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 .
Application Status
The amendment filed on 1/09/2026 in response to the Non-Final Rejection of 9/11/2025 is acknowledged and has been entered. Claims 6-8, 10-14, 16-17, 19-23 and 26-30 are currently pending and under consideration.
Rejections/Objections withdrawn in view of Applicants amendment
Claim Objections
The objection of Claims 14 and 19 are withdrawn in view of Applicants amendment.
The rejection of Claims 14 and 19 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends are withdrawn in view of Applicants amendments
The rejection of Claims 17-18 and 20-25 under 35 U.S.C. 101 because the claimed invention is not directed to patent eligible subject matter is withdrawn in view of Applicants amendments.
Rejections Maintained
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.
Claim(s) 6-8, 10-12 remain rejected under 35 U.S.C. 102a(1) as being anticipated by Heuser et al. (EP2356980A2, 2011-08-17, Translation provided by applicants in IDS) as evidenced by Galdi et al. (US2012/0015016A1, 2012-01-19).
Heuser et al. teach a cosmetic or dermatological preparation comprising dihydromyricetin to increase dermal collagen synthesis and to treat and prevent the symptoms of intrinsic and/or extrinsic skin aging (paragraph 0009). With regards to the dihydromyricetin, Heuser et al. teach that dihydromyricetin is present in the preparation in an amount of 0.001 to 10% by weight, in particular, 0.01 to 1% by weight paragraph 0011). Moreover, Heuser et al. teaches that the preparations are in the form of an emulsion for topical use (paragraph 0013 and 0014). In particular, Heuser et al. teach a cream containing dihydromyricetin and diethylhexyl syringylidenemalonate (paragraph 0027, example 1). In addition to the emulsions and creams, Heuser et al. teach that the composition can be in the form of a gel or cosmetic stick (paragraph 0022 and 0024)As evidenced by Galdi et al. diethylhexyl syringylidenemalonate is a UV filter capable of absorbing UV light having an SPF of less than 2 (paragraph 0151). Moreover, while the prior art does not specifically teach that causes DNA-demethylation or reactivation of genes that have been hypermethylated with age, the burden is on applicant to show that the cosmetic or dermatological composition comprising 0.01 to 1% by weight of dihydromyricetin as taught by the prior will not have that effect. Applicants are reminded that the office does not have the facilities or resources to determine that this effect will not occur. See MPEP 2112.01.
In response to this rejection, Applicants contend that Heuser fails to disclose any of the UV filters recited in the instant claims. These arguments have been carefully considered, but are not found persuasive. In the instant case, the Examiner recognizes that claim 6 is drawn to a method of cosmetic treatment or dermatological skin care, wherein the method comprises applying a composition comprising dihydromyricetin in combination with at least one further active ingredient which serves a purpose different from that served by dihydromyricetin. As such, as least claim 6 does not require any of the UV filters claimed in dependent claims 13 and 14. As noted in the rejection, Heuser et al. teach a cream containing dihydromyricetin and diethylhexyl syringylidenemalonate, wherein as evidenced by Galdi et al. diethylhexyl syringylidenemalonate is a UV filter capable of absorbing UV light having an SPF of less than 2.
New Rejections Necessitated by the Amendment
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) 13-14, 16-17, 19-23 and 26-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heuser et al. (EP2356980A2, 2011-08-17, Translation provided by applicants in IDS) as evidenced by Galdi et al. (US2012/0015016A1, 2012-01-19), as applied to claims 6-8, 10-12 above, in view of Huglin, Dietmar (CHIMA 2016; 70 (7/8): 496-501).
Heuser et al. teach a cosmetic or dermatological preparation comprising dihydromyricetin to increase dermal collagen synthesis and to treat and prevent the symptoms of intrinsic and/or extrinsic skin aging (paragraph 0009). With regards to the dihydromyricetin, Heuser et al. teach that dihydromyricetin is present in the preparation in an amount of 0.001 to 10% by weight, in particular, 0.01 to 1% by weight paragraph 0011). Moreover, Heuser et al. teaches that the preparations are in the form of an emulsion for topical use (paragraph 0013 and 0014). In particular, Heuser et al. teach a cream containing dihydromyricetin and diethylhexyl syringylidenemalonate (paragraph 0027, example 1). In addition to the emulsions and creams, Heuser et al. teach that the composition can be in the form of a gel or cosmetic stick (paragraph 0022 and 0024)As evidenced by Galdi et al. diethylhexyl syringylidenemalonate is a UV filter capable of absorbing UV light having an SPF of less than 2 (paragraph 0151). Moreover, while the prior art does not specifically teach that causes DNA-demethylation or reactivation of genes that have been hypermethylated with age, the burden is on applicant to show that the cosmetic or dermatological composition comprising 0.01 to 1% by weight of dihydromyricetin as taught by the prior will not have that effect. Applicants are reminded that the office does not have the facilities or resources to determine that this effect will not occur. See MPEP 2112.01.
Heuser et al. does not specifically teach that the cosmetic or dermatological preparation further comprises bis-ethylhexyloxyphenol methoxyphenyl triazine.
Huglin, Dietmar teach that the increasing awareness of the damaging effects of UV radiation to human skin triggered the market introduction of new cosmetic UV absorbers (abstract). In particular, Huglin, Dietmar teach that BEMT (bis-ethylhexyloxyphenol methoxyphenyl triazine), MBBT and TBPT have been developed as cosmetic UV absorbers, wherein these filters give formulators new possibilities to cover the UV range from 290 to 400 nm, and to use less filter due to superior efficacy and today, sunscreens of many different brands apply these UV absorbers (page 501, 1st column, Conclusion).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to modify the cosmetic or dermatological preparation taught by Heuser et al. to include an additional UV absorber such as bis-ethylhexyloxyphenol methoxyphenyl triazine in view of the teachings of Huglin, Dietmar. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success, because:
- Huglin, Dietmar teach that the increasing awareness of the damaging effects of UV radiation to human skin triggered the market introduction of new cosmetic UV absorbers;
- Huglin, Dietmar teach that BEMT provide formulators with a wide degree of possibilities because of the UV range; and
- BEMT is used today in many different brands of sunscreens which apply it as a UV absorbers. .
Conclusion
Therefore, 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J FETTEROLF whose telephone number is (571)272-2919. The examiner can normally be reached M-F 6AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey S Lundgren can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON J FETTEROLF/Primary Examiner, Art Unit 1626