DETAILED ACTION
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 .
Priority
The instant application is a national stage entry under 35 U.S.C. § 371 of PCT/EP2022/085449 (filed 12/12/2022). Acknowledgement is made of Applicants’ claim for priority to foreign Application No. FR 2113539 (filed 12/15/2021).
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 05/28/2026 in response to a Restriction requirement is acknowledged.
Claims 1-12 and 17-20 read on the elected invention and are examined on the merits herein.
Claim Interpretation
The following comments are made to establish broadest reasonable interpretation for the record.
Regarding claims 1-12, 17-20: The instant claims are directed to dedifferentiated plant cells of a plant of the genus Paeonia or extracts thereof. The Specification defines “dedifferentiated plant cells” as “…any cell strain derived from organs of a plant of the genus Paeonia and obtained by means of specific in vitro culture conditions, no longer exhibiting any specialization character and capable, under the effect of induction, of any differentiation in accordance with its genome and of generating by itself a whole plant of a plant from which it originates.” (pg. 9; lines 13-18). This is contrasted with undifferentiated plant cells: “An undifferentiated plant cell is the equivalent of a real plant stem cells, derived from meristematic plant cells, and not having an organ-specific biological past.” (pg. 3; lines 29-30).
Regarding claims 2-3: These claims recite the terms aqueous extract, organic extracts, and aqueous-alcoholic extracts. The Specification defines “aqueous extract” as an extract obtained with an aqueous extraction solvent (pg. 15; line 3), wherein “aqueous extraction solvent” means a solvent which is water or which consists of water (pg. 15; lines 4-5). “Aqueous-alcoholic extract” means an extract obtained with a mixture of water and ethanol in all proportions (pg. 15; lines 8-9). “Organic extract” means an extract obtained with an organic extraction solvent; e.g., ethanol (pg. 15; lines 10-12).
Regarding claim 5: This claim recites an optional step of eliciting the dedifferentiated cells recovered in step iii. using an elicitor chosen from methyl jasmonate, chitosan, a bacterium of the genus Lactobacillus, and cold. The Specification defines “elicitor” as a molecule or organism capable of inducing, in another organism, a sparingly expressed metabolic pathway or awakening, in another organism, silenced metabolic pathways; “elicitation” is defined as the induction, by means of an exogenous elicitor, in another organism or cell, of a sparingly expressed metabolic pathway or awakening, in another organism or cell, of silenced pathways (pg. 8; lines 6-11).
Regarding claims 5-8: These instant claims are directed to dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, characterized in that they are obtained by a process comprising the steps as recited in the respective claim limitations. The dedifferentiated plant cells is determined to be a product-by-process limitation. Product-by-process limitations are considered only in as far as the method of production imparts distinct structural or chemical characteristics or properties to the product. Therefore if the product, as claimed, is the same or obvious over a product of the prior art (i.e., is not structurally or chemically distinct), the claim is considered unpatentable over the prior art, even though the prior art product is made by a different process. See MPEP 2113.
In the instant case, the production method of the limitations recited in claims 5-8 serves to dedifferentiate plant cells of a plant of the genus Paeonia or extracts thereof; i.e., under broadest reasonable interpretation, dedifferentiated peony plant cells obtained via another process (e.g., using a culture media with different components) is encompassed by the scope of the instant claims.
Claim Objections
Claim 11 is objected to because of the following minor informality:
Line 8 recites, “…at least on emulsifier…”; this should read, “…at least one emulsifier…”.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to product of nature judicial exceptions without significantly more.
Determination of a claimed invention’s subject matter patent eligibility is set forth in MPEP § 2106 in a stepwise analysis.
Regarding claim 1: The instant claim is directed to dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, obtained from at least one plant part chosen from the buds, the petals, the leaves, and mixtures thereof.
Step 1 of the analysis asks if the claim is directed to one or more of the appropriate categories: process, machine, manufacture, composition of matter. In response to Step 1, the instant claim is directed to an appropriate category, composition of matter (Step 1: YES).
