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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12 and 15-21 in the reply filed on 05/08/26 is acknowledged. The traversal is on the ground(s) that there is a technical relationship between the two groups. This is not found persuasive because as discussed in the restriction requirement the technical relationship is not a special technical relationship because the composition of claim 1 is known, see for instance Table 1, Example 1B which renders obvious the claimed composition for the reasons of record as explained in the restriction/election requirement. However, based on the examiner’s search the examiner is withdrawing the restriction requirement and pending claims 1-13 and 15-21 are being examined in this office action.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 depends from claim 4 which further defines/limits the scope of the C8-C24 sorbitan fatty acid ester and claim 4 depends from claim 1 which already requires the ratio of the C8-24 sorbitan fatty acid ester to the retinoid is present in a weight ratio of 0.4:1 to 1.4:1. Thus, the ratios of claim 6 do not further limit the ratios already required by claim 4 in view of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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) 1-13, 15-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brillouet et al. (EP1743624, from IDS) as evidenced by Shefer et al (US20030232091), and BASF (https://chemecosmetics.com/wp-content/uploads/2023/10/Retinol-50-C_specification_1910.pdf, same product disclosed in Brillouet so it has at least been available/known since 2007).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-4, 6-8, 11-12, 15-18, 21, Brillouet teaches oil-in-water emulsions (See entire document; e.g. Table 1, Example 1B/B; [0026-0028]; [0009-0011]; [0001]; [0004]; [0014-0020]; [0034-0035]; claims) which comprise a retinoid specifically the instantly claimed retinol, all trans retinol, retinyl palmitate, retinyl acetate, etc. in amounts of 0.001 to about 10 wt% of the emulsion composition, thickeners in amounts of 0.001 to about 10% by weight (which would include the claimed modified starch) (see entire document; Table 1; Example 1b or B; [0014-0019]), polysorbate 20 which is a polyethoxylated sorbitan fatty acid ester wherein the fatty acid ester is from a C12 fatty acid (lauric acid) (see entire document; Table 1; Example 1b or B), and modified starch in amounts of 1-10 wt%, specifically the claimed hydroxypropyl starch phosphate (see entire document; Table 1; Example 1b/B), and Brillouet specifically exemplifies example 1b/Example B which comprises Retinol 50 C which as evidenced by Shefer is a 1:1 mixture of Polysorbate 20:retinol (specifically all trans retinol as per the BASF product specification (minimum 95% all trans retinol)) in amounts of 0.1-0.3 wt% which read on the claimed percentages of retinoid and C8-24 sorbitan fatty acid ester claimed (wherein the at the 1:1 ratio at 0.3 wt% would be ~0.15 wt% retinol and 0.15 wt% polysorbate 20) (and wherein the ester is the claimed polysorbate 20, etc. as claimed) and the ratios claimed, hydroxypropyl starch phosphate in amounts of 1-10 wt% which read on the claimed 0.2 to 5 wt%, and water in amounts of 7.9-81.85 wt% which reads on and encompasses the claimed range (with simple addition from table 1, Example B/Example 1B).
Regarding claim 5, Brillouet teaches example 1B/Example B in Table 1 wherein the C8-C24 sorbitan fatty acid ester which is part of the Retinol 50C, can be present in amounts of about 0.15 wt% because as evidenced by Shefer (see [0166]/Example 1) the retinol and polysorbate 20 are in approximately 1:1 ratios in Retinol 50C (when the Retinol 50C is used in amounts of 0.3 wt%).
Regarding claim 13, Brillouet teaches applying their compositions, which comprise the same ingredients instantly claimed in amounts which can read on those instantly claimed when optimized within the ranges taught in Table 1, Example 1B/Example B, to skin to reduce wrinkles (which reads on the claimed anti-aging), in effective amounts to treat age spots/hyperpigmentation which reads on the claimed skin brightening (see entire document; e.g. Table 1, Example 1B or Example B; [0026-0028]; [0009-0011]; [0001]; [0004]; [0014-0020]; [0034-0035]; claims).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-13, and 15-21, Brillouet does not teach a specific example encompassing the claimed invention.
