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 . Claims included in the prosecution are claims 1, 8-13 and 16-27.
Applicants' arguments, filed 05/19/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claims 1 and 16 are objected to because of the following informalities: the term “or” at the end of the claim should be removed. Appropriate correction is required.
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.
1. Claims 1 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Oto et al. (JP 2008280308 A, Nov. 20, 2008) (hereinafter Oto) in view of Miyoshi et al. (JP 2002087976 A, Mar. 27, 2002) (hereinafter Miyoshi), as evidenced by My Health Alberta (Learning about Hirsutism, Dec. 4, 2024).
Oto discloses a hair cosmetic comprising amarogentin and/or amaroswellin as active ingredient(s) (abstract). Amarogentin and amaroswellin have testosterone 5α-reductase inhibitory action (page 11 of translation, first paragraph). The hair cosmetic may be a tonic (i.e., solution) and may comprise glycerin (i.e. auxiliary agent) (page 21 of translation, Example 8).
Oto differs from the instant claims insofar as not disclosing wherein the hair cosmetic is used for treating unwanted hair growth.
However, Miyoshi discloses a new plant extract having testosterone 5α-reductase inhibiting action for treatment and prevention of hirsutism (abstract and page 4, seventh paragraph).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have used the hair cosmetic of Oto for treating hirsutism since the hair cosmetic comprises active ingredients having testosterone 5α-reductase inhibitory action and active ingredients with testosterone 5α-reductase inhibiting action treats hirsutism as taught by Miyoshi.
In regards to instant claim 13 reciting wherein the method treats a condition not caused by a disease or disorder, as evidenced by My Health Alberta, most of the time, hirsutism is not caused by a medical problem (What is hirsutism). Thus, hirsutism may be considered as a condition not caused by a disease or disorder.
2. Claims 1, 8-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al. (US 2006/0018867, Jan. 26, 2006) (hereinafter Kawasaki) in view of Kulke et al. (CN 108853105 A, Nov. 23, 2018) (hereinafter Kulke), and Miyoshi et al. (JP 2002087976 A, Mar. 27, 2002) (hereinafter Miyoshi), as evidenced by My Health Alberta (Learning about Hirsutism, Dec. 4, 2024).
Kawasaki discloses a cosmetic composition (abstract). The cosmetic composition may comprise a testosterone 5 alpha-reductase inhibitor (¶ [0087]). Suitable testosterone 5 alpha-reductase inhibitors include stevia rebaudiana extract and other extracts (¶ [0114]). The cosmetic composition may be a hair treating agent, such as a hair lotion (¶ [0047]). The cosmetic composition may comprise glycerin (i.e., auxiliary agent) (page 45, Production Example 14 Hair Treatment).
Kawasaki differs from the instant claims insofar as not disclosing wherein the cosmetic composition comprises rebaudioside A and is used to treat unwanted hair growth.
However, Kulke discloses wherein rebaudioside A is a stevia rebaudiana extract (page 27 of translation, antepenultimate paragraph).
Miyoshi discloses a new plant extract having testosterone 5α-reductase inhibiting action for treatment and prevention of hirsutism (abstract and page 4, seventh paragraph).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated rebaudioside A into the cosmetic composition of Kawasaki since the cosmetic composition comprises a stevia rebaudiana extract as a testosterone 5 alpha-reductase inhibitor and rebaudioside A is a known and effective stevia rebaudiana extract as taught by Kulke.
Additionally, it would have been prima facie obvious to one of ordinary skill in the art to have used the cosmetic composition of Kawasaki for treating hirsutism since the cosmetic composition comprises testosterone 5 alpha-reductase inhibitors and active ingredients with testosterone 5α-reductase inhibiting action treats hirsutism as taught by Miyoshi.
In regards to instant claim 13 reciting wherein the method treats a condition not caused by a disease or disorder, as evidenced by My Health Alberta, most of the time, hirsutism is not caused by a medical problem (What is hirsutism). Thus, hirsutism may be considered as a condition not caused by a disease or disorder.
Response to Arguments
Applicant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
Allowable Subject Matter
Claims 21-27 are allowable.
The following is a statement of reasons for the indication of allowable subject matter: It was not known in the art to use bitter taste receptor TAS2R4 for treating hair, nonetheless hair growth.
Conclusion
Claims 1, 8-13 and 16-20 are rejected.
Claims 21-27 are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY LIU whose telephone number is (571)270-5115. The examiner can normally be reached Mon-Fri 9 am - 5 pm.
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/TRACY LIU/ Primary Examiner, Art Unit 1614
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