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 .
Drawings
The drawings are objected to because in Figures 4(A) and 4(B) some of the small fonts are illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Piacentini (EP 4011353A1).
Piacentini is drawn to “cosmetics solvents comprising ascorbic acid” (title). It teaches “an eutectic solvent formed from the mixture of ascorbic acid (vitamin C) in combination with Betaine and a third component selected from the group comprising Water, Ethanol,…” (title; abstract; see entire document). Suitable molar ratios of vitamin C to betaine are within the range in claim 2 (Table at para.0018). Weight concentrations of vitamin C is within the range in claim 3 (id.). The eutectic solvent “is preferably a part of a cosmetic composition, especially…based on a water in oil emulsion” (para.0053). The eutectic solvent is prepared by combining the individual components (para.0040).
Claims 7 and 8 recite “for skin brightening, skin tone improvement, or pigmentation improvement” and “for improving skin wrinkles of skin elasticity”. However an 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. MPEP § 2111.02. Here Piacentini teaches using a cosmetic composition comprising the eutectic solvent “for an improved moisturization of the skin”. Improved, i.e., increased moisturization would indirectly result also in the effects in claims 7 and 8. Therefore the recited phrases in claims 7 and 8 do not patentably distinguish the claimed matter from Piacentini.
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Piacentini (EP 4011353 A1).
Piacentini does not specifically teach a cosmetic composition wherein its eutectic solvent comprises a weight concentration within the range in claim 4. However it would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to prepare such a composition. The skilled person would have been motivated to do so because Piacentini teaches incorporating the eutectic solvent into cosmetic formulas, and further adding “water or ethanol up to 15%, preferably up to 10%, …. as a strategy to decrease the viscosity of the liquid without increased degradation of the ascorbic acid” (para.0039; see claim 8). The “liquid” here refers to “combination of the solid ascorbic acid with the other inventive eutectic solvent components surprisingly yields a liquid” appearing at the beginning of paragraph 0039. In other words the eutectic solvent may comprise 85% of the cosmetic formulation. Claim 4 recites up to 80 parts by weight or 80%, which is close to 85%. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, i.e., modifying the release rate or protecting from premature reactions. MPEP § 2144.05(I) (citations omitted). Furthermore Piacentini teaches cosmetic active agents other than vitamin C, inclusion of which would further reduce the concentration of the eutectic solvent in the cosmetic formulation. Therefore without some showing of the criticality of the recited range claim 4 is determined prima facie obvious over Piacentini.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614