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 .
Election/Restrictions
Applicants’ election of Group II (claims 10-13) drawn to a composition comprising whey acid and brown seaweed extract, is acknowledged. The election was made without traverse.
As the requirement for restriction is deemed proper, it is maintained and hereby made FINAL.
Claims 2-9 and 14 are hereby withdrawn from further consideration by the Examiner, pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions, there being no allowable generic or linking claim. The instant claims have been examined commensurate with the scope of the elected invention. Applicants timely responded to the restriction requirement in the reply filed 1/21/26.
Accordingly, claims 10-13 are under current examination.
Status of Claims
No new claim set was filed in response to the restriction requirement filed on 12/17/25.
Withdrawn claims
2-9 and 14
Claims under instant examination
10-13
Claim Rejections - 35 USC § 112(b)
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.
Claims 12-13 are rejected under 35 U.S.C. 112(b) 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 12-13 are unclear. Claim 12 recites “…brown seaweed extract is chosen from an extract of Ascophyllum nodosum, an extract of Focus serratus…, preferably an extract of Ascophyllum nodosum”. Claim 13 recites “the content of acid whey is between 0.5% and 25%..., preferably between 1% and 10%, more preferably between 1% and 5%...the content of brown seaweed extract is between 0.5% and 25%..., preferably between 1% and 10%, more preferably between 0.5 and 5%...the content of sucrose is between 0.5% and 25%..., preferably between 1% and 10%, more preferably between 1 and 5%...”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12-13 recite the broad recitation species/range before the “preferably”, and the claim also recites species/ranges after the “preferably” and “more preferably” which is the narrower statement of the range(s)/limitation(s). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 13 is also unclear, in view of the phrase "for example". Such phrase renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 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.
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 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2013/0164233; published: 6/27/13), in view of Rocha-Mendoza et al. (J. Dairy Sci., 104(2), Feb. 2021).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Lee teaches the Estee Lauder product, CyberWhite Brilliant Cells Full Spectrum Brightening Essence as Group F of their study [0042]. Lee teaches that the product comprises the following ingredients:
Water/Aqua
Solvent
EAU, Dimethicone
Providing smoothness in use
Polysorbate 40
Hydrophilic emulsifier,
surfactant, fragrance dispersing
agent
Pentylene glycol
Small-molecule humectant,
Emollient, bacteriostat
Acorbyl glucoside
Whitening agent, Anti-oxidant
Yeast extract/Faex/Extrait de
Containing enzymes, various
levure
vitamins, minerals and
saccharides, being helpful to
nurse and nourish skin
Polyacrylamide
High-molecular-weight polymer,
thickener, Antistatic agent, highly
absorbent
Myristyl alcohol
Skin emollient, emulsification
stabilizer, thickener, viscosity
controlling agent
Acetyl glucosamine
Moisturizing, replenishing
Sucrose
Small-molecule moisturizer
PEG-10 Dimethicone
Skin emollient
Phenoxyethanol
Preservative, perfume fixative
C 13-14 Isoparaffin
Thickener
Titanium dioxide (CI77891)
Titanium dioxide dispersing agent
Sorbitol
Small-molecule humectant,
thickener
Sodium hydroxide
Adjusting ph value
Butylene glycol
Solvent, moisturizing
MICA
Emollient, coloring agent
Propylene glycol dicaprate
Skin emollient
Caffeine
Anti-irritation, promoting
metabolism and blood circulation
Tocopheryl acetate
Moisturizing, nourishing,
protecting skin from UV
Algae extract
Promoting metabolism,
moisturizing, softening, reducing
inflammation and calming skin,
anti free radical
Laureth-7
Emulsifier, surfactant
Pantethine
Vitamin B5 derivative, softener,
moisturizing, softening
Chlorphenesin
Preservative, bactericide
Glycyrrhetinic acid (K2)
Anti-irritation, skin conditioning
agent
Bifidus ferment filtrate
Moisturizing, replenish
Sodium RNA
Skin conditioning agent
O-Cymen-5-ol
Bacteriostat
Glycine soja (soybean) seed
Softener, humectant
extract
Fragrance (Parfum)
Fragrance
Gentianalutea (Gentian) root
