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 .
Priority
The effective filing date of the instant application is 11 March 2024.
Representation
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
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 1-3 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” (See MPEP 608.01(m)).
Please see MPEP 714 for instructions on the proper way to make amendments to the claims. In particular: “All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of "currently amended," and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters.”
In should be pointed out that “the original numbering of the claims must be preserved throughout the prosecution. When claims are canceled the remaining claims must not be renumbered. When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not).” (See MPEP 608.01(j)).
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Petsoka et al. (US 2016/0346191).
Petsoka teaches compositions useful for protecting the skin from visible light (abstract) by topically administering the composition [0004]. In one embodiment, the composition comprises shea butter (at least 30%) in combination with one or more oils from Group A [0147]. Group A further comprises carrot oil and raspberry oil (Fig. 4). Raspberry oil is highly moisturizing [0177] and carrot oil is a good antioxidant due to the presence of beta-carotene and vitamin E [0180]. Moreover, oils from Group A may be combined with oils from Group B to provide a composition with good average absorbance [0201]. Group B comprises grapeseed oil (Fig. 6Y). Grapeseed oil is a good source of vitamin E [0320]. Type II and Type III oils can also further be included [0007] and comprise coconut oil (Fig. 10) which has antioxidant and anti-inflammatory properties [0321]. The composition can also further comprise lavender oil [0124]. The oils are included in suitable amounts to provide an average absorption of light over 380-500 nm [0124, 0147]. Petsoka teaches that mango butter can be used as a butter in the composition [0293].
Regarding the instant invention, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of butters and oils from within Petsoka, to arrive at compositions “yielding no more than one would expect from such an arrangement.” The resulting composition would be a topical formulation comprising shea butter, coconut oil, grapeseed oil, carrot oil, raspberry oil, and lavender oil wherein the composition can also comprise mango butter instead of shea butter. The butter is taught as being used in amounts greater than 30% whereas the oils are all included in a functional amount so as to provide an average absorption of light over 380-500 nm. Moreover, the oils are each listed as providing different functions such as antioxidant or anti-inflammatory properties. That being said and in lieu of objective evidence of unexpected results, the concentrations of each of the oils can be viewed as a variable which achieves the recognized result of providing a desired average absorption and/or desired antioxidant and anti-inflammatory properties. The optimum or workable range of each oil can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicants provide no evidence of any secondary consideration such as unexpected results that would render the optimized amounts of oils nonobvious.
Regarding claim 1, it is noted that the limitation reciting, “which each have at least one activity… removes make up…,” “This combination also leads to… antimicrobial results…,” and “raspberry oil for SPF of 30-50” are considered properties that are inherent in the oils recited in the remainder of the claim. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)).
The limitations reciting, “after a small to moderate amount is applied to the skin that is exposed to the elements…” is an intended use of the claimed composition, does not impart a structural difference over the prior art, and is given minimal patentable weight (see MPEP 2111.02 (II)).
Regarding instant claim 2, the limitation, “where the ingredients are blended using an emulsifier” is a product-by-process limitation, does not impart a structural difference over the prior art, and is given minimal patentable weight (see MPEP 2113). The limitation in claim 2 reading, “and applied once a day” is an intended use of the claimed composition, does not impart a structural difference over the prior art, and is given minimal patentable weight (see MPEP 2111.02 (II)).
As such, instant claims 1-3 are obvious in view of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613