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 .
Applicants amendment filed 1/22/2026 has been entered. Claim 19 was amended. Claims 1-21 remain pending. Claims 20 and 21 remain withdrawn. Claims 1-19 are under examination.
Withdrawn rejections
Applicant's amendments and arguments filed 1/22/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
Claim Objections
Claim 19 is objected to because of the following informalities: “gluconolactone sodium benzoate, caprylyl glycoland/or ethylhexylglycerin” should be changed to “gluconolactone, sodium benzoate, caprylyl glycol and/or ethylhexylglycerin”. Appropriate correction is required.
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 10 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 10 recites hydrolyzed Ceratonia siliqua seed extract as an additional moisturizer, however hydrolyzed Ceratonia siliqua seed extract is already a required component of the cosmetic composition recited in claim 1. 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.
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive. Applicant argues that the limitation that the cosmetic further comprises a moisturizer further limits the scope of claim 1. The Examiner is not persuaded by this argument. The scope of claim 9 is only further limiting to claim 1 if the moisturizer is limited to myristyl malate phosphonic acid or high molecular weight hyaluronic acid because hydrolyzed Ceratonia siliqua seed extract is already a necessary component of the formulation.
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 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.
Claim 2 is rejected under 103(a) as being unpatentable over Bezivin (US 2017/0020796; effective filing date September 9, 2016).
Applicant’s Invention
Applicant claims a cosmetic composition comprising Swertia chirata extract and Centaurea cyanus flower extract. (Claim 2)
Determination of the scope and the content of the prior art
(MPEP 2141.01)
Bezivin teaches the use of swertiamarin or a plant extract enriched with swertiamarin for stimulating the formation or regeneration of the epidermis and/or for stimulating the metabolism of the dermis in the cosmetic field (abstract). The component swertiamarin is an extract obtained from Swertia chirata and is administered topically to prevent and treat skin ageing, stretch marks skin redness and reduce the appearance of subcutaneous micro-vessels [0011-13]. The cosmetic composition further comprises an additional active ingredient preferably selected from soothing agents, moisturizers, anti-inflammatory agents, antioxidant agents, healing agents, disinfecting agents, antimicrobial agents and combinations thereof [0020]. The moisturizers and soothing agents include cornflower (Centaurea cyanus) [0092-93].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Bezivin teach combining swertiamarin, an extract of Swertia chirata with cornflower extract (Centaurea cyanus).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Bezivin and formulate a cosmetic composition comprising an extract of Swertia chirata with an extract of Centaurea cyanus with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to use the teachings of Bezivin to formulate a cosmetic comprising swertiamarin and an extract of Centaurea cyanus because Bezivin teach a swertiamarin containing cosmetic composition further comprising cornflower extract (Centaurea cyanus) as a soothing agent and moisturizer.
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
Applicant argues that nothing in Bezivin motivates the skilled person to depart from the purified swertiamarin teaching in favor of the claimed Swertia chirata extract or the combination of Swertia chirata with cornflower extract. The Examiner is not persuaded by this argument because Bezivin teaches that swertiamarin is an extract obtained from Swertia chirata that is administered topically to prevent and treat skin ageing, stretch marks skin redness and reduce the appearance of subcutaneous micro-vessels [0011-13]. Therefore, Bezivin teaches Swertia chirata extract. Bezivin further teaches that the cosmetic composition further comprises moisturizers and soothing agents which include cornflower (Centaurea cyanus) [0092-93]. Therefore, one of ordinary skill would have been motivated to combine Swertia chirata with Centaurea cyanus extract to formulate a dual formulation comprising an active which improves skin appearance and an additional ingredient which soothes the skin.
Claims 1, 5-12 and 15-19 are rejected under 103(a) as being unpatentable over Copiz et al. (WO 2018/038974; effective filing date August 15, 2017) in combination with Fabre et al. (US 2011/0256087; effective filing date June 29, 2011).
