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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/09/2026 has been entered.
Status of Claims
Amendment filed on 02/09/2026 is acknowledged.
Claims 1-5, 8-10, and 12 are amended. Claim 20 remains cancelled.
Claims 1-19 are pending and being examined on the merits herein.
Priority
This instant application 18044020, filed on 03/03/2023, is a 371 of PCT/IB2021/058057, filed on 09/03/2021, claims foreign priority to India 202031038030, filed on 09/03/2020.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 02/09/2026, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Claim Objections
Claims 2-19 are objected to because of the following informalities:
Claims 2-19 each recites “A non-aqueous cosmetic composition as claimed …”. Because these claims are dependent claims, the article “A” should be modified to definite article “the” in order to properly refer to the claim upon which each of claims 2-19 depends.
Appropriate correction is required.
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 1-19 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 1 recites “wherein the active is extract of Bidens pilosa” without specifying what kind of plant extract and what types of compounds are included in the extract as the active. Although preferred extraction method is mentioned and an example of commercially available active of extract of Bidens pilosa is given in instant specification, the information conveys only exemplary method/active without definition of the method/active of instant invention; moreover, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As a person with ordinary skills in the art would not be able to ascertain whether the plant extract is from water, ethanol, or other solvent extraction and whether the active is water-soluble or water-insoluble, or having specific activities, therefore, the claim is indefinite.
Claims 2-19 are rejected accordingly because they are directly or indirectly depending on claim 1 and they do not further clarify the issue as addressed above in claim 1.
Claims 3, 4, 5, 11, 12, 13, 14, 15 each recites weight % without specifying the calculation basis of the percentage. It is unclear whether the weight % is based on the total weight of the composition or a portion of the composition on the individual ingredients. Thus, the metes and bounds of the claimed limitations are indefinite.
Claim 11 recites “comprising 1-25% by weight dicaprylyl carbonate” without defining the weight calculation basis as discussed above. Also, it is unclear whether this component is additional to the components (A)-(D) in claims 1 and 2, which claim 11 directly or indirectly depends on, because dicaprylyl carbonate was not previously mentioned. If it is an additional ingredient, the word “further” in front of “comprising” would clarify the issue.
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 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Patron et al. (US20170087199, 03/30/2017) in view of Xuan et al. (2016, in record of 09/08/2025), Kondo et al. (US20170119638, 05/04/2017), and Bodas et al. (WO2019207527, 10/31/2019, in record of 09/08/2025).
Patron throughout the reference teaches compositions comprising combinations cooling agents, inactive drug ingredients, food additives, antimicrobial, corticosteroids in house or personal care products (e.g., Abstract), with flavor or fragrance composition or perfume cosmetic products (e.g., Claims 2-4; [0006]-[0012]) such as moisturizer, lip balms, cosmetic balms, foundation, etc. (e.g., [0052], [0095]).
For Claims 1, 3, and 6-8, Patron describes personal care compositions such as cosmetic or topical compositions that may comprise C13-17 alkane sulfonate, C14-18 sodium alkane sulfonate, C9-16 alkane/cycloalkane [0028] (corresponding to instant claim 1 (A) and (B) components with overlapping carbon numbers), fatty acid triglycerides (namely the triglycerol esters of saturated and/or unsaturated, branched and/or unbranched C6-24 alkane carboxylic acids, in particular C6-10 [0103]), cetyl ricinoleate [0164] (corresponding to instant claim 1 (C)), isoamyl compounds , salvia sclarea (sclareolide) [0057, 0122], and vegetable oils such as carrot seed oil, dill oil, lemon oil, mustard oil, orange oil, rose oil, sage oil [0057], canola oil, corn oil, avocado oil, olive oil, castor oil, sesame oil, and soybean oil [0091, 0100] (corresponding to components in instant claim 1A-D). The composition may be in form of a liquid including aqueous-based and nonaqueous-based [0071] (corresponding to instant claims 1 and 7).
Patron specifies that cooling agent content in the composition can be 0.0001 to 90% by mass (Claim 13) or 1x10-7 to 20% by mass (Claim 14), including hydroxylated alkane, cetyl ricinoleate (corresponding to components in claims 1 (A)-(C)), dicaprylyl carbonate (corresponding to component in instant claim 3), vegetable oil, tea extracts (e.g., Chinese tea Camellia sinensis extract, Thea Sinensis extract, Palmitoylated green tea extract), daisy extract (e.g., [0164]). The amount ranges overlap with 25-55%, or 14-30% of alkane, and 1-25% cetyl ricinoleate in instant claim 1A-C, and 1-25% of dicaprylyl carbonate in instant claim 3.
