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 .
This office action is in response to the amendment filed on March 9th, 2026. The applicant has canceled claim 7. Claims 1-6 and 8-13 are currently pending and are under examination.
Any objections or rejections not reiterated below are hereby withdrawn.
Withdrawal of Rejections
Applicant’s arguments filed March 9th, 2026, with respect to claims 1, 2, 5, 6, and as being anticipated by Kim et al. (KR-20200101597-A) have been fully considered and are persuasive. The rejection of claims 1, 2, 5, 6, and 8 under 35 U.S.C. 102(a)(1) has been withdrawn. Kim does not disclose administering an Actinidia arguta extract to a subject; rather, Kim is drawn to in vitro experiments using the extract.
Pending Objections and Rejections
Specification
The use of the terms BUCHI, Gibco, ATCC, SuperScript, KAPA Biosystems, ABI, StepOnePlus, Abcam, Cutometer, Canfield, Ficoll-Paque, and Excel, each of which is a trade name or a mark used in commerce, has been noted in this application. Each term should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
In the brief description of the drawings (paragraph [0028]; Fig. 9) there is reference to a color distinction between Week 0 and Week 4, but the black-and-white image provided for Figure 9 is indiscernible to distinguish the color distinction disclosed. Applicant can either amend the description of Figure 9 or provide color drawings. The rules for color drawings are below, for applicant’s awareness.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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.
The term “soothing” in claim 1 is a relative term which renders the claim indefinite. The term “soothing” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The intended use of the method recited in claim 1 has been rendered indefinite by the use of the term "soothing".
The term “redness” in claim 1 is a relative term which renders the claim indefinite. The term “redness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The intended use of the method recited in claim 1 has been rendered indefinite by the use of the term "redness".
Response to Arguments
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, 2, 5, 6, and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR-20200101597-A), abbreviated “Kim”.
Applicant's arguments filed March 9th, 2026 have been fully considered but they are not persuasive. The applicant argues that Kim fails to explicitly disclose the effect of soothing skin redness by a kiwiberry extract. The applicant argues that procollagen is merely a precursor; its synthesis does not simply result in a mature functional extracellular matrix. The applicant also recites that decreasing the appearance of blood vessels "typically" requires vasoconstriction or anti-angiogenesis, and that Kim does not teach A. arguta having vasoactive properties. The applicant does not define the term "typically", and the examiner does not interpret it to mean "always", especially without further support. The applicant further recites certain repair-promoting factors such as VEGF (not recited by Kim) promoting angiogenesis, increasing rather than decreasing the visibility of blood vessels. However, the applicant does not cite examples of such repair-promoting factors in Kim.
As suggested by the applicant, procollagen synthesis is not the only step necessary for producing a mature extracellular matrix, and vasoconstriction and anti-angiogenesis are contributing factors to decreasing the appearance of blood vessels. However, the skin tissue that hides vasculature depends on an extracellular matrix that depends on the synthesis of procollagen. Insufficient synthesis of procollagen in the skin is one of a finite number of factors that reasonably increases skin redness, even if not all cases of skin redness are dependent on insufficient procollagen synthesis. Therefore, increasing procollagen synthesis in the skin is among a finite number of solutions available to soothe skin redness that would have a reasonable expectation of success, even if not absolute certainty of success. The disclosure of Kim provides a reasonable expectation of success at increasing procollagen expression in keratinocytes by administering an A. arguta extract (Kim machine translation page 7 of 23 paragraphs 4-6). Therefore, it would at least be obvious to one of skill in the art to try soothing skin redness by increasing procollagen synthesis in the skin using an A. arguta extract.
The applicant recites that none of the cited references disclose or teach that the extract derived specifically from the fruit of A. arguta possesses the ability to soothe skin redness, and that accordingly the specific selection of the fruit part to achieve this untaught soothing effect is non-obvious. However, Kim recites the preparation of A. arguta extract using kiwifruit (Kim, machine translation page 5 of 23, Example 1, subheading 1. “Manufacture of native stingray extract”). Kim does not recite preparing A. arguta extract from plant organs besides the fruit (Kim, machine translation). The A. arguta extract recited by Kim is relevant for soothing skin redness for reasons of record above.
Kim discloses preparing an A. arguta extract from the fruit and does not recite using any other plant organs as botanical source material. Kim recites administering an A. arguta extract to keratinocytes, resulting in increased procollagen synthesis. Therefore, it would be obvious to one of skill in the art that A. arguta fruit extract has utility for healing skin damage.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that Kim is directed to anti-fine dust co, 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 rejection of claims 1, 2, 5, 6 and 8-13 under 35 U.S.C. 103 is maintained.
