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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 6, 2026 has been entered.
Status of Claims
Claims 1, 5-12 and 16-22 are pending. Claims 2-4 and 13-15 are canceled. Claim 22 is newly added. Claims 1, 7, 12 and 16-18 are amended.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of 1 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20160072382A (6/23/2016) (11/29/2022 IDS)(“KR”) in view of JP 2014/088360 (5/15/2015)(“JP”) is withdrawn.
In light of the cancelation of the claim the rejection of claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over KR 20160072382A (6/23/2016) (11/29/2022 IDS)(“KR”) in view of JP 2014/088360 (5/15/2015)(“JP”) as applied to claims 1 and 5-11 above and further in view of et al. Chen et al. CN 105852012 (6/3/2009) is withdrawn as moot.
In light of the amendments to the claims the rejection of claims 12 and 21 under 35 U.S.C. 103 as being unpatentable in view of Shibuya et al. WO 2014/104171 (7/3/2014) is withdrawn.
In light of the amendments to the claims the rejection of claims the rejection of claims 13-20 under 35 U.S.C. 103 as being unpatentable in view of Shibuya et al. WO 2014104171 (7/3/2014) as applied to claims 12 and 21 and further in view of KR 20160072382A (6/23/2016) (11/29/2022 IDS)(“KR”), JP 2014/088360 (5/15/2015)(“JP”) and Chen et al. CN 105852012 (6/3/2009) is withdrawn.
New Objections/Rejections
Claim Objections
Please note that the claim set submitted December 16, 2025 was not entered since it was fled after a Final Rejection and required new searches and possible new grounds of rejection.
Therefore, the claim status identifiers for claims 1, 7 and 12 are incorrect in that the claim identifiers should be “Currently Amended” rather than “Previously Presented.” Furthermore, the amendments to the claims should be indicated with the appropriate brackets and underlining. Appropriate correction is suggested.
Additionally, the claim status identifier for claim 22 is incorrect in that it should be “New” rather than “Previously Presented.” Appropriate correction is suggested.
Claim Rejections - 35 USC §112(b)
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 11 and 22 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.
Claim 11 is rejected under 35 USC 112(b) for reciting “lotion” in line 4 and also reciting “nourishing lotion, softening lotion” in line 3. Claim 11 is also rejected under 35 USC 112(b) for reciting “cream” in line 2 and also reciting “sunscreen cream” in line 4. Claim 11 is also rejected for reciting “powder” in line 4 and also reciting “powder foundation” in line 5.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claim 11 recites the broad recitation “lotion”, and the claim also recites “nourishing lotion, softening lotion” which is the narrower statement of the range/limitation. Claim 11 also recites the broad recitation “cream”, and the claim also recites “sunscreen cream” which is the narrower statement of the range/limitation. Claim 11 also recites the broad recitation “powder”, and the claim also recites “powder foundation” which is the narrower statement of the range/limitation.
Regarding claim 11, these broad and then narrow phrases render the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 11 is unclear because it is unclear what is called for. For the purposes of this office action claim 11 will be interpreted using the broader phrases as the limitation.
Claim 22 is rejected under 35 USC 112(b) for reciting “lotion” in line 5 and also reciting “nourishing lotion, softening lotion” in line 3. Claim 22 is also rejected under 35 USC 112(b) for reciting “cream” in line 3 and also reciting “sunscreen cream” in line 4. Claim 22 is also rejected for reciting “powder” in line 5 and also reciting “powder foundation” in line 5.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claim 22 recites the broad recitation “lotion”, and the claim also recites “nourishing lotion, softening lotion” which is the narrower statement of the range/limitation. Claim 22 also recites the broad recitation “cream”, and the claim also recites “sunscreen cream” which is the narrower statement of the range/limitation. Claim 22 also recites the broad recitation “powder”, and the claim also recites “powder foundation” which is the narrower statement of the range/limitation.
Regarding claim 22, these broad and then narrow phrases render the claim indefinite because it is unclear whether these limitations are part of the claimed invention. See MPEP § 2173.05(d). The intended scope of claim 22 is unclear because it is unclear what is called for. For the purposes of this office action claim 22 will be interpreted using the broader phrases as the limitation.
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 of this title, 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 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20160072382A (6/23/2016) (11/29/2022 IDS)(“KR2016”) in view of KR 890005252 (12/20/1989)(“KR1989”).
KR2016 teaches a fermented beverage using the peel of chestnuts and a manufacturing method of making the beverage. (See [0001]). The fruit of the chestnut tree is commonly used for food and the fruit is made up of a kernel made up of starch and a two-layered shell called the outer and inner skins. (See [0003]).
Chestnut trees have been used as various medicinal herbs since ancient times. They have been widely known to treat wrinkles, treat hemorrhages, stop bleeding, strengthen the stomach, tonic effects and as a detoxifier. (See [006]). In particular, since it has been discovered that the inner skin of the chestnut fruit has functions that inhibit the auto-oxidation during aging and the inhibition of melanin production, the inner skin has been collected and used as a raw material for beauty packs and whitening cosmetics. (See [0006]).
