DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Amendment after Non-final office action filed on 7/10/2026 is acknowledged.
3. Claim filed on 7/10/2026 is acknowledged.
4. Claims 10 and 14 have been cancelled.
5. New claims 18 and 19 have been added.
6. Claims 1-9, 11-13 and 15-19 are pending in this application.
7. Claim 13 remains withdrawn from consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/26/2026. Claims 4, 5, 7 and 15-19 are/are withdrawn from consideration as being drawn to non-elected species.
Please note: With regards to instant claims 15-19, in the instant case, in the Requirement for Restriction/Election dated 11/26/2025, the Examiner explicitly states that Applicant is required to elect a single disclosed species of cosmetic composition wherein ALL the variables are elected. Since the elected species of cosmetic composition does not include any of the variables recited in instant claims 15-19, instant claims 15-19 remain/are hereby withdrawn from consideration as being drawn to non-elected species.
Furthermore, in view of Applicant’s amendment to claim 3, instant claim 3 is rejoined and examined in the current office action.
Restriction requirement was deemed proper and made FINAL in the previous office action. Group 2 is drawn to a cosmetic composition comprising tetrapeptide capable of inducing dermal extracellular matrix protein upregulation, wherein the cosmetic composition is aqueous or non-aqueous and comprises a single-phase system or a multiple-phase system, wherein the cosmetic composition is formulated as a liquid, gel, balm, oil, or solid, the tetrapeptide having an amino acid sequence U-XXGD-Z. A search was conducted on the elected species; and this appears to be free of prior art. A search was extended to the genus in claim 2; and prior art was found. Claims 4, 5, 7 and 15-19 remain/are withdrawn from consideration as being drawn to non-elected species. Claims 1-3, 6, 8, 9, 11 and 12 are examined on the merits in this office action.
Withdrawn Objections and Rejections
8. Objection to claims 1 and 12 is hereby withdrawn in view of Applicant’s amendment to the claim.
9. Rejection to claim 2 under 35 U.S.C. 102(a)(1) as being anticipated by Ali et al (US 5849690 A, filed with IDS) is hereby withdrawn in view of Applicant’s amendment to the claim.
10. Rejection to claims 2, 8 and 9 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 2 of co-pending Application No. 18/687338 in view of the Peptide N-Terminal Modification document (from Creative Peptides, 2019, pages 1-6) is hereby withdrawn in view of Applicant’s amendment to the claim.
Claim Interpretations
11. With regards to the term “cosmetic composition” recited in instant claims, the instant specification discloses that “A cosmetic composition is a product designed for use by a consumer and is preferably a facial skincare cosmetic composition.” ( see page 9, lines 16-17 of the specification filed on 5/17/2023). The Examiner would like to point out that the preferred embodiment is not a definition. Therefore, in the instant case, in view of the disclosure of instant specification and in the broadest reasonable interpretation, the Examiner is interpretating the term “cosmetic composition” recited in instant claims 1-3, 6, 8, 9, 11 and 12 broadly includes any composition comprising the instant claimed peptide and/or peptides, wherein the composition is in the form of liquid, gel, balm, oil, or solid, and wherein the composition is designed for use by a consumer. Such interpretation applies to all the rejections set forth below.
Maintained/Revised Sequence Non-Compliance
12. This application contains sequence disclosures that are encompassed by the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). However, this application fails to comply with the requirements of 37 CFR 1.821 through 1.825 for the reason(s) set forth below. All sequences disclosed in the application must comply with the requirements of 37 C.F.R. 1.821-1.825, not only those recited in the claims.
In the instant case, both claims and the specification disclose various peptides. As an example, the peptides recited in instant claims 4-7; and the peptides disclosed on page 2, lines 16 and 18, page 5, lines 7-15, and many others of the specification filed on 5/17/2023. However, these peptides are not disclosed in the filed sequence listing.
All such sequences are relevant for the purposes of building a comprehensive database and properly assessing prior art. It is therefore essential that all sequences, whether only disclosed or also claimed, be included in the database.
