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
Claims 1-10 are currently pending and a preliminary amendment to the claims filed on 03/28/2024 is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/28/2024 was filed before the mailing date of the instant first action on the merits. The submission thereof is in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statement has been considered by the examiner, and signed and initialed copy is enclosed herewith.
Claim Objections
Claims 1, 2, 4, 5 and 8-10 are objected to a minor informality.
Each of claims 1, 2, 4, 5 and 8-10 recites abbreviations such as “OR2AT4” or “IGF-1”, but which should be spelled out at the first encounter of the claims.
Each of claims 4 and 10 are not written in a proper Markush-type claim format where the Markush-type claim should recite alternatives in a format such as "selected or chosen from the group consisting of A, B, and C." Alternatively, “selected or chosen from A, B or C” can be used. (see MPEP 2111.03 –II and 2117 and MPEP 2173.05(h)). Further each of claims 4 and 10 recites “sandalwood” which is a typo of “sandalwood”.
Each of claims 8-9 recites “at least one OR2AT4”, but which would be better to recite “the at least one OR2AT4”.
Claim 10 recites “The method of claim 1”, but which should be corrected to “The method of claim 5” because independent claim 1 is directed to a composition and independent claim 5 is method.
Appropriate correction is required.
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.
Claims 4 and 10 are 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.
Each of claims 4 and 10 recites “the OR2AT4”, but which lacks sufficient antecedent basis because ambiguity arises to determine whether a dependent claim (the) limitation refers to one or more than one element that is previously presented, either in the same claim or a preceding claim. See also MPEP 2173.05(e).
Applicant may amend the claims to recite “the at least one OR2AT4”.
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.
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)(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 1-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gondran et al. (US2023/0165785A1, priority date: May 19, 2020 and international filing date: May 4, 2021).
Applicant claims the below claims 1, 2, 5 and 8-10 filed on 03/28/2024:
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Prior Art
Regarding claims 1, 3 and 4, Gondran discloses a topical cosmetic composition for comprising an extract of sandalwood in a physiologically acceptable medium (e.g., e.g., [0111] and [0115]-[0117]) wherein the sandalwood extract reads on the claimed OR2AT4 agonist active agent and the medium includes coloring agent or pigment (e.g., [0113]) that reads on the claimed pigment; the composition is provided in the form of an oil-in-water emulsion, a water-in-oil emulsion, etc., (e.g., [0123]) wherein oil is the discontinuous phase and water is the continuous phase in the oil-in water emulsion, and water is discontinuous phase and oil is the continuous phase in the water-in-oil emulsion, and thus, the said emulsion reads on the claimed continuous phase and discontinuous phase (instant claims 1, 3 and 4).
Regarding claim 2, Gondran teaches a topical composition containing Sandalwood as an OR2AT4 agonist active agent is in the physiologically acceptable medium that is suitable for skin or appendages such as eyelashes or eyebrows (e.g., [0111]-[0112] and [0120]) which reads on the claimed cosmetically acceptable vehicle; the composition can be applied by in particular topical route (e.g., [0115]-[0116]); and the composition is provided in the form of serum (e.g., [0124]) that reads on the claimed serum.
Regarding claims 5-7 and 10, Gondran teaches a method of topically applying a composition containing sandalwood as an OR2AT4 agonist in a physiologically acceptable medium to the surface of eyelashes or eyebrows (e.g., [0117] and [0120]) in order to improve the appearance of the skin such as eye area (e.g., [0019], [0118] and [0139]), and the cosmetic use of a composition increases the expression of olfactory receptors (OR2AT4) in the skin including eye area (e.g., [0118] and [0140]), which reads on the claimed method using OR2AT4 agonist (instant claims 5 and 10); and the composition is applied twice daily ([0173]) which reads on the claimed at least once daily application (instant claim 6); and the OR2AT4 agonist plays a role in hair growth (e.g., [0021]) and thus applying the composition containing sandalwood as an OR2AT4 agonist to eyelash implicitly improves lash growth rate (instant claim 7).
Regarding instant claim 8, Gondran teaches a method of topically applying a composition containing sandalwood as an OR2AT4 agonist to the surface of eyelashes or eyebrows of where hair growth is desired (e.g., [0021], [0117] and [0120]) in order to improve the appearance of the skin including eye area (e.g., [0118] and [0139]), and the cosmetic use of the said composition increases the expression of olfactory receptors (OR2AT4) in the skin (e.g., [0140]), wherein the OR2AT4 agonist plays a role in hair growth (e.g., [0021]) and thus applying the composition containing sandalwood as an OR2AT4 agonist to eyelash implicitly improve lash growth rate that embraces improving the length, thickness, number and density of eyelash and eyebrow.
Regarding instant claim 9, please note that the term “kit” of instant claim 9 and a statement of intended use “topical application to eyelash and/or eyelash follicles” are not given any patentable weight, as it is directed to a cosmetic composition of instant claim 1. In this context, Gondran teaches a composition in the form of serum containing sandalwood as an OR2AT4 agonist in a physiologically acceptable vehicle can be topically applied to the surface of eyelashes or eyebrows (e.g., [0114]-[0117], [0120] and [0124]).
In light of the foregoing, instant claims 1-10 are anticipated by Gondran.
Claim Rejections - 35 USC § 103
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Gondran et al. (US2023/0165785A1, priority date: May 19, 2020 and international filing date: May 4, 2021).
Instant claims 1, 2, 5 and 8-10 filed on 03/28/2024 are noted above.
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Gondran was discussed above with respect to instant claims 1-10 using sandalwood OR2AT4 agonist.
Gondran does not expressly teach other species of OR2AT4 recited in instant claims 4 and 10.
However, the recited other species are obvious variation because the species are also OR2AT4 agonists, and therefore they have functions/properties equivalent to a sandalwood agonist.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that 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 was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
Claims 1-10 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/ Primary Examiner, Art Unit 1613
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