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 .
Status of claims
Claims 17-27 as amended and new claims 28-30 as filed on 2/17/2026 are pending and under examination.
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 17-27 as amended and new claims 28-30 remain/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013/100236 (Seiko et al), US 2019/0125806 (Takata et al), JP 2019/142817 (Tomio et al) and KR 101889647.
The prior art document JP 2013/100236 teaches that the product made from plant of Lamiaceae family such as Isodon japonicus provides for promotion of collagen production; for example: see JP 2013/100236 (English abstract; machine translation par. 0009, 0016). (Notes: Isodon japonicus and Isodonis herba are names of the same plant in view of specifications (par 0021 of published application US 2022/0202696)).
In particular, the plant product of the cited document JP 2013/100236 is made by immersing plant material in solvent including water and saline for several days (see par. 0021 of translation), thereby, by fermenting a plant material within the broadest reasonable meaning of the claims. The cited document JP 2013/100236 describes that the plant preparation is further provided as a skin external product formulated as ointment, cream, milky lotion, thereby, as a barrier emulsion or cream within the broadest reasonable meaning of the claims (claim 23).
Although the cited JP 2013/100236 is silent about presence and/or addition of bacterial species belonging to Lactobacillus for making/providing the bacteria-fermented extract from Isodon plant of Lamiaceae family, all claim-recited bacteria (including L. parafarraginis, L. parabuchneri, L. harbinensis, L. vini, L. nagelii) are inherently found/present in/on plant Isodon japonicus (Isodonis herba) in view of teaching by US 2019/0125806 (see par. 0027) and in view of as-filed specification disclosure (see par. 0059 of published application US 2022/0202696). Thus, the collagen production promoting Isodon plant-based product of the cited document JP 2013/100236 is inherently made by fermenting plant material in the presence of the same species of Lactobacillus as recited in the present claims (claims 17 and 22-30).
Although the cited JP 2013/100236 does not explicitly recognize that the use of lactic bacteria for fermenting plant material provides/preserves collagen promoting characteristics of final plant fermented products, the cited JP 2019/142817 discloses a composition for promoting collagen production, wherein the composition comprising a fermentation product of plant of family Lamiaceae (see English abstract, see machine translation par. 0010-0011), and wherein the Lamiaceae plant material is fermented with lactic acid bacteria belonging to various species of Lactobacillus (0013, 0015). The final bacterial fermentation product is heated or dried (0027); and the final products are provided in compositions including pharmaceuticals and cosmetics for collagen production promotion and collagen degradation inhibition (par. 0029). The forms of compositions include creams, gel-like or milky lotions and could be modified (0027).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the claimed invention was filed to provide a Lactobacillus fermented product of materials from plants of family Lamiaceae including Isodon or Isodonis japonicus
with a reasonable expectation of success in making and providing a composition for promoting collagen production because both products including products based on extracts from Lamiaceae family plant such as Isodon or Isodonis japonicus provide for collagen production promoting products (JP 2013/100236) and because products based on Lactobacillus-fermented Lamiaceae plant material also provide for collagen production prompting effects (JP 2019/142817). One of skill in the art would be motivated to provide the Isodonis japonicus product fermented by Lactobacillus because components of both a Lactobacillus-fermented plant product and an Isodonis japonicus plant based fermented product provide for the same benefits in production of collagen.
Further, the prior art document KR 101889647 is cited for the teaching that the use of products based on species of Lactobacillus such as Lactobacillus harbinensis provides for preventing skin aging and improving wrinkles (abstract and title) and that cosmetics intended for skin maintenance are commonly reinforced with substances derived from various plants (translation page 2, lines 3-5).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the claimed invention was filed to use various species of Lactobacillus including species of Lactobacillus harbinensis for providing Lactobacillus fermented product of Lamiaceae family plants including Isodon or Isodonis japonicus with a reasonable expectation of success in making and providing a composition for promoting collagen production because both products including products based on extracts from Lamiaceae family plant such as Isodon or Isodonis japonicus provide for collagen production promoting products (JP 2013/100236) and because Lactobacillus harbinensis provides for preventing skin aging and improving wrinkles (abstract and title) in cosmetics intended for skin maintenance.
Thus, the claimed invention as a whole was clearly prima facie obvious, especially in the absence of evidence to the contrary.
The claimed subject matter fails to patentably distinguish over the state art as represented be the cited references. Therefore, the claims are properly rejected under 35 USC § 103.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 23 as amended remains/is rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
The claim recites a composition with a plant material fermented by bacteria. Plant material including Isodon plants and bacteria belonging to various species of Lactobacillus are naturally occurring components that are clearly found in nature. The lactic bacteria of Lactobacillus species are capable naturally ferment plant materials as substates for their growth. Further, the claim-recited components of medicament and cosmetic composiotns are generic. Claim-recited term “cream” does not point out any specific materials that might affect or modify the natural fermentation products that would be dense or creamy or would be liquid or spray depending on final water contents.
