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 .
Claims 1-17 are pending.
Priority
This application is a Continuation of 17824425 filed 05/25/2022, now US 12171859 B2 and which claims benefit of 63/192,771 filed 05/25/2021 and 63/251,247 filed 10/01/2021.
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 16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 has recited tripeptide and VAL-TRY-VAL and tetrapeptide as LYS-ASP-VAL-TRY. Threonine (Thr, T), tryptophan (TRP, W) and tyrosine (TYR, Y) are the three known amino acids having T in the name. It is unclear if the amino acid in the tripeptide and tetrapeptide is Threonine (Thr), tryptophan (TRP) or tyrosine (TYR).
Thus, claim 16 has not been rejected over art because of the scope of what the peptides are. Correction and/or explanation is respectfully requested.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
(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(s) 1-3, 6, 8-12 and 14 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Dreher (US 20140309173 A1).
For claims 1-3, 6 and 8-12, Dreher in one embodiment teaches a composition comprising Octanoyl Carnosine, in combination with Palmitoyl-GHK (Gly-His-Lys) which is tripeptide and GEKG (Gly-Glu-LysGly) which is tetrapeptide (paragraph [0039]-[0041], [0043]-[0046]) and coleus such as C. Forskohlii (paragraph [0258]) meeting the limitation of adipose targeting agent (AT) with the composition teaching the topical composition of claim 1. The tripeptide Palmitoyl-GHK is present at 0.001 % and the tetrapeptide GEKG is present at 0.005% (paragraph [0042] and claim 16). 0.001 % tripeptide is a species of claimed range of from about 0.0001 to about 2.0 wt% (in examined claim 2) and 0.005% tetrapeptide is a species of claimed range of from about 0.0001 to about 2.0 wt% (in examined claim 3). Dreher’s composition also contains thickening agent which includes polymers such as polysaccharides, acrylamide copolymer, carboxylic acid polymers (paragraphs [0199], [0262], [0270]-[0276]) and specifically, hydroxy-ethyl acrylate/sodium acryloydimethyl taurate copolymer (paragraphs [0362], [0365], [0367], [0368], [0373], [0383], [0396]) which is a copolymer with acryloydimethyl tauratemonomers meeting the requirement of examined claims 8 and 9. Dreher's composition also contains polymer film former (paragraph [0199]) meeting claim 10, and coleus such as C. Forskohlii (paragraph [0258]) meeting the limitation of adipose targeting agent (AT) of claim 6. Dreher’s composition also contains one or more suitable emollients namely octyldodecanol (paragraph [0283]) which is a C20 alkane compound meeting the alkane of examined claims 11-12.
For claim 14, Dreher teaches applying its composition to subject’s skin to improve the appearance of aged skin (paragraphs [0002], [0007], [0016], [0046]-[0048], [0050], [0055], [0181], [0313]-[0314], [0419], [0421]) and specifically face, neck, scalp, hand, palm, leg, arm, foot, sole, chest, breast, back, abdomen and buttock (paragraph [0307] are named as areas the composition is applied which meets the requirement of claim 14. The comprising language is open.
Dreher teaches that carnosine is an antioxidant in its composition (paragraph [0162]) and also that its composition contains antioxidant in amounts of 0.001% to about 25%; vitamin C, and vitamin E are some of the antioxidants listed (paragraph [0226]-[0227]).
Therefore, Dreher teaches claims 1-3, 6, 8-12 and 14.
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 (i.e., changing from AIA to pre-AIA ) 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, 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) 1, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dreher (US 20140309173 A1) in view of CASSIN (US 20100197805 A1).
Claim 10 depends on claim 1. Claim 11 depends on claim 10.
Claims 1 and 10 have been described above to be anticipated by Dreher. While Dreher teaches its composition to contain film forming polymer (paragraph [0199]), Dreyer fails to teach the silicone containing compound as a film former. However, it is known in the prior art that cosmetic composition containing silicone polyamide block copolymer or polyorganosiloxane improves the surface appearance of skin and reduces visible and/or tactile irregularities of the skin (see the title, abstract and paragraphs [0010] and [0029] of CASSIN).
Therefore, at the effective date of the invention, the artisan looking to CASSIN would be
motivated to use polyorganosiloxane as a specific film forming polymer with a reasonable
expectation of predictably improving surface appearance of skin and reduction of visible/tactile
irregularities of the skin.
Therefore, Dreher in view of CASSIN renders claim 11 prima facie obvious.
