DETAILED ACTIONStatus of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-23 are pending.
Allowable Subject Matter
Claims 21-23 are free of the art.
Claim Objections
Claims 3 and 21 are objected to because of the following informalities:
Claims 3 and 21 recite “Sh-Poypeptide-121” which should read as “Sh-Polypeptide-121”.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is drawn to a topical composition, comprising: a. vegan collagen peptide;
b. Chlorella vulgaris extract; c. a fruit extract; d. at least one ceramide; e. at least one excipient; and f. at least one solvent.
The broadest reasonable interpretation of the claimed compositions would be the material that is named, that is vegan collagen peptide, Chlorella vulgaris extract, a fruit extract, at least one ceramide, at least one excipient and at least one solvent. A vegan collagen peptide is a naturally occurring product, Chlorella vulgaris extract is a naturally occurring product, a fruit extract is a naturally occurring product, ceramide is a naturally occurring product, and the excipient and solvents can comprise naturally occurring excipients and solvents that are naturally occurring unless otherwise specified.
Thus, the compositions claimed in claims 1-15 are not markedly different from how the individual components in nature. It is not integrated into a practical application because nothing in claim 1 relies on or uses the exception. There is nothing significantly more than the judicial exception because there are no additional elements in the claim. With regard to claims 2-15 the enumeration of the amounts or additional products of nature do not make the combination of the products of nature markedly different from how they occur in nature. While claim 10 recites polysorbate 20, the other options such as glycerin is still a naturally occurring product.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, because the formulation at the broadest interpretation of the claim language is a mixture of products of nature comprising vegan collagen peptide, Chlorella vulgaris extract, a fruit extract, at least one ceramide, at least one excipient and at least one solvent, which does not appear to change the biological/pharmacological functions, chemical/physical properties, or the structure/form of said ingredients. Because the claimed formulation does not have markedly different characteristics, it is a product of nature.
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.
Claim 20 is 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 pre-AIA the applicant regards as the invention.
Claim 20 is indefinite because the claim begins with “A topical composition comprising” and lists ingredients, then recites “or any combination thereof” at the end of the claim, which is unclear because “any combination thereof” could be for example just water and glycerin only. In the interest of compact prosecution, examiner interprets the claim as requiring all the components.
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 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 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.
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 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Carle et al. (WO2021026565A1) hereinafter Carle.
Regarding claims 1-20, Carle is drawn to a dissolvable or at least partially dissolvable film for treating skin wrinkling and discoloration. The film includes the active components ascorbic acid and retinol. Upon contact with water or other appropriate cosmetic vehicle, the wetted film is applied to the skin surface. The film releases the active components, which are absorbed by the skin and used by the body to provide positive cosmetic effects (abstract).
Carle discloses a solution to at least some of the problems associated with skin wrinkling and discoloration. The solution resides in a dissolvable film that includes the cell regulator retinal and the antioxidant ascorbic acid (Vitamin C) [0007].
Carle discloses what is meant by an extract is either the whole fruit, bean, and/or plant or select constituents of such fruit [0093]. Carle discloses examples of skin lighteners include Chlorella vulgaris extract [0096], Carle discloses ceramides [0064;0067;0083]. Carle discloses polysorbate 20 [0067]. Carle discloses cholesterol [0083]. Carle discloses phenoxyethanol [0082]. Carle discloses sodium hydroxide [0088].
Carle discloses the compositions can also include any number of combinations of ingredients in at least about 0.0001 % to 99%, the percentage can be calculated by weight or volume of the total composition [0062].
Carle does not explicitly disclose wherein the collagen is vegan collagen peptide.
However, Couval is drawn to a cosmetic or dermocosmetic composition for topical application, particularly suitable for trapping active ingredients and improving their skin penetration (abstract).
Couval discloses cosmetic products containing active ingredients aim to improve the condition and/or function of the skin, due to the properties of these active ingredients, for example antiaging [0007]. Couval discloses fruit extracts can also be used, including kiwi extracts [0076]
Couval discloses the active ingredient can be chosen from among anti-aging agents, i.e. having a restructuring effect on the skin barrier, agents preventing and/or reducing the glycation of skin proteins, in particular resveratrol, dermal proteins, such as collagen, whether obtained by biotechnological means, such as the HumaColl21 product from the company Geltor [0054].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings as previously disclosed by Carle, wherein the collagen is HumaColl21 (sh-polypeptide-121), as previously disclosed by Couval, and arrive at the instant invention.
One of ordinary skill in the art would have been motivated to do so because Carle and Couval are both in the field of anti-aging topical cosmetics, and Couval Couval discloses the active ingredient can be chosen from among anti-aging agents, i.e. having a restructuring effect on the skin barrier, agents preventing and/or reducing the glycation of skin proteins, in particular resveratrol, dermal proteins, such as collagen, whether obtained by biotechnological means, such as the HumaColl21 product from the company Geltor [0054], thus combining prior art elements according to known methods to yield predictable results, see MPEP 2141.
From the 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 would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending US Application 18/802,365 in view of Carle et al. (WO2021026565A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 requires a topical composition comprising vegan collagen peptide, Chlorella vulgaris extract, fruit extract, ceramide, excipient, and solvent and Claim 1 of the ‘365 application requires a topical composition comprising vegan collagen peptide, vegan elastin peptide, Chlorella vulgaris extract, ceramide, excipient, and solvent.
However, Carle teaches various fruit extracts and collagen [0067].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the ‘452 application with Carle and arrive at the claimed invention.
This is a nonstatutory double patenting rejection.
Claims 1-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending US Application 18/802,452 in view of Carle et al. (WO2021026565A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 requires a topical composition comprising vegan collagen peptide, Chlorella vulgaris extract, fruit extract, ceramide, excipient, and solvent and Claim 1 of the ‘452 application requires a topical composition comprising vegan collagen peptide, Chlorella vulgaris extract, ceramide, excipient, and solvent.
However, Carle teaches various fruit extracts and collagen [0067].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the ‘452 application with Carle and arrive at the claimed invention.
This is a nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/QUANGLONG N TRUONG/Examiner, Art Unit 1615
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