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 .
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 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.
DETAILED ACTION
Claims 1, 3, 4, 12-18, 25-28, 47, 49, 52-54, and 56 are pending, claims 2, 5-11, 19-24, 29-46, 48, 50, 51, and 55 are canceled in this application. This application is a national stage entry of PCT/US21/64059, filled on 12/17/2021.
Election/Restrictions
During a telephone conversation with Jayshree Aiyar Gerken on restriction and species election on 10/07/2025 a provisional election was made with traverse to prosecute the invention of II, claims 3, 4, 12-18, 47, and 49. Affirmation of this election must be made by applicant in replying to this office action.
The traversal is on the ground(s) that there is no undue search burden. This is not found persuasive because, as stated below the special technical feature in all groups cannot be a special technical feature under PCT Rule 13.2 because the element is shown in prior art. Ibrahim et al. (US 2017/0253713 A1). Search burden being undue is a moot argument for lack of unity issue.
Claims 1, 25-28, 52-54, and 56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Claims 3, 4, 12-18, 47, and 49 will presently be examined to the extent they read on the elected subject matter of record.
Restriction
Restriction is required under 35 U.S.C. 121 and 372. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1, drawn to an isolated biologically purified culture of a strain of Bacillus (B.) pumilus deposited under ATCC accession number PTA-126909;
Group II, claim(s) 3, 4, 12-18, 47, and 49, drawn to a composition comprising: (a) a strain of B. pumilus deposited as ATCC PTA-126909; etc.;
Group III, claim(s) 25 and 26, drawn to a method of providing protection from ultraviolet light (UV) comprising administering said composition to a surface on a substrate;
Group IV, claim(s) 27, drawn to a method of making said composition comprising obtaining bacteria of a strain of B. pumilus deposited u as ATCC PTA-126909 to a carrier to yield the composition;
Group V, claim(s) 28, drawn to a method of directed evolution to produce a bacteria with resistance to UV comprising obtaining a sample of B. pumilus, growing the sample in artificial UV light at ≥700 joules/m2 of exposure, and isolating viable bacteria surviving such growth conditions, wherein the isolated viable bacteria exhibit greater UV absorption compared to the original B. pumilus from which the isolated viable bacteria was derived, in each case re-suspended 0.1-0.5% w:v in diH2O;
Group VI, claim(s) 52, drawn to a method for increasing an amount of skin hyaluronic acid (HA) for a subject, comprising administering topically effective amount said composition to skin of a subject to increase the amount of skin HA;
Group VII, claim(s) 53, drawn to a method for boosting sun protection factor (SPF) in a composition, comprising: combining said composition with a base composition chosen from a cosmetic composition, etc., thereby providing a combined composition, wherein: the base composition has a 1st SPF value >0 prior to the combining, and the combined composition has a 2nd SPF value > the 1st SPF value;
Group VIII, claim(s) 54 and 56, drawn to a method of protection of skin from UV light, comprising administering said composition to skin of a subject.
As set forth in Rule 13.1 of the Patent Cooperation Treaty (PCT), the international application shall relate to one invention only or to a group of inventions. Moreover, as stated in PCT Rule 13.2, the requirement of unity of invention referred to in PCT Rule 13.2 shall be fulfilled where a group of inventions is claimed in one and the same international application only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression special technical features shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art, so linked, as to form a single general inventive concept.
The inventions listed as Groups I-VIII do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: the special technical feature in all groups is a strain of B. pumilus deposited under ATCC accession number PTA-126909. The element cannot be a special technical feature under PCT Rule 13.2 because the element is shown in prior art. Ibrahim et al. (US 2017/0253713 A1) teach extraction of the species B. pumilus (abstract) including lytic cells of SARF 032 (paragraph 66 and 68), i.e., Bacillus Lysate while SARF 032 is the material for extraction of the claimed strain of B. pumilus deposited under ATCC accession number PTA-126909 and the INCI name of claimed strain of B. pumilus deposited under ATCC accession number PTA-126909 is Bacillus Lysate according to the instant specification. Consequently, groups I-VIII are not linked by the same or a corresponding special feature as to form a single general inventive concept. Therefore, Unity of Invention is lacking and restriction is deemed proper.
Multiple inventors
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Rejoinder
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention.
Should applicant traverse on the ground that the inventions or species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions or species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.103(a) of the other invention.
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 3, 4, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ibrahim et al. (US 2017/0253713 A1).
Ibrahim et al. meet all of the limitations of claims 3 and 4. Ibrahim et al. disclose extraction of the species B. pumilus (abstract) including lytic (the instant claim 4) cells of SARF 032 (paragraph 66 and 68), i.e., Bacillus Lysate while SARF 032 is the material for extracting the claimed strain of B. pumilus deposited under ATCC accession number PTA-126909 and the INCI name of claimed strain of B. pumilus deposited under ATCC accession number PTA-126909 is Bacillus Lysate according to the instant specification. Thus, the Bacillus Lysate disclosed by Ibrahim et al., as a composition, comprises the claimed strain of ATCC accession number PTA-126909 as a component.
Ibrahim et al. meet all of the limitations of claims 14 and 15. These limitations are intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claims 3, 4, 12-16, 47, and 49 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Almiñana Doménech et al. (US 2017/0014334 A1).
Almiñana Doménech et al. meet all of the limitations of claims 3, 14, and 15. Almiñana Doménech et al. disclose cosmetic (the instant claims 14 and 15) and/or dermopharmaceutical compositions containing a ferment extract secreted by a bacterial strain of the B. pumilus species (the claimed component c in the instant claim 3) and at least one cosmetically and/or dermopharmaceutically acceptable excipient and/or ingredient (abstract, paragraph 2, and claims 14, 35, and 36). According to the instant specification, the claimed secretion of a strain of B. pumilus deposited under ATCC accession number PTA-126909 is B. pumilus obtained from environmental sources (example 1).
Almiñana Doménech et al. meet all of the limitations of claim 4. The limitation in the instant claim 4 is a further limitation of an alternative component.
Almiñana Doménech et al. meet all of the limitations of claims 12, 13, 16, 47, and 49. Almiñana Doménech et al. disclose a composition in table 1 comprising 0.004% by weight of secretion of a strain of B. pumilus (the instant claims 12 and 47), 68.050% by weight of water (the claimed liquid in the instant claim 13 and aqueous component in the instant claim 16), 0.05% by weight of xanthan gum (the instant claim 49).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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 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.
Claims 3, 4, 12-18, 47, and 49 are rejected under 35 U.S.C. 103(a) as being unpatentable over Almiñana Doménech et al. (US 2017/0014334 A1).
The teachings of Almiñana Doménech et al. are discussed above and applied in the same manner. Almiñana Doménech et al. teach the composition comprising peanut oil (which contains resveratrol, the instant claim 18) (paragraph 39) and anti-wrinkle and/or antiaging agent including tocopherol (vitamin E in the instant claim 17) (paragraph 53).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in table 1 and paragraph 39 and 53 of Almiñana Doménech et al. to add peanut oil and tocopherol as components in the composition in table 1. Peanut oil and tocopherol being components in the compositions containing a ferment extract secreted by a bacterial strain of the B. pumilus species taught by Almiñana Doménech et al. was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614