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 statements (IDS) submitted on 03/17/2025 and 08/25/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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.
Claim 10 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites “a thickness of the composition after drying is 10 to 25% compared to a thickness of the composition immediately after application,” which renders the claim indefinite. It is unclear if the thickness of the composition after drying is 10 to 25% less than or 10 to 25% greater than the thickness immediately after application, or if the thickness of the composition after drying is equal to 10 to 25% of the overall thickness immediately after application. For example, if the composition gels after drying, the thickness could be greater than it was immediately after application. If the composition dries into a film, the thickness of the composition could be less than it was immediately after application and equal to 10 to 25% of the initial overall thickness. The Examiner will interpret this as the thickness of the composition after drying is equal to 10 to 25% of the overall thickness immediately after application. Clarification by amendment of claim 10 is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, and 10-14 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Knotkova et al. (EP 3060195 B1) (hereinafter Knotkova).
Regarding claim 1, Knotkova teaches the advantage of the cosmetic composition is a high content of hyaluronic acid in nanofibres, i.e. up to 90 wt.% or even up to 99 wt.%. The increased concentration thereof smoothes out wrinkles ([0011]). Knotkova also teaches the compositions prepared in this way are suitable for topical use in cosmetics. The method of application of the dry composition according to the invention on a support as a facial mask includes several steps: moistening the face, placing the product on the moistened skin for 5-30 minutes, wherein 10 minutes are preferred, then removing the support material from the skin and washing the dry film of the mask by means of water ([0040]). Furthermore, Knotkova teaches the nanofibres of the composition according to the invention may contain an adjuvant, preferably carboxymethyl cellulose ([0017]). Knotkova also teaches preferred embodiment example 11 where a solution of 1.623 g of hyaluronic acid (HA) having the molecular weight of 83 200 g/mol and 0.213 g of polyethylene oxide having the molecular weight of 400 000 g/mol, 0.103 g of carboxymethyl cellulose having the molecular weight of 250 000 g/mol, 0.998 g of polyvinyl alcohol having the molecular weight of 125 000 g/mol and 48 g of water was prepared. It is noted that smoothes out wrinkles reads on the claimed “reducing skin wrinkles.”
Regarding claim 1, Knotkova does not explicitly teach the composition comprises a water-soluble thickener. However, Knotkova does teach the use of carboxymethyl cellulose, which is a known water-soluble thickener in cosmetic compositions. Therefore, carboxymethyl cellulose would act as a thickener even if the property is not directly taught because "products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Regarding claim 2, Knotkova teaches the method of application of the dry composition according to the invention on a support as a facial mask includes several steps: moistening the face, placing the product on the moistened skin for 5-30 minutes, wherein 10 minutes are preferred, then removing the support material from the skin and washing the dry film of the mask by means of water ([0040]). It is noted that the dry film reads on the claimed “then dried.” Furthermore, the limitation “to contract the skin” in claim 2 is an inherent property and therefore would necessarily be present in the composition of the prior art since the composition is structurally identical.
Regarding claim 3, example 11 comprises 0.998 g of polyvinyl alcohol having the molecular weight of 125 000 g/mol, which reads on the claimed “200,000 or less.”
Regarding claim 4 and 5, Knotkova teaches example 11, which comprises carboxymethyl cellulose.
Regarding claim 6, example 11 teaches 1.96 wt% of polyvinyl alcohol, which falls within the claimed range “1 to 20 wt%.”
Regarding claim 10, Knotkova does not explicitly teach the property of wherein “the composition after drying is 10 to 25% compared to the thickness of the composition immediately after application of the composition to the skin,” but teaches the same composition of claim 1. Therefore, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Thus, it is noted that "products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 11, Knotkova does not explicitly teach the property of wherein “the composition sustainably contracts the skin for 1 hour or more,” but teaches the same composition as claim 1. Therefore, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Thus, it is noted that "products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 12, Knotkova does not explicitly teach the property of wherein “the composition is dried to a moisture content of 3% or less within 15 minutes.” However, Knotkova teaches the same composition as claim 1 and examples 28-29 where the spun layer was applied to the moistened skin for 15 minutes before being cleared off by means of water. Therefore, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Thus, it is noted that "products of identical chemical composition cannot have mutually exclusive properties," and the composition of Knotkova would inherently dry to 3% or less moisture content. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 13, Knotkova teaches the method of application of the dry composition according to the invention on a support as a facial mask includes several steps: moistening the face and placing the product on the moistened skin for 5-30 minutes ([0040]).
