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 .
Election/Restrictions
Applicant’s election with traverse of Group 2, claims 4-6 and 17-18, in reply filed on 10/24/2025 is acknowledged. It appears the restriction requirement incorrectly grouped claim 16 with group 1. Instant claim 16 appears to be within the scope of group 2, which is directed to a compositions, as defined by the Restriction Requirement mailed 06/04/2025, not group 1. As such, claims 4-6 and 16-18 are under current examination.
Claims 1-3, 7-15 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/24/2025.
Applicant argues the restriction was improper because the overlapping subject matter would not present a serious search and examination burden. This argument is moot insofar as the restriction was required due to the lack of unity, not search and examination burden. As discussed in the restriction requirement the claims lack a special technical feature in view of Breton et al. (FR 2746642 A1).
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4-6 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Colonna et al. (FR 3016291 A1, publication date 07/17/2015; citing machine English translation) in view of Martin et al. (WO 2008/138839 A2, publication date 11/20/2008).
Colonna discloses a “composition comprising: (i) one or more monosaccharides, and (ii) one or more extracts of one or more non-photosynthetic filamentous non-fruiting bacteria” [p. 20, claim 1]. Wherein “said non-photosynthetic non-photosynthetic filamentous bacterial extract is an extract of Vitreoscilla filiformis” [p. 20, claim 5]. Colonna also discloses that “[t]he composition of the invention may also advantageously contain a thermal and / or mineral water, in particular chosen from Vittel water, the waters of the Vichy basin and Roche Posay water” (i.e., Vichy thermal water) [p. 9, lines 1-3]. With respect to the V. filiformis extract, Colonna discloses that “[i]t is also possible to use in another embodiment the culture described in the patent application WO 2008/138839. By non-photosynthetic and non-fruiting filamentous bacteria extract, it is intended both the culture supernatant, the biomass obtained after culturing the said bacteria, the envelopes or fractions of envelopes, or the extracts of the biomass obtained by treatment of this biomass” [p. 7, para. 1, lines 16-20]. Finally, Colonna discloses “solvents that can be used in the invention, mention may be made of lower alcohols, in particular ethanol and isopropanol, and propylene glycol” (i.e., physiological acceptable medium) [p. 8, last 3 lines].
The extract disclosed by Colonna at p. 7, para. 1, lines 16-20 (see above) reads on the definition of an extract given by the instant specification, i.e., comprising the supernatant and biomass (see instant specification at paragraph 76).
Colonna does not disclose an extract of Vitreoscilla filiformis cultured on a medium comprising at least Vichy thermal water.
Martin (i.e., WO patent referenced by Colonna) “relates to a process for the preparation of a cosmetic or dermatological active principle” [abstract]. The process comprises “culturing of at least one nonphotosynthetic and nonfruiting filamentous bacterium on a medium comprising at least one nonsulphurous mineral and/or thermal water” [p. 23, claim 1]. Wherein the bacterium is Vitreoscilla filiformis [p. 23, claim 3] and the thermal water is “chosen from water from Vittel, waters from the Vichy basin, … ” [p. 24, claim 9].
First, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the culture method of Martin with the composition taught by Colonna because Colonna desires extracts according to the methods disclosed by Martin. One would have had an expectation of success because, according to Colonna, the methods of Martin are suitable for the compositions discloses by Colonna. See MPEP 2143, Exemplary Rationale A.
Second, it is generally a prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07
In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected Vichy thermal water for the water of Colonna and for the culture medium of Martin because both Colonna and Martin (respectively) disclose Vichy thermal water is suitable for those purposes.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising an associated of Vichy thermal water and V. filiformis cultured on a medium comprising at least Vichy thermal water in a physiologically acceptable medium (ethanol and isopropanol, and propylene glycol).
Regarding instant claim 5 and 6, Colonna also discloses the composition “comprises from 10 to 90% by weight of water” such as thermal waters [p. 20, claims 7-8]. Colonna also discloses the extract (i.e., V. filiformis) may be present in an amount from 0.001 to 10% by weight expressed as the dry weight [p. 20, claim 6].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
In the present case, the instantly claimed ranges for water (0.1-95% w/w and 10-90% w/w; instant claims 5 and 17) and extract (0.001%-20% and 0.01-10% by weight of dry matter; instant claims 6 and 18) overlap with the ranges of the prior art (10-90% and 0.001-10% by weight of dry matter). Accordingly, a prima facie case of obviousness exists for both ranges.
