DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/15/2025 and 02/20/2024 have been considered by the examiner.
Status of the Claims
The claims filed 02/20/2024 are under consideration.
Claims 1-15 are pending.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. Rejections not reiterated herein have been withdrawn.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4, 7, and 15 are rejected under 102(a)(1) as being anticipated by Anon, MINTEL, 2011 (cited on IDS dated 05/15/2025).
Anon teaches a composition comprising:
PEG-20 glyceryl triisostearate which is an oxyalkylenated fatty acid ester of glycerol;
hydroxypropyl tetrahydropyrantriol which is C-β-D-xylopyranoside-2-hydroxypropane recited in claim 2 and within the scope of the cosmetic active compound formula of claim 1; and
polyglyceryl-10 isostearate which is a fatty acid ester of polyglycerol.
The composition is applied to skin which is a keratin material.
The Anon reference anticipates the subject matter of instant claims 1-2, 4, 7, and 15.
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 of this title, 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.
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 1-8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jouy, US 20190240123 A1.
Jouy teaches cosmetic compositions comprising at least two fatty acid esters of polyglycerol (Jouy, e.g., title). Jouy teaches compositions comprising a C-glycoside and fatty acid esters of polyglycerol (Jouy, e.g., example 1), wherein the compositions comprise at least two fatty acid esters of glycerol or polyglycerol.
Jouy exemplifies compositions comprising two fatty acid esters, e.g., polyglyceryl-5 laurate or polyglyceryl-2 laurate, and a C-glucoside within the scope of claims 1 and 2, e.g., C-13-D-xylopyranoside-2-hydroxypropane in an amount within the scope of claim 3.
Although Jouy exemplifies a composition comprising a C-glycoside and two fatty acid esters of polyglycerol, Jouy does not exemplify a single composition further comprising an oxyalkylenated fatty acid ester of glycerol.
Jouy teaches the fatty acid ester of glycerol or polyglycerol may be optionally polyoxyalkylenated, e.g., oxyalkylenated glycerol esters or polyoxyethylenated derivatives of glyceryl esters of fatty acids, e.g., PEG-7 glyceryl cocoate (Jouy, e.g., 0024-0025) - which meets the limitations of claims 1, (iii), 7-8 and 14 – and wherein the fatty acid esters of glycerol or polyglycerol are present in the composition in an amount ranging from 0.1-20%, preferably 1%-10%, and more preferably 1.5-7% by weight (Jouy, e.g., 0050-0052). The combination of at least two fatty acids offers the benefits of stability, good sensory properties, e.g., less tackiness, and/or mor slip, and make it possible to reduce the shininess and/or sheen of the skin to which it is applied (Jouy, e.g., 0001-0006, 0019, and 0284-0286, and claim 23).
Jouy teaches polyoxyethylenated derivatives of glyceryl esters of fatty acids, e.g., PEG-7 glyceryl cocoate as an art recognized equivalent for the polyglyceryl fatty acid esters, e.g., polyglyceryl-2 laurate (Joy, e.g., 0021-0025).
It would have been obvious before the effective filing date of the presently claimed invention to modify a composition exemplified in Jouy comprising a C-glycoside and at least one fatty acid ester of polyglycerol by including at least one polyoxyethylenated fatty acid ester of glycerol, e.g., PEG-7 glyceryl cocoate, with a reasonable expectation of success. The skilled artisan may have seen this modification as combining equivalent non-ionic surfactants known for reducing shine when applied to skin to arrive at a third composition useful for the same purpose. Alternatively, the skilled artisan may have seen this modification as substitution one known non-ionic surfactant for another where each were known for reducing shine when applied to skin. See MPEP 2144.06. The skilled artisan would have had a reasonable expectation of success since Jouy expressly suggests these modifications would maintain the reported benefits.
Applicable to claim 3: Jouy exemplifies C-13-D-xylopyranoside-2-hydroxypropane in an amount of 9 wt% (Jouy, e.g., example 1).
Applicable to claims 6 and 8: Jouy teaches wherein the fatty acid esters of glycerol or polyglycerol are present in the composition in an amount ranging from 0.1-20%, preferably 1%-10%, and more preferably 1.5-7% by weight (Jouy, e.g., 0050-0052). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05. The claimed range is within/overlapping with the range suggested by Jouy.
Applicable to claim 15: Jouy teaches the composition used in a non-therapeutic method which comprises applying the composition to keratin materials (Jouy, e.g., 0281-0286).
Accordingly, the subject matter of claims 1-8 and 15 would have been prima facie obvious before the effective filing date of the presently claimed invention, absent evidence to the contrary.
Claim(s) 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Jouy, US 20190240123 A1 as applied to claims 1-8 and 15 above, and further in view of Willemin, US 20080014162 A1.
Jouy teaches the composition of claim 1 as enumerated above. Jouy does not expressly teach the composition further comprising a peeling agent selected from the group consisting of N-substituted aminosulfonic acid compounds and α-hydroxy acids.
Willemin teaches methods for treating skin with compositions comprising at least one C-glycoside (Willemin, e.g., title, abstract, claims). Compositions further comprise actives which may be desquamating (peeling) agents such as α-hydroxy acids or aminosulfonic acids (Willemin, e.g., 0070-0078, 0113, and claim 9). These may be present in the composition in an amount ranging from 0.1-30wt% (Willemin, e.g., 0114).
The peeling agents are effective for combating ageing and promote cell renewal (Willemin, e.g., 0011). C-glycosides counteract the negative skin reactions caused in some people by the peeling agents (Willemin, e.g., 0016).
