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 .
Specification
The disclosure is objected to because of the following informalities: the graphical representations of formulas I and I’ on pages 1, 9, 12, and 29 are unclear with what appears to be shadowed or misaligned overlying duplicates of each structure. Formulas II and II’ on page 14 have the same issue The graphical representations of structures 2-4 in the table on page 4 are faint in color and structure 3 appears to overrun its cell on the table. Structures 2-4 in the table on page 15 overrun their cells and are faint in color. Structures 10-11 and 23 in the table spanning pages 17 and 18 overrun their cells. Structures 2-4 in the table on page 19 overrun their cells and are faint in color. Structures 7 and 11 in the table spanning page 19 overrun their cells. Structure 19 in the table on page 22 overruns its cell.
Appropriate correction is required.
Claim Objections
Claim 8 is objected to because of the following informalities: structures 1-3 are faint making them less clear than the other recited structures. 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 1-13 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.
The claims recite more than three dozen instances of indefinite recitations that include ‘such as’, ‘particularly’, ‘especially’, ‘better’, and ‘preferably’. These terms render the claims indefinite because it is unclear whether the limitations following the terms are part of the claimed invention. See MPEP § 2173.05(d).
Claim 7 defines variable substituents R1, R2, and R3 twice, with two different collections of options for each. Thus it is unclear which set of options for each variable is required.
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.
Claims 1-9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Marat (US PGPub No. 2013/0315847) in view of Du et al. (CN 109288844 – English translation relied upon for citations).
Marat teaches topical compositions for depigmenting/whitening/lightening skin composed of a thiopyridinone compound as the active as well as their application to skin for this purpose (see paragraphs 1 and 12; instant claims 1 and 11-12). The thiopyridinone compound is one or more of the tautomeric pair of general structures of the form
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where R1 and R2 embrace the scope of the instant R1 and R2 (see paragraphs 14-26). The compounds I and/or I’ of Marat are present at 0.01 to 10 wt% of the composition (see paragraph 84; instant claim 9). Preferred varieties of compound I are structure 2
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which corresponds to instant structure 1 and structure 12
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which corresponds instant structure 6 (see paragraphs 73 and 109; instant claim 8). Structure 2 provides instant R1 = hydrogen and instant R2 = C2 linear saturated alkyl and structure 12 provides instant R1 = hydrogen and R2 = C6 cycloalkyl (cyclohexyl) (see instant claims 1-8 and 13). While additional components known in the cosmetic art are envisioned, the presence of caffeine is not explicitly detailed.
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a preferred thiopyridinone of Marat for their composition in the form of structure 2 or structure 12 because they teach the structures as preferred selections. The application of the composition to skin to whiten skin would follow because this is the stated purpose of the composition. It additionally would have been obvious to add caffeine to the composition in light of Du et al. because it is effective as a skin whitening active. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-9 and 11-13 are obvious over Marat in view of Du et al.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Marat in view of Du et al. as applied to claims Marat in view of Du et al. above, and further in view of Marion et al. (US Patent No. 7,851,477).
Marat in view of Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the composition rendered obvious by Marat in view of Du et al. at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious. “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)” (see MPEP 2144.05). Therefore claims 1-13 are obvious over Marat in view of Du et al. and Marion et al.
Claims 1-9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Marat in view of Du et al. as applied to claims Marat in view of Du et al. above, and further as evidenced by Cho et al. (KR 20170122677 – English translation relied upon for citations) and Ikejiri et al. ((US Patent No. 5,605,892).
Marat in view of Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-9 and 11-13 are obvious over Marat in view of Du et al. as evidenced by Cho et al. and Ikejiri et al.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No. 9,138,392 in view of Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite thiopyridinone compounds present at 0.01 at 10 wt% of a cosmetic composition employed in a method of whitening/lightening/depigmenting skin via the topical application of the composition. Further, the patented claims recite compounds in accordance with instant claims 1-8. The presence of caffeine is not recited.
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add caffeine to the composition of the patented claims in light of Du et al. because it is effective as a skin whitening active. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-9 and 11-13 are obvious over claims 1-9 of US Patent No. 9,138,392 in view of Du et al.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No. 9,138,392 in view of Du et al. as applied to claims 1-9 and 11-13 above, and further in view of Marion et al.
