DETAILED ACTION
Status of Claims
The amendments, and arguments, filed December 02, 2025, are acknowledged and have been fully considered. Claims 1-11 are pending and currently under consideration. Claim 1 has been amended; and claim 12 was previously cancelled. 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 Office Action: Final
Withdrawn Claim Objections
The objection to claim 1 (at par. 1-2 of the 07/02/2025 Office action) is withdrawn in light of applicant’s 12/02/2025 amendments. Applicant’s 12/02/2025 remarks at p. 4, par. 3-4, are acknowledged.
Maintained Claim Rejections – 35 U.S.C. § 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 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 pre-AIA 35 U.S.C. § 103(a) 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 C.F.R. § 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 1-11 are rejected under 35 U.S.C. § 103 as being unpatentable over DAL FARRA (US 2005/0176677 A1, Publ. Aug. 11, 2005; US equivalent of WO 03/092645 A2 on 04/28/2023 IDS; hereinafter, “Dal Ferra”; of record).
Dal Farra is directed to:
COSMETIC COMPOSITION COMPRISING MONOSACCHARIDES OR POLYSACCHARIDES, USES AND TREATMENT METHODS
ABSTRACT
A cosmetic and/or dermatological composition includes comprising, as an active ingredient, at least one mono or polysaccharide, constitutive of a pectic substance coming from a plant of the Lemnaceae family. The invention includes also its use, inter alias, for the care of the skin and/or its appendages, its use in order to treat manifestations of cutaneous ageing as well as the manifestations of inflammation and cutaneous irritation. The invention relates also to the cosmetic process of treatment of the skin using the aforementioned composition.
Dal Farra, title & abstract. In this regard, Dal Ferra teaches a cosmetic and/or dermatological composition comprising an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family, and a method of using the composition for treating aged skins and/or to fight cellular aging phenomena:
1. Cosmetic and/or dermatological composition comprising, as an active ingredient, in an physiologically acceptable medium, an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family.
2. Composition according to claim 1 characterized in that the polysaccharide, coming from a plant of the Lemnaceae family, is a pectic substance.
3. Composition according to claim 1 characterized in that the polysaccharide coming from the Lemnaceae family is a pectic substance comprising at least an apiose motif.
4. Composition according to claim 1 characterized in that the monosaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family, is the apiose.
[…]
21. Cosmetic process of treatment in order to treat aged skins and/or to fight cellular aging phenomena, and/or to protect the skin and its appendages against external aggressions, and/or to reinforce the barrier function of the skin and its appendages, consisting in applying, to the skin's surface and/or to the appendages, an effective amount of the composition such as defined according to claim 1.
Dal Farra, claims 1-4 and 21.
Regarding independent claim 1 and the requirements:
1. ([…]) A cosmetic method comprising: applying to the skin of a subject a cosmetic active substance comprising at least one extract of Spirodela polyrhiza comprising apiogalacturonans, wherein said cosmetic active substance has a skin-plumping effect of the skin.
Dal Farra clearly teaches a cosmetic and/or dermatological composition comprising an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family (Dal Farra, claims 1-5), and a method of using the composition for treating aged skins and/or to fight cellular aging phenomena (Dal Farra, claim 21), WHEREBY it is noted:
“an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family,”
wherein the “Lemnaceae family” (Dal Farra, claims 1-4) encompass “Spirodella polyrrhiza”:
[0002] The plants of the Lemnaceae family are monocotyledon angiosperm plants. The Lemnaceae family belongs to the order of Arales and regroups four genus: Lemna, Spirodela, Wolffia and Wolffiela, representing about up to thirty species in the world. Five of them belong to the European flora: Lemna triscula, Lemna minor, Lemna gibba, Spirodella polyrrhiza, Wolffia arrhiza.