This judicial exception is not integrated into a practical application because claimed elements in combination do not add a meaningful limitation or extra-solution to the claimed product, and the claimed product as a whole is nothing more than an attempt to generally link the product of nature to a particular technological environment.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately and in combination, they do not add significantly more (also known as an “inventive concept”) to the exception.
Claims 1-21 and 24-30 as amended are now rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more.
The claims recite a method for producing an agent for promoting collagen production, wherein the claimed method comprises a single step of “fermenting” a natural plant Isodon by native bacteria present on surface of the plant. All claim-recited bacteria (including L. parafarraginis, L. parabuchneri, L. harbinensis, L. vini, L. nagelii) are naturally occurring/found/present in/on plant Isodon japonicus (Isodonis herba) in view of teaching by US 2019/0125806 (see par. 0027) and in view of as-filed specification disclosure (see par. 0059 of published application US 2022/0202696). Thus, the process as claimed is a natural phenomenon of microbial degradation, consumption or fermentation of microbial nutrient source plant biomass. The further claim-recited step drawn to generic drying by generic heating does not point out any transformation beyond what would naturally happen to plant material degraded in a natural environment.
This judicial exception is not integrated into a practical application because claimed elements in combination do not add a meaningful limitation or extra-solution to the claimed method, and the claimed method as a whole is nothing more than an attempt to generally link a natural event to a particular technological environment.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately and in combination, they do not add significantly more (also known as an “inventive concept”) to the exception.
Response to Arguments
Applicant's arguments filed on 2/17/2026 have been fully considered but they are not all found persuasive.
The rejection of claim under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, has been withdrawn in view of amendment to the claims and arguments.
With regard to claim rejection under 35 U.S.C. 103 as being unpatentable over JP 2013/100236 (Seiko), US 2019/0125806 (Takata et al), JP 2019/142817 (Tomio) and KR 101889647 (Hee) Applicants’ main argument is that the claim-recited species of Lactobacillus are not necessarily present on plant Isodon in a preparation of the cited JP 2013/100236 (Seiko) and, thus, combination of the cited references fails to suggest a method of making an agent for promoting collagen by fermenting Isodon with the claim-recited species of Lactobacillus.
This argument is not found particularly persuasive because a preparation that is made by a generic fermentation of plant Isodon is an agent for promoting collagen as explicitly taught by JP 2013/100236 (Seiko). The presence of the specific claim-recited Lactobacillus bacteria is not necessaire to transform Isodon plant during fermentation to provide for a collagen promoting agent because it is obtained by a generic fermentation without special manipulations or considerations with respect to microbial inoculum as disclosed by JP 2013/100236 (Seiko). Further, the prior art; for example: the cited JP 2019/142817 (Tomio) demonstrates that the other plant (perilla) for the same claim-recited family of Lamiacea, to which Isodon plant belongs, provides for a collagen promoting agent (see abstract, par. 0011) upon fermentation with any and all microorganisms (par. 0013-0017) including fungi, yeasts and bacteria including Lactobacillus (par. 0015). Therefore, the particular claim-recited species of Lactobacillus are not critical elements for providing a collagen promoting agent upon fermentation; and they can be obviously replaced by microbial equivalents. The instant application does not show that the particular claim-recited species are really present, needed or even used. The example 1 does not describe at all that the specific claim-recited bacteria were present on and/or added to the plant materials of Isodon before or during fermentation. The specification does not show that the use of other microbes for fermentation of Isodon is less beneficial or different to provide for support of unexpected results. The claimed method does require step of detecting presence of particular claim-recited bacteria before fermentation of Isodon for any reasons. While the prior art demonstrates that the particular claim-recited bacteria are native microorganisms on surfaces of plants including Isodon (see US 2019/0125806 at par. 0027).
With regard to claim rejection under 35 U.S.C. 101 Applicants argue that formulation of a fermented plant product as a cream is not a natural product.
This argument is not found persuasive because “cream” is generic and its components are not knonw as claimed, as argued and as disclosed in specification. Thus, when a generic cream is added or when the whole “fermentation product of a plant” is formulated as a cream, there is no transformation that would provide markedly different characteristics to the final product.
Conclusion
THIS ACTION IS MADE FINAL. 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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Vera Afremova
March 5, 2026
/VERA AFREMOVA/ Primary Examiner, Art Unit 1653