Applicant’s Invention
Applicant claims a cosmetic composition comprising Swertia chirata extract and hydrolyzed Ceratonia siliqua seed extract. (Claim 1)
Determination of the scope and the content of the prior art
(MPEP 2141.01)
With respect to claims 1, 5-12, 15-17 and 19, Copiz et al. teach compositions for treating dermatological conditions using a formulation comprising Swertia chirata and Bidens Pilosa extracts (abstract). The carrier can comprise at least one of a fat, a siloxane, an emollient, an emulsifier, an alcohol, a polyol, a polyolether, a penetration enhancer, silica, water, or a combination of any of the foregoing [0004]. The formulation further comprises at least one preservative selected from quaternary ammonium compounds, sodium benzoate, disodium ethylenediaminetetraacetic acid (EDTA) and ethylhexylglycerin [limitation of claims 11, 17 and 19; 0008-0009, 0080]. Suitable emollients used in the formulation include isononyl isononanoate, caprylic capric triglyceride and combinations in amounts of about 8 to about 30 weight % [limitation of claim 12; 0066, 0082]. Exemplary humectants include glycols such as butylene glycol and 2-methyl-1,3-propane diol [limitation of claim 15; 0067]. Exemplary anti-inflammatory agents used in the formulations include botanically-derived compounds [0068]. To achieve desired pH range pH adjusting agents are added and include any pharmaceutically acceptable acids and bases [0070]. The formulations can also include sodium hyaluronate as a penetration enhancer [0076]. The cream formulation can comprise water, preservatives, viscosity-controlling agents, emollients, vitamins, carriers, oils, fats, conditioning agents and emulsifiers [limitation of claim 16; 0077]. The vitamins are selected from tocopheryl acetate (Vitamin E), niacinamide and tetrahexyldecyl ascorbate (Vitamin C) [limitation of claims 5-8; 0083, 93]. The prepared formulations comprise SWT-7 H, the extract of Swertia chirata, in creams and serums but other formulations that can be made include shampoos, lotions, waxes, gels, oils foams, ointments, solutions or pastes [0048, 0109-0114].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
With respect to claims 1, 9 and 10 Copiz et al. do not teach combining an extract of Swertia chirata with hydrolyzed Ceratonia siliqua seed extract.
With respect to claims 18, Copiz et al. teach pH adjusting agents selected from sodium hydroxide and/or citric acid. It is for this reason that Fabre et al. is joined.
Fabre et al. teach locust bean gum hydrolysate and use of it in hair cosmetics (abstract). The locust bean is the fruit of the carob tree Ceratonia siliqua and locust bean gum is obtained by grinding the endosperm of carob tree beans, wherein the endosperm is from the seed, the endocarp and the germ [0001-0003]. Due to its high gelling, viscosity and high molecular weight locust bean gum is difficult to use and has an inaesthetic effect in cosmetics [0005]. By preparing locust bean gum hydrolysate it has new physical-chemical properties that allow it to be used in shampoo formulations [0008, 0014]. The hydrolysate can be in the form of a dry or liquid extract and is used in cosmetics [0017-0019, 0049]. The types of cosmetics include a shampoo, a gel, a lotion, a foam, a spray, a dispersion, a serum, etc. [0051]. The compositions primarily are intended for the washing, coloring, care or styling of hair, eyelashes, and the scalp [0052-54]. The formulations further comprise acidifiers and alkalizers [0057]. A volume enhancing shampoo, gel and foam were prepared which comprise locust bean gum hydrolysate, disodium EDTA and monohydrated citric acid or sodium hydroxide to adjust pH to 5-6.5 are disclosed in Examples 4-6 [0072-74].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Copiz et al. and Fabre et al. are both drawn to methods of making cosmetics comprising extracts to shampoos. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Copiz et al. and Fabre et al. and formulate a cosmetic composition comprising an extract of Swertia chirata with hydrolyzed Ceratonia siliqua seed extract with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to combine the teachings of Copiz et al. and Fabre et al. to formulate a cosmetic comprising Swertia chirata extract and hydrolyzed Ceratonia siliqua seed extract because Fabre et al. teach locust bean gum hydrolysate has new physical-chemical properties that add volume to hair and can be used on the scalp. Therefore, one of ordinary skill would have been motivated to combine Swertia chirata extract with hydrolyzed Ceratonia siliqua seed extract because it would aid in forming a cosmetic shampoo with a volume enhancing effect.
It would have been prima facie obvious to one of ordinary skill to combine the teachings of Copiz et al. and Fabre et al. to include sodium hydroxide or citric acid as pH adjuster with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to combine the teachings of Copiz et al. and Fabre et al. to formulate a cosmetic comprising citric acid or sodium hydroxide because Fabre et al. teach locust bean gum hydrolysate shampoo formulations comprising citric acid and sodium hydroxide as pH adjusters aid in reaching a formulation pH of 5-6.5. Therefore, one of ordinary skill would have been motivated to combine Swertia chirata extract, hydrolyzed Ceratonia siliqua seed extract with citric acid or sodium hydroxide because it would aid in forming a cosmetic shampoo with a desirable pH.
