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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/3/2025 has been entered.
Election/Restrictions
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/30/2023.
Response to Arguments
All of Applicant arguments filed 9/3/2025 have been fully considered.
Absence of a fresh and unprocessed plant product in the ‘551 document
Applicant argues that FR’551 mentions the theoretical possibility of using a fresh, unprocessed juice but provides no practical examples or enabling disclosure. All practical examples described in Examples 1-4, pages 35-37 of the '551 document exclusively utilize processed juices.
This is not persuasive, as established by MPEP “A reference contains an "enabling disclosure" if the public was in possession of the claimed invention before the effective filing date of the claimed invention for applications or patents subject to the first inventor to file provisions of the AIA or at the time the invention was made for applications or patents subject to pre-AIA law. "Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his [or her] own knowledge to make the claimed invention." In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985).” Furthermore, as evidenced by FR’693, discussed below, a skilled artisan would know how to make and use a fresh fruit juice as claimed in a cosmetic composition.
Applicant argues that the examples of FR’551 demonstrate a clear preference for processed juices and there is no motivation or guidance to use fresh fruit juice for a skin care composition.
This is not persuasive as preferred and exemplified embodiments do not teach away from using non-preferred or non-exemplified embodiments as the prior art does not criticize or discredit the use of these alternatives, see MPEP 2123 and 2141.02. FR’551 specifically teaches that native fresh fruit juice can be used, as such its use is prima facie obvious.
Applicant argues that FR’551 is silent to the requirement of “vitamins, antioxidants and minerals” being preserved in their native state.
This is not persuasive. While FR’551 is silent to the preservation of vitamins, antioxidant and minerals, the prior art makes obvious processing the plant in the same manner claimed, the resultant material is expected to have the same materials as claimed. This is supported by FR’693 who teaches the same method of obtaining native fresh juice as taught by FR’551, however, FR’693 further teaches that the mechanical method and cold induced little or no deterioration and/or destruction of the naturally occurring active ingredients in the fruit. Applicant have provided no factual evidence showing that the fruit juice of FR’551 is different than the claimed fruit juice.
Applicant argues that FR’551 teaches reconstitution with water, but the claims require the fresh and unprocessed plant product to be the sole water source..
This is not persuasive. As discussed below, FR’551 teaches when using reconstituted juice, water is added to the freeze-dried juice to reconstitute it and the quantity of water added to the freeze-dried product advantageously equals, or at least approaches, the quantity of water eliminated. FR’551 teaches the freeze dried fruit to be present in dry amounts of 0.1-20% and a weight ratio of water and content of dry extract is 0.1-20, therefore, if using native fruit juice, the amount of native fruit juice used would be expected to be a combination of the dry content taught above and water naturally present in the fruit and given the ratios of water and dry extract content taught above, this results in a range of plant product that overlaps with the plant product being present in amounts ranging from 65-85% of the composition, this is supported by the teachings of FR’693 who teaches the use of native fresh fruit which comprises the fruit and its naturally occurring water and teaches using this type of juice in amounts ranging from 50-99%. In the alternative, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the native fresh fruit juice of FR’551 in the amounts of 50-99% as taught by FR’693 as FR’693 teaches that these amounts are suitable for use.
Absence of the combination of carrageenan, propanediol and lysine
Applicant argues that FR’551 does not teach the combination of carrageenan, propanediol and lysine as required by the instant claims and the secondary reference do not provide motivation to combine the required elements.
This is not persuasive. As discussed in the rejection below, FR’551 teaches that organic solvents such as propylene glycol (reading on propanediol) can be added (pg. 11) and FR’551 teaches that suitable thickening agents for use include lambda carrageenans and xanthan gums (pg. 6 and working examples), thus the inclusion of propanediol and carrageenan into the composition of FR’551 is prima facie obvious as its specifically contemplated. The secondary references, Watatani, JP’422 and
Kawai provide a motivation to add lysine into the composition of FR’551.
Lack of motivation to use fresh juice as the sole water source
Applicant argues that FR’551 states that the acceptable medium comprises water or a mixture of water and hydrophilic organic solvents and water can be added to achieve suitable viscosity. This is contrary to the claimed invention.
This is not persuasive. As discussed below, FR’551 does not teach the addition of additional water and teaches that the composition may comprise water and organic solvents in addition to the fruit juices and thickening polymers, thus indicating the inclusion of additional water and solvents is optional. Therefore, it would have been prima face obvious to use native fruit juice as the sole water source, in view of the teachings of FR’693 who teaches that native juice can be used in cosmetic composition comprising only the water naturally present in the fruit, additional water need not be added.
D. Difference in technical field: skin care vs. hair care
Applicant argues that FR’551 is directed to fixing and holding hair, while the claims are directed to topical skin care, and these different field prioritize different properties and would require non-trivial reformulation to adapt the gels of FR’551 for use as claimed.
This is not persuasive as it seems Applicant is arguing that FR’551 is non-analogous, however, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both FR’551 and the instant invention are directed to the same field of endeavor as they are both directed to personal care compositions comprising fresh fruit juice, thickening agents and pH adjusting agents.