(Dal Farra, par. [0002]), and wherein the “pectic substance” (Dal Farra, claims 1-4) of the “Lemnaceae family” (Dal Farra, claims 1-4) encompass “apiogalactoronan”:
[0005] The plants of the Lemnaceae family (as all plants) present the characteristic to contain particular polysaccharides composing the structure of the vegetable cell walls: pectins. The pectins of duckweeds are particular, notably, in their composition. These are called apiogalactoronan or lemnan, with regard to the pectins of the plants species Lemna minor.
(Dal Farra, par. [0005]), THEREBY encompassing “a cosmetic active substance comprising at least one extract of Spirodela polyrhiza comprising apiogalacturonans”;
wherein “applying, to the skin’s surface and/or to the appendages, an effective amount of the composition such as defined according to claim 1” in order to “treat aged skins and/or to fight cellular aging phenomena, and/or to protect the skin and its appendages against external aggressions, and/or to reinforce the barrier function of the skin and its appendages” (Dal Farra, claims 21) meets the active step for “applying to the skin of a subject” the composition of the method of claim 1 for “pluming effect.”
However, to the extent that Dal Farra DOES NOT EXPRESSLY TEACH a method employing an particular extract from “Spirodella polyrrhiza,” doing so would be obvious per Dal Farra’s broader disclosure. In this regard, it is noted that a reference is analyzed using its broadest teachings. MPEP § 2123 [R-5] states: “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to rearrange the disclosed above cited components of Dal Farra in order to arrive at an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family (Dal Farra, claims 1-5), wherein the plant is “Spirodella polyrrhiza” (Dal Farra, par. [0002]).
It is further noted that, regarding the use of the “wherein” clauses in claim 1 for “wherein said cosmetic active substance has a skin-plumping effect of the skin,” MPEP § 2111.04 states that claim scope is not limited by claim language (e.g., “wherein” and “whereby” clauses) that suggests or makes optional, but does not require steps to be performed. A “whereby clause [and by extension, a “wherein” clause] in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” See Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005) quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003). Since it would be obvious to arrive at an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family (Dal Farra, claims 1-5) containing “apiogalactoronan” (Dal Farra, par. [0005]), wherein the plant is “Spirodella polyrrhiza” (Dal Farra, par. [0002]), for application to the skin (Dal Farra, claims 21), it reasonably follows that doing so would result in the claimed “skin-plumping effect” of claim 1.
Thus, Dal Farra renders claim 1 obvious.
Regarding claims 2-3 and 5, it is noted that the requirements:
2. ([…]) The cosmetic method of claim 1, wherein the active substance also has a moisturizing effect and/or improves the radiance of the complexion.
3. ([…]) The cosmetic method of claim 1, wherein the active substance increases the cutaneous cell volume, and/or the expression of aquaporin 3 and/or the synthesis of the BGT-1 transporter.
[…]
5. ([…]) The cosmetic method of claim 4, wherein the extract has a hygroscopic potential greater than or equal to 15 molecules of water interacting by monomer.
are functional limitations. In this regard, it is noted that the structure, material or act in the claim that is connected to (i.e., performs) the recited function is the combination of recited elements of the active substance of claim 1, which achieve the resulting moisturizing, radiance, cell volume increasing, and hygroscopic potential effects. Therefore, the broadest reasonable interpretation (see MPEP § 2111 with respect to broadest reasonable interpretation) of the functional language is: intended moisturizing, radiance and cell volume increasing, and hygroscopic potential effects of an active substance that meets the structural requirements of claim 1. Because this functional language merely recites the intended result of the recited structural limitations, it imposes no patentable distinction on the claim (i.e., the functional language is not further limiting beyond the noted structural limitations). Therefore, one of ordinary skill in the art would understand that a composition meeting the structural requirements of claim 1 will achieve the intended effect of the functional limitations and fall within the boundaries of the claims.
Thus, Dal Farra renders claims 2-3 and 5 obvious.
Regarding claim 4 and the requirements:
4. ([…]) The cosmetic method of claim 1, wherein the active substance comprises at least one extract of Spirodela polyrhiza, and wherein the extract is a hydrolysate.
