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 .
Claims 1-18 are pending and under consideration.
Claim Objections
Claims 6 and 16 are objected to because of the following informalities:
The first list in the Markush group in claim 6 recites a list of 6 species of alcohol. The Examiner suggests moving the “and” to the space between the last two species in the list as such is common English grammar.
The Markush group in claim 16 recites a list of multiple species of hydroxy acids. The Examiner suggests adding an “and” between the last two species in the list as such is common English grammar.
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 2-7, 12, 16 and 18 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 2-3 recite the limitation "the N-substituted aminosulfonic acid compound". There is insufficient antecedent basis for this limitation in the claim. Claims 2-3 depend from claim 1, which recites “at least one N-substituted aminosulfonic acid compound” which encompasses multiple N-substituted aminosulfonic acid compounds (emphasis added). Thus, it is unclear whether just one, more than one, or all of the N-substituted aminosulfonic acid compounds are being referenced and must be selected from the Markush grouping recited in claims 2-3. Amending claims 2-3 to recite “wherein the at least one N-substituted aminosulfonic acid compound is…”, would overcome this rejection.
Claims 4-5 and 16 recite the limitation “the hydroxy acid” and claims 6-7 recite “the penetration enhancer”. These claims depend from claim 1 which recites “…the at least one hydroxy acid…the at least one penetration enhancer”. Claims 12 and 18 recites “the chelating agent”, wherein the claim it depends from recites “…at least one chelating agent”. Therefore, for the same reasons as stated in the above paragraph, claims 4-7, 12, 16 and 18 are unclear and adding the phrase “at least one” after the article “the” would obviated the rejections.
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.
Claims 1-2, 4, 6, 8-9, 11 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by L’Oreal, (“White Perfect Original Fairness New-Skin Essence-Lotion”, CosDNA, http:www.cosdna.com/chs.cosmetic/6d5d219328.html, published: 1/21/16; in IDS dated 5/17/24) as evidenced by Google translate (obtained on 2/10/26) and Li (US 2019/0327963; published: 10/31/19).
L’Oreal is directed to a lotion composition (Title).
L’Oreal teaches a lotion comprising the following ingredients:
Ingredients
Instantly claimed ingredient (claim #’s)
Water
Alcohol (i.e., ethanol)
Penetration enhancer (1, 6)
Hydroxyethylpiperazine ethane sulfonic acid
N-substituted aminosulfonic acid (1-2
Propylene glycol
Glycolic acid
Hydroxy acid (1, 4, 16)
Glycerol
Sodium hydroxide
Citric acid
Chelating agent (11)
Bis-PEG-18 methyl ether dimethyl silane
Ascorbyl glucoside
Dexpanthenol
Xanthan gum
Hydrophilic thickener (8-9, 17)
PPG-26-Buteth-26
Parfum
PEG-40 hydrogenated castor oil
Butylphenyl methylpropional
Linalool
Biosaccharide Gum-1
Hydrophilic thickener (8-9)
Limonene
Benzyl alcohol
Penetration enhancer (1, 6)
Hexylcinnamaldehyde
It is noted that “alcohol” listed in the Table of L’Oreal is ethanol as evidenced by Google Translate, p. 1). Furthermore, it is noted that citric acid is a known chelating agent, as evidenced by Li [0078].
Claims 1-11, 13 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuan et al. (CN 112675065; published: 4/20/21; in IDS dated 5/17/24), as evidenced by Eberting (US 2016/0184245; published: 6/30/16).
The English language machine translation of CN 112675065 is attached herein. The passages cited below which indicate the teachings of the ‘065 publication are based on its English translation.
Yuan is directed to a body emulsion that can promote skin metabolism and achieve the effects of softening cutin and smoothing skin [Abstract].
Yuan teaches a body lotion comprising [p.2]:
Ingredient
Wt%
Instantly claimed ingredients (claim #’s)
glucono lactone
0.2% to 1.0%
lactobionic acid
0.1% to 1.5%*
Chelating agent (11, 13)
Glycolic acid
0.5% to 3%*
Hydroxy acid (1, 4-5, 16)
hydroxyethylpiperazine ethane sulfonic acid
0.1% to 1.0%*
N-substituted aminosulfonic acid compound (1-3)
hydrogenated lecithin
0.5% to 1.5%
bisabolol
0.1% to 0.5%.
Yuan teaches that the abovementioned body lotion also comprises [p.3]:
Ingredient
Wt%
Instantly claimed ingredients (claim #’s)
glycerin
2% to 6%
1,3-butanediol
3% to 8%
xanthan gum
0.2% to 0.5%*
Hydrophilic thickener (8-10, 17)
polyquaternium salt 10
0.2%～0.4%
Tween-20
1.5%～3%
cetostearyl alcohol
0.1%～0.5%
diisopropyl adipate
2%～5%*
Penetration enhancer (1, 6-7)
octyldodecanol
1% ~4%
tocopherol acetate
0.3% ~ 1.5%
*The prior art ranges are completely within the claimed range (anticipation of ranges - see MPEP 2131.03-I).
It is noted that Lactobionic acid is a chelating agent, as evidenced by Eberting [0101].