Response to Applicant's Arguments
13. Applicant argues that “N- and C-terminal endgroups on a peptide sequence should not be specifically included in the sequence listing” by citing 37 C.F.R. § 1.821(a)(2).
14. Applicant's arguments have been fully considered but have not been found persuasive.
In response to Applicant’s arguments about sequence compliance, it appears to the Examiner that Applicant misinterprets 37 C.F.R. § 1.821(a)(2). The cited 37 C.F.R. § 1.821(a)(2) does not mean the N- and/or C-terminal modified peptide is not required to be in the filed sequence listing. It means the N- and/or C-terminal modification should not be part of the amino acid sequence of such modified peptide in the filed sequence listing. As an example, for a peptide that is 25 amino acids in length and has C-terminal amidation, such modification should be indicated as the followings:
PNG
media_image1.png
92
160
media_image1.png
Greyscale
in the filed sequence listing. Therefore, the instant application remains sequence non-compliant.
Maintained/Revised Objections
15. The specification remains objected to for the following minor informality: The specification discloses various peptides on page 2, lines 16 and 18, page 5, lines 7-15, and many others of the specification filed on 5/17/2023. As an example, Pal-KKTKS, Pal-GQPR, U-EKGD-Z and many others. However, these peptides are not disclosed in the filed sequence listing; and they are missing their respective sequence identifier. In addition, the specification filed on 5/17/2023 discloses the peptide Glu-Gln-Pro-Arg and many others throughout the specification. However, they are missing their respective sequence identifier. Applicant is required to amend the specification to comply with 37 CFR 1.821(c) and 1.821(d).
Please note: The specification has not been checked to the extent necessary to determine the presence of all possible error. Applicant's cooperation is required in correcting any errors of which applicant may become aware in the specification (see MPEP § 608.01).
16. (Revised due to Applicant’s amendment to the claim) Claim 2 remains objected to for the following minor informality: Applicant is suggested to amend claim 2 as “A cosmetic composition comprising a tetrapeptide capable of inducing dermal extracellular matrix protein upregulation, wherein the cosmetic composition is in the form of liquid, gel, balm, oil, or solid; wherein the tetrapeptide consists of the amino acid sequence U-XXGD-Z; wherein G is Gly and D is Asp; each X is…Z is selected from OH, OR1, NHR1 or NR1R2; and R1 and R2 are independently selected from alkyl, aryl, aralkyl, alkylaryl, alkoxy, saccharide, or aryloxy group, wherein said group is linear, branched, cyclic, polycyclic, unsaturated, hydroxylated, carbonylated, and/or phosphorylated, wherein each of R1 and R2 has no more than 24 carbon atoms, and wherein each of R1 and R2 optionally comprises one or more heteroatoms selected from O, S and/or N”.
17. (Revised due to Applicant’s amendment to the claim) Claim 6 remains objected to for the following minor informality: Applicant is required to amend claim 6 to comply with 37 CFR 1.821(c) and 1.821(d). Furthermore, Applicant is suggested to amend claim 6 as “…wherein the tetrapeptide is Pal-LKGD-OH (SEQ ID NO: #)".
18. (Revised due to Applicant’s amendment to the claim) Claims 8 and 9 remain objected to for the following minor informality: Applicant is suggested to amend claims 8 and 9 as “The cosmetic composition according to claim 2, wherein U is selected from the group consisting of…".
19. (Revised due to Applicant’s amendment to the claim) Claim 11 remains objected to for the following minor informality: Applicant is suggested to amend claim 11 as “The cosmetic composition according to claim 2, wherein the tetrapeptide is present at a concentration from 0.1 to 10,000 ppm by weight of…".
Response to Applicant's Arguments
20. Applicant fails to address all the minor issues in the specification and these claims. Therefore, these objections are deemed proper and are hereby maintained.
New Objections
21. Claim 3 is objected to for the following minor informality: Applicant is suggested to amend claim 3 as “The cosmetic composition according to claim 2, wherein…”.