Dal Farra teaches:
[0022] Active compounds according to the invention, that is the mono- or polysaccharides constituents of the pectic substance, are obtained from pectin. The mono- or polysaccharides constituents of a pectic substance mean all pectic substances as well as all saccharides or saccharidic chains which compose them. The mono- or polysaccharides constituents of a pectic substance thus indicate the pectins which were more or less hydrolyzed.
(Dal Farra, par. [0022]; see also par. [0071]-[0080], Ex. 1, “Preparation of an Extract Containing Mono- or Polysaccharides, Constituents of a Pectic Substance, Coming From a Plant of the Family Lemnaceae”), which encompasses an “extract” that is a “hydrolysate” of claim 4.
Thus, Dal Farra renders claim 4 obvious.
Regarding claims 6-8 and 11 and the requirements:
6. ([…]) The cosmetic method of claim 1, wherein the active substance comprises apiogalacturonans in an amount at least 40% by weight of the dry matter of the extract.
7. ([…]) The cosmetic method of claim 4, wherein the extract comprises carbohydrates representing at least 70% by weight of the dry matter of the extract.
8. ([…]) The cosmetic method of claim 4, wherein the extract has a galacturonic acid/apiose ratio of between 1 and 5.
[…]
11. ([…]) The cosmetic method of claim 10, wherein the active substance represents at least 0.1% by weight of the total weight of the composition.
it is noted that MPEP § 2144.05 (I), states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d, 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” In this respect, Dal Farra teaches that plants of the Lemnaceae family contain particular polysaccharides, pectins called apiogalactoronan or lemnan, composing the structure of the vegetable cell walls, wherein the apiogalactoronan of “Lemna minor ( or lemnan) is composed of D-galacturonic acid ( 64%) and of D-apiose (25%) as principal components, as well as galactose, arabinose, rhamnose and xylose”:
[0005] The plants of the Lemnaceae family (as all plants) present the characteristic to contain particular polysaccharides composing the structure of the vegetable cell walls: pectins. The pectins of duckweeds are particular, notably, in their composition. These are called apiogalactoronan or lemnan, with regard to the pectins of the plants species Lemna minor.
[…]
[0009] The composition of the apiogalactoronan is particular. Indeed, the saccharidic chain of the pectic substance of Lemna minor ( or lemnan) is composed of D-galacturonic acid ( 64%) and of D-apiose (25%) as principal components, as well as galactose, arabinose, rhamnose and xylose.
Dal Farra, par. [0005] & [0009]. Dal Farra also teaches a composition containing the the mono- or polysaccharide in a quantity representing from 10-5% to 20% of the total weight of the composition:
[0026] According to an advantageous way of realization of the invention, the mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family, is present in a quantity representing from 10-5% to 20% of the total weight of the composition and, preferentially, in a quantity representing from 10-4% to 5% of the total weight of the composition.
(Dal Farra, par. [0026]), as well as a method Preparation of an Extract Containing Mono- or Polysaccharides, Constituents of a Pectic Substance, Coming From a Plant of the Family Lemnacea (Dal Farra, par. [0071]-[0080], Ex. 1) for “[a] total hydrolysis will release all the pectic components, and will allow a mix, mainly made up, of monosaccharides, mainly containing galacturonic acid and apiose” (Dal Farra, par. [0077]). Therefore, Dal Farra teaches a member of the Lemnaceae family, namely “Lemna minor ( or lemnan) (Dal Farra, par. [0005]), being composed of D-galacturonic acid ( 64%) and of D-apiose (25%) as principal components, as well as galactose, arabinose, rhamnose and xylose” (Dal Farra, par. [0009]), which is obtainable by a method of “total hydrolysis [that] will release all the pectic components, and will allow a mix, mainly made up, of monosaccharides, mainly containing galacturonic acid and apiose” (Dal Farra, par. [0077]), WHEREBY it is noted:
an extract containing a total of about 95% apiogalcturans, from 64% D-galacturonic acid and 24% D-apiose (Dal Farra, par. [0009]), which relates to:
“apiogalacturonans in an amount at least 40% by weight of the dry matter of the extract” of claim 6, and
“the extract comprises carbohydrates representing at least 70% by weight of the dry matter of the extract” of claim 7;
a ratio of 64% D-galacturonic to 24% D-apiose (Dal Farra, par. [0009]), i.e., 2.6 : 1, relates to “wherein the extract has a galacturonic acid/apiose ratio of between 1 and 5” of claim 8; and
a composition containing the the mono- or polysaccharide in a quantity representing from 10-5% to 20% of the total weight of the composition ((Dal Farra, par. [0026])) relates to “wherein the active substance represents at least 0.1% by weight of the total weight of the composition” of claim 11.