Claims 1-9 of US Patent No. 9,138,392 in view of Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the modified patented composition at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-13 are obvious over claims 1-9 of US Patent No. 9,138,392 in view of Du et al. and Marion et al.
Claims 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No. 9,138,392 in view of Du et al. as applied to claims 1-9 and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claims 1-9 of US Patent No. 9,138,392 in view of Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-9 and 11-13 are obvious over claims 1-9 of US Patent No. 9,138,392 in view of Du et al. as evidenced by Cho et al. and Ikejiri et al.
Claims 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No. 11,052,028, claims 1-19 US Patent No. 12,226,506, or claims 1-15 of US Patent No. 12,521,333, each separately in view of Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a depigmenting/lightening cosmetic composition comprising thiopyridinone compounds present at proportions that meet or overlap with that instantly recited. The claims also recite a method of whitening/lightening/depigmenting skin via the topical application of the composition. Further, the patented claims recite compounds in accordance with instant claims 1-8. The presence of caffeine is not recited.
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add caffeine to the composition of the patented claims in light of Du et al. because it is effective as a skin whitening active. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-9 and 11-13 are obvious over claims 1-20 of US Patent No. 11,052,028, claims 1-19 US Patent No. 12,226,506, or claims 1-15 of US Patent No. 12,521,333, each separately in view of Du et al.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No. 11,052,028, claims 1-19 US Patent No. 12,226,506, or claims 1-15 of US Patent No. 12,521,333, each separately in view of Du et al. as applied to claims 1-9 and 11-13 above, and further in view of Marion et al.
Claims 1-20 of US Patent No. 11,052,028, claims 1-19 US Patent No. 12,226,506, or claims 1-15 of US Patent No. 12,521,333, each separately in view of Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the modified patented composition at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-13 are obvious over claims 1-20 of US Patent No. 11,052,028, claims 1-19 US Patent No. 12,226,506, or claims 1-15 of US Patent No. 12,521,333, each separately in view of Du et al. and Marion et al.
Claims 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No. 11,052,028, claims 1-19 US Patent No. 12,226,506, or claims 1-15 of US Patent No. 12,521,333, each separately in view of Du et al. as applied to claims 1-9 and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claims 1-20 of US Patent No. 11,052,028, claims 1-19 US Patent No. 12,226,506, or claims 1-15 of US Patent No. 12,521,333, each separately in view of Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-9 and 11-13 are obvious over claims 1-20 of US Patent No. 11,052,028, claims 1-19 US Patent No. 12,226,506, or claims 1-15 of US Patent No. 12,521,333, each separately in view of Du et al. as evidenced by Cho et al. and Ikejiri et al.
Claims 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Patent No. 12,653,769 in view of Marat and Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite thiopyridinone compounds present at 0.01 at 10 wt% of a cosmetic composition. Further, the patented claims recite compounds in accordance with instant claims 1-8. The presence of caffeine is not recited.
Marat teaches topical compositions for depigmenting/whitening/lightening skin composed of a thiopyridinone compound as the active as well as their application to skin for this purpose (see paragraphs 1 and 12). The thiopyridinone compound is one or more of the tautomeric pair of general structures of the form
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where R1 and R2 embrace the scope of the instant R1 and R2 as well as the R1 and R2 options for the patented claims (see paragraphs 14-26). The compounds I and/or I’ of Marat are present at 0.01 to 10 wt% of the composition (see paragraph 84). Preferred varieties of compound I are structure 2
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which corresponds to instant structure 1 and structure 12
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which corresponds instant structure 6, both of which are also recited by the patented claims as structures 1 and 6 (see paragraphs 73 and 109; instant claim 8). Structure 2 provides instant R1 = hydrogen and instant R2 = C2 linear saturated alkyl and structure 12 provides instant R1 = hydrogen and R2 = C6 cycloalkyl (cyclohexyl).
