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 .
DETAILED ACTION
Claims 1-20 are pending.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-16, drawn to a method for treating skin, and the species of fine line or wrinkle (condition) and reducing the appearance of the fine line or wrinkle (effect), in the reply filed on 5/18/26 is acknowledged.
Claims 17-20 are withdrawn as being drawn to a nonelected invention.
Claims 2-5 and 7 are withdrawn as not being directed to the elected species.
Claims 1, 6, and 8-16 are under consideration to the extent that the method comprises the elected species.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 8/16/24 and 11/12/24. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been 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.
Claims 1, 6, 8, 9, 11-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by INCIDecoder (“Matcha Teaultra Eye-Cream”; 2020).
INCIDecoder teaches an eye-cream composition and applicator for the treatment of wrinkles (i.e. a method comprising topically applying to the skin a composition…wherein the skin comprises a fine line or wrinkle)(e.g. page 1).
Regarding Claims 1, 6, 12 and 13, INCIDecoder teaches that the composition comprises ethylhexyl palmitate and fucus vesiculosus extract (e.g. page 1-2). As the method comprises applying a composition comprising the claimed ingredients to skin with wrinkles for the treatment of said wrinkles, then the outcome of …”wherein the composition…reduces the appearance of the fine line or wrinkle” would necessarily occur. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claims 8 and 9, INCIDecoder teaches that the composition comprises ethylhexyl palmitate and fucus vesiculosus extract (e.g. page 1-2). The instant Specification links the stability of the formulation to the presence of ethylhexyl palmitate; “The combination of ethylhexyl palmitate and algae extract provides a stable emulsion system that effectively delivers skin rejuvenating algae extract to the desired dermal layers” (e.g. Spec [0010]). As the composition of INCIDecoder anticipates the instant composition, then the outcome of stability over 18 months and 3 years would necessarily occur. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 11, INCIDecoder teaches that the composition is a cream (e.g. page 1).
Regarding Claim 15, INCIDecoder teaches that the composition does not contain parabens (e.g. page 1-2).
Claims 1, 6, 8-13, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carle et al. (US 2022/0096346; cited in IDS).
Carle et al. teach a method of reducing oxidative damage of skin (e.g. abstract).
Regarding Claims 1 and 6, Carle et al. exemplify an eye cream composition comprising ethylhexyl palmitate and algae extract (e.g. Table 14 in paragraph 0123). Carle et al. teach that the eye cream of Table 14 improves the appearance of fine lines and wrinkles when applied around the eye area twice a day (i.e. the method comprising topically applying to the skin of the person…wherein the skin comprises…a fine line or wrinkle… in the periorbital area of the skin of the person, and wherein the composition increases …reduces the appearance of the fine line or wrinkle… in the periorbital area of the skin of the person) (e.g. paragraphs 0149-0154).
Regarding Claims 8, 9, 12, and 13, Carle et al. teaches that the composition comprises ethylhexyl palmitate and algae extract (e.g. page 1-2). Carle et al. further disclose that the algae extract is a water extract of Fucus vesiculosus (e.g. paragraph 0069). The instant Specification links the stability of the formulation to the presence of ethylhexyl palmitate; “The combination of ethylhexyl palmitate and algae extract provides a stable emulsion system that effectively delivers skin rejuvenating algae extract to the desired dermal layers” (e.g. Spec [0010]). As the composition of Carle et al. anticipates the instant composition, then the outcome of stability over 18 months and 3 years would necessarily occur. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 10, the example further comprises niacinamide and resveratrol (e.g. Table 14 in paragraph 0123).
Regarding Claim 11, the example is a cream (e.g. paragraph 0123).
Regarding Claim 15, the example does not contain a paraben (e.g. Table 14 in paragraph 0123).
Regarding Claim 16, the example comprises 0.2 wt% dimethicone (e.g. Table 14 in paragraph 0123).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 6, and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Carle et al. (US 2022/0096346; cited in IDS).
Regarding Claims 1, 6, 8-13, 15 and 16, the teachings of Carle et al. are described supra.
Regarding Claim 14, the example comprises 0.5 wt% ethylhexyl palmitate, which is within the claimed range, and 0.06 wt% of algae extract, which is below the claimed range (e.g. Table 14 in paragraph 0123). However, Carle et al. more broadly teach 0.001 to 1% of algae extract, which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I). It would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the algae extract concentration through routine experimentation to arrive at the concentration of 0.1-20 % in order to optimize the resulting product.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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