Regarding claim 14, Knotkova teaches a cosmetic composition (Abstract).
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.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knotkova et al. (EP 3060195 B1) (hereinafter Knotkova), in further view of Naumova et al. (RU 2702907 C1) (English machine translation provided, hereinafter Naumova).
A cosmetic composition is discussed above, said discussion is incorporated in its entirety.
However, Knotkova does not teach the water-soluble thickener is comprised in an amount of 0.1 to 5 wt% or a weight ratio of the polyvinyl alcohol to the water-soluble thickener is 1: 0.01 to 0.6 of claims 7-8.
Naumova teaches a cosmetic mask film containing sodium alginate, target additives and an aqueous solvent, according to the invention, the mask contains carboxymethyl cellulose, polyvinyl alcohol, PEG-4000 polyethylene glycol, the mask contains water or medicinal herbs extracts as an aqueous solvent , with the following quantitative content of the components of the composition (wt.%): sodium alginate - 0.1-1.0; carboxy methyl cellulose - 0.1-1.0; polyvinyl alcohol - 0.1-10.0; polyethylene glycol PEG-4000 - 0.1-5.0; target additives - 0.4-30.0; water or water extracts of medicinal herbs - the rest is up to 100% (claim 1).
It would have been obvious for one of ordinary skill in the art to optimize the weight percent of carboxymethyl cellulose in the example compositions of Knotkova to produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because both Knotkova and Naumova are drawn to cosmetic facial masks. Additionally, Naumova provided the guidance to do so by teaching 0.1-1.0 wt% of carboxy methyl cellulose, which overlaps with the claimed range “0.1 to 5 wt%.” Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amount of thickener in the composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
It also would have been obvious for one of ordinary skill in the art to optimize the weight ratio of polyvinyl alcohol to carboxymethyl cellulose in the example compositions of Knotkova to produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because both Knotkova and Naumova are drawn to cosmetic facial masks. Additionally, Naumova provided the guidance to do so by teaching 0.1-1.0 wt% of carboxy methyl cellulose and 0.1-1.0 wt% of polyvinyl alcohol, which encompass weight ratios that overlap with the claimed range “1 : 0.01 to 0.6.” Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight ratio of polyvinyl alcohol to thickener in the composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knotkova et al. (EP 3060195 B1) (hereinafter Knotkova), in further view of Peng et al. (CN 1090752 A) (English machine translation provided, hereinafter Peng).
A cosmetic composition is discussed above, said discussion is incorporated in its entirety.
Knotkova teaches the spun samples of the solutions 1, 2 and 3 having the weight of 5 to 10 mg were applied on a forearm in examples 28-29 ([0110], [0115]). However, Knotkova does not teach the composition was applied to the skin at a thickness of 0.1 to 2 mm.
Peng teaches an anti-wrinkle and freckle facial mask cream. Peng also teaches when using, shake the ointment first, remove 10g, and evenly apply a thin layer (1-1.5mm) on the face. After about half an hour, wash your face with warm water or water.
It would have been obvious for one of ordinary skill in the art to optimize the thickness of the applied composition of Knotkova to produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because both Knotkova and Peng are drawn to face mask compositions, and Peng provided the guidance to do so by teaching evenly apply a thin layer (1-1.5mm) on the face, which overlaps with the claimed range “0.1 to 2 mm.” Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the thickness of applied composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY L KRINOS whose telephone number is (571)270-1412. The examiner can normally be reached Monday -Thursday 9 AM - 4 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.L.K./Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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