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 the national stage entry of PCT/EP2022/079399 filed 21 October 2022. Acknowledgement is made of the Applicant’s claim of foreign priority to FR2111341 filed 26 October 2021. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Status of the Claims
Claims 1-20 are pending.
Claims 1-20 are rejected.
Claim Objections
Claims 1 and 3-16 are objected to because of the following informalities: These claims recite “A non-therapeutic cosmetic or nutraceutical treatment…” or “The treatment according to claim 1…” however the word “treatment” can be both a noun and a verb. As such, although it is clear that the Applicant is claiming a method, it would be more clear to recite “A non-therapeutic cosmetic or nutraceutical method…” or “The method according to claim 1…” Appropriate correction is required.
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 (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.
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.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tur (US 4,844,884) in view of Morsy et al. (Journal of Molecular Structure 1143 (2017) 251-258) in view of MacIntyre et al. (US 2022/0371989).
For purposes of examination, claims 1 and 3-16, which recite a “treatment” are interpreted as being towards a “method” wherein the active step is contacting the skin and/or its appendages.
Tur teaches cosmetic sunscreen products for protecting the skin from sunburn (col 1, lns 5-12) wherein the composition comprises stable tyrosine derivatives that can be applied to the skin (col 1, lns 60-68). One example agent that is useful in the composition is N-palmitoyltyrosine (shown below) which can be included in amounts of from 1.0-15 wt% (col 2, lns 1-25; col 5, lns 1-2).
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Tur does not teach wherein the cosmetic agent comprises an alkoxy group on the ring nor does it teach the stereochemistry of the chiral carbon.
Morsy teaches that exposure to the sun’s UV radiation can result in several harmful infections, leading to the development of a multifunctional gel that works as both an antibacterial agent and a sunscreen for skin care (Abstract).
MacIntyre teaches compounds for treating bacterial infections (abstract) comprising N-acyl, a-alkyl tyrosine derivatives [0003]. Compound 2 is an L-tyrosine derivative that comprises a palmitoyl side chain [0060-0061] (below). The compounds of MacIntyre can be used as antibacterial agents for preventing a bacterial infection of a subject in need thereof for in vivo applications [0127, 0131].
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It would have been prima facie obvious to prepare the sunscreen composition of Tur comprising an N-palmitoyltyrosine agent. The skilled artisan would have looked to Morsy which teaches that sunscreens are advantageous if they comprise an antibacterial agent as well so as to prevent infections that can occur from exposure to the sun. Looking to MacIntyre, the skilled artisan would have thus found it obvious to combine the antibacterial tyrosine agent with the sunscreen composition of Tur, which already comprises very similar agents. The resulting composition is a sunscreen cosmetic composition, for the protection of skin from harmful UV radiation, that comprises sunscreen actives (N-palmitoyltyrosine) and antibacterial actives (compound 2 of MacIntyre) to achieve the goal stated in Morsy of creating an antibacterial sunscreen composition.
It is noted that the limitation of claim 1 reciting, “to improve or beautify the general condition of skin and/or appendages,” as well as the limitations recited in claims 10-16 serve to define the patient population wherein the population required is that of any subject that comprises skin. Moreover, these limitations describe inherent properties of compound 2 of MacIntyre (i.e. the desired species in instant claim 8). By applying the prior art composition, which comprises compound 2 (N-palmitoyl-O-methyl-L-tyrosine), to the skin, the intended outcomes of, for example, acting on the mechanical properties of the skin, propigmenting, stimulate coloring, preparing the skin for sun exposure, and/or maintaining the elasticity and suppleness of the skin would necessarily occur based on the Applicant’s preferred species of instant claim 8. As such, the composition comprising the tyrosine derivative of MacIntyre, and the method of applying it to the skin to prevent sunburn and infections, renders obvious the treatment method and composition of instant claims 1-20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian 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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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613