KR2016 teaches a method for manufacturing a fermented beverage using chestnut skin involving a fermentation process for fermenting the chestnut skin separating during the peeling process using a microbial strain to activate an effective ingredient. (See [0023]). KR teaches a method for fermenting the chestnut peel, so that an effective amount of the functional material can be ingested while enjoying the inherent flavor and taste from the yeast having activated the active ingredient through the fermentation process. (See [0020]). KR thus teaches a cosmetic composition comprising a fermented chestnut inner shell extract as an active ingredient as called for in instant claim 1.
The microbial strain can be Aspergillus oryzae (also known as yeast mold) (See [0025]).
The chestnut skin itself can be separated from the chestnut using hot water as called for in instant claim 9. (See [0015]). Aspergillys oryzae is combined with the chestnut skin and then fermentation takes place. The fermentation process takes place at 25 to 35 degrees Celsius and lasts for 12 to 72 hours which overlaps with the 2 to 20 days called for in instant claim 6. 0.3% of the microbial strain is mixed with the chestnut skin and the 25 to 35 degrees Celsius overlaps with the 20 to 45 degrees Celsius called for in instant claim 7. 0.3% overlaps with the 0.1 to 20 parts called for in instant claim 7. This reads on the inoculating the chestnut shell extract with the fungi Aspergillus oryzae and then fermenting as called for in instant claim 2. The fermentation is solid fermentation as called for in instant claim 5. (See claim 3 to claim 4).
Once fermentation occurs, the step of extraction is conducted as called for in instant claim 2. The extraction is conducted with water as called for in instant claim 8. (See [0024]). KR teaches that a solution results from the extraction process that enables a fermented beverage to be produced
KR2016 teaches a skin whitening application and that fermented chestnut skin is well known for its skin whitening ability. (See [0006]). Skin whitening is called for in instant claim 10. KR2016 teaches a solution as called for in instant claim 11. The solution can be ingested and still provide the skin whitening ability as this is known to be a medical food that is credited with whitening the skin. (See [0006]).
KR2016 does not teach Aspergillus sojae. This deficiency is made up with the teachings of KR1989.
KR1989 teaches a method of making health food containing mainly agricultural products and seaweed. (See Abstract). The method teaches the combination of ground fruits and vegetables and the fermentation and cultivation of microorganisms of Aspergillus oryzae and Aspergillus sojae into vitamins and minerals. (See page 1). Aspergillus sojae is called for in instant claim 1.
It would be prima facie obvious to one of ordinary skill in the art before the earliest effective filing date following the KR2016 method to use Aspergillus sojae taught by KR1989 as a strain for fermenting chestnut skin by combining 0.3% Aspergillus sojae with chestnut skin and allowing fermentation to take place for 12 to 72 hours at 25 to 35 ˚Celsius and then extracting with water to prepare a composition that can be used as a health food as taught by KR1989.
It would be prima facie obvious to one of ordinary skill in the art before the earliest effective filing date to substitute Aspergillus sojae for Aspergillus oryzae as a strain for fermenting chestnut skin because both Aspergillus sojae and Aspergillus oryzae are strains of Aspergillus that can ferment chestnut skin and KR1989 teaches that Aspergillus oryzae and Aspergillus sojae are equivalent.
Claims 12 and 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Shibuya et al. WO 2014/104171 (7/3/2014) in view of KR 20160072382A (6/23/2016) (11/29/2022 IDS)(“KR2016”) and Hou et al. CN 103976203 (8/13/2014).
Shibuya et al. (Shibuya) teaches a cosmetic composition that is a skin exterior anti-aging composition for improving wrinkles and sagging. (See Abstract). The composition comprises an aqueous base and ascorbic acid. (See Abstract). The cosmetic can be a lotion as called for in instant claim 22. (See claim 11). Additional ingredients include Aspergillus/Chestnut astringent skin fermentation extract. Wrinkle amelioration is called for in instant claim 21.
Shibuya does not teach Monascus Pilosus. Shibuya does not teach how the bacteria is used to ferment the Chestnut shell skin. These deficiencies are made up for with the teachings of KR2016 and Hou et al.
KR2016 teaches a fermented beverage using the peel of chestnuts and a manufacturing method of making the beverage. (See [0001]). The fruit of the chestnut tree is commonly used for food and the fruit is made up of a kernel made up of starch and a two-layered shell called the outer and inner skins. (See [0003]). Chestnut trees have been used and have been widely known to treat wrinkles, treat hemorrhages, stop bleeding and strengthen the stomach. (See [006]). In particular, since it has been discovered that the inner skin of the chestnut fruit has functions that inhibit the auto-oxidation during aging and the inhibition of melanin production, the inner skin has been collected and used as a raw material for beauty packs and whitening cosmetics. (See [0006]).
