DETAILED ACTION
The present application is a national stage entry of PCT/JP2021/029928, filed 16 August 2021, which claims foreign priority to JP2021-121685, filed 26 July 2021, JP2021-002813, filed 12 January 2021, and JP2020-146939, filed 01 September 2020.
The preliminary amendment filed 07 February 2023 is acknowledged. Claims 1-20 are pending in the current application. Claims 13-20 are withdrawn as being drawn to a non-elected invention, see below. Claims 1-20 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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12 in the reply filed on 29 December 2025 is acknowledged.
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 29 December 2025.
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 1-12 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.
The recitation “a content of ethanol is less than 20% by mass relative to the mass of the adenosine-containing composition” in claim 1 renders the claim and dependent claims 2-12 herein indefinite.
The use of the article “a” suggests multiple contents of ethanol, including above 20% by mass relative to the mass of the adenosine-containing composition. Thus, the metes and bounds of the claim are indefinite because it is not clear if this recitation limits the claim to require the amount of ethanol to be less than 20% by mass relative to the mass of the adenosine-containing composition.
To overcome the rejection, the claim could be amended to recite “wherein ethanol is present in an amount of less than 20% by mass relative to the mass of the adenosine-containing composition”.
Claim 3 is similarly indefinite for the recitation “a content by percentage of the component (A)…”.
To overcome the rejection, the claim could be amended to recite “component (A) is present in an amount of from 5x10-4% by mass to 8% by mass relative to the mass of the adenosine-containing composition”.
Claims 6 and 7 are indefinite for similar reasons as discussed above. They can be amended in a similar manner as suggested above.
Claim Rejections - 35 USC § 102
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 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) 1-4 and 6-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chung et al. (KR101941819B1, original document and English translation cited in PTO-892) as evidenced by Hwang et al. (US Patent No. 7,081,258, cited in PTO-892).
Chung et al. disclose a cosmetic composition comprising 0.03-0.05 wt.% adenosine, 0.00005-1 wt.% Sophora Flavescens Root Extract, 40-80 wt.% water, and 0.00005-0.1 wt.% alcohol (para [0086]). The composition further comprises 0.5-3 wt.% butylene glycol, 0.1-5 wt.% dipropylene glycol, 1-3 wt.% methylpropanediol and 1-2 wt.% 1,2-hexanediol (i.e. a polyol). Chung et al. disclose manufacturing a mask pack by dissolving the ingredients of the cosmetic composition together (para [0017], [0053], [0077]-[0080]). The cosmetic composition is intended to be applied to the skin (abstract). The composition has an anti-aging effect, including by decreasing the appearance of wrinkles (para [0033]). The Sophora Flavescens and adenosine function as a skin conditioning agent (para [0011], [0035]).
As evidenced by Hwang et al., Sophora flavescens and Sophora angustifolia are synonyms for the same plant (col.2: 54-60).
The recitation “for application to the scalp” in present claim 12 is an intended use of the composition.
The recitation “wherein the component (B) is a component which suppresses precipitation of the dissolved component (A)” in claim 4 is a latent property of component (B).
The amount of adenosine relative to the mass of the composition lies within the range of present claim 3. The amount of the plant extract relative to the mass of the composition lies within the range of present claim 6. The amount of water relative to the mass of the composition lies within the range of present claim 7. And the total amount of the polyol noted above lies within the range of present claim 8.
Thus, Chung et al. disclose an adenosine-containing composition comprising adenosine, Sophora Angustifolia root extract, and water. It additionally comprises a polyol, and the components are dissolved together in a single phase. Furthermore, it contains substantially no ethanol. The composition is a cosmetic composition intended to be applied to the skin.
Thus, the disclosure of Chung et al. anticipates claims 1-4 and 6-12 of the present application.
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 Chung et al. in view of Park et al. (US Patent Application Publication No. 2019/0015306, cited in PTO-892) and Herman et al. (Skin Pharmacology and Physiology, 2012, vol. 26, no. 1, cited in PTO-892).
Chung et al. teach as discussed above.
Chung et al. do not expressly disclose caffeine (present claim 5).
Park et al. teach a cosmetic composition comprising adenosine and Sophora angustifolia extract (claim 1). The formulation also contains caffeine (claim 1). Park et al. specifically teach adenosine, caffeine and the Sophora angustifolia extract have an effect of improving skin lifting (para [0046]). The composition is intended to delay or prevent skin aging (e.g. background art, para [0052]-[0080] and [0106]).
Herman et al. teach caffeine is used in cosmetic compositions because it has anti-cellulite properties, antioxidant properties, and stimulates the growth of hair by inhibiting 5-α-reductase activity (abstract). Herman et al. teach caffeine also protects cells against UV radiation and slows down the process of photoaging of the skin (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine caffeine with the adenosine-containing composition of Chung et al., because in the same field of endeavor of providing an anti-aging cosmetic composition, Park et al. teach combining caffeine with a composition comprising adenosine and Sophora angustifolia extract, and Herman et al. teach caffeine slows photoaging of the skin by protecting cells against UV radiation.
According to MPEP 2144.06: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Combining known therapies into a single therapy is a commonly applied method for identifying improved therapeutic outcomes with minimal adverse effect for the patient because each monotherapy is already known to be effective. Here, Sophora Flavescens (aka Sophora angustifolia) and adenosine were observed to have a positive effect on skin-conditioning, while caffeine slows photoaging of the skin. Thus, the skilled artisan would have been motivated to combine the three skin active agents wherein they each have a beneficial effect in anti-aging skin cosmetic compositions.
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.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699