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 .
The amendment dated 05/11/2026 has been considered and entered. The amendment overcomes the previous rejections of 3, 5, 7, 8, 16, 22 based on indefinite language for having broader and narrower claims which are withdrawn. The amended claims remove bio-oil from the list of hydrocarbon components which overcomes the rejections in view of Allef et al. (EP 1 700 618 A1) alone, which are hereby withdrawn. However, in view of the amendment, new grounds of rejections are made below.
A claim objection or a rejection based on indefinite language is made below for the use of Chemical Abstract Service (CAS) numbers to represent chemical names/structures in place of the names or chemical structures.
Claim Objections
Claims 1 – 16, 19, 20, 22, 23 objected to because of the following informalities: The claims recite CAS numbers rather than a chemical name or structure. Appropriate correction is required. Alternatively, rejections based on indefiniteness are made below!
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.
Claims 1 – 16, 19, 20, 22, 23 are 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.
Claims 1, 23 each contains the trademark/trade name/Chemical Abstracts Service (CAS) numbers. Where a trademark or trade name or CAS number is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name or CAS number cannot be used properly to identify any particular material or product. A trademark or trade name or CAS number is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name or CAS number does not identify or describe the goods associated with the trademark or trade name or CAS number. In the present case, the trademark/trade name or CAS number is used to identify/describe chemical names or structures and, accordingly, the identification/description is indefinite.
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.
Claims 1 – 16, 19, 20, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Allef et al. (EP 1 700 618 A1)
In regards to claim 1, Allef teaches oil-in-water emulsion comprising a non-carbohydrate (i.e., emulsifier A) and a carbohydrate emulsifier (i.e., emulsifier B), a preservative at 10% or more, and one or more oils (abstract). The composition comprises 1 to 25% of the oil and emulsifier combination, and the emulsifier can be present at from 17 to 70% in the oil with a ratio of emulsifiers A and B of from 1:9 to 9:1 (specification). Emulsifiers A can be glycerol partial ester and optionally up to 50% of sorbitan ester, and the emulsifiers B can be one or more of C5 and C6 carbohydrates such as talose, idose, gulose, mannose, altrose, allose, lyxose, xylose, ribose, arabinose, galactose, fructose, glucose etc. which provides the amounts of the surfactant (i.e., emulsifiers A) and the amounts of the C5 and/or C6 carbohydrates (i.e., emulsifiers B) of the claim (specification). The preservative can be ethanol (specification). The composition is a cosmetic such as dermatological composition (title, specification).
While Allef does not particularly recite the components i) to v) of the claims, mineral oils which meet the limitation i) of the claims are typically used as emollients in cosmetic products and would have been obviously added by persons of ordinary skill in the art at the time the claim was filed to the cosmetic product of Allef for the same purpose (i.e., see Farmer et al. WO 2018/208530 A1 which recites the use of mineral oils as emollients in cosmetic compositions for obviousness).
In regards to claim 2, Allef teaches the emulsion having the claimed limitations as previously stated.
In regards to claim 3, 7, Allef teaches the emulsion having the C5 and C6 carbohydrates and thus provides the carbohydrate derivatives. For instance, xylose and arabinose are carbohydrate derivatives of hemicellulose. The optional derivatives of the claims are not required.
In regards to claim 4, Allef teaches the composition comprising xylose and arabinose as previously stated and which are degradation products of hemicellulose.
In regards to claims 5, 8, Allef teaches the emulsion which comprises water, and wherein the preservative can comprise an alcohol such as ethanol which are both C5 or C6 carbohydrate solvent according to applicant’s specification.
In regards to claim 6, Allef teaches the emulsion having the C6 carbohydrates of the claim as previously stated.
In regards to claim 9, Allef teaches the composition having the claimed limitation as previously stated.
In regard to claims 10, 19, 20, Allef teaches the composition which can comprise cosurfactants including amines but do not particularly recite the surfactants of the claim. Vlad (EP 1 617 914 B1) similarly teaches cosmetic compositions which are emulsions, i.e., microemulsions (i.e., with droplet sizes of from 10 to 150 nm, i.e., up to 0.15mm), and which can comprise fatty alkylamine surfactants [0029], and thus makes it obvious for persons of ordinary skill in the art at the time the claim was filed to have prepared the composition of Allef to have similar microparticle droplet sizes of Vlad as they are similarly drawn to cosmetic compositions and since Vlad teaches useful droplet sizes for the emulsion. Also, it would have been obvious for persons of ordinary skill in the art to have used the fatty alkylamine surfactants of Vlad in the composition of Allef, as Allef is drawn to similar compositions and allows for cosurfactants to be used in the composition.
In regards to claims 11, 12, Allef teaches the composition having the claimed limitation as previously stated.
In regards to claim 13, Allef teaches the composition comprising the oil which can be glycerol partial esters which meets the limitation of bio-oil (iv) of the claim.
In regards to claim 14, Allef teaches the composition having the preservative such as ethanol at the claimed amount.
In regards to claim 15, Allef teaches the composition having the claimed ingredients including stabilizers but fails to teach the presence of a polymeric stabilizer. Farmer, as discussed above, teaches similar cosmetic compositions and which can comprise adjuvants such as polymeric stabilizers at minor amounts of about 0.01 to about 5% in the composition (page 14 4 – 7). Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the stabilizers of Farmer and in the recited amounts in the composition of Allef, as Farmer teaches suitable stabilizers and useful amounts as adjuvants for cosmetic compositions.
In regards to claim 16, Allef teaches the composition which can comprise customary auxiliary additives such as UV light protection filters such as ascorbic acid (i.e., organic acid) and/or other acids which would be present at minor amounts overlapping the claimed range as they are optional ingredients.
In regards to claim 23, Allef teaches the composition having the claimed ingredients blended together and thus provides the method of preparing the emulsion as claimed.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not solely rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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