DETAILED ACTION
Receipt of the amended claims, amended specification, and Applicant’s remarks filed on August 4, 2025 is acknowledged.
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 .
Status of the Claims
Claims 1-6, 8-11, and 13-22 have been amended.
Claims 7 and 12 have been cancelled. Accordingly, claims 1-6, 8-11 and 13-22 are pending and under examination.
Information Disclosure Statement
Receipt of the IDS filed on October 25, 2024 is acknowledged. A signed copy is attached hereto.
Claim Objections
Claims 1, 15, and 18-21 are objected to because of the following informalities:
In claim 1, line 11 recites “also mixtures thereof”;
In claim 15, line 4 recites “also isomers thereof”;
The recitation of “also” is considered unnecessary and should be deleted to improve readability.
Additionally, claims 18-21 recite the inclusion of additional components (i.e. water, colorant, and an oily phase). In order to improve readability and clarity, it is suggested the claim be amended to recite “further comprising…” when added a component.
Appropriate correction is required.
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 1-22 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 1, 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 1 recites the broad recitation, “A composition for making up and/or caring for the skin and/or the lips” followed by the narrower limitation, “preferably the lips”. Additionally, the broad recitation, “A composition for making up and/or caring for the skin and/or the lips” is followed by the narrower limitation, “particularly a make-up composition”; the broad recitation, “at least one compound Y chosen from those capable of forming at least two hydrogen bonds with said phenol groups of the polyphenol X” is followed by the narrower limitation “which is preferably nonionic, polyoxyethylenated and/or polyoxypropylenated and/or (poly)glycerolated”; and the broad recitation, “at least one C2-C8” is followed by the narrower limitation, “preferably C2-C5”; and the broad limitation, “monoalcohol” followed by the narrower limitation, “ethanol”.
Regarding claim 22, the broad recitation, “a method for making up and/or caring for the skin and/or lips” is followed by the narrower limitation, “in particular the lip.
The claims 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.
Dependent claims 2-22 have been included in this rejection as they do not remedy the indefinite issues recited in claim 1.
Claim Rejections - 35 USC § 102
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 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, 4-5, 8-10, 14-15, 20 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel, Rose Foot Deo+, July 2007; cited on IDS dated October 25, 2024 (hereafter as “Rose Foot Deo+”) as evidenced by Oh et al. (Apple seed extract in cancer treatment: assessing its effects on liver damage and Recovery, Curr Issues Mol. Biol, 2026 Jan 1; 48(1):55, ppl 1-16; hereafter as “Oh”).
The claimed invention is drawn to a composition for making up and/or caring for the skin and/or the lips, preferably the lips, more particularly a make-up composition, comprising a) at least one polyphenol X comprising at least two different phenol groups; b) at least one compound Y chosen from those capable of forming at least two hydrogen bonds with said phenol groups of the polyphenol X, which is preferably nonionic, polyoxyethylenated and/or polyoxypropylenated and/or (poly)glycerolated; c) at least one C2-C8, preferably C2-C5, monoalcohol, preferably ethanol; d) at least one acid chosen from phytic acid, acetic acid, at least one hydroxylated carboxylic acid chosen from C6 aromatic or C2-C10 non-aromatic monocarboxylic or polycarboxylic acids, bearing at least one OH radical in the alpha or beta position of a carboxylic group that is free or engaged in a heterocycle; ferulic acid; and also mixtures thereof and a method of using thereof.
Regarding claim 1, Rose Foot Deo+ discloses a deodorizing foot cream. The product ingredients disclosed include:
Tannic acid, apple seed extract, rooibos extract (at least one polyphenol X);
Polysorbate 80, polyglyceryl-2-stearate (at least one compound Y);
Ethanol (at least one C2-C8 monoalcohol); and
Lactic acid (a C2-C10 non-aromatic monocarboxylic acid) (pages 1-2).
The instant claims are drawn to a composition of matter, therefore, the recitation of “for making up and/or caring for the skin and/or lips” does not hold patentable weight.
Regarding claim 4, it is noted apple seed extract is also a rich source of procyanidins as evidenced by Oh.
Regarding claim 5, as noted above, tannic acid is included in the product.
Regarding claims 8-9, as noted above, polysorbate 80 is included in the product.
Regarding claim 10, as noted above, polyglycerol-2-stearate is included in the product.
Regarding claims 14-15, as noted above, lactic acid is disclosed.
Regarding claim 20, the composition is disclosed as a cream which inherently contains an oily phase.
