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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 27, 2026 has been entered.
All previous claim rejections made under 35 U.S.C. 103 according to the Office action dated October 30, 2025 have been withdrawn in view of applicant’s amendment made to Claims 18 and 38, which excludes using any Thymus hyemalis extract.
New rejections have been made to address the amended claims and new claims.
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.
Claims 18-24 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isoda et al. (JP 5678373 B2, published on March 4, 2015) (“Isoda” hereunder).
Isoda discloses a method of administering an ATP (adenosine triphosphate) production promoter, the method comprising administering to a subject a composition comprising an aqueous extract from the aerial parts of Cistus monspeliensis. See translation, p. 5, 1st full paragraph – p. 6, 2nd full paragraph. The reference teaches that the extract is useful as the ATP production promoter, cell growth promoter and anti-aging agent, and can be formulated as cosmetic preparations including lotion, cream, make-ups, etc. See translation, p. 8, last paragraph- p. 9, last full paragraph. The reference teaches that the cosmetic composition is safe for a long-term use.
Regarding claims 18 and 29, since Isoda teaches topically applying the same non-therapeutic, cosmetic composition comprising Cistus monspeliensis to the skin without particular disorder, the method for “increasing and/or maintaining tissue homeostasis in the skin” occurs each and every time the prior art is practiced. The reference particularly teaches obtaining the extract in an aqueous extraction method; no microwave hydrodistillation is mentioned; no Thymus hyemalis or its extract is mentioned.
Regarding claim 19, Isoda teaches that the Cistus monspeliensis extract is useful in cell growth promoter, meeting the limitation “promoting cell differentiation in the skin”. As for the other effects of the extract in claims 19-23, as Isoda teaches the same method of topically applying the same cosmetic composition comprising Cistus monspeliensis to the skin, the cosmetic and non-therapeutic effects as presently claimed must inherently occur each and every time the prior art is practiced.
Regarding claims 24 and 38, Isoda teaches the extracts obtaining from Cistus monspeliensis leaves in hot water are particularly preferred. See translation, p. 5, 3rd full paragraph.
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.
Claims 30-32, 39 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Isoda as applied to claims 18-24 and 38 as above, and further in view of the teachings of the references.
Regarding claims 30-32, although Isoda does not specifically disclose the parts of the body to where the composition comprising the extract is applied, the users would have been obviously motivated to use the product to the area in which the cell growth promoting and anti-aging effects are desired. Furthermore, since the reference teaches and suggests the application of the invention to foundations, blushers, eye shadows, etc., applying such products to the targeted facial area of the skin would have been obvious.
Regarding claims 39 and 40, although Isoda does not specifically disclose the temperature of the hot water used in the extraction, it is well settled in patent law that
differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, since the reference teaches obtaining an extract from C. monspeliensis leaves by pouring hot water on dried leaves, determining the sufficiently hot and suitable temperature to use without damaging the plant material would have been well within the ordinary skill in the art.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Isoda as applied to claims 18-24 and 38 as above, and further in view of Strodth (GB 2443388 A, published on October 30, 2006).
Regarding claims 27 and 28, Isoda fails to specifically disclose the concentration of the extract in topical products.
Isoda discloses an in vitro test which shows a superior cell growth promoting activity of an extract from Cistus monspeliensis leaves compared to other plants including Rosmarinus officinalis, etc. Here, 1 gram of the plant leaves were used in 10 ml of ethanol, which is interchangeably used with water, according to Isoda. See, translation, p. 5, bridging paragraph. Isoda does not specifically disclose the concentration using the comparison test.
However, topical formulations comprising different extracts of C. monspeliensis are generally known. For example, Strodth teaches an anti-acne formulation comprising an extract of the plant in the amount of 0.0001-0.1 % w/w, which imparts anti-inflammatory effects and soothing effect to the affected area. See p. 4, lines 23 – 31. Although this extract was obtained by a vacuum microwave hydrodistillation process and expected to retain more heat sensitive compounds than the aqueous extracts of Isoda, one of ordinary skill in the art would have been able to use such disclosure as a starting point and a guidance to find a suitable concentration range of the aqueous extract to make and use the cosmetic compositions of Isoda as both inventions are directed to topical methods of using C. monspeliensis extracts to improve the appearance of skin. Since Isoda teaches the expected results of cell growth promoting effects and anti-aging effects of using the aqueous extract of C. monspeliensis, one of ordinary skill in the art would have had a reasonable expectation of successfully finding the optimal concentration range of the aqueous extract by routine experimentations,
Response to Arguments
Applicant’s arguments with respect to claims 18-24, 27-32 and 38-40 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617