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 .
This Office Action has been made FINAL.
Status of the Claims
Claims 1-5, 7-8, and 21-22 are pending.
Claim 6 has been canceled.
Claims 1-5, 7-8, and 21-22 are elected.
Claims 1, 7, and 22 are currently amended.
Claims 9-20 are withdrawn as being directed to non-elected inventions.
Claims 1-5, 7-8, and 21-22 are examined on their merits herein.
Withdrawn Claim Objections
The objection to Claim 22 has been withdrawn in light of Applicant’s amendments and averments.
Withdrawn Objections to the Specification
The objections to the disclosure have been withdrawn in light of Applicant’s amendments to the specification.
Withdrawn Rejections
The rejection of claim 22 under 35 USC 112(a) has been withdrawn in light of applicant’s amendments and averments regarding the deposit of biological material.
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 (i.e., changing from AIA to pre-AIA ) 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.
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 nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 7-8 are newly rejected under 35 U.S.C. 103 as being unpatentable over Hilaire (Pascal Hilaire, “Inhibiting disagreeable odors with extracts of undifferentiated plant cells”, US patent 6,551,625, 22 April 2003) in view of Ennamany (Rachid Ennamany, “Method of obtaining phytoalexins”, US 2005/0265953 A1, 2004), and further in view of Gonçalves (Sandra Gonçalves, “In vitro culture of lavenders (Lavandula spp.) and the production of secondary metabolites”, Biotechnology Advances, Volume 31, Issue 2, March-April 2013, Pages 166-174).
Claims 1-5 and 7-8 are broadly drawn to non-elicited dedifferentiated plant cells of a plant of the species Lavandula angustifolia (mint family Lamiaceae) or extracts thereof and a process of producing said cells or extracts.
The extracts may be from the intracellular medium and may be aqueous, organic, or dried. The extracts may be from dedifferentiated cells derived from cells from the leaves, stalks, flowers, petals, sepals, seeds, roots, or one or more parts of said organ(s) of the plant cultivated in vivo or wild. Claim 5 requires that the cells be derived from leaves or fragments of leaves specifically. Further the claims outline a process comprising the steps of, first, having parts of a plant of the species Lavandula angustifolia (claim 21 requires a white variety). Second, cultivating the plant parts in culture medium comprising at least 1 plant hormone to produce dedifferentiated cells, as currently amended the “at least one plant hormone” is not 2,4,-diclorophenoxyacetic acid. Third, recovering the cells generated in the second step. Fourth an optional step, extracting dedifferentiated cells recovered in the third step. Fifth, “wherein said process does not comprise a step of eliciting said dedifferentiated cells.” The culture medium is aqueous and contains at least one plant hormone which is not 2,4,-diclorophenoxyacetic acid (amended claim 7), at least one salt optionally in hydrated form chosen from NH4NO3; KNO3; CaCl2; MgSO4; KH2PO4; MnSO4; ZnSO4; KI; Na2MoO4; CuSO4; Na2EDTA; FeSO4; the aqueous culture medium further comprises 2 or 4 or 5 or 7(H2O); myoinositol; nicotinic acid; Pyridoxine HCl; thiamine HCl; naphthaleneacetic acid; kinetin; sucrose, and optionally polyvynylpyrrolidone.
Hilaire teaches a method of producing odor inhibiting extracts from dedifferentiated plant cells derived from the leaves or other parts of a plant produced in vivo or in vitro culturing, the process of acquiring undifferentiated cells taught by Hilaire in example 1 clearly meets Applicant’s definition of the dedifferentiation of cells. The examples of the invention give embodiments of cultures that use kinetin, sucrose, aqueous and alcoholic forms of extracts (column 2). At least one variation of each of the ingredient of the medium required by claims 7 and 8 are taught in Hilaire’s first example (for instance salt: KNO3, carbon source: sucrose) (see tables under example 1), in fact every ingredient of the medium required by claim 8 is taught in Hilaire’s first example except 4H2O.
Hilaire states “The undifferentiated plant cells according to the invention can originate from any known plant species. In this respect, particularly exemplary are the genera Salvia, Coleus, Rosmarinus…” (column 3 line 66 abridged to column 4 line 2) Salvia, Coleus, and Rosmarinus are closely related genera to the claimed Lavandula, all four are of the plant family Lamiaceae.
Hilaire does not teach that their process is used with Lavandula angustifolia. However, Hilaire does teach that their process can be used with any plant species, specifically points out 3 closely related genera that this process could be applied to and in example 1 shows that this process has successfully been applied to Salvia miltiorrhiza, a closely related genus.
Ennamany teaches a process of producing a culture of dedifferentiated plant cells which are then elicited in vitro and dried. Ennamany teaches that their process can be used with Salvia, Coleus, Rosmarinus and Lavandula angustifolia (para 94).
Hilare and Ennamany do not teach a plant hormone in the dedifferentiation step that is not 2,4,diclorophenoxyacetic acid.