Regarding claim 22, the composition is disclosed to be a foot cream to care for dry, cracked soles (Product Description, page 1).
Thus, the teachings of Mintel’s Rose Foot Deo+ render the claims anticipated.
Claims 1-6, 8-10, 15-16 and 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei (DE 102018133059 A1, June 25, 2020; cited on IDS dated October 25, 2024, hereafter as “Wei”) as evidenced by de la Luz Cadiz-Gurrea et al. (Pine Bark and Green Tea Concentrated Extracts: Antioxidant Activity and Comprehensive Characterization of Bioactive Compounds by HPLC-ESI-QTOF-MS, Int J Mol Sci, 2014 Nov 6;15(11), pp. 20382-20402; hereafter as “de la Luz Cadiz-Gurrea”).
The claimed invention is described above.
Regarding claim 1, Wei discloses a cosmetic composition comprising:
5-10% jujube seed extract (at least one polyphenol);
0.1-1% cortax phellodendri extract (at least one polyphenol);
5-10% green tea extract (at least one polyphenol);
2-20% safflower extract (at least one polyphenol);
2-3% ascorbic acid (vitamin C) (at least one acid);
12-17% olive oil (oily phase);
4-6% isopropyl palmitate;
0.4-0.6% polyoxyethylene nonylphenol ether (at least one compound Y);
4- 6% glycerol;
0.08-0.12% methyl 4-hydroxybenzoate;
6-8% ethanol (at least one C2-C5 monoethanol) and
the balance deionized water (i.e. the deionized water is added until the total content is 100%) (paragraph [0007]).
Regarding claims 2-3 and 5, as noted above, green tea extract is disclosed. Green tea extra is highly concentrated in polyphenols known as catechins including epigallocatechin and tannins including tannic acid.
Regarding claim 4, it is noted green tea extract is also a procyanidin as evidenced by de la Luz Cadiz-Gurrea.
Regarding claim 6, as noted above, the at least one polyphenol is found at a concentration of at least 14.1%.
Regarding claims 8-9, as noted above, polyoxyethylene nonylphenol ether is disclosed.
Regarding claims 15-16, as noted above, ascorbic acid is disclosed in the amount of 2-3%.
Regarding claim 20, as noted above, the composition comprises an oily phase.
Regarding claim 21, the composition does not disclose a volatile hydrocarbon-based oil, therefore, it would have less than or equal to 20% by weight, as recited in the instant claim. Applicant’s attention is directed to MPEP 2173.05(c)(II) which discloses some terms have been determined to have the following meanings in the factual situations of the reported cases: the term "up to" includes zero as a lower limit, In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974); and "a moisture content of not more than 70% by weight" reads on dry material, Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971).
Regarding claim 22, the composition according to Wei is used to reduce pigmentation during skin metabolism, whereby melanin is rapidly expelled from the skin by improving skin metabolism (paragraph [0003]).
Thus, the teachings of Wei render the claims anticipated.
Claims 1, 9-10, 14-15, 18-19 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel, Lip Gloss Stick, June 2016; cited on IDS dated October 7, 2001, hereafter as “Lip Gloss Stick”).
The claimed invention is described above.
Regarding instant claim 1, Lip Gloss Stick discloses a product which offers a delicate color with an elegant shine for supple, silky lips, featuring a nourishing formula (Product Description).
The product ingredients disclose:
Portulaca Pilosa extract (at least one polyphenol);
Polyglycerol-3 diisostearate (at least one compound Y);
Ethanol (at least one C2 to C8 monoalcohol); and
Citric acid and ascorbyl palmitate (a C2-C10 non-aromatic monocarboxylic acid) (pages 2-3).
Regarding claims 9-10, as noted above, Polyglycerol-3 diisostearate is disclosed.
Regarding claims 14-15, as noted above, citric acid and ascorbyl palmitate as disclosed.
Regarding claim 18, water is not disclosed in the list of ingredients, therefore, it would have less than 10% by weight as recited in the instant claim. Applicant’s attention is directed to MPEP 2173.05(c)(II) which discloses some terms have been determined to have the following meanings in the factual situations of the reported cases: the term "up to" includes zero as a lower limit, In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974); and "a moisture content of not more than 70% by weight" reads on dry material, Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971).
Regarding claim 19, the composition additionally comprises Red 6 and Red 7, which are colorants (page 2).
Regarding claim 22, as noted above, the product is disclosed to provide a delicate color with an elegant shine for supple, silky lips, featuring a nourishing formula.
Thus, the teachings of Mintel’s Lip Gloss Stick render the claims anticipated.
