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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1 May 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11, 13, and 22-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Persaud (WO 2021/224693 cited on Applicant’s IDS filed 1 May 2025).
Claim 11 is drawn to a method of improving one or more facial aesthetics of a subject, comprising:
Applying to facial skin of a subject a facial cosmetic composition comprising:
a cannabinoid; and
a retinoid,
wherein the composition is applied at least once per day for at least 21 days.
Claims 22-23 are drawn to the method of claim 11, wherein the cannabinoid is cannabidiol (CBD).
Claim 24 is drawn to the method of claim 11, wherein the retinoid is a retinyl ester.
Persaud teaches cosmetic compositions comprising CBD and an active cosmetic ingredient (Abstract) further teaching Composition D (Par. [211]) comprising CBD and hydroxypinacolone retinoate (i.e., a retinyl ester) for use in skin care of the face being utilized for improvement of wrinkles and coloration of the face when applied for a period of 28 days (Par [217-218]).
As such, claims 11 and 22-24 are anticipated.
Claim 13 is drawn to the method of claim 11, wherein the composition is a cream applied to the facial skin without removal.
Persaud further teach Composition D in the form of a cream (Par. [211]) and the method of improving the skin comprising applying the composition to the skin (Par. [0178]) without a step of removing the composition.
As such, claim 13 is anticipated.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Persaud as applied to claims 11, 13, and 22-24 above, and further in view of Kang et al. (Am J Clin Dermatol, 2005, Vol. 6, 245-253).
The teachings of Persaud have been set forth above.
Claim 12 is drawn to the method of claim 11, wherein the composition is applied at least once per day for at least 42 days.
Persaud does not teach the composition being applied for at least 42 days.
Kang et al. also teach methods of improving wrinkling and coloration of the skin (Pg. 246 left column first paragraph), further teaching improvement in coarse wrinkling after 1 month of treatment, fine wrinkling after 2 months, and hyperpigmentation after 4 months (Pg. 251 right column third paragraph), indicating that the amount of time of treatment directly affects the level of improvement of the skin.
And as discussed by MPEP 2144.05, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the length of time of treatment is clearly a result-effective variable, determining the level of improvement of the skin. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal treatment duration in order to best achieve the desired results.
As such, claim 12 is rejected as prima facie obvious.
Claims 14 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Persaud as applied to claims 11, 13, and 22-24 above, and further in view of Loesch et al. (Clin Cosmet Investig Dermatol, 2014, Vol. 7, 231-241).
The teachings of Persaud have been set forth above.
Claim 14 is drawn to a method of improving one or more facial aesthetics of a subject, the method comprising:
Applying to facial skin of a subject a facial cosmetic composition comprising:
a cannabinoid; and
a retinoid, and
treating the facial skin of the subject by dermatological procedure before, during, or after applying the facial cosmetic composition.
Claim 16 is drawn to the method of claim 14, wherein the facial skin treatment is microdermabrasion.
Claims 17-18 are drawn to the method of claim 14, wherein the facial skin treatment comprises abrading a surface of facial skin of a subject to remove dead cells and/or cell debris from the skin surface, wherein the abrading is by microdermabrasion.
Loesch et al. teach dermatological procedures for improving skin texture (Intro on pg. 231). Loesch et al. further teach microdermabrasion as a procedure that exfoliates the skin (i.e., removes dead cells and/or cell debris) to improve skin coloration and wrinkles (Pg. 238 left column second paragraph).
And as discussed in MPEP 2144.06, “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).
In the instant case, as both the method of application of the composition of by Persaud and the method of microdermabrasion of Loesch et al. are taught to be useful methods for improving the coloration and wrinkling of skin, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the methods of Persaud and Loesch et al. to obtain a method further capable of improving the coloration and wrinkling of skin, with a reasonable expectation of success.
As such, claims 14 and 16-18 are rejected as prima facie obvious.
Claim 19 is drawn to the method of claim 14, wherein the facial cosmetic composition is applied to the facial skin by infusion.
As disclosed in the instant specification at Par. [58], infusion is the delivery of a composition under pressure to the skin.
Loesch et al. further teach the use of hydradermabrasion for the improvement of skin in the same manner as microdermabrasion (Pg. 238 right column second paragraph). Loesch et al. teach delivery of serums for targeting specific conditions being delivered by hydradermabrasion and hydradermabrasion as being more effective at delivery of these compositions than other methods (Pg. 238 right column second paragraph).
Delivery of a composition by hydradermabrasion, i.e., delivery of water and the composition at supersonic speeds reads on application by infusion as defined the instant specification at Par. [0058].
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Persaud to include the step of delivering the composition by infusion as taught by Loesch et al. It would have been obvious to combine the known skin treatment method with the known delivery of compositions by hydradermabrasion to yield the predictable result of a method of skin treatment with improved delivery of the composition, with a reasonable expectation of success.
As such, claim 19 is rejected as prima facie obvious.
Claims 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Persaud as applied to claims 11, 13, and 22-24 above, and further in view of Pai et al. (Indian J Dermatol Venereol Leprol, 2017, Vol. 83, 9-18).
The teachings of Persaud have been set forth above.
Claim 25 is drawn to the method of claim 11, further comprising (c) an aliphatic oligopeptide.
