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 .
Status of the Claims
Claims 1-20 are pending in the application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/7/24 and 12/6/24 have been
considered by the examiner.
Claim Rejections - 35 USC § 103
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 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0276104 A1 (Jacoby et al., “Jacoby”) in view of US2020/0197296A1 (Norman et al., “Norman”).
The instant claims are drawn to a method comprising topically applying to the skin a combination of components and a composition thereof; said combination includes snow lotus extract, alpine rose extract, evening primrose oil, and additional components and quantities recited in dependent claims.
Jacoby teaches cosmetic compositions and methods to be topically applied for moisturization and conditioning benefit to the skin (see abstract, in particular). Jacoby’s products and methods include a combination of Brassica campestris (rapeseed) sterols, Rhododendron ferrugineumextract, Oenothera biennis (evening primrose) oil, and a combination of peptides and polypeptides (see abstract, in particular).
Regarding Rhododendron ferrugineum (alpine rose) extract, Jacoby teaches that the Rhododendron ferrugineum extract may be present in an amount of 0.0005-0.01%(see [0005])(limitations of claims 1 and 4). Regarding Oenothera biennis (evening primrose) oil, Jacoby teaches this component may be included in an amount of 0.1-3.0% (see [0005])(limitations of claims 1 and 4).
Regarding squalene as in claims 2, 5, and 16, Jacoby teaches this component in an amount of 70-90% by weight of the formulation (see [0005])(limitations of claims 2 and 5, overlapping ranges).
Regarding claims 3, 6, 16, and 19, and specifically regarding caprylic/capric triglyceride, Jacoby teaches this component in an amount of 5-10% by weight of the total formulation (see [0005]); regarding hexyldecanol, Jacoby teaches this component in an amount of 1-7% by weight of the total formulation (see [0005]). Regarding bisabolol, Jacoby teaches this component in an amount of 0.1-5% (see [0013]). Regarding cetylhydroxyproline palmitamide, Jacoby teaches this component in an amount of 0.1% (see Table 3). Regarding stearic acid, Jacoby teaches this component in an amount of 0.1 to 0.1% (see Jacoby claims 15 and 16). Regarding Brassica campestris (rapeseed) sterols,Jacoby teaches this component in an amount of 0.01-0.1% (see [0005]).
Regarding BHT as in claims 6 and 19, Jacoby teaches this component as an antioxidant which may be included (see [0044]). Further regarding claims 7, 8, 17, and 20, regarding Olea europaea (olive) fruit oil, tocopheryl acetate, or tocopherol, Jacoby teaches olive fruit oil at [0049] and as an equivalent tocopheryl acetate in an amount of 0.1-5% (see [0005]). It would have been prima facie obvious to add these components in combination including BHT, Olea europaea fruit oil, and a tocopheryl acetate component, all taught by Jacoby in equal amounts each as recommended by antioxidant presence. One would have been motivated to do so based on Jacoby’s teaching of these as functionally desirable antioxidant components and based on Jacob’s embodiment of an example utilizing at least one antioxidant in an amount within the specified range and further based on Jacob’s teaching of functionally equivalent antioxidants.
Further regarding claims 9-13 and the functional effects therein, Jacoby’s products and methods teach all components and steps instantly claimed and therefore reasonably produce the claimed effects. Jacoby specifies barrier function benefit at [0141]) and speaks to oxidative stress damage benefits ([0035]), skin tone benefit at [0121]-[0122], collagen support ([0037]), and storage stability character ([0009]). As to claim 14, Jacoby teaches oil formulations (see [0009]).
As to claims 1, 4, 15, and 18, Jacoby does not teach Saussurea involucrate (snow lotus) extract. Norman cures this deficiency. Norman teaches topical methods and compositions for increasing procollagen-1 expression in the skin by topical application of certain extracts. The extracts include Saussurea involucrate (snow lotus) extract which is used to increase lysyl oxidase expression in the skin and/or inhibit melanogenesis in the skin (see [0075]). This component is included in an amount of 0.001 to 5% by weight of the total formulation (see [0011]).
Both Jacoby and Norman pertain to topical formulations for moisturizing the skin for instance (see Norman [0065]). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to add Norman’s snow lotus extract in an amount that Norman recommends to the formulations of Jacoby, with a reasonable expectation of success. One would have been motivated to do so since Norman teaches this component to desirably inhibit melanogenesis in the skin.
As to the precise ranges of various components recited, “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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, the prior art reasonably teaches the same or substantially the same compositions and methods for the very same purpose such that it would have been obvious to adjust amounts of formulation components so to achieve the desired efficacy. One would have been motivated to do so as is customary in the art as part of routine optimization procedures.
Conclusion
No claim is allowed.
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617
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