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 .
Status of the Claims
Claims 1-9 are pending in the instant application and subject to examination herein.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. PCT/JP2022/042729, filed on 11/17/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/08/2024, 11/11/2025, 01/27/2026, 03/10/2026 and 04/20/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 8-9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kreutz (U.S. PG Pub 2019/0117530 A1).
Claim 1 is drawn to a nanoemulsion that comprises the following ingredients and/or properties:
particles with an average particle diameter of 30 nm or less and a particle size distribution index of 0.14 or less and no particles of 100 nm or more;
a surfactant component, an oil, a poorly water-soluble functional component, an aqueous medium, and a preservative;
the preservative comprising at least one selected from an organic acid (salt) and a biguanide-based compound, wherein the “organic acid (salt)”, as defined in the instant disclosure, is an organic acid, a salt thereof, or a mixture of an organic acid and a salt thereof.
Kreutz discloses a composition comprising a fragrance and/or oil and a surfactant, wherein the composition is free of lower alkyl alcohols and wherein the composition is a nanoemulsion (Abstract). Kreutz discloses “Example 1” of a nanoemulsion formula that includes the surfactants polylethylene glycol monooleyl ether (“Oleth-22”)1 and poly(oxyethylene) monolauryl ether (“Laureth-2”)2, a fragrance, the preservative/antioxidant BHT (butylated hydroxytoluene), the preservative/antimicrobial “Biocontrole®” (benzalkonium chloride) and water (paragraph [0206]). Kreutz further discloses that the fragrance is an essential oil, meaning “any concentrated hydrophobic liquid containing volatile aromatic compounds from plants”, thus meeting the limitation of “poorly water-soluble functional component” of claim 1 (paragraph [0137]). Kreutz further discloses that when the water medium is added to the other nanoemulsion components, the resulting emulsion droplets were analyzed by size with results included in Kreutz’s Figure 1 (paragraph [0213]), with Figure 1 showing that the average droplet/particle diameter is 20 nm and the polydispersity index (i.e., particle size distribution) is 0.13 (Figure 1).
Thus, claim 1 is anticipated by the disclosure of Kreutz.
Claim 8 further limits claim 1 to wherein the surfactant contains at least one of a Markush group of compound types, including polyoxyalkylene alkenyl ether, and thus is met by Kreutz’s “Example 1”, which includes the surfactant polyoxyethylene monooleyl ether.
Claim 9 further limits claim 1 to a Markush group of products that must comprise the nanoemulsion of claim 1, including a cosmetic product. Kreutz discloses a cosmetic product comprising a composition described therein (paragraph [0122]).
Thus, claims 8-9 are anticipated by the disclosure of Kreutz.
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.
Claims 1-5 and 8-9 are unpatentable over Kreutz in view of Anger and Johnson.
Claims 1-5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kreutz (U.S. PG Pub 2019/0117530 A1) in view of Anger (Anger, et al.; Pharmaceutical Dosage Forms: Disperse Systems, v00001, 2nd ed., Chapter 9: Preservation of Dispersed Systems, pp377-435; Eds. Lieberman, et al.; CRC Press; 1996) and Johnson (Johnson, et al.; International Journal of Toxicology, v39, pp26S-73S; 2020).
The limitations of claim 1 and 8-9 and the disclosure of Kreutz are discussed in the rejection above and hereby incorporated into the instant rejection.
Claims 2-4 further limit claim 1, each in regard to the identity and/or concentration of an organic acid (salt) preservative; however, none of these claims require that an organic acid (salt) is selected as the preservative for the nanoemulsion of claim 1. Therefore, each of these claims is met when a biguanide-based preservative is selected for the nanoemulsion of claim 1.
Claim 5 further limits claim 1 to wherein a biguanide-based preservative is polyaminopropyl biguanide.
Kreutz does not disclose any preservative in the composition of the nanoemulsion of “Example 1”. However, a person of ordinary skill in the art would have a reasonable expectation of success in making and using a modified version of the nanoemulsion disclosed by Kreutz, with the inclusion of a preservative in the form of polyaminopropyl biguanide, because it was known in the art that that dispersed formulation products (e.g., emulsions) require safeguards from microbial contamination that can affect the formulation and infect the consumer, per the teaching of Anger, and it was known in the art that polyaminopropyl biguanide is a safe and effective microbial preservative used in dispersed systems at very low concentrations, per the teachings of Anger and Johnson, and it was known in the art how to test and validate a formulation upon addition of a preservative, per the teaching of Anger.
