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 .
The response dated 11/25/2025 is acknowledged. Claims 1-2 and 4-18 are pending. Claim 3 was cancelled. Claims 5-9 and 13 are withdrawn. Claim 18 is new. Claims 1-2, 4, 10-12, and 14-18 are considered on the merits below.
Response to Amendment
Applicant's amendments, filed 11/25/2025, with respect to the 112b rejections have been fully satisfied and withdrawn.
In response to the applicant's amendments, the grounds of rejection for claims 1-2, 4, 10-12, and 14-18 are new compared to the previous action.
Information Disclosure Statement
The Information Disclosure Statement filed on 12/17/2025 is in compliance with the provisions of 37 CFR 1.97 and has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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(s) 1-2, 4, 10-12, and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmaus et al. (US 8,911,795 B2 herein "Schmaus") in view of Ishihara et al. (Phytochemistry 50 (1999) 237-242, provided on the IDS on 5/12/2025, herein “Ishihara”).
Regarding claim 1, Schmaus describes a composition comprising:
Avenanthramide (column 2 Formula I
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is the genus compound for Avenanthramides); and
a penetration enhancer comprising a diol (column 14 “diols such as propylene glycol”).
However Schmaus is silent to the specific compound avenanthramide L.
Ishihara describes 5 different Avenanthramides including Avenanthramide L (page 237 compound 5, and page 238 table 1), and suggests that all five are common species within the Avenanthramides (page 237 “Avenanthramides (1±5), a series of substituted N cinnamoylanthranilate derivatives, are phytoalexins in oats (Avena sativa L.)”). This provides motivation for simple substitution of one compound for another within a genus.
Therefore it would have been obvious for one skilled in the art that the time the invention was filed to modify the genus compound of Schmaus with the specific Avenanthramide (Avn L) suggested by Ishihara because it would be simple substitution of one compound for another within a genus.
Regarding claim 2, the combination described above describes the composition according to claim 1, wherein the avenanthramide L is obtained from an oat source of the oat species Avena sativa or Avena nuda (Schmaus: Table 4 column 33 “Avena Sativa” and Ishihara: page 241 “Avena Sativa”).
Regarding claim 4, the combination described above describes the composition according to claim 1, comprising: 0.0001 to 5.0 wt% of the avenanthramide L, and 0.01 to 10.0 wt% of the penetration enhancer based on the total weight of the composition (Schmaus: column 13 “A concentration range of 0.001 to 1 percent by weight is particularly preferred” and column 14 “the use concentration of the moisture retention regulators (penetration enhancers) ranges… preferably from 0.5 to 5% (m/m)” Examiner’s note: the combination provided in claim 1 would result in avenanthramide L have the concentration that is provided for the compounds of Schmaus).
Regarding claim 10, the combination described above describes a cosmetic or pharmaceutical preparation comprising the composition according to claim 1 (Schmaus: column 13 “The mixtures according to the invention are particularly effective and furthermore are free of any toxicologically or dermatologically critical secondary components; they can therefore be used without problems in pharmaceutical or cosmetic products.”).
Regarding claim 11, the combination described above describes the cosmetic or pharmaceutical preparation according to claim 10, further comprising one or more active substances selected from the group consisting of skin-moisturizing and/or moisture-retaining substances, cooling agents, osmolytes, keratological substances, nurturing substances, anti-inflammatory, antibacterial or antimycotic substances, substances having a reddening-alleviating or itch-alleviating action, lenitive substances, mixtures of the foregoing, cosmetically or pharmaceutically acceptable excipients selected from the group consisting of antioxidants, preservatives, chelating agents, surface-active substances, emulsifiers, perfume oils, anti-foaming agents, colorants, pigments having a colouring action, thickeners, plasticisers, fats, oils, waxes, alcohols, polyols, polymers, foam stabilisers, electrolytes, organic solvents, silicone derivatives, and a mixture of any of the foregoing (Schmaus: column 25 “According to the invention, any conceivable antioxidants, perfume oils, antifoams, colorants, pigments with a coloring action, thickeners, Surface-active Substances, emulsifiers, plasticizers, moisturizing and/or moisture-retaining Substances, fats, oils, waxes, alcohols, polyols, polymers, foam stabilizers, electrolytes, organic solvents or silicone derivatives that are Suitable or conventionally used for cosmetic and/or dermatological applications can be used here.”).
