DETAILED ACTION
Claims 1-6 and 10-16 are pending and under consideration on the merits.
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 Rejections
The claim objection is withdrawn in view of the cancellation of claims 8-9.
The 112(d) rejection is withdrawn in view of the amendment.
The 112(b) rejection is maintained.
The 103 rejections are withdrawn in view of the amendment and replaced with new rejections incorporating the teachings of a new secondary reference, Kim et al.
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.
Claims 6-10 and 12-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as 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.
Claim 10 recites the trademark ASKER. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a chemical compound and, accordingly, the identification/description is indefinite. Clarification is required.
Response to Applicant’s Arguments
Applicant argues that claim 10 has been amended to recite the ASKR hardness scale in order to overcome the rejection, but the rejection is based upon the recitation of the trademark ASKER in the claim, and claim 10 as amended continues to recite ASKER. Therefore, the rejection is maintained.
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 1-6 and 10-12 are rejected under 35 U.S.C. 103 as unpatentable over KR2018-0026125 (of record in IDS) as evidenced by the English translation thereof and in view of Sim et al. (US Pat. Pub. 2014/0154295; of record), Wendel et al. (US Pat. Pub. 2011/0064681; of record), and Kim et al. (US Pat. Pub. 2017/0251789).
As to claims 1-6 and 10-12, KR2018-0026125 discloses a composition comprising a polyurethane foam, the polyurethane foam formed from an isocyanate, castor oil (which has a molecular weight of 930 g/mol), and polybutadiene polyol with a molecular weight of 2800 g/mol, such that the foam comprises ether groups and ester groups in a molar ratio of 5.8:4.2, which is within the range of claim 1, and wherein the composition is impregnated with a cosmetic composition in the form of a water and oil emulsion (see paragraphs 76, 99, 102-104, and 119-126 of the translation and Example 2 of original document, including compositions M3, M4, and M31-M35). The viscosity of the composition is 1000-10,000 cps, which overlaps the range of claim 1 (paragraph 89). KR2018-0026125 further teaches that the composition may comprise a surfactant as a foam stabilizer (paragraph 54). The composition may be for application to skin and may comprise a sunscreen (paragraphs 67, 71).
As to claims 1-6 and 10-12, KR2018-0026125 does not further expressly disclose the water content of claims 1-4 and 12, that the composition comprises adenosine and niacinamide (claim 1), the amount of oil phase (claim 12), or the ratio of oil phase to aqueous phase (claim 6), the threshold shear stress recited by claims 1, 5, and 12, nor the G’/G’’ range recited by claim 1, nor the use of two emulsifiers in combination and having the weight ratios of claim 1 and wherein the emulsifiers are among those recited by claim 1, nor the hardness after impregnation (claim 10) or that the change in hardness of the polyurethane foam before and after impregnation with the cosmetic is 45% or less (claim 11).
Sim discloses a polyurethane foam impregnated with a cosmetic composition (paragraphs 5 and 20). The cosmetic composition is an oil and water emulsion comprising water content in the amount of 20-60% which overlaps the ranges of claims 1-4 and 12 (paragraphs 5 and 20), the emulsion comprising an oil phase in the amount of 20-80% (paragraph 11) which overlaps the range of claim 12, and which encompasses a ratio of oil phase: aqueous phase within the recited ratio of claim 6. For example, an oil phase present in the amount of 53% would result in a ratio of 1.1: 1. The hardness of the foam is 10-70, which encompasses the range of claim 10 (paragraph 22). The cosmetic composition comprises one or more emulsifiers, such as sorbitan isostearate, PEG-10 dimethicone, or lauryl PEG-9 polydimethylsiloxyethyl dimethicone, which are recited by claim 1 (paragraph 12).
Wendel discloses cosmetic preparations comprising polyurethanes for the purpose of modifying the rheological properties of the compositions, including its viscosity, thixotropy, structural viscosity, rheopexy, and dilatancy (paragraphs 1 and 11-12).
Kim discloses a cosmetic sheet comprising functional materials such as niacinamide as a skin whitener and adenosine as an anti-wrinkle ingredient (paragraphs 12 and 70).
As to claims 1-6 and 10-12, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the composition of KR2018-0026125 by selecting a water content within the ranges of claims 1-4 and 12 and an oil phase content within the range of 12 and which results in a weight ratio of oil phase to aqueous phase within the range of claim 6, because KR2018-0026125 does not expressly teach what ranges are suitable for the amounts of water and oil phase, which would have motivated the skilled artisan to search the related art for information on these parameters, which would have led to Sim, which teaches that amounts of water and oil within the presently claimed ranges and which can result in a ratio within the range of claim 6 are suitable for a cosmetic composition in the form of an oil and water emulsion that is impregnated into a polyurethane foam, such that the skilled artisan reasonably would have expected that similar amounts would be suitable for the cosmetic composition of the primary reference. Such a modification is merely the combining of known prior art elements according to known methods to achieve predictable results, which is prima facie obvious. MPEP 2143.
It further would have been prima facie obvious to incorporate niacinamide and adenosine as functional ingredients, because Kim expressly teaches that niacinamide is useful as a skin whitener and adenosine is useful as an anti-wrinkle agent when incorporated into a cosmetic composition intended for application to skin, such that the skilled artisan reasonably would have expected that whitening and anti-wrinkling effects could be imparted to the KR2018-0026125 composition by inclusion of these ingredients.
