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 .
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 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.
Claim Status
Claims 1-15 are pending and are examined on the merits in this prosecution.
CLAIM REJECTIONS
Indefiniteness Rejection
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.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 8 is rejected as indefinite since it is unclear from the claim or the Specification what is the difference between a “skin care ingredient” and a “skin care cosmetic active.” As set forth in MPEP 2173.05(a):
"While we have held many times that a patentee can act as his own lexicographer to specifically define terms of a claim contrary to their ordinary meaning," in such a situation the written description must clearly redefine a claim term "so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine that claim term."
In the instant case, the applicant has not provided a clear definition of the term “skin care cosmetic active” that would differentiate the term from “skin care ingredient.” As such, for the purpose of this examination, the terms are considered to be interchangeable.
Anticipation Rejection
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.
1) Claims 1-4, 7-9, and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Provost (US 2009/0275630 A1).
Provost teaches the following composition (pg 5, Example 1, [0086]).
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For claims 1-3, the oil taught by Provost in Example 1 is isopropyl N-lauroylsarcosinate (Eldew SL-205 from Ajinomoto); the diol is polyethylene glycol (8EO), and the skin care additives are at least citric acid and cetyl alcohol. It is noted that cetyl alcohol (C-16) is also an oil as defined by the applicant in claim 2.
For claim 4, the amount of oils, isopropyl N-lauroylsarcosinate and cetyl alcohol, are 11%, within the claimed range.
For claim 7, the log P of citric acid is -1.64, within the claimed range.
For claim 8, Provost teaches the skin care additives are at least citric acid and cetyl alcohol, also considered “skin care cosmetic actives,” as discussed above.
For claim 9, Provost teaches the skin care additives citric acid and cetyl alcohol are present in 0.37% and 1%, respectively, within the claimed ranges
For claim 14, Provost teaches the composition is a cosmetic composition (Title).
For claim 15, Provost teaches: “Another subject of the invention is a cosmetic treatment method which comprises applying the invention compositions to a keratinous substance” (pg 1, [0016]).
Obviousness Rejections
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
1) Claims 6 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Provost (cited above).
The teachings of Provost with regard to anticipation are discussed above.
In addition, Provost teaches the amount of isopropyl N-lauroylsarcosinate may be in the range of 0.05% to 50% of the composition (pg 8, claims 1 and 8-9). It is noted that Provost teaches 6% polyethylene glycol (8EO) in the composition of Example 1. As such, the ratio of the amount of diol to the amount of the oil (isopropyl N-lauroylsarcosinate) overlaps the claimed range. Because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
For claims 10-12, Provost teaches polysaccharides such as hydroxypropylcellulose as hydrophilic gelling agents (pg 4, [0078]) in amounts of 0.01 % to 10% of the total weight of the composition (pg 4, [0076]), overlapping the claimed range. While Provost does not specifically teach hydroxymethylcellulose or hydroxyethylcellulose as claimed in claim 11, MPEP 2144.09(I) sets forth the following regarding obviousness of a closely related compound or compound within a claimed series:
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties."
MPEP 2144.09(II) states the following with regards to the prima facie obviousness of homology of a series: “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.”
Since the claimed compound of hydroxyethylcellulose differs from the hydroxypropylcellulose taught by Provost, the claimed cellulose species is considered prima facie obvious.
For claim 13, Provost teaches the “composition can be more or less fluid”, or be in the form of an aqueous/alcoholic solution (pg 5, [0083]-[0084]). As such, the solution of Provost would have low or no turbidity.
The examiner acknowledges that some picking and choosing was used to arrive at the instantly claimed methods in view of Provost. However, the claimed combination of components, including the N-acylamino acid ester, diol, skin care active ingredient, cellulose compound, and water are taught as known and used for a skin care or cosmetic composition. It would have therefore been prima facie obvious to a person having ordinary skill in the art to administer the claimed combination of ingredients topically with a reasonable expectation of success that the treatment would be efficacious, as taught by Provost.
2) Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Provost (cited above), in view of Fonolla Moreno (US 2007/0297999 A1).
The teachings of Provost with regard to anticipation are discussed above. In addition, Provost teaches the amount of isopropyl N-lauroylsarcosinate may be in the range of 0.05% to 50% of the composition (pg 8, claims 1 and 8-9). It is noted that Provost teaches 6% polyethylene glycol (8EO) in the composition of Example 1.
Provost does not teach the group of diols recited in claim 5.
Fonolla Moreno teaches the missing element of Provost.
Fonolla Moreno teaches the diols include polyethylene glycols containing from 6 to 80 ethylene oxides, propylene glycol, and butylene glycol (pg 9, [0169]) are useful as organic solvents in cosmetic compositions (pg 1, [0006]).
The skilled artisan would have expected success in substituting Fonolla Moreno's propylene glycol or butylene glycol for the polyethylene glycols containing from 8 ethylene oxides in Provost’s cosmetic composition because Fonolla Moreno teaches that diols including polyethylene glycols containing from 6 to 80 ethylene oxides, propylene glycol, and butylene glycol are useful solvents in cosmetic compositions and, generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612
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