Claims 1, 8-9, 17 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheng et al. (US 2010/0233301 A1, Sep. 16, 2010, hereafter as “Cheng”).
The claimed invention is described above.
Regarding claim 1, Cheng discloses topical compositions comprising fermented extracts of traditional Chinese medicine ingredients (abstract).
Example 9 discloses:
0.003% Gingko biloba extract, 0.006% Polygonum cuspidatum extract; 0.012% Ganoderma lucidum fruiting body extract; 0.006% Senaginella tamariscina plant extract; 0.006% calendula officinalis flower extract, 0.006% centella asiatica plant extract; 0.006% scutellaria baicalensis root extract, 0.005% laminaria saccharina extract; 0.001% oryza sativa bran extract (at least one polyphenol)
0.008% Polysorbate 20 (at least one compound Y);
6.0% ethanol (at least one C2 to C8 monoalcohol);
0.086% phytic acid (at least one acid).
Regarding claims 8-9, as noted above, polysorbate 20 is disclosed in Example 9.
Regarding claim 17, as noted above, 0.1% phytic acid is disclosed in Example 9.
Regarding claim 22, the compositions of Cheng are disclosed as cosmetic compositions containing natural plant derived materials that may be applied topically to the skin to provide anti-acne, anti-oil, and anti-cellulite benefits. Plant-based cosmetic products that enhance the appearance of skin (paragraph 0003).
Thus, the teachings of Cheng render the claims anticipated.
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 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US 2010/0233301 A1, Sep. 16, 2010, hereafter as “Cheng”), as applied to claim 1 above.
The claimed invention is described above.
The teachings of Cheng are discussed above.
Cheng does not exemplify polysorbate is present in the amount of at least 1% in combination with the components a-d.
However, Example 9 discloses the preparation of three watery lotions one of which is Composition B which utilizes 1.00% polysorbate-20.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to optimize the percentage of compound Y, e.g., a polysorbate in the formulation of Cheng with a reasonable expectation of success. MEP 2144.05(II)(A) states, “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.’”. A skilled artisan would have been motivated to do so because the determination of a specific percentage having the optimum therapeutic effect is well within the level of one having ordinary skill in the art and it is “the normal desire of scientists or artisans to improve upon what is already generally known” (MPEP 2144.05(II)(A).
Thus, the teachings of Cheng render the instant claim prima facie obvious.
Claims 1, 8-9, 13, 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Iwao et al. (JP H0948708 A, Feb. 18, 1997, machine translation, hereafter as “Iwao”).
The claimed invention is described above.
Regarding claim 1, Iwao discloses cosmetic formulations stable at high humidity and high temperature having a high concentration of alcohol (abstract). The high alcohol concentration is a solution that contains greater than or equal to 50% by weight (abstract). The cosmetic preparation is in the form of a hair tonic, setting agent, a treatment agent, or a fleck and wrinkle preventing agent (abstract).
Ingredients can include herbal medicine extracts and polyphenol derivatives (paragraph [0004]).
Examples of alcohols include ethanol and propanol (at least one C2-C8 monoalcohol). Preferably, the composition is 70% weight or more of ethanol (paragraph [0005]).
Additional additives, such as ascorbic acid and citric acid (at least one acid) can be included (paragraph [0005]).
Example 5 discloses chamomile extract (a polyphenol), POE (40)monostearate (compound Y) and 72.6% ethanol.
Regarding claims 8-10, as noted above, POE (40)monostearate is included in example 5.
Regarding claim 13, as noted above, Example 5 discloses 72.6% ethanol.
Regarding claim 15, as noted above, ascorbic acid and citric acid can be included.
Regarding claim 22, as noted above, the cosmetic preparation is in the form of a hair tonic, setting agent, a treatment agent, or a fleck and wrinkle preventing agent (abstract).
While Iwao does not exemplify a composition comprising at least one acid as recited in the instant claims, Iwao does disclose it is suitable for inclusion is said formulations. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included it into the formulations of Iwao with a reasonable expectation of success because an acid such as ascorbic acid and citric acid is taught as suitable for the intended purpose (MPE 2144.07) and because it is well known that said acids provide antioxidant and pH adjusting properties.
Thus, the teachings of Iwao render the instant claims prima facie obvious.
Conclusion
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASEY HAGOPIAN whose telephone number is (571)272-6097. The examiner can normally be reached on M-F 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CASEY S HAGOPIAN/Examiner, Art Unit 1617
Prosecution Insights