The resulting modified prior art composition is viewed as possessing the shear stress values recited by claims 1, 5, and 12 as well as the G’/G’’ range recited by claim 1 and the hardness of claim 10 and the change in hardness recited by claim 11, since it comprises the same ingredients in the same amounts that are recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01. Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)), and the disclosure of Wendel makes it clear that it was known in the prior art that polyurethanes serve as rheology modifiers in cosmetic compositions, such that the skilled artisan would have had a reasonable expectation of success in arriving at the viscosity characteristics recited by claim 1 by modifying the amount of the polyurethane relative to the water and oil phase content. Additionally, the skilled artisan would have had a reason to select a hardness within the range of claim 10 because Sim expressly teaches that hardness values within the claimed range are suitable for polyurethane foams impregnated with a cosmetic composition.
It further would have been prima facie obvious to select sorbitan isostearate, PEG-10 dimethicone, and/or lauryl PEG-9 polydimethylsiloxyethyl dimethicone as the surfactant as recited by claim 1, because Sim teaches that these surfactants may be used in combination as foam stabilizers in a polyurethane foam comprising an impregnated cosmetic, such that the skilled artisan reasonably would have expected that they could serve as the surfactant in the KR2018-0026125 composition. Such a modification is merely the substitution of one known element for another to achieve predictable results, which is prima facie obvious. MPEP 2143.
It further would have been prima facie obvious to select amounts of the emulsifiers that would result in a ratio within the recited range of claim 1, since the amount of emulsifier is a result effective variable that will affect the emulsifier’s ability to stabilize the cosmetic in the form of an emulsion, and the skilled artisan would recognize that different emulsifiers will have differing optimal amounts, such that the skilled artisan would have been motivated to conduct an optimization process to determine the optimal ratio of the emulsifiers which would arrive at the claimed range with a reasonable expectation of success because the compounds are serving the same function in the prior art composition as in the present claims, i.e., as an emulsifying agent for a cosmetic composition comprising a polyurethane foam. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 13-16 are rejected under 35 U.S.C. 103 as unpatentable over KR2018-0026125 in view of Sim et al. (US Pat. Pub. 2014/0154295), Wendel et al. (US Pat. Pub. 2011/0064681), and Kim et al. (US Pat. Pub. 2017/0251789) as applied to claims 1-6 and 10-12 above, and further in view of Henault-Mezaize et al. (WO 2016/116473).
The teachings of KR2018-0026125, Sim, Wendel, and Kim are relied upon as discussed above, but they do not further expressly disclose that the composition comprises an oil phase comprising the combinations of ingredients recited by claims 13-16.
Henault-Mezaize discloses oil/oil emulsions for use in cosmetic compositions (page 1, 1st paragraph), wherein the oils present in the emulsion may include cyclopentasiloxane, dicaprylyl carbonate, phenyltrimethicone, isododecane, tridecyl trimellitate, trisiloxane, dimethicone/vinyl dimethicone cross polymer, methyl trimethicone, dimethicone, dodecamethylcyclohexasiloxane (synonymous with “cyclohexasiloxane” of the claims) or diphenyl siloxy phenyl trimethicone (page 36, line 31 through page 37, line 7; page 45, 1st paragraph; page 49, 5th paragraph; page 50, 1st paragraph; Section 3 on page 52; page 71, lines 14-32). Henault-Mezaize also discloses the use in the oil phase of diesters obtained via condensation of an unsaturated fatty acid dimer such as dilinoleic acid with butanediol (“butylene glycol”)(bottom of page 50).
As to claims 13-16, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the cosmetic composition of KR2018-0026125, Sim, Wendell, and Kim as discussed above by selecting for use as the oils in the oil phase of the emulsion cyclopentasiloxane, dicaprylyl carbonate, phenyltrimethicone, isododecane, tridecyl trimellitate, dimethicone/vinyl dimethicone cross polymer, methyl trimethicone, dimethicone, dodecamethylcyclohexasiloxane (synonymous with “cyclohexasiloxane” of the claims) or diphenyl siloxy phenyl trimethicone, because Henault-Mezaize expressly teaches that each of these oils is suitable for use as oils in the oil phase of a cosmetic composition, such that the skilled artisan reasonably would have expected that they could be used in the oil phase of the KR2018-0026125 composition, said modification being merely the simple substitution of one known element for another to yield predictable results, which is prima facie obvious. MPEP 2143. It further would have been prima facie obvious to select butylene glycol dicaprylate/dicaprate as an oil as recited by claim 13, because Henault-Mezaize further teaches the use in the oil phase of diesters obtained via condensation of a fatty acid dimer such as dilinoleic acid with butylene glycol without placing any limitation on the number of carbons in the fatty acid dimer, such that it would have been prima facie obvious to form the ester using dicaprylic acid with a reasonable expectation of success, it being well within the purview of the skilled artisan to vary the number of carbons in the alkyl chains present in the fatty acid to arrive at caprylic acid with a reasonable expectation of success in obtained a diester having similar properties. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). Additionally, prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979).
Response to Applicant’s Arguments
Applicant’s arguments have been considered carefully but are moot in light of the new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
