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 .
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.
Previous Rejections
Applicant’s arguments, filed April 14, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Status
Claims 2-3 and 6-7 are canceled.
Claims 1, 4-5, and 8 are pending and are examined on the merits in this prosecution.
CLAIM REJECTIONS
Obviousness Rejection
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.
1) Claims 1, 4, 5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Dutta (WO 2019/029922 A1; equivalent of JP-2020-529399 A and US 2021/0085585 A1; each of record), in view of Dreher (US 9,375,398).
Dutta teaches a personal care composition comprising a combination of 1-piperidinepropionic acid and pyridinecarboxamide, a composition that provides synergistic skin lightening (Abstract). 1-Piperidinepropionic acid is also known as a wrinkle improving agent (pg 2: 7-10). Dutta further teaches and phenylethyl resorcinol as an additional, preferred agent for skin lightening agents (pg 8: 4-6). This teaching also reads of claim 5.
For claim 2, Dutta teaches “the additional skin lightening agents may be added in an amount, preferably, from 0.01 to 10 wt% (pg 8, 9-11), overlapping the claimed range. Because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
For claim 4, as set forth above, the mass ratio of the amount of pheylethylresorcinol to the amount of the organic acid (1-piperidinepropionic acid) overlaps the claimed range.
Regarding claim 5, Dutta teaches amounts of 1-piperidinepropionic acid (1 PP) is more preferably from 0.01 to 5 wt%, overlapping the claimed range (pg 3: 26-30]):
Dutta does not teach the newly added claim 1 limitation of “a blending amount of vitamin C or the derivative thereof is 0.008 to 0.2 mass % based on the total mass of the cosmetic.”
Dreher teaches the missing element of Dutta.
Dreher teaches a cosmetic composition able to lighten and/or whiten skin reduce the effects of aging, and reduce or treat degradation of the skin due to the effects of oxidation (col 56: 38-54). Dreher teaches the composition can comprise beta-amino acids and N-methylated amino acids (col 6: 20-25). Dreher teaches the composition can comprise suitable skin lightening agents including ascorbic acid and derivatives thereof and resorcinol and derivatives thereof (col 40: 43-48). Dreher teaches the compositions contain from about 0.01% to about 15% of skin lightening agents (col 41: 1-7). With specific regard to vitamin C and derivatives, Dreher teaches the composition preferably comprises about 0.01% to about 5% of the vitamin C compound (col 36: 5-23), overlapping the claimed range.
For claim 8, the mass ratio of vitamin C to the mass ratio of organic acid overlap the claimed ratio, given the range of vitamin C taught by Dreher, and the range of piperidinepropionic acid, taught by Dutta, as calculated by the Examiner.
Since it is well settled that it is a matter of obviousness for one of ordinary skill in the art to combine two or more materials when each is taught by the prior art to be useful for the same purpose, it would have been obvious for one of ordinary skill in the art to add the claimed amount of vitamin C, as taught by Dreher, to the cosmetic composition of Dutta, since Dutta is directed to a skin care composition comprising a skin lightener and Dreher teaches the claimed amount of vitamin C as a skin lightening ingredient in a cosmetic composition. See MPEP 2144.06 and 2144.07. See also In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”).
Examiner’s Reply to Attorney Arguments dated 4/14/2026
1. Rejection of claims 1-6 under 35 U.S.C. § 103 over Dutta
The applicant argues Dutta does not teach or suggest "a blending amount of vitamin C or the derivative thereof [being] 0.008 to 0.2 mass % based on the total mass of the cosmetic" as recited in amended claim 1.
The Examiner acknowledges the arguments presented, but does not consider them persuasive. In view of the applicant’s amendment to claim 1, the prior art of Dreher has been cited in the rejection of claims. Dreher teaches a cosmetic composition able to lighten and/or whiten skin reduce the effects of aging, and reduce or treat degradation of the skin due to the effects of oxidation that comprises vitamin C or derivatives, preferably in an amount of about 0.01% to about 5% of the composition, overlapping the claimed range. As such, a prima facie case of obviousness exists. See MPEP 2144.05(I).
