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 . Claims included in prosecution are claims 1-8.
Response to Restriction Requirement
Applicant’s election without traverse of Group I, claims 1-8, in the reply filed on 8/14/26 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
1. Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (CN 113116739, Jul. 16, 2021) (hereinafter Yang) in view of Kim et al. (US 2018/0078522, Mar. 22, 2018) (hereinafter Kim).
Yang discloses a skin care product containing the penetration enhancer where said penetration enhancer can promote an absorption of water-soluble functional components and does not cause damage to skin (Abstract). Specifically, the water-soluble functional ingredient may be a skin whitening agent (Description, Pg. 4). Suitable skin whitening agents include kojic acid derivatives (Description, Pg. 4). The skin care product also includes moisturizers/humectants and solubilizers (Description, Pg. 6). Moisturizers/humectants are included in an amount of 0.01-20 % (satisfies claim 4) (Description, Pg. 7). Suitable moisturizers/humectants include dipropylene glycol (satisfies claim 3 and 5) (Description, Pg. 7). By adding a solubilizer, the raw materials of the skin care product can be more easily dissolved, and the use of the solubilizer in the skin care product will make the skin feel smooth (Description, Pg. 7). Suitable solubilizers include polysorbate-20 (satisfies claim 7) (Description, Pg. 7). The whitening agent is included in an amount of 0.01 to 5% (Description, Pg. 8). The skin care product may also include antioxidants in an amount of 0-2 % (Description, Pg. 8). Suitable antioxidants include vitamin E (i.e., tocopherol) (satisfies claim 8) (Description, Pg. 9).
Yang differs from the instant claims insofar as explicitly disclosing wherein the composition comprises kojyl methylenedioxycinnamate.
However, Kim discloses a composition which is effective in extending the life span of skin cells, moisturizing skin or strengthening the skin barrier using a kojic acid derivative (¶ [0007]). In an exemplary embodiment, the kojic acid derivative may be kojyl methylenedioxycinnamate (¶ [0010]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Yang discloses wherein the composition may comprise kojic acid derivatives. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Yang to comprise kojyl methylenedioxycinnamate, since it is a known kojic acid derivative for use in skincare compositions as taught by Kim.
In regards to a complex, when the components are mixed, one of ordinary skill in the would reasonably conclude that the combination would form “a complex”, absent evidence to the contrary.
Regarding claim 2, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the skin care product of Yang in view of Kim comprises whitening agents in an amount of 0.01 to 5% where suitable skin whitening agents include kojic acid derivative such as kojyl methylenedioxycinnamate. Accordingly, because the range recited in the instant claims lies inside the range disclosed by Yang in view of Kim, the range disclosed by Yang in view of Kim meets the instantly recited limitations.
Regarding claims 3 and 5, as discussed above, suitable moisturizers/humectants include dipropylene glycol. As such, a composition comprising such a component would have been obvious.
Regarding claim 4, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the skin care product of Yang in view of Kim comprises moisturizers/humectants such as dipropylene glycol in an amount of 0.01-20 %. Accordingly, because the range recited in the instant claims overlaps with the range disclosed by Yang in view of Kim, the range disclosed by Yang in view of Kim meets the instantly recited limitations.
Regarding claim 6, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). As discussed above, polysorbate 20 is a solubilizer, which makes amounts thereof a result effective variable, since amounts directly impact the ease of dissolution of the raw materials of the skin care product as well as the feeling of smooth skin. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amounts of polysorbate 20 to yield the desired raw material dissolution profile and resulting smooth skin feeling.
Regarding claim 7, as discussed above, suitable solubilizer include polysorbate 20. As such, a composition comprising such a component would have been obvious.
Regarding claim 8, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the skin care product of Yang in view of Kim comprises antioxidants such as Vitamin E (i.e., tocopherol) in an amount of 0-2 %. Accordingly, because the range recited in the instant claims overlaps with the range disclosed by Yang in view of Kim, the range disclosed by Yang in view of Kim meets the instantly recited limitations. Further, a composition comprising such a component would have been obvious.
Accordingly, the combined teachings of Yang and Kim render obvious claims 1-8.
Conclusion
Claims 1-8 are rejected.
Claims 9-20 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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/A.A./ Examiner, Art Unit 1612
/LEZAH ROBERTS/ Primary Examiner, Art Unit 1612
