinol derivatives comprising hydroxypinacolone retinoate and retinyl propionate are naturally occurring products.
Thus, the composition claimed in claims 1 and 5 are not markedly different from how the individual components are in nature. It is not integrated into a practical application because nothing in claims 1 or 5 relies on or uses the exception. There is nothing significantly more than the judicial exception because there are no additional elements in the claim. The instant specification discloses in [0093] that “it can be known from the experimental results that in the technical solution provided by the present disclosure, the HPR and the retinyl propionate were combined at a ratio of 5:9 to 20:9 in parts by mass to exert a synergistic effect, thereby obtaining an unexpected anti-aging effect. Particularly, when the HPR and the retinyl propionate were combined at a ratio of 5:9 in parts by mass, the anti-aging synergistic effect was particularly significant” However, there is no data to support the claim of “an unexpected anti-aging effect” or what the “unexpected anti-aging effect” entails. Further, [0093] recites that the synergistic effect is when the ratio is from 5:9 to 20:9, particularly 5:9; however, the claimed range is broader from 5:9 to 40:0. With regard to claims 2-4 and 6-12 the enumeration of the amounts or additional products of nature do not make the combination of the products of nature markedly different from how they occur in nature.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, because the formulation at the broadest interpretation of the claim language is a mixture of products of nature comprising: one or more curcuminoids, and a hydrophilic carrier or aqueous medium, which does not appear to change the biological/pharmacological functions, chemical/physical properties, or the structure/form of said ingredients. Because the claimed formulation does not have markedly different characteristics, it is a product of nature.
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 1-11 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 pre-AIA the applicant regards as the invention.
Claims 1-3, 10, and 11 recite parenthetical recitations, which makes the claims indefinite because it is unclear if the limitations within the parenthetical recitations are part of the claimed invention. In the interest of compact prosecution, examiner uses the broadest reasonable interpretation wherein the parenthetical recitation is a range for the first value of the ratio, thus examiner suggests corrections wherein the parenthetical recitation in the claims should read as for example claim 1 “from 5:9 to 40:9”, claim 2 “from 5:9 to 20:9”, claim 3 “from 5:9 to 10:9”, claim 10 from 5:9 to 20:9, claim 11 from 5:9 to 10:9.
Claims 5-9 are included in the rejection because they do not correct for the defect of the claim from which it depends.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (WO2021017222A1 Machine English Translation).
Regarding claims 1-12, Wang is drawn to formulations of retinol and derivatives thereof and preparation methods therefor. The supramolecular formulations consists of 3.00 - 25.0% of retinol derivatives, 36.5 - 91.0% of hydroxypropyl γ-cyclodextrin, 4.00 - 32.0% of hydroxypropylmethyl cellulose stearyloxy ether, and 2.00 - 8.0% of PEG/PPG/polytetramethylene glycol-8/5/3 glycerin. The mass ratio of PEG/PPG polytetramethylene glycol-8/5/3 glycerin to hydroxypropyl methylcellulose stearyloxy ether is 1: 2 - 4. The formulations have the advantages of good stability, high solubility, low irritation and good anti-wrinkle effect (abstract).
Wang discloses retinol and its derivatives include at least one of retinyl propionate and hydroxypinacolone retinoate [0010]. Wang discloses a cosmetic composition comprising supramolecular formulations of retinol and its derivatives [0020]. Wang discloses the cosmetic composition is an emollient, emollient oil, cream, day cream, night cream, eye cream, UV protection product, anti-wrinkle product, gel, mask, balm, powder, or sunscreen product [0021]. Wang discloses the retinol and its derivatives described in this disclosure are one or a mixture of them in any proportion (encompasses wherein the ratio of the hydroxypinacolone retinoate to the retinyl propionate in parts by mass is 5:9), including retinyl propionate and hydroxypinacolone retinoate [0036].
Wang does not explicitly disclose each of the components of the composition together as claimed in a single embodiment in the exact ratio for an anticipation rejection.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Wang, to arrive at the instant invention.
One of ordinary skill in the art would have been motivated to do so because Wang discloses all the required ingredients and Wang discloses retinol and its derivatives include at least one of retinyl propionate and hydroxypinacolone retinoate [0010], Wang discloses a cosmetic composition comprising supramolecular formulations of retinol and its derivatives [0020], Wang discloses the retinol and its derivatives are a mixture of them in any proportion, including retinyl propionate and hydroxypinacolone retinoate [0036], and Wang discloses the formulations have the advantages of good stability, high solubility, low irritation and good anti-wrinkle effect (abstract). Further, one having ordinary still in the art would reasonably expect success in combining prior art elements according to known methods to yield predictable results, see MPEP 2141.
Pertinent Art Not Relied Upon
Examiner has identified and included the references:
Kosann et al. (US 20210186845 A1) discloses a composition comprising active Vitamins is selected from the group consisting of Vitamin A and Vitamin A derivatives, preferably selected from a group consisting of all-trans retinol, retinol, retinal, retinyl acetate, retinaldehyde, retinyl palmitate, retinoic acid, retinyl propionate, retinyl linoleate, dehydroretinol and hydroxypinacolone retinoate [0014], as pertinent prior art but has not directly relied upon the teachings from the reference in this action.
Conclusion
No claims are allowed.
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/QUANGLONG N TRUONG/Examiner, Art Unit 1615