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 .
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1, 3, 14-16, in reply filed on 09/23/2025 is acknowledged.
Claims 20-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to the nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/23/2025.
The traversal is on the ground(s) that the groups do not present a serious search burden because “[a]pplicant believe a search for the composition of Group I claims would also involve the use of the composition in methods.” This is not found persuasive because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification.
The inventions have acquired a separate status in the art due to their recognized divergent subject matter.
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
Claims 20-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
1) Claims 1, 3 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodrigues et al. (Cosmetic Science Technology, 2008, Active Ingredients).
Rodrigues relates to tetrapeptides useful for counteracting aging phenomena [title]. Specifically, the tetrapeptides are “Dermican™ (INCI name: Glycerin (and) Acetyl Tetrapeptide-9) and Syniorage (INCI name: Glycerin (and) (Acetyl Tetrapeptide-11)” [p. 2, last paragraph of left column]. “For a comprehensive anti-ageing approach, the combination of Syniorage, specific for the epidermis, with Dermican™, which specifically targets ageing of the dermis, is an optimal choice of ingredients for various easy-to-use products in the growing market for cosmeceutical skin care products” [p. 5, Conclusion].
According to the instant specification at paragraphs 29 and 30: “SEQ ID NO: 1 is also known as Acetyl Tetrapeptide-9 and is commercially available as Dermican” and “SEQ ID NO:2 is also known as Acetyl Tetrapeptide-11 and is commercially available as Syniorage.”
The prior art is anticipatory because it discloses a combination of SEQ ID NO:1 (Dermican) and SEQ ID NO:2 (Syniorage) for skin care products. One of ordinary skill in the art would have immediately envisaged a skin care product, i.e., a composition comprising cosmetically acceptable excipients, comprising both SEQ ID NO:1 and SEQ ID NO:2. Because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. synergistic combination and the composition exhibits improvements as instantly claimed after a 21 day treatment (instant claim 18).
2) Claims 1, 3 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodrigues, A., Benoit et al. (Journal of Applied Cosmetology, 2009, vol. 27, p. 63-71; hereinafter “Benoit”; cited in IDS 05/31/2023), as evidenced by Schagen (Cosmetics, 2017, vol. 4, no. 16; cited in IDS 05/31/2023).
Benoit relates to tetrapeptides useful for counteracting aging phenomena [title]. Specifically, the tetrapeptides are “ACTP1 (INCI name: Glycerin (and) Acetyl Tetrapeptide-9) and ACPT2 (INCI name: Glycerin (and) (Acetyl Tetrapeptide-11)” [p. 65, last paragraph]. “For a comprehensive anti-ageing approach, the combination of ACTP2, specific for the epidermis, with ACPT1, which specifically targets ageing of the dermis, is an optimal choice of ingredients for various easy-to-use products in the growing market for cosmeceutical skin care products” [p. 7, last paragraph].
Schagen discloses “Acetyl tetrapeptide-9 (Dermican™) (Sequence: N-Acetyl-Gln-Asp-Val-His) is reported to stimulate collagen Type I and lumican synthesis, whereas acetyl tetrapeptide-11 (Sequence: N-Acetyl-Pro-Pro-Tyr-Leu) (Syniorage™)” [p. 5, Section 2.10].
The prior art is anticipatory because it discloses a combination of SEQ ID NO:1 and SEQ ID NO:2 for skin care products. As a result one of ordinary skill in the art would have immediately envisaged a skin care product, i.e., a composition comprising cosmetically acceptable excipients, comprising both SEQ ID NO:1 and SEQ ID NO:2. Because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. synergistic combination and the composition exhibits improvements as instantly claimed after a 21 day treatment (instant claim 18).
3) Claims 1, 3 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Donelli (ITMI 20091165 A1, publication date 01/02/2011; citing English machine translation).