While FR’551 is directed to hair care and the instant claims skin care, “skin care” is a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. MPEP 2111.02: If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. As the prior art teaches the same structural limitations, the composition of FR’551 is capable of being used to treat skin absent evidence to the contrary. Regarding applicant statement of “non-trivial reformulation,” this is unpersuasive as it is unsupported by factual evidence.
Lack of motivation to combine the references
Applicant’s argument that there is no motivation to combine the references is not persuasive as the examiner has clearly provided motivation for all the changes proposed in the rejection below and Applicant has not provided any specific arguments against these secondary references.
Applicant argues that the secondary reference do not bridge the technical gap between the focus of hair care vs skin care.
This is not persuasive for the reasons already discussed above.
Allowed European claims of comparable scope
Applicant’s remarks are not persuasive as the US application is examined on its own merits and the claims are deemed obvious over the prior art of record below.
New claims
Applicant remarks that the new claims are patentable over the prior art are not persuasive for the same reasons discussed above and the rejections presented below.
New Claim Objections
Claims 1 and 16 objected to because of the following informalities: The both recite “skin comprises” instead of “skin comprising”. Appropriate correction is required.
New 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.
Claims 1-3, 11-12, 14 and 16-21 are 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.
Claims 1 and 16 recites the limitation "the skin". There is insufficient antecedent basis for this limitation in the claim.
Claims 1-3, 11-12, 14 and 16-21 are rejected in view of their dependency on claim 1 or 16.
New 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1-3, 11-12, 14 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over FR 2968551, FR’2961693, Bold Sky, Watatani (US 5,858,337), JPH1087422 and Kawai (US 6,746,492). FR’693 is newly relied upon by the Examiner by was cited on the 2/21/2022 IDS. The Examiner is providing a copy of the machine translation relied upon below.
FR’551 teaches a composition for hair (reading on cosmetic), in the form of a gel, comprising at least one fresh fruit juice (reading on instant claims 2 and 17) and a thickening polymer. The fresh fruit juice is taught to not have undergone, after manufacture, any preservation process other than putting it in a sealed package and maintaining it at cold temperature (Pg. 2-3). FR’551 teaches that the fruit juice used can be reconstituted or it can be native juice which means the fresh fruit juice obtained after a grinding operation (reading on crushing) and a possible filtration or sieving operation (pg. 3), as such the use of native fresh fruit juice is prima facie obvious and reads on fresh and unprocessed.
FR’551 teaches that organic solvents such as propylene glycol (reading on propanediol) can be added (pg. 11). While FR’551 does not teach propanediol to be a gelling agent to provide texture, a compound and its properties are inseparable and FR’551 teaches the final composition to be a gel.
Regarding claims 3 and 18: FR’551 teaches that preferred fruit juices include lemon and teaches that mixtures can be used. While FR’551 does not teach lemon juice to be a pH regulator a compound and its properties are inseparable.
Regarding claims 1, 11 and 19: FR’551 teaches that suitable thickening agents for use include lambda carrageenans and xanthan gums (pg. 6 and working examples).
FR’551 teaches the composition to comprise a native fresh fruit juice and a polymer thickener, the juice of fresh fruit can be native or reconstituted (pg. 3). FR’551 teaches that the quantity of water added to the freeze-dried product advantageously equals, or at least approaches, the quantity of water eliminated (pg. 21).
FR’551 teaches using native or reconstituted fruit juice, however, FR’551 fails to teach how much native fruit juice is used.
FR’693 teaches a cosmetic composition for treating hair that comprises fresh fruit juice and one or more surfactants (Abs). FR’693 teaches that the fruit juice can be reconstituted or native. Native juice is that obtained after a grinding operation and possible filtration or sieving. By fresh juice it means that after manufacturing, no other preservation method other than sealing packaging and maintaining at cold temperature occurs. The fruit is not subjected to any chemical or thermal treatment that may artificially modify the intrinsic composition (pg. 2). The method requires no preparation step other than mechanical steps and “cold”. FR’693 discloses a composition comprising only the fresh fruit juice and one or more surfactants. The fresh fruit juice can be used in the composition in amounts ranging from 50-99% of the composition (pg. 3). FR’693 teaches that the method of preparation induced little or no deterioration and/or destruction of the naturally occurring active ingredients in the fruit, these include vitamins, phenolic compounds, simple sugars, etc. (pg. 4). Example 3 of FR’693 discloses a composition wherein the fresh fruit juice is obtained at room temperature by use of a squeezer, filtered and then it was mixed with cold decyl glucoside (i.e. surfactant), no external water was added, the composition is added to a bottle and applied to hair.
