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 .
DETAILED ACTION
Status of the Claims
Claims 1-6 and 8-10 are amended. Claims 1 and 15-17 are withdrawn. Claims included in the prosecution are claims 2-14.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 03/21/2024 is in compliance
with the provisions of 37 CFR 1.97. Accordingly, this IDS has been considered by the Examiner.
Priority
This application is a 371 of PCT/EP2022/076393 filed 09/22/2022. This application claims benefit to FRANCE FR2109967 filed 09/22/2021.
Elections/Restrictions
Applicants’ election of Group II, claims 2-14 with traverse in the reply filed on 02/11/2026 is acknowledged. The traversal is on the ground(s) that Mano et al. (WO 2019/076893 A1) (hereinafter Mano ‘893) does not teach the use of the claimed water-soluble lignin as anti-UV filter, nor on cosmetic compositions intended to provide UV protection (see Remarks, pg. 2, ¶ 5). Applicants argue that “Groups I and II share the same special technical feature that underlies the anti-UV functionality achieved by the claimed lignin when incorporated into compositions and applied” (see Remarks, pg. 2, ¶ 5).
These arguments are not found to be persuasive because as per PCT Rule 13.1, the international application shall relate to a group of inventions so linked as to form a single general inventive concept or a “unity of invention” (see MPEP §1850). PCT Rule 13.2 states that said “unity of invention” is fulfilled by defining a special technical feature that is shared amidst the claimed inventions. The Rule further specifies that “[t]he expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.”
Lignin fibers are well known in the art as being used in the field of cosmetics as Mano ‘893 discloses in paragraph [0068]. The water-soluble lignin that is soluble in water at a pH between 5 and 10 and procured by employing BOD, is the special technical feature. Mano ‘893 teaches this feature (claims 1-3, ¶ [0038]).
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 1 and 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.
Claim Objections
Claim 14 is objected to because of the following informalities: the term “bilirubine” in “bilirubine oxidase” appears to be misspelled. Appropriate action is required.
Applicant is advised that should claim 12 be found allowable, claims 13 and 14 will be objected to under 37 CFR 1.75 as being substantial duplicates thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
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 4, 9, and 13 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.
The term “preferably” in claim 4 (lines 4 and 8), claim 9 (line 3), and claim 13 (lines 2 and 3) is a relative term which renders the claim indefinite. The term “preferably” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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) 2-11 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Mano (US2020/0407388 A1 equivalent WO2019/076893 cited on IDS), Qian et al. (Sunscreen Performance of Lignin from Different Technical Resources and Their General Synergistic Effect with Synthetic Sunscreens, ACS Sustainable Chem. Eng. 2016, 4, 4029-4035, May 24, 2016) and Chang et al. (Generic Development of Topical Dermatologic Products: Formulation Development, Process Development, and Testing of Topical Dermatologic Products, The AAPS Journal, Vol. 15, No. 1, Oct. 9, 2012) with evidence from Dini and Laneri (The New Challenge of Green Cosmetics: Natural Food Ingredients for Cosmetic Formulations, Molecules 2021, 26, 3921, pgs. 1-28, June 26, 2021).
Mano discloses a lignin soluble in water at a pH greater than or equal to 4 and less than 12 wherein said soluble lignin is obtained by the enzymatic route (abstract, claim 1) to read on the water-soluble lignin derived from an enzymatic treatment, said lignin being soluble in water at a pH between 5 and 10 limitation of claim 2. The soluble lignin is obtained enzymatically differs from soluble lignin obtained chemically by the absence of chemically synthesized impurities and the absence of sulfate or sulfonate groups ([0040]) to read on wherein the water-soluble lignin comprises no sulfonate groups or comprises a maximum mass content of 1% by weight of sulfonate groups relative to the total weight of water-soluble lignin of instant claim 2.
While Mano teaches that lignin fibers may be used for different applications, e.g., lignin fibers may be used in the cosmetics ([0073]), there is no exemplary teaching of a cosmetic. Oily phase and/or at least one hydrophilic thickening polymer are not expressly taught.
However, Qian discloses five types of lignin blended with a pure cream and a sunscreen lotion to study photostability of the lignin-modified lotions (abstract). Materials of the composition(s) taught include Alkali lignin, alkali lignin of low sulfonate content, and chemical sunscreen active avobenzone (pg. 4030, col. 1, para. 2) to read on the lipophilic organic UV filters limitations of claim 8 and claim 9.
Looking to the Supporting Information of Qian (pg. 4030, see Experimental Section), Carbomer is listed which is a well-known and widely used polymer of acrylic acid used as a thickening agent in cosmetics (pg. S4, Table S3).
Chang teaches that Carbomer and methyl cellulose, carrageenan, guar gum, hydroxypropyl cellulose, hydroxypropyl methyl cellulose are exemplary thickening agents (see Table II.). Carbomers and xanthan gum (i.e., natural gum) can be dispersed in water to form uniform lump-free dispersion (see Chang, pg. 44, col 2, para. 2). It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to substitute one known Carbomer with the xanthan gum for a similar purpose of rheology control. Simple substitution of one thickening agent for another is within the purview of the skilled artisan and would yield predictable results. Here the teachings of Qian and Chang read on the hydrophilic thickening polymer selected from among natural gums limitation recited in claim 2 and claim 10.
