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 .
Election/Restrictions
Applicant’s election with traverse of Group I (claims 1, 3, 4, and 8) in the reply filed on 7/15/2025 is acknowledged. The traversal is on the ground(s) that the restriction is only proper is the claims of the restricted groups are independent or patentably distinct and there would be a serious burden place on the Examiner if restriction is not required. This is not found persuasive as these conditions do not apply to 371 applications, only U.S. applications. Applicant remarks that when citing lack of unity of invention in a national stage application, the Examiner has the burden of explaining why each group lacks unity with each other group specifically describing special technical features in each group. This is not persuasive as the Examiner, on page 4 of the office action mailed 5/14/2025, explained that Groups I, II, III, and IV have the same special technical feature, however, this feature did not appear to make a contribution over the prior art. Applicant remarks that the Examiner has misinterpreted the phrase “contribution which each of the inventions, considered as a whole, makes over the prior art” as relating to patentable claims. This is not persuasive as PCT restriction does not refer to patentable claims and the Examiner is not using the art and interpreting the claims to determine patentability, rather, it is solely used for restriction purposes. Applicant remarks that the Examiner has not provided any indication that the contents of the claims interpreted in light of the description was considered in making the assertion of a lack of unity and therefore has not met the burden necessary to support the assertion. This is not persuasive as there is no requirement in the MPEP that the Examiner state on the record how the claims are interpreted for restriction purposes, furthermore, per the MPEP, claims are always given their broadest reasonable interpretation in light of the specification.
Claims 2,5-7 and 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/15/2025.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities:
Words appear to be missing in the portion that reads “contact a component (a) one or more compounds”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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.
Claims 1, 3, 4, and 8, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, claim 1 recites the limitation "the metabolism" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 3-4 and 8 depend from claim 1 and do not cure the deficiencies of claim 1. Therefore, claims 3-4 and 8 inherit the deficiencies of parent claim 1.
Regarding Claim 4, claim 4 is unclear when read in light of its parent claim, claim 1. Claim 1 recites, “branched fatty acid of the microorganism.” This seems to indicate that the branched fatty acid is contained within the microorganism. In contrast, claim 4 recites, “wherein the component is brought into contact with the microorganism under the presence of a branched fatty acid.” This seems to indicate that the branched fatty acid is external to the microorganism. For purposes of examination, claim 4 is being interpreted to mean that the component is brought into contact with the microorganism under the presence of a branched fatty acid that is external to the microorganism. Applicant is suggested to clarify the language of the claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In view of the 112(b) rejection above, if claim 4 is interpreted consistently with the language of its parent claim 1, wherein “under the presence of a branched fatty acid” refers to a branched fatty acid contained within the microorganism, claim 4 does not appear to further limit the method of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2018052980A, published 4/5/2018 (cited on IDS filed 5/12/2022), as evidenced by Goto et al. (2016), and as evidenced by Lambert et al. (1984).
Regarding claim 1, JP ‘980 teaches a method comprising bringing a compound with the general formula R1O-(AO)nH, wherein R1 is a hydrocarbon group having 10 to 16 carbon atoms and the AO group is an ethyleneoxy group and n is a number of 1 to 20, into contact with a microorganism of the genus Moraxella [claim 1]. JP ‘890 does not explicitly disclose the presence of branched chain fatty acids but cellular branched fatty acids are known to be present in microorganisms such as Moraxella [Lambert page 490, paragraph 1]. The prior art anticipates the claimed method steps with the claimed composition because the treatment of the same patient population with the same compound would result in the expected property of controlling the metabolism of branched fatty acids in microorganisms.
Regarding claim 3, claim 3 depends from claim 1 (discussed above) and further recites a limitation wherein a viable bacterial count of the microorganism is substantially maintained before and after contact with the claimed compound. It is noted that the substantially maintained viable bacterial count of the microorganism is an expected property of the method. The prior art anticipates the claimed method, thus, a property that results as a consequence of performing the claimed method to the same patient population would be expected absence evidence to the contrary. Furthermore, JP ‘980 discloses that the presence of the compound with R1O-(AO)nH, wherein R1 is a hydrocarbon group having 10 to 16 carbon atoms and the AO group is an ethyleneoxy group and n is a number of 1 to 20, had an inhibitory effect on the sterilization effect on microorganisms treated with the disclosed method [0021].
Regarding claim 8, claim 8 depends from claim 1 (discussed above) and further recites that the metabolism of the branched fatty acid of the microorganism is beta oxidation. While JP ‘980 is silent as to the microorganism’s metabolism of the branched fatty acid, it is known in the art that bacteria of the genus Moraxella metabolize fatty acids through the beta oxidation pathway as evidenced by Goto et al. [page 1, paragraph 5]. Thus, the limitations of the instant claim are anticipated by JP ‘980.
Claim(s) 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burke-Colvin et al. (US 2018/0050224 A1), published 2/22/2018, as evidenced by Wang et al. (2020), and as evidenced by Austin et al. (2003).
As previously discussed, in view of the 112(b) rejection above, claim 4 is being interpreted to mean that the component (a) is brought into contact with a microorganism under the presence of a branched fatty acid that is external to the microorganism. Regarding claim 4, Burke-Colvin teaches a method of treating skin comprising the topical application of an emulsion comprising cetyl alcohol (reads on component (a) with general formula RO-(C2H4O)n-H wherein n=0 and R is a linear aliphatic hydrocarbon group with 9 to 16 carbons) [claim 1]. While Burke-Colvin does not explicitly disclose bringing the claimed component into contact with branched fatty acids or microorganisms, branched chain fatty acids are known to be present in human skin lipids as evidenced by Wang et al. [page 1, abstract], and microorganisms are known to be present in permanent populations on human skin as evidenced by Austin et al. [page 105, paragraph 1]. Therefore, the instant claim limitations are anticipated by the prior art.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Banowski et al. (US 2006/0029624 A1), published 2/9/2006, as evidenced by Wang et al. (2020), and as evidenced by Austin et al. (2003).
As previously discussed, in view of the 112(b) rejection above, claim 4 is being interpreted to mean that the component (a) is brought into contact with a microorganism under the presence of a branched fatty acid that is external to the microorganism. Regarding claim 4, Banowski teaches a deodorant/antiperspirant stick comprising alkanols having 12 to 30 carbons, such as cetyl alcohol (reads on component (a) with general formula RO-(C2H4O)n-H wherein n=0 and R is a linear aliphatic hydrocarbon group with 9 to 16 carbons) [0064; claim 4]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) Banowski further discloses that the deodorant/antiperspirant composition may be applied to the skin (reads on component (a) being brought into contact with the microorganism under the presence of a branched fatty acid) [claim 19].
While Banowski does not explicitly disclose bringing the claimed component into contact with branched fatty acids or microorganisms, branched chain fatty acids are known to be present in human skin lipids as evidenced by Wang et al. [page 1, abstract], and microorganisms are known to be present in permanent populations on human skin as evidenced by Austin et al. [page 105, paragraph 1] Therefore, the application of the deodorant stick taught by Banowski makes obvious the limitations of claim 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached M-F 9-5 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613