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 statement (IDS) submitted on 02/23/2026 has been considered by the examiner.
Status of the Claims
The claim amendment filed 04/27/2026 is under consideration.
Claims 5-7 and 9 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 Rejections not reiterated herein have been withdrawn.
Withdrawn
The rejection of claims 1-4 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Pachuk, US 20210315792 has been withdrawn because the claims were canceled.
The rejection of claims 1-4 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Sakata, JP 2006188461 (cited on IDS dated 04/30/2024) has been withdrawn because the claims were canceled.
The rejection of claims 1-4 and 10 under 35 U.S.C. 103 as being unpatentable over Sakata, JP 2006188461 in view of Nomura, WO 2013065705 A1 (both cited on IDS dated 04/30/2024) has been withdrawn because the claims were canceled.
The rejection of claims 1-4 and 10 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Nomura, WO 2013065705 A1 (cited on IDS dated 04/30/2024) has been withdrawn because the claims were canceled.
The rejection of claims 1-4, 8 and 10 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joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention has been withdrawn because the claims were canceled.
The rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Pachuk, US 20210315792 in view of Sakata, JP 2006188461 has been withdrawn because claim 8 was canceled.
The rejection of claims 5-7 and 9 under 35 U.S.C. 103 as being unpatentable over Pachuk, US 20210315792 in view of Sakata, JP 2006188461 is maintained as modified below to address Applicant’s amendment.
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
Applicant has argued the combination of Sakata and Pachuk does not make the claimed invention obvious because the claimed invention provides an advantageous effect (does not cause browning and shows reduced stickiness).
This argument is unpersuasive.
Nomura teaches ASA-2-G salts with a basic amino acid, e.g., arginine, show improved stability as measured by residual ASA-2-G (Nomura, e.g., Table 2 and pg. 33). Thus, to the extent that reduced browning is indicative of improved ASA-2-G stability, this was an expected result.
The claimed composition is not limited to the composition used to show reduced sticky feeling. The composition of serum in 0037 is not disclosed. All that is disclosed is that ASA-2-G and Na ascorbic acid are present in a combined amount of 30wt% and present in a ratio of 1:4 to 4:1. But the result is not different from compositions which lack ASA-2-G (product 6). Sakura teaches the degree of stickiness exhibited by ASA-2-G will depend on the composition of the cosmetic, e.g., amount of oil component or water-soluble polymer present in the composition, and the contribution of ASA-2-G to stickiness will depend on the concentration of ASA-2-G and the nature and amounts of additional ingredients (Sakura, e.g., 0017). Therefore, the results presented in the specification cannot be extrapolated over all possible compositions encompassed by claims 5-7 and 9 even if the additional limitations of amount a combined amount of 30wt% and present in a ratio of 1:4 to 4:1 were added to the claim.
The disclosure is insufficient to allow a meaningful determination of limitations which are commensurate in scope for patentability.
Additionally, it is noted that Sakata teaches the combination of basic amino acid and ASA-2-G reduces stickiness. See Sakura, entire document, e.g., 0010, 0012, 0016, 0017 and 0033. Sakura also teaches the contribution of ASA-2-G to stickiness is concentration dependent and further depends on the nature and amounts of additional ingredients, e.g., large amounts of oil or water-soluble polymer will mask the stickiness of ASA-2-G (Sakura, e.g., 0017).
Notably, the best results proffered are obtained by decreasing the concentration of ASA-2-G – a known sticky substance when included in cosmetics - by substitution with ascorbic acid. That is the proportion of the ASA-2-G making up the 30wt% total goes from 100% of the 30% (product 1) to 0% of the 30% (product 6). Therefore, it is not clear whether the stickiness improvement comes from the combination with sodium ascorbate, or the improvement is the expected result of reducing the concentration of the sticky substance (ASA-2-G) in the composition. The skilled artisan would most likely reach the latter conclusion since when the proportion of ASA-2-G is 0% (product 6), the result is similar to those containing reduced amount of ASA-2-G (2-5). Expected beneficial results are evidence of obviousness. See MPEP 716.02, II.
