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 .
Claim Status
Applicant’s remarks and amendments, filed 18 February 2026 in response to the non-final rejection mailed DATE, are acknowledged and have been fully considered. Applicant’s amendments to the claims are acknowledged. The listing of claims filed 18 February 2026 replaces all prior versions and listings of the claims.
Claims 1-3, 5-6,and 8-17 are pending. Claim 4 is canceled by Applicant’s amendment. Claims 1, 5, 12, 13, 16, and 17 are amended. Claims 9-11 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 1-3, 5, 6, 8, and 12-17 are being examined on the merits.
Response to Amendment
Any previous rejection or objection not mentioned herein is withdrawn.
Applicant’s amendments to Claims 8, 16, and 17 have overcome the claims objection in regards to minor informalities. The objection to the claims has thus been withdrawn.
Claim Rejections - 35 USC § 102/103
(grounds modified as necessitated by amendment)
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-3, 5, 6, 8, 12, and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mitchell (WO 2015/023586 A2) as evidenced by Srivastava & Gupta (Mol Cell Pharmacol, 2009, 15 pages).
MPEP § 2112 provides guidance as to the Examiner' s burden of proof for a rejection of claims under 35 U.S.C. 102 or 103 based upon the express, implicit, and inherent disclosures of a prior art reference. The case law clearly states that something which is old does not become patentable upon the discovery of a new property.
The instant claims are as of record, drawn to a method for producing an extract composition comprising the steps of (1) applying an oxidative stress to a plant belonging to the family Asteraceae, Umbelliferae, Lamiaceae, or Guttiferae and (2) obtaining an extract from the plant that has undergone (1). The application of oxidative stress is an application of a liquid composition comprising an oxidizing agent selected from hydrogen peroxide, hypochlorous acid, potassium nitrate, permanganate, peroxide, ozone, sulfur dioxide, or combinations thereof.
Mitchell teaches a process for ambient temperature fractionation and extraction of various biomasses wherein herbal plant material (herbaceous plant) in whole leaf, stem, stalk, root, and the like (part of the plant; as required for instant Claim 3) is extracted and can include plants in the family Asteraceae (echinacea, dandelion, milk thistle seed, chamomile (apigenin-containing plant), or feverfew), Guttiferae (St. John’s wort), and Lamiaceae (chaste tree berry; Mitchell, page 10, lines 15-25; as required for instant Claims 1, 2, and 8). The extraction process comprises a pretreatment step wherein the pretreatment includes addition of an acid to the pretreatment solution (liquid composition) such as nitric acid (applying an oxidative stress; preserved; see e.g., instant specification, [0031] and Example 10; Mitchell, page 7, lines 27-31; as required for instant Claims 1 and 2). A sequestering or chelating agent (spreading agents) may also be added (Mitchell, page 6, lines 32-33; as required for instant Claim 5). The biomass is pretreated in a container (e.g., immersed, see Figure 1) for less than 1 minute to 72 hours (Mitchell, page 7, lines 16-21; as required for instant Claim 12) and pretreatment is conducted at ambient temperature to greater than 100°C (Mitchell, page 8, lines 11-12; as required for instant Claim 14). After pretreatment, the biomass is contacted with a solvent such as a short chain alcohol, glycerin and water, or a co-solvent mixture of any combination thereof to obtain extracts (Mitchell, Claims 16 and 19, pages 12-13; as required for instant Claims 1 and 2). Additionally, it is well known in the art that plant biomasses comprise cellulose, hemicellulose, and lignin, wherein lignin is a polymer of phenolic molecules (polyphenol; Mitchell, page 5, lines 7-8; as required for instant Claim 6). This is further evidenced by Srivastava & Gupta, which indicate that both phenolic and essential oil components are naturally present in German chamomile (Srivastava & Gupta, Introduction, page 1).
Although Mitchell teaches each of the active steps in the claimed method, they are
silent regarding the specific oxidizing agents recited in instant Claim 1. The cited art taken as a whole demonstrates a reasonable probability that the method of Mitchell is either identical or sufficiently similar to the claimed method that whatever differences exist, they are not patentably significant.
The cited reference discloses nitric acid as a pretreatment solution, which appears to be identical to the presently claimed method because as indicated in the instant specification, nitric acid is an acceptable oxidizing agent for the present invention (see instant specification, [0031] and Example 10). Consequently, the claimed process (and compositions provided therein) appears to be anticipated by the reference. In the alternative, even if the process (and compositions therein (with respect to a pretreatment step)) is not identical to the referenced process, with regard to some unidentified characteristics, the differences between that which is claimed and that which is disclosed, is so slight that the referenced method is likely to inherently possess the same characteristics of in the claimed process, particularly in view of the similar characteristics which they have been shown to share. Thus, the claimed process would have at least been obvious to those of ordinary skill in the art within the meaning of 35 USC § 103(a).
