Skip to main content

Full text of "USPTO Patents Application 09773351"

See other formats


p 



^JT OF Cq. 



V 



mm 

m 



UNITED STA1WUEPARTMENT OF COMMERCE 
United States Patent and Trademark Office 

Address: COMMISSIONER OF PATENTS AND TRADEMARKS 
Washington, D.C. 20231 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



09/773, 35 i 



01/31/01 



MAES 



D 



00. 22US 



r 



KAREN A. LOWNEY, ESQ. 
ESTEE LAUDER COMPANIES 
125 PINELAWN ROAD 

MELVILLE MY 11747 



HM 12/ 0705 



I 



EXAMINER 




T.q 


. M 


ART UNIT 


PAPER NUMBER | 



1619 
DATE MAILED: 



07/05/01 



Please find below and/or attached an Office communication concerning this application or 
proceeding. 



Commissioner of Patents and Trad marks 



PTO-90C (Rev. 11/00) 



1- File Copy 



Office Action Summary 


Application No. ^ 

09/773,351 


Applicant(s) 
MAES ET AL 


ExaminGr 

Michael Willis 


Art Unit 
1619 





- The MAILING DATE of this communication appears on the cover sheet with the correspondence address 



Period for Reply 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM 
THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1 .1 36 (a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S. C. § 1 33). 

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1.704(b). 

Status 

1 )^ Responsive to communication(s) filed on 11 May 2001 . 
2a)Q This action is FINAL. 2b)KI This action is non-final. 

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213. 

Disposition of Claims 

4) ^ Claim(s) 1-20 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) ^ Claim(s) 1-20 is/are rejected. 

7) D Claim(s) is/are objected to. 

8) D Claims are subject to restriction and/or election requirement. 

Application Papers 

9) K The specification is objected to by the Examiner. 

10) D The drawing(s) filed on is/are objected to by the Examiner. 

11) D The proposed drawing correction filed on is: a)D approved b)Q disapproved. 

12) D The oath or declaration is objected to by the Examiner. 

Priority under 35 U.S.C. § 119 

13) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). 

a)DAII b)Q Some*c)Q None of: 

1. Q Certified copies of the priority documents have been received. 

2. Q Certified copies of the priority documents have been received in Application No. . 

3. Q Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17.2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 

14) D Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 1 19(e). 



Attach ment(s) 

15) ^ Notice of References Cited (PTO-892) 18) Q Interview Summary (PTO-413) Paper No(s). 

16) D Notice of Draftsperson's Patent Drawing Review (PTO-948) 19) Q Notice of Informal Patent Application (PTO-152) 

17) ^ Information Disclosure Statement(s) (PTO-1449) Paper No(s) 4 . 20) □ Other: 



U.S. Patent and Trademark Office 
PTO-326 (Rev. 01-01) 



Office Action Summary 



Part of Paper No. 5 




Application/Control Number: 09/773,351 
Art Unit: 1619 



Page 2 



DETAILED ACTION 



Claims 1-20 are pending. Claims 1-12 are drawn to a composition. Claims 13-15 are 
drawn to a cosmetic or pharmaceutical formulation. Claims 16-18 are drawn to a 
method for improving or maintaining a healthy skin barrier. Claims 19-20 are drawn to a 
method of treating or preventing damage to the skin. 



1 . The incorporation of essential material in the specification by reference to a 
foreign application or patent, or to a publication is improper (see page 2, second full 
paragraph). Applicant is required to amend the disclosure to include the material 
incorporated by reference. The amendment must be accompanied by an affidavit or 
declaration executed by the applicant, or a practitioner representing the applicant, 
stating that the amendatory material consists of the same material incorporated by 
reference in the referencing application. See In re Hawkins, 486 F.2d 569, 179 USPQ 
157 (CCPA 1973); In re Hawkins, 486 F.2d 579, 179 USPQ 163 (CCPA 1973); and In re 
Hawkins, 486 F.2d 577, 179 USPQ 167 (CCPA 1973). 



2. The following is a quotation of the second paragraph of 35 U.S.C. 112: 

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. 



Specification 



Claim Rejections - 35 USC §112 



• # 

Application/Control Number: 09/773,351 Page 3 

Art Unit: 1619 

3. Claims 12, 18, and 20 are rejected under 35 U.S.C. 112, second paragraph, as 
being indefinite for failing to particularly point out and distinctly claim the subject matter 
which applicant regards as the invention. 

4. Claims 12 and 20 are rejected due to the phrase "white birch". It is not clear what 
is meant by the phrase. The rejection can be overcome by the addition of the phrase 
"bark extract". 

5. Claim 18 is rejected for being confusing. Claim 18 is drawn to "the method of 
claim 1" while claim 1 is drawn to a composition. 

6. Claim 20 is rejected for being confusing due to the phrase "of the of the". 



7. The following is a quotation of the first paragraph of 35 U.S.C. 112: 

The specification shall contain a written description of the invention, and of the manner and process of 
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the 
art to which it pertains, or with which it is most nearly connected, to make and use the same and shall 
set forth the best mode contemplated by the inventor of carrying out his invention. 

8. Claim 19 is rejected under 35 U.S.C. 112, first paragraph, as containing subject 
matter which was not described in the specification in such a way as to enable one 
skilled in the art to which it pertains, or with which it is most nearly connected, to make 
and/or use the invention. As held by ex parte Forman (230 USPQ 546, BdPatApp & Int.) 
and In re Wands (8 USPQ 2d 1400, CAFC), there are several guidelines when 
determining if the specification of an application allows the skilled artisan to practice the 
invention without undue experimentation. 

Amount of guidance present : The specification fails to provide any guidance for 
preventing damage to the skin. 



