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 .
Status of Claims
Claims 15 and 17-22 are pending. Claims 1-14 and 16 are canceled. Claims 15 and 17-21 are amended.
Claims 18-20 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 15, 17 and 21-22 are examined on their merits to the extent of the elected species, the skin treatment is (a) reduction of oxidized proteins after UV exposure.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC § 112(b)
In light of the amendments to the claims the rejection of claims 17 and 21-22 under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention is withdrawn.
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claims 15, 17 and 21-22 under 35 U.S.C. 103 as being unpatentable over Kalahisti et al. US 2020/0085726, published 3/19/2020 priority to 9/18/2019, as evidenced by the specification is withdrawn.
New Objections
Claim Objections
Claims 21-22 are objected to for the recitation of “the Himanthalia elongata extract”. Amending claims 21 and 22 to recite “the acidic Himanthalia elongata extract” consistent with claim 1 would improve the clarity of the claim language. 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 15, 17 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kalahisti et al. US 2020/0085726, published 3/19/2020 priority to 9/18/2019 in view of Mian et al. The polysaccharides of the brown seaweed Himanthalia elongata. Carbohydrate research, 26(1), 13-22 (1973) and Song Y.S. et al. ERK Activation by Fucoidan Leads to Inhibition of Melanogenesis in Mel-Ab Cells, Korean Journal of Physiology & Pharmacology, vol,. 19, no. 1, (2015) pp 29-34, as evidenced by the specification.
Kalahisti et al. (Kalahisti) teaches a method of reducing the appearance of hyperpigmented skin in a person by topically applying a cosmetic composition that comprises an effective amount of a mixture of Himanthalia elongata extract and Undaria pinnatifica extract (See Abstract, [0010] and claim 12). Kalahisti teaches that the hyperpigmentation can be senile lentigo, which presents after prolonged exposure to UV radiation (see par. [0010]). The Himanthalia elongata extract is an aqueous extract with an amount between 0.1 and 2% w/w. (See [0015]). The examples show an effect on the pigmentation but also on the firmness and the elasticity of the skin.
Kalahisti thus teaches a method of treating the skin by topically applying a composition that comprises an effective amount of a mixture of Himanthalia elongata extract and Undaria pinnatifica extract is known in the art. These are the same steps called for in instant claim 15; a method for treating skin that comprises the step of administering a Himanthalia elongate to skin. (See [0010] and Kalahisti claim 12). The composition is a cosmetic composition as called for in instant claim 21. (See [0050-0052]). Kalahisti teaches that the Himanthalia elongata extract and Undaria pinnatifica extract is present in an amount of from about 0.00001 to 10% wt, or 0.00001 to 5% wt combined or individually, which overlaps with the about 2 to about 5% wt called for in instant claim 22. (See Kalahisti par [0015] and claim 12,).
Kalahista does not teach an acidic Himanthalia elongata extract or the benefits of an acidic extract of Himanthalia elongata. This deficiency is made up for with the teachings of Mian et al. and Song Y.S. et al.
Mian et al. (Mian) teaches an acidic extraction of Himanthalia elongata using a dilute acid. Mian teaches an extraction process that involves treating the seaweed with dilute acid, followed by alkali and water. Mian teaches that this acidic extraction method can produce high amounts of polysaccharides like fucoidan. (See Table III on page 136). The extract would be acidic and would have a higher content of polysaccharides like fucoidan. An acidic extract is called for in instant claim 15.
Song Y.S. et al. (Song) teaches that fucoidan significantly decreased melanin content in Mel-Ab cells, a cell lines commonly used in pigmentation studies. Additionally, Song reported that fucoidan downregulated MITF, a key protein that regulates the expression of genes involved in melanin synthesis. (See Abstract). Song appears to suggest that fucoidan can decrease the melainin content of skin cells themselves.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention following the teachings of Kalahista to use a dilute acid in the extraction of Himanthalia elongata in order to increase the amount of polysaccharides such as fucoidans extracted from the Himanthalia elongata in order to have the extract be more powerful for reducing the appearance of hyperpigmented skin by reducing the amount of melanin in the skin cells as suggested by Song.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to follow the teachings of Kalahista, Mian and Song and topically apply the cosmetic composition of Kalahista comprising from about 0.00001 to 10% wt Himanthalia elongata acidic extract and Undaria pinnatifica extract to skin for reducing the appearance of hyperpigmented skin.
With respect to the recitation “for reduction of oxidized proteins after UV exposure” (elected species of ‘skin treatment’), although Kalahisti is silent about the compositions reduction of oxidized proteins after UV exposure, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the method of Kalahisti. Kalahisti teaches the identical method steps of topically administering to skin the identical cosmetic composition comprising a Himanthalia elongate extract from about 0.1 to 2% wt, which is identical to the claimed method of administering a Himanthalia elongate extract to skin in an amount from about 2 to about 5% by wt. Therefore, the topical administration to skin of the Himanthala elongata extract necessarily reduces oxidized proteins as evidenced by the instant specification at paragraph [0022]. Merely discovering and claiming a new benefit of an old process cannot render the process again patentable. Verdegaal Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d 628, 632-33, 2USPQ2d 1051, 1054 (Fed. Cir.), cert. Denied, 484 U.S. 827 (1987). The mechanism of action does not have a bearing on the patentability of the invention if the invention was already known or obvious. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 201 USPQ 658 (CCPA 1979). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145
Thus it would be have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to topically apply about 0.00001 to 10% wt Himanthalia elongate acidic extract to skin. This would have necessarily reduced oxidized proteins as evidenced by the instant specification at paragraph [0022].
Response to Arguments
Applicants’ comments of September 17, 2025 have been fully reviewed and are found to be partly persuasive for the reasons discussed below.
Applicants note the amendments to the claims to address the indefiniteness rejections and request the withdrawal of the rejection. The rejection is withdrawn above in light of the claim amendments.
Applicants argue that Kalahisti does not disclose or suggest the feature of an acidic extract, although acknowledge that Kalahisti teaches that extracts can be individually obtained by using water, alcohol or polyol extracting solvent or mixtures thereof.
Applicants argue that Kalahisti teaches that the preferred extraction solvent for Himanthalia elongata is 100% water, and teaches that the whole algae plant extract of Himanthalia elongata can be prepared by subjecting the entire algae plant, preferably in crushed or macerated form, to an aqueous solution (preferably 100% water) using water as the solvent. Applicants argue that the use of a 100% water extraction solvent motivates one having ordinary skill in the art to use a neutral pH extraction solvent, not a solvent with an acidic pH to attain a neutral pH extract.
In light of the amendments to the claims, the obviousness rejections are withdrawn above. Applicants argument that Kalahisti does not teach and acidic extract is found to be perusuasive.
Applicants’ argument that Kalahisti teaches that the preferred extraction solvent for Himanthalia elongata is 100% water is not found to be persuasive, however. Himanthalia does teach the use of an aqueous solution as the extraction solvent and if an aqueous solution is used the preferred solvent for an aqueous solution is 100% water. However, there is no expressed preference for an aqueous extraction solvent in Kalahisti as opposed to any other type of extraction solvent.
The remainder of Applicant’s arguments are moot in view of the new rejections applied above.
Conclusion
No claims are allowed.
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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619