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 .
Status of Claims
The amendments and arguments filed on 09/05/2025 are acknowledged and have been fully considered. Claims 1, 6, and 8-12 are now pending. Claims 2-5, 7, and 13-14 are canceled; claim 1 is amended.
Claims 1, 6, and 8-12 will be examined on the merits herein.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 09/05/2025 has been considered here.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 05/07/2025 since the art that was previously cited continues to read on the amended and previously recited limitations.
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.
Claims 1, 6, and 8-12 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by KR 101124968 B1 (“Face shop,” 2012; as submitted on IDS of 06/04/2021; machine translation provided from PE2E via FIT) as evidenced by US PGPUB 20190046432 A1 (Royer, 2019). [emphasis added to reflect current claims]
In regards to claims 1, 6, and 11, Face shop teaches a method of inhibiting stem cell factor by applying a cosmetic composition comprising Pinus strobus bark extract to the skin (i.e., keratinocytes) (see Face shop, abstract). It is taught that the composition inhibits the productin of melanin (see Face shop, page 5, paragraph 4). The cosmetic compound is taught to be in the form of a lotion, cream, or foam, among other forms (see Face shop, page 4, paragraph 2; page 6, paragraph 5). The Pinus strobus bark extract is prepared by dissolving the extract in ethanol (i.e., an aqueous extract) (see Face shop, page 7, “Preparation Example 2 Preparation of Strobe Pine Bark Extract”). The composition is taught to inhibit the stem cell factor of keratinocytes (see Face shop, pages 8-9, “Experimental Example 2”). Face shop further teaches that the method of extraction is one that is known in the art, preferably hot water extraction (see Face shop, page 5, paragraph 9). As hot water extraction is a method that is known in the art, one with ordinary skill in the art would understand that this includes using the method of hot water extraction taught by Royer, especially as the extract is taught to be used on keratinocytes (see Royer, example 5) and is in the form of a lotion, gel, cream, foam, or ointment (see Royer, paragraph 0071). Royer teaches a method of extracting an extract from plant bark comprising drying and grinding the bark, adding distilled water according to a volume ratio raw material: water of about 1:16 (v/v), bringing the mixture to 85°C and extracting for 1 hour and dried to a powder (see Royer, paragraphs 0098-0110). In regards to claim 8, the powder is taught to be dissolved in glycerin in about 1% to about 10% by weight of dried extract in glycerin (i.e., 90-99% glycerin) (see Royer, paragraph 0073). This method of formulating an extract is substantially identical to the method of forming an extract as the instant specification (see instant specification as filed, paragraphs 0012 and 0026).
As such, in regard to claims 9-12, as the method of hot water extraction of Royer is substantially identical to the method of extraction of the instant invention, MPEP §2112.01(I) states that “[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In the instant case, the prior art discloses the process employed by Applicants. A person of ordinary skill in the art would reasonably expect the same process to have the same properties (i.e., concentrations/amounts of components) as instantly claimed. Stated another way, the extract that is prepared using the teachings of Face shop and Royer would be expected to have the same compositional breakdown as instantly claimed because the method of extraction is substantially identical. “The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957). However, when the claim recites using an old composition or structure and the "use" is directed to a result or property of that composition or structure, then the claim is anticipated. In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978).” See MPEP 2112.02(II). Specifically, in regards to the use of the extract as an active agent for decreasing protein carbonylation in skin keratinocytes, the claimed composition, as prepared by Applicants, is disclosed, as is the exact method of its use (i.e., application to keratinocytes). Therefore, it would be understood and expected by one with ordinary skill that if the composition is used as instantly claimed, then the behavior of the composition on keratinocytes would be the same as taught in the instant claims as well.
Response to Arguments
Applicant's arguments filed 09/05/2025 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regard to applicant’s arguments that the Face Shop as evidenced by Royer fails to anticipate the claimed invention because Face Shop doesn’t teach all of the limitations of the claimed invention that are arranged or combined in the same way as recited in the claim, it is pointed out that Face Shop is silent on the exact method of the instant claims however it also teaches that the method of extraction is one that is known in the art, preferably hot water extraction (see Face shop, page 5, paragraph 9; note that these citations are from the machine translation of Face shop attached with the PTO-892 of
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03/13/2024). Page 5 of Face Shop is shown below with the relavant portion highlighted.
In regards to applicant’s argument that Face shop does teach the exact method of the claims explicitly or inherently, it is pointed out that Royer is used as an evidentiary reference as an example of hot water extraction that would be known to one with ordinary skill in the art as it is a hot water extraction method for plant bark. Further, it is worth noting that the method of Royer is substantially the same as the method that is instantly claimed. Further, applicant argues that Royer does not teach Pinus strobus bark or the uses of its extracts, however it is pointed out that it is used as a reference to expand on the fact that hot water extraction for plant material is a known technique in the art. In this case, it is used specifically for extracting material from a ground plant bark. One with ordinary skill in the art would understand that the method of Royer would be able to be used with the teachings of Face Shop as Face Shop clearly teaches hot water extraction as a feasible method of extraction. Because of this, one with ordinary skill in the art would be able to anticipate the instantly claimed method because it is well known in the art.
In regards to applicant’s arguments that the method of extraction taught in Face Shop is an ethanol extraction method and that it teaches away from using a higher temperature for the extraction, it is pointed out that "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). In the instant case, it is taught that hot water extraction is an acceptable method of extraction as well. Applicant also mentions that Face Shop gives a clear teaching and direction that one should use ethanol extraction (i.e, “and preferably ethanol is used”), however it is pointed out that it is also taught that hot water extraction is preferred, as shown in the highlighted section above.
Applicant presents arguments against obviousness of combining Face Shop in view of Royer, however the rejection of anticipation is maintained and as such the arguments are moot. Applicant further argues that the method of Royer is used for plant species that are different than instantly claimed. It is pointed out again that Royer is being referenced as an evidentiary reference as an example of hot water extraction that would be known to one with ordinary skill in the art as it is a hot water extraction method for plant bark.
First, it is worth noting that a declaration of unexpected results is not sufficient to overcome a 102 anticipation rejection. With this in mind, the points following are included to show that unexpected results have not been established. Applicant is reminded that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, as written the claims do not recite any amounts of the glycerin, water, or extract that are used in the composition, other than the final amount of the extract in the topical composition. While there are multiple ranges taught in the specification as instantly filed (see paragraph 0012), none of those amounts are taught in the claims and as such the claims are not commensurate in scope with the data and the specification as filed. In other words, it has not been established by the data that any amount of the extract will be able to achieve the results that are discussed in the declaration and specification as filed. Further, as mentioned above, it would be an expected benefit that a composition comprising glycerin and the Pinus strobus bark would have beneficial effects on the skin as that is what both compounds are known to do.
For these reasons, the rejections are maintained over the instant claims.
Conclusion
No claims 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.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611