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add caffeine to the composition of the patented claims in light of Marat who teach the utility of their thiopyridinone compounds as whitening/lightening skin actives and Du et al. because it is effective as a skin whitening active. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-9 and 11-13 are obvious over claims 1-14 of US Patent No. 12,653,769 in view of Marat and Du et al.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Patent No.12,653,769 in view of Marat and Du et al. as applied to claims 1-9 and 11-13 above, and further in view of Marion et al.
Claims 1-14 of US Patent No.12,653,769 in view of Marat and Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the modified patented composition at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-13 are obvious over claims 1-14 of US Patent No.12,653,769 in view of Marat, Du et al., and Marion et al.
Claims 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Patent No.12,653,769 in view of Marat and Du et al. as applied to claims 1-9 and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claims 1-14 of US Patent No.12,653,769 in view of Marat and Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-9 and 11-13 are obvious over claims 1-14 of US Patent No.12,653,769 in view of Marat and Du et al. as evidenced by Cho et al. and Ikejiri et al.
Provisional
The following are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/877253 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite thiopyridinone compounds in combination with caffeine at 0.01 to 15 wt% in a cosmetic composition. The compositions are recited to whiten skin and the thiopyridone compound is present at 0.01 to 10 wt%. Both sets of claims apply the composition to whiten skin. Further, the copending claims recite compounds in accordance with instant claims 1-8. While a single lineage of claims does not recite embodiments that meets limitations in each claim, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the composition broadly and apply the resulting embodiments to the skin as whitening compositions because the claims recite this utility for its compositions. The preparation of the composition implicitly performs the method step of instant claim 13. The copending claims are silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method much lie a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-13 are obvious over claims 1-15 of copending Application No. 18/877253.
Claims 1-9 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 12, and 14-20 of copending Application No. 17/844939 (reference application), claims 1-19 and 22 of copending Application No. 18/392567 (reference application), or claims 1-15 of copending Application No. 18/874784 (reference application), each separately in view of Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a depigmenting/lightening cosmetic composition comprising thiopyridinone compounds present at proportions that meet or overlap with that instantly recited. The claims also recite a method of whitening/lightening/depigmenting skin via the topical application of the composition. Further, the copending claims recite compounds in accordance with instant claims 1-8. The presence of caffeine is not recited.
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add caffeine to the composition of the copending claims in light of Du et al. because it is effective as a skin whitening active. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-9 and 11-13 are obvious over claims 1-10, 12, and 14-20 of copending Application No.17/844939, claims 1-19 and 22 of copending Application No. 18/392567, or claims 1-15 of copending Application No. 18/874784, each separately in view of Du et al.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 12, and 14-20 of copending Application No. 17/844939, claims 1-19 and 22 of copending Application No. 18/392567, or claims 1-15 of copending Application No. 18/874784, each separately in view of Du et al. as applied to claims 1-9 and 11-13 above, and further in view of Marion et al.
Claims 1-10, 12, and 14-20 of copending Application No. 17/844939, claims 1-19 and 22 of copending Application No. 18/392567, or claims 1-15 of copending Application No. 18/874784, each separately in view of Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the composition of the modified copending claims at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-13 are obvious over claims 1-10, 12, and 14-20 of copending Application No. 17/844939, claims 1-19 and 22 of copending Application No. 18/392567, or claims 1-15 of copending Application No. 18/874784, each separately in view of Du et al. and Marion et al.
Claims 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 12, and 14-20 of copending Application No. 17/844939, claims 1-19 and 22 of copending Application No. 18/392567, or claims 1-15 of copending Application No. 18/874784, each separately in view of Du et al. as applied to claims 1-9 and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claims 1-10, 12, and 14-20 of copending Application No. 17/844939 or claims 1-19 and 22 of copending Application No. 18/392567, each separately in view of Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-9 and 11-13 are obvious over claims 1-10, 12, and 14-20 of copending Application No. 17/844939, claims 1-19 and 22 of copending Application No. 18/392567, or claims 1-15 of copending Application No. 18/874784, each separately in view of Du et al. as evidenced by Cho et al. and Ikejiri et al.
Claims 1-4, 6-9, and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/257731 (reference application), each separately in view of Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a depigmenting/lightening cosmetic composition comprising thiopyridinone compounds present at proportions that overlap with that instantly recited. Further, the copending claims recite compounds in accordance with instant claims 1-4 and 6-8. The presence of caffeine is not recited.
