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 1-2 and 4-11 are pending.
Claims 3 and 12 are canceled.
Restriction/Election
Applicant’s election of Group I, claims 1-2 and 4-7, in the reply filed on 08/13/2025 is acknowledged.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-2 and 4-7 are under consideration in the instant Office action.
Priority
This application is a 371 of PCT/EP2021/076426 filed 09/26/2021, claiming priority to EPO 20199044.7 filed 09/29/2020.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) filed 03/15/2023 and 07/25/2024 have been considered by the Examiner. A signed copy of each IDS is included with the present Office Action. The Examiner notes that entry 9 of Foreign Patent Documents on the IDS dated 03/15/2023 and entry 1 of Foreign Patent Documents on the IDS dated 07/25/2024 both cite CN 107308101, i.e., CN 107308101 has duplicative citations.
Specification
The disclosure is objected to because of the following:
On Page 1 Line 13, amend "defence" to "defense" for proper American English spelling;
On Page 11 Line 28, amend "synthesise" to "synthesize" for proper American English spelling;
On Page 12 Lines 13-14, amend "0.1wt%" and "0.01wt%" to "0.1 wt%" and "0.01 wt%", respectively, in order to improve readability;
On Page 13 Lines 11-12, amend "0.05wt%" and "0.005wt%" to "0.05 wt%" and "0.005 wt%", respectively, in order to improve readability;
In Table 2, amend the column heading "Amino acid" in order to improve the clarity that the entries in this column represent the amino acid not included in that particular sample, e.g., the Examiner suggests amending the column heading to "Excluded Amino acid";
On Page 19 Line 7, amend "0.1wt%" to "0.1 wt%" in order to improve readability;
On Page 19 Line 8, amend "600nm" to "600 nm" in order to improve readability;
On Page 21 Line 8, delete the right parenthesis at the end of the line to remedy the typographical error, i.e., there is no corresponding left parenthesis;
On Page 22 Line 5, amend "Serine," to "Serine" to remedy the typographical error; and
The recitation of the examples and tables throughout Pages 14-22 is inconsistent. In order to improve the readability and consistency throughout the examples, the Examiner suggests amending all recitations of examples and tables, i.e., as table/example headers and references to the tables/examples in the text, to "Table [Number]" and "Example [Number]", e.g., "Table 1" and "Example 1".
Appropriate correction is required. Applicant’s cooperation is requested in checking the rest of the disclosure for informality errors and making changes accordingly.
Claim Objections
Claims 1 and 5 are objected to because of the following:
Spanning lines 3-4 of claim 1, “a total amount” should be amended to “the total amount” because the phrase is referring to a singular total amount being present rather than referring to one of many total amounts being present; and
In line 2 of claim 5, “a total amount” should be amended to “the total amount” for the same reason as claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-2 and 4-7 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.
(a) Claim 1 is indefinite in the recitation of “a combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L- Tyrosine, and any combination thereof” (emphasis added) because the recitation of ‘a combination of amino acids selected from’ covers all possible combinations of the amino acids in the list and therefore it is unclear what is additionally contemplated by ‘and any combination thereof’. The latter recitation appears to place further limitations on the earlier language, which renders the scope of the limitation ‘a combination of amino acids selected from’ uncertain.
Claims 2 and 4-7 are also rejected as being dependent from claim 1 without resolving the ambiguity of claim 1.
The Examiner suggests either 1) amending ‘a combination of amino acids selected from’ spanning lines 1-2 of claim 1 to ‘at least one amino acid selected from’ or 2) removing ‘, and any combination thereof’ from line 3 of claim 1 in order to overcome this rejection.
(b) Claim 4 recites the limitation "0.01 to 1 wt% of each of the amino acids present in the combination of amino acids" spanning lines 2-3. There is insufficient antecedent basis for the limitation ‘the combination’ in claim 4 because claim 1 earlier recites and ‘a combination of amino acids’ and ‘any combination thereof’, which can be interpreted as encompassing numerous different combinations of the five amino acids specified.
