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 04/30/2024 has been considered by the examiner.
Status of the Claims
The claim amendment filed 04/30/2024 is under consideration.
Claims 1-10 are pending.
Claims 1, 5, and 10 are independent
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 Rejections not reiterated herein have been withdrawn.
Claim Rejections - 35 USC § 112
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 1-10 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.
Claims 1, 5, and 10 include the limitation of an ascorbic acid 2-glucoside basic amino acid salt. It is not clear if this refers to a salt made from ascorbic acid 2-glucoside and a basic amino acid, or a simple mixture of ascorbic acid 2-glucoside with a basic amino acid salt. That is, it is not clear if the term salt modifies only the basic amino acid, or if salt was intended to refer to a single ionic compound of ascorbic acid 2-glucoside and a basic amino acid.
Claims referring to a composition comprising the salt (claims 1-9) read as product by process limitations, i.e., a composition comprising a salt made from ascorbic acid 2-glucoside and a basic amino acid are indistinguishable from compositions made from a mixture of the two ingredients separately.
Clarification is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Pachuk, US 20210315792.
Pachuk teaches compositions comprising ascorbic acid glucoside and a basic amino acid, i.e., arginine (Pachuk, e.g., entire document, e.g., Example 1, 0075-0076). The composition may be formulated with a pH of from 5-6 (Pachuk, e.g., 0057).
The claimed compositions are indistinguishable from the prior art compositions since there is no difference between adding ascorbic acid glucoside and a basic amino acid separately or in combination. The salt will form in the prior art composition since they are mixed together with pH adjustment.
Pachuk anticipates the subject matter of instant claims 1-4.
Claims 1-4 are rejected 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).
Citations refer to the attached English translation.
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).
The claimed compositions are indistinguishable from the prior art compositions since there is no difference between adding ascorbic acid glucoside and a basic amino acid separately or in combination. The salt will form in the prior art composition since they are mixed together with pH adjustment.
Sakata anticipates the subject matter of instant claims 1-4.
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).
Citations refer to the attached English translation.
Applicable to claim 10:
Nomura teaches a powder cosmetic (Nomura, e.g., claim 1) comprising a combination of ascorbic acid glucoside and a pH adjuster (Nomura, e.g., claim 1), and wherein the pH adjuster is arginine (Nomura, e.g., claim 4). Alternative pH adjusters include lysine or histidine (Nomura, e.g., pg. 7, pg. 20-21, and example 1). 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 claims 1 and 10 after removal of the water because Nomura teaches combining acidic ascorbic acid with a basic amino acid. An acid and a base will form a salt upon removal of the water.
Applicable to claims 1-4: Nomura teaches the combination in a cosmetic composition having a pH in the claimed range (Nomura, e.g., example 9, pp. 30-33).
Nomura anticipates the subject matter of instant claims 1-4 and 10.
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 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Pachuk, US 20210315792 in view of Sakata, JP 2006188461.
Pachuk teaches a serum comprising ascorbyl glucoside and ascorbic acid (Pachuk, e.g., claims 28-30 and 0053-0057). The composition has a pH in the claimed range, e.g., 5-6 (Pachuk, e.g., 0057).
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 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.
Accordingly, the subject matter of claims 5-9 would have been prima facie obvious before the effective filing date of the presently claimed invention, absent evidence to the contrary.
Claims 1-4 and 10 are rejected 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).
The teachings of Sakata enumerated above apply here.
Sakata does not expressly teach the composition comprising ascorbic acid glucoside and basic amino acid, e.g., lysine, arginine, or histidine, in the form of a powder.
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 claims 1 and 10 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). Nomura teaches powders allow easy identification of the area where they have been applied and can be applied uniformly (Nomura, e.g., pg. 3 or 7/37).
Claim 1 refers to a composition made with the recited salt.
Claim 10 refers to a powder of ascorbic acid 2-glucoside basic amino acid salt.
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. This appears to result in an ascorbic acid 2-glucoside basic amino acid salt in the form of a powder as required by claim 10.
It would have been obvious before the effective filing date of the presently claimed invention to prepare compositions of Sakata in a powder form or using the powder of Nomura with a reasonable expectation of success. The skilled artisan would have been motivated to formulate Sakata’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 Sakata’s compositions. Alternatively, the skilled artisan would have been motivated to prepare compositions of Sakura which contain ascorbyl glucoside and a basic amino acid in powder form since Nomura teaches powders allow easy identification of the area where they have been applied and can be applied uniformly. The skilled artisan would have had a reasonable expectation of success since both references teach compositions comprising ascorbic acid glycoside and a basic amino acid.
Accordingly, the subject matter of claims 1-4 and 10 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.
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.
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/WILLIAM CRAIGO/Examiner, Art Unit 1615