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 .
Claim Objections
Claims 38 and 42 objected to because of the following informalities:
Claim 38: The terms “emulsion” and “suspension” are repeated.
Claim 42: The claim recites both “1,2 hexanediol” and “1,2-hexanediol”.
Appropriate correction is required.
Claim Interpretation
Claims 42-44 recite the limitations “hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer” and “caprylic/capric triglyceride”.
The recitation of “hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer” may be interpreted as a copolymer comprising hydroxyethyl acrylate and another polymer (e.g. copolymer of hydroxyethyl acrylate and 2-methoxyethyl acrylate) or a copolymer comprising sodium acryloyldimethyl taurate and another polymer, or alternatively, interpreted as a copolymer comprising both hydroxyethyl acrylate and sodium acryloyldimethyl taurate. For purposes of compact prosecution, if the prior art teaches either interpretation, it will read on the claim limitation.
The recitation of “caprylic/capric triglyceride” may be interpreted as “caprylic triglyceride or capric triglyceride” or a blend of caprylic triglyceride and capric triglyceride. For purposes of compact prosecution, if the prior art teaches either interpretation, it will read on the claim limitation.
Claim Rejections - 35 USC § 112(b)
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.
Claim 17 is 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.
Claim 17 recites the limitation “ambient conditions.” This renders the claim indefinite. The term “ambient conditions” is not defined in the claims nor in the specification. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). Furthermore, the term “ambient” is generally understood to mean “environmental”. Thus, “ambient conditions” can be interpreted as being dependent on the environment, and thus the claim limitation is defined by reference to something that is variable. Without a clear definition of the phrase “ambient conditions”, one of skill in the art would be unable to determine the metes and bounds of the invention.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 38 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 38 recites that the composition of claim 1 may be an “emulsion”. Claim 38 depends from parent claim 1, wherein the composition is recited as an “oil/water emulsion”. Since the term “emulsion” in claim 38 may embrace water/oil emulsions, this fails to further limit the subject matter claimed in parent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Examiner Comment
The Examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the Applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed 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, 6, 14 and 17 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Auclair et al. (US 2021/0059979 A1, published 3/4/2021, cited on the 12/13/2024 IDS).
Regarding claims 1, 6, and 14, Auclair teaches a composition comprising dihydrokaempferol [claim 4] and glycol [claim 10], wherein the composition is an oil-in-water emulsion [claim 12]. Auclair teaches that a flavanol, such as dihydrokaempferol, may be present in an amount ranging from 0.05% to 10% by weight of the composition [claim 5]. Auclair teaches that this amount is effective in a composition used to treat leishmaniasis [Abstract; claim 14]. The instant claims do not recite the condition to which the instant invention is directed, thus absent an indication as to what the amount is effective for, the amounts taught by the prior art will meet the instant claim limitation. Examiner would like to note that the instant recitation of “for topical administration” is a recitation of intended use and does not constitute a functional limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. MPEP 2111.02. In the instant case, the preamble does not add a structural distinction to the claim. A prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. As the composition of Auclair is taught to be formulated as an oil-in-water emulsion, it is capable of being applied topically and reads on the instant limitation. Notwithstanding, Auclair teaches that its composition is for topical administration [claim 15].
Regarding claim 17, Auclair does not explicitly discuss the stability of the disclosed composition under storage at ambient conditions for one month, however, the instant limitation is a property of the claimed composition. Since Auclair anticipates the claimed composition, and a composition and its properties are inseparable, the claimed properties are presumed to be inherent. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
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.
Claims 1, 6, 14-15, 17, 35, and 37-42 are rejected under 35 U.S.C. 103 as being unpatentable over Auclair et al. (US 2021/0059979 A1, published 3/4/2021, cited on the 12/13/2024 IDS), as evidenced by McClements (2012).