The Examiner suggests amending claim 4 to either 1) recite a specific combination of amino acids or 2) recite that each amino acid is present from 0.01 to 1 wt% in order to overcome this rejection.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, i.e., natural phenomenon, without significantly more.
In accordance with MPEP § 2106, claims found to recite statutory subject matter (Step 1: YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature, or natural phenomenon (Step 2A, Prong One).
In the instant application, the claims recite a personal care composition comprising a combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L-Tyrosine, and any combination thereof.
The claims are directed to a judicial exception, i.e., natural phenomenon (e.g., product of nature) because a combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L-Tyrosine, and any combination thereof is naturally occurring.
MPEP 2106.04(c) states that the markedly different characteristics analysis is part of Step 2A Prong One: “Where the claim is to a nature-based product produced by combining multiple components (e.g., a claim to "a probiotic composition comprising a mixture of Lactobacillus and milk"), the markedly different characteristics analysis should be applied to the resultant nature-based combination, rather than its component parts. For instance, for the probiotic composition example, the mixture of Lactobacillus and milk should be analyzed for markedly different characteristics, rather than the Lactobacillus separately and the milk separately. See subsection II, below, for further guidance on the markedly different characteristic analysis.”
Further, from MPEP 2106.04(c): “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties, and are evaluated based on what is recited in the claim on a case-by-case basis. If the analysis indicates that a nature-based product limitation does not exhibit markedly different characteristics, then that limitation is a product of nature exception. If the analysis indicates that a nature-based product limitation does have markedly different characteristics, then that limitation is not a product of nature exception.”
The guidelines for performing the markedly different characteristics analysis, include (a) selecting the appropriate naturally occurring counterpart(s) to the nature-based product limitation, (b) identifying appropriate characteristics for analysis, and (c) evaluating characteristics to determine whether they are "markedly different".
Regarding (a), MPEP 2106.04(c) recites: “When the nature-based product is a combination produced from multiple components, the closest counterpart may be the individual nature-based components of the combination. For example, assume that applicant claims an inoculant comprising a mixture of bacteria from different species, e.g., some bacteria of species E and some bacteria of species F. Because there is no counterpart mixture in nature, the closest counterparts to the claimed mixture are the individual components of the mixture, i.e., each naturally occurring species by itself. See, e.g., Funk Bros., 333 U.S. at 130, 76 USPQ at 281 (comparing claimed mixture of bacterial species to each species as it occurs in nature); Ambry Genetics, 774 F.3d at 760, 113 USPQ2d at 1244 (although claimed as a pair, individual primer molecules were compared to corresponding segments of naturally occurring gene sequence); In re Bhagat, 726 Fed. Appx. 772, 778-79 (Fed. Cir. 2018) (non-precedential) (comparing claimed mixture of lipids with particular lipid profile to "naturally occurring lipid profiles of walnut oil and olive oil").”
In the instant case, the naturally occurring counterpart to the claimed personal care composition comprising a combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L-Tyrosine, and any combination thereof is a naturally occurring combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L-Tyrosine, and any combination thereof or the individual naturally occurring amino acids L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, and L-Tyrosine. Neither the limitation of the combination of amino acids being L-Cysteine, L-Serine, and L-Alanine nor the limitations regarding the weight percentages of amino acids, peptides having more than 3 amino acids in its chain, and proteins distinguish the claimed composition from those found in nature. That is, these claims recite combinations of natural products and there is no evidence of record that the combinations possess any new structural or functional properties, e.g., that the claimed combination is more than the sum of its parts or is markedly different than what is found in nature.
Regarding (b), MPEP 2106.04(c) recites: “Appropriate characteristics must be possessed by the claimed product, because it is the claim that must define the invention to be patented. Cf. Roslin, 750 F.3d at 1338, 110 USPQ2d at 1673 (unclaimed characteristics could not contribute to eligibility). Examiners can identify the characteristics possessed by the claimed product by looking at what is recited in the claim language and encompassed within the broadest reasonable interpretation of the nature-based product. In some claims, a characteristic may be explicitly recited.”
