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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-8, drawn to a composition capable of sequential photonic transfer.
Group II, claim(s) 13-16, drawn to a non-therapeutic method for skin photoprotection.
Group III, claim(s) s 17-20, drawn to a (therapeutic) method for treating the effects of solar radiation on human skin.
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a composition capable of sequential photonic transfer as claimed in instant claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Du Vernet (US 2010/0255045 A1) and Wirth (US 2014/0323950 A1) as explained in detail in Paragraph 13 below.
During a telephone conversation with Mr. Nicholas Beaulieu (attorney for applicant) on July 24, 2026, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims13-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 1 is objected to because of the following informalities: on line 7, applicant need to change “or” to --- and ---; on line 11, applicant need to change “or” to --- and ---. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: on the last line, applicant need to change “or” to --- and ---. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: on the last line, applicant need to change “or” to --- and ---. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-4, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Du Vernet (US 2010/0255045 A1) in view of Wirth (US 2014/0323950 A1).
Du Vernet teaches (claims 1, 4 and 6) a cosmetic and/or dermatological composition for treating the skin by rejuvenating the skin cells by means of the photodynamic therapy technique comprising a photosensitizing substance chosen from chlorophyll a, chlorophyll b, or chlorophyllin and further comprising aminolevulinic acid. Based on such teaching, it would have been obvious to have Du Vernet’s cosmetic/dermatological composition to comprise chlorophyll a (instant at least one organic compound capable of absorbing blue/green light and emitting red light as claimed in claim 3) and further comprise aminolevulinic acid (instant at least one photosensitive compound or a precursor thereof capable of absorbing red light and stimulating the production of reactive oxygen species as claimed in claim 4) with a reasonable expectation of success.
With respect to instant at least one organic compound capable of absorbing UVB/UVA light (280-440 nm) and emitting blue/green light (450-570 nm), which is selected from polyphenols, flavonoids, cannabinoids or combinations thereof, Du Vernet teaches (claim 11) that its composition also contains a depigmenting or lightening agent and/or an antioxidant. As examples for the depigmenting agent, Du Vernet teaches ([0036]) arbutin, glabridin, ascorbic acid or kojic acid, and as one of examples for the antioxidant, Du Vernet teaches ([0039]) phytic acid. As evidenced by Wirth ([0036] and claim 20), arbutin, glabridin, kojic acid and quercetin are known in the art as equivalently or interchangeably used as skin-lightening compounds in phototherapy for the therapeutic treatment of the skin. Wirth also teaches ([0185]) the equivalence of a metal chelating agent (such as phytic acid) and quercetin, both as antioxidants that can be used in phototherapy for the therapeutic treatment of the skin. Besides, Wirth teaches ([0198]) that quercetin is frequently mentioned as a particularly effective antioxidant and exhibits the highest antioxidant activity amongst hydroxyflavones over the entire pH range. Since Du Vernet teaches that its composition contains a depigmenting or lightening agent and/or antioxidant, it would be obvious to one skilled in the art to use quercetin (instant at least one organic compound capable of absorbing UVB/UVA light and emitting blue/green light as claimed in instant claim 2) in Du Vernet’s cosmetic/dermatological composition to function both as a skin-lightening agent and an antioxidant with a reasonable expectation of success.
Thus, Du Vernet in view of Wirth renders obvious instant claims 1-4 (since Du Vernet in view of Wirth teaches all of components claimed in instant claims 1-4, Du Vernet’s composition as modified by Wirth’s teaching would inherently be capable of sequential photonic transfer as recited in instant claim 1).
With respect to instant claim 7, Du Vernet teaches (claim 5) that its composition is in the form of a crosslinked hydrogel or gel. Thus, Du Vernet in view of Wirth renders obvious instant claim 7.
With respect to instant claim 8, as discussed above, Du Vernet’s composition is a cosmetic composition. Although Du Vernet does not list specific types of cosmetic compositions, it states ([0025]) that the purpose of its invention is to rejuvenate the skin by treating skin aging signs. It would have been obvious to one skilled in the art to apply Du Vernet’s invention (as modified by Wirth) to any of the typically known cosmetic products, such as those listed in instant claim 8 with a reasonable expectation of rejuvenating the skin by treating skin aging signs. Thus, Du Vernet in view of Wirth renders obvious instant claim 8.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Du Vernet (US 2010/0255045 A1) in view of Wirth (US 2014/0323950 A1) as applied to claim 1 above, and further in view of Decaux et al (US 2018/0071547 A1) and Wagner et al (US 2012/0230925 A1).
As discussed above, Du Vernet’s composition as modified by Wirth’s teaching comprises chlorophyll a, aminolevulinic acid and quercetin.
With respect to instant methyl aminolevulinate, Du Vernet teaches (see [0014]) that the methyl ester of aminolevulinic acid (instant methyl aminolevulinate) has a better bioavailability than aminolevulinic acid. Thus, it would be obvious to one skilled in the art to use methyl aminolevulinate (instead of aminolevulinic acid) in Du Vernet’s composition with a reasonable expectation of achieving better bioavailability.
With respect to instant morin and/or cannabidiol, Du Vernet in view of Wirth does not teach them. Decaux, which teaches ([0012], claims 45 and 48) a cosmetic method for providing skin care by phototherapy (by illuminating the skin of a subject with a light and applying a skin care active ingredient prior, during or after the illuminating step), teaches ([0115] and [0152]) the equivalence of quercetin and morin as skin care active ingredients that are flavonoid antioxidants. Furthermore, as evidenced by Wagner ([0073]), quercetin and morin are already known in the art as equivalently or interchangeably used antioxidants in cosmetic compositions. Thus, it would be obvious to one skilled in the art to use morin (instead of quercetin) as the antioxidant in Du Vernet’s composition with a reasonable expectation of success. Thus, Du Vernet in view of Wirth, and further in view of Decaux and Wagner renders obvious instant composition of claim 5 (that comprises morin, chlorophyll A and methyl aminolevulinate).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Du Vernet (US 2010/0255045 A1) in view of Wirth (US 2014/0323950 A1) as applied to claim 1 above, and further in view of Christiansen et al (US 2010/0298758 A1).
Du Vernet in view of Wirth does not teach instant limitation of claim 6. However, Du Vernet states ([0032]) that although its composition is preferably provided in the form of a crosslinked hydrogel or gel, it is also possible to use known encapsulation or vectorization techniques for providing the regulated release of its active ingredients. Furthermore, it is known in the art, as evidenced by Christiansen (see [0026]-[0028]), that photosensitizer carrier fluids may comprise a liposome preparation. The photosensitizing agent would be encapsulated in liposome vesicles. Typical liposome preparations offer excellent characteristics in terms of penetration through the stratum corneum. The small liposomes can more easily penetrate the stratum corneum and reach the cells below. Since Du Vernet teaches ([0032]) that its active ingredients should be released into the epidermis and also teaches that it is possible to use known encapsulation techniques for providing the regulated release of its active ingredients, it would be obvious to one skilled in the art to encapsulate the photosensitizing agents of Du Vernet’s composition in liposome vesicles with a reasonable expectation of achieving excellent characteristic in terms of penetration through the stratum corneum. Thus, Du Vernet in view of Wirth, and further in view of Christiansen renders obvious instant claim 6.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 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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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 .
/SIN J LEE/
Primary Examiner, Art Unit 1613
July 25, 2026
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