Calming, allaying
extract
Phytosphingosine
Moisturizing and improving skin
immunization
Sodium hyaluronate
Strong humectant
Helianthus annuus (Sunflower)
Strengthening skin defense
seedcake
Silica
Viscosity reguator
Citric acid
Peeling, toner
Whey protein/lactis protein/
Tightening and smoothening skin
proteine du petit-lait
Chamomilla recutita
Calming, allaying, antiseptic,
(matricaria) flower extract
astringent
Disodium EDTA-2Na
Metal chelating agent
Oryza sativa (Rice) bran
Moisturizing, anti-irritation,
extract
enhanced whitening effect
Hordeum vulgare (Barley)
Skin emollient
extract/extrait d'orge
Laminaria saccharina extract
Skin conditioning agent
Hydrolyzed rice bran extract
Calming and whitening skin
Plankton extract
Skin conditioning agent
Lecithine
Natural surfactant, moisturizer,
anti-oxidant
Cucumis sativus (Cucumber)
Moisturizing, reducing
fruitextract
inflammation and calming skin,
and whitening
Pyrus malus (Apple) fruit
Moisturizing, reducing
extract
free-radical incurred harm and
anti-aging
Pueraria lobata root extract
Moisturizing, anti-irritation
Scutellaria baicalensis root
Reducing inflammation and
exract
calming skin, whitening
(underlined ingredients are the instantly claimed ingredients) [Table 3].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Although Lee teaches a composition comprising “whey protein/lactis protein/proteine du petit-lait”, Lee does not specify if this is or contains acid whey, as required by instant claim 10. However, this deficiency is cured by Rocha-Mendoza.
It is noted, the instant specification defines “acid whey” as the product resulting from the coagulation of milk by acidification (also called “sour whey”) [0016].
Rocha-Mendoza teaches that acid whey holds significant potential as a valuable source of health-promoting milk phospholipids (MPL) [Acid Whey Lipids Section]. More specifically, Rocha-Mendoza teaches that continuous topical application of MPL improves skin health through measures such as skin hydration, water-holding capacity and recovery of damaged skin [Health Benefits of the Lipid Fraction].
Lee does not teach the concentration of the claimed ingredients (i.e., acid whey, Laminaria saccharina extract and sucrose), as required by instant claim 13. It is noted that claim 13 recites a wide range of 0.5-25% by dry weight of each of the abovementioned ingredients.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Lee and Rocha-Mendoza are both directed to whey-containing compositions. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the composition of Mintel either substituting “whey protein/lactis protein/proteine du petit-lait” with Greek yogurt acid whey or further incorporating the Greek yogurt acid whey taught by Rocha-Mendoza to achieve the predictable result of obtaining a composition suitable for topical application. One of ordinary skill in the art would have been motivated to do so because Rocha-Mendoza teach that it is advantageous for skin hydration, water-holding capacity and recovery of damaged skin [Health Benefits of the Lipid Fraction].
The concentration of acid whey, brown seaweed extract (e.g., Laminaria saccharina extract) and sucrose is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal concentration in order to best achieve the desired results as such would provide advantageous biological effect. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. 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. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Rocha-Mendoza teaches that acid whey contains milk phospholipids (MPL) and that continuous topical application of MPL improves skin health through measures such as skin hydration, water-holding capacity and recovery of damaged skin [Health Benefits of the Lipid Fraction]. Lee teaches that Laminaria saccharina extract behaves as a skin conditioning agent and that sucrose behaves as a small-molecule moisturizer in the product of Estee Lauder CyberWhite Brilliant Cells Full Spectrum Brightening Essence [Table 3]. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the concentration of acid whey, brown seaweed extract (e.g., Laminaria saccharina extract) and sucrose would impact skin hydration, water-holding capacity, recovery of damaged skin, skin conditioning and moisturization and therefore be an optimizable variable.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617