Step 2A of the analysis is a two-prong inquiry. The first of these asks if the claim recites a judicial exception: abstract idea, law of nature, product of nature. Claim 1 is directed to two alternative embodiments of a nature-based product (dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof). When a claim recites nature-based products, further analysis is taken to determine if the composition recites a nature-based product judicial exception by comparing the claimed composition to the closest naturally occurring counterpart to determine if the claimed product has markedly different characteristics than its counterpart. As evidenced by Iwase, et al. (Curr Biol. 2011), plants undergo cell dedifferentiation in response to wounding (pg. 508; col. 2, par. 2). Transcription factor WIND1, together with other functionally redundant factors, controls cell dedifferentiation in vivo (pg. 510; col. 2, par. 1); wounding of the plant induces local WIND1 transcription, which then enhances endogenous cytokinin responses to promote cell dedifferentiation (pg. 510; col. 2, par. 3). Thus, the closest naturally occurring counterpart to the composition of claim 1 is dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, from a wounded peony plant (e.g., a peony flower which has been picked). Therefore, the instant claim recites product of nature judicial exceptions (Step 2A, Prong 1: YES), and requires further analysis.
The second prong of Step 2A asks if the claim recites additional elements that integrate the judicial exception into a practical application. In the instant case, because claim 1 is drawn to a product, not a method of use, the judicial exceptions are not integrated into a practical application (Step 2A, Prong 2: NO). Therefore, further analysis is required.
Step 2B of the analysis asks if the claim recites additional elements that amount to significantly more than the judicial exception. In the instant case, there are no additional elements requiring analysis recited in claim 1 (Step 2B: NO), concluding the analysis.
For the reasons set forth above, claim 1 does not recite patent eligible subject matter.
Regarding claims 2-3: The analysis for claims 2-3 is the same as the analysis for claim 1 through Step 2A, Prong 2.
Step 2B of the analysis asks if the claim recites additional elements that amount to significantly more than the judicial exception. Claims 2-3 recite additional elements directed to extracts of a plant of the genus Paeonia; e.g., aqueous and organic extracts (claim 2), organic extracts of insoluble constituents (claim 3). One consideration for Step 2B is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry; see MPEP 2106.05(d). In the instant case, as evidenced by Abubakar and Haque (J Pharm Bioallied Sci. 2020), extraction methods using solvents such as water and ethanol are well-known in the art (pg. 3; col. 1). Thus, the additional elements do not add significantly more to the recited judicial exceptions (Step 2B: NO), concluding the analysis.
For the reasons set forth above, claims 2-3 do not recite patent eligible subject matter.
Regarding claim 4: The analysis for claim 4 is the same as the analysis for claim 1, as claim 4 does not further limit the scope of claim 1. Therefore, for the same reasons as set forth above for claim 1, claim 4 does not recite patent eligible subject matter.
Regarding claims 5-8: It is set forth above the limitations of the instant claims are product-by-process limitations. For product-by-process claims, the analysis turns on whether the nature-based product(s) in the claim has markedly different characteristics from its closest naturally occurring counterpart; see MPEP 2106.04(c)(I)(B). As the production method of the limitations recited in these claims serves to dedifferentiate plant cells of a plant of the genus Paeonia or extracts thereof, under broadest reasonable interpretation, the scope of the instant claims as currently written encompasses dedifferentiated peony plant cells, or extracts thereof, which naturally occur due to wounding of the plant (Iwase, et al. Curr Biol. 2011). Therefore, the instant claims recite product of nature judicial exceptions (Step 1: YES; Step 2A, Prong 1: YES), and require further analysis.
The second prong of Step 2A asks if the claim recites additional elements that integrate the judicial exception into a practical application. In the instant case, because claims 5-8 are drawn to a product, not a method of use, the judicial exceptions are not integrated into a practical application (Step 2A, Prong 2: NO). Therefore, further analysis is required.
Step 2B of the analysis asks if the claim recites additional elements that amount to significantly more than the judicial exception. In the instant case, claim 5 is directed to an overall process of obtaining part(s) of a Paeonia plant, culturing the part(s) in a culture medium comprising a plant hormone effective to dedifferentiate the plant cells, and optionally eliciting and further extracting the dedifferentiated cells; claims 6-8 are directed to embodiments of the culture media used in the process. As evidenced by Ochoa-Villarreal, et al. (BMB Rep. 2016), for production of natural products, extraction from the source plant (pg. 149; col. 2, par. 1) and subsequent culturing of plant cells in liquid medium (pg. 151; col. 1, par. 2), as well as elicitation (pg. 153; col. 1, pars. 1-2), are well-known, understood, conventional techniques which are commonly used in the art. It is also well-known that optimization of growth, maintenance, and production media, including modification of commercial formulations, are necessary considerations and routine for the skilled artisan (pg. 152; col. 2, pars. 1-3). Shim, et al. (WO 2015/099274) evidences plant hormones, e.g., 2,4-dichlorophenoxyacetic acid and naphthaleneacetic acid, are routinely used in the art for dedifferentiation of plant cells. Therefore, the additional elements of the instant claims do not add significantly more to the recited judicial exceptions (Step 2B: NO), concluding the analysis.
