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 .
DETAILED ACTION
Response to Amendments
The amendments made to the claims, title, and drawings 07/06/2026 have been entered.
In view of the amendments made, the objections made to the title and drawings have been withdrawn.
The objection made over claim 5 is now moot and is therefore withdrawn.
The 112(b), 101, 102, and 103 rejection have been withdrawn.
New Claim Rejections
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for reducing the number of wrinkles and reducing pore size, does not reasonably provide enablement for improving skin elasticity. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The following Wands factors have been considered if not explicitly stated: (A) The breadth of the claims, (B) The nature of the invention, (C) The state of the prior art, (D) The level of one of ordinary skill, (E) The level of predictability in the art, (F) The amount of direction provided by the inventor, (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Breadth of the claims
Claim 1 is drawn to a method for improving skin wrinkles, reducing pore size, or improving skin elasticity comprising topically administering a cosmetic composition comprising 3-acetyl-myricetin being a myricetin derivative.
The structure of 3-acetyl-myricetin is shown below.
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State of the Prior Art
3-acetyl-myricetin is known within the art as discussed in Sando and Zhen (cited in the prior office action). Simergiotis (Industrial Crops and Products 94, 2016, 368-375) on p. 372, Table 2 teaches 3-acetyl myricetin as a metabolite found within the resin of Baccharis tola.
However, the art does not teach 3-acetyl-myricetin as a compound useful for cosmetic purposes such as improving wrinkles, reducing pore size, or improving skin elasticity.
Working Examples and Guidance
The instant specification discloses examples of reducing the density of wrinkles and reducing amount of sweat (reducing pore size) in examples 5 (para. [75]) and 7 (para. [84]). Example 5 is drawn to a hyperhidrosis experiment whereas example 7 is drawn to “improving skin wrinkles.” Of particular note, example 7 measures the skin wrinkle density.
There are no examples where skin elasticity is measured. The specification does not discuss how the 3-acetyl-myricetin would lead to improved skin elasticity.
Level of Predictability
The art is silent on the effect 3-acetyl-myricetin has on skin elasticity. Considering the only examples given within the instant specification are drawn to reducing the number of wrinkles and reducing pore size, one of ordinary skill in the art, in order to determine whether skin elasticity is affected by administration of 3-acetyl-myricetin, would be required to develop their own assay and testing methods. Considering this, there is a significant level of unpredictability should one of ordinary skill in the art attempt to administer the 3-acetyl-myricetin to improve skin elasticity.
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 1 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.
Claim 1 uses the term “improving”. “Improving” is not explicitly defined within the specification. “Improving skin wrinkles” and “improving skin elasticity” are also not defined within the specification. The only example of “improving skin wrinkles” is found in example 5 of the specification which is drawn to an experiment wherein the 3-acetyl-myricetin administered reduced the wrinkle density. However, the specification does not disclose methods to determine a baseline with which improvement could be determined.
Because the terms are not defined by the claim and the specification does not provide a standard for ascertaining the requisite degree, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
These new rejections have been necessitated by amendments made to the claims.
Conclusion
Claim 1 is not allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/L.G./Examiner, Art Unit 1624 /JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
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