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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/24/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application on 06/10/2022.
Response to Amendment
Applicant's amendment and argument filed 02/24/2026, in response to the final rejection, are acknowledged and have been fully considered. Any previous rejection or objection not mentioned herein is withdrawn.
Claims 1-4, 8, 10-26 are being examined on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 8, 10-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “polyols comprising at least three hydroxy functions”…”at least one diol” and the claim also recites “wherein the polyol comprising at least 3 hydroxy functions is selected from glycerin and derivatives thereof, and glycols comprising at least 3 hydroxy functions and derivatives thereof;” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Additionally, claim 1 recites “polyols comprising at least three hydroxy functions, wherein said polyol(s) is then the only solvent of the composition and continues to list additional components as solvents and it is confusing. It appears the applicant may be trying to list separate combinations of solvents wherein polyols comprising at least three hydroxy functions, wherein said polyol(s) is then the only solvent of the composition is one selection and mixtures of at least one polyol comprising at least three hydroxy functions and water is a separate selection and mixtures of at least one polyol comprising at least three hydroxy functions and at least one diol comprising from 2 to 4 carbon atoms is another option. If so it may read more readily by placing (a), (b) and (c) in front of each option for clarity.
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 1-4, 8, 10-26 are rejected under 35 U.S.C. 103 as being unpatentable over Rikako Furuya et. al. (WO2002/005757A1) and USDA Agricultural Marketing Service (see previous rejections filed 04/04/2025 and 01/13/2025). This rejection is maintained due to the amendments and arguments filed on 02/24/2026.
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 of an oil phase and an aqueous phase of the extract (see page 10 at top).
Specifically Furuya teaches the rose extract in formulations with both glycerin at 3%, propylene glycol at 7% and the extract at a range of 1% (see page 4), which would be less than the 7:13 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 only has the polyol(s) as a solvent.
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.
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 persons having 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 of 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.
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 the 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 02/24/2026 have been fully considered but they are not persuasive. The applicant argues that the solvent used in Furuya is not the same as the solvent used for formulating the final composition. The Office points out that Furuya teaches wherein the rosewood extract can be extracted with aqueous alcohol because it would render an extract with similar polyphenols, not for formulating the final composition as the applicant is arguing. The applicant recites: “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 of specifications). The applicant argues that Furuya never discusses the number of polyphenols and never discusses that the extract is a rosewood extract. Furuya indeed teaches that the extract is from R. centifolia L. and the polyphenols would inherently be in the same hydroalcoholic extract of the same species of plant, and plant parts as the instant applicant has claimed, and recognized form their own specifications. The applicant believes the difference between the prior art and the instant invention lies in the rosewood extract is from specific parts of the Rosa centifolia, being combined with a specific solvent in specific ratios and having at least polyphenols at 20%. Furuya teaches all of the Rosa centifolia plant can be used and teaches benefits of the polyphenols as being used in cosmetics for skin whitening and even activities against tyrosinase and the production of cyclic AMP. Increasing polyphenols is obvious to increase their beneficial effects. Furuya acknowledges that components of the rose extract such as L-ascorbic acid has poor stability and this is one of the drawbacks of previous rose extracts; meaning Furuya is attempting to create formulations which increase the solubility of the components of the extract. Furuya also teaches the rose extract in formulations with both glycerin at 3%, propylene glycol at 7% (polyols) and the extract at a range of 1% which is within the claimed ranges of solvent to extract.
Selecting glycerin as the solvent for formulation is prima facie obvious. As discussed in the above rejection and to explain again why the selection of using gycerin as the solvent in the formulation of the herbal extract, the 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”. This is the same reason that the applicant uses the solvent, to create an odorless, colorless and stable composition. Glycerin is highly common in the art in cosmetic formulations specifically for these purposes.
The applicant argues that Furuya never suggests using the aforementioned solvent to be useful for dissolving the plant extracts. This simply is not true as both Furuya teaches using glycerin and also the USDA teaches many reasons (which are the same being claimed) for using glycerin.
Conclusion
Currently no claims are allowed.
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JACOB A BOECKELMANExaminer, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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