DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Claims Status
Claims 1-6 are pending and under current examination in this application.
Certified copy of translated priority document has not been provided and is required to establish a priority date of 31 December 2022, rather than the date of filing of 12 September 2023.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 1-6 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, regards as the invention.
Claims 1 and 6 recite components at a specified mass percentage, however the claims fail to specify what the percentage is relative to, leading to ambiguity in the scope of the claims. The claims do not clarify whether the percentage of the component is relative to the total weight of the collagen activator, the anti-aging skincare product, or another undefined reference. Without an explicit reference, percentage could be interpreted in multiple ways, rendering the claim scope unclear. Claims must be "definite" to inform the public of the invention's boundaries with reasonable certainty (Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)) and provide clear meaning to a skilled artisan (MPEP 2173.02). To overcome this rejection, Applicant may mend the claims to specify the reference basis for the percentage (e.g., “raw materials by mass percentage based on the total mass of the collagen activator” or “a content of the collagen activator is in a range of 3 wt % to 15 wt %, based on the total weight of the anti-aging skincare product”) or provide a definition in Specification clarifying the basis for % weight where not explicitly stated.
Dependent claims 2-5 are included in this rejection because they do not cure the defect noted above.
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 1-6 are rejected under 35 U.S.C. § 103 as being unpatentable over Lin et al. (CN113350230A; publication date: 07 September 2021, hereinafter referred to as “Lin”) in view of Yu et al. (US20090068255A1; published 12 March 2009, hereinafter referred to as “Yu”) and in further view of Yeon (WO2021150027A1; publication date: 29 July 2021), Neng et al. (CN103536462A; publication date: 29 January 2014, hereinafter referred to as “Neng”) and Kawasaki et al. (US20060018867A1; 26 January 2006, hereinafter referred to as “Kawasaki”).
Lin teaches an anti-aging cosmetic composition for application to the skin preventing collagen degradation (Abstract; therefore, capable of promoting increases of endogenous collagen in the skin, as per the definition of a collagen activator in the instant Specification ¶[0005]) comprising a natural botanical extract, 0.01-0.5 wt.% acetylated sodium hyaluronate (used at 0.5 wt.% in embodiment in Table 1, encompassed within the instant claim 1 range), the balance of the formulation as water (claim 1), butylene glycol (claim 3; referred to as butanediol in subsequent claims- a general term which can include the most common form of butylene glycol which is 1,3-butanediol) and 1, 2-hexanediol (claim 3), wherein the method of preparation involves mixing the constituents at their specified component weight percentages (claim 6), inherently requiring weighing the raw materials thereof and wherein the composition is used for an anti-aging preparation of cosmetic as a lotion, essence, lotion, cream and facial mask (claims 9 and 10), with an intended use for application to the skin (Abstract).
Lin however does not explicitly teach use of butylene glycol from 15-20%, 1, 2-hexanediol from 1-4%, the inclusion of 0.5-2% dipotassium glycyrrhizinate, 0.01-0.1% semen coiois extract, 0.01-0.1% Bletilla striata extract, 0.001-0.01% astragalus extract or the use of the formulation in an anti-aging product from 3-15 wt.%.
Yu teaches skin care compositions containing matrix metalloproteinase (MMP) inhibitors, inhibiting the degradation of proteins found in the skin including collagen, elastin, and other basement membrane and extracellular matrix proteins, formulated with a cosmetically suitable vehicle for application to the skin as creams, lotions, ointments, solutions, face masks, etc. that are applied to the skin to prevent or reduce the appearance of wrinkles (Abstract). Suitable vehicles and viscosity modifiers include butylene glycol at typical use levels of from about 1% to about 50% by weight, in certain embodiments from about 5% to about 30% by weight (¶[0113], ¶[0125]), strongly overlapping and encompassing the instant claim range. Suitable solvents include water (¶[0113]) and 1,2-hexanediol wherein the solvent may make up from about 1% to about 99% by weight of the composition (¶[0134]), thus encompassing the instant claim range. Suitable salts include potassium glycyrrhizinate (¶[0135]) typically used from about 1-20% by weight (¶[0136]), overlapping with the instant claim range, wherein dipotassium glycyrrhizinate can be classified as a plant extract isolated from licorice root in which typical use levels are ranging from 0.001-10% by weight of the total composition (¶[0121]), thus fully encompassing the instant claim range. Suitable humectants include sodium acetylated hyaluronate and Coix Lacryma-Jobi (Job's Tears) shell extract used at a concentration from about 0.01- 30% by weight (¶[0122]), which encompasses the instant claim range. Suitable fragrance ingredients include Astragalus Gummifer Gum used at amounts ranging from 0.0001% to 10% by weight and specifically states in certain embodiments, used in the composition in an amount ranging from 0.001% to 0.01% by weight (¶[0123]), which directly matches with the instant claim range. Bletilla striata extract is not explicitly mentioned, however, “Any plant may be used to prepare a plant extract”, in which cosmetic compositions may include an extract from a plant, typically used in an amount ranging from 0.001 to 10.0% by weight of the total composition, and in certain embodiments, the plant extract is used in an amount ranging from 0.01 to 1.0% by weight of the total composition (¶[0123]), which encompasses the instant claim range.