Application/Control Number: 09/773,351 Page 4 

Art Unit: 1619 

Absence of working example : The specification fails to provide any working 
examples relating to the prevention of damage to the skin in the instantly claimed 
method. 

Nature of invention : The nature of the invention is a method of using a 
composition of cholesterol sulfate and an amino sugar. However, the claim of 
preventing damage to the skin does not seem to fit in with the nature of the invention. It 
is not clear how the composition can be used in the instantly claimed method. 

State of the prior art : The state of the prior art for preventing damage to the skin 
is not well understood. It is not clear that modifying the skin barrier function can prevent 
skin damage rather than treat damaged skin. 

Relative skill of those in the art : Those in the art would not be able to practice the 
instantly claimed method with the composition in the claim, since this would amount to 
undue experimentation to test which possible combinations and formulations are useful. 

Unpredictability in the art : Given the diversity of ways to damage the skin and the 
general lack of use of preventatives in skin care, it would be very unpredictable to use 
the combination of cholesterol sulfate and an amino sugar in the instant claimed 
methods. 

Breadth of claims : The claims are broad, wherein all types of skin damage are 
prevented. 

One way to overcome the rejection is by removal of the phrase "or preventing" in 
the claim. 




Application/Control Number: 09/773,351 
Art Unit: 1619 



Page 5 



Claim Rejections - 35 USC § 102 



9. 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 - 

(b) the invention was patented or described in a printed publication in this or a foreign country or in public 
use or on sale in this country, more than one year prior to the date of application for patent in the United 



10. Claims 1-4 are rejected under 35 U.S.C. 102(b) as being anticipated by Sebag et 
al (US Pat. 5,411,742). Sebag discloses compositions comprising derivatives of salicylic 
acid and cholesterol sulfate (see col. 3, lines 1-33; lines 1-col. 6, lines 15-23; and col. 
16, lines 15-66). Salicylic acid is a known exfoliant. 



11. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 
obviousness rejections set forth in this Office action: 

(a) A patent may not be obtained though the invention is not identically disclosed or described as set 
forth in section 1 02 of this title, if the differences between the subject matter sought to be patented and 
the prior art are such that the subject matter as a whole would have been obvious at the time the 
invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
Patentability shall not be negatived by the manner in which the invention was made. 

12. Claims 1-4, 6-10 and 18 rejected under 35 U.S.C. 103(a) as being unpatentable 
over Sebag et al (US Pat. 5,411,742) in view of Subbiah (US Pat. 6,150,381). 

13. Sebag teaches topical compositions comprising salicylic acid derivatives and 
cholesterol sulfate (see col. 3, lines 1-56; col. 7, lines 15-50; and col. 16, lines 15-66). 
Salicylic acid is an exfoliant. The compositions also contain cholesterol and linoleic acid 
(see col. 17, lines 5-25). The treatment of acne is taught. The reference lacks 
sclareolide. 



States. 



Claim Rejections - 35 USC § 103 



(§ 



Application/Control Number: 09/773,351 



Page 6 



Art Unit: 1619 

14. Subbiah teaches the use of sclareolide in topical formulations, particularly for 
acne (see abstract). Sclareolide is taught in combination with other ingredients (see col. 

5, line 6 through col. 7, line 12). Subbiah teaches that sclareolide has antimicrobial 
activity that is useful in the treatment of acne (see col. 4, lines 45-65). 

1 5. It would have been obvious to one of ordinary skill in the art at the time the 
invention was made to have modified the compositions of Sebag by the addition of 
sclareolide for the expectation of improved antimicrobial activity of the composition as 
taught by Subbiah. 

16. Claims 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over 
Ribier et al (US Pat. 5,650,166) in view of Subbiah (US Pat. 6,150,381). 

17. Ribier teaches moisturizing compositions for the treatment of surface and deep 
layers of the skin. The compositions are comprised of dispersions of lipid vesicles 
containing active ingredients. Ribier teaches the use of cholesterol sulfate as a 
component of the lipid membrane of the vesicles (see col. 3, line 57 through col. 4, line 
2). Ribier further teaches the use of sugars as the active ingredients, including N- 
acetylglucosamine (see col. 5, lines 59-67). Fatty acids, including linoleic acid (see col. 

6, lines 44-46). Cholesterol is also taught as an active ingredient (see col. 6, lines 47- 
l^Ribier further teaches the use of plant extracts (see col. 7, lines 5-8). Treatment of 

the skin with respect to moisturization and loss of moisture to the environment are 
taught (see col. 1 , line 7 through col. 2, line 30). It is the position of the examiner that a 



Application/Control Number: 09/773,351 



Page 7 



Art Unit: 1619 

method to moisturize the skin with the composition as taught by Ribier inherently 
improves the healthy skin barrier. The reference lacks sclareolide. 

1 8. Subbiah teaches the use of sclareolide in topical formulations, particularly for 
acne (see abstract). Sclareolide is taught in combination with other ingredients (see col. 
5, line 6 through col. 7, line 12). Subbiah teaches that sclareolide has antimicrobial 
activity that is useful in the treatment of acne (see col. 4, lines 45-65). 

1 9. It would have been obvious to one of ordinary skill at the time the invention was 
made to have modified the compositions and methods as taught by Ribier by the 
inclusion of sclareolide for the expectation of antimicrobial properties as taught by 
Subbiah. 



Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Michael Willis whose telephone number is (703) 305- 
1679. The examiner can normally be reached on Mon. to Fri. from 8:30 a.m. to 5 p.m.. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Diana Dudash can be reached on (703) 308-2328. The fax phone numbers 
for the organization where this application or proceeding is assigned are (703) 308-2742 
for regular communications and (703) 308-2742 for After Final communications. 



Conclusion 





Patent Examiner 
July 2, 2001 



Art Unit 1619