Similarly, the range of instant claim 16 would have also been obvious. The disclosed weight percents of water and extract in Colonna imply a weight ratio of extract/water from 1 to 0.00001 (i.e., 10% by dry weight extract/10 % by weight water – 0.001% by dry weight extract/90 % by weight water). Therefore, the instantly claimed range for the weight ratio, as recited in claim 2, overlaps with the range of the prior art and a prima facie case of obviousness exists. See MPEP 2144.05(I)
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising an associated of Vichy thermal water and V. filiformis cultured on a medium comprising at least Vichy thermal water in a physiologically acceptable medium (ethanol and isopropanol, and propylene glycol). Wherein the weight ratio of extract to Vichy thermal water is within the instantly claimed range.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
1) Claims 4-6 and 16-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 9,770,474 B2 in view of Colonna et al. (FR 3016291 A1, publication date 07/17/2015; citing machine English translation).
The claims of ‘474 disclose “a method comprising administering an effective amount of an extract of Vitreoscilla filiformis … wherein the Vitreoscilla filiformis is cultured in a medium which comprises at least on non-sulfurous mineral or thermal water” [col. 18, claim 1]. The claims also disclose the thermal water may be from the Vichy basin [col. 18, claim 5] and the extract may be present in compositions in amounts from 0.001 to 20% w/w [col. 18, claim 7].
The claims of ‘474 does not disclose Vichy thermal water other than the Vichy thermal water used in the culture medium.
Colonna discloses a “composition comprising: (i) one or more monosaccharides, and (ii) one or more extracts of one or more non-photosynthetic filamentous non-fruiting bacteria” [p. 20, claim 1]. Wherein “said non-photosynthetic non-photosynthetic filamentous bacterial extract is an extract of Vitreoscilla filiformis” [p. 20, claim 5]. Colonna also discloses that “[t]he composition of the invention may also advantageously contain a thermal and / or mineral water, in particular chosen from Vittel water, the waters of the Vichy basin and Roche Posay water” [p. 9, lines 1-3]. According to Colonna and appropriate amount of thermal water in composition is from 10 to 90% by weight [p. 20, claims 7-8].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the teachings of 10-90% Vichy thermal water with the composition taught by the claims of ‘474. One would have been motivated to make this combination because Colonna discloses it is advantageous to have thermal water in these amounts in a compositions comprising Vitreoscilla filiformis extracts. One would have had an expectation of success because the compositions are so similar and used in the same context (i.e., topical cosmetics). Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
In the present case, the instantly claimed ranges for water (0.1-95% w/w and 10-90% w/w; instant claims 5 and 17) and extract (0.001%-20% and 0.01-20% by weight; instant claims 6 and 18) overlap with the ranges of the prior art (10-90% and 0.001-20% by weight). Accordingly, a prima facie case of obviousness exists for both ranges.
Similarly, the range of instant claim 16 would have also been obvious. The disclosed weight percents of water and extract in Colonna imply a weight ratio of extract/water from, for example, 1 to 0.00001 (i.e., 10% by weight extract/10 % by weight water – 0.001% by weight extract/90 % by weight water). Therefore, the instantly claimed range for the weight ratio, as recited in claim 2, overlaps with the range of the prior art and a prima facie case of obviousness exists. See MPEP 2144.05(I)
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising an associated of Vichy thermal water and V. filiformis cultured on a medium comprising at least Vichy thermal water in a physiologically acceptable medium (water). Wherein the weight ratio of extract to Vichy thermal water is within the instantly claimed range.
2) Claims 4-6 and 16-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10,046,014 B2 in view of Hilaire et al. (US 10,046,014 B2, date of patent 08/14/2018) and Martin et al. (WO 2008/138839 A2, publication date 11/20/2008).
