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 .
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.
Claim(s) 25-27, 29, 43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eminence (Mintel, June 2014, cited in IDS).
Eminence teaches a “Peel & Peptide Illuminating System”, which is “designed to reveal natural radiance and awaken inner beauty, while targeting ageing, hyperpigmentation, sensitive skin, rosacea and acne-prone complexions in just three steps, through a treatment comprising . . . antioxidant-rich Arctic plants and berries (cloudberry seed, arctic roseroot, arctic meadowsweet and juniper sprouts) to prevent signs of aging” (Product Description).
The prior art is anticipatory insofar as it teaches treating skin of a human with substances derived from Nordic plants, i.e., meadowsweet and roseroot, as claimed. Since the prior art composition contains substantially the same components in the same relative proportions as instantly claimed, it would be expected to inherently possess the same chemical and physical properties, such as increasing the ratio of commensal bacteria to harmful or pathogenic bacteria in the human skin microbiome.
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.
Claim(s) 25-30, 39, 41-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paufique (FR 2897778, cited in IDS) in view of Stepanova et al., (Pharmacy & Pharmacology, 2016).
Paufique teaches “a process for obtaining an active ingredient derived from meadowsweet to improve the condition of oily and/or acne-prone skin” and cosmetic products comprising same (p. 1, lines 17-20). The meadowsweet is an extract, as per claim 29, insofar as the reference uses the purified “active fraction” of solubilized meadowsweet (Abstract).
“The appearance of acneic skin manifestations is notably linked to bacterial development on the surface of the skin. This is why the active principle according to the present invention proposes to improve the condition of oily and/or acne-prone skin by preventing the proliferation of bacteria on the surface of the skin” (p. 1, lines 25-28).
The artisan would have reasonably expected the compositions of Paufique to increase the ratio of commensal bacteria to harmful or pathogenic bacteria in the human skin microbiome since the compositions are taught to prevent the proliferation of bacteria on the surface of the skin, and “aims to promote the return of the cutaneous ecosystem to combat the proliferation of bacteria present on the surface of oily and/or acne-prone skin by stimulating the natural defense function of the skin” (p. 2, lines 52-54). Specifically, the meadowsweet is capable of “inhibition of the proliferation of germs directly involved in the appearance of skin disorders, in particular P. acnes and S. aureus, and – reduction of the secretion of sebum at the surface of skin” (Id. lines 63-69; clm. 26-27).
In regard to claim 28, 39, 41-42, Paufique teaches, “When it is dosed at 5%, the active principle according to the invention inhibits the growth of S. aureus by 82% and that of P. acnes by 92%” (p. 4, lines 146-148). Accordingly, it would have been obvious to provide meadowsweet in an amount withing the claimed range of 0.01-10%.
Concerning claim 43, the reference also teaches cosmetic embodiments comprising cosmetically acceptable carriers, such as water (see p 6 of translation)
Paufique does not teach roseroot.
Stepanova et al. teaches, “scientific information about general characteristics of the pharmacological activity and possible use of Rhodiola rosea in external drugs and cosmetics” (p. 26, Abstract). Note: Rhodiola rosea is also known as roseroot.
Roseroot or Rhodiola rosea is “one of the most powerful and widely use adaptogenic agents” (p. 27, 1st full paragraph), which can be used “in external medical and cosmetic products” (p. 47, 4th paragraph). As a cosmetic agent, it is applied for “seborrheic dermatitis, acneifirm rash, wide-pore skin treatment, and as an antipersprirant”; it is also “used for tightening on face and neck as lotions” (p. 48, 1st paragraph). “Extract of Rhodiola is recommended to use in cosmetology” (p. 48, 2nd paragraph).
Moreover, the artisan would have reasonably expected roseroot to treat acne insofar as Stepanova et al. teaches, “Some literature as well has hypotheses that suppressing action of water extract of Rhodiola – Rhodiola crenulate against Propionibacterium acnes – acne activating bacteria, is connected with the presence of salidroside, which is found in Rhodiola rosea” (p. 53, 3rd paragraph).
In regard to claim 30, it is noted that Stepanova et al. is silent concerning suitable amounts of roseroot in a cosmetic; however, because roseroot is taught to be used in a cosmetic for treating acne, etc., it would have been obvious to optimize a range for roseroot. Accordingly, "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (see MPEP 2144.05, II. A, quoting In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Generally, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in prior art. See MPEP 2144.06. Thus, combining the meadowsweet of Paufique with the roseroot of Stepanova et al. in a cosmetic as claimed in the instant invention would have been prima facie obvious since they are both taught to be useful for treating acne.
2) Claim(s) 31-32, 37-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paufique (FR 2897778, cited in IDS) in view of Stepanova et al., (Pharmacy & Pharmacology, 2016) as applied to claim 25 above, and further in view of Zhao et al., (WO2021017878, cited in IDS).
The combination of Paufique and Stepanova et al., which is taught above differs from claims 31-32, 37-38 insofar as it does not teach birch sap or xylitol.
Zhao et al. teaches “skin external composition with anti-acne effect, which comprises concentrated birch tree juice” (birch sap) (Absract).
Concerning the concentration of birch sap, the prior art teaches, “The skin external composition with anti-acne effect comprises about 10-98%, preferably 20-90%, more preferably 30-97% of (A) concentrated birch sap based on the total weight of the skin external composition” (p. 3, para. [0015] of translation). Accordingly, it would have been obvious to provide 0.01-30% by weight of birch sap in a cosmetic.
