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 .
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed on 11/28/2025 and 03/23/2026 have been considered by the Examiner inasmuch as foreign documents have been submitted into the file wrapper in English.
Claim Status
The claim set and Applicant’s remarks filed March 25, 2026 have been entered.
Claims 1-15 and 26 are canceled.
Thus, claims 16-25 and 27-29 are examined on the merits herein.
Withdrawn Objections and Rejections
With respect to the objections and/or rejections mailed in the non-final office action on November 25, 2025:
(I) The rejection of claim 27 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn in view of Applicant’s amendment to the claim.
(II) The rejection of claims 16-18 and 21-23 under 35 U.S.C. 102(a)(2) is withdrawn in view of Applicant’s amendment to claim 16.
Response to Arguments
The rejection of claims 19-20, 24-25, and 27-29 under 35 U.S.C. 103 is maintained.
Applicant argues:
(A) Booten and Yun are from different fields of endeavor, see Applicant’s remarks, pg. 8, Rejections under 35 U.S.C. § 103, paragraph 2; thus, one of ordinary skill in the art would not have considered the fructooligosaccharides disclosed in Booten and Yun to be alternatives of each other and would not have been motivated to combine their teachings, see Applicant’s remarks, pg. 9, paragraph 1.
In response to applicant's argument that Booten and Yun is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Booten teaches use of a prebiotic component in a medicinal composition for the treatment of acne vulgaris, exemplifying oligofructose, preferably, said oligofructose is an oligofructose with a degree of polymerization (DP) which is at least 2 and more preferably at most 8.
Booten teaches the oligofructose is obtained by partial (acidic or enzymatic) hydrolysis of inulin from plant origin; and exemplifies Jerusalem artichoke.
The Examiner noted the shared filed of endeavor as written within the 103 rejection in the office action mailed November 25, 2025; as well as in the new 103 rejection below; between Booten and Yun was in obtaining oligofructose.
The Examiner also notes Yun is not relied upon for its teaching of fructooligosaccharides as artificial sweeteners as exemplified by Yun; but rather Yun teaches fructooligosaccharides can be extracted enzymatically from another plant source, where Yun teaches both Jerusalem artichoke and sugar beet as the plant source, and wherein the Examiner notes the components 1-kestose (GF2), nystose (GF3), and 1F-fructofuranosyl nystose (GF4) are each taught as fructooligosaccharides by Yun; and wherein these oligosaccharides are encompassed within the meaning of “oligofructose” of Booten as discussed above and within the new 103 rejection below.
(B) The claimed invention improves the physical and sensory properties of prior cosmetic compositions, such as the compositions of Booten, making it possible to improve the appearance and comfort of the skin, see Applicant’s remarks, pg. 9, paragraph 2.
The Examiner reiterates their arguments above and notes in treating acne vulgaris with the medicinal composition of Booten as discussed above, said composition improves the appearance of the skin as argued above. Additionally, the Examiner notes instant claim 18 recites the limitation of improving skin appearance and/or skin comfort by reducing at least one skin discomfort consisting of skin redness.
(C) Applicant’s invention exhibits greater elasticity (greater deformation) than a reference composition containing native starch but no short-chain fructooligosaccharides (scFOS), see Applicant’s arguments, pg. 9, paragraph 2.
(D) Combining scFOS with native starch lowers the overall firmness of the composition; and the presence of scFOS does not alter the textual characteristics when compared with formulations containing scFOS and xanthan gum, see Applicant’s arguments, pg. 9, paragraph 3.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., greater elasticity (greater deformation); firmness; and/or alterations in textual characteristics of the composition) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Finally, the Examiner particularly notes Applicant’s comparison for argument (C) is in relation to a composition not comprising short-chain fructooligosaccharides (scFOS); and for argument (D) where the composition comprises xanthan gum; however, the Examiner notes the prior art of Booten does comprise scFOS and does not require xanthan gum as discussed in greater detail within the new 103 rejection below.
New Claim Rejections
The following are new ground(s) or modified rejections necessitated by Applicant's amendment, filed on March 25, 2026, where the limitations in pending claims 16-25 and 27-29 as amended now have been changed.
Therefore, rejections from the previous Office Action, dated November 25, 2025, have been modified and are listed below.
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.
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 16-25 and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Booten (Filed 08 January 2021, US-20230058072-A1, PTO-892 mailed 11/25/2025) in view of Yun (Published August 1996, Enzyme and Microbial Technology, Vol. 19, Issue 2, pp. 107-117, PTO-892 mailed 11/25/2025).
Booten teaches a medicinal composition for the treatment of acne vulgaris (e.g. wherein improving the skin appearance of the subject comprises reducing redness, see claims 17-18), wherein the medicinal composition comprises at least one saponin and at least one prebiotic component selected from the group consisting of and including fructo-oligosaccharides (e.g. the cosmetic composition, required in claim 24, line 1), see paragraph [0042].
Booten teaches while a typical rinse-off composition applied to the skin results in an increase of abundance of Cutibacterium acnes, the bacterium that causes acne vulgaris, the abundance of this bacterium decreases when the composition is modified by replacing part of the anionic surfactant by the same amount of a saponin together with addition of inulin. This demonstrates that the saponin and the prebiotic component synergistically cooperate to maintain or restore a healthy bacterial skin flora (e.g. balancing the skin microbiota, required in claim 16, line 1). See paragraph [0043].