Furthermore, claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Maintained/Revised Rejections
Claim Rejections - 35 U.S.C. § 112 paragraph (b)
22 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.
23. (Revised due to Applicant’s amendment to the claim) Claims 1-3, 8, 9, 11 and 12 remain/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 pre-AIA the applicant regards as the invention.
24. Claim 2 recites “…wherein R1 and R2 are independently selected from the group consisting of alkyl, aryl, aralkyl, alkylaryl, alkoxy, saccharide and aryloxy group, which may be linear, branched, cyclical, polycyclic, unsaturated, hydroxylates, carbonylated, phosphorylated and/or sulphurous…”. With regards to the term “sulphurous”, the instant specification fails to define it. According to the Sulfurous Definition & Meaning document (2026, from https://www.merriam-webster.com/dictionary/sulfurous, pages 1-5, cited and enclosed in the previous office action), the term “sulfurous” (same as sulphurous) means of, relating to, or containing sulfur especially with a lower valence than sulfuric compounds, or resembling or emanating from sulfur and especially burning sulfur (see page 1). Therefore, it is unclear what is encompassed within the recited “sulphurous”. Thus, the metes and bounds of instant claim 2 is vague and indefinite. Because claims 1, 3, 8, 9, 11 and 12 depend from indefinite claim 2, and none of the dependent claims clarifies the point of confusion, they must also be rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Response to Applicant's Arguments
25. Applicant argues that “Applicant submits that "sulphurous" and the equivalent "sulfurous" are understood in the art to mean "containing sulfur.”
26. Applicant's arguments have been fully considered but have not been found persuasive.
In response to Applicant’s arguments about instant rejection, the Examiner would like to point out that as stated in Section 24 above, according to the cited dictionary definitions of "sulfurous", the term “sulfurous” (same as sulphurous) means of, relating to, or containing sulfur especially with a lower valence than sulfuric compounds, or resembling or emanating from sulfur and especially burning sulfur. Therefore, in the instant case, the term “sulphurous” is not limited to one "containing sulfur” only; and it is unclear what is encompassed within the recited “sulphurous”. Thus, the rejection is still deemed proper and is hereby maintained.
Claim Rejections - 35 U.S.C. § 103
27. 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.
28. 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.
29. (Revised due to Applicant’s amendment to the claim) Claims 1, 2, 8, 9 and 11 remain rejected under 35 U.S.C. 103 as being unpatentable over Ostuni et al (The International Journal of Biochemistry & Cell Biology, 2002, 34, pages 130-135, cited and enclosed in the previous office actions) in view of the Peptide N-Terminal Modification document (from Creative Peptides, 2019, enclosed pages 1-6, cited and enclosed in the previous office action).
The instant claims 1, 2, 8, 9 and 11 are drawn to a cosmetic composition comprising tetrapeptide capable of inducing dermal extracellular matrix protein upregulation, wherein the cosmetic composition is aqueous or non-aqueous and comprises a single-phase system or a multiple-phase system, wherein the cosmetic composition is formulated as a liquid, gel, balm, oil, or solid, the tetrapeptide having an amino acid sequence U-XXGD-Z. Ostuni et al, throughout the literature, teach a tetrapeptide consisting of the amino acid sequence REGD (identical to the amino acid sequence of instant SEQ ID NO: 21) induces concentration-dependent vasorelaxation in the concentration range from 10−9 to 10−5 M, for example, Abstract; and page 131, left column, the last paragraph. The molecular weight of the tetrapeptide REGD is about 475.5 Dalton. Therefore, the tetrapeptide REGD at a concentration of 10−5 M is about 4.8 mg/L or 4.8 ppm. Although Ostuni et al is silent about the form of such tetrapeptide used in the experiment, in view of the teachings of Ostuni et al as a whole, in particular Sections “2.3. Preparation of the helical aortic strips” and “2.4. Measurements of the vasorelaxant activity”, one of ordinary skilled in the art would understand and at once envision that such tetrapeptide used in the experiment in Ostuni et al is in the form of liquid.
