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 .
Response to Amendment
Applicant's amendment and argument filed 08/21/2026, in response to the non-final rejection, are acknowledged and have been fully considered. Any previous rejection or objection not mentioned herein is withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4, 8, 10-13, 15-16, 18, 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Rikako Furuya et. al. (WO2002/005757A1), Kishida Keiji et. al. (JP2007261987A) and USDA Agricultural Marketing Service (see previous rejections filed 04/04/2025 and 01/13/2025). This is a new rejection due to the amendments and arguments filed on 08/21/2026.
Furuya teaches of compositions for applying to the skin for skin whitening, melanin production inhibitor, tyrosinase inhibitor and cyclic AMP inhibitor which is derived from Rosa centifolia (see page 2, near bottom and see abstract) and teaches wherein whole plants can be used and this would include the stalks, leaves and suckers as claimed. Furuya teaches that solvents for the extraction can be hydrous alcohol (see first para. page 3). Furuya teaches combining the rose extract with glycerin (see page 4, 8-9, 11-15 etc.) and teaches that polyphenols of plant extracts are known to have antioxidant effects, including antitumor along with the whitening effects previously mentioned (see page 5, para. 5). Furuya also teaches wherein the components of the rose extract such as L-ascorbic acid has poor stability and this is one of the drawbacks of previous rose extracts (see page 5, para 4). Furuya teaches in addition to the skin whitening ability of the extract it can also be widely applied in cosmetics, pharmaceuticals etc. to be applied to the skin and can be placed in any solutions applicable for solubilization (see page 6, 3rd to last para.). Furya teaches both an oil phase and an aqueous phase of the extract (see page 10 at top).
Specifically, Furuya teaches the rose extract in formulations where glycerin is at 3%, and the extract at a range of 1% (see page 4), which would be less than the 0.45 ratio claimed.
Furuya teaches that the Centifolia can be used either raw or dried and preferably to use it as a dry powder (see page 2, near bottom).
Furuya teaches wherein the extract can be in amounts at 0.001 up to 5.0% by weight (see page 6, para. 5).
Furuya does not teach that the composition has the amount of polyphenols being instantly claimed, however the applicant recites “The rosewood extract according to the invention is an extract rich in polyphenols. The rosewood extract comprises at least 20% by weight, preferentially at least 30% by weight of polyphenols with respect to the total weight of the extract. Typically, the rosewood extract is obtained from rose bush stalks and/or leaves and/or suckers. Preferably, the rose used is of the genus Rosa, preferably the variety is Rosa centifolia (Rosa xcentifolia). Preferably, the rose used was grown in the South of France,
and the stalks and/or leaves and/or suckers were cut at the end of the winter. The extract is typically obtained according to the following method: a) extracting the rose bush stalks and/or leaves and/or suckers in a hydroalcoholic mixture, preferably at a temperature less than or equal to 90°C, in order to obtain a hydroalcoholic mixture comprising the extract” (see page 4), It would be expected that the same hydroalcoholic extract of the same species of plant and plant parts would have the same polyphenol content especially since there has not been any concentration of those components and the extraction of the prior art is ideally the same as what is being claimed.
Keiji teaches of tyrosinase inhibitors from rosehips (see abstract) and teaches “moreover, in this invention, the extract of rosehip contains polyphenols as a main component” (see 5th para., page 2).
“In addition, the present invention provides a production method capable of assuring a certain effect by quantifying polyphenols as a quality control test during the process in producing the tyrosinase inhibitor and its application. That is, this invention provides the manufacturing method of the said tyrosinase inhibitor characterized by extracting rosehips using an extraction solvent. According to the method for producing a rosehip extract of the present invention, the polyphenol content in the extract can be measured to keep the quality constant”
“In the present invention, attention was paid to the tyrosinase inhibitory activity of the extract of rosehip, and it was also confirmed that the tyrosinase inhibitory activity was due to the polyphenol contained in rosehip” (see page 2).
“There were problems such as inability to guarantee. In the present invention, when the polyphenol content contained in the extract of rosehip was measured and the correlation with the tyrosinase inhibitory activity was evaluated, it was found to have a positive correlation”
“The tyrosinase inhibitor of the present invention can suppress the deposition of melanin in the skin, and can prevent and improve post inflammation pigmentation such as spots, freckles, darkness, senile plaques, wounds and burns. The tyrosinase inhibitor of the present invention is used in the form of food and cosmetics” (see top of page 3).
“When used as a food, the amount of tyrosinase inhibitor used may vary greatly depending on the form of the food, for example 0.0005 to 20.0%” (see page 7, par. 6).
“In the cosmetic of the present invention, the content of the rosehip extract is about 0.0005 to 20.0% by weight, preferably about 0.001 to 10.0% by weight, based on the entire cosmetic” (see page 7, para. 8).
USDA’s general disclosure is to the uses of glycerin (see summary of petitioned used, p 1).
USDA teaches “Glycerin has a wide variety of uses in many organic products as a humectant, a solvent, an emollient, a sweetener, a bodying agent, a preservative, filler in low fat foods, an alcohol-free solvent for botanical extracts, cosmetics and pharmaceutical agents (see summary of petitioned used, p 1).
USDA teaches “Glycerin reduces hydrogen bonding of water; specifically it reduces the bonding ability of the oxygen atom of water resulting in actions that include reducing water activity, increasing boiling point, and reducing the heat of fusion of water, e.g. preventing the formation of ice crystals. Manifest in these properties are the multiple uses for glycerin in the production of food and cosmetics, e.g. solvent, humectant, cryopreservative, thickener, emollient, etc.” (see action of the substance, p 2).
