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 .
Applicant’s claim amendment and arguments filed on June 22, 2026, has been received and fully considered.
All previous claim rejections made in the Office action dated March 25, 2026, have been withdrawn in view of the claim amendment.
New rejections have been made to address the amended claims.
Election/Restrictions
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22, 43 and 45 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Newly amended claims 22, 43 and 45 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Group I, claims 18, 19, 24, 27, 28, 30-32, 38-42. 44 and 46-47 are directed to a cosmetic method for
Group II, claims 22, 43 and 45 are directed to a cosmetic method for reducing hair loss and/or improving the surface appearance of the hair and/or reducing water losses in the scalp and/or the hair and/or preventing the dehydration thereof comprising topically applying to an area of healthy scalp and/or healthy hair an effective amount of an extract of the aerial parts of Cistus monspeliensis or of a cosmetic composition containing it wherein the extract of Cistus monspeliensis is an aqueous extract obtained in water as the sole solvent, wherein the extraction is not performed using microwave hydrodistillation and wherein the extract of C. monspeliensis is not used in combination with Thymus hyemalis or an extract thereof and the cosmetic composition does not contain any Thymus hyemalis or an extract thereof, classified in A61Q 7/00 {Preparation for affecting hair growth}.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related but distinct processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different mode of operation, function or effect as the targeted area of the skin are different, and improving the appearance of the skin or barrier function is materially different from improved hair growth or reducing hair loss. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 44 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 44 depends on claim 38 and recites, “wherein the extract of Cistus monspeliensis is an extract of the leaves.” Since claim 38 specifically requires the use of “an effective amount of an extract of the leaves of Cistus monspeliensis or of a cosmetic composition containing it”, claim 44 fails to further limit the base claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 19 and 24 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).
Amended claim 18 is directed to a cosmetic method for cosmetic composition containing it wherein the extract of Cistus monspeliensis is an aqueous extract obtained in water as the sole solvent, wherein the extraction is not performed using microwave hydrodistillation and wherein the extract of C. monspeliensis is not used in combination with Thymus hyemalis or an extract thereof and the cosmetic composition does not contain any Thymus hyemalis or an extract thereof.
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 cosmetic composition is safe for long-term use.
Regarding claim 18, since Isoda teaches topically applying the same non-therapeutic, cosmetic composition comprising Cistus monspeliensis to the skin that is aging and without a particular disorder, it is viewed that the disclosed method is equivalent to the presently claimed topical application each and every time the prior art is practiced on the aging skin. 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, 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 claim 24, 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
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.
Claims 30-32, 38, 39, 40, 44 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Isoda as applied to claims 18, 19, 24 and 38 as above, and further in view of the teachings of the references.
Regarding claims 30-32 and 47, 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 claim 38, Isoda teaches that the composition comprising cistus monspeliensis is effective in treating aging skin, such skin condition would have a “dull and/or sallow complexion”, unless shown otherwise. Isoda further teaches the extracts obtaining from Cistus monspeliensis leaves in hot water are particularly preferred. See translation, p. 5, 3rd full paragraph. See also present claim 44.
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, 28 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Isoda as applied to claims 18, 19, 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,
Regarding claim 46, Stroth further teaches that conventional excipients such as thickening agents (e.g., cetyl alcohol) are used in a concentration ranging from 0.1 to 5 % w/w. See p. 10, lines 4 – 15. In view of such teachings, adding a thickening agent in such range to the Isoda composition to make a topically applicable product would have been prima facie obvious.
Claims 41 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Isoda as applied to claims 18, 19, 24 and 38 as above, and further in view of Hong et al. (KR 101389471 B1, published on April 28, 2014) (“Hong” hereunder).
Isoda fails to teach maltodextrin.
Hong teaches that spray drying a plant extract with maltodextrin as a carrier is well known in food and cosmetic art. The reference teaches that adding maltodextrin in the prepared solution and using a spray dryer microencapsulates the extract and produces spray-dried powder with good flowability and storage safety. See translation, p. 2-3, bridging paragraph.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the teachings of Isoda and microencapsulate the extract of C. monspeliensis in maltodextrin as motivated by Hong, as the latter teaches and suggests that spray drying a plant extract using maltodextrin as a carrier results in a microencapsulated extract powder with good flowability and storage stability. As both references teach plant extracts suitable for consumable goods and cosmetics the skilled artisan would have had a reasonable expectation of successfully combining the teachings of the references and producing stable microencapsulated C. monspeliensis with improved stability and easier handling.
Response to Arguments
Applicant’s arguments with respect to claims 18, 19, 24, 27, 28, 30-32, 38-42, 44 and 46-47 have been considered but are moot in view of the new grounds of rejections as indicated above.
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 GINA JUSTICE whose telephone number is (571)272-8605. The examiner can normally be reached M-F 9:00 AM - 5 PM.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GINA C JUSTICE/Primary Examiner, Art Unit 1617
Prosecution Insights