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 .
Priority
The instant application claims foreign priority to FR21/08421 filed 08/03/2021. The instant application is a 371 of PCT/EP2022/071615 filed 08/02/2022.
Information Disclosure Statement
The information disclosure statement (IDS) dated 02/01/2024 complies with provisions of 37 CFR 1.97, 1.98 and MPEP §609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits.
Drawings
The drawings are objected to because they are presently not in English and the details are too blurry or pixelated to read clearly. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
With regards to claim 1, claim recites “A cosmetic comprising viniferine configured to protect, prevent, reduce or erase damage caused by an exposure to blue light on the skin or the appendages.”. The only component denoted in the cosmetic within this claim is viniferine with no denoted alterations or specific formulas therefore the Examiner is interpreting that the viniferine inherently produces the beneficial effect described by the claim as “protect, prevent, reduce or erase damage caused by an exposure to blue light on the skin or the appendages.”
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 1-8 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.
The term “protect, prevent, reduce or erase damage” in claim 1 is a relative term which renders the claim indefinite. The term “protect, prevent, reduce or erase damage” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is presently unclear what quantitative amounts are considered protection, prevention, reduction or erasure. How much of a change counts as reduction or erasure? How much of a benefit is considered prevention or protection? The qualitative nature of protection, prevention, reduction or erasure are also unclear. Is protection measured in intensity of light or time in light or another metric entirely? Is reduction measured by cm2 of skin or time to heal or another metric entirely? Because the metes and bounds of the claim are unclear the claim is presently indefinite. The claims which depend on claim 1, claims 2-5, are therefore also indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation a fatty acid ester, and the claim also recites preferably a palmitic acid ester which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
The term “protecting, preventing, reducing or erasing damage” in claim 6 is a relative term which renders the claim indefinite. The term “protecting, preventing, reducing or erasing damage” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is presently unclear what quantitative amounts are considered protection, prevention, reduction or erasure. How much of a change counts as reduction or erasure? How much of a benefit is considered prevention or protection? The qualitative nature of protection, prevention, reduction or erasure are also unclear. Is protection measured in intensity of light or time in light or another metric entirely? Is reduction measured by cm2 of skin or time to heal or another metric entirely? Because the metes and bounds of the claim are unclear the claim is presently indefinite. The claims which depend on claim 6, claims 7-8, are therefore also indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation an ester or an ether, and the claim also recites preferably in the form of a fatty acid ester such as an ester of palmitic acid which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 depends from claim 1. Claim 1 recites “A cosmetic comprising viniferine configured to protect, prevent, reduce or erase damage caused by an exposure to blue light on the skin or the appendages.”. Claim 4 recites “The cosmetic according to claim 1, wherein viniferine is associated with resveratrol and/or one of its oligomers”. Viniferine is derived from resveratrol therefore claim 4 does not further limit the claim from which it depends claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 4-6, and 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claim 1 recites “A cosmetic comprising viniferine configured to protect, prevent, reduce or erase damage caused by an exposure to blue light on the skin or the appendages.”. This judicial exception is not integrated into a practical application because the viniferine is not markedly different from its naturally occurring counterpoint as it has the same structure. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no additional components or elements claimed only the viniferine which occurs in nature.
The vine shoot extract of claim 5 is simply the vine combined with water (instant specification at page 3) since the viniferine is water soluble. The extraction of the viniferine does not markedly change the structure which is found in nature. The addition of water is not a marked difference from a wet vine found in nature, or even a crushed vine which would have water within the structure of the vine. The addition of “a dilutent, an excipient or combination thereof” does not distinguish the structure of the viniferine from the naturally occurring viniferine.
With regards to claims 6 and 8 there is no additional components or elements claimed only the viniferine, which is not markedly different from its naturally occurring counterpoint that has the same structure.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
A) Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. 360 Duo Eye care the Daye Eye care composition (Provided by applicant in IDS filed 02/01/2024) contains Vitis Vinifera Fruit Cell Extract. 360 Duo Eye care recites “The Maria Galland Lumin Eclat line is designed to restore a fresh radiance to the complexion, and reduce first wrinkles. Included is 350 Soin Duo Regard Jour & Nuit (Duo Eye Care Day & Night), which is said to have a combination of a day formula and a night formula that works as a duo treatment for eye contours marked by fatigue and the first signs of ageing, while durably preserving the beauty and youth of the eye contour. According to the manufacturer, the duo features: anti-ageing peptide, which reduces wrinkles and stimulates the activity of fibroblasts and the synthesis of collagen; illuminating marine extract, which reduces dark circles and rejuvenates the eye area; light diffuser, which reflects light and optically fills in wrinkles; and ginseng extract, which stimulates cellular energy and protects against the harmful effects of blue light. Day eye care is said to have an illuminating formula with light reflecting particles, whilst night eye care is claimed to have a regenerating formula that acts in synergy to visibly reduce dark circles, puffiness and the first wrinkles and gives the skin radiance. Free from perfume, the ophthalmologically-tested duo retails in a 20ml pack.”.