KR2016 teaches a method for manufacturing a fermented beverage using chestnut skin involving a fermentation process for fermenting the chestnut skin separating during the peeling process using a microbial strain to activate an effective ingredient. (See [0023]). KR2016 teaches a method for fermenting the chestnut peel, so that an effective amount of the functional material can be ingested while enjoying the inherent flavor and taste from the yeast having activated the active ingredient through the fermentation process. (See [0020]). The microbial strain can be Aspergillus oryzae (also known as yeast mold). (See [0025]).
The chestnut skin itself can be separated from the chestnut using hot water as called for in instant claim 20. (See [0015]). Aspergillys oryzae is combined with the chestnut skin and then fermentation takes place.
The fermentation process takes place at 25 to 35 degrees Celsius and lasts for 12 to 72 hours which overlaps with the 2 to 20 days called for in instant claim 17. 0.3% of the microbial strain is mixed with the chestnut skin. 0.3% overlaps with the 0.1 to 20 parts called for in instant claim 18. The fermentation is solid fermentation as called for in instant claim 16. (See claim 3 to claim 4).
Once fermentation occurs, the step of extraction is conducted as called for in instant claim 19. The extraction is conducted with water as called for in instant claim 20. (See [0024]). KR2016 teaches that a solution results from the extraction process that enables a fermented beverage to be produced. KR teaches a skin whitening application and that fermented chestnut skin is well known for its skin whitening ability. (See [0006]).
Hou et al. (Hou) teaches a beautifying cosmetic that includes chestnut peel and bacteria Monascus purpureus among other ingredients. (See Abstract and [0031] and claim 7). Hou teaches that the use of its beautifying cosmetic (referred to as a jelly) can increase skin glossiness and can whiten skin. (See [0039-42]). Hou teaches that Monascus Purpueus can ferment chestnut peel in a beautifying cosmetic and the fermentation products are easier for the skin to absorb. (See Example 1). Monascus Purpureus is called for in instant claim 12.
It would be prima facie obvious to one of ordinary skill in the art before the earliest effective filing date making Shibuya’s cosmetic cream to treat wrinkles to use Monascus Purpueus as a bacteria for fermenting chestnut skin in KR2016’s process of fermentation by combining Monascus purpueus with chestnut skin and allowing fermentation to take place for 12 to 72 hours at 25 to 35 degrees Celsius in light of Hou’s teaching that Monascus Purpueus can ferment chestnut peel in a beautifying cosmetic and the fermentation products are easier for the skin to absorb.
It would be prima facie obvious to one of ordinary skill in the art before the earliest effective filing date to use Monascus Purpueus as a bacteria for fermenting chestnut skin by combining with 0.3% Monascus Purpueus with chestnut skin and allowing fermentation to take place for 12 to 72 hours at 25 to 35 degrees Celsius and then extracting with water to prepare a cosmetic that is known to help ameliorate wrinkles and whiten skin as taught by KR2016 and Shibuya.
Response to Arguments
Applicants’ remarks filed December 16, 2025 and January 6, 2026 have been fully considered and are found to be mostly persuasive in view of the amendments to the claims.
Applicants note the amendment to the claims.
II. Claim Rejections under 35 USC Sec. 103
With respect to the obviousness rejection Applicants argue that KR and JP fail to disclose every claimed feature of the claims. Specifically, KR fails to teach the Aspergillus strains that claim 1 has been amended to recite, Aspergillus sojae and Aspegillus brasiliensis. Applicants assert that since KR fails to teach the Aspergillus strains that claim 1 has been amended to recite, it cannot teach the method of preparation using this Aspergillus strain.
Applicants note that claim 4 has been canceled and the rejection of this claim is therefore moot.
Applicants argue that KR and JP fail to disclose every claimed feature of the claim 12 and dependent claims. Specifically, KR fails to teach the Monascus strains that claim 12 has been amended to recite, Monascus Kaolian and Monascus Purpureus. Applicants assert that since KR fails to teach the Monascus strains that claim 12 has been amended to recite, it cannot teach every claimed feature of the claim 12 and its dependent claims.
Response
In light of the amendments to the claims, Applicants arguments that KR and JP fails to teach the Aspergillus strains that claim 1 has been amended to recite are persuasive and the rejections have been withdrawn above.
In light of the cancelation of claim 4, Applicants arguments that the rejection of claim 4 is moot is persuasive and the rejection have been withdrawn above.
In light of the amendments to the claims, Applicants arguments that the prior art fails to teach the Monascus strains that claim 12 has been amended to recite are persuasive and the rejections have been withdrawn above.
Please note the new rejections applied above.
The remainder of Applicants’ arguments are moot in view of the new rejections applied above.
Conclusion
Claims 1, 5-12 and 16-22 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619