Anger teaches a review on the preservation of dispersed systems (e.g., emulsions). Anger teaches that dispersed systems require safeguards from microbial contamination that can affect the product and infect the consumer. This is accomplished by the addition of antimicrobial agents to destroy or inhibit the growth of those organisms that may contaminate the product during manufacture or use (page 377). Anger teaches that microbial contaminants can he harmful owing to their effects on the product. Fungi can metabolize complex carbohydrates, surfactants, and even steroids. This can change the physical properties of the formulation and can also deprive the consumer of the benefits of the product. Bacterial metabolism, even without the destruction of active ingredients, can damage a formulation by the formation of acidic end products that lower the pH of the product. This, in turn, can result in the growth of molds and fungi and the inactivation of the preservative. Some microbes can slowly metabolize emulsifiers, dispersing agents and surfactants, which can cause separation of the dispersed phases (e.g., cracking of the emulsion) (page 381). While Anger presents the review of microbial contamination and application of emulsion preservatives to mitigate such contamination in the context of pharmaceutical formulations, a person of ordinary skill in the art would at once recognize that the propensity of microbial contamination to affect emulsion formulations is not dependent on the intended use of the formulation. Anger further teaches that polyaminopropyl biguanide is a polymeric antimicrobial with activity against bacteria, yeasts, molds and protozoans, is soluble in water, that its use as a preservative in pharmaceutical concentrations runs from 15 ppm to 1.0%, and that its mammalian host toxicity is very low, with 5% solutions not causing eye irritation in rabbits or skin irritation in rats (pages 403-404, bridging paragraph). Anger further teaches the use of “challenges” to validate a dispersed formulation (e.g., emulsion) that includes a preservative to determine the amount of preservative to use (pages 417-418).
Johnson teaches a safety assessment of polyaminopropyl biguanide as used in cosmetics, and reports that polyaminopropyl biguanide functions as a preservative in cosmetic products (page 26S) and has been used in 147 cosmetic formulations which are mostly leave-on products, including baby lotions, oils and creams, and even lipstick, and also includes rinse-off products such as hair dyes and colors, and skin cleansing products (page 27S). Johnson notes that the range of cosmetic products that include polyaminopropyl biguanide include products that may be applied as frequently as several times per day and may come in contact with the skin or hair for variable periods following application. Daily or occasional use may extend over many years (page 27S). Johnson observes an important exception to the safe use of polyaminopropyl biguanide, that its safety in uses that may include incidental inhalation, for example sprayable formulations, has not been evaluated/reported, and therefore its use in sprayable formulations is not recommended, and notes that outside of this exception “the use of polyaminopropyl biguanide as a preservative in all cosmetic products at concentrations up to 0.1% is safe” (page 28S).
Applicant’s invention is unpatentable over the disclosure of Kreutz in view of the teachings of Anger and Johnson, because a person of ordinary skill in the art, at the effective time of invention, would have a reasonable expectation of success in modifying and using the cosmetic emulsion of Kreutz, wherein the emulsion comprises polyaminopropyl biguanide as a preservative, because it was known in the art that emulsions require safeguards from microbial contamination that can affect the formulation and infect the consumer, per the teaching of Anger, and it was known in the art that polyaminopropyl biguanide is a safe and effective microbial preservative used in dispersed systems at very low concentrations, per the teachings of Anger and Johnson, and it was known in the art how to test and validate a formulation upon addition of a preservative, per the teaching of Anger.
Thus, the invention was prima facie obvious at the time of filing.
Claims 1-2 and 6-9 are unpatentable over Maruyama in view of Anger and Roostaee.
Claims 1-2 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama (WO 2021/005676 A1)3 in view of Anger and Roostaee (U.S. Patent No. 12,075,788 B2).
The limitations of claims 1-2 and 8-9 and the teaching of Anger are discussed in the rejections above and hereby incorporated into the instant rejection.
Claim 6 further limits claim 1, each in regard to the identity and concentration of a biguanide-based preservative; however, none of these claims require that a biguanide-based compound is selected as the preservative for the nanoemulsion of claim 1. Therefore, each of these claims is met when an organic acid (salt) preservative is selected for the nanoemulsion of claim 1.
Claim 7 further limits claim 1 to wherein certain of the required nanoemulsion components are present in specific weight ratios, as follows:
surfactant to oil ratio is in the range of 2.8:1 to 240:1;
surfactant to (oil + functional component) ratio is in the range of 2.60:1 to 200:1.
Maruyama discloses compositions for preparing microemulsions, methods of making the microemulsions and use of microemulsions (paragraph [0001]). While Maruyama describes the invention disclosed therein as “microemulsions”, Maruyama discloses that the average particle (i.e., droplet/micelle) diameter is 18 nm or less (paragraph [0055]) and that the particle size distribution is 0.14 or less (paragraph [0056]), with no particles of 100 nm or more (paragraph [0057]). Thus, Maruyama’s “microemulsion” meets the size/distribution parameters of the claimed “nanoemulsion” of instant claim 1. Maruyama further discloses “Example 1”, an emulsion comprising Coenzyme Q10 as a poorly water-soluble functional component, along with soybean oil and the surfactant polysorbate 80 (paragraph [0077]). Maruyama further discloses that the ratio of the surfactant to the oil is 9.6 and the weight ratio of the surfactant to the combined oil/CoQ components is 2.5 (Table 1, paragraph [0079]).