2. Rejection of claims 7 and 8 under 35 U.S.C. § 103 over Dutta and Sanadi
The applicant argues Sanadi is not sufficient for arriving at amended claim 1 reciting "a blending amount of vitamin C or the derivative thereof [being] 0.008 to 0.2 mass % based on the total mass of the cosmetic." The upper limit of 0.2 mass % in amended claim 1 is 5 times lower than Sanadi's lower limit of 1 %.
The Examiner acknowledges the arguments presented, but does not consider them persuasive. As discussed above, in view of the applicant’s amendment to claim 1, the prior art of Dreher has been cited in the rejection of claims to meet the newly added amendments pertaining to the range (or relative range) of vitamin C or a derivative in the composition.
3. Allegation of surprising and unexpected results provided in Table 1 of the Specification
The applicant argues on page 5 of the Remarks:
any prima facie case of obviousness is more than overcome by surprising and unexpected results provided in Table 1 of the Specification as filed. Specifically, Table 1 provides evidence of superiority of Examples 7-11, which are within the scope of amended claim 1, over Comparative Example 1, which is outside the scope of amended claim 1, in the combination of feeling of irritation evaluation and moisturizing feeling evaluation. Examples 7-11, which are within the scope of amended claim 1, are also superior over Comparative Example 2, which is outside the scope of amended claim 1, because Comparative Example 2 cannot provide a whitening effect due to the absence of phenylethylresorcinol in the cosmetic of Comparative Example 2,
The applicant further argues on page 6 of the Remarks:
In the present application, vitamin C contributes to the improvement of irritation rather than the improvement of skin-whitening effects. In fact, according to amended claim 1, vitamin C is formulated at a concentration lower than that disclosed by Sanadi, and it improves irritation in a manner not suggested by Sanadi. Therefore, the claimed cosmetics achieve an unexpected effect not suggested by Dutta or Sanadi.
It is first noted that Table 1, as it appears in the instant Specification, is largely illegible due to poor print quality. The Examiner’s response is based on Table 1 of EP 4,442,242, an equivalent of the instant application.
The Examiner acknowledges the arguments and evidence presented, but does not consider them persuasive. The claims are drawn to phenylethylresorcinol, an organic acid (in actuality an amino acid) of formula I wherein n = 2-5 methylene groups, and vitamin C or a derivative thereof. However, the examples shown in Table 1 are limited to piperidinepropionic acid as the acid and 2-O-ethyl ascorbic acid as the vitamin C derivative.
As set forth in MPEP 716.02(d), “the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range”; that is, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support."
This requirement, to show that the surprising and unexpected results occur over the entire range of organic acids of formula I, and especially, the entire range of vitamin C and derivatives, has not been met by the applicant. The results in Table 1 are limited to one of four variants of formula (I), and one of an infinite range of potential derivatives of vitamin C.
The vitamin C derivative exemplified in Table 1, 2-O-ethyl ascorbic acid, is known in the art as a cosmetic ingredient with exceptional skin conditioning effects (see the attached monograph “2-O-ethyl ascorbic acid” from the Scents and Fragrances database, available at https://scentsandflavors.com/database/9dbb586a-e95b-4f96-b6fb-aa839b4ac3c6; downloaded 7/2/2026). The monograph also teaches that 2-O-ethyl ascorbic acid has markedly different physical properties than ascorbic acid, including hydrophilicity and low lipophilicity. It is also noted that ascorbic acid may irritate the skin, in contrast to skin-conditioning properties of 2-O-ethyl ascorbic acid.
As such, applicant has not provided substantiation for the allegation that “vitamin C contributes to the improvement of irritation rather than the improvement of skin-whitening effects” since the results disclosed only apply to a single species of vitamin C or a derivative thereof, and do not meet the burden of occurring over the entire claimed range.
CONCLUSION
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
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