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 .
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 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.
Claim Status
Claims 1 and 8 are cancelled.
Claims 2-7 and 9-12 are examined on the merits in this prosecution.
CLAIM REJECTIONS
Obviousness Rejections
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1) Claims 2, 5-7, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Aurrens (FR 2948023 A1, published 01/21/2011, citations herein are from the English translation provided by EPO, of record), in view of Delbard (US 2020/0178431 A1, of record) and, optionally, Kim (“Enhancement of Keratinocyte Differentiation by Rose Absolute Oil,” Ann Dermatol, Vol. 22, No. 3, 2010, 255-261).
Aurrens teaches a rose essential oil (Abstract). Aurrens teaches “cosmetic compositions based on natural compounds [such as rose essential oil] which make it possible to effectively ensure a proven anti-aging effect at the level of skin cells, and which in particular make it possible to prevent (i.e. inhibit or, at the very least, delay) the effects of aging of dermal cells.” (See pg 1: 13-14 and 31-34). Aurrens teaches “rose essential oil” as comprising “a very complex mixture comprising more than 200 components, among which the majority constituents by mass are generally geraniol, citronellol, nonadecane, nerol, linalool, phenylethyl alcohol, heneicosane. geranyl acetate, citronellyl acetate, alpha pinene. methyl eugenol, farnesol, eugenol, myrcene. eicosane, alpha terpineol and pentadecane” (pg 2: 41-60).
For claim 2, Aurrens teaches: “It generally takes around 4 tons of fresh flowers to obtain 1 kg of rose essential oil.” See pg 2: 47-48
For claim 5, Aurrens teaches the claimed amount of extract:
To ensure this effect of inhibiting and/or delaying the visible appearance of skin aging phenomena, it is preferable that the Rose essential oil is applied in the form of a cosmetic composition and that the cosmetic composition as used in the context of the invention has a Rose essential oil content of at least 0.001 % by mass, and more preferably at least 0.005% by mass relative to the total mass of the cosmetic composition. Thus, according to an advantageous embodiment, a cosmetic composition as used in the context of the invention comprises Rose essential oil at a rate of 0.001% to 1% by weight relative to the total weight of the composition
(See pg 3: 84-108).
Aurrens also teaches the cosmetic composition may be presented in the form of an ointment, a cream, an oil, an aqueous or hydroalcoholic lotion, a milk, an ointment, a powder, a soaked pad, a solution, a gel, a spray, a lotion, or a suspension (pg 5: 195-199), and may comprise an antioxidant or a preservative agent (pg 5: 8-15).
For claim 7, Aurrens teaches:
the essential oil of Rose used in the context of the invention, de facto limits the visible effects of the degradation generally observed during cellular aging, in particular the loss of biomechanical qualities
(compressibility, stretchability, deformability, etc.) of the skin, in particular the dermis; skin ptosis (sagging of skin tissues, in particular the dermis); the formation of more or less marked wrinkles; the loss of skin radiance; and/or the loss of uniformity of complexion, skin color and/or skin texture
(See pg 3: 77-83).
For claim 11, Aurrens teaches the extract comprises geraniol, citronellol, and nerol (pg 2: 41-60).
Aurrens does not teach the limitation of “said rosebush is a hybrid obtained by crossing the varieties Meichibon x Delgramaue,” nor the newly added limitation regarding the functional capabilities of the composition recited in claim 5 or the method recited in claim 6.
Delbard and, optionally, Kim, teach the missing elements of Aurrens.
Delbard teaches a new variety of floribunda rose plant, referred to as “Delflobla”, which is a cross of the varieties Meichibon and Delgramaue (Abstract, pg 1, [0004]). Delbard teaches the fragrance is: “Strong with different notes; notes of top are rose, grapefruit, citrus (agrumes); notes of heart are apricot, litchi; and notes of base are some green notes” (pg 3, [0062]). Delbard also teaches
The person of ordinary skill would have had a reasonable expectation of success in selecting Delbard's rosebush hybrid, obtained by crossing the varieties Meichibon x Delgramaue, as the rosebush in Aurrens’ cosmetic composition and method of treating skin because Aurrens teaches a composition and method for treating skin with rose essential oil wherein the treatment is useful for alleviating the effects of chronological and/or photo-induced aging and Delbard teaches the rosebush hybrid obtained by crossing the varieties Meichibon x Delgramaue has a strong fragrance with notes including rose, grapefruit, citrus, apricot, litchi, and some green notes. The person of ordinary skill in the art would have found it obvious to substitute the rosebush hybrid of Delbard for the rose varieties taught by Aurrens because ordinarily skilled artisans would have predicted that the Delbard variety would comprise a significant quantity of essential oil based on the strong fragrance and would further comprise a significant assortment of essential oil chemical components base on the oil’s complex array of fragrance notes.
