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 .
Claim Status
Claims 1-20 are pending.
Priority
This application is filed 05/01/2024, and claims the benefit of domestic priority as below:
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Information Disclosure Statements
One IDS(s) received on 6/6/2024 has been considered unless marked with a strikethrough.
Abstract
The abstract of the disclosure is objected to because the abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. Currently, the abstract has more than one paragraph and appears to contain unnecessary sentences. The Examiner suggests that the content into a single paragraph, moving Formula (I) at the end, and removing “Figure for the abstract: None” to satisfy the abstract requirement.
Correction is required. See MPEP § 608.01(b).
Claim Interpretation
Claims are interpreted in accordance with the broadest reasonable interpretation (BRI) standard
consistent with the specification (See MPEP 2111).
With respect to claim 1, the claim uses the open-ended term “comprising”, and thus, is interpreted to allow additional, unrecited components. The additional components recited in the dependent claims are interpretated as separate limitations added to claim 1. Moreover, the preamble “in particular for making up and/or caring for keratin materials” is considered an intended use of the claimed cosmetic and/or dermatological composition and it is not given patentable weight because it does not further limit the claimed structure or composition. See MPEP 2111.02
Claim Objections
Claims 1, 2, and 9 are objected to because of the following informalities:
Claim 1 is objected to because “-NH” should be “-NH-”. In addition, the phrase “in particular” may make the scope of the claim less clear. It is suggested that “in particular” be deleted to improve the clarity of the claim.
Claim 2 is objected to because “comprising at least as merocyanine of formula (I), at least one compound…” should be “comprising as merocyanine of formula (I), at least one compound…”
Claim 9 is objected to because “sodium benzoate” is duplicated.
Appropriate correction is required.
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 13, and 15 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 13 recites the broad recitation "at least one alkylene carbonate", and the claim also recites "preferably propylene carbonate" which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 15, the phrase " comprising at least one fatty phase, preferably ranging from 5% to 95% by weight" renders the claim indefinite. The use of “preferably” renders the scope of the claim unclear because it is uncertain whether the recited “ranging from 5% to 95% by weight” constitutes a limitation of the claim or only expresses a preferred embodiment. See MPEP 2173.05(d)
Claim Rejections - 35 USC § 103
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 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) 1-7, 12 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roudot et al. (WO 2014/111574 A1, pub’d 07/24/2014), in view of Monello et al. (US 2009/0232756 A1, pub'd 09/17/2009). The references are qualified by 35 U.S.C. 102(a)(1). In addition, although, the applied reference has a common assignee with the instant application, based upon the earlier effectively filed date of the reference and different inventors, it constitutes prior art under 35 U.S.C. 102(a)(2). See generally MPEP § 717.02.
With respect to independent claim 1, the claim recites that a cosmetic and/or dermatological composition, in particular for making up and/or caring for keratin materials, comprising: (1) at least one merocyanine of formula (I) below and also the E/E- or E/Z- geometrical isomer forms thereof; and (2) at least ascorbic acid and/or a derivative thereof.
Roudot teaches (1) a cosmetic or dermatological composition comprising, in a physiologically
acceptable support: a) at least one oily phase, b) at least one merocyanine compound of formula (1) as shown below, c) at least one organic UVB-screening agent , and d) at least one organic UVA-screening agent (claim 1); (2) the merocyanine compound(s) of formula (1), and also the E/E- or E/Z geometrical isomer forms thereof (claim 3); (3) an efficient photoprotective product against both UVA and UVB rays (page 2 lines 5-14); (4) a non-therapeutic cosmetic process for caring for and/or making up a keratin material (abstract); and (5) protection from daily exposure to UVA rays, even of short duration, under normal conditions can result in damage to the collagen fibers and the elastin, which is reflected by a modification in the microrelief of the skin, the appearance of wrinkles and uneven pigmentation (page 1 line 43 – page 2 line 3).