The difference between the reference and instant claims 1, 2, 8, 9 and 11 is that the reference does not explicitly teach modifying the N-terminus of such tetrapeptide; and the limitations recited in instant claims 1, 2, 8, 9 and 11.
However, the Peptide N-Terminal Modification document teaches N-terminal modification increases the stability of the peptide; and such N-terminal modification includes acetylation, palmitoyl, and others, for example, page 3, the 2nd and 3rd paragraphs.
Therefore, it would have been obvious to one of ordinary skilled in the art to combine the teachings of Ostuni et al and the Peptide N-Terminal Modification document to develop a composition comprising a tetrapeptide consisting of the amino acid sequence REGD (identical to the amino acid sequence of instant SEQ ID NO: 21) with acetyl or palmitoyl group as a N-terminal protecting group that can be used for inducing in vivo vasorelaxation, wherein the composition is in the form of liquid. Since the composition developed from the combined teachings of Ostuni et al and the Peptide N-Terminal Modification document is a product designed for use by a consumer, it is a cosmetic composition.
With regards to the limitation “capable of inducing dermal extracellular matrix protein upregulation” recited in instant claim 2, since the tetrapeptide in the composition developed from the combined teachings of Ostuni et al and the Peptide N-Terminal Modification document meets all the structural limitations of the tetrapeptide recited in instant claim 2, the tetrapeptide in the composition developed from the combined teachings of Ostuni et al and the Peptide N-Terminal Modification document would necessarily have the same properties and functionality of the tetrapeptide recited in instant claim 2. Therefore, the tetrapeptide in the composition developed from the combined teachings of Ostuni et al and the Peptide N-Terminal Modification document is capable of inducing dermal extracellular matrix protein upregulation. And the MPEP states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.).” (see MPEP § 2112.01 I). And since the USPTO lacks the experimental facilities to make a further determination, the burden is on the Applicant to prove the otherwise.
One of ordinary skilled in the art would have been motivated to combine the teachings of Ostuni et al and the Peptide N-Terminal Modification document to develop a cosmetic composition comprising a tetrapeptide consisting of the amino acid sequence REGD (identical to the amino acid sequence of instant SEQ ID NO: 21) with acetyl or palmitoyl group as a N-terminal protecting group that can be used for inducing in vivo vasorelaxation, wherein the tetrapeptide is capable of inducing dermal extracellular matrix protein upregulation, and wherein the composition is in the form of liquid, because the Peptide N-Terminal Modification document teaches N-terminal modification increases the stability of the peptide; and such N-terminal modification includes acetylation, palmitoyl, and others.
A person of ordinary skilled in the art would have reasonable expectation of success in combining the teachings of Ostuni et al and the Peptide N-Terminal Modification document to develop a cosmetic composition comprising a tetrapeptide consisting of the amino acid sequence REGD (identical to the amino acid sequence of instant SEQ ID NO: 21) with acetyl or palmitoyl group as a N-terminal protecting group that can be used for inducing in vivo vasorelaxation, wherein the tetrapeptide is capable of inducing dermal extracellular matrix protein upregulation, and wherein the composition is in the form of liquid.
30. (Revised due to Applicant’s amendment to the claim) Claims 1, 2, 8, 9, 11 and 12 remain rejected under 35 U.S.C. 103 as being unpatentable over Ostuni et al (The International Journal of Biochemistry & Cell Biology, 2002, 34, pages 130-135, cited and enclosed in the previous office actions) in view of the Peptide N-Terminal Modification document (from Creative Peptides, 2019, enclosed pages 1-6, cited and enclosed in the previous office action), and further in view of Mehta et al (Am. J. Physiol., 1985, 249, pages H457-H462, cited and enclosed in the previous office action).