Zhao et al. also teaches adding “xylitol” as a humectant in a concentration of “1-30%” (p. 4-5, para. [0025]). Note: once processed, xylitol is a single, specific 5-carbon sugar alcohol molecule. Regardless of the raw plant material it was extracted from, the resulting molecular structure is absolutely identical.
It is generally prima facie obvious to select a known material based on its suitability for its intended use (see MPEP 2144.07).
It is also prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in prior art. See MPEP 2144.06.
Thus, combining birch sap of Zhao et al. with the meadowsweet of Paufique as claimed in the instant invention would have been prima facie obvious since they are both taught to be useful for treating acne.
It would have also been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add xylitol to the cosmetic of Paufique based on its suitability for its intended use in cosmetics, as taught by Zhao et al.
3) Claim(s) 33-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paufique (FR 2897778, cited in IDS) in view of Stepanova et al., (Pharmacy & Pharmacology, 2016) as applied to claim 25 above, and further in view of Leren et al. (US 2020/0113814) and Qi (CN 113018239).
The combination of Paufique and Stepanova et al., which is taught above, differs from claims 33-36 insofar as it does not teach chaga extract nor fermented oat extract.
Leren et a. teaches, “cosmetic composition comprising an extract from Inonotus obliquus (Chaga) and in particular composition comprising: (i) a chaga extract at a concentration of at least about 2.5 mg/ml” (Abstract).
“Compositions comprising high concentrations of an extract from Inonotus obliquus (Chaga), have surprisingly now been found to be remarkably effective at improving the cosmetic appearance of skin, particularly skin texture, and in reducing the physical signs associated with ageing skin, such as fine lines, wrinkles and hyperpigmentation’ (p. 2, para. [0023]).
Chaga extract “may form at least about 0.6, 0.70, 0.80, 0.90 or 1.0% (w/v) of the cosmetic composition, e.g. 0.25-1.0, 0.30-0.9, 0.35-0.8, 0.40-0.7, 0.45-0.6 or 0.50-5.0% (w/v)” (p. 3, para. [0034]).
Qi teaches, “an oat fermented extract and preparation method thereof, and application of oat fermented extract prepared by the method in antioxidant and anti-aging cosmetic” (p. 1, Technical Field).
“The oat is gramineous herbaceous plant, which is one of the important crops in our country. Research shows that oat has good biological activity and medicinal value, which can be used for food, feed, medicine, cosmetic and industrial raw material and so on” (p. 2, 1st paragraph).
“As a functional ingredient, oat has a plurality of functional components” including “a large amount of β-glucan, β-glucan has anti-aging wrinkle, promoting the stratum corneum regeneration, wound healing, scar desalting, anti-allergy and anti-inflammatory effect, at present is one of the common moisturizing ingredients in cosmetic” (p. 2, 2nd paragraph).
“In a preferred embodiment, the cosmetic is a cosmetic with antioxidant and anti-aging effect, oat fermentation extract is added in the cosmetic amount is 0.01 to 10mg/mL . . . the oat fermentation extract can be used as a single functional component or a plurality of functional components in cosmetic application, as to other auxiliary material needs to be added, can select conventional cosmetic components in the existing technology, which will not be repeated here” (p. 10, 6th paragraph).
Concerning the wherein clauses of claims 34 and 36, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113.). In this case the teaching of chaga and fermented oat extracts by the prior art reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim.
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add chaga extract and fermented oat extract to the cosmetic compositions of Paufique, for the advantage of improving the cosmetic appearance of skin, particularly skin texture, and in reducing the physical signs associated with ageing skin, such as fine lines, wrinkles and hyperpigmentation, as taught by Leren et al. and Qi.
4) Claim(s) 40 and 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paufique (FR 2897778, cited in IDS) in view of Stepanova et al., (Pharmacy & Pharmacology, 2016) as applied to claim 25 above, and further in view of Zhao et al., (WO2021017878, cited in IDS), Leren et al. (US 2020/0113814) and Qi (CN 113018239).
The combination of Paufique and Stepanova et al., which is taught above, differs from claims 40 and 44 insofar as it does not teach birch sap, xylitol, chaga extract nor fermented oat extract.
Zhao et al. teaches “skin external composition with anti-acne effect, which comprises concentrated birch tree juice” (birch sap) (Absract) and “xylitol” (p. 4-5, para. [0025]), wherein birch sap may be present in an amount of about 10-98% (p. 3, para. [0015] of translation), and xylitol may be present in an amount of “1-30%” (p. 4-5, para. [0025]), as per claim 44.
Note: once processed, xylitol is a single, specific 5-carbon sugar alcohol molecule. Regardless of the raw plant material it was extracted from, the resulting molecular structure is absolutely identical.
Leren et a. teaches, “cosmetic composition comprising an extract from Inonotus obliquus (Chaga) and in particular composition comprising: (i) a chaga extract at a concentration of at least about 2.5 mg/ml” (Abstract), e.g. “0.50-5.0% (w/v)” (p. 3, para. [0034]). Chaga is used to reduce the physical signs of aging (p. 2, para. [0023]).
Qi teaches, “an oat fermented extract and preparation method thereof, and application of oat fermented extract prepared by the method in antioxidant and anti-aging cosmetic” (p. 1, Technical Field), wherein the, oat fermentation extract is added in the cosmetic amount is 0.01 to 10mg/mL (p. 10, 6th paragraph).
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to add birch sap, xylitol, chaga extract and fermented oat extract to the cosmetic formulations of Paufique for the advantage of treating acne, adding moisture, as well as reducing the physical signs of aging, as taught by Zhao et a., Leren et al. and Qi.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Walter E. Webb
/WALTER E WEBB/Primary Examiner, Art Unit 1612
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