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 .
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.
Claim(s) 1-2, 4-10, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka WO 2013/158824 A2 (Tanaka) and Li et al. US 2011/0105406 A1 (Li) in combination.
Claims 1-2, 4-10, and 13 are drawn to a transparent composition, comprising:
(a) at least one first compound selected from polyhydroxy acids and salts thereof;
(b) at least one second compound selected from Vitamin B3 and derivatives thereof;
(c) at least one alkyleneoxide derivative represented by the following chemical formula (I):
Z - {O (AO)l (EO)m - (BO)nH}a (I); and
(d) water,
wherein an amount of the (a) first compound(s) in the composition is 1% by weight or more, relative to a total weight of the composition.
Tanaka relates to cosmetic compositions containing an N-acyl amino acid compound, and more particularly related to skin irritation mitigating cosmetic composition containing an N-acyl amino acid compound and an alkylene oxide derivative, and to a composition’s preparation methods thereof (page 1). Such compositions are useful for regulating the condition of mammalian keratinous tissue needing such treatments. Tanaka teaches that there are a number of personal care products that are available to consumers, which are directed toward improving the health and physical appearance of keratinous tissues such as the skin, hair, and nails. The majority of these products are directed to delaying, minimizing or even eliminating skin wrinkling, spots, and other histological changes typically associated with the aging of skin or environmental damage to human skin. Consumers prefer topically applied products since they are not only effective, but also safe and pleasant to use.
Tanaka teaches that compositions may include at least one skin active compound (page 7). Tanaka teaches that Vitamin B3 compounds such as niacinamide are a preferred skin care active for use therein (page 8). Tanaka teaches that the composition may contain a whitening agent. Useful whitening agents include ascorbic acid compounds. When used, the composition preferably contains from about 0.1% to about 10%, more preferably from about 0.2% to about 5%, by weight of the composition, of a whitening agent. Tanaka teaches that ascorbic acid compounds are useful whitening agents, and include compounds having the formula (I):
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Tanaka teaches that preferably, the ascorbic acid compound useful therein is an ascorbic acid salt or derivatives thereof, such as the non-toxic alkali metal (pages 8-9). Tanaka teaches that ascorbyl glucoside is a preferable derivative.
Tanaka teaches that the compositions for the invention also comprise a dermatologically acceptable carrier (page 7). The dermatologically acceptable carrier may be present in an amount of from about 70% to about 99.899%, preferably from about 80% to about 85%, more preferably from about 90% to about 98.5% by weight of the composition. The carrier can be in a wide variety of forms. For example, emulsion carriers, including, but not limited to, oil-in-water, water-in-oil, water-in-oil-in-water, oil-in-water-in-oil emulsions, aqueous solution, water gel, oil dispersion and oil gel are useful herein. Oil in the carrier therein is understood to include silicone oil.
Tanaka teaches that the topical compositions of the invention may be formulated into cosmetic products such as foundations, moisturizer, wrinkle soothing serum, lotion, skin facial mask, skin lotion, skin cream, skin gel, eye gel, eye cream, or any other commonly known skin product or treatment (page 12). Tanaka teaches that, in some embodiments, the compositions are in the form of oil-in-water emulsion.
Tanaka explicitly teaches a cosmetic composition comprising (a) 0.025% ascorbyl glucoside (e.g., an “ascorbic acid compound” useful as a whitening agent; ascorbic acid is a polyhydroxy acid); (b) 5.0% niacinamide (e.g., a Vitamin B compound or derivative thereof); (c) 1.5% WILBRIDE S-753 ® (e.g., PEG/PPG/POLYBUTYLENE GLYCOL-8/5/3 Glycerin; an alkyleneoxide derivative of instant formula (I)); (d) 59.98% water; and (e) 1.0% Eldew PS-203 (e.g., oil phase). See Ex. 1, pages 14-16.
Tanaka differs from the instantly claimed invention in that 1) Tanaka does not explicitly teach a composition comprising a polyhydroxy acid or salt thereof; however, this deficiency would have been prima facie obvious. Although ascorbyl glucoside is employed in the example of Tanaka, it would have been obvious to substitute ascorbyl glucoside with an ascorbic acid salt as Tanaka teaches that either could be used as a whitening agent. The simple substitution of one known element (e.g., an “ascorbic acid compound” useful as a whitening agent) for another to obtain predictable results is prima facie obvious. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art.