Patron points out that in some embodiments, the compositions comprise one or more cooling components, while in others the compositions comprise with one or more inactive drug ingredients, one or more silicone compounds, one or more surfactants [0005]. Therefore, Patron teaches the compositions can be free of surfactant or free of silicones (corresponding to free of surfactant in instant claims 6, and free of silicones or less than 0.5% silicone in instant claims 1 and 8 respectively).
For Claims 4-5, Patron indicates that a pharmaceutical excipient is suitable for the composition, such as vegetable oil castor oil, cinnamon oil, and clove oil; coco caprylate; capric/caprylic/stearic triglyceride; caprylic/capric/succinic triglyceride [0024]. In a particular embodiment, ester oil caprylic/capric triglyceride [0103, 0106] can be included in the composition, and the composition can comprise 0.1 % (w/w), 0.2% (w/w), 0.3% (w/w), 0.4% (w/w), 0.5% (w/w), 0.6% (w/w), 0.7% (w/w), 0.8% (w/w), 0.9% (w/w), 1.0% (w/w), 1.1 % (w/w), 1.2% (w/w), 1.5% (w/w), 2% (w/w), 3% (w/w), 4% (w/w), 5% (w/w), 6% (w/w), 7% (w/w), 8% (w/w), 9% (w/w), 10% (w/w), 20% (w/w) or 30% (w/w) of caprylic/capric triglyceride or a range defined by any two of the preceding values [0105] (corresponding to 1-25% capric/caprylic triglyceride in instant claims 4-5). Since vegetable oil, coco caprylate, and caprylic/capric triglyceride are all listed as excipients, it is an obvious logic that coco caprylate can be included in the composition at similar amount range as caprylic/capric triglyceride, e.g., 0.1-30%, overlapping with the 1-25% range of coco caprylate recited in instant claims 4-5.
Patron indicates that the excipients can include a viscosity adjusting agent in the composition [0097].
Patron does not expressly teach an active as extract of Bidens Pilosa as recited in instant claim 1. Patron also does not teach the viscosity of the composition less than 10 mPa.s as recited in instant claim 9, and the spreading coefficient as recited in instant claim 10.
Xuan provides an overview of the chemistry and pharmacology of Bidens pilosa, teaching that it is commonly called by many vernacular names, such as hairy beggartick; Spanish needles; devil needles; black jack; railway daisy; and pitchforks (Introduction), and it is an edible plant and can be consumed as herbal tea (Pg. 92, right 2nd paragraph), with major pharmacological active substances identified in B. pilosa including polyacetylenes, flavonoids, triterpenes, and essential oils (Pg. 93, right 1st paragraph), constituting many favorable bioactivities, such as, antimicrobial, anti-cancer, anti-hypertensive, anti-inflammatory, antioxidant activities (throughout reference, e.g., Pg. 108-124). Therefore, the tea extract or daisy extract amount in Patron also applies to Bidens pilosa amount, which overlaps with the amount range in instant claim 1 (D).
Kondo throughout the reference teaches cosmetic skin whitening compositions comprising melanogenesis inhibitor (e.g., Abstract). Kondo teaches that synergistic effect of a melanogenesis inhibition is obtained by applying D-pantothenyl alcohol with the plant extracts 41 to 45 in combination (e.g., [0075]) wherein plant extract 45 represents Bidens pilosa plant extract (e.g., Table 1, [0074]). Kondo specifies that when a plant extract having a melanogenesis inhibitory action is formulated into a skin-whitening cosmetic, the amount of formulation is usually 0.0001 % by mass or more, preferably 0.001 % by mass or more, more preferably 0.01 % by mass or more, still more preferably 0.1 % by mass or more. Meanwhile, the upper limit is usually 20% by mass or less, preferably 10% by mass or less, more preferably 5% by mass or less (e.g., [0028]), overlapping with amount range in instant claim 1D.
