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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 19, 2024 are being considered by the examiner. The signed IDS form is attached with the instant office action.
Claim Objections
Claim 6 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot reference two sets of claims to different features. See MPEP § 608.01(n). Accordingly, the claim 6 has not been further treated on the merits.
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 7-14 are 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.
Regarding claim(s) 7 and 8, the phrase "for example" and “e.g” renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 7 recites the broad recitation “liquid, solid or semi-solid form”, and the claim also recites “for example in the form of an emulsion, including an O/W emulsion and an moisturizing O/W emulsion, a gel, a foam, or a solution” 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.
In the present instance, claim 8 recites the broad recitation “cream”, and the claim also recites “including an under-eye cream or a night cream, a day cream, a skin cleansing product, e.g. for the face skin, including a gel, a foam, a micellar liquid, a milk, a gel serum, a toner, preferably a face toner, an oil, e.g. a face oil” 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.
In the present instance, claim 10 recites the broad recitation “o/w moisturizing emulsion”, and the claim also recites “in particular a night face cream or an eye cream” 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.
In the present instance, claim 11 recites the broad recitation “o/w emulsion”, and the claim also recites “in particular a day face cream” 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.
In the present instance, claim 12 recites the broad recitation “a face cleansing product”, and the claim also recites “in particular a gel, foam, a micellar liquid or a gel serum for the face” 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.
In the present instance, claim 13 recites the broad recitation “a face cleansing product”, and the claim also recites “in particular a face cleansing milk” 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.
Claim(s) 9-14 are indefinite because there is a lack of antecedent basis for the phrase “the composition as defined”. It is also unclear what the specific features of the composition as “defined” are intended to be encompassed by this limitation.
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.
Claim(s) 1-5 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Carle (WO 2013149323 A1) in view of Reichenbach (WO 2022128390 A1) and Katsumata (JP 2020158400 A – English translation provided).
Regarding claim(s) 1-5 and 7-14, Carle teaches [that] the topical application may comprise a hydrophilic system and a lipophilic system of cosmetically acceptable ingredients in contact with the human body parts (paragraph 0048). Carle teaches a cosmetic composition that comprises an excipient for application on skin comprising: water; and at least one hydrophilic supplement dissolved in the water. The present document also describes a lipidic composition for skin protection and rejuvenation comprising: at least one plant oil extract; and at least one lipophilic supplement dissolved in the at least one plant oil extract (abstract). Carle teaches botanical extracts & plant actives that may be incorporated in the hydrophilic and lipophilic supplements such as Humulus lupulus ([e.g. common hops]) (table 1, pages 78-81). Carle teaches that lactobacillus ferment and alpha-glucan oligosaccharide may be incorporated into the composition (paragraph 0012). Carle teaches that inulin may be incorporated into the composition (paragraph 0034). Carle teaches that jojoba oil ([e.g. a cosmetically acceptable excipient]) can be added to the composition (paragraph 0016). Carle teaches [that] the cosmetic preparation of the emulsion technology is referred to as an excipient and a lipidic composition (paragraph 0047). Carle teaches [that] according to an embodiment, the base may be incorporated, without limitations, in a powder, in a gel, in a suitable lotion, in a cream, in a foam, and the like (paragraph 0078). Carle teaches that the composition can comprise niacinamide (e.g. vitamin B3; a cosmetically acceptable active agent), sodium benzoate (e.g. a preservative), citric acid (e.g. a cosmetically acceptable auxiliary substance) (paragraph 0012). Carle teaches that the composition can include candelilla wax (e.g. a consistency adjusting agent) (paragraph 0088). Carle teaches that the composition can include plant oil essences such as peppermint, orange, spearmint (e.g. a fragrance composition) (paragraph 0072). Carle teaches [that] the excipient may include: water, and at least one hydrophilic supplement dissolved in the water (paragraph 0032). Carle teaches that the composition can include glycerol or glycerin (e.g. a moisture-binding agent) (paragraph 0015). Carle teaches that the composition can include beheny alcohol (an emulsifying agent) (paragraph 0081). Carle teaches a natural product kit for cleansing, protecting, rehabilitating and regenerating, and for maintaining skin's wellbeing (paragraph 0089). Carle teaches [that] examples of emulsions include vinaigrettes [and] milk (paragraph 0010). Carle teaches [that] the amount of emulsions vary from a wide range in proportion, for example 50-50 wt %; 20-80 wt%; 80-20 wt%; 40-60; 60-40 between the lipophilic supplement and the hydrophilic supplement (paragraph 0049). Carle teaches the preservatives within the range of 0.75%-2% (example 24, page 70).
The Carle reference does not teach at least one UV filter and/or one surfactant (as stated within claim(s) 9, 11, 12 and 13 of the present invention). The Carle reference does not teach that the composition can be made into a face toner (as stated within claim 14 of the present invention). The Carle reference does not teach majority of the specific percentages of each component of the cosmetic compositions listed within claim(s) 2-4 and 9-14.
Reichenbach teaches [at least one UV filter and at least one surfactant] such as bis-ethylhexyloxyphenol methoxyphenyl triazine [and] polyglyceryl-4 caprate within the cosmetic composition (paragraph 0056 and 0038).
Katsumata teaches an example cosmetic composition [that can be made into a] toner (example 26, pages 22-23).
Regarding claim(s) 1-5 and 7-14, one of ordinary skill in the art would have been motivated to use the compositions as taught by Carle and to modify those compositions into one composition to include Reichenbach’s UV filter and surfactant and can further include that the composition can also be made into a toner for the skin as taught by Katsumata. The aforementioned references combined do not specifically teach majority of the percentages of components in the amounts claimed by the applicant within the compositions as stated within claim(s) 2-4 and 9-14 of the present invention. However, as discussed in MPEP section 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” The references teach the use of each of the ingredients in a composition. Varying the concentration of ingredients within a composition is not considered to be inventive unless the concentration is demonstrated as critical. In this particular case, there is no evidence that the claimed concentration of the ingredients produces an unexpected result. Thus, absent some demonstration of unexpected results from the claimed parameter, this optimization of ingredient concentration would have been obvious before the effective filing date of applicant’s claimed invention. Thus, one of ordinary skill in cosmetics and the biomedical sciences would have been motivated to use the lactobacillus ferment (as stated within the Carle reference), in which, one of ordinary skill in the art could include the technique that the lysate of a fermentation product of Lactobacillus was obtained. Lysate is considered an extraction from bacterial cells; on a general scale, lysates are well known to be used within cosmetics in order to provide an enhanced skin barrier. Therefore, one would reasonably expect to use all of the three aforementioned references in order to create and optimize the concentrations of each of the ingredients present within a composition similar to or exactly the same as the claims of the present invention in order to achieve a specific type of cosmetic composition for use on the skin in general (e.g. face, under eyes, a cleanser for face and body, a toner for face, a gel for face and body and a lotion for the body).
Moreover, these references show that it was well known in the art prior to the effective filing date of the invention to use the claimed ingredients in compositions for treating the skin. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from their having been used individually in the prior art.
Based on the disclosure by these references that these substances are used in compositions for treating the skin, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating compositions for treating the skin. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nashara L Moreau whose telephone number is (571)272-5804. The examiner can normally be reached Monday - Thursday, 8 AM - 4 PM ET.
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NASHARA L MOREAUExaminer, Art Unit 1655
/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
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