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add caffeine to the composition of the copending claims in light of Du et al. because it is effective as a skin whitening active. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-4, 6-9, and 11-13 are obvious over claims 1-15 of copending Application No. 18/257731 in view of Du et al.
Claims 1-4 and 6-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/257731 in view of Du et al. as applied to claims 1-4, 6-9, and 11-13 above, and further in view of Marion et al.
Claims 1-15 of copending Application No. 18/257731 in view of Du et al. render obvious the limitations of instant claims 1-4, 6-9, and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the composition of the modified copending claims at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-4 and 6-13 are obvious over claims 11-15 of copending Application No. 18/257731in view of Du et al. and Marion et al.
Claims 1-4, 6-9, and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/257731 in view of Du et al. as applied to claims 1-4, 6-9, and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claims 1-15 of copending Application No. 18/257731 in view of Du et al. render obvious the limitations of instant claims 1-4, 6-9, and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-4, 6-9, and 11-13 are obvious over claims 1-15 of copending Application No. 18/257731 in view of Du et al. as evidenced by Cho et al. and Ikejiri et al.
Claims 1-4, 6-9, and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 34-42 and 54-67 of copending Application No. 16/061908 (reference application) in view of Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a method of depigmenting/lightening skin comprising applying a cosmetic composition comprising thiopyridinone compounds present at proportions that meets those instantly recited. Further, the copending claims recite compounds in accordance with instant claims 1-4 and 6-8. The presence of caffeine is not recited.
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add caffeine to the composition of the copending claims in light of Du et al. because it is effective as a skin whitening active. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-4, 6-9, and 11-13 are obvious over claims 34-42 and 54-67 of copending Application No. 16/061908 in view of Du et al.
Claims 1-4 and 6-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 134-42 and 54-67 of copending Application No. 16/061908 in view of Du et al. as applied to claims 1-4, 6-9, and 11-13 above, and further in view of Marion et al.
Claims 34-42 and 54-67 of copending Application No. 16/061908 in view of Du et al. render obvious the limitations of instant claims 1-4, 6-9, and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the composition of the modified copending claims at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-4 and 6-13 are obvious over claims 34-42 and 54-67 of copending Application No.16/061908 in view of Du et al. and Marion et al.
Claims 1-4, 6-9, and 11-13 provisionally are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 34-42 and 54-67 of copending Application No. 16/061908 in view of Du et al. as applied to claims 1-4, 6-9, and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claims 34-42 and 54-67 of copending Application No. 16/061908 in view of Du et al. render obvious the limitations of instant claims 11-4, 6-9, and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-4, 6-9, and 11-13 are obvious over claims 34-42 and 54-67 of copending Application No. 16/061908 in view of Du et al. as evidenced by Cho et al. and Ikejiri et al.
Claims 1-9 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/990788 (reference application) in view of Marat and Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite thiopyridinone compounds present at 0.05 at 5 wt% of a cosmetic composition. The copending claims recite 2-mercaptonicotinoyl glycine as a thiopyridinone which meets the limitations of instant formula I where R1 = hydrogen and R2 = C1 alkyl substituted with -C(O)-O-R3 and R3 = hydrogen. The presence of caffeine is not recited.
Marat teaches topical compositions for depigmenting/whitening/lightening skin composed of a thiopyridinone compound as the active as well as their application to skin for this purpose (see paragraphs 1 and 12). The thiopyridinone compound is one or more of the tautomeric pair of general structures of the form
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where R1 and R2 embrace the scope of the instant R1 and R2 and the 2-mercaptonicotinoyl glycine of the copending claims (see paragraphs 14-26). The compounds I and/or I’ of Marat are present at 0.01 to 10 wt% of the composition (see paragraph 84). Preferred varieties of compound I are structure 2
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which corresponds to instant structure 1 and structure 12
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which corresponds instant structure 6 (see paragraphs 73 and 109; instant claim 8). Structure 2 provides instant R1 = hydrogen and instant R2 = C2 linear saturated alkyl and structure 12 provides instant R1 = hydrogen and R2 = C6 cycloalkyl (cyclohexyl).