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
Applicant argues that the hydrolyzed Ceratonia siliqua seed extract is limited to the component Glyco-Repair Bio which comprises water and hydrolyzed Ceratonia siliqua and Fabre is drawn to locust bean gum (Ceratonia siliquia) hydrolysate which does not render obvious the hydrolyzed Ceratonia siliqua seed extract as a skin repair/moisturizer. The Examiner is not persuaded by this argument because Fabre teach the hydrolysate is in the form of a liquid extract and is used in cosmetics [0017-0019, 0049]. This renders that claimed hydrolyzed Ceratonia siliqua seed extract obvious because Applicant has not presented any evidence of that that they have different properties.
Claim 3 is rejected under 103(a) as being unpatentable over Copiz et al. (WO 2018/038974; effective filing date August 15, 2017) in combination with Fabre et al. (US 2011/0256087; effective filing date June 29, 2011), as applied to claims 1, 5-12 and 15-19 in further view of Bezivin (US 2017/0020796; effective filing date September 9, 2016).
Applicant’s Invention
Applicant claims a cosmetic composition comprising Swertia chirata extract and hydrolyzed Ceratonia siliqua seed extract. (Claim 1)
Determination of the scope and the content of the prior art
(MPEP 2141.01)
The teachings of Copiz et al. and Fabre et al. are address in the above 103 rejection. Copiz et al. teach that exemplary anti-inflammatory agents used in the formulations include botanically-derived compounds [0068].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Copiz et al. and Fabre et al. do not teach combining an extract of Swertia chirata and hydrolyzed Ceratonia siliqua seed extract with Centaurea cyanus flower extract. It is for this reason that Bezivin is joined.
Bezivin teaches the use of swertiamarin or a plant extract enriched with swertiamarin for stimulating the formation or regeneration of the epidermis and/or for stimulating the metabolism of the dermis in the cosmetic field (abstract). The component swertiamarin is an extract obtained from Swertia chirata and is administered topically to prevent and treat skin ageing, stretch marks skin redness and reduce the appearance of subcutaneous micro-vessels [0011-13]. The cosmetic composition further comprises an additional active ingredient preferably selected from soothing agents, moisturizers, anti-inflammatory agents, antioxidant agents, healing agents, disinfecting agents, antimicrobial agents and combinations thereof [0020]. The moisturizers and soothing agents include cornflower extract (Centaurea cyanus) [0092-93].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Copiz et al., Fabre et al. and Bezivin are all drawn to methods of making cosmetics formulations. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Copiz et al., Fabre et al. and Bezivin to formulate a cosmetic composition comprising an extract of Swertia chirata, hydrolyzed Ceratonia siliqua seed extract and Centaurea cyanus flower extract as a moisturizer with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to combine the teachings of Copiz et al., Fabre et al. and Yoshida et al. to formulate a cosmetic comprising Swertia chirata extract, hydrolyzed Ceratonia siliqua seed extract and Centaurea cyanus flower extract because Copiz et al. teach formulations can include anti-inflammatory agents that are botanically-derived compounds Bezivin teach that cornflower extract from Centaurea cyanus is used as a moisturizer and soothing agent in formulations comprising Swertia chirata extracts. Therefore, one of ordinary skill would have been motivated to combine Swertia chirata extract, hydrolyzed Ceratonia siliqua seed extract and Centaurea cyanus flower extract because it would aid in forming a moisturizing cosmetic formulation.
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive for the reasons set forth in the above response.
Claims 4 and 10 are rejected under 103(a) as being unpatentable over Copiz et al. (WO 2018/038974; effective filing date August 15, 2017) in combination with Fabre et al. (US 2011/0256087; effective filing date June 29, 2011), as applied to claims 1, 5-12 and 15-19 in further view of Yoshida et al. (JP2013181001; published 12.09.2013).
Applicant’s Invention
Applicant claims a cosmetic composition comprising Swertia chirata extract and hydrolyzed Ceratonia siliqua seed extract. (Claim 1)
Determination of the scope and the content of the prior art
(MPEP 2141.01)
The teachings of Copiz et al. and Fabre et al. are address in the above 103 rejection. Copiz et al. teach compositions for treating dermatological conditions using a formulation comprising Swertia chirata and Bidens Pilosa extracts (abstract). The formulations can also include sodium hyaluronate as a penetration enhancer [0076].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Copiz et al. and Fabre et al. do not teach combining an extract of Swertia chirata with hydrolyzed Ceratonia siliqua seed extract and a low molecular weight hyaluronic acid. It is for this reason that Yoshida et al. is joined.
