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. Claims 1-5 are currently pending.
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.
3. Claim(s) 1, 2, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 102328107 B1 (English translation) in view of Cho (WO 2021/261975 – English translation).
KR ‘107 teaches a method for producing a plant derived collagen peptide mixture from hibiscus. The hibiscus is mixed with water, heat treated at 70-90°C for 30-60 minutes, followed by the addition of an acidic solution and a protease, then hydrolyzing with the protease at 40-60°C for 2 to 24 hours, and then deactivating the protease by heating at 75 to 85°C. The resulting collagen peptide mixture promotes collagen synthesis in the body (see abstract and page 2 of the translation). Thus, the process of KR ‘107 overlaps substantially with claim 1 with the exception that the reference does not teach mixing Tremella fuciformis with the hibiscus.
However, Cho teaches that T. fuciformis is also a known source of vegetable collagen that can be extracted from the T. fuciformis using solvent extraction and enzymatic hydrolysis of the T. fuciformis (see abstract and pages 3-4 of the translation).
Thus, an artisan of ordinary skill would reasonably expect that T. fuciformis could be added to the hibiscus at the beginning of the process taught by KR ‘107 in order to produce a collagen extract from both T. fuciformis and hibiscus. Based on this reasonable expectation of success, the artisan would have been motivated to combine the claimed ingredients together during the process to extract collagen from a vegetal source. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
The references do not specifically teach adding the ingredients together in the amounts claimed by applicant. However, as discussed in MPEP section 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” Varying the concentration of ingredients within a process is not considered to be inventive unless the concentration is demonstrated as critical. In this particular case, there is no evidence that the claimed concentration of the ingredients produces an unexpected result. Thus, absent some demonstration of unexpected results from the claimed parameter, this optimization of ingredient concentration would have been obvious before the effective filing date of applicant’s claimed invention.
4. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 102328107 B1 (English translation) in view of Cho (WO 2021/261975 – English translation) as applied to claims 1, 2, and 5 above, and further in view of Park (KR 20200038113 A – English translation) and Ballesteros (US 2017/0172913).
The teachings of KR ‘107 and Cho are discussed above. The references do not teach adding a fermentation extract of Pueraria flos or a chicory extract to the deactivated combination of hibiscus and T. fuciformis. However, the references do teach that the purpose of the composition is to improve the appearance of skin including increasing skin moisture (see abstracts of Cho and KR ‘107).
Park teaches that a fermentation extract of Pueraria flos is able to improve the appearance of the skin by treating skin dryness (see abstract and page 2 of the translation).
Ballesteros teaches that chicory extract is able to improve the appearance of the skin by moisturizing the skin (see paragraphs 20 and 21).
These references show that it was well known in the art prior to the effective filing date of the invention to use the claimed ingredients in compositions that moisturize the skin. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from their having been used individually in the prior art.
Based on the disclosure by these references that these substances are used in compositions moisturize the skin, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating compositions to moisturize the skin. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
5. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 102328107 B1 (English translation), Cho (WO 2021/261975 – English translation), Park (KR 20200038113 A – English translation) and Ballesteros (US 2017/0172913) as applied to claims 1-3 and 5 above, and further in view of Yang (CN 105796475 A – English translation).
The teachings of KR ‘107, Cho, Park and Ballesteros are discussed above. The references do not teach adding a kohlrabi extract to the composition.
Yang teaches a kohlrabi extract that moisturizes the skin (see abstract).
These references show that it was well known in the art prior to the effective filing date of the invention to use the claimed ingredients in compositions that moisturize the skin. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from their having been used individually in the prior art.
Based on the disclosure by these references that these substances are used in compositions moisturize the skin, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating compositions to moisturize the skin. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
6. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Coe Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terry McKelvey can be reached at 571-272-0775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655