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 .
DETAILED ACTION
Pursuant to the amendment dated 12/30/2025, claim 1 is amended and claims 3 and 11-14 were cancelled. Claims 1-2 and 4-10 are pending in the instant application and are examined on the merits herein.
Priority
This application is a National Stage Application of PCT/KR2021/011564, filed on 08/30/2021 and claims foreign priority to the Republic of Korea 10-2021-0114027 filed on 08/27/2021 and the Republic of Korea 10-2020-0109845 filed on 08/31/2020.
Withdrawn Objections
Applicant’s amendment, filed on 12/30/2025, with respect to the objections of the drawings because Figures 1a,1b, 5a, 5b, 6b, 7b, 8, 9, 10, and 16 have illegible writing on the axes, has been fully considered and is persuasive. Applicant has submitted new drawings with legible writing on the axes. The objection is hereby withdrawn.
Withdrawn Rejections
Applicant’s amendment, filed on 12/08/2025, with respect to the rejection of claims 1, 3, 6, and 7 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Seipel et al. (WO 2007/141661, published 2006, see PTO-892) has been fully considered and is persuasive. Seipel does not teach the administration of isoquercetin as the sole active ingredient or an Abeliophyllum distichum extract as an active ingredient. The rejection is hereby withdrawn.
Applicant’s amendment, filed on 12/30/2025, with respect to the rejection of claims 1-5 and 8 under 35 U.S.C. 103 as being unpatentable over Yoo et al. (Plants, published June 17, 2020, see IDS dated 12/26/2024) and as evidenced by Oh et al. (Phytotherapy Research, published December 14, 2001, see PTO-892) has been fully considered and is persuasive. Yoo does not teach the treatment of prostatic hyperplasia or hair loss. The rejection is hereby withdrawn.
Applicant’s amendment, filed on 12/30/2025, with respect to the rejection of claims 9 and 10 under 35 U.S.C. 103 as being unpatentable over Yoo et al. (Plants, published June 17, 2020, see IDS dated 12/26/2024) as applied to claim 1 above, and further in view of Oh et al. (Phytotherapy Research, published December 14, 2001, see PTO-892) and Chang et al. (WO 2004/027074 A2, published April 1, 2004, see PTO-892) has been fully considered and is persuasive. Yoo does not teach the treatment of prostatic hyperplasia or hair loss. The rejection is hereby withdrawn.
Rejections Necessitated by Amendment
The following are new ground(s) necessitated by Applicants' amendment, filed on 12/30/2025, wherein instant independent claim 1 was amended to alter the breadth and scope of the claim, and wherein the remaining pending claims 2 and 4-10 depend from said independent claim.
New Grounds of Rejection
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.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Schroeder et al. (WO 2007000214 A1, published 01/04/2007, see PTO-892).
Schroeder is drawn to a hair or skin treating agent containing an extract of an Oleaceae family plant and the use of the extract for the treatment of the hair or the skin (page 1). Schroeder teaches that Abeliophyllum distichum is a preferred plant for the invention (claim 3). The extract is obtained from the ethanolic extract of the leaves (page 17). The extract composition is used for the vitalization of hair, stimulation of energy metabolism in hair follicles, activation of hair follicles, promotion or enhancement of hair growth, hair thickening, treatment of hair loss and influencing keratin synthesis, hair conditioning, maintenance or promotion of homeostasis of the hair follicle or treatment of pathological conditions of the hair follicle (claim 9).
Regarding instant claim 4, it is noted that Schroeder does not expressly teach that the Abeliophyllum distichum extract comprises isoquercetin. However, since the Schroeder teaches an ethanolic extract of Abeliophyllum distichum leaves same as the ethanolic extract of Abeliophyllum distichum leaves of the instant specification (instant specification page 12), the extract would necessarily contain isoquercetin.
Regarding instant claims 6-8, it is noted that Schroeder does not expressly teach that the administration to a subject experiencing hair loss would result in inhibiting the expression of an androgenic receptor, inhibits one or more androgen signaling-related factors selected from the group consisting of 5α-reductase 2 (5AR2), steroid receptor coactivator 1 (SRC1), estrogen receptor (ER), and prostate-specific antigen (PSA), or inhibits a PI3K/AKT signaling pathway. However, since the teachings of the prior art suggests administration of the same active, Abeliophyllun distichum leaf extract, to the same population experiencing hair loss, the result of inhibiting the expression of an androgenic receptor, inhibiting one or more androgen signaling-related factors selected from the group consisting of 5α-reductase 2 (5AR2), steroid receptor coactivator 1 (SRC1), estrogen receptor (ER), and prostate-specific antigen (PSA), or inhibiting a PI3K/AKT signaling pathway would necessarily flow, thereby meeting the instant claims limitations. The recitation “inhibits the expression of an androgenic receptor”, “inhibits one or more androgen signaling-related factors selected from the group consisting of 5α-reductase 2 (5AR2), steroid receptor coactivator 1 (SRC1), estrogen receptor (ER), and prostate-specific antigen (PSA)”, and “inhibits a PI3K/AKT signaling pathway” are merely a mechanism of action resulting from the administration step. MPEP § 2112.01 makes clear that there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Furthermore, MPEP 2145 states that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. Applicant’s recitation of a new mechanism of action for the prior art method would not, by itself, distinguish the instant claims over the prior art teaching the same or nearly the same method steps.
Schroeder does not exemplify a composition comprising an extract of Abeliophyllum distichum.
It would have been prima facie obvious before the effective filing date of the claimed invention to choose Abeliophyllum distichum extract as an active for a composition for treating hair loss as taught by Schroeder to arrive at the instant invention. It would have been prima facie obvious for one of ordinary skill in the art to choose Abeliophyllum distichum extract for a composition for hair loss because Schroeder teaches a composition for hair loss comprising an extract of an Oleaceae family plant and teaches that Abeliophyllum distichum is a preferred plant. One of ordinary skill in the art would have a reasonable expectation of success because Schroeder teaches a composition for hair loss comprising an extract of an Oleaceae family plant and teaches that Abeliophyllum distichum is a preferred plant.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Schroeder et al. (WO 2007000214 A1, published 01/04/2007, see PTO-892) as applied to claim 1 above, and further in view of Sohn et al (KR 20190088266 A, published 07/26/2019, see PTO-892).
The teachings of Schroeder are discussed above.
Schroeder does not teach that the composition is a pharmaceutical composition.
Sohn is drawn to a pharmaceutical composition comprising the ethanol extract of Abeliophyllum distichum as an effective component for the prevention or treatment of diabetes and health functional food compromising the same (title).
It would have been prima facie obvious to combine the teachings of Schroeder and Sohn before the effective filing date of the claimed invention by modifying the composition comprising Abeliophyllum distichum taught by Schroeder to be a pharmaceutical composition comprising Abeliophyllum distichum or a functional food comprising Abeliophyllum distichum as taught by Sohn to arrive at the claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to modify the composition comprising Abeliophyllum distichum as taught by Schroeder to be a pharmaceutical composition because Sohn teaches that an ethanol extract of Abeliophyllum distichum can be part of a pharmaceutical composition or a health functional food.
Response to Arguments
Applicant’s arguments filed 12/30/2025 with respect to claims 1-2 and 4-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are 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.
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/SAMANTHA LYNN SCHACHERMEYER/Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693
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