The instant claims 1, 2, 8, 9, 11 and 12 are drawn to a cosmetic composition comprising tetrapeptide capable of inducing dermal extracellular matrix protein upregulation, wherein the cosmetic composition is aqueous or non-aqueous and comprises a single-phase system or a multiple-phase system, wherein the cosmetic composition is formulated as a liquid, gel, balm, oil, or solid, the tetrapeptide having an amino acid sequence U-XXGD-Z. The rejection to claims 1, 2, 8, 9 and 11 under 35 U.S.C. 103 as being unpatentable over Ostuni et al (The International Journal of Biochemistry & Cell Biology, 2002, 34, pages 130-135, cited and enclosed in the previous office actions) in view of the Peptide N-Terminal Modification document (from Creative Peptides, 2019, pages 1-6 cited and enclosed in the previous office action) has been set forth in Section 29 above.
The difference between the rejection set forth in Section 29 above and instant claims 1, 2, 8, 9, 11 and 12 is that the rejection set forth in Section 29 above does not teach the limitations of instant claim 12.
However, Mehta et al, throughout the literature, teach peptide 6A consisting of the amino acid sequence ARPAK (a pentapeptide) has potent vasodilator effects, in that it increases coronary blood flow and decreases coronary vascular resistance; and a liquid composition comprising such peptide, for example, Abstract; and page H458, left column, Section “Study protocol”.
Therefore, it would have been obvious to one of ordinary skilled in the art to combine the teachings of Ostuni et al, the Peptide N-Terminal Modification document and Mehta et al to develop a composition comprising a tetrapeptide consisting of the amino acid sequence REGD (identical to the amino acid sequence of instant SEQ ID NO: 21) with acetyl or palmitoyl group as a N-terminal protecting group that can be used for inducing in vivo vasorelaxation, wherein the tetrapeptide is capable of inducing dermal extracellular matrix protein upregulation; and peptide 6A consisting of the amino acid sequence ARPAK (a pentapeptide), and wherein the composition is in the form of liquid. And in the instant case, the composition developed from the combined teachings of Ostuni et al, the Peptide N-Terminal Modification document and Mehta et al is a product designed for use by a consumer, therefore, it is a cosmetic composition.
One of ordinary skilled in the art would have been motivated to combine the teachings of Ostuni et al, the Peptide N-Terminal Modification document and Mehta et al to develop a cosmetic composition comprising a tetrapeptide consisting of the amino acid sequence REGD (identical to the amino acid sequence of instant SEQ ID NO: 21) with acetyl or palmitoyl group as a N-terminal protecting group that can be used for inducing in vivo vasorelaxation, wherein the tetrapeptide is capable of inducing dermal extracellular matrix protein upregulation; and peptide 6A consisting of the amino acid sequence ARPAK (a pentapeptide), and wherein the composition is in the form of liquid, because Mehta et al, throughout the literature, teach peptide 6A consisting of the amino acid sequence ARPAK (a pentapeptide) has potent vasodilator effects, in that it increases coronary blood flow and decreases coronary vascular resistance; and a liquid composition comprising such peptide. And the MPEP states that “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...” (see MPEP § 2144.06 I).
A person of ordinary skilled in the art would have reasonable expectation of success in combining the teachings of Ostuni et al, the Peptide N-Terminal Modification document and Mehta et al to develop cosmetic composition comprising a tetrapeptide consisting of the amino acid sequence REGD (identical to the amino acid sequence of instant SEQ ID NO: 21) with acetyl or palmitoyl group as a N-terminal protecting group that can be used for inducing in vivo vasorelaxation, wherein the tetrapeptide is capable of inducing dermal extracellular matrix protein upregulation; and peptide 6A consisting of the amino acid sequence ARPAK (a pentapeptide), and wherein the composition is in the form of liquid.
Response to Applicant's Arguments
31. Applicant argues that none of the cited references discloses or suggests cosmetic compositions, let alone a cosmetic composition formulated as a liquid, gel, balm, oil, or solid as recited in amended claim 2.
