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 .
Receipt is acknowledged for IDS filed 01/29/2026 and 09/10/2024, and preliminary amendment filed 06/21/2024.
Claims 3-15 are amended.
New claims 17-20 are added.
Claims 1-20 are pending.
Priority
This application is a 371 of PCT/IB2021/000905 filed 12/23/2021.
Information Disclosure Statement
The IDS filed 01/29/2026 and 09/10/2024 have been considered by the examiner.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-8, 12, 15, 16, 18, 19, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel’s Toning All in One Essence, April 2021 (cited by Applicant on Form 1449).
Mintel’s Toning All In One Essence is an oil-in-water emulsion comprising halogenated lecithin which is component (A), phytosterol which is component (B), sodium stearoyl glutamate which is an acylglutamic acid salt and having 18 carbons in the stearoyl acyl group and which is component (C), Butyrospermum parkii (shea) butter vegetable oil which is component (D1), and water as aqueous medium (E). This composition anticipates the oil-in-water composition in claims 1, 3; the composition is used for skin meeting claim 15.
Form claim 2, components (A) and (B) form complex because when components (A) and (B) are co-present, they form a complex, this is as gleaned from the specification as filed in line 3 of paragraph [0034] on page 6.
For claim 4, the Toning all in One Essence comprises dicaprylyl carbonate, a non-vegetable oil meeting component (D2).
For claim 5, the Toning all in One Essence comprises limonene/citrus grandis (grapefruit) peel oil, which is unsaturated hydrocarbon based plant oil, component (D1).
For claim 6, component (D2) is dicaprylyl carbonate, a dialkyl carbonate.
For claims 7 and 8 and 19, the Toning all in One Essence comprises C10-C30 alkyl acrylate crosspolymer, a hydrophilic thickener, meeting the requirements of claims 7 and 8 and 19.
For claims 12 and 20, the Toning all in One Essence comprises glycerin meeting the requirement of the claim.
For claim 16, the Toning all in One Essence inherently exhibits long term emulsion stability. It is the composition of claim 15 that exhibits long term emulsion stability and provides light texture and richness to the skin with a moisturizing effect. Since the Toning all in One Essence anticipates claim15, the same composition also has the innate properties recited in claim 16.
For claim 18, the Toning all in One Essence comprises triglycerides.
Therefore, Mintel’s Toning All in One Essence teaches the oil-in-water composition of claims 1-8, 12, 15-16 and 18-20.
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.
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, 4, 9, 10, 11, 13, 14 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mintel’s Toning All in One Essence, April 2021 (cited by Applicant on Form 1449) as applied to claims 1 and 4, in view of SUMITA SHO et al., (JP2019112314 (A) submitted by applicant form 1449, using the Eng Trans).
Mintel’s Toning All in One Essence oil-in-water emulsion has been described above to teach claims 1 and 4. Claim 17 depends on claim 4 which depends on claim 1. Claims 9, 10 and 17 depend from claim 1.
For claim 9, Mintel’s Toning All in One Essence oil-in-water emulsion composition does not teach amounts of component A (hydrogenated lecithin), B (phytosterol) and C (acylglutamic acid) as required by claim 9.
However, SUMITA SHO teaches oil-in-water emulsion that comprises component (A) at 0.01% to 2.5% by mass of liposomes composed of hydrogenated soybean phospholipid, cholesterol and N-acylamino acid salts (claims 1 and 3); 3%-20% ester oil as component (B) and paragraph [0012] of the translation names phytosterol as component B.
Therefore, the ordinary skilled artisan would look to SUMITA SHO to use amounts of component (A) in amounts of 0.01 to 2.5% and component B in amounts of 3-20%. The 0.01 to 2.5% is a specific point within the claimed range of 0.01 to 10% for component A. For component B, the 3-20% overlaps the claimed range of 0.01 to 10%. In the case of B, the disclosed range allows for 3-10%. Therefore, before the effective date of the invention, one having ordinary skill in the art would use amounts of components (A) and (B) in the oil-in-water emulsion composition of Mintel that would produce emulsion composition having desired moisturizing effect, rendering claim 9 prima facie obvious.
For claim 10, triglyceride component (C) is at 2-15% (claim 1) with this amount range overlapping the claimed range amount of 0.01 to 5%. The disclosed range allows for a range of 2-5% specific point within the claimed range. Thus, before the effective date of the invention, the ordinary skilled artisan would be guided by SUMITA SHO to use amounts of component (C) in combination with components (A) and (B) in the Mintel composition that would be expected to yield a composition that would predictably produce desired moisturizing level.
For claims 13 and 14, SUMITA SHO teaches that liposomes are nano-sized closed vesicles composed of phospholipid bilayer membranes and that their skin penetration function and moisturizing properties have attracted attention (paragraph [0012] of the translation). That the average particle size of the liposomes is from 50 nm to 500 nm (paragraph [0021] of the Eng. Translation meeting claim 14).
For claim 11, oil is component (C) and paragraph [0029] of SUMITA SHO teaches that the oil is present at 5-15% which is a specific range within the claimed range of 5-60%.
For claim 17, when the oil is shea butter (D1) and when the oil is triglyceride (D2) (see paragraphs [0027] and [0028] of SUMITA SHO) and the amount of each ranges from 5-15% (see paragraph [0029] or SUMITO SHO), then the ratio of D2/D1 is 1 rendering claim 17 prima facie obvious.
Therefore, Mintel’s Toning All in One Essence in combination with SUMITA SHO renders claims 9-11, 13, 14 and 17 prima facie obvious.
No claim is allowed.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613
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