DETAILED ACTION
Claims 1-17 are currently pending. Claims 1-16 are currently under examination.
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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on 07/06/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/06/2026.
Applicant’s election of second composition comprises ceramide, vitamin B and/or Vitamin B derivative, and extract of Ophiopogon japonicus; and the microencapsulation material comprises sugar-based emulsifier, co-emulsifier, a positively charged molecule and a solvent in the reply filed on 07/06/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
No claims are withdrawn as a result of the species election.
Priority
The instant application is a national stage entry of PCT/EP2023/025073, filed 02/16/2023, which claims priority to EP22020070.3, filed 02/18/2022.
Information Disclosure Statement
Applicant’s Informational Disclosure Statement, filed on 12/17/2024 and 01/17/2025 has been considered. Please refer to Applicant's copy of the 1449 submitted herein.
Claim Objections
Claim 13 is objected to because of the following informalities: Claim 13 recites “ceramide 3 (ceramide NP), also known as N-oloeoyl-4-hydroxysphinganine), wherein three recitations of different names of the same chemical component is redundant. Appropriate correction is required.
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.
Claim(s) 1, 7 and 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel (Face Fit Kit, Applicant provided).
Regarding claims 1 and 14-15, the limitation of a cosmetic compristion kit comprising at least two compositions, the first composition comprising a retinoid and extract of Centella asiatica and the second composition including at least one ingredient including vitamin B is met by Mintel teaching plus band to include Centella asiatica extract and retinyl palmitate, reading on compristion one and Minus band including Niacinamide, reading on vitamin B (pages 3-4).
Regarding claim 7, the limitation of wherein the extract of Centella asiatica comprises madecassoside is met by Mintel teaching the Plus band to contains Madecassoside. “Products of identical chemical composition can not 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).
Claim(s) 1, 9, 11 and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel Ampoule Kit (Ampoule Kit, Applicant provided).
Regarding claims 1, 9, 11 and 14-15, the limitation of a cosmetic compristion kit comprising at least two compositions, the first compristion comprising a retinoid and extract of Centella asiatica and a second composition comprising at least one ingredient selected from the group consisting of ceramide, vitamin B or a derivative thereof, extract of Ophiopogon Japonicus and mixtures thereof is met by Mintel Ampoule Kit teaching synergy composition including Retinyl Palmitate and Centella Asiatica Extract and the firming composition comprising niacinamide and ceramide NP (pages 3-4).
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, 8-9, 11 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mintel Ampoule Kit (Ampoule Kit, Applicant provided) in view of US 2017/0042784 and US 2005/0136085.
Regarding claims 1, 9, 11 and 14-15, the limitation of a cosmetic compristion kit comprising at least two compositions, the first compristion comprising a retinoid and extract of Centella asiatica and a second composition comprising at least one ingredient selected from the group consisting of ceramide, vitamin B or a derivative thereof, extract of Ophiopogon Japonicus and mixtures thereof is met by Mintel Ampoule Kit teaching synergy composition including Retinyl Palmitate and Centella Asiatica Extract and the firming composition comprising niacinamide and ceramide NP (pages 3-4).
Mintel Ampoule Kit does not specifically teach wherein the retinoid of the first composition is selected from the group consisting of retinol, retinol isomers, retinaldehyde and mixtures thereof (claim 2) the retinoid is present at a level of at least 0.5% by weight of the first composition (claim 5).
Mintel Ampoule Kit does not specifically teach wherein the retinoid of the first compositions is microencapsulated (claim 3) with a material selected from the group consisting of sugar-based emulsifier, co-emulsifier, a positively charged molecule, solvent and mixtures thereof (claim 4).
Mintel Ampoule Kit does not specifically teach Centella asiatica is present at a level of from 0.001 to 0.5% by weight of the first composition (claim 8).
The ‘784 publication teaches sugar-based delivery systems, co-emulsifiers and a positively charged molecule, oil, optional auxiliary materials and optional lipophilic active ingredients encapsulated to be used in personal care products including cosmetics. The composition is penetrating into the skin and is, depending on the active included, able to stabilize the substance and reduce its irritation potential (abstract, [0018]). Application is taught to skin [0015]. The oil soluble active is encapsulated [0024]. The active ingredient is selected from a list including retinol wherein the particles formed at 78.5 nm (Example 2).
The ’085 publication teaches reducing skin irritation normally elicited by exposure to irritant active compounds when the composition is in contact with the skin (abstract, [0004]). At least 0.1% by weight of extract of Centella Asiatica is taught [0006] wherein the anti-irritant is taught as present from at least 0.1 to 20% by weight [0014]. Retinoids are taught as present at up to 5% [0027]. Retinoids are taught to include retinol and its esters, retinal, retinoic acid and its derivatives [0023].
It would have been obvious to one of ordinary skill in the art to substitute a first active agent, retinyl palmitate, as taught by Mintel with a second active agent, retinol, as taught by the ‘085 publication with a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. M.P.E.P. §2144.07 states "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use retinol in the composition of Mintel as the ‘085 publication teaches retinoids include retinol and retinol esters, thus teaching the interchangeability of retinol and retinol palmitate. Additionally the ‘784 publication teaches the use of retinol and retinol palmitate and retinyl palmitate as active in skin compositions, thus teaching the interchangeability cosmetic compositions used in skin firming [0149].