For these reasons, claims 5-8 do not recite patent eligible subject matter.
Regarding claim 9: This claim is directed to a specific strain of Paeonia suffruticosa cells deposited in accordance with the Budapest Treaty on 07 April 2021 under the reference DSM 33891 with the Deutsche Sammlung von Mikroorganismen und Zellkulturen (DSMZ) [German Collection of Microorganisms and Cell Cultures]. However, as the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether or not Applicants’ strain differs, and if so to what extent, from wild-type Paeonia suffruticosa cells, the burden of establishing any markedly different characteristics is shifted to Applicants. Thus, the analysis for claim 9 is the same as the analysis for claim 1; for the same reasons, claim 9 does not recite patent eligible subject matter.
Claims 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they are directed to a non-therapeutic cosmetic use of dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof. The claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process; i.e., results in a claim which is not a proper process under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ678 (Bd.App.1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp.131, 149 USPQ 475 (D.D.C.1966).
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 6 and 17-20 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.
Regarding claim 6: Line 4 uses the term “such as”. The term “such as” renders a claim indefinite because it is not clear if the limitations following the phrase are required, or merely illustrative. See MPEP 2173.05(d). The metes and bounds of the claim cannot be determined.
Regarding claim 17-20: These claims provide for the non-therapeutic cosmetic use of dedifferentiated plant cells of a plant of the genus Paeonia or extracts thereof, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process Applicants intend to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
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.
Claim 4 is 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.
Regarding claim 4: This claim is directed to dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, according to claim 1, characterized in that they are obtained from plant part(s) chosen from one or more leaves or one or more leaf fragments, and/or one or more petals or one or more petal fragments and/or one or more buds or one or more bud fragments of the plant of the genus Paeonia. However, as claim 1 is directed to dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, obtained from at least one plant part chosen from the buds, the petals, the leaves, and mixtures thereof, claim 4 does not further limit the scope of claim 1.
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
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, 4-8, and 10-12 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Shim, et al. (WO 2015/099274).
Shim, et al. teaches a cosmetic composition comprising a dedifferentiated plant protoplast (Abstract).
Regarding claims 1, 4: Shim, et al. teaches obtaining a plant cell from a plant leaf, stem, root, flower, fruit, and seed and dedifferentiating the plant cell (pars. 22-23), wherein the plant is Paeonia lactiflora (par. 53). This anticipates:
the dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, obtained from at least one plant part chosen from the buds, the petals, the leaves, and mixtures thereof limitations recited in claim 1; and
the dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, according to claim 1, characterized in that they are obtained from plant part(s) chosen from one or more leaves or one or more leaf fragments, and/or one or more petals or one or more petal fragments and/or one or more buds or one or more bud fragments of the plant of the genus Paeonia limitations recited in claim 4.
Regarding claims 5, 10: Following the above discussion, Shim, et al. teaches culturing the obtained plant cells in a medium to induce dedifferentiation (par. 56), removing the cell walls of the dedifferentiated cells via enzymatic reaction to obtain protoplasts (par. 63), followed by subsequent introduction of an active substance into said protoplast (par. 68) before post-processing (e.g., pars. 27, 76) and subsequent inclusion in a cosmetic composition (par. 81). This anticipates:
the i. providing one or more parts of a plant of the genus Paeonia; ii. culturing said plant part(s) provided in step i. in a culture medium comprising at least one plant hormone, so as to generate dedifferentiated cells; and iii. recovering the dedifferentiated cells obtained at the end of step ii. limitations recited in claim 5; and
the cosmetic composition comprising, in a physiologically acceptable medium, said dedifferentiated plant cells of a plant of the genus Paeonia, and/or extracts thereof as defined in claim 1 limitations recited in claim 10.
