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^ 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 

www.uspto.gov 



APPLICATION NO. 



HLING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. CONHRMATION NO. 



09/773,351 



01/31/2001 



Daniel H. Maes 



00.22US 



5974 



7590 



08/27/2002 



Karen A. Lowney, Esq. 
Estee Lauder Companies 
125 Pinelawn Road 
Melville, NY 11747 



EXAMINER 



WILLIS, MICHAEL A 



ART UNIT 



PAPER NUMBER 



I6I7 



DATE MAILED: 08/27/2002 



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



PTO-90C (Rev. 07-01) 



# 

Advisory Action 


Application No. /^K 

w 

09/773,351 


AnDlicantfs) 

MAES ET AL. 


Examinor 

Michael A. Willis 


Art Unit 

1617 





"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 

706.07(f). 

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. 

NOTE: . 

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 
PRIMARY EXAMtKiPP 



U.S. Patent and Trademark Office 

PTO-303 (Rev. 04-01 ) Advisory Action Part of Paper No. 1 5 



Continuation Sheet (PTO-303) 
009/77^,351 



Application No. 



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 
comparison. 



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