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 November 14, 2025 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 Any rejection set forth in a previous Office action that is not specifically set forth below is withdrawn.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 1-12 and 14-17 are pending.
Election/Restrictions
4. In the reply filed on September 23, 2024, applicant elected Group I, claim 5, with claims 1-4, 6-9, and 12 as linking claims without traverse. Claim 14 was withdrawn in the Office action of March 7, 2025 as being drawn to an invention non-elected by original presentation.
5. Claims 10, 11, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
6. Claims 1-9, 12, and 15-17 are examined on the merits.
Claim Rejections - 35 USC § 103
7. Claim(s) 1-9, 12, and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR 20150064314 A – English translation), Jang (KR 20140133280 A – English translation) and McCook (US 5,690,948) 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 the references do not teach that the composition is to able to reduce TNF-alpha expression in the skin. However, as discussed in the previous Office action, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The prior art together teaches applying the same composition as claimed to the same subject as claimed. Therefore, the prior art method is structurally the same as the claimed method. Thus, the prior art method should be capable of performing the intended use as claimed.
In regards to new claims 15-17, applicant argues that the references do not teach the specific amounts for each ingredient as recited in the claims. However, Kim teaches using 0.01 to 5% of the Hylocereus undatus fruit extract (see paragraphs 1, 8, 16, 17, 22, 30, and 31 of the translation). Jang teaches using 1 to 10% of the aloe vera leaf extract (paragraphs 2, 3, 8, 31, and 32 and claims 1-3 in the translation. McCook teaches using 3% glycerin, 0.35% phenoxyethanol, 0.2% carbomer, 1% propylene glycol, 0.3% retinyl palmitate, 5% capric/caprylic triglyceride, and 0.5% tocopheryl linoleate (tocopherol) (see Examples 6-9). Thus, the references specifically teach concentrations for each ingredient that fall within the ranges claimed by applicant. Therefore, the references are considered to properly teach new claims 15-17.
Double Patenting
8. Claims 1-9, 12, and 15-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,918,833 in view of McCook (US 5,690,948) 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.
In regards to the new claims 15-17, McCook teaches amounts for the ingredients which fall within the claimed ranges (see Examples 6-9).
9. Claims 1, 2, 5-9, 12, and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,344,751 in view of McCook (US 5,690,948) 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.
In regards to the new claims 15-17, McCook teaches amounts for the ingredients which fall within the claimed ranges (see Examples 6-9).
10. Claims 3 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,344,751 in view of McCook and Chen (CN 105030637 – English translation) 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.
11. Claims 1, 2, 4-9, 12, and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,912,956 in view of McCook (US 5,690,948) 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.
In regards to the new claims 15-17, McCook teaches amounts for the ingredients which fall within the claimed ranges (see Examples 6-9).
12. Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,912,956 in view of McCook and Chen (CN 105030637 – English translation) 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.
13. 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.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655