Gonçalves teaches a process of in vitro culture of lavenders (Lavandula spp.) and the production of secondary metabolites (whole document). Gonçalves teaches “The organogenetic process is influenced by the type of explant in addition to environmental factors and the choice of chemical additives. Cells are induced to become dedifferentiated by PGRs (particularly by controlling the ratio between cytokinins and auxins) so that they are competent to respond to new physiological and environmental stimuli” (3.2. Plant regeneration via organogenesis). Gonçalves also teaches by reference “Ghiorghiţă et al. (2009) studied the morphogenetic behavior of L. angustifolia explants (nodes, shoot tips, internodes and leaves) and observed that the main response in all the explants was callogenesis, and that shoot tips and nodes inoculated on PGR-free MS medium, on MS medium with NAA, and sporadically on media with other PGRs, produced new plantlets (3.2. Plant regeneration via organogenesis). NAA (Napthalene Acetic Acid) is an auxin type plant hormone from the list in the instant specification (para 0078).
It would have been prima facie obvious at the time of filing to combine the processes as taught by Hilaire, Ennamany, and Gonçalves such that the cells and extracts produced by Hilaire would have been based on cells collected from Lavandula angustifolia for culturing purposes as taught by Ennamany and Gonçalves.
It would have been obvious to do such because Hilaire, Ennamany, and Gonçalves all teach the use of Lavandula angustifolia, or species closely related thereto, in similar processes to the end of producing cells or extracts used in topical dermal treatments. Furthermore, Ennamany and Gonçalves teach Lavandula angustifolia as a specific embodiment of their processes.
One would have had reasonable expectation of success in combining the methods because the species of plants involved are the same or closely related, the processes follow similar steps, the processes are all drawn to skin care products or products used in skin care, and the cited processes successfully produced target extracts and were used in skin care products.
Furthermore, the instant claims are to a product by process where the final product appears to be identical to the dedifferentiated cell product, before elicitation, derived from the process of Hilaire, Ennamany, and Gonçalves.
Regarding the new claim limitation wherein the at least one plant hormone is not 2,4,diclorophenoxyacetic acid (claim 1 and 7), Hilare and Ennamany do not teach a plant hormone in the dedifferentiation step that is not 2,4,diclorophenoxyacetic acid. Gonçalves teaches that plant cells are induced to become dedifferentiated by PGRs particularly by controlling the ratio between cytokinins and auxins (3.2. Plant regeneration via organogenesis).
Regarding claim 21, although no reference teaches the use of a specifically white variety of Lavandula angustifolia, without any evidence to the contrary it would have been obvious to a person skilled in the art at the time of filing to apply the processes taught in the prior art cited to a white variety of Lavandula angustifolia. There is no reason to believe that the cellular metabolism of a white variety could not be manipulated in the same way as any other color variety of Lavandula angustifolia.
As such, the claimed invention is obvious in light of the disclosures of the prior art.
Response to arguments
Applicant’s arguments, see pages 8-16, filed 20 October 2025, with respect to the rejections of claims 1-5, 7-8, and 21 under 35 USC § 103, have been fully considered but are not found persuasive.
Applicants argue that with respect to the method disclosed by Hilaire, the plant hormone employed in the examples section is 2,4-dichlorophenoxyacetic acid which is explicitly excluded from independent claim 1. However, this is a new limitation added by the new amendments to claims 1 and 7, the teachings of Hilaire combined with those of Gonçalves meet this new limitation.
Applicants argue that Ennamany does not lead or motivate persons of ordinary skill in the art to select Lavandula angustifolia from among the many species listed as subjects on which to apply their patented process. This argument is unconvincing given that Lavandula is expressly mentioned as a potential subject of their invention and further in light of the newly cited prior art from Gonçalves wherein In vitro cultures of many Lavandula spp. (including angustifolia) are produced, cells dedifferentiated, and secondary metabolites are produced.
Applicants argue that the cited prior art is not concerned with improving and/or reinforcing the skin’s barrier function. Limitations requiring improvement or reinforcing the skin’s barrier function are only in the withdrawn claims, not in the examined claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (Claims to a superconducting magnet which generates a "uniform magnetic field" were not limited to the degree of magnetic field uniformity required for Nuclear Magnetic Resonance (NMR) imaging. Although the specification disclosed that the claimed magnet may be used in an NMR apparatus, the claims were not so limited.); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988) (Various limitations on which appellant relied were not stated in the claims; the specification did not provide evidence indicating these limitations must be read into the claims to give meaning to the disputed terms.); Ex parte McCullough, 7 USPQ2d 1889, 1891 (Bd. Pat. App. & Inter. 1987) (Claimed electrode was rejected as obvious despite assertions that electrode functions differently than would be expected when used in nonaqueous battery since "although the demonstrated results may be germane to the patentability of a battery containing appellant’s electrode, they are not germane to the patentability of the invention claimed on appeal.") (MPEP 2145 (vi.)).
Regarding Applicant’s argument that Ennemany would not lead or motivate a person skilled in the art to provide the non-elicited dedifferentiated plant cells of a plant of the species Lavandula angustifolia or an extract from cells thereof: Ennemany is only used in the rejection as evidence that Lavandula angustifolia has been known in the art to be successfully used with cell culturing and extract production methods such as those of Hilaire.
A new rejection is made over Hilaire in view of Ennamany, and further in view of Gonçalves. The new rejection is over an obvious combination of prior art elements.
Conclusion
Claim 22 is allowed.
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 extension fee 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 Zachariah Kay whose telephone number is (703)756-4771,
reachable hours: Pacific time Monday-Wednesday & Friday 0900-1230 & 1430-1830, Thursday 0830-1630.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at (571)270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARIAH ALLAN KAY/Examiner, Art Unit 1661
/BRATISLAV STANKOVIC/Supervisory Patent Examiner, Art Units 1661 & 1662