In the instant case, the appropriate characteristic of a personal care composition comprising a combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L-Tyrosine, and any combination thereof is the combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L-Tyrosine, and any combination thereof for ‘personal care’.
Regarding (c), MPEP 2106.04(c)recites: “The final step in the markedly different characteristics analysis is to compare the characteristics of the claimed nature-based product to its naturally occurring counterpart in its natural state, in order to determine whether the characteristics of the claimed product are markedly different. The courts have emphasized that to show a marked difference, a characteristic must be changed as compared to nature, and cannot be an inherent or innate characteristic of the naturally occurring counterpart or an incidental change in a characteristic of the naturally occurring counterpart. Myriad, 569 U.S. at 580, 106 USPQ2d at 1974-75. Thus, in order to be markedly different, the inventor must have caused the claimed product to possess at least one characteristic that is different from that of the counterpart.
If there is no change in any characteristic, the claimed product lacks markedly different characteristics, and is a product of nature exception. If there is a change in at least one characteristic as compared to the counterpart, and the change came about or was produced by the inventor’s efforts or influences, then the change will generally be considered a markedly different characteristic such that the claimed product is not a product of nature exception.”
In the instant case, the claimed product, a personal care composition comprising a combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L-Tyrosine, and any combination thereof, lacks markedly different characteristics and is a product of nature exception (Step 2A, Prong 1: YES).
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2).
This judicial exception is not integrated into a practical application because there are no additional elements recited in the claims beyond the judicial exception. From MPEP 2106.04(d): “Because a judicial exception alone is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application.” (Step 2A, Prong 2: NO).
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B).
As noted above, there are no additional elements recited in the claims beyond the judicial exception, and a judicial exception alone is not eligible subject matter (Step 2B: NO). The claims do not recite anything else, compositionally or structurally, which provides an inventive concept that departs from merely reciting a composition containing all naturally occurring components.
Neither the limitation of the combination of amino acids being L-Cysteine, L-Serine, and L-Alanine nor the limitations regarding the weight percentages of amino acids, peptides having more than 3 amino acids in its chain, and proteins appear to add significantly more as the claims do not appear to offer any additional element other than a mixture of naturally occurring components.
Therefore, instant claims 1-2 and 4-7 are not patent eligible subject matter under 35 USC § 101.
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.
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.
Claims 1 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al (EP 1459736 A1, published 09/22/2004, cited in IDS dated 03/15/2023) as evidenced by Ajinomoto (“Prodew 300-400”, cited in IDS dated 03/15/2023) and Ultrus Prospector (“PRODEW® 400”, accessed 09/03/2025).
Evans et al teach a skin care composition comprising at least 0.1 wt% of a natural moisturizing factor, wherein the natural moisturizing factor may be Prodew 400 available from Ajinomoto (e.g., [0019]), which as evidenced by Ajinomoto and Ultrus Prospector, comprises the following amino acids: L-Serine (1.5%), Glycine (1.0%), L-Glutamic Acid (0.75%), L-Alanine (0.40%), L-Lysine (0.35%), L-Arginine (0.35%), L-Threonine (0.2%), and L-Proline (0.1%) (i.e., 1.5% L-Serine, 0.4% L-Alanine, and 2.75% amino acids other than L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, and L-Tyrosine; See “PRODEW 400” entry of “Material Information” table on Page 2 of Ajinomoto and “Name” column of table spanning Pages 1-2 of Ultrus Prospector).
The skin care composition of Evans et al comprising 0.1 wt% of Prodew 400 (for which Prodew 400 comprises 1.5% L-Serine, 0.4% L-Alanine, and 2.75% amino acids other than L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, and L-Tyrosine) comprises 0.0015% L-Serine, 0.0004% L-Alanine, and 0.00275 wt% of amino acids other than L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, and L-Tyrosine, where wt% is based on the weight of the composition, which renders obvious instant claim 1.
