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 .
DETAIL ACTION
This office action is a response to a 371 application filed -----12/29/2023, which is a national stage application of PCT/KR2022/009464 filed 6/30/2022, which claims foreign priority to KR10-2021-0085806 filed 6/30/2021.
As filed, claims 1-6 are pending, wherein claim 1 is an independent claim; and claims 7-13 are cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/29/2023 has been considered by the Examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 the applicant regards as his invention.
Claim 6 is 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 6, the claim is dependent of claim 1, and claim 6 recites the phrase, “the health functional food” wherein the word, “the”, requires antecedent basis, and it is unclear where applicant has defined “a” health functional food in claim 1 or 6. Without antecedent basis, the claim is rendered indefinite.
Claim Rejections - 35 USC § 112 fourth paragraph
The following is a quotation of the fourth paragraph of 35 U.S.C. § 112:
Subject to the following paragraph [concerning multiple dependent claims], 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 (emphasis added).
Claims 3 and 6 are rejected under the fourth paragraph of 35 U.S.C. § 112 and under 37 CFR § 1.75(c), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim(s), or amend the claim(s) to place the claim(s) in proper dependent form, or rewrite the claim(s) in independent form.
Regarding claim 3, the claim is dependent upon claim 1. The subject matter in claim 1 is drawn to a method of preventing, alleviating, or treating hair loss via hydrangenol of instant formula (1). The subject matter in claim 3 is drawn to a limited embodiment of the method.
The scope of claim 3 is broader than scope of claim 1 because claim 3 includes species that are outside of the hair or scalp condition depicted in claim 1 (e.g. hair damage, etc. vs. hair loss). Because the scope of claim 3 is broader than claim 1, the claim failed to further limit the subject matter thereof, and fail to comply with the formal requirements set forth in the fourth paragraph of 35 U.S.C § 112.
The Examiner suggests that the claims be amended in a manner such that the scope of claim 3 is commensurate with the scope of claim 1.
Regarding claim 6, the claim is dependent upon claim 1. The subject matter in claim 1 is drawn to a method of preventing, alleviating, or treating hair loss via hydrangenol of instant formula (1). The subject matter in claim 6 is drawn to a limited embodiment of the method.
The scope of claim 6 is broader than scope of claim 1 because claim 6 includes species that are outside of the hydrangenol of instant formula (1) (e.g. the health functional food, etc.). Because the scope of claim 6 is broader than claim 1, the claim failed to further limit the subject matter thereof, and fail to comply with the formal requirements set forth in the fourth paragraph of 35 U.S.C § 112.
The Examiner suggests that the claims be amended in a manner such that the scope of claim 6 is commensurate with the scope of claim 1.
Claim Rejections - 35 USC § 102
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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Foreign Patent No. KR10-2016-0081204 (see IDS filed 12/29/2023) and its machine-generated English translation, hereinafter Suk, as evidenced by “Chemical Constituents from leaves of Hydrangea serrata and Their Anti-photoaging Effects on UVB-Irradiated Human Fibroblast”, hereinafter Shin.
Regarding claims 1-6, Suk, for instance, teaches a composition comprising an extract of Hydrangea Serrata as an active ingredient in a solid dosage form (e.g. tablets, pills, etc.) for preventing hair loss and promoting hair growth. The extract has shown to promote proliferation of dermal papilla cells.
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(paragraph 0011 of the English translation)
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(paragraph 0010 of the English translation)
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(paragraph 0091 of the English translation)
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(paragraph 0040 of the English translation)
Although Suk did not explicitly teach hydrangenol for preventing hair loss and promoting hair growth, the Examiner finds that hydrangenol is identified as the main ingredient out of ten compounds isolated from Hydrangea Serrata extract, according to evidentiary reference Shin. Therefore, the Examiner finds that a person of ordinary skill in the art would read the abovementioned Suk and Shin publications and “at once envisage” that hydrangenol is present in the Hydrangea Serrata extract of Suk, thereby inherently preventing hair loss and promoting hair growth via promoting proliferation of dermal papilla cells.
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(pg. 426, right column,
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(pg. 426, Fig. 1)
Although Suk, as evidenced by Shin, did not explicitly teach that hydrangenol inhibits 5α-reductase, increases the tensile strength of hair or alleviates roughness of hair cuticles, the Examiner finds that the abovementioned therapeutic activities are inherent features of hydrangenol as taught by Suk, as evidenced by Shin. According to MPEP 21121(I) and (II), the discovery of a previously unappreciated feature of hydrangenol, as taught by Suk and Shin, does not render the abovementioned therapeutic activities patentable to the Applicant. In addition, such inherent therapeutic activities did not have to recognized at the time of invention by Suk and Shin.
All of which led to the abovementioned anticipation.
Claim Objections
Claims 2-5 are objected to because of the following informalities:
Regarding claim 2, the claim recites the phrase, “wherein the hydrangenol is isolated”.
Such expression can be clarified by reciting -- wherein the hydrangenol represented by Formula 1 is isolated --.
Regarding claim 3, the claim recites the phrase, “wherein improving the hair or scalp condition includes: preventing or alleviating hair damage; promoting hair growth; or inhibiting, preventing, or alleviating hair loss”, which contains typographical error.
Such typographical error can be corrected by reciting -- wherein the hydrangenol represented by Formula 1 prevents or alleviates hair damageor promotes hair growth
Regarding claim 4, the claim recites the phrase, “wherein the hydrangenol inhibits 5α-reductase”.
Such expression can be clarified by reciting -- wherein the hydrangenol represented by Formula 1 inhibits 5α-reductase --.
Regarding claim 5, the claim recites the phrase, “wherein the hydrangenol increases the tensile strength of the hair and”.
Such expression can be clarified by reciting -- wherein the hydrangenol represented by Formula 1 increases --.
Appropriate correction is required.
Conclusion
Claims 1-6 are rejected.
Claims 2-5 are objected.
Claims 7-13 are cancelled.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621