Bodas teaches a nonaqueous, silicone-free personal care composition that is substantially free of silicone and water, comprising 2 to 95%, preferably 10 to 90%, more preferably 50 to 90% by weight of a C8-40 paraffin compound, 2 to 90%, preferably 10 to 70%, more preferably 10 to 50% by weight of a dialkyl carbonate (corresponding to dicaprylyl carbonate in instant claims), based on the total weight of the composition (e.g., Abstract; [0018]). Bodas shows that plant extracts, e.g., tea extracts, grape skin/seed extracts, melanin, rosemary extract, along with many other antioxidants (e.g., [0055]), and many animal or vegetable fats and oils, e.g., castor oil (cetyl ricinoleate derived from castor oil), coconut oil (isoamyl cocoate derived from coconut fatty acid), palm oil, avocado oil, olive oil, peanut oil, sunflower oil, almond oil, apricot oil [0049], natural fragrances including extracts and essences, such as orange oil, lemon oil, rose extract, lavender, and many others [0059] can be included in the composition. Bodas exemplifies in Aspect 1-13 non-aqueous silicone-free compositions comprising C8-40 alkane at 2-95% (overlapping to amount ranges in instant claim 1A and 1B), dialkyl carbonate at 2-90%, without surfactants [0080-0092]. Bodas specifies that the formulations can have a viscosity from 1 to 100,000 mPa.s or 1 to 10,000 mPa.s, or 1 to 1,000 mPa- s, or I to 100 mPa.s, or 1 to 50 mPa.s, or 1 to 25 mPa.s (22°C/Brookfield RVT viscometer/spindle 5/4 rpm) (overlapping with viscosity less than 10 mPa.s in instant claim 9.
It would have been prima facie obvious for one person with ordinary skills in the art before the effective filing to incorporate the viscosity of non-aqueous silicone-free surfactant-free composition from Bodas and implement beneficial Bidens pilosa extract taught by Xuan and Kondo, and select suitable components from many long lists of proper ingredients taught by Patron to arrive at current invention. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Moreover, not only Patron indicates tea and herb extracts including daisy extract are suitable ingredients, but also Bodas’ composition can include various herbal tea extracts, meanwhile Xuan teaches that Bidens pilosa, which carries a common name railway daisy, constituting lots of benefits including, e.g., antimicrobial, anti-cancer, anti-inflammatory, and antioxidants; and Kondo demonstrates using the beneficial ingredient Bidens pilosa in cosmetic composition as beneficial skin whitening ingredient. These advantages of Bidens pilosa extract taught by prior art would have provided motivation for artisans in the field to implement Bidens pilosa into the composition. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
Regarding viscosity or spreading coefficient in instant claims 9-10 further, It is a routine experimentation for scientists to test and optimize the texture and feeling of a composition, to reach optimized viscosity and spreading coefficient, because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Since both Patron (e.g., [0097]) and Bodas (e.g., [0057]) teach throughout the references many viscosity adjusting agents can be used to modify the viscosity, adjusting and optimizing the viscosity and spreading coefficient can obviously achieve desirable values. Further, the viscosity or spreading coefficient is interpreted as property or intended use of the composition, since it does not add material limitation to the composition. Combined prior art Patron, Xuan, Kondo and Bodas teaches the composition, the property would necessarily present, or intended use would be capable of being achieved by prior art.
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, the alkane carbon numbers, all the amount ranges, e.g., alkanes, Bidens pilosa, cetyl ricinoleate, vegetable oil, dicaprylyl carbonate, coco caprylate, capric/caprylic triglyceride, overlap with those taught in prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Patron et al. (US20170087199, 03/30/2017) in view of Xuan et al. (2016, in record of 09/08/2025), Kondo et al. (US20170119638, 05/04/2017), and Bodas et al. (WO2019207527, 10/31/2019, in record of 09/08/2025) as applied to claims 1 and 3-10 above, and further in view of Donizeti et al. (WO2019000067, 01/03/2019, PTO-892).
Combined teaching of Patron, Xuan, Kondo and Bodas teaches non-aqueous cosmetic composition that can comprise alkanes, cetyl ricinoleate, Bidens pilosa plant extract, dicaprylyl carbonate, coco caprylate, capric/caprylic triglyceride with broad ranges of component amounts, and the composition can be silicone-free and surfactant free, with adjustable viscosity or spreading coefficient, as applied to instant claims 1 and 3-10 and discussed in detail above, and incorporated herein with further specification as following.