Evans et al are silent regarding whether the skin care composition comprises peptides having more than 3 amino acids in its chain or comprises proteins. Thus, a skilled artisan would have understood that neither peptides having more than 3 amino acids in its chain nor proteins are present in the skin care composition of Evans et al. See AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (“[A] reference need not state a feature’s absence in order to disclose a negative limitation.”); Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1004–05 (Fed. Cir. 2009) (affirming finding that reference disclosed “uncoated” film where it did not describe the film as coated and did not suggest necessity of coatings).
Evans et al disclose a skin care composition comprising the combination of amino acids as claimed but do not disclose the combination and amounts with sufficient specificity for anticipation. Nevertheless, it would have been obvious to have provided a skin care composition comprising a combination of amino acids selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid and L-Tyrosine having less than 0.005% of other amino acids because Evans et al expressly suggest that the “Prodew 400” can be present at 0.1% by weight in the skin care composition (See Par. [0019], Examples I, II, IV, and V of Par. [0044]). Thus, the skin care composition of Evans renders obvious instant claims 1 and 6-7.
Claims 1-2 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mo et al (KR 101870898 B1, published 06/26/2018) in view of Cosmetic Ingredient Review (“Safety Assessment of α-Amino Acids as Used in Cosmetics”, published 2012).
Mo et al teach a composition for external application for skin which is excellent in antioxidant and antioxidative efficacy, i.e., anti-aging, including a peptide derivative to which galactic acid is conjugated, i.e., a galloyl-peptide derivative (See entire document, e.g., Title, Abstract). Mo et al exemplify compositions comprising the galloyl-peptide derivative at loadings of 0.001 wt%, 1.0 wt%, 2.0 wt%, 5.0 wt%, and 7.0 wt%, where wt% is based on the weight of the composition (See Example 2: Preparation of cosmetic composition on Pages 11-12 of English translation). These exemplified compositions do not comprise proteins (See Example 2: Preparation of cosmetic composition on Pages 11-12 of English translation). The peptide derivative may be the tripeptide cysteinyl-alanyl-serine, i.e., tripeptide composed of cysteine, alanine, and serine (See Example 7.1 on Page 8 of English translation).
Mo et al do not teach each of cysteine, alanine, and serine in the tripeptide being in the L-form.
This deficiency is made up for in the teaching of Cosmetic Ingredient Review.
Cosmetic Ingredient Review reviews the safety of α-amino acids for cosmetic and non-cosmetic uses, wherein α-amino acids function primarily as hair and skin conditioning agents in cosmetic products (See entire document, e.g., Title, Abstract, “Use” on Page 4). Cosmetic Ingredient Review teaches that naturally occurring protein amino acids, with the exception of glycine and methionine, are α-amino acids having L-stereochemistry at the α-carbon (e.g., Par. 3 of “Introduction” on Page 2). Cosmetic Ingredient Review teaches that the Food and Drug Administration has deemed L-amino acids as safe for human consumption, i.e., the ‘Generally Recognized As Safe’ designation, and the Cosmetic Ingredient Review Panel found that, based on dermal irritation and sensitization data relevant to the use of these α-amino acids in topical cosmetics, α-amino acids, i.e., L-amino acids, are safe to use as cosmetic ingredients (e.g., Abstract on Page 2).
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 use the L-forms of each of cysteine, alanine, and serine in the tripeptide in the cosmetic composition of Mo et al because Cosmetic Ingredient Review teaches that the L-stereochemistry is the naturally occurring form of protein amino acids and found that the L-amino acids are safe to use in cosmetics to be topically applied.
The cosmetic composition of Mo et al in view of Cosmetic Ingredient Review comprising a galloyl-peptide derivative exemplified at loadings of 0.001 wt%, 1.0 wt%, 2.0 wt%, 5.0 wt%, and 7.0 wt%, where wt% is based on the weight of the composition, wherein the peptide derivative is the tripeptide composed of L-cysteine, L-alanine, and L-serine, renders obvious the composition of instant claims 1-2 and 5-7.