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to encapsulate the retinol compounds as taught by the ‘784 publication as Mintel teaches the desire to encapsulate active ingredients wherein an active ingredient includes a retinol compound and the ’784 publication teaches specific methods and ingredients to encapsule active such as retinol. One of ordinary skill in the art before the filing date of the claimed invention would motivated to use the encapsulation as taught by the ‘784 publication because the ‘784 publication teaches the encapsulated active to penetrate the skin and be stabilized and reduce irritation potential, thus providing motivation to encapsule the retinol compound taught by Mintel.
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the amounts of Centella asiatica and retinoid as taught by the ‘085 publication in the composition taught by Mintel as Mintel teaches the inclusion of Centella asiatica and retinoid compounds and the ‘085 publication teaches known amounts of each to be used in compositions applied to the skin to avoid irritation. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use known concentration to be in contact with the skin and optimize to obtain the desired results as the ‘085 publication teaches the desire to avoid irritation and a range of the ingredients thus teaching an optimizable parameter. As MPEP 2144.05 recites “where 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 optimization”.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mintel Ampoule Kit, US 2017/0042784 and US 2005/0136085 as applied to claims 1-5, 8-9, 11 and 13-15 above, and further in view of US 20190374591.
As mentioned in the above 103 rejection, all the limitations of claims 1-5, 8-9, 11 and 13-15 are taught by the combination of Mintel, the ‘784 publication and the ‘085 publication.
The combination of references does not specifically teach an extract of Ophiopogon japonicus (claim 10) said extract from the root of the plant (claim 16).
The ‘591 publication teaches topical skincare compositions comprising centella asiatica (title) wherein at least one of the extracts is madecassic acid (abstract) for itch, redness, flaking, dryness and/or roughness of the skin [0001]. Plant extracts are taught to include leaves ([0020], [0039]-[0040]). The compositions may include retinoids such as retinol and retinyl palmitate [0085].
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use leave extract and madecassic in the composition of Mintel as Mintel teaches the inclusion of Centella asiatica extract and the ‘591 publication teaches Centella asiatica extract includes leaf extract to obtain madecassic. One of ordinary skill in the art before the filing date of the claimed invention would be motivated to obtain the extracts of the ‘591 publication for the composition of Mintel as the ’591 publication teaches treatment of itch, redness, flaking, dryness and roughness of the skin, thus motivating the specific extracts of leaf and madecassic in the compristion f Mintel taught to include extracts of centella asiatica.
Claim(s) 10 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mintel Ampoule Kit, US 2017/0042784 and US 2005/0136085 as applied to claims 1-5, 8-9, 11 and 13-15 above, and further in view of US 2015/0245991.
As mentioned in the above 103 rejection, all the limitations of claims 1-5, 8-9, 11 and 13-15 are taught by the combination of Mintel, the ‘784 publication and the ‘085 publication.
The combination of references does not specifically teach an extract of Ophiopogon japonicus (claim 10) and said extract is achieved from the root of the plant (claim 16).
The ‘991 publication teaches anti-aging compristion for dermal application (abstract) for skin firming, reduction of “crow’s feet”, skin moistening and discoloration reduction [0006]. Ophiopogon japonicus root extract is taught ([0108], Table 1). Ophiopogon japonicus (monodo grass) at between about 0.1 w/w and about 3 w/w%, which is beneficial in the moisturizing of membranes, when used on the skin to moisturize the skin [0050].
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use Ophiopogon japonicus as taught by the ‘991 publication in the firming compristion taught by Mintel as the ‘991 publication teaches the use of Ophiopogon japonicus root extra in skin care compristion to provide a moisturizing effect to the skin and Mintel teaches compositions to be applied to the skin containing plant extract, thus providing a motivation for moisturizing and expectation of success as the ‘991 publication teaches plant extracts and Mintel includes plant extracts.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mintel Ampoule Kit, US 2017/0042784 and US 2005/0136085 as applied to claims 1-5, 8-9, 11 and 14-15 above, and further in view of US 2012/0263671.
As mentioned in the above 103 rejection, all the limitations of claims 1-5, 8-9, 11 and 14-15 are taught by the combination of Mintel, the ‘784 publication and the ‘085 publication.
The combination of references does not specifically teach ceramide 6 (ceramide AP).
The ‘671 publication teaches natural ceramides is taught to include ceramide NP and ceramide AP [0039]. The cosmetic compositions is taught to be used on the skin and provide no stickiness (abstract, [0003], [0037]).
It would have been obvious to one of ordinary skill in the art to substitute a first ceramide, ceramide NP, as taught by Mintel with a second ceramide, ceramide AP, as taught by the ‘671 publication with a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. M.P.E.P. §2144.07 states "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use ceramide AP in place of ceramide NP with a reasonable expectation of success as the ‘671 publication teaches the interchangeability of natural ceramides include ceramide AP and ceramide NP in cosmetic compositions applied to the skin.
Conclusion
No claims are allowed.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm.
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/LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613
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