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 .
Claim Interpretation
Examiner notes claim 10 includes the phrase “is carried out continuously for two or more days”. While the broadest reasonable interpretation suggests this could require constant application, but Applicants specification at ¶ 65 suggests the term is limited to daily use continuously for 2 days or more. This interpretation is further supported by Penetrability Test 5 at ¶ 73 which discloses application once every day for a month to determine continuous use efficacy.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawakami et al (JP-H0840864A).
With regards to claims 1-3, Kawakami et al discloses a sun care cream comprising sodium hyaluronate at 0.5wt% and magnesium chloride at 0.5wt% (Example 2/ Table 3). As such, the ionic strength of magnesium salt appears to be greater than 0.01 and the mass ratio appears to be the same where equal weights were included.
With regards to claim 4, given the use of the cream is for cosmetic use at the same concentrations instantly claimed, it is reasonably expected that the same average molecular weight hyaluronic acid is used, i.e. less than 10,000,000.
With regards to claim 5, the claim is directed to a cosmetic and “leave-on type cosmetic” is an intended use. Where a sun care cream could be left on, the intended use is met.
With regard to claim 6, as Kawakami et al does not discuss coloring, it is reasonably expected that the sun care cream will be transparent based on the contents of the cream absent evidence to the contrary.
With regards to claim 7, the claim is directed to a cosmetic and “for use in penetration of hyaluronic acid into body surface or body hair” is an intended use. Where a sun care cream is disclosed to be applied to the body or hair, the intended use is met.
With regards to claim 8, the cream is taught to be a sun care cream for application to the skin (abstract).
With regards to claim 9 and 10, given it is a sun care cream, the composition would inherently be intended to be applied daily before exposure to the sun.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami et al (JP-H0840864A).
Kawakami et al is discussed above, and in case the weight percent does not translate into the instantly claimed properties correctly, it would have been obvious to vary the amount of each component based on the resulting formulation. Optimization would lead to a good feeling cream.
Additionally, it would have been obvious to apply the cream daily as the purpose is to protect the skin from the sun, and daily application while apparently inherent, would at the very least be clearly obvious in order to reduce the effects of the sun.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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