DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The amendment filed February 12, 2026 has been received and entered. The text of those sections of Title 35, U.S. Code, not included in this action can be found in a prior Office action. Any rejection set forth in a previous Office action that is not specifically set forth below is withdrawn.
3. Claims 1, 2, 5, and 12-28 are pending.
Election/Restrictions
4. In the reply filed on August 29, 2025, applicant elected Group I, now claims 1, 2, 5, 12-19, and 21-28, and a combination of three different caviar extracts for species A without traverse.
5. Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
6. Claims 1, 2, 5, 12-19, and 21-28 are examined 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.
7. Claim 27 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 depends from claim 25 which requires that the preparation be in the form of an emulsion. Emulsions are liquid formulations; however, claim 27 states that the composition can be in the form of a stick or a powder. Sticks and powders are solid preparations; thus, it is unclear how these solid forms can be emulsions. Clarification is needed.
Claim Rejections - 35 USC § 103
8. Claim(s) 1, 2, 5, 12-19, and 21-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stangl (US 2020/0188447), Han (KR 20100065437 A – English translation), and Auriol (WO 2020/201185 A1) for the reasons set forth in the previous Office action.
All of applicant’s arguments regarding this ground of rejection have been fully considered but are not persuasive. Applicant argues that an artisan of ordinary skill would not be motivated to combine Han with the composition of Stangl because Han teaches a skin whitening composition rather than a composition for treating the signs of skin aging. However, Han specifically teaches that the caviar extract is useful for “preventing wrinkles, delaying skin aging” (see “Advantageous-Effects” section in the translation). Thus, this argument is not persuasive.
Applicant also argues that the claimed invention is patentable over the prior art due to the presence of synergistic effects shown for the combination of the three caviar extracts with sodium mannose 6-phosphate on pages 26-28 of the specification. However, the results shown in the specification are not considered to render the claimed invention patentable over the prior art because the results are not commensurate in scope with the claimed invention (see MPEP section 716.02(c)). The results shown in the specification are for the combination of three commercially available caviar extracts which contain ingredients in addition to what is currently claimed. It is unclear if the synergistic results would be seen if the additional ingredients are not included in the composition. In addition, the results are shown only for one specific ratio of the combined four ingredients. The claims are not limited to this ratio. Thus, it is unclear if the synergistic results would be seen over the whole scope of the broadly claimed invention.
In addition, Stangl teaches that the combination of the aqueous fish egg extract and lipophilic fish egg extract produces a synergistic result (see paragraph 217). Applicant’s specification compares the results for each ingredient separately in comparison with the combination of the four ingredients. As discussed in MPEP section 716.02(e), comparison of the claimed invention should be made with the closest prior art in order to establish unexpected results. Applicant does not compare the combination of the four claimed ingredients with a combination of the aqueous fish egg extract and lipophilic fish egg extract taught by Stangl to be synergistic. Therefore, applicant’s argument for patentability based on unexpected results is not persuasive.
In regards to new claims 21 and 24-28, Stangl teaches that the oil used in preparation of the lipophilic extract contains caprylic/capric triglycerides, that the composition can comprise glycerol (propane-1,2,3-triol), and that the composition can be formulated into an O/W emulsion using an emulsifier, a cream, gel, ointment, foundation, mask, powder, aerosol, or foam (see paragraphs 54, 70, 86, 87, 112, and 218). In regards to new claims 22 and 23, Auriol teaches that mannose 6-phophate and its sodium salt can be used (see page 3).
Double Patenting
9. Claim(s) 1, 2, 5, 12-19, and 21-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,491,191 (Stangl) in view of Han (KR 20100065437 A – English translation), and Auriol (WO 2020/201185 A1) for the reasons set forth in the previous Office action.
Applicant has requested that this rejection be held in abeyance until allowable subject matter is indicated. The request is noted. The rejection is currently still considered valid at this time for the reasons set forth in the previous Office action.
10. 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 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 Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655