Regarding claims 1, 6, 14, 35 and 37, Auclair teaches a composition comprising a flavanol, such as dihydrokaempferol [claim 4] and glycol [0064; claim 10], wherein the composition is an oil-in-water emulsion [claim 12]. Auclair further teaches that the flavanol may be present in the composition in the amount of 0.2% to 3% [0055]. It would be obvious to include dihydrokaempferol, a flavonol, in the concentration that Auclair teaches to be suitable for flavonols. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 35 and 37. MPEP 2144.05. The instant claims do not recite the condition to which the instant invention is directed, thus absent an indication as to what the amount is effective for, the amounts taught by the prior art will meet the instant recitation of “effective amount”. Auclair further teaches that its composition is for topical administration [claim 15]. However, Examiner would like to note that the instant recitation of “for topical administration” is a recitation of intended use and does not constitute a functional limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. MPEP 2111.02. In the instant case, the preamble does not add a structural distinction to the claim. A prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. As the composition of Auclair is taught to be formulated as an oil-in-water emulsion, it is capable of being applied topically and reads on the instant limitation.
Regarding claim 15, Auclair teaches that the composition may comprise of propylene glycol [0065].
Regarding claim 17, Auclair does not explicitly discuss the stability of the disclosed composition under storage at ambient conditions for one month, however, the instant limitation is a property of the claimed composition. Since Auclair makes obvious the claimed composition, and a composition and its properties are inseparable, the claimed properties are presumed to be inherent. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
Regarding claims 35 and 37, Auclair teaches that the flavanol may be present in the composition in the amount of 0.2% to 3% [0055]. It would be obvious to include dihydrokaempferol, a flavonol, in the concentration that Auclair teaches to be suitable for flavonols. The range taught by the prior art overlaps with and makes obvious the instantly claimed ranges. MPEP 2144.05.
Regarding claim 38, Auclair teaches that the topical composition may be in the form of a cream, gel, ointment, solution, emulsion, lotion, foam, or suspension [0071].
Regarding claims 39-40, Auclair teaches that the composition may comprise of a preservative such as imidazolidinyl urea (reads on antimicrobial preservative) [0069].
Regarding claim 41, Auclair teaches that the composition is preferably an oil-in-water emulsion [0071], and the flavonol of the composition (i.e. dihydrokaempferol) is dissolved in oil prior to blending with pharmaceutically acceptable vehicles [0092]. As evidenced by McClements, oil-in-water emulsions, wherein hydrophobic molecules are dissolved in an oil phase, are a suitable vehicle for encapsulation and delivery of such molecules [Abstract; Encapsulation of hydrophobic bioactive agents in emulsions].
Regarding claim 42, Auclair teaches that the composition may comprise of jojoba oil (reads on jojoba esters) [0065], cetylic alcohol (i.e. cetyl alcohol) [0065], caprylic/capric triglyceride [0067], glycerin [0067], and water [0070].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Auclair et al. (US 2021/0059979 A1, published 3/4/2021, cited on the 12/13/2024 IDS), as applied to claims 1 and 6 above, and further in view of Mahmood (US 2012/0156299 A1, published 6/21/2012).
Regarding claim 7, Auclair does not explicitly teach a topical composition wherein the solvent is dimethyl isosorbide. Mahmood teaches topical skin compositions comprising plant extracts [0001] wherein the composition may be formulated using a carrier comprising an oil-in-water emulsion [0041]. Mahmood further teaches that suitable solvents for use in the composition include dimethyl isosorbide and propylene glycol [0042]. Substitution of equivalents known for the same purpose is prima facie obvious. MPEP 2144.06. The composition taught by Auclair comprises propylene glycol [0065]. As Mahmood teaches that propylene glycol and dimethyl isosorbide are equivalent solvents suitable for topical oil-in-water emulsions, it would be obvious to modify the teachings of Auclair with that of Mahmood to substitute propylene glycol with dimethyl isosorbide and arrive at the instantly claimed composition. Examiner would like to note that, while Auclair does not explicitly disclose propylene glycol to be a solvent, “[p]roducts of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. MPEP 2112.01. Furthermore, the selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07.