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Roudot’s compound 1 Roudot’s compound 2
Roudot fails to teach a second component as ascorbic acid and/or a derivative thereof.
Monello teaches that (1) cosmetic composition comprising an ascorbic acid or salicylic acid compound (abstract); (2) ascorbic acid (i.e., vitamin C) and its derivatives promote the synthesis of connective tissue, particularly collagen, and strengthen the skin's defense against external factors such as UV radiation and pollutants; and (3) compensate for vitamin E levels in the skin, reduce pigmentation, and inhibit free radicals (paragraph [0003] and [0095]).
It would have been obvious to a PHOSITA at the time of the invention to combine an ascorbic acid into the merocyanine containing photoprotective composition taught by Roudot for topical cosmetic or dermatological compositions for protecting and/or caring for skin and addressing the effect of UV exposure and skin aging. A PHOSITA would have been motivated to include the known ascorbic acid skin care active of Monello in the photoprotective composition of Roudot in order to known benefits of an ascorbic acid, including stimulation of collagen synthesis, protection against UV related external attack, free radical reduction, and treatment or prevention of signs of skin aging (paragraph [0095]). A PHOSITA would have had a reasonable expectation of successfully incorporating the photoprotective benefits of the merocyanine compositions of Roudot and the additional collagen/elastin related skin care/protection benefits associated with an ascorbic acid.
With respect to claims 2 and 3, the claims recite that the composition comprises at least as merocyanine of formula (I), at least one compound chosen from the following compounds and also the E/E- or E/Z- geometrical isomer forms thereof, specifically, the merocyanine of formula (I) is the compound 2-ethoxyethyl (2Z)-cyano{3-[(3-methoxypropyl)amino]cyclohex-2-en-lylidene}ethanoate (C) in its E/Z geometrical configuration.
Roudot teaches the merocyanine compound(s) of formula (1), and also the E/E- or E/Z geometrical isomer forms thereof as shown above with respect to claim 1 (claim 3). Roudot further teaches the merocyanine of formula (I) is the compound 2-ethoxyethyl (2Z)-cyano{3-[(3-methoxypropyl)amino]cyclohex-2-en-lylidene}ethanoate (C) in its E/Z geometrical configuration (claim 5).
With respect to claims 4, the claim recites that the content of merocyanine(s) of formula (I) ranges from 0.1 % to 10% by weight relative to the total weight of the composition.
Roudot teaches the merocyanines of formula (1) according to the invention are preferably present in the compositions according to the invention in a concentration ranging from 0.1 % to 10% by weight and preferentially from 0.2% to 5% by weight relative to the total weight of the composition (page 8, limes 11-14). Thus, Roudot teaches the claimed ranges.
With respect to claims 5-7, the claims recite that the ascorbic acid and/or a derivative thereof are chosen from ascorbic acid, ascorbyl-2 glucoside and magnesium ascorbyl phosphate, and mixtures thereof in claim 5; the composition comprises ascorbic acid in claim 6; and the content of ascorbic acid
and/or a derivative thereof ranges from 0.01% to 30% by weight relative to the total weight of the composition in claim 7.
Monello teaches (1) the ascorbic acid compound present in the composition according to the invention is advantageously chosen from ascorbic acid and its salts, such as magnesium ascorbyl phosphate or sodium ascorbyl phosphate, and also glycosyl ascorbic acid, and their mixtures (paragraph [0027]); and (2) the ascorbic acid compound as described above can be present in the emulsion according to the invention in a content ranging for example from 0.05% to 10% by weight, with respect to the total weight of the composition, preferably ranging from 0.05% to 5% by weight and preferentially ranging from 0.1 % to 3% by weight. Thus, Monello teaches the claimed component and ranges.
With respect to claim 12, the claim recites that the composition comprises at least one alcohol.
Roudot teaches the water-soluble or water-miscible solvents that are suitable for use in the
invention comprises short-chain monoalcohols, for example C1-C4 monoalcohols, such as ethanol or isopropanol (page 29, lines 28-30).