Regarding the newly added limitation to claims 5 and 6 of:
wherein said composition is capable to:
- improve epidermal regeneration in the keratin material, and/or
- promote or reinforce the cicatrization in the keratin material, and/or
- promote or reinforce the reepithelialization in the keratin material, and/or
- improve migration of keratinocytes in the keratin material, and/or
-reduce or delay or prevent the accumulation of damaged epidermal cells in the keratin material,
since the composition of the combination of Aurrens and Delbard appears to overlap with the claimed composition, and the applicant does not argue that the combination of Aurrens and Delbard overlaps with the claimed composition, the skilled artisan would have expected that the composition of the combination of Aurrens and Delbard would have had the same functional properties as that which is instantly claimed. Something which is old (e.g. the composition of Aurrens, as modified by Delbard) does not become patentable upon the discovery of a new property (e.g. the ability to regenerate or heal the skin), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
Alternatively, Kim teaches rose absolute oil increases keratinocyte differentiation in the skin (pg 255, “Conclusion”). Kim teaches enhancing keratinocyte differentiation may also increase wound healing (reading on “promote or reinforce the cicatrization of the keratin material”) and skin regeneration (paragraph spanning pgs 255 and 256).
As such, the person of ordinary skill would have had a reasonable expectation of success in utilizing the rose oil taught by the combination of Aurrens and Delbard for the treatment of one or more of the skin conditions set forth in the newly added limitation to claims 5 and 6 since Kim teaches rose absolute oil increases keratinocyte differentiation in the skin which may lead to increased wound healing and skin regeneration. It is noted that there is no evidence on the record that the rose oil produced from plants of the cross of the varieties Meichibon x Delgramaue possess any properties not present in the rose oil taught by Kim.
2) Claims 3-4 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Aurrens (cited above), in view of Delbard (cited above), optionally Kim (cited above), and Lavoine-Hanneguelle (US 2013/0338241 A1, of record).
The teachings of Aurrens, Delbard, and, optionally Kim, are discussed above.
The combination of Aurrens, Delbard, and, optionally Kim, does not teach the extraction method comprising a mixture of a supercritical CO2 and an alcoholic solvent or a composition resulting therefrom.
Lavoine-Hanneguelle teaches the missing elements of the combination of Aurrens, Delbard, and, optionally Kim.
Lavoine-Hanneguelle teaches a method of obtaining a scented extract from fresh flowers, flowering heads and/or leaves of a rose bush, as well as the resulting composition. The method includes picking the flowers, flowering tops and/or leaves of the plant and infusing them in a bath comprising an alcoholic solvent, at a temperature below 50° C., to obtain an alcoholic mixture. The alcoholic mixture is then filtered to recover an alcoholic floral infusion. The method further includes performing a supercritical CO2 extraction of the alcoholic floral infusion to obtain a scented extract. Lavoine-Hanneguelle teaches the extract can be used in a perfume or cosmetic composition (Abstract; pg 1, [0001]). Lavoine-Hanneguelle teaches the rose extract is obtained from flowers, flowering tops and/or leaves of the plant (Abstract). Lavoine-Hanneguelle teaches the extract can be utilized in a cosmetic composition (Abstract).
For claims 3 and 9, Lavoine-Hanneguelle teaches an alcoholic mixture is obtained from the plant parts and a supercritical CO2 extraction of the alcoholic floral infusion is carried out (Abstract).
For claims 4 and 10, Lavoine-Hanneguelle teaches the method includes infusing the rose flowers, flowering tops and/or leaves of the plant and in a bath comprising an alcoholic solvent at a temperature below 50° C. (Abstract).
The person of ordinary skill would have had a reasonable expectation of success in selecting Delbard's rosebush hybrid obtained by crossing the varieties Meichibon x Delgramaue as the rosebush in the composition and method of the combination of Aurrens, Delbard, and, optionally Kim, because Lavoine-Hanneguelle teaches a method of obtaining a rose extract useful to obtain a fragrant extract from fragile flowers such as roses, and Delbard teaches the rosebush hybrid obtained by crossing the varieties Meichibon x Delgramaue has a strong fragrance with notes including rose, grapefruit, citrus, apricot, litchi; and some green notes. It is further noted that one of ordinary skill would be motivated to substitute the supercritical carbon dioxide/alcohol extraction method of Lavoine-Hanneguelle for the hydrodistillation method of Aurrens because the hydrodistillation method only extracts volatile compound from the rose petals, while the supercritical carbon dioxide/alcohol extraction method of Lavoine-Hanneguelle would be expected to extract compounds of lesser volatility. Furthermore, the supercritical carbon dioxide/alcohol extraction method of Lavoine-Hanneguelle can be optimized to solubilize desired chemical compounds by changing temperature, pressure, and ratio of supercritical carbon dioxide to alcohol in the extraction medium.
3) Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Aurrens (cited above), in view of Delbard (cited above), optionally Kim (cited above), and Mori (US 2013/0149399 A1).
