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 .
Claim Status
Claims 1-10 and 18 are currently pending and presented for examination on the merits for patentability.
Information Disclosure Statement
The IDS filed on 12/18/2023 has been considered. See the attached PTO 1449 form.
Priority
This application is a National Stage entry of PCT/JP2022/024020, filed 6/15/2022, and claims foreign priority to JP2021-102089, filed 06/19/2021.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-8 and 10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 4-8 and 10 recite intended uses of the hair growth agent recited in claim 1. The intended uses recited in these claims do not further limit the structure of the hair growth agent recited in claim 1. For example, claim 4 recites the hair growth agent according to claim 1 for use in causing new hair growth or hair shaft growth promotion. Claim 1 already recites the agent containing phytosphingosine and adenosine is a hair growth agent and thus, claim 4 reciting the hair growth agent for use in causing new hair growth or hair shaft growth promotion is not further limiting the hair growth agent/composition because claim 1 already recites the agent is a hair growth agent. Similarly, claims 5-8 recite the hair growth agent is used for hair growth and these limitations in claims 5-8 also do not further limit the structure of the hair growth agent. Regarding claim 10, which recites the hair growth agent for use on head hair, beard, eyelashes, and/or eyebrows, these limitations again are an intended use of the hair growth agent and do not further limit the hair growth agent recited in claim 1. Therefore, claims 4-8 and 10 are rejected as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-8, 10 and 18 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Tomas (WO2015114176A1).
Tomas teaches cosmetic product that has properties to combat skin aging and that has its application in the field of beauty, cosmetics and dermatology. Tomas teaches the cosmetic product contains phytosphingosine and adenosine as active ingredients which reads on claims 1-3. Tomas also teaches the product’s application include the skin for treatment of skin aging, which reads on claim 18 wherein the agent is administered to a subject. (see e.g., Abstract; Claims; Entire Document). Regarding claims 4-8, 10 and the limitations which recite a hair growth agent, while Tomas does not expressly teach the product is used for hair growth, the limitations wherein the agent is a hair growth agent or used for hair growth is an intended use and the cosmetic product comprising phytosphingosine and adenosine would necessarily result in hair growth. Although Tomas does not disclose all the characteristics and properties of the composition disclosed in the present claims, based on the substantially identical process using identical components, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition disclosed by Tomas. Because the PTO has no means to conduct analytical experiments, the burden of proof is shifted to the Applicant to prove that the properties are not inherent. ““[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” MPEP § 2112, I. Therefore, Claims 1-8, 10 and 18 are anticipated by Tomas.
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR2017114317A (2017-10-16).
KR2017114317A teaches composition for promoting hair growth wherein the composition comprises phytosphingosine as active ingredients for hair growth promotion. (see: claims; abstract; entire document). The recitation of claim 2 wherein the hair growth agent is for use in combination with adenosine is an intended use and therefore KR2017114317A anticipates claim 2 despite not teaching adenosine in combination with phytosphingosine.
Claim 3 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2008247754A (2008-10-16).
JP2008247754A teaches composition for scalp and hair comprising adenosine as an active ingredient which has excellent hair growth effect. (see: claims; abstract; entire document). The recitation of claim 3 wherein the hair growth agent is for use in combination with phytosphingosine is an intended use and therefore JP2008247754A anticipates claim 3 despite not teaching phytosphingosine in combination with adenosine.
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tomas (WO2015114176A1) as applied to claims 1-8, 10 and 18 above.
The teachings of Tomas with respect to claims 1-8, 10 and 18 have been set forth above.
Tomas does not expressly teach the hair growth agent is in liquid solution form. However, Tomas in its disclosure states that the product has different cosmetic forms such as solution, serum, emulsion, suspension, etc. Tomas also teaches the product can contain 70%-80% water. (see e.g., examples, entire document). Tomas teaching the product can be in the form of solution and can have 70-80% water reads on a liquid solution.
It would have been prima facie obvious to one skilled in the art before the effective filing date of the claimed invention to have formulated the cosmetic product of Tomas in the form of a liquid solution because while Tomas does not expressly disclose a liquid solution comprising adenosine and phytosphingosine, Tomas does teach the product can be in the form of a liquid solution and therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claim 1-10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over JP2008247754A (2008-10-16) in view of KR2017114317A (2017-10-16).
JP2008247754A teaches composition for scalp and hair comprising adenosine as an active ingredient which has excellent hair growth effect. The reference teaches the dissolution of adenosine and wherein the composition can be in the form of liquid, which reads on liquid solution of claim 9. The composition is applied externally which reads on claim 18. (see: claims; abstract; entire document).