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Auclair et al. (US 2021/0059979 A1, published 3/4/2021, cited on the 12/13/2024 IDS), as applied to claims 1 and 6 above, and further in view of Stebbins et al. (US 2022/0409516 A1, published 12/29/2022).
Regarding claims 8 and 10, Auclair does not explicitly teach a topical composition wherein the solvent is ethoxydiglycol (instant claim 8) or 1,2-hexanediol (instant claim 10). Stebbins teaches a topical, cosmetic oil-in-water emulsion [0001]. The composition of Stebbins comprises solvents, which may be propylene glycol, monoethyl ether of diethylene glycol (i.e. ethoxydiglycol), or 1,2-hexanediol [0095-0096]. Substitution of equivalents known for the same purpose is prima facie obvious. MPEP 2144.06. The composition taught by Auclair comprises propylene glycol [0065]. As Stebbins teaches that propylene glycol, ethoxydiglycol, and 1,2-hexanediol are suitable, equivalent solvents for use in an oil-in-water emulsion, it would be obvious to modify the teachings of Auclair with that of Stebbins to substitute propylene glycol with ethoxydiglycol or 1,2-hexanediol to arrive at the compositions of instant claims 8 and 10. Furthermore, the selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Auclair et al. (US 2021/0059979 A1, published 3/4/2021, cited on the 12/13/2024 IDS), as applied to claims 1 and 6 above, and further in view of Halpern Chirch et al. (WO 2018/081259 A1, published 5/3/2018).
Regarding claim 9, Auclair does not explicitly teach a topical composition wherein the solvent is isopropyl lauroyl sarcosinate. Auclair teaches that the disclosed composition may comprise additional ingredients such as stabilizers, emollients, or humectants [0066]. Halpern Chirch teaches a cosmetic sunscreen that may be formulated as an oil-in-water emulsion [0006; 0039]. Halpern Chirch teaches that isopropyl lauroyl sarcosinate is a suitable emollient that may be included in a topical, oil-in-water composition [0040]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. It would be obvious to a skilled artisan to apply the teachings of Halpern Chirch to Auclair to inform the selection of an emollient, and choose isopropyl lauroyl sarcosinate as it is taught to be suitable for this purpose. Examiner would like to note that, while Halpern Chirch teaches isopropyl lauroyl sarcosinate to be an emollient, “[p]roducts of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. MPEP 2112.01.
Claims 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Auclair et al. (US 2021/0059979 A1, published 3/4/2021, cited on the 12/13/2024 IDS), as applied to claims 1 and 6 above, and further in view of Abe (US 2023/0149290 A1, published 5/18/2023, cited on the 12/13/2024 IDS).
Regarding claims 10 and 13, Auclair does not explicitly teach a topical composition wherein the solvent is 1,2-hexanediol (instant claim 10) or 1,2-heptanediol (instant claim 13). Abe teaches a cosmetic, oil-in-water microemulsion [0001, 0134] comprising a component (D) which is a polyhydric alcohol such as propylene glycol, 1,2-hexanediol, and 1,2-heptanediol [0112-0114]. Abe teaches these polyhydric alcohols to be suitable equivalents for a surfactant phase of the composition [0113], i.e. these compounds have properties that allow them to serve an equivalent function in the composition. Substitution of equivalents known for the same purpose is prima facie obvious. MPEP 2144.06. The composition taught by Auclair comprises propylene glycol [0065]. As Abe teaches that propylene glycol, 1,2-hexanediol, and 1,2-heptanediol are suitable equivalent polyhydric alcohols for use in an oil-in-water emulsion, it would be obvious to modify the teachings of Auclair with that of Abe to substitute propylene glycol with 1,2-hexanediol or 1,2-heptanediol to arrive at the compositions of instant claims 10 and 13. Examiner would like to note that, while Abe does not explicitly disclose polyhydric alcohols to be solvents, “[p]roducts of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. MPEP 2112.01.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Auclair et al. (US 2021/0059979 A1, published 3/4/2021, cited on the 12/13/2024 IDS), as applied to claim 1 above, and further in view of Lukic et al. (2021).