Claims 1-3, 5, 6, and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR-20200101597-A) as applied to claim 1, 2, 5, 6, and 8-13 above; and under 35 U.S.C. 103 further in view of Silva et al. (Trends in Food Science & Technology 2021, 116, 842-853), abbreviated “Silva”.
Applicant's arguments filed on March 9th, 2026 have been fully considered but they are not persuasive. The applicant argues that Silva discloses distinct bioactive profiles for different parts of the Actinidia arguta plant, that one cannot extrapolate the efficacy of one part for another, that the technical effects of one part of the plant does not make obvious the technical effects of other parts, that the heterogeneity of secondary metabolites across plant organs discourages one of skill in the art from treating all parts of the plant as functional equivalents, and therefore achieving a specific therapeutic threshold requires non-obvious selection and experimental validation of a particular part, rather than routine substitution. As the applicant suggests, different parts of A. arguta have some non-overlapping bioactive compounds. However, certain antioxidant compounds, chlorogenic acid and neochlorogenic acid (subheading 3.1 paragraph 3; instant claim 3) are present in the fruits of A. arguta (Table 1; instant independent claim 1). Therefore, the rejection of claim 3 under 35 U.S.C. 103 is maintained.
Although the examiner did not explicitly use Silva to reject claim 1 under 35 U.S.C. 103, the applicant has discussed Silva in the context of claim 1. The applicant has amended claim 1 to specify that the kiwiberry extract is obtained from the fruit of A. arguta. The applicant notes that Silva discloses that the roots, but not the fruits, of A. arguta may decrease redness and teaches different parts of the A. arguta plant having different bioactive profiles. Applicant argues that given the teachings of Silva, one of skill in the art would have lacked reasonable expectation of success extrapolating the pharmacological effects of the roots to the fruit. However, Silva does not compare the bioactive compounds of the roots of A. arguta with other plant parts, instead describing the fruits, leaves, and stems (Table 1); and recites a decrease in redness from the stems, not the roots (Table 1). The fruits, leaves, and stems share a bioactive compound, caffeic acid, and anti-inflammatory effects (Silva, Table 1), suggesting overlapping bioactive profiles.
Claims 1, 2, 4-6, and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR-20200101597-A) as applied to claim 1, 2, 5, 6, and 8-13 above; and under 35 U.S.C. 103 further in view of Tabe et al. (US-20200368143-A1), abbreviated “Tabe”.
Applicant's arguments filed on March 9th, 2026 have been fully considered but they are not persuasive. The applicant implies that Tabe is non-analogous art drawn to a different use, reciting "Tabe et al. focuses on Sirtuin-1 activation for anti-aging purposes, but fails to disclose or teach the Actinidia arguta extract. Furthermore, Tabe et al. contains no teaching or suggestion that the extract derived specifically from the "fruit" of A. arguta possesses the capacity to soothe skin redness".
In response to applicant's argument that Tabe is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Tabe is pertinent to using the fruit of a plant of the Actinidia genus as a sirtuin-1 activation agent (Tabe, claim 1) and the reduction of DNA damage from the effects of sirtuin-1. Tabe recites the effects of sirtuin-1 related to maintain the stability of the genome:
“It has been found that sirtuin 1 regulates the expression of TERT (telomere reverse
transcriptase), so histone is deacetylated, thus maintaining the stability of the telomere, and
repair proteins such as WRN are deacetylated, thus promoting DNA repair, thereby maintaining
the stability of the genome, and that these functions inhibit the catabiosis” (paragraph [0006]).
Tabe recites a sirtuin-1 activation agent comprising an extract of a kiwifruit as an active ingredient (claim1). Although Tabe recites a kiwifruit a fruit from Actinidia chinensis rather than Actinidia arguta (specification paragraphs [0019] and [0020]), one of skill in the art would have recognized the close phylogenetic relationship of other plant species from the Actinidia genus, and the shared plant organ (fruit). These criteria are sufficient for a reasonable expectation of success using an extract of the Actinidia arguta fruit for sirtuin-1 activation, even if insufficient for absolute certainty of success. Therefore, it would have at least been obvious to one of skill in the art to try using an extract of the Actinidia arguta fruit for sirtuin-1 activation.
In response to applicant's argument that "Tabe et al. focuses on Sirtuin-1 activation for anti-aging purposes", 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 rejection of claim 4 under 35 U.S.C. 103 is maintained.
Conclusion
No claims are allowed
THIS ACTION IS MADE FINAL. 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 Robert F Spaine whose telephone number is (571)272-9099. The examiner can normally be reached 8:00 AM - 4:00 PM United States Eastern Time, Monday-Friday.
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/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655