DETAILED ACTION
Status of Claims
The amendments, and arguments, filed March 16, 2026, are acknowledged and have been fully considered. Claims 1, 4-5 and 10-11 are pending and currently under consideration. Claims 1 and 4-5 have been amended; new claims 10-11 have been added; and claims 2-3 and 6-9 have been 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Withdrawn Claim Objections & Rejections
The objections to claims 5, 7 and 9 (items A., B. and C. at par. 1-2 of the 12/18/2025 Office action) are withdrawn in light of applicant’s 03/16/2026 amendments. Applicant’s 03/16/2026 arguments with respect to are acknowledged, but are moot in light of the new rejections presented herein.
The rejection of claims 1-3 under 35 U.S.C. § 101, as being directed to a judicial exception without significantly more (at par. 3-4 of the 12/18/2025 Office action) is withdrawn in light of applicant’s 03/16/2026 amendments.
The rejection of claims 1 and 4-5 under 35 U.S.C. § 102 (a)(1) by BANG (KR 101564255 B1), as evidenced by MATEI (Polysaccharides, 6 (2025) pp. 1-32) and TURNER (Int. J. Cosmet. Sci., 34 (2012) pp. 298-306) (at par. 5-11 of the 12/18/2025 Office action), is withdrawn in light of applicant’s 03/16/2026 amendments, as well as the reasons for allowance, discussed below.
The rejection of claims 2-3 and 6-9 under 35 U.S.C. § 102 (a)(1) by BANG, as evidenced by MATEI and TURNER, as further evidenced by MANDAL (Carbohydr. Res., 87 (1980) pp. 249-256) (at par. 12-16 of the 12/18/2025 Office action), is withdrawn in light of applicant’s 03/16/2026 amendments, as well as the reasons for allowance, discussed below.
New Claim Rejections – 35 U.S.C. § 112 – Indefiniteness – Necessitated by Amendments
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.
Claim 4 is 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 pre-AIA , that applicant regards as the invention.
Claim 4 recites “(3) an extract obtained by treatments selected from adding water to rice, adding an organic solvent to rice, treating rice with an acid, treating rice with an alkali, causing an enzyme to act on a hydrate of rice, causing koji to act on a hydrate of rice, wherein the treatments are performed with or without,” wherein it is unclear as to what “with or without” refers to in items (3).
Further clarification is required.
New Claim Rejections – 35 U.S.C. § 103 – Necessitated by Amendments
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 and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over TOKUE (JP H07187983 A, Publ. Jul. 25, 1995; as evidenced by English language translation of JP H0543428 A; hereinafter, “Tokue”), in view of ZHENG (Zheng, X., et al., Molecular Characterization of Arabinoxylans from Hull-Less Barley Milling Fractions, Molecules 16 (2011) pp. 2743-2753; hereinafter, “Zheng”).
Paragraph numbers for Tokue refer to English language translation of JP H07187983 A.
Tokue is directed to a “pack cosmetic” for “removing effects on sebum” containing a “Hemicellulose”:
Abstract
PURPOSE:To obtain a pack cosmetic having a highly strained feeling and adhesion feeling, excellent removing effects on sebum and keratin plug, comprising hemicellulose as a main film coating agent. CONSTITUTION:This pack cosmetic comprises 0.5-60wt.% of a water-soluble hemicellulose as a main film coating agent. Hemicellulose is much contained in wood, stems and leaves, roots and seeds of gramineous plants, pasture, etc., is a cell wall polysaccharide except cellulose and pectin substances, and arabinoxylan and glactoxylan, etc., may be cited as the hemicellulose. A coating film agent such as a synthetic cellulosic polymer compound, a natural polysaccharide-based compound to be used in an ordinary pack cosmetic besides the coating agent of hemicellulose can further be used by mixing with water, a surfactant, powder, a polyhydric alcohol, a lower alcohol, an oily component, a thickening agent, a perfume, an antiseptic, an antioxidant, a chelating agent, a chemical, a coloring matter, etc., properly to prepare into a pack cosmetic.
(Tokue, abstract), that are applied to the nose (Tokue, par. [0011]). In this regard, Tokue teaches “arabinoxylan” as a preferable hemicellulose:
The hemicellulose used in the present invention is abundantly contained in wood, foliage, roots, seeds, roots, seeds, grasses and the like of plants of the family Gramineae, and is a cell wall polysaccharide other than cellulose and pectic substances. For example, D- A mixture of heteroglycans containing xylose, L-arabinose, D-glucose, D-galactose, D-mannose, D-glucuronic acid, etc., homoglycans such as xylan, arabinan, etc., and one or more of them are Selected and used. Particularly, arabinoxylan, galactoxylan, mannoarabinan and arabinan are preferable.
Tokue, par. [0005].
Regarding independent claim 1 and the requirements:
1. ([…]) A method for suppressing sebum secretion in a subject in need thereof, comprising
applying to skin of the subject a sebum secretion suppressor comprising a polysaccharide composed of arabinogalactan, lipopolysaccharide (LPS), arabinoxylan and/or glucomannan, wherein
a molecular weight of the polysaccharide is 5000 or more.
Tokue clearly teaches a “pack cosmetic” for “removing effects on sebum” containing a “Hemicellulose” (Tokue, abstract), preferably “arabinoxylan” (Tokue, par. [0005]) that are applied to the nose (Tokue, par. [0011]), which meets the active step requirements of claim 1 for “applying to skin of the subject a sebum secretion suppressor comprising a polysaccharide composed of […], arabinoxylan and/or […].” However, Tokue DOES NOT EXPRESSLY TEACH the requirement of claim 1 for “wherein a molecular weight of the polysaccharide is 5000 or more,” since it is well within the purview of the ordinarily skilled artisan to obtain a suitable arabinoxylan source. Zheng, for instance, is directed to the molecular characterization of arabinoxylans from hull-less barley milling fractions (Zheng, title & abstract), wherein “[t]he range of molecular weight of the arabinoxylans in the studied hull-less barley was 276,000 to 877,100 g/mol” (p. 2746, par. 1).