To extent Dal Farra teaches extraction content from Lemnaceae family, namely “Lemna minor ( or lemnan) (Dal Farra, par. [0005]) and not “Spirodella polyrrhiza” per the requirements of the instant claims, it is noted that Dal Farra teaches an overlapping set of the “Lemnaceae family” including “Lemna minor” and “Spirodella polyrrhiza” (Dal Farra, par. [0002]), thereby establishing both as functional equivalents for the purpose of Dal Farra’s method directed to “an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family” (Dal Farra, claim 1), and therefore, reasonably expected to contain similar amounts of constituents, absent evidence to the contrary. Regarding equivalents known for the same purpose, MPEP § 2144.06 (II) states: “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).”
Thus, Dal Farra renders claims 6-8 and 11 obvious.
Regarding claim 9, it is noted that the requirements:
9. ([…]) The cosmetic method of claim 4, wherein the extract is obtainable by a method comprising the following steps:
a. Solubilization of at least 50 g/L of Spirodela polyrhiza in water,
b. Chemical hydrolysis of acid nature, or chemical hydrolysis of acid nature and enzymatic hydrolysis,
c. Separation of the soluble and insoluble phases and recovery of the soluble phase,
d. Purification and concentration of the soluble phase,
e. Filtration and sterilizing filtration.
are product-by-process requirements for the extract used in the instant method. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP § 2113. Since it would been obvious to rearrange the disclosed above cited components of Dal Farra in order to arrive at an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family (Dal Farra, claims 1-5), wherein the plant is “Spirodella polyrrhiza” (Dal Farra, par. [0002]) for “applying, to the skin's surface and/or to the appendages” in order to “treat aged skins and/or to fight cellular aging phenomena, and/or to protect the skin and its appendages against external aggressions, and/or to reinforce the barrier function of the skin and its appendages” (Dal Farra, claims 21), it reasonably follows that that Dal Farra’s extract is the same as the claimed extract obtained by the product-by-process requirements of claim 9, absent evidence to the contrary.
Thus, Dal Farra renders claim 9 obvious.
Regarding claim 10 and the requirements:
10. ([…]) The cosmetic method of claim 4, wherein the cosmetic method comprises applying topically the active substance formulated as a composition comprising the active substance and a physiologically acceptable medium.
Dal Farra teaches “Cosmetic and/or dermatological composition comprising, as an active ingredient, in an physiologically acceptable medium, an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family” (Dal Farra, claim 1), which encompasses “the active substance and a physiologically acceptable medium” of claim 10.
Thus, Dal Farra renders claim 10 obvious.
Response to Arguments
Applicants’ arguments, filed on December 02, 2025 (hereinafter, referred to as “Remarks”), have been fully considered, but they are not persuasive.