It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands (Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)). A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Oglesby (US 2015/0086695 A1, published 03/26/2015) in view of Cosmetic Ingredient Review (“Safety Assessment of α-Amino Acids as Used in Cosmetics”, published 2012).
Claim Interpretation: In the instant rejection, claim 1 is being interpreted as “a personal care composition comprising at least one amino acid selected from L-Cysteine, L-Serine, L-Alanine, L-Aspartic acid, L-Tyrosine, and any combination thereof, wherein the total amount of other amino acids in the composition is less than 0.005 wt%”, i.e., the composition comprises a single amino acid from the recited list or any combination of the amino acids from the recited list.
Oglesby teaches a sweetener composition that can be used in personal care products, e.g., soaps, shampoos, rinses, lotions, balms, salves, ointments, paper goods, perfumes, lipstick, other cosmetics (See entire document, e.g., Title, Abstract, [0038], [0131]). The sweetener composition may comprise an amino acid additive in an amount of about 50 ppm to 25,000 ppm (i.e., 0.005 to 2.5%; e.g., [0096], [0098]). The amino acid additive can include amino acids selected from a list including aspartic acid, cysteine, alanine, tyrosine, and serine, the amino acid additive can be in the D- or L-configuration, and the amino acid additive also may encompass the mono form (single amino acid) or tri form (i.e. a mixture of three) different amino acids (e.g., [0098]). Oglesby teaches that the composition may (i.e., or may not) comprise proteins as a colloidal material (e.g., [0079], [0094], [0150]).
Oglesby does not teach a motivation for the amino acid additive to comprise amino acids specifically in the L-configuration.
This deficiency is made up for in the teaching of Cosmetic Ingredient Review.
Cosmetic Ingredient Review reviews the safety of α-amino acids for cosmetic and non-cosmetic uses, wherein α-amino acids function primarily as hair and skin conditioning agents in cosmetic products (See entire document, e.g., Title, Abstract, “Use” on Page 4). Cosmetic Ingredient Review teaches that naturally occurring protein amino acids, with the exception of glycine and methionine, are α-amino acids having L-stereochemistry at the α-carbon (e.g., Par. 3 of “Introduction” on Page 2). Cosmetic Ingredient Review teaches that the Food and Drug Administration has deemed L-amino acids as safe for human consumption, i.e., the ‘Generally Recognized As Safe’ designation, and the Cosmetic Ingredient Review Panel found that, based on dermal irritation and sensitization data relevant to the use of these α-amino acids in topical cosmetics, α-amino acids are safe to use as cosmetic ingredients (e.g., Abstract on Page 2).
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 use amino acids in the L-configuration as the amino acid additive in the sweetener composition of Oglesby because Cosmetic Ingredient Review teaches that the L-stereochemistry is the naturally occurring form of protein amino acids and found that the L-amino acids are safe to use in cosmetics to be topically applied.
The sweetener composition of Oglesby in view of Cosmetic Ingredient Review comprising an amino acid additive in an amount of about 0.005 to 2.5% renders obvious the composition of instant claims 1-2 and 4-7.
In the case that the amino acid additive is at least one of L-aspartic acid, L-cysteine, L-alanine, L-tyrosine, and L-serine, as either a combination of amino acids or as a peptide, instant claims 1 and 4-5 are rendered obvious, e.g., the sweetener composition comprising an amino acid additive being L-aspartic acid in an amount of 1% falls within the claimed ranges of each of instant claims 4 and 5. In the case that the amino acid additive is the combination of L-cysteine, L-alanine, and L-serine, as a combination of amino acids (tri amino acids as suggested by paragraph [0098]), instant claim 2 is rendered obvious. The amino acid additive being amino acids in mono-, di-, or tri-form, i.e., a mixture of no more than three amino acids, renders obvious instant claim 6. In the case that the composition does not comprise proteins as a colloidal material, instant claim 7 is rendered obvious.
It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands (Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)). A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/SARAH ALAWADI/Primary Examiner, Art Unit 1619