With respect to claim 14, the claim recites that the composition comprises at least one polyol.
Roudot teaches that the water-soluble or water-miscible solvents suitable for use in the present invention include, for example, short-chain monoalcohols (e.g., C1-C4 monoalcohols) such as ethanol or isopropanol; diols or polyols such as ethylene glycol, 1,2-propylene glycol, 1,3-butylene glycol, hexylene glycol, diethylene glycol, dipropylene glycol, 2-ethoxyethanol, diethylene glycol monomethyl ether, triethylene glycol monomethyl ether, glycerol, and sorbitol; and mixtures thereof (page 29, lines 28-33).
With respect to claim 15, the claim recites that the composition comprises at least one fatty phase, preferably ranging from 5% to 95% by weight relative to the total weight of the composition.
Roudot teaches that (1) the term "oily phase" means a phase comprising at least one oil and all of the liposoluble and lipophilic ingredients and the fatty substances used for the formulation (page 24, lines 28-30); and (2) the overall oily phase, including all the lipophilic substances of the composition that are capable of being dissolved in this same phase, represents from 5% to 95% by weight and preferably from 10% to 80% by weight, relative to the total weight of the composition (page 29 lines 10-13). Thus, Roudot teaches the claimed ranges.
With respect to claim 16, the claim recites that the composition comprises at least one additional UV-screening agent different from the merocyanines of formula (I).
Roudot teaches that a) at least one organic liquid lipophilic UVB filter and/or at least one organic hydrophilic UVB filter and/or at least one UVB triazine filter, b) a particular merocyanine of formula (1) which will be defined in detail herein below and c) at least one organic UVA filter other than the said merocyanine (page 4 lines 30-34). Thus, Roudot teaches additional UV-screening agents different from the merocyanines.
With respect to claim 17, the claim recites that the composition characterizes in that it is a cosmetic composition for caring for keratin materials.
Roudot teaches that the compositions are for a large number of treatments, especially cosmetic treatments, of the skin, the lips and the hair, including the scalp, especially for protecting and/or caring for the skin, the lips and/or the hair, and/or for making up the skin and/or the lips (page 38, lines 31-43). Roudot further teaches that among the active agents for caring for keratin materials such as skin, the lips, the scalp, the hair, the eyelashes or the nails (page 35, lines 33-35). Thus, Roudot teaches the claimed cosmetic composition for caring for keratin materials.
With respect to claim 18, the claim recites that a cosmetic process for caring for keratin materials, comprising at least one step of applying a composition to said keratin materials.
Roudot teaches that a non-therapeutic cosmetic process for caring for and/or making up a keratin material, which consists in applying to the surface of the said keratin material (page 39, lines 1-4). Thus, claim 18 is obvious for substantially the same reasons states with respect to claim 1.
With respect to claim 19, the claim recites that the merocyamne of formula (I) is the compound 2-ethoxyethyl (2Z)-cyano{3-[(3-methoxypropyl)amino]cyclohex-2-en-l-ylidene}ethanoate (C) in its E/Z geometrical configuration.
Roudot teaches that the compound 2-ethoxyethyl (2Z)-cyano{3-[(3-methoxypropyl)amino] cyclohex-2-en-l-ylidene}ethanoate (C) in its E/Z geometrical configuration (claim 5).
With respect to claim 20, the claim recites that the cosmetic and/or dermatological composition according to claim 2, in which the content of merocyanine(s) of formula (I) ranges from 0.1% to 10% by weight relative to the total weight of the composition.
Roudot teaches the merocyanines of formula (1) according to the invention are preferably present in the compositions according to the invention in a concentration ranging from 0.1 % to 10% by weight and preferentially from 0.2% to 5% by weight relative to the total weight of the composition (page 8, limes 11-14). Thus, Roudot teaches the additional concentration of claim 20.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roudot et al. (WO 2014/111574 A1, pub’d 07/24/2014) and Monello et al. (US 2009/0232756 A1, pub'd 09/17/2009) as applied to claim 1 above, and further in view of Lauten (WO 2014/059228 A1, pub'd 04/17/2014).