Applicant argues
In response and as discussed in detail below, the person of skill has no motivation or a reasonable expectation of success in Dal Farra for developing an active substance having a skin-plumping effect, let alone the specific extract of Spirodela polyrhiza comprising apiogalacturonans as now disclosed or and optimized in the present specification.[Remarks, p. 4, par. 9]
We respectfully submit that Dal Farra does not disclose or suggest applying to the skin at least one extract of Spirodela polyrhiza comprising apiogalacturonans. Dal Farra does not disclose or suggest that the extract comprising apiogalacturonans has a skin-plumping effect on the skin. There is no sound reason or any motivation for a person of skill based in Dal Farra whatsoever to expect that a skin-plumping effect may be achieved with an extract of Spirodela polyrhiza comprising apiogalacturonans, as recited in claim 1. The obviousness rejection must be withdrawn.[Remarks, p. 5, par. 1]
Dal Farra does not describe a cosmetic plumping application, nor does it disclose or suggest an increase in cell volume.[Remarks, p. 5, par. 2]
It is well settled in law that a person of skill would not be motivated to optimize a parameter if there is no evidence in the record that the prior art recognized that particular parameter affected the result. MPEP §2144.05[Remarks, p. 5, par. 3]
In the present case, Dal Farra does not disclose or suggest what compounds may produce a skin-plumping effect. In fact, Dal Farra does not mention the skin-pluming effect at all. Dal FatTa does not recognize which cosmetic active ingredients are useful to achieve a skin plumping effect by increasing skin cell volume. Dal Farra does not disclose or suggest specifically Spirodela polyrhiza. A person of skill cannot optimize the extract specifically from Spirodela polyrhiza and specifically comprising apiogalacturonans because Dal Farra does not recognize that apiogalacturonans are the result-effective variable for achieving the skin-plumping effect.[Remarks, p. 5, par. 4]
Remarks, p. 4, par. 9 to p. 5, par. 4.
In response: it would be obvious to arrive at an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family (Dal Farra, claims 1-5) containing “apiogalactoronan” (Dal Farra, par. [0005]), wherein the plant is “Spirodella polyrrhiza” (Dal Farra, par. [0002]), for application to the skin (Dal Farra, claims 21), which meet the requirements for the active step of independent claim 1 for “applying to the skin of a subject a cosmetic active substance comprising at least one extract of Spirodela polyrhiza comprising apiogalacturonans.” Regarding the use of the “wherein” clauses in claim 1 for “wherein said cosmetic active substance has a skin-plumping effect of the skin,” MPEP § 2111.04 states that claim scope is not limited by claim language (e.g., “wherein” and “whereby” clauses) that suggests or makes optional, but does not require steps to be performed. A “whereby clause [and by extension, a “wherein” clause] in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” See Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005) quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003). Since it would be obvious to arrive at an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family (Dal Farra, claims 1-5) containing “apiogalactoronan” (Dal Farra, par. [0005]), wherein the plant is “Spirodella polyrrhiza” (Dal Farra, par. [0002]), for application to the skin (Dal Farra, claims 21), it reasonably follows that doing so would result in the claimed “skin-plumping effect” of claim 1.
Applicant also argues:
It is reported in the present application that the extract recited in the present claims has hygroscopic properties. Dal Farra does not mention that polysaccharides have the ability to interact with, bind to, and retain water molecules around their chemical structure. Dal Farra does not describe the hygroscopic potential of apiogalacturonan molecules extracted from Spirodela polyrhiza. It is the present specification that discloses this necessary information.[Remarks, p. 5, par. 5]
The Spirodella polyrhiza plant is composed of many different molecules, for example: proteins, lipids, polyphenols, sugars, polysaccharides. However, there is nothing to encourage a person skilled in the art to specifically choose apiogalacturonans from among all the molecules in the Spirodella polyrhiza plant in order to obtain an active ingredient with a plumping effect. This specific choice of an extract of Spirodella polyrhiza containing apiogalacturonans is therefore not obvious.[Remarks, p. 5, par. 6, cont. on p. 6]
Further, Dal Farra does not identify the species Spirodela polyrhiza as the target plant, but as a simple member of the Lemnaceae family without demonstrating any biological effects. Dal Farra encourages those skilled in the art to use the species Lemna minor, which is excluded from the definition of the present invention.[Remarks, p. 6, par. 1]
Specifically paragraph 42 of the specification states “«Spirodela polyrhiza» means duckweed of the family of the Lemnaceae family and the species Spirodela polyrhiza also known under the names Lemna polyrhiza, Lemna major, Lemna maxima, Spirodela polyrrhiza, thus excluding the species Lemna minor or Zostera marina.”[Remarks, p. 6, par. 2]
Nothing in the teaching of Dal Farra encourages a person skilled in the art to select Spirodela polyrhiza in particular from among Lemna triscula, Lemna minor, Lemna gibba, and Woljjia arrhiza in order to obtain a cosmetic active ingredient with the skin-plumping effect, i.e., one that increases skin cell volume, as now unexpectedly described in the present application.[Remarks, p. 6, par. 3]
Remarks, p. 5, par. 5 to p. 6, par. 3.