For claims 2 and 11, Patron further teaches suitable flavorants in the composition such as isoamyl compounds such as isoamyl hexanoate, 2-amyl-5 or 6-keto-1,4-dioxane, isoamyl laurate, isoamyl nonanoate, amyl octanoate, isoamyl octanoate, isoamyl phenylacetate, isoamyl propionate, isoamyl pyruvate, isoamyl salicylate, isoamyl isovalerate [0124], fragrant isoamyl acetate [0055]. Patron teaches that the vegetable oil can be 5% to up to 30% in the composition [0092]. Since isoamyl compounds are flavorants [0124] and fragrance components [0055], and so are some vegetable oils as flavorants, e.g., carrot seed oil, clove oil, dill oil, lemon oil, mustard oil, and many others [0057], therefore, the isoamyl compound amount in the composition can be at the same range as vegetable fragrant oils between 5-30% as listed above (overlapping with 1-10% isoamyl component in instant claim 2(i)). Patron specifies that cooling agent content in the composition can be 0.0001 to 90% by mass (Claim 13) or 1x10-7 to 20% by mass (Claim 14), including hydroxylated alkane, cetyl ricinoleate (overlapping with 1-25% cetyl ricinoleate in instant claim 2(ii)), dicaprylyl carbonate (e.g., [0164]) (corresponding to component in instant claim 11).
For Claims 12-15, Patron indicates suitable excipients for the composition such as vegetable oil castor oil, coco caprylate; capric/caprylic/stearic triglyceride; caprylic/capric/succinic triglyceride [0024]. In a particular embodiment, ester oil caprylic/capric triglyceride [0103, 0106] can be included in the composition, and the composition can comprise 0.1 % to up to 30% (w/w) of caprylic/capric triglyceride [0105] (corresponding to 1-25% capric/caprylic triglyceride in instant claims 12-15). Since vegetable oil, coco caprylate, and caprylic/capric triglyceride are all listed as excipients, and both vegetable oil and capric/caprylic triglyceride in the composition amount range is below 30%, it is obvious logic that coco caprylate can be included in the composition at similar amount range, e.g., 5-30%, 0.1-30%, both overlapping with the 1-25% range of coco caprylate recited in instant claims 12-15.
For Claims 16-17, Patron points out the compositions can comprise one or more cooling components, while in others the compositions comprise one or more inactive drug ingredients, one or more silicone compounds, one or more surfactants [0005], indicating that the compositions can be free of surfactant or free of silicones. Further, Bodas exemplifies in Aspect 1-13 non-aqueous silicone-free compositions comprising C8-40 alkane (corresponding to C9-13 and C15-19 alkanes in instant claim 1A-B) at 2-95%, dialkyl carbonate at 2-90%, without surfactants [0080-0092].
For Claims 18-19, Patron teaches the composition can be in form of a liquid including nonaqueous-based [0071]. Bodas specifies that the formulations can have a viscosity from 1 to 100,000 mPa.s or 1 to 10,000 mPa.s, or 1 to 1,000 mPa.s, or 1 to 100 mPa.s, or 1 to 50 mPa.s, or 1 to 25 mPa.s (22°C/Brookfield RVT viscometer/spindle 5/4 rpm), obviously Bodas composition is a liquid composition with viscosity overlapping with less than 10 mPa.s in instant claim 19,
Combined teaching of Patron, Xuan, Kondo and Bodas does not teach isoamyl compound species as isoamyl cocoate as recited in instant claim 2 (i).
Donizeti throughout the reference teaches skin tone-correcting cosmetic composition providing cell detoxification, cell oxygenation, antioxidant, antipollution and barrier-strengthening effects, particularly by acting on AR, HIF-1a, and LC3 mechanisms (e.g., Abstract).
Donizeti indicates that composition comprising antioxidant complex including a) Camellia sinensis (tea) extract (e.g., [0017]) in approx. 0.001% to 2% by weight of the composition (e.g., Claim 2; [0030]), b) about 0.1% to 10% conditioning agent (Claim 4; [0031], and c) cosmetically acceptable excipients such as film formers, conditioners, emollients, colorants, viscosity/suspending agents humectants, fragrances, pH adjusters, formulation antioxidants, chelating agents and/or preservatives
[0033], preferably, but not limited to, cosmetically acceptable excipients include isoamyl cocoate, dicaprylyl carbonate, caprylic/capric triglyceride, etc. (e.g., [0034]). Donizeti exemplifies isoamyl cocoate in composition present at 3% (see original, Table 1), falling within the amount range of 1-10% in instant claim 2(i).