32. Applicant's arguments have been fully considered but have not been found persuasive.
In response to Applicant’s arguments about these rejections, in the instant case, as stated in Sections 29 and 30 above, although Ostuni et al is silent about the form of such tetrapeptide used in the experiment, in view of the teachings of Ostuni et al as a whole, in particular Sections “2.3. Preparation of the helical aortic strips” and “2.4. Measurements of the vasorelaxant activity”, one of ordinary skilled in the art would understand and at once envision that such tetrapeptide used in the experiment in Ostuni et al is in the form of liquid. And Mehta et al explicitly teach peptide 6A consisting of the amino acid sequence ARPAK (a pentapeptide) has potent vasodilator effects; and a liquid composition comprising such peptide. Furthermore, as stated in Section 11 above, in the instant case, in view of the disclosure of instant specification and in the broadest reasonable interpretation, the Examiner is interpretating the term “cosmetic composition” recited in instant claims 1-3, 6, 8, 9, 11 and 12 broadly includes any composition comprising the instant claimed peptide and/or peptides, wherein the composition is in the form of liquid, gel, balm, oil, or solid, and wherein the composition is designed for use by a consumer. And in the instant case, the composition developed from the combined teachings of either Ostuni et al and the Peptide N-Terminal Modification document as set forth in Section 29 above or Ostuni et al, the Peptide N-Terminal Modification document and Mehta et al as set forth in Section 30 above is in the form of liquid and is a product designed for use by a consumer, therefore, such composition is a cosmetic composition.
Taken all these together, these rejections are still deemed proper and are hereby maintained.
Obviousness Double Patenting
33. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
34. (Revised due to Applicant’s amendment to the claim) Claims 1, 2, 8, 9, 11 and 12 remain provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4 and 6-15 of co-pending Application No. 18/686955 and in view of Romanowski (Understanding the basic forms of cosmetics, from https://thebeautybrains.com/2014/05/understanding-the-basic-forms-of-cosmetics/, 2014, pages 1-5).
35. Instant claims 1, 2, 8, 9, 11 and 12 are drawn to a cosmetic composition comprising tetrapeptide capable of inducing dermal extracellular matrix protein upregulation, wherein the cosmetic composition is aqueous or non-aqueous and comprises a single-phase system or a multiple-phase system, wherein the cosmetic composition is formulated as a liquid, gel, balm, oil, or solid, the tetrapeptide having an amino acid sequence U-XXGD-Z.
36. Claims 1-4 and 6-15 of co-pending Application No. 18/686955 are drawn to a cosmetic composition comprising: oligo-alpha-glucans; and a tetrapeptide wherein the tetrapeptide is selected from the group consisting of; a) tetrapeptides having the amino acid sequence U-LSXX-Z wherein L is used to denote amino acid Leucine and S is used to denote Serine, as per the internationally recognised single letter code for amino acids and X denotes an amino acid selected from the group consisting of Valine (V), Aspartic acid (D), Proline (P), Glycine (G) and mixtures thereof, b) tetrapeptides having the amino acid sequence U-GPXG-Z wherein G is used to denote amino acid glycine and P denotes the amino acid proline, as per the internationally recognised single letter code for amino acids, X denotes an amino acid independently selected from the group consisting of Lysine (K), Glutamic acid (E) and Serine (S) and mixtures thereof, c) tetrapeptides having the amino acid sequence U-XXGD-Z wherein G is used to denote amino acid Glycine and D is used to denote amino acid Aspartic acid, as per the internationally recognised single letter code for amino acids and X denotes an amino acid selected from the group consisting of Glutamic acid (E), Lysine (K), Leucine (L), Alanine (A), Isoleucine (I), Arginine (R) and mixtures thereof, d) tetrapeptides having the amino acid sequence U-QTAV-Z wherein Q is used to denote amino acid Glutamine, T is used to denote amino acid Threonine, A is used to denote amino acid Alanine and V is used to denote amino acid Valine as per the internationally recognised single letter code for amino acids, and e) combinations thereof wherein at the N-terminal end of the one or more tetrapeptide, U is selected from the group consisting of H, -CO-R1, -SO2-R1 or a biotinyl group, wherein at the C-terminal end, Z is selected from the group consisting of OH, OR1, NHR1 or NR1R2, and wherein R1 and R2 are independently selected from the group consisting of alkyl, aryl, aralkyl, alkylaryl, alkoxy, saccharide and aryloxy group, which may be linear, branched, cyclical, polycyclic, unsaturated, hydroxylates, carbonylated, phosphorylated and/or sulphurous, said groups comprising from 1 to 24 carbon atoms and being capable of including one or more heteroatoms O, S and/or N; a kit comprising such cosmetic composition, and methods of using such cosmetic composition.