Rejections Addressing Applicant’s Amendment
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 5-7 and 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 includes the limitations of a composition comprising a salt formed by an ionic bond of ascorbic acid 2-glucoside and a basic amino acid, and (b) ascorbic acid or salt thereof, wherein pH of the composition is 5.22 to 5.55.
Applicant has not pointed out, and the examiner cannot find, support for an invention having the claimed combination of limitations.
The specification teaches a composition comprising ASA2-G, basic amino acid and having a pH of 5.22 to 5.55 at ¶ 0013 and ¶ 0025, example 1. However, this composition lacks ascorbic acid or a salt thereof, and lacks an ionic bond between ASA2-G and the basic amino acid.
Elsewhere, the specification teaches a serum composition made from an ASA2-G·ARG salt and Na ascorbic acid at 0037 example. However, the composition of the serum is not disclosed. This example lacks disclosure for the recited pH, and it is not clear that there is an ionic bond.
The specification fails to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention as now claimed
Claims 5-7 and 9 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.
In addition to the written description above, claims 5-7 and 9 lack clarity.
Claim 5 includes the limitations of a composition comprising a salt formed by an ionic bond of ascorbic acid 2-glucoside and a basic amino acid, and (b) ascorbic acid or salt thereof, wherein pH of the composition is 5.22 to 5.55.
It is not clear how a composition may comprise a salt formed by an ionic bond of ascorbic acid 2-glucoside and a basic amino acid and simultaneously have a pH ranging from 5.22 to 5.55. In order for the salt to be in a composition having the recited pH, the salt formed by an ionic bond of ascorbic acid 2-glucoside and a basic amino acid must be dissolved and therefore lack an ionic bond. See, e.g., Nomura, e.g., pg. 32, note (2) and pg. 19.
Claims referring to a composition comprising the salt (claims 5-7 and 9) read as product by process limitations, i.e., a composition comprising a salt made from ascorbic acid 2-glucoside and a basic amino acid and ascorbic acid or salt thereof are indistinguishable from compositions made from a mixture of the ingredients separately.
Clarification is required.
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.
Claims 5-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pachuk, US 20210315792 in view of Sakata, JP 2006188461.
In this rejection, the limitation of a composition comprising a salt formed by an ionic bond of ascorbic acid 2-glucoside and a basic amino acid and having a pH ranging from 5.22 to 5.55 is interpreted as product by process language, i.e., a composition obtained by combining (a) a salt formed by an ionic bond of ascorbic acid 2-glucoside and a basic amino acid with (b) ascorbic acid/salt thereof in an aqueous phase having a pH of 5.22 to 5.55. That is, the claimed composition, having a pH of 5.22 to 5.55 is interpreted as requiring the recited components to be dissolved in an aqueous phase having the recited pH. The salts, being dissolved, do not have an ionic bond.
Pachuk teaches a serum comprising ascorbyl glucoside and ascorbic acid (Pachuk, e.g., claims 28-30 and 0053-0057). The claimed pH range is within the range suggested by Pachuk, e.g., 5-6 (Pachuk, e.g., 0057). 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.
Pachuk does not expressly teach the serum containing a basic amino acid.
However, Sakata teaches combining a basic amino acid with ascorbyl glucoside for improved ascorbyl glucoside stability, reduced stickiness, and improved skin softness (Sakata, e.g., 0004).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to modify Pachuk’s serum with a basic amino acid using techniques known from Sakata with a reasonable expectation of success. The skilled artisan would have been motivated to make this modification for improved ascorbyl glucoside stability, reduced stickiness, and improved skin softness in the same way suggested by Sakata with a reasonable expectation of success. The skilled artisan would have seen this modification as the use of known techniques to improve similar cosmetic compositions in the same way. The skilled artisan would have had a reasonable expectation of success because both references teach compositions comprising ascorbyl glucoside for cosmetic use.
Sakata teaches compositions comprising ascorbic acid glucoside and a basic amino acid, e.g., arginine, histidine or lysine (Sakata, entire document, e.g., claims 1-5, 0004-0005, and examples 1-7).