Claim 26 is drawn to the method of claim 25, wherein the aliphatic oligopeptide is a palmitoyl oligopeptide.
Claim 27 is drawn to the method of claim 25, wherein the aliphatic oligopeptide is present in the composition in an amount ranging from 0.5% by weight to 15% by weight.
Persaud does not teach the composition comprising an aliphatic oligopeptide.
Pai et al. teach peptide compositions for the improvement of skin (Title, Abstract). Pai et al. further teach use of palmitoyl tripeptides as anti-wrinkle and moisturizing agents (Table 2 on pg. 11), additionally teaching a composition comprising 2.5% palmitoyl tripeptide-3 or 10% palmitoyl tripeptide-5 (Pg. 10 right column last paragraph), overlapping with the instantly claimed range.
And as discussed in MPEP 2144.06, “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).
In the instant case, as the method of Persaud and the use of palmitoyl tripeptides of Pai et al. are both taught in the prior art to be useful for improving the skin, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the methods of Persaud and Pai et al. to obtain a method further capable of reducing wrinkles in facial skin, with a reasonable expectation of success.
As such, claims 25-27 are rejected as prima facie obvious.
Claim 28 is drawn to the method of claim 11, further comprising (d) an acetylated oligopeptide.
Claim 29 is drawn to the method of claim 28, wherein the acetylated oligopeptide is an acetyl hexapeptide.
Claim 30 is drawn to the method of claim 28, wherein the acetylated oligopeptide is present in the composition in an amount ranging from 0.5% by weight to 15% by weight.
Persaud does not teach the composition comprising an acetylated oligopeptide.
Pai et al. teach peptide compositions for the improvement of skin (Title, Abstract). Pai et al. further teach use of an acetyl hexapeptide-3 composition as being effective in reducing wrinkles after 30 days and the composition comprising 10% acetyl hexapeptide-3 (Pg. 15 right column third paragraph), overlapping with the instantly claimed range.
And as discussed in MPEP 2144.06, “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).
In the instant case, as the method of Persaud and the use of acetyl hexapeptide-3 of Pai et al. are both taught in the prior art to be useful for improving the skin, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the methods of Persaud and Pai et al. to obtain a method further capable of reducing wrinkles in facial skin, with a reasonable expectation of success.
As such, claims 28-30 are rejected as prima facie obvious.
Claims 15 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Persaud and Loesch et al. as applied to claims 14 and 16-19 above, and further in view of Pai et al.
The teachings of Persaud and Loesch et al. have been set forth above.
Claims 15 and 21 are drawn to the method of claim 14, wherein the facial cosmetic composition further comprises (c) an aliphatic oligopeptide, (d) an acetylated oligopeptide, and (e) hyaluronic acid.
The cosmetic composition of Persaud and Loesch et al. differs from the instantly claimed composition in the following ways:
the composition of Persaud and Loesch et al. does not comprise an aliphatic oligopeptide;
the composition of Persaud and Loesch et al. does not comprise an acetylated oligopeptide; and
the composition of Persaud and Loesch et al. does not comprise hyaluronic acid.
Yet, as to 1 and 2: Pai et al. teach peptide compositions for the improvement of skin (Title, Abstract). Pai et al. further teach use of palmitoyl tripeptides and acetyl hexapeptides-3/8 as anti-wrinkle and moisturizing agents (Table 2 on pgs. 11-12), additionally teaching a composition comprising 2.5% palmitoyl tripeptide-3 or 10% palmitoyl tripeptide-5 (Pg. 10 right column last paragraph), overlapping with the instantly claimed range.
And as discussed in MPEP 2144.06, “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).
In the instant case, as the method of Persaud and Loesch et al. and the use of palmitoyl tripeptides and acetyl hexapeptides of Pai et al. are both taught in the prior art to be useful for improving the skin, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the methods of Persaud, Loesch et al. and Pai et al. to obtain a method further capable of reducing wrinkles in facial skin, with a reasonable expectation of success.
And, as to 3: Persaud further teaches Composition D comprising other suitable active cosmetic ingredients (Par. [211]) and sodium hyaluronate as an effective cosmetic ingredient for enhancing the appearance of dry or damaged skin (Par. [69]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Persaud to include hyaluronic acid. It would have been obvious to combine the known skin care composition with the known skin care active ingredient of hyaluronic acid to yield the predictable result of a skin care composition that further repairs dry or damaged skin, with a reasonable expectation of success.
Based on all of the foregoing, claims 15 and 21 are rejected as prima facie obvious.
Claim 20 is drawn to the method of claim 14, wherein the facial cosmetic composition is applied to the facial skin by injection.
Persaud and Loesch et al. do not teach applying the composition by injection.
Pai et al. further teach methods to pass the stratum corneum barrier to allow the oligopeptides to arrive at the target site for action (Pg. 16 left column par. 6-7), further teaching injection as a suitable technique for transdermal delivery of the oligopeptides (Table 5 on pg. 16).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Persaud, Loesch et al., and Pai et al. by applying the composition by injection. It would have been obvious to use the known technique of injection to improve the skin care method in the same way, by ensuring the oligopeptides pass through the stratum corneum to reach the site of action, with a reasonable expectation of success.
As such, claim 20 is rejected as prima facie obvious.
Conclusion
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/PAUL HOERNER/Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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