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add caffeine to the composition of the copending claims in light of Marat who teach the utility of their thiopyridinone compounds as whitening/lightening skin actives and Du et al. because it is effective as a skin whitening active. It also would have been obvious to select a preferred thiopyridinone of Marat as a brightener as compounds known to induce such an effect. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13 and application to skin would have been obvious because it is the intended use for such composition. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-9 and 11-13 are obvious over claims 1-20 of copending Application No. 18/990788 in view of Marat and Du et al.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/990788 in view of Marat and Du et al. as applied to claims 1-9 and 11-13 above, and further in view of Marion et al.
Claims 1-20 of copending Application No. 18/990788 in view of Marat and Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the composition of the modified copending claims at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-13 are obvious over claims 1-20 of copending Application No. 18/990788 in view of Marat, Du et al., and Marion et al.
Claims 1-9 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/990788 in view of Marat and Du et al. as applied to claims 1-9 and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claims 1-20 of copending Application No. 18/990788 in view of Marat and Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-9 and 11-13 are obvious over claims 1-20 of copending Application No. 18/990788 in view of Marat and Du et al. as evidenced by Cho et al. and Ikejiri et al.
Claims 1-9 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/652169 (reference application) in view of Marat and Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite thiopyridinone compounds present in a depigmenting/whitening/lightening cosmetic composition that is applied to keratin. The scope of thiopyridinone compounds embrace those instantly claimed. The presence of caffeine is not recited.
Marat teaches topical compositions for depigmenting/whitening/lightening skin composed of a thiopyridinone compound as the active as well as their application to skin for this purpose (see paragraphs 1 and 12). The thiopyridinone compound is one or more of the tautomeric pair of general structures of the form
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where R1 and R2 embrace the scope of the instant R1 and R2 and the 2-mercaptonicotinoyl glycine of the copending claims (see paragraphs 14-26). The compounds I and/or I’ of Marat are present at 0.01 to 10 wt% of the composition (see paragraph 84). Preferred varieties of compound I are structure 2
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which corresponds to instant structure 1 and structure 12
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which corresponds instant structure 6 (see paragraphs 73 and 109; instant claim 8). Structure 2 provides instant R1 = hydrogen and instant R2 = C2 linear saturated alkyl and structure 12 provides instant R1 = hydrogen and R2 = C6 cycloalkyl (cyclohexyl).
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select preferred compounds an proportions as detailed by Marat amongst the thiopyridinone compounds of the copending claims because of their utility as whitening/lightening skin actives. It also would have been obvious to add caffeine to the composition in light of Du et al. because it is effective as a skin whitening active. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13 and application to skin would have been obvious because it is the intended use for such composition. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-9 and 11-13 are obvious over claim 1 of copending Application No. 18/652169in view of Marat and Du et al.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/652169 in view of Marat and Du et al. as applied to claims 1-9 and 11-13 above, and further in view of Marion et al.
Claim 1 of copending Application No. 18/652169 in view of Marat and Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the composition of the modified copending claims at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-13 are obvious over claim 1 of copending Application No. 18/652169 in view of Marat, Du et al., and Marion et al.
Claims 1-9 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/652169 in view of Marat and Du et al. as applied to claims 1-9 and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claim 1 of copending Application No. 18/652169 in view of Marat and Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-9 and 11-13 are obvious over claim 1 of copending Application No. 18/652169 in view of Marat and Du et al. as evidenced by Cho et al. and Ikejiri et al.
Claims 1-9 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/875814 (reference application) in view of Marat and Du et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite thiopyridinone compounds present at 0.01 to 10 wt% of a cosmetic composition. The copending claims recite a number of the recited structures in instant claim 8 thereby also meet the limitation of instant claims 1-7 as well. The presence of caffeine is not recited.
