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 1-20 are pending in this application.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 3 and 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.
(1) Claim 3 recites “wherein the cosmetic vehicle comprises an effective amount of the bioceramic composition.” This clause is confusing for two reasons. First, it is unclear what utility the “effective” amount is for. Without being more specific as to the effect, “effective amount” is ambiguous. Second, the structure of this wherein clause appears to require a vehicle that has its own supply of the bioceramic. Thus, the composition of claim 3 appears to encompass the following confusing scope:
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(2) Claim 14 recites “’Indirect Food Additive’ approved by the Food and Drug Administration.” This is improper claim language because of two reasons. First, the quoted term “Indirect Food Additive” implies additional meaning that is not specified. Second, a patent claim must be fixed and not rely on external standards that could change over time. For example, the FDA could add or remove ingredients from any list of approved additives, so this claim raises uncertainty as to what is covered or not covered within its scope.
Effective filing date of the claims
Continuing data for this application shows 6 earlier filed applications and 5 provisional applications. None of the provisional applications disclose a general cosmetic composition with cosmetic vehicle, and none of the provisional applications disclose a cosmetic composition that does not contain zirconium oxide (ZrO2). Therefore, for the purpose of this analysis, the effective filing date of all claims, as currently pending, is the filing date of 14/702,467, which is 5/1/2015. Applicant is advised that this issue may be reassessed as the Examiner evaluates additional prior art and claim limitations.
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.
Claims 1-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Vissman et al. (US 2014/0087040; hereinafter, Vissman ‘040) in view of George et al. (WO 00/72808; hereinafter, George) and Kasai (US 2014/0050770).
Vissman ‘040 discloses a bioceramic composition that includes:
about 45-55 wt% kaolinite;
about 5-15 wt% tourmaline;
about 3-13 wt% aluminum oxide;
about 11-19 wt% silicon dioxide; and
about 3-13 wt% zirconium oxide.
See paragraph 5. The largest dimension of any particle in the composition is from about 0.5 µm to about 25 µm (id.). Vissman ‘040 further discloses an article that includes (a) a substrate and (b) bioceramic composition (paragraph 6), wherein the article includes patches such as patches that adhere to skin, including transdermal patches, transdermal hydrogel patches, lotions, soaps, hat, footwear, tape, undergarments, socks, gloves, diapers (paragraph 8, 49-50). “Virtually any article that is capable of incorporating a bioceramic composition is suitable” (paragraph 49). The substrate (a) can be a polymer such as polystyrene, polyethylene, or polypropylene (paragraphs 6, 42). About 1-35 wt% of the bioceramic composition can be present in the article (paragraph 38, 45). Bioceramics include ceramics that radiate beneficial infrared waves and benefit human health (paragraph 4). “The biological effects of bioceramics are based on the fact that the infrared frequency range is the natural resonant frequency range of water and living organisms. Because a considerable part of living organisms includes water, the resonant frequency of water molecules radiated from bioceramics can activate the water and affect living organisms.” (paragraph 20).
George (WO 00/72808) discloses kaolin (page 6, line 9), tourmaline (page 4, lines 9-10), alumina (synonymous with aluminum oxide) (page 6, line 19), silicon dioxide (page 4, line 7), titanium dioxide (page 6, lines 9-10) as ingredients of powder materials that can replenish the fluorescence and impart glow to the skin (page 2, second paragraph). Tourmaline and silicon dioxide in the form of amethyst are disclosed to produce green to bluish green fluorescence (page 4, lines 1-10); titanium dioxide produces white color (page 6). Succinite, which is a resin that contains polymers, is disclosed as a suitable ingredient that provides green to bluish green fluorescence (page 4, lines 1-10). In color cosmetics, pigments, dyes, and colorants can be used (page 6). See also pages 2-6. The powders can be incorporated into “any kind of vehicle that is normally used for cosmetic compositions” and formulated as solution, suspension, lotion, cream, gel, oil-in-water emulsions, face powder, eye shadow, blush, lipstick, eye pencils, foundation, concealer, blush (page 5, second paragraph). Additional formulation as skin treatment product to “disguise dark shadows, undereye circles, lines and wrinkles on the skin, or to counteract the effects of rosacea,” or products that “improve or eradicate age spots, keratoses and wrinkles” are disclosed (paragraph bridging pages 6-7). Formulation with a methyl paraben preservative and disodium EDTA (chelating agent and buffer component) is shown (Example I on page 8); Formulation with pigment, preservative, triglyceride, wax and solvents is disclosed (Example II on page 9).
Kasai (US 2014/0050770) discloses the use of titanium dioxide and magnesium oxide as a substitute for zinc oxide in providing cosmetic compositions with the property of providing longer lasting staying power of make-up on the skin surface (paragraphs 2-6). Further incorporation of filler such as silica and kaolin is disclosed (paragraph 11-13), which may be coated with zirconium (paragraph 35), and pigments such as titanium dioxide, zirconium oxide (paragraph 184) is disclosed.
Vissman ‘040 does not explicitly use the term “cosmetic” to describe the bioceramic-containing article in the form of patches that adhere to the skin, lotions, soaps, tape,” or “virtually any article that is capable of incorporating a bioceramic composition” (paragraph 49). However, Vissman ‘040 teaches many different articles, including for example skin patches, lotions, soaps, and virtually any other article, taken with the known cosmetic uses of kaolin, tourmaline, aluminum oxide, silicon dioxide, titanium dioxide, and magnesium oxide, as evidenced by George and Kasai, would have suggested to the ordinary skilled artisan that Vissman’s bioceramic composition can be formulated as cosmetics, as claimed herein, to provide cosmetic as well as biological effects of the bioceramic composition.
Claim 4 requires a 1:1 to 1:30 ratio of the bioceramic to cosmetic vehicle. Vissman ‘040 teaches 1-35 wt% of the bioceramic composition, so this ratio is fairly suggested.
Claim 10 recites “wherein the bioceramic composition is formulated inside an eye mask or a face mask.” First, this claim feature appears to be an intended use that does not actually change what is being claimed, the composition. Second, use inside an eye mask or face mask would have been obvious because George teaches skin treatment to disguise dark shows, undereye circles, lines and wrinkles on the skin, and also to improve or eradicate age spots and wrinkles.
Claim 20 is directed to a method of reducing facial expression marks, scars, or blemishes on a subject’s skin. Vissman ‘040 does not explicitly disclose such application for the lotion, soap, patch, and other articles that have been disclosed, but George is evidence that the ingredients of the bioceramic composition are known to have numerous cosmetic functionalities, including as concealer, disguise for undereye circles, dark shadows, lines and wrinkles, and improvement agent for age spots, keratoses and wrinkles. Thus, the claimed method would have been obvious for the articles taught by Vissman ‘040, including the disclosed lotion, soap, patch and other articles.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the 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
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