As discussed above, FR’551 teaches when using reconstituted juice, water is added to the freeze-dried juice to reconstitute it and the quantity of water added to the freeze-dried product advantageously equals, or at least approaches, the quantity of water eliminated. FR’551 teaches the freeze dried fruit to be present in dry amounts of 0.1-20% and a weight ratio of water and content of dry extract is 0.1-20, therefore, if using native fruit juice, the amount of native fruit juice used would be expected to be a combination of the dry content taught above and water naturally present in the fruit and given the ratios of water and dry extract content taught above, this results in a range of plant product that overlaps with the plant product being present in amounts ranging from 65-85% of the composition, this is supported by the teachings of FR’693 who teaches the use of native fresh fruit which comprises the fruit and its naturally occurring water and teaches using this type of juice in amounts ranging from 50-99%. In the alternative, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the native fresh fruit juice of FR’551 in the amounts of 50-99% as taught by FR’693 as FR’693 teaches that these amounts are suitable for use.
FR’551 does not teach the addition of additional water and teaches that the composition may comprise water and organic solvents in addition to the fruit juices and thickening polymers (pg. 10), thus indicating the inclusion of additional water and solvents is optional. Therefore, it would have been prima face obvious to use native fruit juice as the sole water source and FR’693 teaches that native juice can be used in cosmetic composition comprising only the water naturally present in the fruit, additional water need not be added.
While FR’551 is silent to the preservation of vitamins, antioxidant and minerals, the prior art makes obvious processing the plant in the same manner claimed, the resultant material is expected to have the same materials as claimed. This is supported by FR’693 who teaches the same method of obtaining native fresh juice as taught by FR’551, however, FR’693 further teaches that the mechanical method and cold induced little or no deterioration and/or destruction of the naturally occurring active ingredients in the fruit.
Regarding the “having been obtained no later than 24hrs before preparation of the cosmetic composition” as recited by instant claim 1, this is a product by process limitation and the patentability of the compositions rests in the final structure and not the manner in which the composition is made. As the prior art teaches making the fruit juice in manners described by the originally filed disclosure to be suitable (i.e. pressing, filtering and keeping cold), the fresh fruit juice of the prior art is expected to have the same structure as the claimed fruit juice. Furthermore, FR’693 teaches that the mechanical method and cold induced little or no deterioration and/or destruction of the naturally occurring active ingredients in the fruit and exemplified a composition/method wherein the fresh fruit juice is obtained immediately prior to use, therefore, it would have been prima facie obvious to obtain the fresh fruit juice and immediately use it to formulate the cosmetic composition as claimed.
However, the above references do not teach the composition to comprise carrot juice as the native fruit and does not teach lysine as required by instant claims 1 and 16.
Bold Sky teaches that carrots are highly beneficial for hair growth and help the subject achieve thicky and shiny hair (pg. 1). Apart from drinking carrot juice it can be topically applied as well (pg. 2). Bold Sky teaches that carrots can be blended with other fruits such as bananas and yogurt and applied directly to hair, the carrots prevent breakage of the hair and promote hair growth (pg. 3).
Watatani discloses hair treatment compositions for permanent waves and teaches preferred pHs ranging from 6-10 and teaches that pH levels greater than 10 produce irritation (col. 3, lines 1-10).
JP’422 teaches cosmetics that protect the hair and provide good feeling to hair. JP’422 teaches that these types of cosmetics having pH’s ranging from 2-11 and teaches that organic acids such as citric acid and lysine can be used as pH adjusting agents (pg. 20).
Kawai teaches hair treatment compositions and teaches that pH adjusting agents can be used in amounts ranging from 0.01-10%, overlapping with instant claims 14 (Kawai – claim 10).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of JP’551 with those of Bold Sky, Watatani and JP’422. One of skill in the art would have been motivated to use native carrot juice as a fruit juice in the composition of JP’422 as Bold Sky teaches that blended carrots can be topically applied to hair and it helps prevent breakage of hair and promotes growth. One of skill in the art would have a reasonable expectation of success as FR’551 teaches that fresh fruit juices can be used for hair application and Bold Sky teaches that fresh carrot can be applied to hair.
One of skill in the art would have also been motivated to ensure the pH of the composition of FR’551 ranges between 2-11 (which overlaps with the claimed 5-5.5), preferably less than 10 as greater than 10 is taught to produce irritation, with the addition of pH adjusting agents such as lysine and citric acid. This is taught to be a suitable pH range for hair cosmetics and its prima facie obvious to pursue the known options within the technical grasp of the skilled artisan formulating a composition for application to hair. One of skill in the art would have been motivated to use the pH adjusting agents, lysine and citric acid, in amounts from 0.01-10% (reading on instant claims 1, 14, 16 and 21), and optimize as need to obtain an ideal pH, as Kawai teaches that these are amounts known to be used in hair compositions and a skilled artisan would recognize these amounts to be a good starting off point when determining how much of each component to use to obtain an ideal pH.
Regarding claims 12 and 20: As discussed above, FR’551 teaches that mixtures of fruit juices can be used, thus it would have been prima facie obvious to use carrot juice combined with any of the other fruit juices, such as banana or lemon juice, as taught by FR’551 with a reasonable expectation of success.
While FR’551 is directed to hair care and the instant claims skin care, “skin care” is a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the composition of the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations. MPEP 2111.02: If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. As the prior art teaches the same structural limitations, the composition of FR’551 is capable of being used to treat skin absent evidence to the contrary.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613