Marat teaches topical compositions for depigmenting/whitening/lightening skin composed of a thiopyridinone compound as the active as well as their application to skin for this purpose (see paragraphs 1 and 12). The thiopyridinone compound is one or more of the tautomeric pair of general structures of the form
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where R1 and R2 embrace the scope of the instant R1 and R2 and the 2-mercaptonicotinoyl glycine of the copending claims (see paragraphs 14-26). The compounds I and/or I’ of Marat are present at 0.01 to 10 wt% of the composition (see paragraph 84). Preferred varieties of compound I are structure 2
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which corresponds to instant structure 1 and structure 12
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which corresponds instant structure 6 (see paragraphs 73 and 109; instant claim 8). Structure 2 provides instant R1 = hydrogen and instant R2 = C2 linear saturated alkyl and structure 12 provides instant R1 = hydrogen and R2 = C6 cycloalkyl (cyclohexyl).
Du et al. teach caffeine as a topical skin whitening/lightening active alone or in combination with other whitening ingredients (see abstract). They detail the action of whitening via its tyrosinase inhibiting activity and note its efficacy to be similar or superior to arbutin, a known whitening agent, in this regard (see paragraphs 7-10 and 75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add caffeine to the composition of the copending claims in light of Marat who teach the utility of their thiopyridinone compounds as whitening/lightening skin actives and Du et al. because it is effective as a skin whitening active. It also would have been obvious to select a preferred thiopyridinone of Marat as a whitening/depigmenting compounds known to induce such an effect. “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) (see MPEP 2144.06). The preparation of the composition implicitly performs the method step of instant claim 13 and application to skin would have been obvious because it is the intended use for such composition. Du et al. is silent in regard to the caffeine photostabilizing thiopyridinone compounds. However, the recitation “in order to photostabilize the (1) compound(s)” in instant claim 13 states a goal or intent of the method, much like a “whereby” clause. "A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.") (MPEP 2111.04). Thus the recitation concerning the intent to photostabilize the (1) compound(s) also is not given weight. Therefore claims 1-9 and 11-13 are obvious over claims 1-15 of copending Application No. 18/875814 in view of Marat and Du et al.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/875814 in view of Marat and Du et al. as applied to claims 1-9 and 11-13 above, and further in view of Marion et al.
Claims 1-15 of copending Application No. 18/875814 in view of Marat and Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active. An instantly claimed concentration of caffeine is not explicitly detailed.
Marion et al. teach the topical cosmetic application of caffeine to skin so as to lessen skin coloration (see abstract and column 2 likens 28-34). They detail the application of a composition including caffeine at 0.3 wt% as the active resulting in lightening of skin, where additional examples with 1 wt% and 0.1 wt% are also detailed (see examples 1 and 2). They more generally teach caffeine present at 0.05 to 3 wt% of the composition (see column 3 lines 53-62; instant claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the caffeine in the composition of the modified copending claims at a proportion known or expected to achieve skin whitening/lightening. Thus the addition of caffeine at a concentration taught by Marion et al. for this purpose would have been obvious. The result is discrete proportions that meet the instant claim limitations and a range of proportions that overlap with the instantly claimed range, thereby rendering the claimed range obvious (see MPEP 2144.05). Therefore claims 1-13 are obvious over claims 1-15 of copending Application No. 18/875814 in view of Marat, Du et al., and Marion et al.
Claims 1-9 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/875814 in view of Marat and Du et al. as applied to claims 1-9 and 11-13 above, and further as evidenced by Cho et al. and Ikejiri et al.
Claims 1-15 of copending Application No. 18/875814 in view of Marat and Du et al. render obvious the limitations of instant claims 1-9 and 11-13, where caffeine is included as a skin whitening/lightening active along with instantly claimed thiopyridinone compounds. While silent in regard to caffeine conferring photostability to the thiopyridinone compound, both Ikejiri et al. and Cho et al. teach that caffeine was known as a photostabilizing compound (see Cho et al. abstract and paragraph 70; Ikejiri et al. abstract column 4 lines 40-column 5 lines 34). Thus stability against light exposure would have been expected from the modified composition due to the presence of caffeine (see instant claim 13). Therefore claims 1-9 and 11-13 are obvious over claims 1-15 of copending Application No. 18/875814 in view of Marat and Du et al. as evidenced by Cho et al. and Ikejiri et al.
Conclusion
No claim is allowed.
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/CARALYNNE E HELM/Examiner, Art Unit 1615
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