Specifically regarding claims 1, 5, 9-10, and 19-20, Brillouet does not teach a specific example wherein the modified starch to the retinoid is specifically in the claimed ratios or wherein the modified starch to the C8-24 sorbitan fatty acid ester are specifically present in the claimed ratios. However, within the exemplified ranges of Example 1B Brillouet teaches that the retinol/retinoid and the starch, and the retinol and the C8-24 sorbitan fatty acid ester to the modified starch can be optimized to be used within the claimed ratios with optimization, e.g. if for instance 0.3 wt% of Retinol 50C which comprises about 0.15 wt% retinol and about 0.15 wt% polysorbate 20 is used with 1% starch then the ratio of starch to retinol is about 7:1 and the ratio of starch to the C8-C24 sorbitan fatty acid ester is also about 7:1, and further Brillouet broadly teaches wherein the retinoids can be present in their emulsions in amounts of 0.001 to about 10 wt% of the emulsion (which would mean up to 20% of retinol 50C could potentially be used in the compositions to provide compositions having ~10 wt% retinol (which would also have ~10 wt% polysorbate 20)) which when used with the range of amounts of starch disclosed in example 1B of 1-10 wt% would allow one of ordinary skill in the art to amounts of the claimed hydroxypropyl starch phosphate with retinoid to read on the claimed ranges as it is known in the art to optimize the amounts of components in compositions for treating skin in order to form the most effective anti-aging/anti-wrinkle and skin brightening/spot reducing formulation as this is something one of ordinary skill in the art routinely does especially since the prior art compositions comprising the same ingredients and in the same o/w emulsion formulation type are being used for the purposes/methods on the same areas of skin. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art to have replaced the retinol in the retinol 50C for the claimed retinyl palmitate or added additional retinyl palmitate to be used in combination with the claimed polysorbate 20 or retinol and polysorbate in the same 1:1 ratio taught by Brillouet because Brillouet teaches that retinoids can be retinol/all trans retinol and/or the claimed retinyl palmitate and as such it would be obvious to substitute one form of retinol or add an additional form of retinol, e.g. retinyl palmitate into a cosmetic composition since they are taught to be alternatives to one another for the same purpose of brightening skin, reducing wrinkles/anti-aging, etc.
It also would have been obvious to one of ordinary skill in the art to have optimized the ratios of C8-24 sorbitan fatty acid ester to the retinoid and the ratios of the modified starches to the retinoid and the ratios of the modified starches to the C8-24 sorbitan fatty acid ester to fall within the claimed ratio ranges because Brillouet teaches overlapping ranges/amounts/concentrations of the same C8-24 sorbitan fatty acid ester, the same retinoid(s), and the same modified starches that are instantly claimed in amounts which are close to and/or read on the claimed amounts as discussed above and it would be obvious for one of ordinary skill in the art to optimize the amounts of the claimed hydroxypropyl starch phosphate with retinoid and the claimed C8-24 sorbitan fatty acid esters to read on the claimed ranges as it is known in the art to optimize the amounts of components in compositions for treating skin in order to form the most effective anti-aging/anti-wrinkle and skin brightening/spot reducing formulation as this is something one of ordinary skill in the art routinely does especially since the prior art compositions comprising the same ingredients and in the same o/w emulsion formulation type are being used for the purposes/methods on the same areas of skin. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It also would have been obvious to optimize the amounts of each of the claimed components to read on the instantly claimed amounts because Brillouet teaches overlapping ranges or ranges which touch the claimed ranges of each of the claimed components and the compositions of Brillouet are being used for the same purpose of forming effective o/w emulsions for treating skin and providing anti-aging/anti-wrinkle and skin brightening/spot reducing effects to the skin. It would be obvious to optimize each of the claimed components which is taught by Brillouet to be useful in forming their compositions as they are exemplified in Table 1 example 1b/Example B and broader ranges are taught throughout the reference for the various components, e.g. retinol, thickeners (which include the claimed and exemplified modified starch), etc. and they specifically exemplify an example which has the polysorbate and the retinol being used in the claimed ratio and with optimization within the disclosed ranges would also encompass the ratios for the starch to the claimed C8-24 sorbitan ester. Thus, one of ordinary skill in the art would be motivated to optimize the amounts of each of the claimed components which are taught in Brillouet’s example 1B/Example B in table 1 to fall within the claimed amounts/concentrations and ratios in effort to form the most effective o/w retinol formulation for treating skin and providing the claimed effects which are the same effects disclosed in Brillouet and because, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
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 at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616
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