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to combine the lignin taught by Mano with the lignan-modified lotion of Qian with expected results. Qian teaches that due to existence of large amount of phenolic, ketone, and intramolecular hydrogen bond, lignin has great potential in UV defense (pg. 4029, col. 2, para. 1). One would be motivated to combine these teachings because Qian provides data to support that all of the lignin types that were studied showed a general synergistic effect with sunscreen actives in the commercial lotion (abstract, pg. 4032, col. 1, para. 1).
Mano discloses a process for the solubilization of lignin wherein said process comprises bringing a lignin into contact with at least one bilirubin oxidase enzyme (BOD), in the presence or absence of a redox mediator, and obtaining a water-soluble lignin with a pH greater than or equal to 4 (claim 3) to read on the water-soluble lignin is derived from enzymatic treatment with at least one bilirubin oxidase enzyme of instant claim 3.
Regarding instant claims 4 and 11, Mano teaches that the process comprises bringing the soluble lignin into contact with an aqueous solution, optionally in the presence of a water-soluble polymer, coagulation or crosslinking of lignin, optionally in the presence of the water-soluble polymer, with a coagulating or crosslinking agent, and obtaining lignin fibers (claim 12) possibly washing with water and then drying the lignin fibers, calcining said lignin fibers, and obtaining carbon fibers (claim 14). According to one embodiment, the lignin obtained after enzymatic treatment preferably undergoes treatment with ultrasound, so as to optimize and accelerate its dissolution, and to denature the enzyme at the end of incubation ([0031]). Advantageously, the lignin obtained after enzymatic treatment in aqueous solvent may be separated from the salts, for example by dialysis, or centrifugation ([0032]). According to a preferred embodiment, the insolubles may be separated from the soluble lignin, for example by centrifugation. Soluble lignin is present in the supernatant when centrifugation is used ([0033]). Here the teaching(s) are provided to read on the separating of the water-soluble lignin from the salts of the mixture and any insoluble compounds obtained in c is performed by dialysis or centrifugation limitation of claim 11.
Claim 4 is a product-by-process claim wherein the product claimed is made by a series of steps. MPEP 2113 states that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Mano discloses that according to one variant, bilirubin oxidase (BOD) may be of fungal origin ([0021]) to read on the bilirubin oxidase is fungi-derived limitation of claim 5.
Looking to the Supporting Information of Qian (pg. 4030, see Experimental Section), Hydrogenated soybean oil is listed (pg. S4, Table S3). As evidenced by Dini and Laneri, hydrogenated soybean oil is an exemplary ingredient that exhibits liposomal stability for natural products in cosmetic formulations (pg. 17, sec. 10.1.1). Here the teachings read on the an oily phase limitation of claim 6.
Regarding claim 7 and claim 8, as mentioned above, Qian teaches UV filter avobenzone (pg. 4030, col. 1, para. 2). Qian discloses that the sunscreen active ingredients dispersed nicely in the lotions (pg. 4031, col. 2, para. 4) and Qian teaches sorbitan oleate (i.e., surfactant) (pg. S4, Table S3). As evidenced by Dini and Laneri, liposome stability is preserved by dispersing liposomes in a lipid solution with surfactant (pg. 17, sec. 10.1.1.). One of skill in the art would have reasonably expected success in achieving a stably formulated composition by incorporating the water soluble lignin of Mano with the oily phase of Qian. Here these teachings read on the oily phase is dispersed in the aqueous phase, or the aqueous phase is dispersed in the oily phase limitation of claim 7 and on the at least one surfactant of claim 8.
2. Claim(s) 12-14 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Mano (US2020/0407388 A1 equivalent WO2019/076893 cited on IDS), Qian et al. (Sunscreen Performance of Lignin from Different Technical Resources and Their General Synergistic Effect with Synthetic Sunscreens, ACS Sustainable Chem. Eng. 2016, 4, 4029-4035, May 24, 2016) and Chang et al. (Generic Development of Topical Dermatologic Products: Formulation Development, Process Development, and Testing of Topical Dermatologic Products, The AAPS Journal, Vol. 15, No. 1, Oct. 9, 2012) with evidenced from Dini and Laneri (The New Challenge of Green Cosmetics: Natural Food Ingredients for Cosmetic Formulations, Molecules 2021, 26, 3921, pgs. 1-28, June 26, 2021), and further in view Mano et al. (US9617577 B2, Apr. 11, 2017) (hereinafter Mano ‘577).
The teachings of Mano and Qian above are incorporated below.
Mano discloses that according to one variant, bilirubin oxidase (BOD) may be of fungal origin; of Magnaporthe oryzae origin ([0021]). According to another variant, the BOD may be of bacterial origin; Bacillus pumilus origin ([0022]).
Mano ‘577 discloses a novel Bacillus pumilus bilirubin oxidase, the method for preparing same and also to the use thereof (abstract). Mano ‘577 explicitly teaches that the Bacillus pumilus BOD has better enzymatic properties than the BODs of Myrothecium verrucaria or of Bacillus subtilis (col. 2, lines 62-64). Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to utilize the Bacillus pumilus taught by Mano ‘577 and apply this origin BOD to the teachings of Mano and Qian. One of ordinary skill in the art would have been motivated to do so because Mano ‘577 expressly teaches that Bilirubin oxidase (BOD) produced by Bacillus pumilus is more active and/or more stable than the commercially available BODs (col. 1, lines 60-62) thereby providing an improvement in the properties (i.e., robustness, stability) of the cosmetic compositions.
Conclusion
Claims 2-14 are rejected. Claims 1-15-17 are withdrawn. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Karen Ketcham whose telephone number is (571) 270-5896. The
examiner can normally be reached 0900-1700 ET. Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool.
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/Karen A Ketcham/
Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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