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 the Claims
Claims 1-11 are pending.
Priority
This application, filed on 05/19/2023, is a 371 of PCT/JP2021/042505, filed on 11/18/2021, which claims priority to JP application Nos: i) 2020-192152, filed on 11/19/2020; and ii) 2021-163773, filed on 10/04/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/19/2023, are in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS documents were considered. A signed copy of Form PTO-1449 is enclosed herewith.
Claim Rejections - 35 USC § 102
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.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chu et al (hereinafter “Chu”, WO2018192777A1, published 10/25/2018).
By way of a background, Applicants’ invention is directed to a hair growth composition comprising phytosphingosine (see, e.g., ¶ 0001 of the specification).
Under the broadest reasonable interpretation (BRI), consistent with the specification, independent claim 1 is being interpreted as a topical composition comprising phytosphingosine.
Similar to the Applicants’ invention (see discussions above), Chu teaches a hair care composition (see page 1, lines 4-8), comprising 0.1-5.0 wt% phytosphingosine (see page 4, lines 29 through line 2 on page 4, and reference claim 1).
Therefore, claim 1 is anticipated by Chu.
Regarding claims 2-3, Chu teaches 0.1-5.0 wt% phytosphingosine, which is within the claimed “0.001-20 wt%” (claim 2) and “0.005-10 wt%” (claim 3). A specific example in the prior art which is within a claimed range anticipates the range. Please MPEP § 2131.03.
Therefore, claims 2-3 are anticipated by Chu.
Regarding claims 4-10, the recited intended use of a composition of claim 1 (e.g., for causing new hair growth or hair shaft growth promotion, claim 4), is an inherent property of the composition. Any properties exhibited by or benefits provided by the composition are inherent and are not given patentable weight over the prior art. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicants disclose and/or claim are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01. In the instant case, Chu teaches a composition of claim 1 (see discussions above).
Applicants are further requested to note that it is well settled that “intended use” of a composition or product, e.g., a topical composition comprising phytosphingosine, will not further limit claims drawn to a composition or product. See, e.g., Ex parte Masham, 2 USPQ2d 1647 (1987) and In re Hack 114,
Therefore, claims 4-10 are anticipated by Chu.
Regarding claim 11, Chu discloses that an aspect of the invention comprises a method of applying the composition on to scalp and/or hair (see page 4, lines 4-7 and reference claims 1, 5).
Non-Statutory Obviousness-Type Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 18 of U.S. patent application No. 18/571,529 (‘529 application).
Although the claims at issue are not identical, they are not patentably distinct from each other. The instant application claims and ‘529 application claims are similarly drawn to a composition comprising phytosphingosine.
For example, the claims of the instant application (e.g., claim 1) are drawn to a composition comprising phytosphingosine, whereas, the claims of the ‘529 applications (e.g., claim 1), are directed to a composition comprising phytosphingosine among the active agents.
Therefore, there is sufficient overlap between the claim scopes to render them obvious over each other. Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the reference application subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over 1-10 and 18 of U.S. patent application No. 18/571,549 (‘549 application).
Although the claims at issue are not identical, they are not patentably distinct from each other. The instant application claims and ‘549 application claims are similarly drawn to a composition comprising phytosphingosine.
For example, the claims of the instant application (e.g., claim 1) are drawn to a composition comprising phytosphingosine, whereas, the claims of the ‘549 applications (e.g., claim 1), are directed to a composition comprising phytosphingosine among the active agents.
Therefore, there is sufficient overlap between the claim scopes to render them obvious over each other. Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the reference application subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over 1-10 and 18 of U.S. patent application No. 18/571,559 (‘559 application).
Although the claims at issue are not identical, they are not patentably distinct from each other. The instant application claims and ‘559 application claims are similarly drawn to a composition comprising phytosphingosine.
For example, the claims of the instant application (e.g., claim 1) are drawn to a composition comprising phytosphingosine, whereas, the claims of the ‘559 applications (e.g., claim 1), are directed to a composition comprising phytosphingosine among the active agents.
Therefore, there is sufficient overlap between the claim scopes to render them obvious over each other. Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the reference application subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusions
No claim is allowable.
If Applicants should amend the claims, a complete and responsive reply will clearly identify where support can be found in the disclosure for each amendment. Applicants should point to the page and line numbers of the application corresponding to each amendment, and provide any statements that might help to identify support for the claimed invention (e.g., if the amendment is not supported in ipsis verbis, clarification on the record may be helpful). Should the Applicants present new claims, Applicants should clearly identify where support can be found in the disclosure.
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
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM D BORI whose telephone number is (571)270-7020. The examiner can normally be reached on Monday through Friday 8:00AM-5:00PM(EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S LUNDGREN can be reached on 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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/IBRAHIM D BORI/
Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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