Regarding claim 12, the combination described above describes the cosmetic or pharmaceutical preparation according to claim 10 in the form of a fluid, tincture, lotion, gel, cream, ointment, spray or shampoo (Schmaus: column 24-25 “The mixtures according to the invention can be incorporated without difficulty into conventional cosmetic or dermatological/keratological formulations such as, interalia, pump sprays, aerosol sprays, creams, shampoos, ointments, tinctures, lotions, nail care products (e.g. nail varnishes, nail varnish removers, nail balsams) and the like.”).
Regarding claim 14, the combination described above describes he composition of claim 1, wherein the penetration enhancer is selected from one or more of the group consisting of 1,2-propanediol, 1,2-butanediol, 1,2-pentanediol, 1,2-hexanediol, 1,2-heptanediol, 1,2-octanediol, 1,2-nonanediol, 1,2-decanediol, or 1,2-dodecanediol, 1,3-butanediol, 1,3-propanediol, 1,4-butanediol, 1,1'- oxydi-2-propanol and its isomers, and combinations of any of the foregoing (Schmaus: column 14 “diols such as propylene glycol”).
Regarding claim 15, the combination described above describes the composition of claim 4, wherein the avenanthramide L is present in an amount of 0.001 to 1.0 wt%, based on the total weight of the composition (Schmaus: column 13 “A concentration range of 0.001 to 1 percent by weight is particularly preferred” Examiner’s note: the combination provided in claim 1 would result in avenanthramide L have the concentration that is provided for the compounds of Schmaus).
Regarding claim 16, the combination described above describes the composition of claim 4, wherein the penetration enhancer is present in an amount of 0.1 to 5.0 wt%, based on the total weight of the composition (Schmaus: column 14 “the use concentration of the moisture retention regulators (penetration enhancers) ranges… preferably from 0.5 to 5% (m/m)”).
Regarding claim 17, the combination described above describes the cosmetic or pharmaceutical preparation of claim 10, wherein the composition is present in an amount of 0.0001 to 10% by weight, based on the total weight of the cosmetic or pharmaceutical preparation (Schmaus: column 13 “A concentration range of 0.001 to 1 percent by weight is particularly preferred”).
Regarding claim 18, Shaumas describes a composition comprising:
avenanthramide (column 2 Formula I
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is the genus compound for Avenanthramides); and
, and
a penetration enhancer selected from the group consisting of 1,2-propanediol, 1,2- butanediol, 1,2-pentanediol, 1,2-hexanediol, 1,2-heptanediol, 1,2-octanediol, 1,2-nonanediol, 1,2-decanediol, 1,2-dodecanediol, 1,3-butanediol, 1,3-propanediol, 1,4-butanediol, 1,1'- oxydi-2-propanol (dipropylene glycol) and its isomers, and combinations of any of the foregoing (column 14 “diols such as propylene glycol” which is 1,2-propanediol).
However Schmaus is silent to the specific compound avenanthramide L.
Ishihara describes 5 different Avenanthramides including Avenanthramide L (page 237 compound 5, and page 238 table 1), and suggests that all five are common species within the Avenanthramides (page 237 “Avenanthramides (1±5), a series of substituted N cinnamoylanthranilate derivatives, are phytoalexins in oats (Avena sativa L.)”). This provides motivation for simple substitution of one compound for another within a genus.
Therefore it would have been obvious for one skilled in the art that the time the invention was filed to modify the genus compound of Schmaus with the specific Avenanthramide (Avn L) suggested by Ishihara because it would be simple substitution of one compound for another within a genus.
Response to Arguments
Applicant’s arguments with respect to claims 1, 2, 4, 10, 11, 12, 14, 15, 16, 17, and 18 have been considered but are moot because the arguments do not apply to the current rejection.
Applicant’s arguments, see page 3-4, filed 11/25/2025, with respect to the 101 rejection have been fully considered and are persuasive. The 101 rejection has been withdrawn.
Conclusion
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 EMILY R BERKELEY whose telephone number is (571)272-9831. The examiner can normally be reached M-Th 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Robinson can be reached at 571-272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY R. BERKELEY/
Examiner
Art Unit 1796
/Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625