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/^v^ 3 ^ United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark Office 
Address: COMMISSIONER FOR PATENTS 
P.O. Box 1450 

Alexandria, Virginia 22313-1 450 
www.uspto.gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



CONFIRMATION NO. 



09/773,351 



01/31/2001 



7590 



10/23/2003 



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



Daniel H. Maes 



00.22US 



5974 



EXAMINER 



JIANG, SHAOJIA A 



ART UNIT 



PAPER NUMBER 



1617 



DATE MAILED: 10/23/2003 



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



PTO-90C (Rev. 10/03) 



# 

Advisory Action 



Application No. 

09/773,351 



Examiner 

Shaojia A Jiang 



Applicant(s) 
MAES ETAL 



Art Unit 
1617 



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

THE REPLY FILED 06 October 2003 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 1.1 14. 

PERIOD FOR REPLY [check either a) or b)] 

a) £3 The period for reply expires 5_months from the mailing date of the final rejection. 

b) d 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 .□ 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. Q 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. Q Applicant's reply has overcome the following rejection(s): . 



4. D Newly proposed or amended claim(s) would be allowable if submitted in a separate, timely filed amendment 

canceling the non-allowable claim(s). 

5. ^ The a)Q affidavit, b)Q exhibit, or c)^ request for reconsideration has been considered but does NOT place the 

application in condition for allowance because: see attachment . 

6.0 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)D will not be entered or b)D 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: none . 
Claim(s) objected to: none . 
Claim(s) rejected: 1 and 3-20 (all) . 
Claim(s) withdrawn from consideration: none . 

8. Q The proposed drawing correction filed on is a)D approved or b)D disapproved by the Examiner. 

9. D Note the attached Information Disclosure Statement(s)( PTO-1449) PaMp^To(s) / . 




SFJEEMimOMANASHAM 
SUPSRVJcrqy^tgifrfi&WJVJINgR (^>Jo^ 

U.S. Patent and Trademark Office ~ " ~ " t 

PTOL-303 (Rev. 04-01 ) Advisory Action Part of Paper No. 24 



Application/Control N0ffiber: 09/773,351 ^ Page 2 

Art Unit: 1617 

Advisory Action 

This Office Action is a response to Applicant's response after FINAL filed 
on October 6, 2003. 

5. Applicant's remarks filed October 6 t 2003 with respect to the 
rejection of claims 1, 3-4, 6-9, 11 and 18 rejected under 35 U.S.C. 103(a) as 
being unpatentable over Ribier et al. (5,925,364, of record) in view of Sebag et 
al.(5,41 1 ,742, of record) have been fully considered but are unpersuasive for 
reasons of record stated in the Final Office Action dated May 6, 2003. 

Applicant argues that Ribier et al. (5,925,364) does not teach the 
combination of the NADG and cholesterol. However, note that claims 1, 3-4, 6-9, 
1 1 and 1 8 are not limited to the particular combination of the NADG and 
cholesterol, but merely reciting a mixture of cholesterol sulfate or salts and an 
exfoliant broadly . 

Applicant's remarks filed October 6, 2003 with respect to the rejection of 
claims 1, 3-9, and 13-19 rejected under 35 U.S.C. 103(a) as being unpatentable 
over Ribier et al. (5,650,166) and the rejection of Claims 10-12 and 20 rejected 
under 35 U.S.C. 103(a) as being unpatentable over Ribier et al. (5,650,166) 
further in view of Subbiah (6,1 50,381 ) and Ichinose et al. (5,702,691 ) , have been 
fully considered but are unpersuasive for reasons of record stated in the Final 
Office Action dated May 6, 2003. 

Again, Applicant argument that the '166 reference fails to teach or suggest 
a mixture of cholesterol sulfate and an exfoliant of the present invention, is not 
found convincing since Ribier '166 discloses that the composition therein 



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

Art Unit: 1617 

comprises cholesterol sulfate (col. 3 lines 66-67 in particular) and N- 
acetylgucosamine (NADG, the instant exfoliant) (see col. 5 line 67). 

In response to applicant's argument that that the '166 reference are 
contrary to the present invention because with the mixture of NADG and 
cholesterol sulfate there is no separation or vehicle, it is noted that the features 
upon which applicant relies (i.e., the mixture of NADG and cholesterol sulfate 
there is no separation or vehicle) are not recited in the rejected claim(s). 
Therefore, it is irrelevant whether the reference includes those features or not. 
Moreover, note that it is well settled that "intended use" of a composition or 
product, will not further limit claims drawn to a composition or product. See, e.g., 
Ex parte Masham, 2 USPQ2d 1647 (1987) and In re Hac/c 114, USPQ 161, even 
though the prior art composition in '166 has the different intended use from the 
instant composition. 

Further, as discussed in the Final Rejection, Applicant's one Example 
shown in the specification at pages 8-10 herein have been fully considered but 
are not deemed persuasive as to the nonobviousness and/or unexpected results 
of the claimed invention over the prior art for the reasons below. Example 1 
provides no clear and convincing evidence of nonobviousness or unexpected 
results over the cited prior art since there is no comparison to the same present. 
Therefore, the evidence presented in specification herein is not seen to be clear 
and convincing in support the nonobviousness of the instant claimed invention 
over the prior art. 



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

Art Unit: 1617 

Therefore, motivation to combine the teachings of the prior art to make the 
present invention is seen and no impermissible hindsight is seen. The claimed 
invention is clearly obvious in view of the prior art. 



Any inquiry concerning this communication or earlier communications from 
the examiner should be directed to Examiner Jiang, whose telephone number is 
(703) 305-1008. The examiner can normally be reached on Monday-Friday from 
9:00 to 5:00. 

If attempts to reach the examiner by telephone are unsuccessful, the 
examiner's supervisor, Sreenivasan Padmanabhan, Ph.D., can be reached on 
(703) 305-1877. The fax phone number for the organization where this 
application or proceeding is assigned is (703) 308-4556. 

Any inquiry of a general nature or relating to the status of this application 

or proceeding should be directed to the receptionist whose telephone number is 

(703)305-1235. 

S. A. Jiang, Ph.D. 

Patent Examiner, AU 1617 

October 27, 2003