B) Claims 1, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Bertrand et al. (US Patent Application Publication 20190201318A1).
Bertrand recites cosmetic composition containing at least one combination of (a) at least one polyphenol chosen from proanthocyanidin monomers and oligomeric proanthocyanidins (OPCs), hydroxystilbenes, flavonoid monomers and oligomers, derivatives thereof and mixtures thereof, and (b) a spruce extract comprising at least one lignan chosen from: hydroxymatairesinol, secoisolariciresinol, conidendrin, lariciresinol and liovil (Bertrand at claim 1). Bertrand recites wherein the at least one polyphenol is extracted from vine (Bertrand at claim 2). Bertrand recites wherein the at least one polyphenol comprises polyphenol derivatives that are polyphenol esters (Bertrand at claim 3). Bertrand recites wherein the at least one polyphenol is present at a concentration of from 0.01% to 10% by weight relative to the total weight of the composition (Bertrand at claim 4). Bertrand recites containing at least (a) one grapeseed extract containing polyphenols, which is stabilized by esterification, the extract being present at a concentration of from 0.01% to 10% by weight (Bertrand at claim 6). Bertrand recites further comprising at least one active agent chosen from antioxidants, moisturizing agents, desquamating agents, agents which improve the barrier function, depigmenting agents, and agents which improve cutaneous microcirculation (Bertrand at claim 8). Bertrand recites method for combatting the signs of aging of the skin or of the skin appendages or combatting the cutaneous signs linked to pollution comprising applying the composition of claim 1 to skin (Bertrand at claim 10). Bertrand recites method for improving the radiance of the skin and/or decreasing the appearance of dark circles around the eyes comprising applying the composition of claim 1 to skin (Bertrand at claim 11). Bertrand recites herein the composition is applied as an agent for combatting a disorder chosen from wrinkles and fine lines, a dull complexion, pigment spots, the loss of firmness of the skin, and dark circles under the eyes (Bertrand at claim 12). Bertrand recites a cosmetic treatment process for preventing or decreasing skin disorders induced by oxidative stress, comprising at least one step consisting in applying, to the skin or the scalp, a combination of at least (a) polyphenols chosen from proanthocyanidin monomers and oligomeric proanthocyanidins (OPCs), hydroxystilbenes, flavonoid monomers and oligomers, derivatives thereof and mixtures thereof, and (b) a spruce extract comprising at least one lignan chosen from hydroxymatairesinol, secoisolariciresinol, conidendrin, lariciresinol and liovil, or a cosmetic composition containing said combination (Bertrand at claim 13).
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bertrand et al. (US Patent Application Publication 20190201318A1).