USDA teaches “One of glycerin’s many uses is as a preservative. Widely used in formulations for many industries, glycerin (glycerin) is a colorless, odorless, and viscous liquid whose three hydrophilic hydroxyl groups impart both solubility in water and hygroscopicity (water-absorption). Glycerin has excellent anti-bacterial, anti-fungal, and anti-viral properties. It acts as a cryo-protectant, because it binds strongly to water and forestalls the formation of damaging ice crystals. The action of glycerin as a humectant allows the vital character of many herbal extracts to be preserved in solution. Glycerin is often used in the production of herbal extracts where it acts both as solvent and as preservative” (see p. 9, evaluation question #5).
“Glycerin’s unusual properties make it useful in a great variety of products and processes. Some of these uses depend on its physical properties such as hygroscopicity, viscosity and high boiling point while others depend on its chemical properties. In many cases, it may be a combination of several of its properties, both physical and chemical, which make it applicable, particularly its non-toxicity” (See p. 9, evaluation question #6).
Therefore, it would have been obvious to people who have ordinary skill in the art to create the instant invention because Furuya teaches of extracts of the Rosa centifolia whole plant parts which would include the suckers, stalks and leaves. Selection of a hydroalcoholic extract would have been obvious since this is one that is described by Furuya and one in which would include the polyphenol amounts as currently claimed. This would ultimately contain a rosewood extract with the same polyphenol content as claimed. Furuya also recognizes that certain components of the extract are difficult to solubilize and describes that is one issue that is trying to be fixed from previous extracts. Furuya teaches combining the rose extract with both propylene glycol and glycerin in cosmetic formulations and within ranges that are less than the 7:13 ratio being claimed. Furuya teaches both the aqueous and oil phases of the extract and creating kits to contain one or both would have been prima facie obvious for reasons of keeping phase separation in different compartments to be combined at a later time. Creating kits is also prima facie obvious given the art.
Keiji teaches that the tyrosinase inhibitor is indeed a polyphenol and teaches including this in amounts of 20% as claimed. It would have been obvious to increase the polyphenol content because it is taught to have a positive correlation when an increase of the tyrosinase inhibitor is observed.
It would have also been obvious to use only glycerol as a solvent because it is also known as a preservative and as a colorless, odorless, and viscous liquid whose three hydrophilic hydroxyl groups impart both solubility in water and hygroscopicity (water-absorption). Selection of this as the only solvent for skin formulations along with the rose extract would have been prima facie obvious because glycerin could preserve the extract and create a hygroscopic formulation which would help the skin to absorb/retain water. Optimizing the amount of rosewood extract to be less than 0.5 or 0.45 weight ratio to solvent is well within the ordinary skill of any artisan especially given the prior art.
There would have been a reasonable expectation of success in arriving at the instant invention given the prior art.
Response to Arguments
Applicant's arguments filed 08/21/2026 have been fully considered but they are not persuasive. The applicant argues that prior art does not teach the specific amounts of polyphenols being at 20% and argues that there is no teaching or reason to optimize to this amount because the art does not teach or recognize that the polyphenols are the active components, such as the tyrosinase inhibitors described by Furuya. The Office brings in new art by Keiji which teaches that the polyphenols indeed have a positive correlation with the tyrosinase inhibition activity taught by Furuya and are described as being the active component in the cosmetic composition, which is also described in amounts at 20%.
The applicant also argues that the instant extract is different because it is from specific parts of the plant. Furuya teaches using the whole plant. This would include the leaves, stalks and suckers being claimed and therefore would also include the extracted components claimed. The applicant believes that the difference in the instant extract over Furuya’s is that the instant extract is from specific parts of the plant. Those parts are made obvious considering that Furuya teaches using the whole plant. The applicant also believes the rosewood extract combined with the specific solvent and which comprises of 20% polyphenols is different from the art. It is not as Furuya teaches the same extract with the same amount of solvent and Keiji teaches the polyphenol content at 20% and teaches that the polyphenol content is positively correlated with tyrosinase inhibition. Tyrosinase inhibitors are known to suppress the deposition of melanin in the skin and can prevent and improve post inflammation pigmentation such as spots, freckles, darkness, senile plaques, wounds and burns.
The applicant argues that the same solvent used to extract from the same plant would not inherently have the same polyphenols content but only offers the argument that Furuya does not teach extracting from the same plant parts and so the contents would differ. Furuya teaches using the whole plant and so the extraction of the polyphenols from the stalks, leaves and suckers would still be in the extract taught by Furuya, even if there were additionally extracted components from the other parts of the plant. The applicant argues that the inherent argument that the Office argues offers no support. The support comes from the fact that the same solvents and process are discussed in the prior art for the same plant species, which the applicant also describes, and so the same components would inherently be in the extract. That is the basis of fact the argument is relied on. If the process and the chemical components used during extraction are the same, it will result in the same extracted components. The applicant offers no evidence that the extracts are any different besides a statement that the plant parts are different, which already has been discussed.
The applicant argues that the Office has ignored features of claim 1, specifically the plant parts and the minimum amount of polyphenols. Each of these limitations were discussed and were not ignored as what the applicant argues and will not be discussed here. The applicant believes that since Furuya does not recognize the main problem that the applicant is trying to resolve, that somehow the extracts are different. This is not the case as the art does not need to recognize the applicant’s issues or combine the components in the amounts claimed for the same reason as the applicant has done.
Conclusion
The claims remain rejected, and no claims are 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.
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JACOB A BOECKELMANExaminer, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