Booten teaches a use of the cosmetic composition in the preparation of a rinse-off cosmetic product or a leave-on cosmetic product (e.g. a step of applying, required in claim 16, line 2), see paragraph [0041].
Booten teaches the cosmetic composition described herein finds their application in a large number of cosmetic treatments, especially treatments for the skin, including scalp, hair, and/or mucous membranes, in particular for caring for the skin and/or mucous membranes (e.g. the skin, skin appendages and/or mucous membranes, required in claim 16, lines 2-3), see paragraph [0169].
Booten teaches said cosmetic composition forms an oil-in-water (o/w) emulsion (e.g. the cosmetically acceptable carrier, required in claim 16, lines 3-4 and claim 24, lines 1-2), see paragraph [0093].
Booten teaches in a preferred embodiment, the at least one prebiotic component is or comprises a fructose-based polymer including an oligosaccharide which may bear one terminal glucose unit, see paragraph [0056].
Booten teaches said fructose-based polymer is of the inulin type, see paragraph [0058].
Booten teaches in a preferred embodiment the inulin-type polymer is oligofructose, preferably, said oligofructose is an oligofructose with a degree of polymerization (DP) which is at least 2 and more preferably at most 8, see paragraph [0063].
Booten teaches the use of oligofructose has yielded good results in the context of the invention, see paragraph [0011].
Booten teaches the at least one prebiotic component is present in the product in a concentration which is most preferably at least 1 wt % with respect to the total weight of the cosmetic product (e.g. the amount of the at least one short-chain fructo-oligosaccharide, required in claim 16, line 7-8; claim 23; claim 24, lines 13-14 and claim 27), see paragraph [0055].
Booten teaches the cosmetic composition comprises at least one filler where example fillers of natural origin include corn starch (e.g. native corn starch, required in claim 21 and claim 25), and wherein the filler may be present at less than or equal to 20% of the total weight of the composition; at less than or equal to 10% of the total weight of the composition; at less than or equal to 8%; or at less than or equal to 5% of the total weight of the composition (e.g. the amount of native starch, required in claim 16, lines 9-10; claim 22; claim 24, lines 15-15 and claim 28), see paragraph [0168].
Booten teaches the composition remains in a stable emulsion form; and this type of composition is typically suitable for use as a leave-on product (e.g. a skin cream or lotion) (e.g. a dermo-cosmetic product, required in claim 29), see paragraph [0017].
Although, Booten does not exemplify (a) at least one short-chain fructo-oligosaccharide consisting of 2 to 4 molecules of fructose and contains a molecule of glucose at one of the oligosaccharides extremities, see claim 16, lines 4-6; claim 20; and claim 24, lines 2-3 and lines 6-12; or teaches (b) the short-chain fructo-oligosaccharide is derived from sugar beet as required in claim 19.
However, in the same filed of endeavor of obtaining oligofructose, Booten teaches the inulin-type polymer is obtained by partial (acidic or enzymatic) hydrolysis of inulin from a plant origin, see paragraph [0066]; wherein the plant is exemplified as Jerusalem artichoke, see paragraph [0065].
Although, the Examiner respectfully notes Booten does not exemplify the short-chain fructo-oligosaccharide is derived from sugar beet as required in claim 19.
However, in the same field of endeavor of obtaining oligofructose, Yun teaches it is an accepted opinion that fructooligosaccharides is a common name only for fructose oligomers that are mainly composed of 1-kestose (GF2), nystose (GF3), and 1F-fructofuranosyl nystose (GF4), see pg. 107, left column, introduction, paragraph 2.
Yun teaches the enzyme source of FOS synthesis can be divided into two classes including one from plants such as and including sugar beet and Jerusalem artichoke, see pg. 107, right column, paragraph 2.
Thus, it would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have included the oligofructose as taught by Booten is derived from sugar beet as required in instant claim 19, as Yun teaches the enzyme source of FOS synthesis can be divided into two classes including one from plants such as and including sugar beet and Jerusalem artichoke. The substitution of the artichoke of Booten for the sugar beet taught by Yun as discussed above is reasonably interpreted by the Examiner to be a simple substitution of one known element, in this case the Jerusalem artichoke as the plant source as exemplified by Booten above; for another known element, in the case the sugar beet as taught by Yun as discussed above as a simple substitution according to known methods to yield predictable results of obtaining fructooligosaccharides.
One of ordinary skill in the art would have been motivated to make the above substitution in order to obtain the inulin-type polymer, specifically the oligofructose, by partial enzymatic hydrolysis of inulin from a plant origin as taught by Booten above. One of ordinary skill in the art would have had a reasonable expectation of success to have included the substitution as discussed above into the teachings of Booten above, as Booten already teaches said inulin-type polymer is an oligofructose from aplant origin, specifically Jerusalem artichoke; and wherein Yun teaches the enzymatic source of FOS synthesis includes enzymes from plant sources such as and including sugar beet and Jerusalem artichoke as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art
Conclusion
No claims are allowed in this action.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARET J CREWS whose telephone number is (571)270-0962. The examiner can normally be reached Monday-Friday: 9:00am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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