Bertrand recites cosmetic composition containing at least one combination of (a) at least one polyphenol chosen from proanthocyanidin monomers and oligomeric proanthocyanidins (OPCs), hydroxystilbenes, flavonoid monomers and oligomers, derivatives thereof and mixtures thereof, and (b) a spruce extract comprising at least one lignan chosen from: hydroxymatairesinol, secoisolariciresinol, conidendrin, lariciresinol and liovil (Bertrand at claim 1). Bertrand recites wherein the at least one polyphenol is extracted from vine (Bertrand at claim 2). Bertrand recites wherein the at least one polyphenol comprises polyphenol derivatives that are polyphenol esters (Bertrand at claim 3). Bertrand recites wherein the at least one polyphenol is present at a concentration of from 0.01% to 10% by weight relative to the total weight of the composition (Bertrand at claim 4). Bertrand recites containing at least (a) one grapeseed extract containing polyphenols, which is stabilized by esterification, the extract being present at a concentration of from 0.01% to 10% by weight (Bertrand at claim 6). Bertrand recites further comprising at least one active agent chosen from antioxidants, moisturizing agents, desquamating agents, agents which improve the barrier function, depigmenting agents, and agents which improve cutaneous microcirculation (Bertrand at claim 8). Bertrand recites method for combatting the signs of aging of the skin or of the skin appendages or combatting the cutaneous signs linked to pollution comprising applying the composition of claim 1 to skin (Bertrand at claim 10). Bertrand recites method for improving the radiance of the skin and/or decreasing the appearance of dark circles around the eyes comprising applying the composition of claim 1 to skin (Bertrand at claim 11). Bertrand recites herein the composition is applied as an agent for combatting a disorder chosen from wrinkles and fine lines, a dull complexion, pigment spots, the loss of firmness of the skin, and dark circles under the eyes (Bertrand at claim 12). Bertrand recites a cosmetic treatment process for preventing or decreasing skin disorders induced by oxidative stress, comprising at least one step consisting in applying, to the skin or the scalp, a combination of at least (a) polyphenols chosen from proanthocyanidin monomers and oligomeric proanthocyanidins (OPCs), hydroxystilbenes, flavonoid monomers and oligomers, derivatives thereof and mixtures thereof, and (b) a spruce extract comprising at least one lignan chosen from hydroxymatairesinol, secoisolariciresinol, conidendrin, lariciresinol and liovil, or a cosmetic composition containing said combination (Bertrand at claim 13). Betrand teaches polyphenols that are suitable for implementing the invention are chosen from proanthocyanidin monomers and oligomeric proanthocyanidins (OPCs), hydroxystilbenes, and flavonoid monomers and oligomers. Such polyphenols are for example extracted from various plants, and in particular from vine. They can be obtained from various parts of the Vitis vinifera plant, for example from the fruits or from parts of the fruits such as the seeds or the skin, but also from the vine shoots (Bertrand at [0045]). Betrand teaches polyphenols may in particular be chosen from hydroxystilbenes in monomer or oligomer form, and in particular resveratrol (in cis and/or trans form), rhapontin, deoxyrhapontin, piceatannol, piceid and viniferins (Bertrand at [0046]). Betrand teaches that the term “polyphenol derivatives” is intended to mean more particularly stabilized molecules in which all or some of the hydroxyl groups are etherified or esterified. According to one preferred embodiment, the esterification is formed with a saturated or unsaturated fatty acid. The fatty acid may in particular be chosen from butyric, valeric, hexanic, sorbic, lauric, palmitic, stearic, oleic, linoleic, linolenic, alpha-linolenic, arachidonic, ecosapentaenoic and docosahexaenoic acid (Bertrand at [0051]). Betrand teaches that polyphenols extracted from vine shoots, in particular resveratrol, and derivatives thereof, are in particular used. Polyphenols that are particularly suitable for implementing the invention are catechins, catechin oligomers or OPCs, such as those extracted from grapeseeds, and derivatives of these polyphenols, in particular esters thereof (Bertrand at [0073]). Betrand teaches that the mixtures in any proportions of the various polyphenols and of the derivatives thereof, which may be partially or totally esterified or etherified, as defined in the aforementioned, may be used (Bertrand at [0074]).
Bertrand is discussed in the Anticipation Rejection supra. Bertrand differ from the instant claims in this rejection insofar as it does not teach the combination of the of the instantly recited components with sufficient specificity for anticipation. However, given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art at a time prior to the filing of the present patent application and following the teachings of Bertrand to have selected and combined known components for their established functions with predictable results. MPEP §2143 and §2144.06(I).
With regards to claim 8, wherein the at least one polyphenol is present at a concentration of from 0.01% to 10% by weight relative to the total weight of the composition (Bertrand at claim 4), which overlaps the instantly claimed range of 0.001% to 1%. 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).
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.
A) Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,607,379 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent requires the use of spruce extract which is not required by the instant application.
Instant claim 1 recites “A cosmetic comprising viniferine configured to protect, prevent, reduce or erase damage caused by an exposure to blue light on the skin or the appendages.”