Accordingly, the claimed invention as a whole was at least prima facie obvious, if not anticipated by the reference, especially in the absence of sufficient, clear, and convincing evidence to the contrary.
Claims 1-3, 5, 6, 8, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell (WO 2015/023586 A2) as evidenced by Srivastava & Gupta (Mol Cell Pharmacol, 2009, 15 pages), as applied to Claims 1-3, 5, 6, 8, 12, and 14 above, and further in view of Nishisaka et al. (JP H10194920 A).
The instant claims and teachings of Mitchell and Srivastava & Gupta are as of record.
Mitchell (as evidenced by Srivastava & Gupta) does not teach wherein the extraction solvent is butylene glycol aqueous solution or an oil having a solubility parameter from 15 to 21.
Nishisaka et al. teach solvents for obtaining chamomile extracts including extracting the flowers with water, 1,3-butylene glycol (butylene glycol), liquid paraffin, isopropyl myristate, castor oil, persic oil, soybean oil, squalene (oil having a solubility parameter from 15 to 21), or a mixture thereof (aqueous solution, e.g., water and 1,3-butylene glycol; Nishisaka et al., page 3; as required for instant Claims 16 and 17).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to combine the method of Mitchell with the solvents of Nishisaka et al. in order to arrive at the instantly claimed invention. A skilled artisan would know that various solvents are available for extraction of natural products from plants and would be further motivated to use the solvents of Nishisaka et al. in order to obtain various compounds from plants, such as azulene, camazulene, umbelliferone, 7-methoxycoumarin, matricin, maticalin, taraxasterol, lupeol, apiin, chroman, and spiroether from chamomile (Nishisaka et al., page 3), and in particular those with specific solubility parameters for use in cosmetics in order to provide low skin irritation and a good feeling upon use (Nishisaka et al., Abstract, page 1).
The cited references, including Mitchell, are relied upon for the reasons discussed above. If not expressly taught by the prior art, based upon the overall beneficial teaching provided by this reference with respect to the method of extracting a biomass in the manner disclosed therein, the adjustments of particular conventional working conditions (e.g., determining a suitable amount of liquid oxidative stress composition (instant Claim 13) and the age of the harvested herbaceous plant (instant Claim 15) with which to perform such a method), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 18 February 2026 have been fully considered but they are not persuasive.
Applicant argues that Mitchell does not in any way disclose or suggest applying oxidative stress with use of a liquid composition comprising an oxidizing agent selected from hydrogen peroxide, hypochlorous acid, potassium nitrate, permanganate, peroxide, ozone, sulfur dioxide, or combinations thereof. Mitchell does, however, disclose the addition of nitric acid to a pretreatment solution. As indicated by the instant specification (e.g., [0031] and Example 10), nitric acid is an acceptable oxidizing agent for carrying out the instant method. Mitchell does, therefore, implicitly disclose the method as claimed without evidence to the contrary. It is additionally noted that while the other acids of Mitchell (e.g., hydrochloric acid, phosphoric acids, acetic acid, and formic acid; page 7, ln. 30) are not necessarily oxidizing agents, reducing the pH of the pretreatment solution also induces oxidative stress in plants (see e.g., Ansari & Khan, J Environ Manage, 2025, page 11, Figure 6).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to combine the method of Mitchell with the solvents of Nishisaka et al. in order to arrive at the instantly claimed invention. A skilled artisan would know that various solvents are available for extraction of natural products from plants and would be further motivated to use the solvents of Nishisaka et al. in order to obtain various compounds from plants, such as azulene, camazulene, umbelliferone, 7-methoxycoumarin, matricin, maticalin, taraxasterol, lupeol, apiin, chroman, and spiroether from chamomile (Nishisaka et al., page 3), and in particular those with specific solubility parameters for use in cosmetics in order to provide low skin irritation and a good feeling upon use (Nishisaka et al., Abstract, page 1).
Conclusion
No claims are presently 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER L CAIN whose telephone number is (703)756-1318. The examiner can normally be reached M-Th 11:00am to 5:00pm EST.
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/J.L.C./Examiner, Art Unit 1655
/AARON J KOSAR/Primary Examiner, Art Unit 1655
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