Maruyama does not disclose any preservative in the composition of the emulsion of “Example 1”, nor any pH adjuster. However, a person of ordinary skill in the art would have a reasonable expectation of success in making and using a modified version of the “microemulsion” disclosed by Maruyama, with the inclusion of a preservative in the form of potassium sorbate, along with a pH adjuster, because it was known in the art that because it was known in the art that that dispersed formulation products (e.g., emulsions) require safeguards from microbial contamination that can affect the formulation and infect the consumer, per the teaching of Anger, and it was known in the art that sorbic acid is a safe and effective microbial preservative used in dispersed systems and that its acidic form is a more potent antimicrobial agent than its salt form, per the teaching of Anger, and it was known in the art that a mixture of sorbic acid and potassium sorbate, even at concentration up to 18%, is compatible with nanoemulsion having average particle diameter in the same range as the instant invention (~30 nm or less) with a polydispersity of 0.14 or less, per the teaching of Roostaee.
As discussed in the rejection above, Anger teaches the need to include antimicrobial preservatives in dispersed formulations (e.g., emulsions) to prevent growth of bacteria, fungi, etc., that may feed on emulsion component(s) and result in degradation of the physicochemical form of the emulsion and/or pose a risk to the consumer (pages 377 and 381). Anger further teaches that sorbic acid has a long history of effective preservation in the food industry and is one of the least toxic preservatives. Anger teaches that the unionized (i.e., acidic) form exhibits greater antimicrobial activity than the ionized form (i.e., sorbate), and therefore this preservative is more effective at lower pH, while Anger also teaches that sorbic acid is also less stable itself at lower pH (page 396).
Roostaee discloses aqueous nanoemulsion formulation comprising an oil, a solvent a sorbate, a saponin (surfactant) and water (Col. 2, lines 19-30). Roostaee also discloses that nanoemulsions disclosed therein have a diameter range of 10-30 nm, as shown in Figure 1A, and that the particular emulsion identified as “Thymox Control” has an average nanoparticle range from 29-33 nm as shown in Figure 1B, which, with 31 nm as a median average and a 4 nm range in diameter, represents a polydispersity index of 0.13 taking the range divided by the average (Col. 28, lines 10-42). Roostaee presents a series of formulations numbered F1-F25 (Table 5, bridging Cols. 27-28 and Cols. 29-30), and identifies “Thymox Control” as formulation F25 (Col. 37, lines 21-23), which, per Table 5, includes Thyme oil, isopropanol, n-butyl lactate, potassium sorbate (18%) and a surfactant component that includes an extract of Quillaja saponin with added citric acid. A person of ordinary skill in the art would at once recognize that the citric acid constitutes a pH adjuster and would ensure that at least a portion of the potassium sorbate is in neutral (acidic) form at all times. Roostaee discloses that in addition to functioning as a preservative, sorbate further acts as a co-surfactant to increase the number of micelles in the nanoemulsion, and amplifies the antimicrobial effect of the aqueous nanoemulsion formulation, as well as being non-irritating and non-sensitizing and having a toxicity (or lack thereof) close to that of table salt (Cols. 13-14, bridging paragraph). Thus, Roostaee teaches that potassium sorbate is a compatible preservative and a co-surfactant in the preparation of nanoemulsions.
Applicant’s invention is unpatentable over the disclosure of Maruyama in view of the teaching of Anger and the disclosure of Roostaee, because a person of ordinary skill in the art, at the effective time of invention, would have a reasonable expectation of success in modifying and using the nanoemulsion of Maruyama to include potassium sorbate and citric acid as preservative and pH adjuster, respectively, because it was known in the art that sorbic acid is an effective antimicrobial preservative for incorporation in dispersed formulations (e.g., emulsions), and that sorbic acid is more effective than sorbate as a preservative, per the teaching of Anger, and it was known that potassium sorbate, along with a lesser quantity of citric acid are compatible with nanoemulsion(s) in the same size regime as that disclosed by Maruyama, because not only does the sorbate with citric acid provide a quantity of sorbic acid, but the sorbate acts as an effective co-surfactant, per the disclosure of Roostaee.
Thus, the invention was prima facie obvious at the time of filing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to W. JUSTIN YOUNGBLOOD whose telephone number is (703). The examiner can normally be reached on Monday-Thursday from 8am to 5pm. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey S. Lundgren, can be reached at telephone number (571) 272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.J.Y./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
1 CAS 9004-98-2
2 CAS 9002-92-0
3 Cited in Applicant’s Information Disclosure Statement dated 10/08/2024.
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