JP2008247754A does not teach the composition comprising phytosphingosine. However, KR2017114317A cures this deficiency.
KR2017114317A teaches composition for promoting hair growth wherein the composition comprises phytosphingosine as active ingredients for hair growth promotion. (see: claims; abstract; entire document).
It would have been prima facie obvious to one skilled in the art before the effective filing date of the claimed invention to have combined the teachings of KR2017114317A and JP2008247754A and further include phytosphingosine in the composition of JP2008247754A because similar to adenosine, phytosphingosine is also taught as active ingredients for hair growth promotion. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
Regarding claims 4-8 and 10, as discussed supra, these recitations in the claims are intended use of the hair growth agent and the prior art rendering obvious a composition comprising adenosine and phytosphingosine would necessarily be capable of the intended uses recited in claims 4-8 and 10, especially in light of the fact that both agents are known for providing hair growth in the cited prior art.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/037,943 (US20240099951A1) in view of JP2008247754A (2008-10-16).
‘943 teaches a hair growth agent which is a topical agent that contains phytosphingosine. The hair growth agent is in liquid solution form and administered to a subject. ‘943 teaches the use of the hair growth agent which reads on claims 4-8 and 10. The difference between ‘943 and instant claims is that ‘943 does not teach the hair growth agent comprises adenosine. However, JP2008247754A cures this deficiency.
The teachings of JP2008247754A discussed above are incorporated herein.
It would have been prima facie obvious to one skilled in the art before the effective filing date of the claimed invention to have combined the teachings of ‘943 and JP2008247754A and further include adenosine in the composition of ‘943 because similar to phytosphingosine, adenosine is also taught as active ingredients for hair growth promotion. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
This is a provisional nonstatutory double patenting rejection.
Claims 1-10 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 18 of copending Application No. 18/278,728 (US20240139276A1) in view of KR2017114317A.
‘728 teaches a hair growth agent that contains adenosine. The hair growth agent is in liquid solution form and administered to a subject. ‘728 teaches the use of the hair growth agent which reads on claims 4-8 and 10. The difference between ‘728 and instant claims is that ‘728 does not teach the hair growth agent comprises phytosphingosine. However, KR2017114317A cures this deficiency.
The teachings of KR2017114317A discussed above are incorporated herein.
It would have been prima facie obvious to one skilled in the art before the effective filing date of the claimed invention to have combined the teachings of ‘728 and KR2017114317A and further include phytosphingosine in the composition of ‘728 because similar to adenosine, phytosphingosine is also taught as active ingredients for hair growth promotion. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
This is a provisional nonstatutory double patenting rejection.
Claims 1-10 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 18 of copending Application No. 18/571,529 (US20240285500A1) in view of JP2008247754A (2008-10-16).
‘529 teaches a hair growth agent that contains phytosphingosine. The hair growth agent is in liquid solution form and administered to a subject. ‘529 teaches the use of the hair growth agent which reads on claims 4-8 and 10. The difference between ‘529 and instant claims is that ‘529 does not teach the hair growth agent comprises adenosine. However, JP2008247754A cures this deficiency.
The teachings of JP2008247754A discussed above are incorporated herein.
It would have been prima facie obvious to one skilled in the art before the effective filing date of the claimed invention to have combined the teachings of ‘529 and JP2008247754A and further include adenosine in the composition of ‘529 because similar to phytosphingosine, adenosine is also taught as active ingredients for hair growth promotion. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
This is a provisional nonstatutory double patenting rejection.
Claims 1-10 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 18 of copending Application No. 18/571,559 (US20240285502A1) in view of JP2008247754A (2008-10-16).
‘559 teaches a hair growth agent that contains phytosphingosine. The hair growth agent is in liquid solution form and administered to a subject. ‘559 teaches the use of the hair growth agent which reads on claims 4-8 and 10. The difference between ‘559 and instant claims is that ‘559 does not teach the hair growth agent comprises adenosine. However, JP2008247754A cures this deficiency.
The teachings of JP2008247754A discussed above are incorporated herein.
It would have been prima facie obvious to one skilled in the art before the effective filing date of the claimed invention to have combined the teachings of ‘559 and JP2008247754A and further include adenosine in the composition of ‘559 because similar to phytosphingosine, adenosine is also taught as active ingredients for hair growth promotion. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/A.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616