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dreher (US 20140309173 A1) in view of DILLMANN et al. (US 20180255834 A1).
Claim 7 depends on claim 1.
Dreher has been described above as teaching all the elements of claim 1 in that Dreher in one embodiment teaches a composition comprising Octanoyl Carnosine, in combination with Palmitoyl-GHK (Gly-His-Lys) which is tripeptide and GEKG (Gly-Glu-LysGly) which is tetrapeptide (paragraph [0039]-[0041], [0043]-[0046]) and coleus such as C. Forskohlii (paragraph [0258]).
Dreyer’s composition does not contain antioxidant Zingiber Officinale Root Extract OR ginger root extract as required by claim 7.
However, Zingiber Officinale Root Extract OR ginger root extract is known to have antiaging effect (paragraph [0065] of DILLMANN).
Therefore, at the effective date of the invention, the artisan looking to DILLMANN
would be motivated to add Zingiber Officinale Root Extract OR ginger root extract to the
composition of Dreher for application to skin with a reasonable expectation of predictably
improving surface appearance of skin with regards to the aging of the skin since Zingiber Officinale Root Extract OR ginger root extract is an anti-aging compound.
Therefore, Dreher in view of DILLMANN renders claim 7 prima facie obvious.
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dreher (US 20140309173 A1) in view of Yarkent et al., “Potential of microalgal compounds in trending natural cosmetics: A Review” in Sustainable Chemistry and Pharmacy 2020 pp 1-11.
Claim 4 depends on claim 1. Dreher has been described above to teach claim 1.
Dreher has been described above to teach the composition of claim 1 by teaching composition comprising Octanoyl Carnosine, in combination with Palmitoyl-GHK (Gly-His-Lys) which is tripeptide and GEKG (Gly-Glu-LysGly) which is tetrapeptide (paragraph [0039]-[0041], [0043]-[0046]) and coleus such as C. Forskohlii (paragraph [0258]).
The composition of Dreher differs from the composition of claim 4 because Dreher’s composition does not contain botanical extract that comprises chlorella vulgaris extract as required by claim 4.
However, Yarkent teaches that chlorella vulgaris extract has been known to stimulate collagen synthesis, give support to skin tissue and increase rebirth of new tissue and protect skin and neutralize inflammation and improve skin’s natural protection (See Table 4 and first full paragraph of left column of page 2).
Therefore, before the effective date of the invention, the ordinary skilled artisan would be motivated to add chlorella vulgaris extract as taught by Yarkent in the composition of Dreher with the expectation of predictably boosting collagen formation in skin, protecting the skin and to improve skins natural protection.
Thus, Dreher in combination with Yarkent renders claim 4 prima facie obvious.
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dreher (US 20140309173 A1) in view of LEVY (WO 2012171106 A1).
Claim 5 depends on claim 1. Dreher has been described above to teach claim 1.
Dreher has been described above to teach the composition of claim 1 by teaching composition comprising Octanoyl Carnosine, in combination with Palmitoyl-GHK (Gly-His-Lys) which is tripeptide and GEKG (Gly-Glu-LysGly) which is tetrapeptide (paragraph [0039]-[0041], [0043]-[0046]) and coleus such as C. Forskohlii (paragraph [0258]).
The composition of Dreher differs from the composition of claim 5 because Dreher’s composition does not contain botanical extract that comprises melissa officinalis leaf extract as required by claim 5.
However, LEVY teaches composition that improves skin appearance, the composition comprises melissa officinalis leaf extract, peptides, vitamins, aloe juice (see the whole document with emphasis on last full paragraph of page 9, page 10, Example 2/Table 1 at pages 21-22, Table 2 at page 23 and page 25).
Therefore, before the effective date of the invention, the ordinary skilled artisan would be motivated to add melissa officinalis leaf extract as taught by LEVY in the composition of Dreher with the expectation of predictably improving skin appearance.
Thus, Dreher in combination with LEVY renders claim 5 prima facie obvious.
Claim(s) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dreher (US 20140309173 A1) in combination with Yarkent et al., “Potential of microalgal compounds in trending natural cosmetics: A Review” in Sustainable Chemistry and Pharmacy 2020 pp 1-11 and LEVY (WO 2012171106 A1).