Regarding claim 25, Auclair does not explicitly disclose that the pH of the topical composition is from about 4 to about 5. Lukic teaches that the acidic pH of the skin surface is a regulating factor for the maintenance of stratum corneum homeostasis and barrier permeability [Abstract; 6. Important of Acidic Skin pH]. Topically applied products, through their impact on skin pH, can thus impact skin health and maintenance [Abstract]. Lukic further teaches that topical skin products optimally have a pH in the range of 4 to 6 [Abstract]. Additionally, adjusting the pH of topical skin products using pH adjusting ingredients and buffers, such as lactic acid, citric acid, sodium acetate, and ammonia, is well-known and frequently used in the art [see e.g., pgs. 8, 10-11]. Thus, it would be obvious to one of ordinary skill, before the effective filing date of the claimed invention, to modify the teachings of Auclair with that of Lukic and formulate the composition such that the pH is between 4 to 6. The range taught by the prior art overlaps with and makes obvious the instantly claimed range. MPEP 2144.05. A skilled artisan would be motivated to make this modification in order to avoid disrupting the skin barrier and maintain the functioning of skin lipids, which is known to play a role in skin disturbances and diseases [Abstract; 6. Important of Acidic Skin pH].
Claims 43 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Auclair et al. (US 2021/0059979 A1, published 3/4/2021, cited on the 12/13/2024 IDS), as applied to claim 1 above, and further in view of Mahmood (US 2012/0156299 A1, published 6/21/2012), Minoggio et al. (EP 4018994 A1, published 6/29/2022), Wu et al. (WO 2023/184210 A1, effectively filed 3/30/2022), Lintner et al. (US 2009/0253666 A1, published 10/8/2009), Fischer et al. (EP 3551163 B1, published 2/17/2021), and Abe (US 2023/0149290 A1, published 5/18/2023, cited on the 12/13/2024 IDS).
Regarding claims 43 and 44,
Auclair teaches that the composition may comprise water [0070] but does not explicitly teach the amount of water present in the composition. Mahmood teaches that lotions and creams may be formulated as emulsions [0047], wherein the composition may comprise from about 20% to about 80% water [0047]. It would be obvious to apply the teachings of Mahmood to Auclair, and include water in an amount that water is taught to be suitable in. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair teaches that the composition may comprise glycerin [0067] but does not explicitly teach the amount of glycerin present in the composition. Mahmood teaches that the composition may comprise an organic solvent, such as glycerin, in the amount of 1% to 99.99% by weight of the carrier [0042], which may be an oil-in-water emulsion [0041]. The carrier may be present in the amount of about 50% to about 99.99% by weight of the entire composition [0041]. As a result, glycerin may be present in the composition in the amount of from 0.5% to 99.99%. It would be obvious to apply the teachings of Mahmood to Auclair, and include glycerin, an organic solvent, in an amount that organic solvents are taught to be suitable in. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair teaches that the composition may comprise propylene glycol (i.e. 1,2-propanediol, reads on propanediol) [0065] but does not explicitly teach the amount of propylene glycol present in the composition. Mahmood teaches that the composition may comprise an organic solvent, such as propylene glycol, in the amount of from 0.5% to 99.99%. (See above discussion of glycerin for explanation of amount.) It would be obvious to apply the teachings of Mahmood to Auclair, and include propylene glycol, an organic solvent, in an amount that organic solvents are taught to be suitable in. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair does not explicitly teach a composition comprising hydrogenated ethylhexyl olivate and hydrogenated olive oil unsaponifiables in the instantly claimed amounts. Minoggio teaches skin-conditioning compositions [Abstract] and further teaches that Plantasens Olive LD, which comprises of hydrogenated ethylhexyl olivate and hydrogenated olive oil unsaponifiables, is suitable for use in such compositions as an emollient [see, e.g., 0177 and 0183]. Minoggio teaches exemplary compositions comprising of Plantasens Olive LD in the range of from 0.5% to 5% [0177; 0203]. Auclair teaches that the composition may comprise of emollients [0066]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Thus, it would be obvious to modify the teachings of Auclair with that of Minoggio, to include emollients such as hydrogenated ethylhexyl olivate and hydrogenated olive oil unsaponifiables in the composition of Auclair, in the amounts that hydrogenated ethylhexyl olivate and hydrogenated olive oil unsaponifiables are taught to be suitable in. The ranges taught by the prior art overlap with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05. Furthermore, differences in concentration will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP 2144.05.