Donelli relates to cosmetic products [title] and discloses a “compositions for cosmetic use of the present invention can comprise various additives or cosmetically acceptable vehicles useful for the preparation of cosmetic products and known to the person skilled in the art” [p. 7, para. 3]. Donelli further discloses that “[a]dvantageously, the cosmetic composition of the present invention can comprise synthetic peptides, such as, for example, acetyl tetrapeptide-9 (DERMICANâ „¢ LS) and acetyl tetrapeptide-11 (SYNIORAGEâ„ ¢ LS), all produced by Laboratoire Serobiologiques” [p. 10, penultimate paragraph].
According to the instant specification at paragraphs 29 and 30: “SEQ ID NO: 1 is also known as Acetyl Tetrapeptide-9 and is commercially available as Dermican” and “SEQ ID NO:2 is also known as Acetyl Tetrapeptide-1 l and is commercially available as Syniorage.”
The prior art is anticipatory because it discloses a composition comprising at least one cosmetically acceptable excipient (cosmetically acceptable vehicle), SEQ ID NO:1 and SEQ ID NO:2. Because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. synergistic combination and the composition exhibits improvements as instantly claimed after a 21 day treatment (instant claim 18).
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.
1) Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Rodrigues et al. (Cosmetic Science Technology, 2008, Active Ingredients) as applied to claims 1, 3 and 18 above, and further in view of BASF Dermican (Dermican Revolumizing effect, BASF Care Creations, 04/18/2012) and BASF Syniorage (Syniorage High definition skin effect, BASF Care Creations, 05/31/2012).
Rodrigues, which discloses a cosmetic combination of Dermican and Syniorage (see above), does not anticipate instant claims 14-16 because it does not discloses amounts of Dermican and Syniorage.
BASF Dermican discloses two “ready to use hydro-glycerinated solution[s] of a tetrapeptide, present under acetylated form. (N-acetyl-Gln-Asp-Val-His). Concentration (DermicanTM LS9837): 1150 ppm[.] Concentration (DermicanTM LS9838): 1100 ppm” [p. 3, first paragraph].
BASF Syniorage disclose “SyniorageTM is a white powder containing an acetylated tetrapeptide (N-acetyl-Pro-Pro-Tyr-Leu). Concentration: - 1350 ppm” [p. 3, first para.].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the compositions disclosed be BASF Dermican and BASF Syniorage for a comprehensive anti-aging skin care product desired by Rodrigues. One would have had an expectation of success because Rodrigues discloses the combination of Dermican (i.e., SEQ ID NO:1) and Syniorage (i.e., SEQ ID NO:2) is an optimal choice of ingredients for various easy-to-use skin care products. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
The resulting composition therefore comprises 1150 ppm or 1100 ppm Dermican (i.e., SEQ ID NO:2; molecular weight 539.5 g/mol1) and 1350 ppm Syniorage (SEQ ID NO:2; molecular weight 530.6 g/mol2), making the molar ratio of SEQ ID NO:1 to SEQ ID NO:2 about 0.83:1 and about 0.80:1. 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). In the present case the claimed range of SEQ ID NO:1 (250-1300 ppm), SEQ ID NO:2 (350-1650 ppm), and molar ratio (1.3:1 to about 1:2.3, or 1.3:1 to about 0.43:1) overlap with the amounts in the prior art (1150-1100 ppm, 1350 ppm, and 0.83:1-0.80:1, respectively) and so a prima facie case of obviousness exists for each.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the cosmetic composition taught by Rodrigues to comprise SEQ ID NO: 1 and 2 in amounts and at a molar ratio as instantly claimed.
Technological Background
The prior art made of record is considered pertinent to applicant's disclosure. Acetyl tetrapeptide-9, NCBI PubChem Summary, CID 11606295, which is pertinent for teaching the molecular weight of Acetyl tetrapeptide-9 at the physical properties section.
The prior art made of record is considered pertinent to applicant's disclosure. Acetyl tetrapeptide-11, NCBI PubChem Summary, CID 91936941, which is pertinent for teaching molecular weight of Acetyl tetrapeptide-11 at the physical properties section.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612
1 Acetyl tetrapeptide-9, NCBI PubChem Summary, CID 11606295.
2 Acetyl tetrapeptide-11, NCBI PubChem Summary, CID 91936941.