DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed May 21, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Status
Claims 3 – 9 and 12 – 18 are withdrawn.
Claim 21 has been cancelled.
Claims 1, 2 10, 11, 19, and 20 are examined here-in.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
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 non-obviousness.
Applicant’s amendment dated May 21, 2026 specifying melanoidins from spent coffee grounds necessitated the “new” rejection below, which relies on references of record.
Claims 1, 2, 10, 11, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Lavecchia (ITMI 2013/2040 A1, citations to English translation, of record) in view of Bekedam (Bekedam, E.K. et al. "High molecular weight melanoidins from coffee brew" J. Agric. Food Chem. 2006, 54, p. 7658 - 7666, of record).
Lavecchia teaches a cosmetic composition containing melanoidins (page 4 lines 54-55, page 5 lines 18-22). Lavecchia teaches that melanoidins are attractive for inclusion in a cosmetic composition because of their high anti-oxidant activity, anti-tumor qualities, and their ability to protect the skin from ultraviolet rays (page 2 lines 43 and 57). Lavecchia teaches that the cosmetic composition can have a cosmetically or dermatologically acceptable carrier and be in a form suitable for application to the skin (page 10 lines 43-57).
Lavecchia teaches that melanoidins typically have a high molecular weight (page 1 line 54).
Lavecchia teaches that melanoidins can be extracted from spent coffee grounds or virgin roasted coffee, noting that melanoidins extraction from spent coffee grounds is well-known in the art (page 3 lines 10 – 27, 59 – 60).
Lavecchia does not teach the specific molecular weight of melanoidins, or that the melanoidin composition is substantially free of caffeine.
Bekedam teaches the missing elements of Lavecchia.
Bekedam teaches that melanoidins are water-soluble brown-colored compounds that are of interest for their role in color formation and their antioxidant ability (page 7658 column 1).
Bekedam teaches that high molecular weight melanoidins have a molecular weight greater than 12 kDa (page 7659 column 1) and that high molecular weight melanoidins are substantially free of caffeine (page 7661 column 1).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the instant application to combine the teachings of Lavecchia and Bekedam to make a cosmetic composition with high molecular weight melanoidins. A person of ordinary skill in the art would have been motivated to include melanoidins in a cosmetic composition for their anti-oxidant and protective properties, as taught by Lavecchia, as well as their role as a colorant compound as taught by Bekedam. The combination of Lavecchia and Bekedam’s teachings to make a cosmetic composition with high molecular weight melanoidins is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
Lavecchia and Bekedam’s teachings read on claim 1 of the instant application which recites a cosmetic composition comprising melanoidins from spent coffee grounds (with a MW between 10 and 300 kDa) that is substantially free of caffeine because Lavecchia teaches a cosmetic composition containing high molecular weight melanoidins and Bekedam teaches high molecular weight melanoidins have a size greater than 12 kDa and are substantially free of caffeine (page 7659 column 1, page 7661 column 1). Notably, Applicant defines “substantially free” to mean that the compound is not deliberately added to the composition and is only present in trace amounts (instant specification page 10 lines 8 – 14). As such, the combination of Lavecchia and Bekedam’s teachings reads on the limitation “substantially free of caffeine”.
The combination of Lavecchia and Bekedam’s teachings for a cosmetic composition containing melanoidins with a high molecular weight, i.e. greater than 12 kDa (Bekedam page 7659 column 1, page 7661 column 1), also reads on claims 10, 11, and 20 of the instant application, which recite that the average molecular weight is between 10 to 100 kDa (claim 10), between 10 to 30 kDa or 50 to 100 kDa (claim 11), and between 30 to 50 kDa (claim 20). Claimed ranges that overlap with the prior art are prima facie obvious according to MPEP 2144.05(I).
Lavecchia’s teaching that the cosmetic composition can have a cosmetically or dermatologically acceptable carrier and be in a form suitable for application to the skin (page 10 lines 43-57) reads on claim 2 of the instant application which recites the cosmetic composition is a non-powdered solid, compact powder, or an aqueous liquid.
The claim 19 limitation of a process for obtaining at least one melanoidin fraction from a foodstuff is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Even though product-by-process claims are defined by the process, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In the instant case, Lavecchia’s cosmetic composition containing high molecular weight melanoidins (in view of Bekedam’s teachings regarding high molecular weight melanoidins) reads on the claimed cosmetic composition. As such, the patentability of the instant composition does not depend on its method of production, and the Applicant’s limitation regarding the process obtaining melanoidins by a process for obtaining at least one melanoidin fraction from a foodstuff is not patentable, in view of the current record, given the teachings of the combination of Lavecchia and Bekedam (MPEP 2113).
Examiner’s Reply to Attorney Arguments Dated May 21, 2026
Applicant’s arguments with respect to the 35 U.S.C. 103 rejection over Recanati in view of Yang have been considered but are moot because Applicant’s amendment necessitated the new ground of rejection which does not does not rely on the teachings of Recanati and Yang.
Applicant’s Declaration Dated May 21, 2026
The Examiner has fully reviewed and considered the Declaration submitted May 21, 2026, setting forth fundamental differences in chemical and physical properties of melanoidins from distilled spent grain than melanoidins from spent coffee grounds (page 1 section 4). Applicant’s assertion that melanoidins originating from spent coffee grounds have a more consistent and broader absorption in the UV/visible wavelength range (200 – 780 nm) than melanoidins originating from distilled spent gram (page 2 section 8) does not appear to be supported by the evidence provided.
As an initial matter, data provided by Applicant (shown below) is low resolution and in black and white, therefore it is difficult to distinguish the different sample lines from each other. Nonetheless, these data do not appear to support the allegation that “higher molecular weight fractions were found to have broader absorption spectrum with higher absorption over the full wavelength range with less outspoken peaks… in complete contrast to the melanoidins extracted from DSG” (page 4 section 15).
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The direct comparison of absorption spectra is improper because the absorbance data of Yang was conducted with sample concentrations of 0.2 mg/mL, whereas the instant concentrations were 0.01 mg/mL. The y-axis absorbance units is a relative measurement that tends to vary with different instruments, therefore no direct comparison of absorbance intensity is appropriate here. A comparison of the general shape of absorbance curves is possible, however such a comparison does not appear to support Applicant’s allegation that melanoidins from spent coffee grounds have markedly different absorbance than melanoidins from distilled spent grain.
A general comparison of the shape of the absorbance curves appears to illustrate a shoulder-like peak at 280 nm that in high molecular weight fractions extends to 290 nm, then a gradual sloping decline to zero absorbance (Yang’s absorbance spectra with instant absorbance spectra as in-lay shown below). While it does appear that higher molecular weight fractions of melanoidin have greater absorbance than lower molecular weight melanoidins, there does not appear to be a significant difference between melanoidins from distilled spent grain as compared to spent coffee grounds.
[AltContent: textbox (Yang’s absorbance spectra with instant absorbance spectra as in-lay)]
The evidence submitted in the declaration and applicant’s arguments relating thereto have not been found persuasive for the reasons discussed above.
Conclusion
Applicant's amendment necessitated the new grounds 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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