Regarding claims 6-8: The product-by-process limitation of the instant claim is set forth above. Following that discussion, the dedifferentiated Paeonia lactiflora plant cells of Shim, et al. (pars. 22-23, 53) reads on the dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof limitation of the instant claim.
Regarding claim 11: Following the above discussion, Shim, et al. teaches an embodiment wherein the cosmetic composition further comprises a preservative, an antioxidant, a fragrance, a filler, a colorant, an emulsifying agent, and an animal or vegetable oil (pars. 81-82, 84); this anticipates the cosmetic composition comprising, in a physiologically acceptable medium, dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, and at least one adjuvant chosen from preservatives, antioxidants other than said cells and/or extracts, fragrances, fillers, colorants; at least one emulsifier; and at least one oily phase limitations recited in claim 11.
Regarding claim 12: Following the above discussion, Shim, et al. teaches an embodiment wherein the structure (i.e., a protoplast of the dedifferentiated Paeonia lactiflora plant cells comprising an active substance) is 0.01 to 10% by weight of the cosmetic composition (par. 79); this anticipates the dedifferentiated plant cells, and/or extracts thereof, are used in an amount representing from 0.001 % to 40% by weight of solids relative to the total weight of the composition containing them limitation recited in claim 12.
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.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Seo, et al. (KR 2015/0039187), in view of Wang, et al. (CN 107496251), Shim, et al. (WO 2015/099274), and Grafi (Dev Biol. 2003).
Seo, et al. teaches a cosmetic composition comprising a placental cell culture of a Ranunculaceae plant or an extract thereof (Abstract).
Wang, et al. teaches a whitening skin care composition comprising peony stem cell extract (Abstract).
Grafi teaches dedifferentiation in plant cells (Abstract).
The teachings of Shim, et al. are set forth above.
Regarding claims 1, 4-5, 10: Seo, et al. teaches a cosmetic composition comprising cells of a Paeonia suffruticosa plant or extract thereof (pars. 0001, 0023), wherein the cells are isolated from flower buds, petals, leaves, stems, and/or roots (pars. 0060-0071); disclosed is a method for preparing the composition comprising isolating and culturing the cells in a suitable medium, e.g. MS medium, before subsequent use of the cells for making the composition (pars. 0036-0037). Seo, et al. does not teach the Paeonia suffruticosa cells as dedifferentiated.
However, Wang, et al. teaches peony stem cells are effective to encourage the skin’s stem cells, accelerating the self-regeneration and repair of skin (par. 09). As evidenced by Grafi, the dedifferentiation process of plant cells is characterized by its distinguishing feature of withdrawal from a given differentiated state into a stem cell-like state which confers pluripotentiality (pg. 2; col. 1, par. 1); thus, Grafi teaches dedifferentiated plant cells and plant stem cells as functional equivalents.
Shim, et al. teaches 1-5 mg/L of α-naphthalene acetic acid (NAA) or 2,4-dichlorophenoxy acetic acid (2,4-D) induces dedifferentiation of plant cells, including peonies (par. 56).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have modified the cosmetic composition of Seo, et al. by incorporating 1-5 mg/L of NAA or 2,4-D into the culture media to induce dedifferentiation of the Paeonia suffruticosa cells for use thereof in said composition. This conclusion of obviousness is based on the ‘teaching, suggestion, or motivation rationale.’ One would be motivated to do so for the acceleration of self-regeneration and skin repair, as taught by Wang, et al. As Grafi teaches dedifferentiated plant cells and plant stem cells are functional equivalents due to the pluripotency gained during dedifferentiation, one would have a reasonable expectation of success in using dedifferentiated Paeonia suffruticosa cells in the method of Seo, et al. This expectation of success is further supported by the Seo, et al, disclosure, which teaches plants possessing the potential for plant tissue cells isolated from a parent plant to regenerate into a complete plant body when cultured in an appropriate environment hold significant value as raw materials for cosmetics (par. 0034). Additionally, as Shim, et al. uses NAA and 2,4-D to dedifferentiate peony cells for use in a cosmetic composition, the skilled artisan would have more than a reasonable expectation of success in using these hormones to achieve dedifferentiation of the Paeonia suffruticosa cells.