Auclair does not explicitly teach a composition comprising polyglyceryl-6 distearate, jojoba esters, polyglyceryl-3 beeswax, and cetyl alcohol in the instantly claimed amounts. Wu teaches a topical composition comprising oil-in-water emulsion for caring of skin [Abstract]. Wu teaches that the composition preferably comprises a non-ionic surfactant of ester type comprising a mixture of polyglyceryl-6 distearate, jojoba esters, polyglyceryl-3 beeswax, and cetyl alcohol [claim 6]. The non-ionic surfactant mixture comprises at least 50% polyglyceryl-6 distearate, 5 to 30% jojoba esters, 3 to 15% by weight of polyglyceryl-3 beeswax, and 3 to 15% by weight of cetyl alcohol [pg. 9]. Wu further teaches that the non-ionic surfactant mixture may be present in the composition in the amount of from 0.5% to 5% [pg. 24]. This equates to the amounts of at least 0.25% of polyglyceryl-6 distearate, from 0.025% to 1.5% of jojoba esters, from 0.015% to 0.75% of polyglyceryl-3 beeswax, and from 0.015% to 0.75% of cetyl alcohol, by weight of the skincare composition. Auclair teaches that its composition may comprise of surfactants [0066]. Wu teaches that this surfactant mixture is particularly advantageous for an oil-in-water skincare emulsion [pg 8]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Thus, it would be obvious to modify the teachings of Auclair with that of Wu, to include the surfactant mixture of Wu in the composition of Auclair, in the amounts that are taught to be suitable for the surfactant. The ranges taught by the prior art overlap with and make obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair does not explicitly teach a composition comprising cetearyl olivate and sorbitan olivate in the instantly claimed amounts. Auclair teaches that the composition may comprise an oil-in-water emulsion [0071]. Lintner teacher a cosmetic composition for improving the condition of skin [Abstract] comprising an oil-in-water emulsion carrier [0241], wherein the emulsion comprises from about 0.1% to about 10% of an emulsifier [0243]. Lintner further teaches that suitable emulsifiers include cetearyl olivate and sorbitan olivate [0289]. Auclair teaches that the composition may comprise an oil-in-water emulsion [0071]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Thus, it would be obvious to modify the teachings of Auclair with that of Lintner, to include cetearyl olivate and sorbitan olivate as emulsifiers to formulate the oil-in-water emulsion composition of Auclair. It would be obvious to include cetearyl olivate and sorbitan olivate in the amounts that emulsifiers are taught to be suitable in. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair does not explicitly teach a composition comprising hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer. Minoggio teaches skin-conditioning compositions [Abstract] and further teaches that such compositions may comprise a viscosity modifying substance such as a thickening polymer [0143-0144]. The thickening polymer may be hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer [0145]. It would be obvious to one of ordinary skill to modify the teachings of Auclair with that of Minoggio to include a thickening polymer such as hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer in the composition of Auclair. A skilled artisan would be motivated to make this modification in order to thicken the skincare composition and prevent dripping for improved user convenience [0143]. Minoggio does not explicitly teach a suitable amount for hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer, however, in exemplary compositions, teaches thickening polymers in the amounts of 0.1% to 1.5% [0196; 0181]. It would be obvious to include hydroxyethyl acrylate/sodium acryloyldimethyl taurate copolymer in an amount that thickening polymers are taught to be suitable in. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05. Furthermore, differences in concentration will generally 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). In the instant case, it would be obvious to a skilled artisan to adjust the amount of thickener accordingly to achieve a desired viscosity for improved user experience.
