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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I drawn to a cosmetic composition in the reply filed on 11 May 2026 is acknowledged.
Claims 1-9 and 16-19 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 May 2026.
Applicant’s election without traverse of polyglycerin-3 as the species of first cosmetic ingredient, polyglycerin-6 as the species of second cosmetic ingredient, betaine as the species of pro-penetrating agent, and a species of composition further comprising polyglycerin-10 in the reply filed on 11 May 2026 is acknowledged.
Upon further search and consideration, art was found that reads on ethanol as the species of pro-penetrating agent and as such, ethanol alone is rejoined and examined together. The species election requirement is maintained to the extent that the remaining species do not make a contribution over the prior art.
Claims 12-15 and 20 are examined on the merits herein.
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.
Claim 12 is 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 12 recites the broad recitation “the average molecular weight of the polyglycerols in the second cosmetic ingredient is at least 100 g/mol higher”, and the claim also recites “or even at least 200 g/mol higher” 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. For examination purposes, the narrower range is interpreted as being merely exemplary of the remainder of the claim.
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 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel (“Skilful Serum” cited on Applicant’s IDS filed 4 October 2024).
Claim 12 is drawn to a cosmetic composition for care and/or makeup of the skin and/or the lips comprising in a physiologically acceptable medium, and aqueous phase and:
a first cosmetic ingredient which comprises one or more polyglycerols which have from 3 to 10 glycerol units and have an average molecular weight ranging from 200 to 600 g/mol;
a second cosmetic ingredient which is different from the first and comprises one or more polyglycerols which have from 3 to 10 glycerol units and have an average molecular weight ranging from 300 to 1000 g/mol; and
a pro-penetrating ingredient chosen from the group consisting of:
hydrophilic molecules chosen from urea and its derivatives, glycine, and trimethylglycine;
fat solubilizing agents chosen from dimethyl isosorbide and ethanol;
glycerol-based surfactants; and
mixtures thereof,
with the proviso that the molecular weight of the polyglycerols in the second cosmetic ingredient is at least 100 g/mol higher than the average weight of the polyglycerols of the first cosmetic ingredient.
Claim 14 is drawn to the composition of claim 12, wherein the first cosmetic ingredient is polyglycerin-3 and the second cosmetic ingredient is polyglycerin-10.
Mintel teaches a cosmetic composition (Pg. 3) comprising polymethylsilsesquioxane (i.e., a physiologically acceptable medium), water (i.e., an aqueous phase) and:
polyglycerin-3;
polyglycerin-10; and
alcohol (i.e., ethanol).
The recitation of “for care and/or makeup of the skin and/or the lips” is a recitation of intended use and does not impose further structural limitation on the composition (See MPEP 2111.02). Nevertheless, Mintel further teaches the composition as a skincare composition (Pg. 1).
As such, claims 12 and 14 are anticipated.
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.
Claims 12-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mintel in view of Choi et al. (2019/0117526 cited on Applicant’s IDS filed 4 October 2024) and Kim et al. (US 2020/0146947).
The instant claims are drawn to a composition for care and/or makeup of the skin and/or the lips comprising in a physiologically acceptable medium, and aqueous phase and:
a first cosmetic ingredient comprising polyglycerin-3;
a second cosmetic ingredient comprising polyglycerin-6;
a pro-penetrating ingredient comprising betaine; and
a third cosmetic ingredient comprising polyglycerin-10.
As thus summarized, the invention reads on Applicant’s elected species and instant claims 12-15 and 20.
Mintel teaches a cosmetic composition (Pg. 3) comprising polymethylsilsesquioxane (i.e., a physiologically acceptable medium), water (i.e., an aqueous phase) and:
polyglycerin-3;
-;
-; and
polyglycerin-10.
The recitation of “for care and/or makeup of the skin and/or the lips” is a recitation of intended use and does not impose further structural limitation on the composition (See MPEP 2111.02). Nevertheless, Mintel further teaches the composition as a skincare composition (Pg. 1).
The composition of Mintel differs from the instantly claimed composition in the following ways:
the composition of Mintel does not comprise polyglycerin-6; and
the composition of Mintel does not comprise betaine.
Yet, as to 1: Mintel further teaches the composition being useful for leaving the skin elastic, plumped, firmed, refreshed, and hydrated (Pg. 1), i.e., useful for treating wrinkled skin.
Choi et al. also teach compositions useful for treating wrinkled skin (Abstract). Choi et al. further teach compositions comprising water-soluble components for improving skin moisture retention including polyglycerin-3, polyglycerin-10, and polyglycerin-6 (Pars. [0062-63]).
And as discussed in MPEP 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose… [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In the instant case, as all of polyglycerin-3, polyglycerin-10, and polyglycerin-6 are taught by the prior art to be useful for improving skin moisture retention in compositions for the skin, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Mintel to include polyglycerin-6. It would have been obvious to combine polyglycerin-6 with polyglycerin-3 and polyglycerin-10 to yield a composition for the skin further capable of improving moisture retention, with a reasonable expectation of success.
And, as to 2: Mintel further teach the composition being useful for whitening, moisturizing, and plumping the skin (Pg. 2).
Kim et al. also teach compositions for moisturizing, wrinkle-improving, and whitening the skin (Claim 3). Kim et al. further teach the compositions comprising a moisturizing agent such as polyglycerin-3 and betaine (Par. [0033]).
And as discussed in MPEP 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose… [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In the instant case, as polyglycerin-3 and betaine are taught by the prior art to be useful as moisturizing agents in compositions for moisturizing, wrinkle-improving, and whitening the skin, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Mintel to include betaine. It would have been obvious to combine polyglycerin-3 and betaine to yield a composition further capable of moisturizing the skin, with a reasonable expectation of success.
Based on all of the foregoing, claims 12-15 and 20 are rejected as prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul Hoerner whose telephone number is (571)270-0259. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm eastern.
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/PAUL HOERNER/Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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