DETAILED ACTION
This Office Action is in response to Applicant’s Amendment and Remarks filed on 19 May 2026 in which claims 1, 3, 6 and 7 were amended to change the scope and breadth of the claims.
Claims 1-20 are pending in the current application. Claims 13-20 remain withdrawn as being drawn to a non-elected invention. Claims 1-12 are examined on the merits herein.
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 .
Withdrawn Rejections
Applicant’s amendment, filed 19 May 2026, with respect to the rejection of claims 1-12 under 35 U.S.C. § 112, second paragraph, for indefiniteness, has been fully considered and is persuasive because the claims have been amended as suggested. The rejection is hereby withdrawn.
Applicant’s amendment, filed 19 May 2026, with respect to the rejection of claims 1-4 and 6-12 under 35 U.S.C. § 102(a)(1) as being anticipated by Chung et al. as evidenced by Hwang et al., has been fully considered and is persuasive because claim 1 has been amended to require “0.2% to 5% by mass of adenosine” and component “(D) POE/POP decyltetradecyl ether”. Chung et al. do not expressly disclose the newly added limitation. The rejection is hereby withdrawn.
Applicant’s amendment, filed 19 May 2026, with respect to the rejection of claims 1-4 and 6-12 under 35 U.S.C. § 103 as being unpatentable over Chung et al. in view of Park et al. and Herman et al., has been fully considered and is persuasive because claim 1 has been amended to require “0.2% to 5% by mass of adenosine” and component “(D) POE/POP decyltetradecyl ether”. Chung et al. do not expressly disclose the newly added limitation. The rejection is hereby withdrawn.
New & Modified
The following are new ground(s) or modified rejections necessitated by Applicant's amendment, filed on 19 May 2026, where the limitations in pending claims 1, 3, 6 and 7 as amended now have been changed. Therefore, rejections from the previous Office Action, dated 17 February 2026, have been modified and are listed below.
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.
Claim(s) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Pan et al. (US Patent Application Publication No. 2014/0107059, cited in IDS submitted 11 April 2023) in view of Jimbo et al. (WO 2011/102001, cited in PTO-892).
Pan et al. teach a composition comprising (a) adenosine, and (b) at least one hydrotrope in an amount effective to solubilize adenosine in water, for cosmetic uses (abstract, claim 1). The use of a hydrotrope is advantageous, because it stabilizes the adenosine-containing solution (para [0021]). Furthermore, the hydrotrope prevents adenosine from crystallizing or precipitating (para [0022]). The hydrotrope is selected from the group consisting of nicotinamide, caffeine, sodium salicylate, urea, and hydroxyethyl urea, and hydroxyethyl urea (claim 4). The composition can comprise between 0.01% to about 20% adenosine (claim 7). Example 2 phase B1 comprises 43.95 wt.% water, 3 wt.% adenosine, and 5 wt.% caffeine. Phase B3 comprises 5 wt.% water. Phase C comprises 3 wt.% ethanol. Phase B2 comprises 5 wt.% propylene glycol and 15 wt.% glycerin (where propylene glycol and glycerin are types of polyols).
Overall, the composition can contain 1 to 99.9% by weight water, with respect to the total weight of the composition ([0030]). The amount of adenosine can range from about 0.01% to about 20%; about 0.1% to about 10%, or about 0.1% to about 5% (para [0028]). The amount of hydrotrope can range from about 0.1 to about 20%; about 0.1 to about 10% by weight, based on the total weight of the composition, but will vary depending on the amount of adenosine present (para [0020]). The adenosine, hydrotrope, and water are present in a single-phase liquid composition, i.e. phase B1 of preparation A. The aqueous compositions can also comprise at least one additive, including anionic or nonionic or cationic or amphoteric polymers (para [0029]).
In cosmetics, adenosine is known to function as an anti-aging compound for use in skin care products (para [0003]). Adenosine functions to increase DNA/protein synthesis in dermal cells, and used to improve the visual appearance of skin, such as soften fine lines and reduce wrinkles of skin and relax the muscles involved in facial movement and expression (para [0003]).
Pan et al. do not expressly POE/POP decyltetradecyl ether (claim 1, component D).
Jimbo et al. teach kojic acid is unstable in high amounts of water, and can form sediments over time (i.e. precipitates). They also found kojic acid forms sediments (i.e. precipitates) when combined with a certain top of surfactant (p.1). Since the use of surfactants cannot be avoided in cosmetic compositions, Jimbo et al. found non-ionic surfactants which can stabilize kojic acid in cosmetic compositions (p.2). Jimbo et al. teach a cosmetic composition comprising at least none non-ionic surfactant selected from the group consisting of polyoxyethylenated (1-40 EO) and polyoxypropylenated (1-30 PO) alkyl (C16-C24) ethers, polyoxyethylenated (30-50 EO) hydrogenated castor oils, and polyoxyethylenated (15-30 EO) mono- or tri-oleates (abstract). Jimbo et al. teach it is preferable the POE (1-40 EO) and POP (1-30) be selected from the group consisting of PPG-13 decyltetradeceth-24 (p. 2, i.e. POE/POP decyltetradecyl ether).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine an aqueous composition comprising adenosine and sodium salicylate, with POE/POP decyltetradecyl ether.
Starting from Pan et al., the ordinary artisan would have looked to the teachings of Jimbo et al., because they are both concerned with preparing aqueous-based cosmetic compositions comprising an active ingredient that needs to remain dissolved in solution (i.e. not form a precipitate). Pan et al. found sodium salicylate functions as a hydrotrope by stabilizing adenosine in an aqueous solution. Pan et al. further teach the composition can be combined with at least one additive, including anionic or nonionic or cationic or amphoteric polymers (para [0029]).
While the active ingredients are different, In the same field of endeavor for stabilizing a cosmetic active ingredient from precipitating out of an aqueous solution, Jimbo et al. found POE/POP decyltetradecyl ether stabilizes kojic acid from precipitating/crystallizing out of solution. Thus, the ordinary artisan would have been motivated to try combining adenosine, sodium salicylate, water and POE/POP decyltetradecyl ether together, because the use of POE/POP decyltetradecyl ether is one of a finite number of solutions identified for stabilizing organic active cosmetic ingredients in aqueous solutions.
The recitation “wherein the plant extract…” in claim 2 does not require component (B) to be a plant extract.
The recitation “comprising substantially no ethanol” in claim 10 is broadly and reasonably interpreted to include 3 wt.%.
The recitation “wherein the composition is applicable in an external-use skin preparation applicable to the skin” in claim 11” and “wherein the composition is an external-use preparation applicable to the scalp” in claim 12 are intended uses of the composition of claim 1.
With respect to relative amounts of adenosine/sodium salicylate (hydrotrope)/polyol, one having ordinary skill in the art would have been motivated to optimize these values depending on the desired amount of adenosine, as taught by Pan et al.
See MPEP 2144.05 (I), “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”.
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is 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.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699
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