The claims of ‘014 teach a composition comprising “one lysate of a bacterium, said lysate consisting of a lysate of a bacterium belonging to the genus of Vitreoscilla, and being administered with all or parts, in terms of amount, of a complete fermentation medium” (i.e., an extract with the supernatant) [col. 23, claim 23], “wherein the genus of Vitreoscilla is Vitreoscilla filiformis” [col. 24, claim 6].
The claims of ‘014 do not disclose an amount of extract and Vichy thermal water.
Hilaire “relates to the cosmetic use of a lysate of a bacterium or bacteria belonging to the Vitreoscilla sp. genus (in particular the species: Vitreoscilla filiformis) in a complete fermentation medium” [abstract]. Hilaire dislcoses a “composition according to the invention advantageously comprises an amount of lysate of a bacterium or bacteria belonging to the Vitreoscilla sp. genus in a complete fermentation medium ranging from 0.001% to 10% by weight, relative to the total weight of dry extract of said composition” [col. 12, lines 35-40]. Hilaire also discloses that “[t]that composition of the invention may also advantageously contain a spring and/or mineral water, chosen in particular from Vittel water, waters from the Vichy Basin, and la Roche Posay water” [col. 14, lines 9-12].
Hilaire does not disclose culturing the bacterium in a medium comprising Vichy thermal water.
Martin “relates to a process for the preparation of a cosmetic or dermatological active principle” [abstract]. The process comprises “culturing of at least one nonphotosynthetic and nonfruiting filamentous bacterium on a medium comprising at least one nonsulphurous mineral and/or thermal water” [p. 23, claim 1]. Wherein the bacterium is Vitreoscilla filiformis [p. 23, claim 3] and the thermal water is “chosen from water from Vittel, waters from the Vichy basin, … ” [p. 24, claim 9]. Marin also discloses that “[u]nexpectedly, it has been found, in the context of the invention, that the incorporation of thermal and/or mineral water in the culture medium in a relatively small proportion can confer, on the microorganism, advantageous properties distinct from those of a microorganism cultured on a medium in which the water incorporated is exclusively distilled and/or osmotically treated water” [p. 7, lines 29-36].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have used the methods of Marin to improve the composition taught by the claims of ‘014. One would have been motivated to do so because Martin discloses the method of including thermal water in the culture medium results in advantageous properties which are distinct from a culture medium of distilled water. One would have had an expectation of success because Martin discloses method for preparing a dermatological active principle, as desired by the claims of ‘014. See MPEP 2143, Exemplary Rationale C.
Additionally, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present case it would have been obvious to optimize the amount of Vichy thermal water during routine experimentation, thereby adjusting the weight ratios of extract to Vichy thermal water as well.
3) Claims 4-6 and 16-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 9,393,266 B2 in view of Martin et al. (WO 2008/138839 A2, publication date 11/20/2008) and Colonna et al. (FR 3016291 A1, publication date 07/17/2015; citing machine English translation).
The claims of ‘266 teach a composition comprising 0.001% to 20% by weight go an extract, wherein the extract comprising culture medium and Vitreoscilla filiformis and wherein the culture medium comprises a water with carbonates, silicon oxide, calcium ions and sulfate [col. 20, line 54 to col. 21, lines 10; claim 1].
The claims of ‘266 do not explicitly disclose Vichy thermal water and they do not disclose a composition further comprising Vichy thermal water.
Martin discloses Vichy thermal water is an appropriate water with these desired compounds (see pages 3-4).
