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 1-10 are pending in this application. 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kropke et al. (US 2004/0258722; Kropke) in view of WO 2020/230238 (Kawano) and
JP 2017/214362.
Kropke (US 2004/0258722) discloses cosmetic and dermatological compositions in the form of oil in water emulsions (claim 32 in view of claims 1 and 31). Example 27 on page 6 shows an oil in water emulsion that contains:
17.75% oil components, which are cyclomethicone, dimethicone, hydrogenated polyisobutene, and octyldecanol;
8% emulsifier component, which cetearyl glucoside;
2.5% modified starch; and
approximately 49.75% or less water, depending on amount of perfume.
Kropke further discloses that the ordinary skilled artisan in this art would find obvious that “demanding cosmetic compositions are usually not conceivable without the customary excipients and additives,” including preservatives, bactericides, perfumes, thickeners, plasticizing agents, fats, oils, and other customary constituents of cosmetic formulations (paragraph 22).
WO 2020/230238 (Kawano) was published in the Japanese language, but US 2022/0213231 can be used as its English translation because it is the national phase publication of the International application. All paragraph references are to the English translation document, US 2022/0213231; however, the cited prior art document here is WO 2020/230238.1
Kawano discloses the same starch decomposition product as in the instant application claims for cosmetic use (paragraphs 1, 10-12), including modifying various properties such as shape retainability, plasticity, water and oil separation resistance, tactile sensation, creaming properties, thickening properties, and aging resistance (paragraphs 67-68). Kawano’s starch decomposition product has a content of glucose polymerization degree (DP) of 8 to 19 that is 32% or more and a content of glucose polymerization degree (DP) of 20 or more that is 30% or less (paragraphs 10-12). The starch decomposition product has iodine color value of 0.15 or more (paragraph 14), including 0.35 or higher (Table 2).
JP 2017/2143622 discloses an antivirus and antibacterial agent to be used in cosmetics and toiletries, comprising a silicon compound and cyclodextrin (translation page 2, lines 4-5 from the bottom; page 4, 11th paragraph). The cyclodextrin has deodorizing functionality (translation page 4, 5th and 9th paragraphs). The cyclodextrin can be 1-7% α-cyclodextrin, including the commercial cyclodextrin mixture product Dexipearl K-100 (translation page 4, 6th paragraph; page 5, line 3 from the bottom; page 8, see under “Summary of evaluation results of α-CD …”). Other additives may be added, including moisturizer, emulsifier, dispersant, antioxidant, UV absorber, fragrance, and the like (page 4, 13th paragraph).
Kropke does not explicitly disclose the starch decomposition product of Applicants’ claim 1 in his cosmetic or dermatological oil in water emulsion. However, Kropke teaches the use of modified starch in oil in water emulsions, and the ordinary skilled artisan would have been motivated to utilize Kawano’s starch degradation product for its multiple advantages of shape retainability, plasticity, water and oil separation resistance, tactile sensation, creaming properties, thickening properties, and aging resistance.
Claim 1 requires a ratio of the starch decomposition product to water of 0.05 or more. In Kropke’s example 27, the ratio is at least 5% (2.5 ÷ 49.75) – the ratio could be slightly greater because the denominator would get reduced by the small amount of perfume.
Claim 7 requires 0.5-5% emulsifier, whereas Kropke’s Example 27 uses 8% emulsifier. The ordinary skilled artisan in this art would have been able to obviously formulate many different oil in water emulsions that contain different amounts of aqueous and oil components, depending on the myriad cosmetic or dermatological end use, and modification to 0.5-5% emulsifier by mass would have been within the skill of the ordinary skilled cosmetic formulation artisan.
Claim 8 requires a cyclic oligosaccharide, which is α-cyclodextrin in claim 9. The ordinary skilled artisan would have been motivated to add the α-cyclodextrin-containing microbicide and deodorant of JP 2017/214362 to control both microorganisms and odor in a cosmetic oil in water emulsion.
Therefore, the claimed invention as a whole would have been prima facie obvious to the ordinary skilled artisan in this field because every element of the invention has been fairly suggested by the combined teachings of the cited references.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 Both documents, WO 2020/230238 and US 2022/0213231 are cited in the IDS of 6/25/2024.
2 Machine translation provided herewith. All page references are to the machine translation.
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