DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. Skin care formulation is a broad title which does not convey the application in any particular sense and the applicant has replete applications with the similar titles that are not descriptive.
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 13-31 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 13-31 are dependent on cancelled claims. It is unclear what the correct dependency is for the pending claims.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 12-31 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Claude Jarkae Jensen and Heidi Robinson (US6589514B2), hereinafter Jensen.
Jensen’s general disclosure is to cosmetic intensive repair serum with Morinda citrifolia (see abstract).
Regarding claim 12, Jensen teaches compositions which are intended to treat fine lines (see column 2, lines 47-51) and teaches the compositions to prevent and reduce the appearance of wrinkles (see column 10, lines 31-36). Jensen teaches compositions can comprise Vitis Vinifera seed extract, Centella Asiatica extract, glycerin, butylene glycol, carbomer, xanthan gum, purified water, phenoxyethanol (see example six, column 13, claims 57-59) and teaches compositions to comprise glyceryl stearate in amounts of 1 and 5 percent weight (see claim 28), cetyl alcohol in amounts from 1 and 5 percent weight (see claim 27), vitamin E, dimethicone (see claim 55).
Regarding claim 13, Jensen teaches compositions to comprise Camellia Sinensis (see claims 57-59).
Regarding claim 14, Jensen teaches compositions to comprise caprylic/Capric triglyceride (see claim 55), PEG-100 stearate (see claim 44), sodium hyaluronate (see claim 56), Aloe Barbadensis (see claim 57), squalene as an emollient (see column 10, lines 1-4).
Regarding claim 15, Jensen teaches compositions to comprise propylene glycol (see claim 37), disodium EDTA (see claim 55).
Regarding claim 16, Jensen teaches compositions to comprise lecithin (claims 15, 57 and 59), BHT (see claims 53-55).
Regarding claim 17, Jensen teaches compositions to comprise bisabolol and stearyl alcohol (see claim 55).
Regarding claim 18, Jensen teaches compositions to comprise caprylic/capric triglyceride, PEG-100 stearate, disodium EDTA, BHT (see above).
Regarding claim 19, Jensen teaches compositions to comprise sodium hydroxide and sodium hyaluronate (see claim 56).
Regarding claim 20, Jensen teaches compositions to comprise caprylic/capric triglyceride, PEG-100 stearate (see above).
Regarding claim 21, Jensen teaches tocopherol acetate as vitamin E (see claim 55 and 57).
Regarding claim 22-25, Jensen teaches Camellia sinensis, disodium EDTA, propylene glycol, lecithin, aloe barbaensis, PEG-100 stearate, etc. (see above).
Regarding claim 26, Jensen teaches compositions to further include moisturizers such as sodium PCA (see column 8, lines 55-53), thickeners (see column 10, lines 5-15).
Regarding claims 27-30, pertaining to wherein topically applying the composition to the skin has the instantly claimed effects, these limitations are intended uses of the composition and do not structurally limit the composition itself. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 31, Jensen teaches the composition as a lotion, cream or gel (see column10, lines 51-52).
Jensen teaches compositions which can include the instantly claimed ingredients, however does not teach a single composition to include each ingredient.
However it would have been obvious before the effective filing date to persons skilled in the art to create the instant method of treating skin having fine lines or wrinkles with the instantly claimed ingredients because Jensen teaches compositions which can comprise of the same ingredients, in combination for such a purpose. Given the single piece of prior art, all a person of skill has to do is merely combine the relied upon arts claimed ingredients into skin care formulations for treating fine lines and wrinkles which have already been described in the art. Picking and choosing which of the prior arts ingredients to include into a composition for reducing wrinkles and fine lines is a matter of mere judicious selection especially since they are taught for the same purpose and many of the ingredients are known in the art to be included in cosmetic formulations. The instantly claimed composition does not appear to make any enhancement over the prior arts teachings.
There would have been a reasonable expectation of success in arriving at the instant invention because Jensen’s art teaches the same ingredients in cosmetic compositions for treating fine lines and wrinkles.
Conclusion
Currently no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB ANDREW BOECKELMAN whose telephone number is (571)272-0043. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached on 571-272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB A BOECKELMANExaminer, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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