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 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 3, 5, 7, 8, 16, 22 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites the broad recitation acid, and the claim also recites optionally the acid is organic or inorganic acid or mixtures which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Each of claims 3, 5, 7, and 8 recites optional narrower ranges for the carbohydrate solvent or derivatives.
Claim 22 recites a broad range of “comprising” and then further recites a narrower range of “consisting of”.
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, 22, 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).
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 et al. (WO 2018/208530 A1) teaches similar cosmetic compositions 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.
Conclusion
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771