Thus, the modified method of Seo, et al. set forth above renders obvious:
the dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, obtained from at least one plant part chosen from the buds, the petals, the leaves, and mixtures thereof limitations recited in claim 1;
the dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof, according to claim 1, characterized in that they are obtained from plant part(s) chosen from one or more leaves or one or more leaf fragments, and/or one or more petals or one or more petal fragments and/or one or more buds or one or more bud fragments of the plant of the genus Paeonia limitations recited in claim 4;
the i. providing one or more parts of a plant of the genus Paeonia; ii. culturing said plant part(s) provided in step i. in a culture medium comprising at least one plant hormone, so as to generate dedifferentiated cells; and iii. recovering the dedifferentiated cells obtained at the end of step ii. limitations recited in claim 5; and
the cosmetic composition comprising, in a physiologically acceptable medium, said dedifferentiated plant cells of a plant of the genus Paeonia, and/or extracts thereof as defined in claim 1 limitations recited in claim 10.
Regarding claims 2-3: Following the above discussion, Seo, et al. teaches an embodiment wherein the peony extracts are obtained by hot or cold water extraction, or a mixture of water and an organic solvent (pars. 0026-0028). This reads on:
the said extracts are chosen from aqueous and organic extracts, or extracts obtained by mixing water with at least one organic extraction solvent that is miscible with water in all proportions limitations recited in claim 2; and
the aqueous extracts of insoluble constituents of said cells or organic extracts of insoluble constituents of said cells; said insoluble constituents of said cells being chosen from insoluble intracellular constituents, pectocellulose walls, cell membranes, and mixtures thereof limitations recited in claim 3.
Regarding claims 6-8: The product-by-process limitation of the instant claim is set forth above. Following that discussion, the dedifferentiated Paeonia suffruticosa plant cells of the modified method of Seo, et al. reads on the dedifferentiated plant cells of a plant of the genus Paeonia, or extracts thereof limitation of the instant claim.
Regarding claim 9: The instant claim is directed to cells of Paeonia suffruticosa deposited in accordance with the Budapest Treaty on 07 April 2021 under the reference DSM 33891 with the Deutsche Sammlung von Mikroorganismen und Zellkulturen (DSMZ) [German Collection of Microorganisms and Cell Cultures].
The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether or not Applicants’ Paeonia suffruticosa cells differ, and if so to what extent, from the Paeonia suffruticosa cells discussed in the references. Accordingly, it has been established that a prior art strain which has the same genus and species classification and shared properties demonstrate a reasonable probability that it is identical to the strain as claimed. Therefore, the burden of establishing novelty by objective evidence is shifted to Applicants.
Merely because a characteristic of a known strain is not disclosed in a reference does not make the known strain patentable. The known strain possesses inherent characteristics which might not be displayed in the tests used by the reference. However, the strain disclosed may be the same strain as claimed. Clear evidence that the strains of the cited prior art do not possess a critical characteristic that is possessed by the claimed strain would advance prosecution and might permit allowance of claims to Applicants’ strain.
Regarding claim 11: Following the above discussion, Seo, et al. teaches the cosmetic composition may further comprise emollients, antioxidants, fragrances, emulsifiers, fillers, preservatives, dyes, pigments, hydrophilic or lipophilic active agents (par. 0055); the composition may be formulated as an emulsion obtained by dispersing an oil phase in an aqueous phase (par. 0054). This reads on the at least one adjuvant chosen from hydrophilic or lipophilic cosmetic active agents, preservatives, antioxidants other than said cells and/or extracts, fragrances, fillers, colorants; at least one emulsifier; and at least one oily phase limitations recited in claim 11.
Regarding claim 12: Following the above discussion, Seo, et al. teaches an embodiment wherein the cosmetic composition comprises 0.1 to 10% by weight the peony cells or extracts thereof (par. 0020); this reads on the said dedifferentiated plant cells, and/or extracts thereof, are used in an amount representing from 0.001 % to 40% by weight of solids relative to the total weight of the composition containing them limitations recited in claim 12.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GINA PRONZATI whose telephone number is (571)270-5725. The examiner can normally be reached Monday - Friday 9:00a - 5:00p ET.
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/GINA PRONZATI/Examiner, Art Unit 1633
/ALLISON M FOX/Primary Examiner, Art Unit 1633
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