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 12/30/2024, claims 1-20 are cancelled and claims 21-40 are newly added.
Claims 21-40 are pending in the instant application and are examined on the merits herein.
Priority
This application is a National Stage Application of PCT/EP2022/084330, filed on 12/5/2022. The instant application claims foreign priority to EP 21306864.6 filed on 12/20/2021. 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 6/3/2024.
Information Disclosure Statement
The information disclosure statements (IDS) dated 7/1/2024 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 Objection
Claims 33-39 are objected to under 37 CFR 1.75(c) as being in improper form because claim 33 contains improper multiple dependency. See MPEP § 608.01(n). Accordingly, the claims have not been further treated on the merits.
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 33-39 are rejected under 35 U.S.C. 101 because 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 claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (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(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.
Claims 27-31 and 33-39 are rejected for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 27 and 28 contain the terms “preferably” and/or “in particular”. These terms render the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Preferences, options and examples are properly set forth in the specification, but when included in the claims lead to confusion over the intended scope of the claim. See MPEP § 2173.05(d). For examination purposes, the broadest claim limitation(s) will be considered without taking into account preferences or examples. Claims 29-31 are indefinite for depending on claim 27 and 28.
Claims 33-39 provide for the use of a cosmetic composition, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending 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(d)
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.
Claims 22-26 are rejected under 35 U.S.C. 112(d) 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.
Claims 22-25 depend on claim 21 but recite components not present in claim 21 and are thus of a broader scope than the independent claim.
Claims 22 and 26 depend from claim 21 but do not include the galactinol component required by claim 21, thus is of a broader scope than the independent claim.
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 § 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 21, 32 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Taukamoto et al. (JP 2011098901A, 2011, PTO-892).
Tsukamoto et al. discloses a skin care composition comprising (A) 0.01 to 0.3 mass% of a bactericide, (B) 0.1 to 3.5 mass% of a keratin release agent, (C) 0.01 to 0.8 mass% of an anti-inflammatory agent, and (D) 0.01 to 15 mass% of a saccharide, where the saccharide may be selected from among several functionally equivalent saccharides, including galactinol, further where the composition may be present in the form of a cream, lotion, ointment, milky lotion, pack, bath agent, etc. (¶0001, 0017, 0020)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select galactinol as the saccharide component of Tsukamoto’s composition because Tsukamoto identifies galactinol as member of a group of saccharides, all of which perform an equivalent function or have equivalent behavior. Thus, selection of any one or more members of this group would prima facie be expected to provide a reasonable assurance of success.
With respect to claim 40 and the recitation of “for use in a non-therapeutic method…”, this is considered an intended use of the claimed composition. The “intended use” of the claimed composition does not patentably distinguish the composition, per se, since such disclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Accordingly, the instant claims are prima facie obvious over the teachings of the prior art.
Claims 21, 32 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Scavone et al. (US 2016/0175214, PTO-892).
Scavone et al. discloses a topical cosmetic composition comprising vitamin B5, zinc oxide and cyclodextrin complexes, which may further comprise a prebiotic, including galactinol, further where the composition may be present in the form of a form of creams extruded from an applicator container, roll-on liquids, solid sticks, or sprays. (¶0031, 0146)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select galactinol as the prebiotic component of Scavone’s composition because Scavone identifies galactinol as member of a group of prebiotics, all of which perform an equivalent function or have equivalent behavior. Thus, selection of any one or more members of this group would prima facie be expected to provide a reasonable assurance of success.
With respect to claim 40 and the recitation of “for use in a non-therapeutic method…”, this is considered an intended use of the claimed composition. The “intended use” of the claimed composition does not patentably distinguish the composition, per se, since such disclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