Tanaka further differs from the instantly claimed invention in that 2) Tanaka does not explicitly teach a transparent composition; however, this deficiency would have been obvious in view of the teachings of Li.
In the instant case, the references may be combined to show obviousness because Tanaka and Li are each drawn to cosmetic compositions comprising whitening agents. They are from the same field of endeavor, and/or are reasonably pertinent to a transparent composition, comprising: (a) at least one first compound selected from polyhydroxy acids and salts thereof; (b) at least one second compound selected from Vitamin B3 and derivatives thereof; (c) at least one alkyleneoxide derivative represented by the following chemical formula (I): Z - {O (AO)l (EO)m - (BO)nH}a (I); and
(d) water, wherein an amount of the (a) first compound(s) in the composition is 1% by weight or more, relative to a total weight of the composition.
Li relates to transparent cosmetic compositions [0001]. Such compositions provide skin whitening, moisturization and/or conditioning as well as attractive transparent appearance. Li teaches that a clear and transparent appearance of cosmetic products has advantages in the market since it can be attributed pureness, mildness, cleanliness, freshness or lightness to consumers [0004]. Another benefit of a clear appearance, in combination with a transparent packaging, is that the consumer is readily able to view and inspect the product.
Li teaches that the compositions may preferably include at least one skin care active in addition to at least one salt form active [0046]. Vitamin B3 compound such as niacinamide is a preferred skin care active for use therein [0049]. Li teaches that compositions may contain a whitening agent [0052]. Li teaches that ascorbic acid compounds are useful whitening agents, and include compounds having the formula (I):
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See [0054 – 0055]. Li teaches that, preferably, the ascorbic acid compound useful herein is an ascorbic acid salt thereof such as the non-toxic alkali metal, alkaline earth metal and ammonium salts commonly known by those skilled in the art including, but not limited to, the sodium, potassium, lithium, calcium, magnesium, barium, ammonium and protamine salts which are prepared by methods well known in the art; or a derivative thereof such as ascorbyl glucoside.
In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983).
In the instant case, it would have been obvious to provide a composition of Tanaka as a transparent cosmetic composition. One would have been motivated to do so as Li teaches that a clear and transparent appearance of cosmetic products has advantages in the market since it can be attributed pureness, mildness, cleanliness, freshness or lightness to consumers. One would have had a reasonable expectation of success as Li is also drawn to a cosmetic composition comprising a vitamin B3 compound and an ascorbic acid compound.
All of the instant limitations are taught by the combination of Tanaka and Li. A person of ordinary skill in the art would have had a reason to combine the teachings of Tanaka and Li. A person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Tanaka and Li. Thus, claims 1-2, 4-10, and 13 would have been obvious based on the preponderance of the evidence.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka WO 2013/158824 A2 (Tanaka) and Li et al. US 2011/0105406 A1 (Li) in combination as applied to claims 1-2, 4-10, and 13 above.
As set forth supra, Tanaka teaches such compositions are useful for regulating the condition of mammalian keratinous tissue needing such treatments. Tanaka teaches that the topical compositions of the invention may be formulated into cosmetic products such as foundations, moisturizer, wrinkle soothing serum, lotion, skin facial mask, skin lotion, skin cream, skin gel, eye gel, eye cream, or any other commonly known skin product or treatment.
Tanaka differs from the instantly claimed invention in that 1) Tanaka does not explicitly teach a composition comprising a polyhydroxy acid or salt thereof and 2) Tanaka does not explicitly teach a transparent composition; however, these deficiencies would have been obvious for the reasons set forth above.
All of the instant limitations are taught by the combination of Tanaka and Li. A person of ordinary skill in the art would have had a reason to combine the teachings of Tanaka and Li. A person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Tanaka and Li. Thus, claims 14-15 would have been obvious based on the preponderance of the evidence.
Conclusion
Claims 1-15 are pending. Claims 1-2, 4-10, 13-15 are rejected. Claims 3 and 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. No claims are allowed.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK T LEWIS whose telephone number is (571)272-0655. The examiner can normally be reached Monday to Friday, 10 AM to 4 PM EST (Maxi Flex).
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/PATRICK T LEWIS/Primary Examiner, Art Unit 1691
/PL/
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