It would have been obvious before the effective filing date of the presently claimed invention to modify compositions of Jouy with a peeling agent selected from α-hydroxy acids or aminosulfonic acids with a reasonable expectation of success. Since Jouy teaches cosmetic compositions comprising C-glycosides, Willemin provides a teaching which would have prompted the skilled artisan to add a peeling agent to these compositions with a reasonable expectation of success. The skilled artisan would have been motivated to make this modification to reduce skin ageing appearance and promote cell renewal in the same way suggested by Willemin. The skilled artisan would have seen this modification as the use of a known technique to improve similar C-glycoside containing compositions in the same way. The skilled artisan would have had a reasonable expectation of success because Willemin expressly teaches C-glycosides may be used with peeling agents to reduce the irritant effect of peeling agents.
Applicable to claim 10: Willemin teaches (N-2-hydroxyethylpiperazine-N-2-ethane) sulfonic acid (Willemin, e.g., 0078, 0113).
Applicable to claims 11 and 13 and 14: Willemin teaches peeling agents, e.g., α-hydroxy acids or aminosulfonic acids in amounts ranging from 0.1 to 30% by weight (Willemin, e.g., 0114).
Applicable to claim 12: Willemin teaches α-hydroxy acids including lactic acid, glycolic acid or citric acid (Willemin, e.g., 0011, 0057, 0073 and example 2, 0457).
Accordingly, the subject matter of claims 9-14 would have been prima facie obvious before the effective filing date of the presently claimed invention, absent evidence to the contrary
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-14 of US 18291956 in view of Jouy, US 20190240123 A1 and Willemin, US 20080014162 A1.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
The reference claims teach an oil in water emulsion, i.e., the recited materials in an aqueous phase, comprising C-glycosides as per (i), and at least one at least one non-ionic surfactant selected from fatty acid esters of polyglycerol as per (ii). See reference claims 1-14.
The reference claims do not expressly teach the composition comprising oxyalkylenated fatty acid esters of glycerol.
However, Jouy teaches similar compositions comprising a C-glycoside and fatty acid esters of polyglycerol, wherein the compositions comprise at least two fatty acid esters of glycerol or polyglycerol, which is optionally polyoxyalkylenated, e.g., oxyalkylenated glycerol esters or polyoxyethylenated derivatives of glyceryl esters of fatty acids, e.g., PEG-7 glyceryl cocoate (Jouy, e.g., 0024-0025) - which meets the limitations of claims 1, (iii), 7-8 and 14 – and wherein the fatty acid esters of glycerol or polyglycerol are present in the composition in an amount ranging from 0.1-20%, preferably 1%-10%, and more preferably 1.5-7% by weight (Jouy, e.g., 0050-0052). The combination of at least two fatty acids offers the benefits of stability, good sensory properties, e.g., less tackiness, and/or mor slip, and make it possible to reduce the shininess and/or sheen of the skin to which it is applied (Jouy, e.g., 0001-0006, 0019, and 0284-0286, and claim 23).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05. The claimed range is within/overlapping with the range suggested by Jouy.
It would have been obvious before the effective filing date of the presently claimed invention to modify compositions of the reference claims by including oxyalkylenated glycerol esters or polyoxyethylenated derivatives of glyceryl esters of fatty acids, e.g., PEG-7 glyceryl cocoate in an amount ranging from 0.1-20% by weight as suggested by Jouy with a reasonable expectation of success. Jouy provides a teaching which would have prompted the skilled artisan to include an additional glyceryl fatty acid ester since Jouy clearly teaches the combination of polyoxyethylenated derivatives of glyceryl esters of fatty acids, e.g., PEG-7 glyceryl cocoate and fatty acid esters of polyglycerol. The skilled artisan would have been motivated to include an additional polyoxyethylenated derivatives of glyceryl esters of fatty acids, e.g., PEG-7 glyceryl cocoate for the benefits reported by Jouy. The skilled artisan would have had a reasonable expectation of success because Jouy suggests this modification for improving compositions comprising a C-13-D-xylopyranoside-2-hydroxypropane and polyglyceride fatty acid esters.
Applicable to claims 9-14:
The combined teachings of the reference claims and Jouy do not expressly teach compositions further comprising a peeling agent selected from the group consisting of N-substituted aminosulfonic acid compounds and α-hydroxy acids. However, Willemin teaches these features in similar C-glycoside containing compositions as enumerated above.
It would have been obvious before the effective filing date of the presently claimed invention to modify compositions suggested by the combined teachings of the reference claims and Jouy with a peeling agent selected from α-hydroxy acids or aminosulfonic acids with a reasonable expectation of success. Since, the reference claims and Jouy teach cosmetic compositions comprising C-glycosides, Willemin provides a teaching which would have prompted the skilled artisan to add a peeling agent to these compositions with a reasonable expectation of success. The skilled artisan would have been motivated to make this modification to reduce skin ageing appearance and promote cell renewal in the same way suggested by Willemin. The skilled artisan would have seen this modification as the use of a known technique to improve similar C-glycoside containing compositions in the same way. The skilled artisan would have had a reasonable expectation of success because Willemin expressly teaches C-glycosides may be used with peeling agents to reduce the irritant effect of peeling agents.
Additional teachings of Jouy and Willemin with respect to claims 9-14 enumerated above are reiterated here.
Accordingly, the subject matter of claims 1-15 would have been prima facie obvious before the effective filing date of the presently claimed invention, absent evidence to the contrary.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM A CRAIGO whose telephone number is (571)270-1347. The examiner can normally be reached on Monday - Friday, 9am - 6pm, PDT.
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/WILLIAM CRAIGO/Examiner, Art Unit 1615