Yoshida et al. teach hyaluronic acid compositions containing low-molecular hyaluronic acid increase the moisture content of skin [0001]. Hyaluronic acid with a high molecular weight is less likely to be absorbed and remains on the surface of the skin [0003]. Low molecular weight hyaluronic acid has a molecular weight of 100,000 or less, preferably 400-50,000 [0011-12]. External preparations for skin include cosmetics such as cleansers [0028].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Copiz et al., Fabre et al. and Yoshida et al. are all drawn to methods of making cosmetics formulations. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Copiz et al., Fabre et al. and Yoshida et al. to formulate a cosmetic composition comprising an extract of Swertia chirata with hydrolyzed Ceratonia siliqua seed extract and low molecular weight hyaluronic acid as a moisturizer with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to combine the teachings of Copiz et al., Fabre et al. and Yoshida et al. to formulate a cosmetic comprising Swertia chirata extract, hydrolyzed Ceratonia siliqua seed extract and low molecular weight hyaluronic acid because Copiz et al. teach formulations can include sodium hyaluronate as a penetration enhancer and Yoshida et al. teach low molecular weight hyaluronic acid imparts increased moisture content to skin. Therefore, one of ordinary skill would have been motivated to combine Swertia chirata extract, hydrolyzed Ceratonia siliqua seed extract and low molecular weight hyaluronic acid to form a moisturizing cosmetic formulation.
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive for the reasons set forth in the above response.
Claims 13 and 14 are rejected under 103(a) as being unpatentable over Copiz et al. (WO 2018/038974; effective filing date August 15, 2017) in combination with Fabre et al. (US 2011/0256087; effective filing date June 29, 2011), as applied to claims 1, 5-12 and 15-19 in further view of Bissett et al. (US 2006/0074097; published April 6, 2006).
Applicant’s Invention
Applicant claims a cosmetic composition comprising Swertia chirata extract and hydrolyzed Ceratonia siliqua seed extract. (Claim 1)
Determination of the scope and the content of the prior art
(MPEP 2141.01)
The teachings of Copiz et al. and Fabre et al. are address in the above 103 rejection. Copiz et al. teach compositions for treating dermatological conditions using a formulation comprising Swertia chirata and Bidens Pilosa extracts (abstract). The formulations can also include preservatives selected from quaternary ammonium compounds [0009, 0080]. The cream formulation can comprise viscosity-controlling agents and emulsifiers [0077].
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Copiz et al. and Fabre et al. do not teach adding polyquaternium-37 as a thickener. It is for this reason that Bissett et al. is joined.
Bissett et al. a method of facilitating cosmetic delivery of hexamidine to keratinous tissue by including a thickening agent that is not negatively-charged in the composition (abstract). The compositions are for topical use and aid in thickening skin, nails and hair [0028]. The thickening agent help drive the preferred viscosity level of from about 500-200,000 centipoise [0033]. The thickening agent is polyquaternium-37 in amounts of 0.1-5% of the formulation [0047; claim 8]. Cleansing compositions selected from shampoos are taught [0147]. The formulations may further include skin soothing agents and/or healing agents and other thickeners such as locust bean bum [0150, 0042].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Copiz et al., Fabre et al. and Bissett al. are all drawn to methods of making cosmetics formulations including shampoos. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Copiz et al., Fabre et al. and Bissett et al. to formulate a cosmetic composition comprising an extract of Swertia chirata with hydrolyzed Ceratonia siliqua seed extract and polyquaternium-37 as a thickener with a reasonable expectation of success. One of ordinary skill would have been motivated at the time of filing to combine the teachings of Copiz et al., Fabre et al. and Bissett et al. to formulate a cosmetic comprising Swertia chirata extract, hydrolyzed Ceratonia siliqua seed extract and polyquaternium-37 because Copiz et al. teach formulations can include quaternary ammonium compounds, viscosity agents and emulsifiers and Bissett et al. teach polyquaternium-37 is a preferred thickening agent that is used in shampoos along with soothing agents and/or healing agents. Therefore, one of ordinary skill would have been motivated to combine Swertia chirata extract, hydrolyzed Ceratonia siliqua seed extract and polyquaternium-37 because it would aid in thickening cosmetic shampoo formulations and would inherently possess emulsifying properties as well.
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive for the reasons set forth in the above response.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 pm.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1617
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