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
Pursuant to the preliminary amendment dated 3/27/2024, claims 2-5, 9, 10, 13-19 are cancelled, claims 1, 6-8, 11, 12 are amended and claims 20 and 21 are newly added.
Claims 1, 6-8, 11, 12, 20 and 21 are pending in the instant application and are examined on the merits herein.
Priority
This application is a National Stage Application of PCT/JP2022/037513, filed on 10/6/2022. The instant application claims foreign priority to JP 2021-165433 filed on 10/7/2021. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copy has been filed in the instant application on 3/27/2024.
Information Disclosure Statement
The information disclosure statements (IDS) dated 3/27/2024, 5/31/2024 and 1/8/2026 comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, except where noted. Accordingly, the IDS documents have been placed in the application file and the information therein has been considered as to the merits.
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.
(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, 6, 8, 11, 12 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (KR 102026365 B1, 2019, PTO-892).
Yang et al. discloses a cosmetic composition comprising uridine or derivative thereof, for topical application to the skin, where the uridine derivatives include uracil, uridine monophosphate, uridine diphosphate, triacetyl uridine, tribenzoyl uridine, 5-ethyluridine, 2-deoxyuridine, isopropylidene uridine, further where the uridine or derivative is present at 10-30 microg/mL. (¶0017, 0024-0025) Yang also discloses a method for reducing wrinkles caused by aging, where a component of skin aging is the loss of elasticity caused by ultraviolet rays. (¶0005)
Accordingly, the instant claims are anticipated by the prior art.
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shinohara et al. (US 7,557,093 B2, 2009, PTO-892).
Shinohara et al. discloses composition for promoting collagen production and acting as an anti-wrinkle composition, wherein the composition contains a pyrimidine nucleic acid-related substance in a proportion of 0.0001 to 10%, by weight based on the total amount of the composition, where the pyrimidine nucleic acid-related substance is uridine monophosphate or a salt thereof. (Col. 2, Ln. 9-13, 41-45; Col. 12, Ln. 4-8) Shinohara also discloses a method for promoting collagen production comprising applying to the skin an externally-applied composition containing a purine nucleic acid-related substance and the pyrimidine nucleic acid-related substance.(Col. 3, Ln. 7-11) Shinohara also discloses that It is known that collagen is lost when the skin is subject to specific exogenous influences, such as ultraviolet-ray, exposure, dryness, etc.(Col. 1, Ln. 15-16)
Accordingly, the instant claims are anticipated by the prior art.
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 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 of this title, 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 6-8, 11, 12, 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Byrne et al. (WO 2016/168735A1, PTO-892), in view of Yang et al. (KR 102026365 B1, 2019, PTO-892).
Byrne et al. discloses a cosmetic composition for skin application comprising cytidine triphosphate or precursors thereof including cytosine, cytidine, cytidine monophosphate (a.k.a. cytidylic acid), and cytidine diphosphate, at a concentration of 1-50 microM. (Claims 37-40; p. 34, Ln. 14-17; p. 36, Ln. 30) Byrne also discloses a method for reducing wrinkles by topically applying said composition. (Claims 78-86; p. 18, Embodiment 98)
Byrne does not explicitly teach wrinkles caused by photoaging.
Yang discloses that hyaluronic acid and glycosaminoglycans are maintained in constant amounts through a rapid metabolic process in which more than 3g per day is broken down and resynthesized during the process of removing harmful free radicals caused by ultraviolet rays or inflammation, but the amount produced gradually begins to decrease as we age. As the amount produced becomes less than the amount broken down, the skin loses elasticity and wrinkles begin to form. (¶0005)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that photoaging due to skin exposure to UV rays, is one of the causes of skin aging disclosed by Byrne. This conclusion is obvious due to the teaching of Yang that UV rays are responsible for increased free-radicals, decreased hyaluronic acid production, decreased skin elasticity and thus formation of wrinkles. Thus, it would have been obvious to specifically apply the composition of Byrne to the skin of a subject having wrinkles caused by photoaging, thereby arriving at the instant invention.
With respect to the concentrations of pyrimidine nucleotides claimed, the concentrations overlap those of the prior art. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (MPEP § 2144.05(I)) Moreover, 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). (MPEP § 2144.05(II)) “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Accordingly, the instant claims are prima facie obvious over the teachings of the prior art.
Claims 6, 11, 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Shinohara et al. (US 7,557,093 B2, 2009, PTO-892).
Shinohara et al. discloses composition for promoting collagen production and acting as an anti-wrinkle composition, wherein the composition contains a pyrimidine nucleic acid-related substance in a proportion of 0.0001 to 10%, by weight based on the total amount of the composition, where the pyrimidine nucleic acid-related substance is uridine monophosphate or a salt thereof. (Col. 2, Ln. 9-13, 41-45; Col. 12, Ln. 4-8) Shinohara also discloses a method for promoting collagen production comprising applying to the skin an externally-applied composition containing a purine nucleic acid-related substance and the pyrimidine nucleic acid-related substance.(Col. 3, Ln. 7-11) Shinohara also discloses that It is known that collagen is lost when the skin is subject to specific exogenous influences, such as ultraviolet-ray, exposure, dryness, etc.(Col. 1, Ln. 15-16)
With respect to the concentrations of pyrimidine nucleotides claimed, the concentrations overlap those of the prior art. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (MPEP § 2144.05(I)) Moreover, 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). (MPEP § 2144.05(II)) “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Accordingly, the instant claims are prima facie obvious over the teachings of the prior art.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALE R MILLER whose telephone number is (571) 272-6146. The examiner can normally be reached on M-F 7:00 AM – 3:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached on (571) 270-5341. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DALE R MILLER/Primary Examiner, Art Unit 1693
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