In response: according to MPEP § 2123, “Disclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure or nonpreferred embodiment”. A reference is relevant as prior art for all that it contains. In this regard, Dal Farra teaches “an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family,” wherein the “Lemnaceae family” (Dal Farra, claims 1-4) encompass “Spirodella polyrrhiza” (Dal Farra, par. [0002]), which is “at least one extract of Spirodela polyrhiza comprising apiogalacturonans” of the instant method. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further argues:
Furthermore, Dal Farra does not provide any experimental results or tests. The absence of data in Dal Farra suggests that even those cosmetic effects that are broadly mentioned for the Lemnaceae family in Dal Farra are purely speculative and are simply a wish list or an invitation for experimentation. The disclosure made by Dal Farra does not objectively validate, through testing, various cosmetic uses of Lemnaceae extracts, and therefore appears to be of little credibility even in connection with the alleged cosmetic uses that are listed in Dal Farra. Therefore, Dal Farra does not satisfy the requirement for clear and complete disclosure. A person skilled in the art reading Dal Farra would therefore not be encouraged to reproduce or optimize the use of Lemnaceae extract for the various cosmetic effects disclosed, and even less so for a cosmetic skin-plumping effect that is not disclosed or suggested in Dal Farra.[Remarks, p. 6, par. 4]
Regarding dependent claims 5, 6, 7 and 8, which recite particular features of the extract, a person of skill will not be able to optimize these parameters but for the present specification as Dal Farra does not reveal to a person of skill the skin-plumping effect or what compounds can be used to achieve this result. Regarding claim 9, Dal Farra does not disclose or suggest a method for obtaining the extract recited in present claim 1.[Remarks, p. 6, par. 5, cont. on p. 7]
In view of Dal Farra, it is unexpected that this Applicant has developed the extract which when applied to the skin, produces a skin-plumping effect on the skin, making skin appear firmer and hydrated.[Remarks, p. 7, par. 1]
Remarks, p. 6, par. 4 to p. 7, par. 1.
In response: to extent Dal Farra teaches extraction content from the Lemnaceae family, namely “Lemna minor ( or lemnan) (Dal Farra, par. [0005]) and not “Spirodella polyrrhiza” per the requirements of the instant claims, it is noted that Dal Farra teaches an overlapping set of the “Lemnaceae family” including “Lemna minor” and “Spirodella polyrrhiza” (Dal Farra, par. [0002]), thereby establishing both as functional equivalents for the purpose of Dal Farra’s method directed to “an effective amount of at least a mono- or polysaccharide, constituent of a pectic substance coming from a plant of the Lemnaceae family” (Dal Farra, claim 1), and therefore, reasonably expected to contain similar amounts of constituents, absent evidence to the contrary. Regarding equivalents known for the same purpose, MPEP § 2144.06 (II) states: “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).” Applicants has not made a sufficient evidentiary showing whereby one of ordinary skill in the art would conclude that Dal Ferra’s Spirodella polyrrhiza extract would not achieve the results of the claimed method. It is noted that MPEP § 2145 (I) states: “[t]he arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F .3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. See MPEP § 716.01 (c)(II).
Summary/Conclusion
Claims 1-11 are rejected. No claims are allowed.
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 extension fee 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 date of this final action.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611