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 .
Applicant’s election with traverse of Group I, claims 15-26, in the reply filed on 2 January 2026 is acknowledged.
Traversal is on the grounds that the claims are linked by a special technical feature, namely the use of Hippophae rhamnoides cake in treatment of skin conditions such as alopecia and/or baldness, and to promote growth of skin appendages.
This is unpersuasive, since as stated previously, Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of hydrolyzate of Hippophae rhamnoides cake, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of CN105063139 and CN108065411 [cited by Applicant in IDS filed 7/21/23] which disclose peptide hydrolyzates from the residue of supercritical CO2 extraction of H. rhamnoides seeds. These are hydrolyzates obtained by enzymatic hydrolysis.
Thus, the technical feature which would otherwise bind the claims together is not
a 'special' technical feature and thus Unity of Invention is lacking and the claims are properly restrictable.
Claims 25-27 are withdrawn as being directed to a nonelected invention.
Claims 15-24 and 28 are presented, for examination on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-24 and 28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 is rendered vague and indefinite by the phrases:
“identifying a dedicated population of humans not suffering from a skin pathology for which it is desired to apply the hydrolyzate of H. rhamnoides or a cosmetic composition comprising same, and/or who are in need thereof:
identifying the healthy area of the body and/or the healthy skin, including the healthy scalp, and/or the healthy skin appendage requiring treatment;”
Since the claims are directed to a method for, among other things repairing damaged skin appendages, it is unclear how such a population of humans not suffering from a skin pathology can be in need thereof or how a “damaged skin appendages” can be considered a “healthy” scalp or skin appendage.
Indeed, overall it is unclear why these two method steps were added to the claimed method.
Claim 20 is rendered vague and indefinite by the phrase: “application is via the topical route on the healthy area of the body and/or the healthy skin requiring treatment”. Since a cosmetic is defined as: a product applied to the body, especially the face, to improve or enhance its appearance. It is unclear how this is meant to further limit the method of claim 15, which is presumably topically applied to the skin.
[Note: there is no evidence provided in the Written Description to indicate that application is anything other than topically to the skin appendage. Thus, if the scope of the claim 15 is to include any means of Administration there could be possible 35 USC 112(a) rejections, as well as prior art which discloses the use of peptide hydrolyzates from the residue of supercritical CO2 extraction of H. rhamnoides seeds, but not cosmetically (i.e., topically), administration of which would have the claimed effects on skin appendages, even if that was not the intended result of said administration. See e.g., CN105063139 {cited by Applicant in IDS filed 7/21/23}].
Claim 21 is rendered vague and indefinite by the phrase “the cake hydrolyzate reduces the negative effects of aging of the skin appendages”. It is unclear how this phrase is meant to further limit the claimed method, which is dealing with “healthy” skin. Otherwise, the phrase is simply stating an inherent functional property of the hydrolysate.
Claim 22 is rendered vague and indefinite by the phrase “the cake hydrolyzate improves the color and/or sheen and/or radiance and/or volume of the skin appendages”. It is unclear how this phrase is meant to further limit the claimed method, or does the phrase simply state an inherent functional property of the hydrolysate.
Appropriate clarification is required.
All other claims depend directly or indirectly from rejected claims and are, therefore, also rejected under U.S.C. 112, second paragraph, for the reasons set forth above.
In order to practice compact prosecution a clarified claim is proposed below:
A cosmetic method comprising topically applying an effective amount of a composition comprising a hydrolyzate of Hippophae rhamnoides cake to a skin appendage in need thereof,
wherein said composition is applied in an effective amount for increasing the growth of the skin appendages and/or decreasing the loss thereof; and/or for maintaining and/or increasing the biomechanical properties and/or the surface and/or textural properties of the skin appendages; and/or for repairing damaged skin appendages.
“[W]here there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 35 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 USC 103 should not be based on considerable speculation about the meaning of terms employed in a claims or assumptions that must be made as to the scope of the claims.” MPEP 2173.06 II.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL G FIEBIG whose telephone number is (571)270-5366. The examiner can normally be reached M-F 8-4.
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/RUSSELL G FIEBIG/ Examiner, Art Unit 1655
Prosecution Insights