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate Tokue’s “pack cosmetic” (Tokue, abstract) with an “arabinoxylan” (Tokue, par. [0005]) such as Zheng’s arabinoxylans from hull-less barley with a molecular weight of 276,000 to 877,100 g/mol (p. 2746, par. 1). One would have been motivated to do so with a reasonable expectation of success in order to obtain a suitable source of arabinoxylan, known in the art, based on availability, cost, and desired quantity. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” See MPEP § 2144.05 (I) regarding the obviousness of prior art overlapping claimed numerical ranges.
Thus, the prior art renders claim 1 obvious.
Regarding claim 10 and the requirements:
10. ([…]) The method according to claim 1, wherein
the sebum secretion suppressor contains 0.001 % by mass or more of the polysaccharide.
Tokue teaches a “pack cosmetic” for “removing effects on sebum” containing a “Hemicellulose” (Tokue, abstract), preferably “arabinoxylan” (Tokue, par. [0005]), wherein “[t]his pack cosmetic comprises 0.5-60wt.% of a water-soluble hemicellulose as a main film coating agent” (Tokue, abstract). See MPEP § 2144.05 (I) regarding the obviousness of prior art overlapping claimed numerical ranges.
Thus, the prior art renders claim 10 obvious.
Claims 4-5 and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over TOKUE (JP H07187983 A, Publ. Jul. 25, 1995; as evidenced by English language translation of JP H0543428 A; hereinafter, “Tokue”), in view of ZHENG (Zheng, X., et al., Molecular Characterization of Arabinoxylans from Hull-Less Barley Milling Fractions, Molecules 16 (2011) pp. 2743-2753; hereinafter, “Zheng”), as applied to claims 1 and 10, above, and in view of TOKUYAMA (JP 07138177 A, Publ. May 30, 1995; as evidenced by English language translation of JP 07138177 A; hereinafter “Tokuyama”).
Page and paragraph numbers for Tokuyama refer to English language translation of JP 07138177 A.
The teachings of Tokue and Zheng, as set forth above, are hereby incorporated. However, the references DO NOT TEACH the requirements of claims 4-5 and 11 for:
4. ([…]) he method according to claim 1, wherein
the sebum secretion suppressor further comprises a rice-derived component
5. ([…]) The method according to claim 4, wherein the rice-derived component is one or more of (1) a pulverized product of rice; (2) an extract of rice; (3) an extract obtained by treatments selected from adding water to rice, adding an organic solvent to rice, treating rice with an acid, treating rice with an alkali, causing an enzyme to act on a hydrate of rice, causing koji to act on a hydrate of rice, wherein the treatments are performed with or without; ( 4) a product obtained by causing an enzyme or koji to act on rice before, at the same time as, or after rice extraction; and (5) a product obtained by performing alcohol fermentation on an extract of rice, performing an organic acid fermentation on an extract of rice, or causing an enzyme or koji to act on an extract of rice.
[…]
11. ([..]) The method according to claim 4, wherein
the rice-derived component is a product obtained by performing alcohol fermentation or organic acid fermentation on an extract of rice or an extract obtained by causing an enzyme or koji to act on rice.
which are well within the purview of the ordinarily skilled artisan.
Tokuyama, for instance, is directed to:
Lipid Peroxide Inhibitor, Used In Medicines, Cosmetics Or Food Is Obtd. From (germinated) Rice, Opt. Decomposed By Enzyme Or Treated With Koji, Fermented With Alcohol, Etc.
Abstract
New lipid peroxide inhibitor comprises germinated rice. Also claimed are lipid peroxide inhibitor comprising (1) the extracts of (germinated) rice, (2) hydrolysed prod. of (germinated) rice which is decomposed by enzyme or treated with koji, (3) the extracts of (germinated) rice which is decomposed by enzyme or treated with koji before, during or after the extn. or (4) the extracts of (germinated) rice which may be decomposed by enzyme or treated with koji, and further fermented by alcohol or organic acid.
(Tokuyama, title & abstract), which is a “rice-derived component” of claims 4-5 and 11. In this regard, Tokuyama teaches a preparation thereof for treating sebum, wherein “The prepn. was applied on 5 subjects for 3 weeks, and the difference of lipid peroxide in sebum before and after the prepn. was administered was measured” (Tokuyama, p. 2, par. 3).
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art to combine the compositions of Tokue and Tokuyama in a method of treating sebum. One of ordinary skill in the art at the time the invention was made would have been motivated to so because “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” MPEP § 2144.06). In re Susi, 58 CCPA 1074, 1079-80, 440 F.2d 442, 445, 169 USPQ 423, 426 (1971; In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77, 126 USPQ 186, 188 (1960). As the court explained in Crockett, the idea of combining them flows logically from their having been individually taught in prior art. Therefore, since the references teach that the compositions of Tokue as well as Tokuyama are effective in treating sebum (Tokue, abstract; Tokuyama, p. 2, par. 3), it would have been obvious to combine the two compounds with the expectation that such a combination would be effective in treating sebum. Thus, combining them flows logically from their having been individually taught in prior art.
Thus, the prior art renders claims 4-5 and 11 obvious.
Summary/Conclusion
Claims 1, 4-5 and 10-11 are rejected. No claims are allowed.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611
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