With respect to claims 8-11, the claims 8-10 recite that a composition comprises at least one hydrotrope chosen from nicotinamide, caffeine, and mixtures thereof in claim 8, and a composition comprises at least one hydrotrope chosen from caffein, nicotinamide, sodium PCA, sodium salicylate and related hydrotropic compounds in claims 9 and 10. The claim 11 recites that the content of hydrotrope(s) ranges from 0 .1 % to 20% by weight relative to the total weight of the composition.
The combination of Roudot and Monello fails to teach aqueous cosmetic skin care compositions comprising ascorbic acid together with the hydrotropes caffeine and niacinamide, and hydrotropes’ concentration.
Lauten teaches (1) aqueous cosmetic skin care compositions comprising ascorbic acid together with the hydrotropes caffeine and niacinamide (paragraph [00025] and [00036]), as required by claims 8-10; (2) The amount of hydrotrope present in the aqueous compositions can range from about 0.1 % to about 20%, about 0.1 % to about 10%, or about 1 % to about 50%, based on the total weight of the composition, as required by claim 11 (paragraph [00043]); (3) aqueous compositions comprising at least one phenolic compound and at least one hydrotrope for cosmetic and other uses (paragraph [00040]); and (4) the amount of phenolic compound present in the aqueous compositions can range from about 0.01 % to about 20%, about 0.1 % to about 20%, or about 0.1 % to about 10%, based on the total weight of the composition (paragraph [00050]).
It would have been obvious to a PHOSITA at the time of the invention to further modify the composition of Roudot and Monello by incorporating caffeine and/or niacinamide as taught by Lauten in order to increase the transdermal penetration and bioavailability of the ascorbic acid activity as the functional advantages taught by Lauten (paragraph [00070]-[00071]). A PHOSITA would have been motivated to employ the hydrotropes of Lauten in a vitamin C containing cosmetic composition in order to obtain the known formulation and delivery benefits taught by Lauten, with a reasonable expectation of success.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roudot et al. (WO 2014/111574 A1, pub’d 07/24/2014) and Monello et al. (US 2009/0232756 A1, pub'd 09/17/2009) as applied to claim 1 above, and further in view of Safouane (WO 2020/002537 A1, pub'd 04/17/2014).
With respect to claim 13, the claim recites that a composition comprises at least one alkylene
carbonate and preferably propylene carbonate.
The combination of Roudot and Monello fails to teach a composition comprises at least one alkylene carbonate and preferably propylene carbonate.
Safouane teaches (1) a cosmetic or dermatological composition comprising at least one merocyanine of formula (1) or (2), and at least one oily phase comprising at least one alkyl or alkylene carbonate (abstract); (2) the carbonates according to the invention are preferably alkylene carbonates and more particularly propylene carbonate (page 17, lines 16-17); (3) using alkyl or alkylene carbonates substantially improve the solubility of merocyanines in an oily phase over time and at a low temperature (page3, lines 18-21); and (4) a composition relates a non-therapeutic cosmetic process for caring for and/or making up a keratin material and a non-therapeutic cosmetic process for preventing and/or treating the signs of aging of a keratin material, comprising the application, to the surface of the keratin material, of at least one composition as defined previously (abstract).