For claim 15, Dreher in one embodiment teaches a composition comprising Octanoyl Carnosine, in combination with Palmitoyl-GHK (Gly-His-Lys) which is tripeptide and GEKG (Gly-Glu-LysGly) which is tetrapeptide (paragraph [0039]-[0041], [0043]-[0046]) and coleus such as C. Forskohlii (paragraph [0258]) meeting the limitation of adipose targeting agent (AT). The tripeptide Palmitoyl-GHK is present at 0.001 % and the tetrapeptide GEKG is present at 0.005% (paragraph [0042] and claim 16). 0.001 % tripeptide is a species of claimed range of from about 0.0001 to about 2.0 wt% (item (i) of examined claim 15) and 0.005% tetrapeptide is a species of claimed range of from about 0.0001 to about 2.0 wt% (item (ii) of examined claim 15). Dreher’s composition also contains thickening agent which includes polymers such as polysaccharides, acrylamide copolymer, carboxylic acid polymers (paragraphs [0199], [0262], [0270]-[0276]) and specifically, hydroxy-ethyl acrylate/sodium acryloydimethyl taurate copolymer (paragraphs [0362], [0365], [0367], [0368], [0373], [0383], [0396]) which meets the one or more thickening agent, item (vii) of claim 15. Dreher's composition also contains polymer film former (paragraph [0199]) meeting item (viii) of claim 15; and coleus such as C. Forskohlii (paragraph [0258]) meeting the limitation of adipose targeting agent (AT) item (v) of claim 15. Dreher’s composition also contains one or more suitable emollients namely octyldodecanol (paragraph [0283]) which is a C20 alkane compound meeting the alkane of item (ix) examined claim 15.
Dreher teaches that carnosine is an antioxidant in its composition (paragraph [0162]) and also that its composition contains antioxidant in amounts of 0.001% to about 25%; vitamin C, and vitamin E are some of the antioxidants listed (paragraph [0226]-[0227]) and the antioxidant meets the requirement for antioxidant in item (vi) of examined claim 15.
Dreher differs from claim 15 by not teaching one or more extracellular matrix (ECM) agents such as chlorella vulgaris extract and one or more cellular recycling (CR) agents such as melissa officinalis leaf extract.
However, chlorella vulgaris extract has been known in the prior art to stimulate collagen synthesis, give support to skin tissue and increase rebirth of new tissue and protect skin and neutralize inflammation and improve skin’s natural protection (See Table 4 and first full paragraph of left column of page 2 of Yarkent). Further also, it is known in the prior art that composition comprising melissa officinalis leaf extract, peptides, vitamins, aloe juice (see the whole document with emphasis on last full paragraph of page 9, page 10, Example 2/Table 1 at pages 21-22, Table 2 at page 23 and page 25 of LEVY) improves skin appearance.
Therefore, before the effective date of the invention, one of ordinary skill in the art would reasonably expect that addition of chlorella vulgaris extract (ECM agent) and melissa officinalis leaf extract (CR agent) to the composition of Dreher would be reasonably expected to predictably improve skin appearance, stimulate collagen synthesis, give support to skin tissue and increase rebirth of new tissue and protect skin and neutralize inflammation and improve skin’s natural protection as clearly taught in LVEY and Yarkent.
For claim 17, Dreher teaches applying its composition to subject’s skin to improve the appearance of aged skin (paragraphs [0002], [0007], [0016], [0046]-[0048], [0050], [0055], [0181], [0313]-[0314], [0419], [0421]) and specifically face, neck, scalp, hand, palm, leg, arm, foot, sole, chest, breast, back, abdomen and buttock (paragraph [0307] are named as areas the composition is applied which meets the requirement of claim 17. The comprising language is open.
Therefore, Dreher in combination with Yarkent and LEVY renders claims 15 and 17 prima facie obvious.
Double Patenting
The non-statutory 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 non-statutory double patenting rejection is appropriate where the conflicting claims 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); 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 non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12171859 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition used in the issued method teaches all the elements of the composition of the examined claims.
Claims 1-17 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-3 and 8-17 of co-pending Application No. 17574893 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending topical composition teaches all the elements of the composition of the examined claims.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 26-30 and 36 of co-pending Application No. 18458248 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending composition comprising tripeptide, tetrapeptide, vitamin c (antioxidant), bisbenzylisoquinoline alkaloid (cellular recycling agent, CR), vitis vinifera flower cell extract (adipose targeting, AT), nelumbo nucifera germ extract (extracellular matrix (ECM) agent, xanthophyll (botanical antioxidant) teaches the examined composition in examined claims 1-3. The comprising language is open.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
No claim is allowed.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Yong Kwon can be reached at 5712720581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613
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