Auclair does not explicitly teach a composition comprising sunflower oil in the instantly claimed amounts. Fischer teaches a cosmetic, dermatological composition comprising an oil-in-water emulsion [0147]. The composition may comprise an oily substance or wax, including oils of plant origin such as jojoba oil and sunflower oil [0104]. Combining equivalents known for the same purpose is obvious. MPEP 2144.06. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Thus, it would be obvious to add sunflower oil to the composition of claim 1 comprising jojoba oil, as they are as they are taught to be equivalents. Fischer further teaches that the oily substance may be present in the amount of 0.001% to 60% of the composition by weight. It would be obvious to apply the teachings of Fischer to Auclair, and include sunflower oil, an oily substance, in an amount that oily substances are taught to be suitable in. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair teaches that the composition may comprise of an emollient such as caprylic/capric triglyceride [00067]. Auclair does not explicitly disclose caprylic/capric triglyceride in the instantly claimed amounts. Mahmood teaches that lotions and creams may be formulated as emulsions [0047], wherein the composition may comprise from about 1% to about 30% of an emollient [0047]. It would be obvious to apply the teachings of Mahmood to Auclair, and include caprylic/capric triglyceride, an emollient, in an amount that emollients are taught to be suitable in. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair teaches that composition may comprise of antimicrobial preservatives such as imidazolidinyl urea [0069], but does not explicitly teach phenoxyethanol in the instantly claimed amounts. Lintner teacher a cosmetic composition for improving the condition of skin [Abstract] comprising an oil-in-water emulsion carrier, that may further comprise of antimicrobial actives (reads on preservative) in the amount of about 0.001% to about 10% [0159]. Lintner further teaches that a suitable antimicrobial active is phenoxyethanol [0165]. It would be obvious to apply the teachings of Lintner to Auclair, and include phenoxyethanol, an antimicrobial active, in an amount that antimicrobial actives are taught to be suitable in. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair does not explicitly teach a topical composition comprising 1,2-hexanediol and decylene glycol. The composition of claim 1 comprising 1,2-hexanediol was made obvious above in the rejection of claims 10 and 13 above, over Auclair in view of Abe; said discussion will not be repeated herein. Abe teaches that component (D) of the composition may comprise of 1,2-hexanediol and 1,2-decanediol (i.e. decylene glycol). Abe teaches that 1,2-hexanediol and 1,2-decanediol are equivalent polyhydric alcohols suitable for the surfactant phase (D) of the composition. Combining equivalents known for the same purpose is obvious. MPEP 2144.06. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Thus, it would be obvious to add 1,2-decanediol to the composition comprising 1,2-hexanediol as they are taught to be equivalents. Abe further teaches that the total amount of component (D) in the composition may be from 1% to 70% by weight of the composition [0117]. Abe does not explicitly disclose the instantly claimed amounts of 0.075% of 1,2-hexanediol and 0.225% of decylene glycol, however the total amount of these two components is 0.3%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Furthermore, differences in concentration will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05.
Auclair teaches a composition comprising dihydrokaempferol [claim 4] in the amount of 0.2% to 3% [0055]. The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Auclair does not explicitly teach a composition comprising dimethyl isosorbide. The composition of claim 1 comprising dimethyl isosorbide was made obvious above in the rejection of claim 10, over Auclair in view of Mahmood; said discussion will not be repeated herein. Mahmood further teaches that organic solvents, such as dimethyl isosorbide, may be present in the amount of from 0.5% to 99.99%. (See above discussion of glycerin for explanation of amount.) The range taught by the prior art overlaps with and makes obvious the claimed ranges of instant claims 43 and 44. MPEP 2144.05.
Conclusion
No claims are allowed.
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/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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