It would have been obvious to a PHOSITA at the time of the invention to modify the merocyanine containing cosmetic or dermatological compositions of Roudot and Monello to include an alkyl or alkylene carbonate, including propylene carbonate, as taught by Safouane. Safouane teaches such carbonates as formulation components specifically suitable for merocyanine containing cosmetic and dermatological compositions, and the use of alkyl or alkylene carbonates significantly improves the solubility of merocyanine in the oily phase over time and at low temperatures. Formulation functions are known in the same application field. The proponent is known for its formulation function in the same field of use. A PHOSITA would have been motivated to combine the alkylene carbonate taught by Safouane in the merocyanine containing cosmetic or dermatological compositions of Roudot and Monello, in order to obtain the known benefits associated with the carbonate containing oily phase taught by Safouane, with a reasonable expectation of success.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11, 13, and 15-20 are rejected on the ground of nonstatutory double patenting as
being unpatentable over claims 1-5, 21, 23, 27 and 29 of U.S. Patent No. 10,918,583 B2 in view of Monello et al. (US 2009/0232756 A1, pub'd 09/17/2009), Lauten (WO 2014/059228 A1, pub'd 04/17/2014), and Safouane (WO 2020/002537 A1, pub'd 04/17/2014).
The claims of the ‘583 patent claims recite that the instant claimed 1) merocyanine containing cosmetic or dermatological compositions including the merocyanine compounds and geometrical isomers (claim 1-5); 2) a non-therapeutic cosmetic process for caring for and/or making up a keratin material (claim 21); 3) merocyanine concentration ranges (claim 4); 4) oily phases (claims 27 and 29); 5) additional UV-screening agents (claim 4); and 6) methods involving application of such compositions to keratin materials (claim 23).
The instant claims differ from the '583 patent in that the instant patent requires 1) additional component as ascorbic acid and/or derivatives thereof and concentration ranges; 2) additionally recited hydrotropes and concentration ranges; and 3) additionally recited alkylene carbonate, including propylene carbonate.
The teachings of Monello, Lauten and Safouane are as discussed supra in the 35 U.S.C. 103 rejection and are herein incorporated by reference in their entirety. Monello teaches additional component as ascorbic acid and/or derivatives thereof and concentration ranges, Lauten teaches additionally recited hydrotropes and concentration ranges, and Safouane teaches the additionally recited alkylene carbonate, including propylene carbonate.
It would have been prima facie obvious to one of ordinary skill in the art to modify the compositions and methods of indicated claims of ‘583 patent to include the additional limitations taught by Monello, Lauten, and Safouane, as applicable, for the same reasons discussed supra in the 35 U.S.C. 103 rejection, which reasons are herein incorporated by reference in their entirety. Accordingly, claims 1-11, 13, and 15-20 are not patentably distinct from the indicated claims of ‘583 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable
over claims 1, 2, 12-18, and 26-32 of U.S. Patent No. 11,679,069 B2 in view of Roudot et al. (WO 2014/111574 A1, pub’d 07/24/2014), Monello et al. (US 2009/0232756 A1, pub'd 09/17/2009), and Lauten (WO 2014/059228 A1, pub'd 04/17/2014).
The claims of the ‘069 patent claims recite that the instant claimed 1) merocyanine containing cosmetic or dermatological compositions and processes, including the instantly recited merocyanine compounds and geometrical isomer forms (claims 1, 2, and 13-15); 2) merocyanine concentration ranges (claim 16); 3) oily phases comprising alkyl or alkylene carbonates, including propylene carbonate, and concentration (claims 17-18, and 27-29); 4) additional UV-screening agents (claim 26); and 5) non-therapeutic cosmetic processes involving application of such compositions to keratin materials (claim 30-32).
The instant claims differ from the '069 patent in that the instant patent requires 1) additional component as ascorbic acid and/or derivatives thereof and concentration ranges; 2) additionally recited hydrotropes and concentration ranges; 3) the additionally recited alcohol; 4) the additionally recited polyol; and 5) the additionally recited fatty phase and its concentration.
The teachings of Roudot, Monello, and Lauten are as discussed supra in the 35 U.S.C. 103 rejection and are herein incorporated by reference in their entirety. Roudot teaches additional components such as alcohol, polyol, and fatty phase and its concentration, Monello teaches additional components as ascorbic acid and/or derivatives thereof and concentration ranges, and Lauten teaches additionally recited hydrotropes and concentration ranges.
