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 .
Response to Amendment
The amendment filed 08/05/2026, amending claim(s) 1 and cancelling claim(s) 2-4 is acknowledged. Claim 1 are pending and under examination. Applicant’s amendments to the claims have overcome each and every 112(a) and 112(b) rejection previously set forth in the Non-Final Office Action mailed 04/07/2026.
Priority
This application is a continuation of application 16/972,792 filed on 12/07/2020, now abandoned. Acknowledgement is also made to PCT/KR2019/006578 filed 5/31/2019 and KR10-2018-0064704 filed 6/4/2018. Applicant’s claim for the benefit of a prior-filed foreign application KR10-2018-0064704 filed 6/4/2018 under 35 U.S.C. 119(b) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 (certified copy found with 16/972,792).
It is noted that the Applicant cannot rely upon the certified copy of the foreign priority application to overcome a rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Drawings
The drawing filed 085/2026 is accepted.
Specification
The specification filed 11/06/2024 is accepted.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong et al. (KR 10-2013-010999 A, published 09/02/2015, reference (a) under “Foreign Patent Documents” in the IDS submitted 11/06/2024; English translation found in 16/972,792 application history).
Regarding claim 1, Hong et al. discloses a manufacturing method of a cosmetic composition comprising neural stem cell (NSC) culture fluid for the purpose of skin whitening (Abstract). Additionally, Hong discloses the purpose of skin whitening in response to hyperpigmentation caused by ultraviolet rays and free radicals (pg. 3, “Background Art”; pg. 4, para 3). Hong discloses the neural stem cells used are adult neural stem cells extracted from the ventricular zone of the brain (pg. 13, para 2). The NSCs are then immortalized (pg. 13, para 2; Claim 10). The immortalized NSCs are then cultured in a non-inducing medium (i.e., DMEM), resulting in a neural stem cell conditioned medium that can be separated from the cells and used in the cosmetic composition (Abstract; pg. 8, para 4; Claim 9).
Although Hong et al. is silent on the method conditioned medium being a composition for inhibiting the production of reactive oxygen species in skin tissue caused by ultraviolet ray or for repairing DNA damage and comprising TIMP-1 and TIMP-2, Hong et al. recites an identical method for preparing a NSC conditioned medium. Hong et al. and the instant claim 1 share the same active steps comprising the same components. Therefore, the method of Hong et al. inherently must produce the same results of the instant method and comprise TIMP-1 and TIMP-2 as active ingredients. Additionally, absent evidence to the contrary, the method disclosed by Hong et al. would inherently be able to carry out functions such as inhibiting the activity of MMP-1, MMP-2, MMP-3, and MMP-9, and restore collagen and elastin in the skin tissue, thereby alleviating the skin wrinkles or enhancing the skin elasticity in the skin tissue that has been exposed to ultraviolet B (UVB) radiation (as reciting a functional outcome of the claimed invention does not further limit the claimed method, as it does not limit the structure (i.e., steps) of the claimed invention).
Response to Arguments
Applicant's arguments filed 08/05/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the composition of Hong is for the prevention or treatment of hyperpigmentation disease, i.e. skin whitening while the claimed method is for alleviating skin wrinkles or enhancing skin elasticity in skin tissue exposed to UVB radiation, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The Applicant argues Hong achieves a whitening effect by inhibiting expression of TRP-1, TRP-2, MITF, and beta-catenin, which are entirely unrelated to skin wrinkles or skin elasticity. This argument is not persuasive because the resulting expression is a functional outcome of the structure, i.e. active method steps. The resulting expression does not further limit the structure of the method.
In response to applicant's argument that the claimed method results in a new and unpredictable use of a known composition, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The Applicant argues that there is no teaching, suggestion, or reasonable expectation that the same medium (i.e., as disclosed in Hong) would also alleviate skin wrinkles or enhance skin elasticity through the entirely distinct TIMP-1/TIMP-2-MP-collagen/elastin pathway recited in the claims. This argument is not persuasive because the Applicant fails to distinctly point out or provide evidence as to why the method of Hong, which discloses the same method steps as the claimed method, would not produce the same results.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON M JOHNSON whose telephone number is (703)756-1396. The examiner can normally be reached Monday-Friday 9am-5pm.
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/ALLISON MARIE JOHNSON/Examiner, Art Unit 1638
/ROBERT M KELLY/Primary Examiner, Art Unit 1638
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