Therefore, by teaching all the limitations of claims 1-11, 13 and 16-17, Yuan anticipates the instant invention as claimed.
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 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.
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.
Claims 1-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (CN 112675065; published: 4/20/21; in IDS dated 5/17/24) as evidenced by Eberting (US 2016/0184245; published: 6/30/16), in view of Garrison et al. (US 5,569,651; published: 10/29/96).
The English language machine translation of CN 112675065 is attached herein. The passages cited below which indicate the teachings of the ‘065 publication are based on its English translation.
As noted in the anticipation rejection above Yuan anticipates claims 1-11, 13 and 16-17 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103 over Yuan for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Yuan is directed to a body emulsion that can promote skin metabolism and achieve the effects of softening cutin and smoothing skin [Abstract].
Yuan teaches a body lotion comprising [p.2]:
Ingredient
Wt%
Instantly claimed ingredients (claim #’s)
glucono lactone
0.2% to 1.0%
lactobionic acid
0.1% to 1.5%*
Chelating agent (11, 13)
Glycolic acid
0.5% to 3%*
Hydroxy acid (1, 4-5, 16)
hydroxyethylpiperazine ethane sulfonic acid
0.1% to 1.0%*
N-substituted aminosulfonic acid compound (1-3)
hydrogenated lecithin
0.5% to 1.5%
bisabolol
0.1% to 0.5%.
Yuan teaches that the abovementioned body lotion also comprises [p.3]:
Ingredient
Wt%
Instantly claimed ingredients (claim #’s)
glycerin
2% to 6%
1,3-butanediol
3% to 8%
xanthan gum
0.2% to 0.5%*
Hydrophilic thickener (8-10, 17)
polyquaternium salt 10
0.2%～0.4%
Tween-20
1.5%～3%
cetostearyl alcohol
0.1%～0.5%
diisopropyl adipate
2%～5%*
Penetration enhancer (1, 6-7)
octyldodecanol
1% ~4%
tocopherol acetate
0.3% ~ 1.5%
*The prior art ranges are completely within the claimed range (anticipation of ranges - see MPEP 2131.03-I).
It is noted that Lactobionic acid is a chelating agent, as evidenced by Eberting [0101].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Yuan does not teach wherein the chelating agent is selected from aminocarboxylic acids and salts thereof (e.g., ethylenediaminetetraacetic acid – EDTA), as required by instant claims 12 and 18. With regards to instant claim 14, Yuan teaches the abovementioned body lotion composition which contains all the claimed ingredients within the same concentration range, except that the chelating agent is a different species (lactobionic acid instead of, for example, EDTA).
However, EDTA is well known and routinely used in the prior art as a chelator in lotions [See Garrison: Example 1]. Garrison teaches a body lotion comprising Disodium EDTA as a chelator to sequester any discoloration causing metal ions [Example 1].
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Yuan and Garrison are both directed to body lotions. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the body lotion composition of Yuan by combining lactobionic acid and disodium EDTA to achieve the predictable result of obtaining a composition suitable for moisturization of the skin. The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (CN 112675065; published: 4/20/21; in IDS dated 5/17/24), as evidenced by Eberting (US 2016/0184245; published: 6/30/16) in view of Garrison et al. (US 5,569,651; published: 10/29/96) as applied to claims 1-14 and 16-18 above, and further in view of Rose Skin Co. (“4 Reasons Why You Need to Apply Body Lotion Every Day”, https://roseskinco.com/blogs/news/4-reasons-why-you-need-to-apply-body-lotion-every-day; published: 12/7/21).
The English language machine translation of CN 112675065 is attached herein. The passages cited below which indicate the teachings of the ‘065 publication are based on its English translation.
As noted in the anticipation rejection above Yuan anticipates claims 1-11, 13 and 16-17 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103 over Yuan for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Yuan, Eberting and Garrison make claims 1-14 and 16-18 obvious (see details in the rejection above).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Yuan is directed to a body emulsion that can promote skin metabolism and achieve the effects of softening cutin and smoothing skin [Abstract].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
It is noted that Yuan teach a body lotion for skin care and therefore, it is implicitly taught that the body lotion for skin care is applied to the skin, as all body lotions are topically applied. In accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.”
Although Yuan teaches a body lotion for skin care, it does not specifically teach applying to the skin for a period of time and then rinsing the skin, as required by instant claim 15. However, such deficiency is cured by Rose Skin Co.
Rose Skin Co. teach that applying lotion every day can help replenish dry skin by locking in the skin’s moisture and can also work to protect your skin (See Section 1). Rose Skin Co. also state that many leading dermatologists recommend that everybody should be applying a good quality moisturizer (e.g., body lotion) every day, especially right after you get out of the bath and shower (See 2nd ¶ of introduction).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Yuan and Rose Skin Co. are both directed to body lotions. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the method of caring for the skin of Yuan by applying the lotion to the skin daily after a bath or shower (i.e., the claimed rinsing step) to achieve the predictable result of obtaining a composition suitable for moisturization of the skin. One of ordinary skill in the art would have been motivated to do so because Rose Skin Co. teach that it is advantageous to apply lotion and shower daily in order to replenish dry skin by locking in the skin’s moisture and furthermore, in order to protect the skin (See Section 1).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617