It would have been prima facie obvious to one of ordinary skill in the art to modify the compositions and processes of indicated claims of ‘069 patent to include the additional limitations taught by Roudot, Monello, and Lauten, as applicable, for the same reasons discussed supra in the 35 U.S.C. 103 rejection, which reasons are herein incorporated by reference in their entirety. Accordingly, claims 1-20 are not patentably distinct from the indicated claims of ‘069 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable
over claims 1, 9-13, 17, 20, and 22-24 of U.S. Patent No. 11,458,083 B2 in view of Monello et al. (US 2009/0232756 A1, pub'd 09/17/2009), Lauten (WO 2014/059228 A1, pub'd 04/17/2014), and Safouane (WO 2020/002537 A1, pub'd 04/17/2014).
The claims of the ‘083 patent claims recite that the instant claimed 1) merocyanine containing cosmetic or dermatological compositions including the merocyanine compounds and geometrical isomers (claim 1); 2) specific merocyanine compounds (claims 12, 22, and 23); 3) merocyanine concentration ranges (claims 1 and 22); 4) oily phases (claims 13 and 24); 5) additional UV-screening agents (claims 9-12); and 6) methods involving application of such compositions to keratin materials (claims 17 and 20).
The instant claims differ from the '083 patent in that the instant patent requires 1) additional component as ascorbic acid and/or derivatives thereof and concentration ranges; 2) additionally recited hydrotropes and concentration ranges; 3) the additionally recited alcohol; 4) the additionally recited polyol; and 5) the additionally recited alkylene carbonate, including propylene carbonate.
The teachings of Roudot, Monello, Lauten and Safouane are as discussed supra in the 35 U.S.C. 103 rejection and are herein incorporated by reference in their entirety. Roudot teaches additional components as alcohol, polyol, and fatty phase and its concentration, Monello teaches additional components as ascorbic acid and/or derivatives thereof and concentration ranges, Lauten teaches additionally recited hydrotropes and concentration ranges, and Safouane teaches the additionally recited alkylene carbonate, including propylene carbonate.
It would have been prima facie obvious to one of ordinary skill in the art to modify the compositions and methods of indicated claims of ‘083 patent to include the additional limitations taught by Roudot, Monello, Lauten, and Safouane, as applicable, for the same reasons discussed supra in the 35 U.S.C. 103 rejection, which reasons are herein incorporated by reference in their entirety. Accordingly, claims 1-20 are not patentably distinct from the indicated claims of ‘083 patent.
Art of Record but not Applied
US 10,667,996 B2 recites, similar to the present application, a cosmetic or dermatological composition comprising a merocyanine and an oily phase. However, ‘996 patent requires that additional oily phase comprise at least one isosorbide ether. Accordingly, 996 patent does not provide a sufficient basis for an obviousness type double patenting rejection.
US 10,88,507 B2 recites, similar to the present application, a cosmetic or dermatological composition comprising a merocyanine and an oily phase. However, 507 patent requires that additional oily phase comprise an N-substituent amide. In addition, dependent claims further define concentrations of amide and merocyanine. Accordingly, 507 patent does not provide a sufficient basis for an obviousness type double patenting rejection.
US 10,792,234 B2 which recites, similar to the present application, a cosmetic or dermatological composition comprising a merocyanine and an oily phase and further claims cosmetic processes involving application of such compositions to keratin materials. However, 234 patent requires that additional oily phase comprise polyalkylene glycol. Accordingly, 234 patent does not provide a sufficient basis for an obviousness type double patenting rejection.
Conclusion
Claims 1-20 are rejected.
Claims 1, 2, and 9 are objected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEONG JONG KIM whose telephone number is (571)272-6918. The examiner can normally be reached 7:00am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A. Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEONG JONG KIM/ Examiner, Art Unit 1621
/CLINTON A BROOKS/ Supervisory Patent Examiner, Art Unit 1621
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