Colonna discloses a “composition comprising: (i) one or more monosaccharides, and (ii) one or more extracts of one or more non-photosynthetic filamentous non-fruiting bacteria” [p. 20, claim 1]. Wherein “said non-photosynthetic non-photosynthetic filamentous bacterial extract is an extract of Vitreoscilla filiformis” [p. 20, claim 5]. Colonna also discloses that “[t]he composition of the invention may also advantageously contain a thermal and / or mineral water, in particular chosen from Vittel water, the waters of the Vichy basin and Roche Posay water” [p. 9, lines 1-3]. According to Colonna and appropriate amount of thermal water in composition is from 10 to 90% by weight [p. 20, claims 7-8].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected Vichy thermal water for the composition of ‘266 because Martin discloses it is a suitable water for the purpose intended by the claims.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the teachings of 10-90% Vichy thermal water with the composition taught by the claims of ‘266. One would have been motivated to make this combination because Colonna discloses it is advantageous to have thermal water in these amounts in a compositions comprising Vitreoscilla filiformis extracts. One would have had an expectation of success because the compositions are so similar and used in the same context (i.e., topical cosmetics). Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
In the present case, the instantly claimed ranges for water (0.1-95% w/w and 10-90% w/w; instant claims 5 and 17) and extract (0.001%-20% and 0.01-10% by weight; instant claims 6 and 18) overlap with the ranges of the prior art (10-90% and 0.001-20% by weight). Accordingly, a prima facie case of obviousness exists for both ranges.
Similarly, the range of instant claim 16 would have also been obvious. The disclosed weight percents of water and extract in Colonna imply a weight ratio of extract/water from, for example, 1 to 0.00001 (e.g., 10% by weight extract/10 % by weight water – 0.001% by weight extract/90 % by weight water). Therefore, the instantly claimed range for the weight ratio, as recited in claim 2, overlaps with the range of the prior art and a prima facie case of obviousness exists. See MPEP 2144.05(I)
4) Claims 4-6 and 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 9,125,934 B2 in view of Martin et al. (WO 2008/138839 A2, publication date 11/20/2008) and Colonna et al. (FR 3016291 A1, publication date 07/17/2015; citing machine English translation).
The claims of ‘934 teach a composition comprising 0.001% to 20% by weight go an extract, wherein the extract comprising culture medium and Vitreoscilla filiformis and wherein the culture medium comprises a water with carbonates, silicon oxide, calcium ions and sulfate [col. 14, line 54 to col. 15, lines 14; claim 1].
The claims of ‘934 do not explicitly disclose Vichy thermal water and they do not disclose a composition further comprising Vichy thermal water.
Martin discloses Vichy thermal water is an appropriate water with these desired compounds (see pages 3-4).
Colonna discloses a “composition comprising: (i) one or more monosaccharides, and (ii) one or more extracts of one or more non-photosynthetic filamentous non-fruiting bacteria” [p. 20, claim 1]. Wherein “said non-photosynthetic non-photosynthetic filamentous bacterial extract is an extract of Vitreoscilla filiformis” [p. 20, claim 5]. Colonna also discloses that “[t]he composition of the invention may also advantageously contain a thermal and / or mineral water, in particular chosen from Vittel water, the waters of the Vichy basin and Roche Posay water” [p. 9, lines 1-3]. According to Colonna and appropriate amount of thermal water in composition is from 10 to 90% by weight [p. 20, claims 7-8].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have selected Vichy thermal water for the composition of ‘934 because Martin discloses it is a suitable water for the purpose intended by the claims.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the teachings of 10-90% Vichy thermal water with the composition taught by the claims of ‘934. One would have been motivated to make this combination because Colonna discloses it is advantageous to have thermal water in these amounts in a compositions comprising Vitreoscilla filiformis extracts. One would have had an expectation of success because the compositions are so similar and used in the same context (i.e., topical cosmetics). Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
In the present case, the instantly claimed ranges for water (0.1-95% w/w and 10-90% w/w; instant claims 5 and 17) and extract (0.001%-20% and 0.01-10% by weight; instant claims 6 and 18) overlap with the ranges of the prior art (10-90% and 0.001-20% by weight). Accordingly, a prima facie case of obviousness exists for both ranges.
Similarly, the range of instant claim 16 would have also been obvious. The disclosed weight percents of water and extract in Colonna imply a weight ratio of extract/water from, for example, 1 to 0.00001 (e.g., 10% by weight extract/10 % by weight water – 0.001% by weight extract/90 % by weight water). Therefore, the instantly claimed range for the weight ratio, as recited in claim 2, overlaps with the range of the prior art and a prima facie case of obviousness exists. See MPEP 2144.05(I)
Conclusion
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/C.T.W./ Examiner, Art Unit 1612
/WALTER E WEBB/ Primary Examiner, Art Unit 1612