The reference patent ‘379 recites “an antioxidant cosmetic composition for skin and/or hair containing (a) polyphenols extracted from grapeseed and comprising proanthocyanidin dimers, catechin, and epicatechin, said polyphenols being stabilized by esterification, (b) a Picea abies spruce extract comprising hydroxymatairesinol, and (c) at least one active agent chosen from antioxidants, moisturizing agents, desquamating agents, agents which improve the barrier function, depigmenting agents, and agents which improve cutaneous microcirculation, wherein said composition increases the production of the HO-1 antioxidant enzyme in normal human dermal fibroblasts by more than the sum of said production for each of said polyphenols (a) and said Picea abies spruce extract (b)” (‘379 at claim 1). The reference patent ‘379 recites “wherein the polyphenols are present at a concentration of from 0.01% to 10% by weight relative to the total weight of the composition” (‘379 at claim 2). The reference patent ‘379 recites “wherein (a) the polyphenols are present at a concentration of from 0.01% to 10% by weight relative to the total weight of the composition, and (b) the Picea abies spruce extract is present at a concentration of from 0.01% to 10% by weight relative to the total weight of the composition” (‘379 at claim 4). The reference patent ‘379 recites “wherein a weight ratio of concentrations between the polyphenols extracted from grapeseed and the spruce extract is between 0.1 and 5 expressed as polyphenols/spruce lignans” (‘379 at claim 5). The reference patent ‘379 recites “amethod for combatting the signs of aging of the skin or of the skin appendages or combatting the cutaneous signs linked to pollution comprising applying the composition of claim 1 to skin” (‘379 at claim 7). The reference patent ‘379 recites “method for improving the radiance of the skin and/or decreasing the appearance of dark circles around the eyes comprising applying the composition of claim 1 to skin” (‘379 at claim 8). The reference patent ‘379 recites “method for improving radiance of the skin and/or for preventing or decreasing presence of dark circles under the eyes, comprising the step of applying the composition of claim 1 to the skin” (‘379 at claim 11). The reference patent ‘379 recites “cosmetic composition for skin and/or hair comprising about 0.01 to about 10% by weight grapeseed extract polyphenols comprising catechin, epicatechin and proanthocyanidin dimers, said polyphenols being stabilized by esterification, about 0.01 to about 1.0% by weight Picea abies extract comprising hydroxymatairesinol, and a cosmetically acceptable carrier wherein the composition increases the production of HO-1 antioxidant enzyme in normal human dermal fibroblasts by more than the sum of said production for each of said polyphenols (a) and said Picea abies spruce extract (b)” (‘379 at claim 12).
Reference claims effectively anticipate the instant claims resulting in a prima facie case of anticipatory type non-statutory double patenting.
B) Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 10470987 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent requires hyaluronic acid which is not required by instant claim 1.
Instant claim 1 recites “A cosmetic comprising viniferine configured to protect, prevent, reduce or erase damage caused by an exposure to blue light on the skin or the appendages.”
The reference patent 987 recites “a process for stimulating hyaluronic acid in vitro or in vivo production by a mammal cell or tissue, comprising administering a composition comprising consisting of a combination of an efficient amount of resveratrol oligomers and an efficient amount of hyaluronic acid or a salt thereof as solely active principles and wherein the mammal cell or tissue are fibroblasts, keratinocytes or epithelial cells of cornea” (‘987 at claim 1). The reference patent 987 recites “wherein the monomeric units forming the oligomers of resveratrol are cis-resveratrol, trans-resveratrol, ε-viniferin, resveratrol esters, methylated or acetylated resveratrol and the monomers including at least one ester group of the formula —O—CO-A, and the oligomers being formed by monomeric units joined by carbon-carbon, or ether bonds, and/or monomers cross-linked by —O—CO—R—CO—O— group, with -A representing an alkyl radical with at least two carbon atoms, being linear or branched, saturated or unsaturated, an aryl, aralkyl or aralkylene radical, and —R representing an alkylene radical with 0 to 10 carbon atoms, being saturated or unsaturated, and/or 1 arylene radical having 1 to 3 rings and/or a heterocyclic radical, and diastereomers of these units” (‘987 at claim 2). The reference patent 987 recites “wherein the hyaluronic acid or a salt thereof has a mean molecular weight between 50 kDa and 100 kDa” (‘987 at claim 3).
Reference claims effectively anticipate the instant claims resulting in a prima facie case of anticipatory type non-statutory double patenting.
Conclusion
No claims are presently allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA MICHELLE PETRITSCH whose telephone number is (571)272-6812. The examiner can normally be reached M-F 08:30-17:00 EST ALT Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA MICHELLE PETRITSCH/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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