MMP inhibitors block the activity of MMPs, which are enzymes that break down collagen. By inhibiting these enzymes, MMP inhibitors prevent collagen degradation, leading to collagen accumulation and a reduction in wrinkles and other signs of skin aging. Based on the instant Specification a collagen activator is detailed as, “capable of promoting increases of endogenous collagen I, endogenous collagen III, and endogenous collagen XVII in the skin, further achieving a purpose of anti-aging.” (¶[0005]) and as such, MMP inhibitors would be encompassed. Furthermore, constituents of the instant claim 1 composition are known MMP inhibitors (see evidentiary references: Meunier et al., 2012 for sodium acetylated hyaluronate (Abstract- Results and 4. Conclusion section paragraph); Hong et al., 2013 for Astragalus membranaceus (Abstract- Key findings); Bonafé et al., 2022 for dipotassium glycyrrhizinate (Section 3.4. TPA-Induction of MMP-9 Activation and Migration of SK-MEL-28 Cells- “MMP-9 expression level was inhibited by DPG in melanoma cells stimulated by TPA”); Zhang et al., 2019 for semen coiois (Abstract- Results; MMP-3 decreased with Adlay seed [Job's tears, Coix lachryma-jobi L. var. ma-yuen Stapf (Poaceae)] treatment)). The amount of MMP inhibitor composition itself ranges from approximately 0.001% to approximately 50% by weight of the composition and in certain embodiments, the amount of MMP inhibitor is between approximately 0.01% and approximately 20% (¶[0104]), encompassing the instant claim range of content of the collagen activator in an anti-aging skincare product of instant claim 6.
Yeon teaches a skincare formulation containing 10 to 30% by weight of a polyhydric alcohol comprising butylene glycol, propylene glycol, glycerin and 1,2-hexanediol, wherein the polyhydric alcohol mixture contains 20 to 70% by weight of butylene glycol and 1 to 10% by weight of 1,2-hexanediol (claim 1), yielding a 2-21% concentration by weight of butylene glycol and 0.1-3% concentration by weight of 1,2-hexanediol, which encompasses the instant claim range of butylene glycol and significantly overlaps with the instant claim range of 1, 2-hexanediol. The composition further comprises a plant extract (claim 8), wherein the plant extract includes licorice extract (claim 9), wherein the Specification recites, “Glycyrrhizinates, such as dipotassium glycyrrhizinate, are licorice extracts that help reduce skin irritation and inflammation and have anti-irritant and soothing properties.” (page 4, line 20).
Neng teaches a preparation method of a bletilla striata extract and use as such in cosmetics (Abstract) at a use level of 0.01-50% (weight ratio) or 0.02-20%, more preferably 0.05-10%, (page 2, Summary of the Invention paragraph 8), thus encompassing the instant claim range.
Kawasaki teaches a cosmetic composition comprising a polyorganosiloxane-containing epsilon-polylysine and polyhydric alcohol that may contain selected and combined additives within the concentration range of from 0.0001 to 50% by weight (¶[0087] and [0088]) including: glycyrrhizic acid or salts thereof and their derivatives ¶[0100], Coix lachryma-jobi L. (YI YI REN) extract (¶[0089]), Bletilla striata extract (¶[0113]) and HUANG QI (Astragalus mongholicus root; Astragali Radix) extract or Astragalus membranaceus extract (¶[0091]), which encompasses the instant claim ranges.
It would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to add the missing limitations of using a higher 15-20% concentration of butylene glycol and 1-4% 1, 2-hexanediol and include 0.5-2% dipotassium glycyrrhizinate, 0.01-0.1% semen coiois extract, 0.01-0.1% Bletilla striata extract, 0.001-0.01% astragalus extract and further use this composition in the formulation of an anti-aging skincare cosmetic product at a concentration range from 3-15 wt.%, given that all these elements and concentration ranges are taught by Yu, except for the explicit mention of Bletilla striata as a plant extract which was known to be used in such formulations at the time of the invention as evidence by Neng. The use levels of butylene glycol and 1,2-hexanediol are further strengthened by the teachings of such use levels in skincare formulations by Yeon. Together, these show that selecting narrower concentration windows is a matter of routine optimization. Moreover, Kawasaki teaches cosmetic compositions that may contain the naturally-derived ingredients glycyrrhizic acid salts, semen coiois extract, Bletilla striata extract, and astragalus extract at use concentrations encompassing the instant claim ranges. Thus, these composition components were known at the time of the invention as formulation ingredients within the same use level concentration ranges for the same purpose, providing motivation to combine them as such with a reasonable expectation of success.
Conclusion
No claims are allowed.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615