The cosmetic composition recited in claims 1-4 and 6-15 of co-pending Application No. 18/686955 comprising the tetrapeptide having the amino acid sequence U-XXGD-Z in a mixture with other tetrapeptide meets all the structural limitations of the cosmetic composition recited in instant claims 1, 2, 8, 9, 11 and 12, except the form of such cosmetic composition.
With regards to the limitation “capable of inducing dermal extracellular matrix protein upregulation” recited in instant claim 2, since the tetrapeptide having the amino acid sequence U-XXGD-Z recited in claims of co-pending Application No. 18/686955 meets all the structural limitations of the tetrapeptide recited in instant claim 2, the tetrapeptide having the amino acid sequence U-XXGD-Z recited in claims of co-pending Application No. 18/686955 would necessarily have the same properties and functionality of the tetrapeptide recited in instant claim 2. Therefore, the tetrapeptide having the amino acid sequence U-XXGD-Z recited in claims of co-pending Application No. 18/686955 is capable of inducing dermal extracellular matrix protein upregulation. And the MPEP states: “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 II). Since the USPTO lacks the experimental facilities to make a further determination, the burden is on the Applicant to prove the otherwise.
37. The difference between the cosmetic composition recited in claims 1-4 and 6-15 of co-pending Application No. 18/686955 and the cosmetic composition recited in instant claims 1, 2, 8, 9, 11 and 12 is that the cosmetic composition recited in claims 1-4 and 6-15 of co-pending Application No. 18/686955 does not teach the composition is in the form of liquid, gel, balm, oil, or solid recited in instant claim 2.
However, Romanowski, throughout the literature, teaches various forms of cosmetic, wherein solution/liquid is the simplest type, for example, pages 1-2, Sections “10 Cosmetic Product Forms” and “Solution Cosmetics”.
Therefore, it would have been obvious to one of ordinary skilled in the art to modify the cosmetic composition recited in claims 1-4 and 6-15 of co-pending Application No. 18/686955 and develop the cosmetic composition recited in instant claims 1, 2, 8, 9, 11 and 12.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Applicant's Arguments
38. Applicant argues that “Claims 1-4 and 6-15 of the '955 application are directed in part to a cosmetic composition comprising oligo-alpha-glucans and a tetrapeptide, a kit containing the cosmetic composition, and related methods. The present claims do not require an oligo-alpha-glucan, as required by the cited claims of the '955 application.”
39. Applicant's arguments have been fully considered but have not been found persuasive.
In response to Applicant’s arguments about instant rejection, the Examiner understands the cosmetic composition recited in instant claims 1, 2, 8, 9, 11 and 12 does not require an oligo-alpha-glucan. However, the Examiner would like to point out that instant claimed cosmetic composition is one comprising the recited tetrapeptide. And as stated in MPEP: “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps…” (see MPEP § 2111.03 I). Therefore, the double patenting rejection is deemed proper. And until a proper terminal disclaimer is filed and approved by the Office, this double patenting rejection is hereby maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LI N KOMATSU whose telephone number is (571)270-3534. The examiner can normally be reached Mon-Fri 8am-4pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melissa Fisher can be reached at 5712707430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LI N KOMATSU/Primary Examiner, Art Unit 1658
Prosecution Insights