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate the teaching of isoamyl cocoate from Donizeti into the composition taught by Patron, Xuan, Kondo and Bodas to arrive at current invention. Because Donizeti teaches using tea extract as antioxidants in combination with shared ingredients, e.g., dicaprylyl carbonate, caprylic/capric triglyceride, in the composition taught by Patron, Xuan, Kondo and Bodas, while specifying that the composition with these excipients including isoamyl cocoate achieves the desirable skin care effect of detoxification, oxygenation, antioxidant, anti-pollution, anti-stress and barrier fortification. It would have provided artisans the motivation to select isoamyl cocoate as an excipient in the composition in order to take the benefit taught by Donizeti for reasonable expectation of success. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interhelical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The amount ranges of isoamyl cocoate, coco caprylate, capric/caprylic triglyceride, and viscosity value overlap with those in prior art. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Response to Arguments
Applicant's remarks/arguments filed 02/09/2026 have been fully considered. New ground of rejections is presented above, in light of claim amendments and applicant’s remarks/arguments.
35 U.S.C. 112 Rejections
Applicant’s amendments should have overcome the rejections.
There are remaining/new 35 U.S.C. 112 issues. Please find details in this office action.
Art Rejections
Applicant asserts that the object of the invention is to provide a non-aqueous cosmetic composition comprising the natural active component, Bidens pilosa, which is a plant extract not soluble in water.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Bidens pilosa not soluble in water) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant asserts that Patron does not teach or suggest that by combining isoamyl cocoate, cetyl ricinoleate, C15-19 alkane, and C9-13 alkane, a non-aqueous, surfactant free, silicone free composition of Bidens pilosa, can be formulated. Xuan teaches Bidens pilosa as a herbal tea. Bodas does not teach Bidens Pilosa.
One cannot show nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what
the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686
F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012). The rejection is obviousness type of rejection, not anticipated rejection. Each reference does not have to teach all the elements of current invention.
Applicant asserts that the combination of Patron and Bodas would not lead to current invention because Bodas composition contains dialkyl carbonate which current invention does not present, and skilled artisan would never combine Patron with Bodas because Bodas does not teach Bidens pilosa.
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, Patron teaches using tea extract, daisy extract as cooling agent, while Xuan teaches Bidens pilosa has alternative name as railway daisy, and the additional reference Kondo, which is added in light of applicant’s remarks, uses Bidens pilosa in skin whitening composition having broad benefits, while Bodas is combined with the other references to teach proper viscosity of non-aqueous silicone-free and surfactant-free composition. The most relevant paragraph is copied below for reference:
It would have been prima facie obvious for one person with ordinary skills in the art before the effective filing to incorporate the viscosity of non-aqueous silicone-free surfactant-free composition from Bodas and implement beneficial Bidens pilosa extract taught by Xuan and Kondo, and select suitable components from many long lists of proper ingredients taught by Patron to arrive at current invention. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Moreover, not only Patron indicates tea and herb extracts including daisy extract are suitable ingredients, but also Bodas’ composition can include various herbal tea extracts, meanwhile Xuan teaches that Bidens pilosa, which carries a common name railway daisy, constituting lots of benefits including, e.g., antimicrobial, anti-cancer, anti-inflammatory, and antioxidants; and Kondo demonstrates using the beneficial ingredient Bidens pilosa in cosmetic composition as beneficial skin whitening ingredient. These advantages of Bidens pilosa extract taught by prior art would have provided motivation for artisans in the field to implement Bidens pilosa into the composition. This renders obviousness as “use of known technique to improve similar devices (methods, or products) in the same way” or as “applying a known technique to a known device (method, or product) ready for improvement to yield predictable results”. See MPEP §2143. (I)(C) and (I)(D).
Applicant asserts that there is no indication in Patron, Bodas, or in Xuan that isoamyl cocoate and cetyl ricinoleate can act as an alternative of dialkyl carbonate and develop a non-aqueous, surfactant free, silicone free composition of Bidens pilosa. The combined reference teaching does not motivate a person skilled in the art to develop current invention.
In light of claim amendment and applicant’s remarks, additional references including Kondo and Donizeti, have been combined with Patron, Xuan, and Bodas to address the implementation of Bidens pilosa and isoamyl cocoate in the composition.
Applicant asserts that the combination of prior arts involves improper hindsight reconstruction of picking and choosing.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Please refer to the entire office action presented above as a complete response to the remarks/arguments.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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