Accordingly, the subject matter of claims 5-7 and 9 would have been prima facie obvious before the effective filing date of the presently claimed invention, absent evidence to the contrary.
Claims 5-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pachuk, US 20210315792 in view of Nomura, WO 2013065705 A1 (both cited on IDS dated 04/30/2024).
In this rejection, the limitation of a composition comprising a salt formed by an ionic bond of ascorbic acid 2-glucoside and a basic amino acid and having a pH ranging from 5.22 to 5.55 is interpreted as product by process language, i.e., a composition obtained by combining (a) a salt formed by an ionic bond of ascorbic acid 2-glucoside and a basic amino acid with (b) ascorbic acid/salt thereof in an aqueous phase having a pH of 5.22 to 5.55. That is, the claimed composition, having a pH of 5.22 to 5.55 is interpreted as requiring the recited components to be dissolved in an aqueous phase having the recited pH. The salts, being dissolved, do not have an ionic bond.
Pachuk teaches a serum comprising ascorbyl glucoside and ascorbic acid (Pachuk, e.g., claims 28-30 and 0053-0057). The claimed pH range is within the range suggested by Pachuk, e.g., 5-6 (Pachuk, e.g., 0057). 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.
Pachuk does not expressly teach the serum containing a basic amino acid.
Nomura teaches a powder comprising ascorbyl glycoside and amino acid salt. The ingredients are combined in water and dried to obtain the powder. The method of production will result in a salt as recited in claim 5 after removal of the water.
Nomura teaches forming powders comprising ascorbic acid glycoside and a basic amino acid, e.g., arginine, lysine, or histidine which offer improved stability to the ascorbic acid glycoside (Nomura, e.g., pg. 3 or 7/37 and example 1 27/37-28/37). Nomura teaches the salt shows high stability even after storage for 3 months (Nomura, e.g., pg. 30 and pg. 33). Nomura teaches the powder shows improved stability at a pH ranging from 4 to 10 when used in an aqueous phase (Nomura, e.g., pg. 19 or 23/37). Similarly, Nomura teaches the relative amount of ASA2-G and pH adjuster is optimized for stability when a solution obtained by dissolving the ASA2-G and pH adjuster in an aqueous solvent in amounts effective to achieve a pH ranging from 5 to 8 (Nomura, e.g., pg. 8).
As enumerated above, Nomura teaches a powder made from combining ascorbic acid glucoside and a basic amino acid in an aqueous medium and then removing the water to obtain a powder (Nomura, e.g., pp. 4-5). This appears to result in an ascorbic acid 2-glucoside basic amino acid salt having an ionic bond as required by claim 5. Nomura recognizes basic amino acids including arginine, lysine, and histidine as pH adjusters (Nomura, e.g., pg. 7, pg. 20, examples 1, 3, 4, 5, 6, 7, 8).
Nomura also teaches using this powder in a cosmetic (Nomura, e.g., example 9).
It would have been obvious before the effective filing date of the presently claimed invention to modify compositions of Pachuk by including a basic amino acid salt of ASA2-G, e.g., ASA2-G arginine salt having an ionic bond according to the teachings of Nomura with a reasonable expectation of success. The skilled artisan would have been motivated to formulate Pachuk’s compositions using a powder comprising an ascorbyl glycoside and amino acid salt known form Nomura because Nomura teaches the combination of ascorbic acid glycoside and basic amino acid offers greater stability to ascorbic acid glycoside during storage. The skilled artisan would have reasoned that Nomura’s powder would offer greater stability to Pachuk’s compositions. Since the ASA2-G arginine salt of Nomura offers greater residual ASA2-G after storage, the skilled artisan had motivation to select Nomura’s salt over conventional ASA2-G to formulate Pachuk’s ASA2-G/sodium ascorbate compositions having a pH ranging from 5-6. The skilled artisan would have had a reasonable expectation of success since both references teach cosmetic compositions comprising ascorbic acid glycoside.
Accordingly, the subject matter of claims 5-7 and 9 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.
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.
Correspondence
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A WAX can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM CRAIGO/Examiner, Art Unit 1615
/SUSAN T TRAN/Primary Examiner, Art Unit 1615
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