^ United States Rvtent and TkAPEMARK Qftice
UNITED STATES DEPABTMENT OF COMMERCE
Uoited States Patent and Trademark OfBce
AddTttsa: CXJMMISSIONER OF PATENTS AND TRADEMARKS
Washington. D.a 20231
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO. CONHRMATION NO.
Daniel H. Maes
Karen A. Lowney, Esq.
Estee Lauder Companies
125 Pinelawn Road
Melville, NY 11747
WILLIS, MICHAEL A
DATE MAILED: 08/27/2002
Please find below and/or attached an Office communication concerning this application or proceeding.
PTO-90C (Rev. 07-01)
Application No. /^K
MAES ET AL.
Michael A. Willis
"The MAILING DATE of this communication appears on th cov r sheet with the correspondenc address -
THE REPLY FILED 01 August 2002 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
Therefore, further action by the applicant is required to avoid abandonment of this application. A proper reply to a
final rejection under 37 CFR 1.113 may only be either: (1) a timely filed amendment which places the application in
condition for allowance; (2) a timely filed Notice of Appeal (with appeal fee); or (3) a timely filed Request for Continued
Examination (RCE) in compliance with 37 CFR 1.114.
PERIOD FOR REPLY [check either a) or b)]
a) 13 The pericxJ for reply expires 3_months from the mailing date of the final rejection.
b) n The period for reply expires on: (1 ) the mailing date of this Advisory Action, or (2) the date set forth in the final rejection, whichever is later. In no
event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
ONLY CHECK THIS BOX WHEN THE FIRST REPLY WAS FILED WITHIN TWO MONTHS OF THE FINAL REJECTION. See MPEP
Extensions of time may be obtained under 37 CFR 1 .136(a). The date on which the petition under 37 CFR 1 .136(a) and the appropriate extension fee
have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The appropriate extension fee under
37 CFR 1 .17(a) is calculated from: (1 ) the expiration date of the shortened statutory period for reply originally set in the final Office action; or (2) as set forth in
(b) above, if checked. Any reply received by the Office later than three months after the mailing date of the final rejection, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 -704(b).
1. D A Notice of Appeal was filed on . Appellant's Brief must be filed within the period set forth in
37 CFR 1.192(a), or any extension thereof (37 CFR 1.191(d)), to avoid dismissal of the appeal.
2. n The proposed amendment(s) will not be entered because:
(a) □ they raise new issues that would require further consideration and/or search (see NOTE below);
(b) □ they raise the issue of new matter (see Note below);
(c) □ they are not deemed to place the application in better form for appeal by materially reducing or simplifying the
issues for appeal; and/or
(d) □ they present additional claims without canceling a corresponding number of finally rejected claims.
3. n Applicant's reply has overcome the following rejection(s): .
40 Newly proposed or amended claim(s) would be allowable if submitted in a separate, timely filed amendment
canceling the non-allowable claim(s).
5M The a)n affidavit, b)n exhibit, or c)M request for reconsideration has been considered but does NOT place the
application in condition for allowance because: See Continuation Sheet
6. n The affidavit or exhibit will NOT be considered because it is not directed SOLELY to issues which were newly
raised by the Examiner in the final rejection.
7. ^ For purposes of Appeal, the proposed amendment(s) a)M will not be entered or b)n will be entered and an
explanation of how the new or amended claims would be rejected is provided below or appended.
The status of the claim(s) is (or will be) as follows:
Claim(s) allowed: •
Claim(s) objected to: .
Claim(s) rejected: 1-20 .
Claim(s) withdrawn from consideration:
8. n The proposed drawing correction filed on is a)n approved or b)n disapproved by the Examiner.
9. n Note the attached Information Disclosure Statement(s)( PTO-1449) Paper No(s). .
10. D Other:
iji/^. ..^ I .^lichael A. Willis
MICHAEL G.HARTtet Patent Examiner
U.S. Patent and Trademark Office
PTO-303 (Rev. 04-01 ) Advisory Action Part of Paper No. 1 5
Continuation Sheet (PTO-303)
Continuation of 5. does NOT place the application in condition for allowance because: Claim 19 is rejected under 35 USC 112, 1st
paragraph for lack of enablement due to the phrase "or preventing" for reasons as stated previously. In response to Examiner's statemen
that there is no data in the specification to allow a prediction of certain types of damage to the skin, applicant argues that it is not
necessary for the specification to disclose what is already known in the art. Applicant further argues that it is not necessary to qualify the
degre of accuracy with which a prediction is made. Applicant further asserts that anyone knows that damage to the skin is caused by
the sun or by natural aging. Therefore, applicant concludes that preventing damage to the skin is predictably associated with the skin
barrier function. Applicant's argument is not convincing. As stated previously, there Is no data in the instant application or the prior art to
allow a prediction of the damage associated with the reduciton or loss of skin barrier function. Any correlations that may exist neither
prove causality nor allow for accurate predictions in an individual. Absent such predictions, it is not possible to show the prevention of
skin damage via the improvement of skin barrier function. Applicant points to Example 1 of the specification as providing data necessary
for enablement. However, Example 1 merely shows an ability of the compositions to repair the skin barrier after physical insult. In no wa
does Example 1 address the issue of "preventing damage to the skin, wherein the damage is associated with a reduction or loss of skin
barrier function". Finally, applicant relies on the dictionary definition of "prevention" to argue that treating a condition is the same as
preventing a condition. Applicant's argument is considered, but is not persuasive. Applicant's suggestion that prevention is the same as
"treatment that keeps the condition from occurring further" is rejected. Reduction of a symptom is commensurate with treatment rather
than prev ntion. The rejection can be obviated by removal of the phrase "or preventing".
Claims 1-20 are rejected under 35 USC 103(a) as being unpatentable over Ribier et al (US Pat. 5,650,166) in view of Subbiah (US Pat.
6,1150,381) for reasons as stated previously. Applicant argues that there is no support for the examiner's position that the "mixtur " of
the instant claims is the same as the lipid vesicles of the '166 reference. Applicant is incorrect in equating the terms. The examiner does
not suggest that a mixture and lipid vesicles are the same thing. Rather, a "mixture" is a broad term which includes the subset of lipid
vesicles. In other words, all lipid vesicles meet the limitation of a "mixture" even though some mixtures do not meet the limitations of lipl
vesicles (Abraham Lincoln was a man, but not all men are Abraham Lincoln). In order to overcome the rejection, applicant must amend
the claims such that the claims do not read on vesicle compositions, assuming support for such compositions is present in the
sp cification. Applicant further argues that unexpected results are shown in the specification at page 4, lines 1-2, which states that It Is
unexpected to combine an exfoliant such as N-acetyl glucosamine, which acts to desquamate the skin, with cholesterol sulfate, which
acts to retard desquamation. However, Ribier teaches the use of both cholesterol sulphate and N-acetylglucosamine. Furthermore, th
unexpected results discussed by page 4 of the specification, when interpreted in view of Example 1 , are not commensurate In scope with
the claims. The composition of Example 1 contains 29 ingredients, and its activity on skin is compared to skin that is untreated. The
examiner Is unable to make any meaningful conclusions with respect to the combined activity of 2 of the 29 ingredients in such a