The teachings of Aurrens, Delbard, and, optionally Kim, are discussed above.
The combination of Aurrens, Delbard, and, optionally Kim, does not teach the presence of dihydro-beta-ionol in the rose extract or the skin effects of the compound.
Mori teaches the missing element of the combination of Aurrens, Delbard, and, optionally Kim,.
Mori teaches the chemical constituents of rose includes dihydro-b-ionol as an aroma constituent, and further teaches the method of extraction to obtain the dihydro-b-ionol may be a solvent extraction or a steam distillation method (pg 2, [0033]). Mori teaches both dihydro-b-ionol and geraniol act as skin temperature elevating agents and improve the blood circulation to the skin, and suggests the compounds improve skin complexion and reduce skin aging (Abstract; pg 1, [0002]-[0004]).
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dihydro-b-ionol geraniol
The skilled artisan would have expected success in adding dihydro-beta-ionol to the rose extract and method taught by the combination of Aurrens, Delbard, and, optionally Kim, because both Aurrens and Mori teach that geraniol, a compound present in rose extract and / or essential oil is useful for treating the effects of chronological and/or photo-induced aging and Mori further teaches that dihydro-beta-ionol is useful for treating the same skin condition(s). The skilled artisan would have been motivated to add dihydro-beta-ionol to the method and composition of the combination of Aurrens and Delbard because it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Nonstatutory Double Patenting Rejection
The nonstatutory 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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
1) Claims 2-7 and 9-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/256,663 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims in the reference application recite the inclusion of an extract of a hybrid rosebush obtained by the crossing of varieties Meichibon x Delgramaue, but since this rosebush extract reads upon the instantly recited limitations, the copending claims read upon the instantly recited composition.
Regarding the newly added limitation to claims 5 and 6 of:
wherein said composition is capable to:
- improve epidermal regeneration in the keratin material, and/or
- promote or reinforce the cicatrization in the keratin material, and/or
- promote or reinforce the reepithelialization in the keratin material, and/or
- improve migration of keratinocytes in the keratin material, and/or
-reduce or delay or prevent the accumulation of damaged epidermal cells in the keratin material,
since the composition recited in the reference application appears to overlap or be identical with the claimed composition, the skilled artisan would have expected that the composition of the reference application would have had the same functional properties as that which is instantly claimed. As set forth in MPEP 2112.01(II), "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Reply to Attorney Arguments dated 11/14/2025
1. Rejection of claims 1-10 under 35 U.S.C. 103 over Aurrens and Delbard
The applicant argues that neither Aurrens nor Delbard teach the newly claimed functional properties set forth in claims 5 and 6, namely that the cited prior art does not recognize the beneficial results claimed when the extract is applied to skin as now recited in claims 5 and 6.
The Examiner acknowledges the argument presented, but does not consider it persuasive. In the instant rejection, Aurrens teaches a rose essential oil method and “cosmetic compositions based on natural compounds such as rose essential oil which make it possible to effectively ensure a proven anti-aging effect at the level of skin cells, and which in particular make it possible to prevent, inhibit, or, at the very least, delay the effects of aging of dermal cells, and Delbard teaches a variety of floribunda rose plant, referred to as “Delflobla”, which is a cross of the varieties Meichibon and Delgramaue.
It is initially noted that the applicant has not shown nor argued that the composition of the combination of Aurrens and Delbard is significantly chemically distinct from commercial rose oil. As such, one of ordinary skill in the art would predict that the functional properties of the rose oil taught by the combination of Aurrens and Delbard would possess the same functional properties, namely the properties of: improving epidermal regeneration in the keratin material, and/or promoting or reinforcing the cicatrization in the keratin material, and/or promoting or reinforcing the reepithelialization in the keratin material, and/or improving the migration of keratinocytes in the keratin material, and/or reducing, delaying, or preventing the accumulation of damaged epidermal cells in the keratin material. See MPEP 2112.
The Examiner further cites the prior art of Kim in the rejection above as an optional reference. Kim teaches rose oil is effective in, minimally, improving epidermal regeneration in the keratin material, and/or promoting or reinforcing the cicatrization in the keratin material.
2. Provisional rejection of claims 1-10 on the ground of nonstatutory double patenting over claims 1-14 of copending Application No. 18/256,663
The applicant argues that the claims of the copending application are drawn to “coloration effects of the keratin material” and does not disclose the functional subject matter regarding advantageous skin regeneration and healing recited in the claims as presently amended.
The Examiner acknowledges the arguments presented, but does not consider them persuasive. Claim 1 of the copending application recites a method comprising the extract of a hybrid rosebush that is claimed in instant claims 5 and 6. Since the extract of the copending application appears to be identical with the instantly claimed extract, one of ordinary skill would expect the compositions to have identical properties. See MPEP 2112.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup, can be reached on (571)272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612