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
Applicants’ amendments and arguments filed 12/22/2025 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claims 2-3, 5, 7-8, 10-15, and 17-18 are cancelled.
Claim 1 has been amended.
Claims 1, 4, 6, 9, 16, and 19-20 are under current examination.
New Rejections Necessitated by Claim Amendments
Objection to Specification
The instant specification does not have proper incorporation of “lotus flower” and is thus objected to. The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In the instant case, Applicant has referenced a different patent for the subject matter, specifically the “lotus flower” as claimed by instant claim 1. The instant specification states “the extraction process is consistent with the extraction technology described in the US patent document US8668939B2” (page 11, lines 26-28). The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper Thus, Applicant has introduced new matter into the claims with the addition of “lotus flower”. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. Therefore, in order to move prosecution forward, the claim will be examined under its broadest interpretation, thus any art teaching “lotus extract” will meet this limitation.
Maintained Rejections
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.
Claims 1, 4, 6, 9, 16, and 19-20, are rejected under 35 U.S.C. 103 as being unpatentable over Xiaohui (CN 106075090, published 11/09/2016, hereafter Xiaohui). The following evidentiary reference is provided for further understanding: Suna et al. (Suna, S., Tamer, C. E., & Özcan-Sinir, G. (2019). Trends and possibilities of the usage of medicinal herbal extracts in beverage production. Natural Beverages, 361–398. https://doi.org/10.1016/b978-0-12-816689-5.00013-4, hereafter Suna).
As evidenced by Suna, decoction is a method of producing an herbal extract (abstract).
Regarding 1, 4, 6, 9, 16, and 19-20, Xiaohui teaches a skin moistening, traditional Chinese medicinal cream cosmetic product for the purpose of preventing miscarriages (title and description). The cream contains dendrobium candidum, licorice aka glycyrrhiza glabra, and lotus seeds (abstract and at least claims 1-2 and Examples). Xiaohui further outlines that the dendrobium candidum used in their claimed cream contains the active polysaccharide which has properties to supplement human skin (invention advantages – paragraph 3). In regards to claim 1, Xiaohui teaches the preparation of the raw ingredients (i.e. lotus seed) using a decoction method (step 3). In addition to the raw materials and in regards to claim 20, Xiaohui teaches the use of an emulsifier, specifically glyceryl monostearate and olive oil (claim 3). Furthermore, Xiaohui teaches the addition of vitamin e and rehmannia, both antioxidants (claim 1 and 5). Xiaohui teaches the addition of lecithin, a natural preservative (claim 1). Further in regards to claims 1 and 4, Xiaohui teaches two sample compositions in the examples. The first composition containing 7-9 parts dendrobium candidum, 1-3 parts lotus seed, and 4 parts licorice producing a concentration to include the following ratio: 3 dendrobium candidum to 1.29 lotus seed to 1.71 glycyrrhiza glabra (pg 2 of translation and examples).
One skilled in the art before the effective filing date of the claimed invention, would know to make a composition comprised of dendrobium candidum polysaccharide, glycyrrhiza glabra, and lotus extracts at the claimed ratios. The MPEP 2144.05 (1) states that a prima facia case exists when ranges overlap or lie within the prior art. Thus, it would have been prima facia obviousness to create a composition with the ratios disclosed in claims 1 and 4 as Xiaohui discloses ratios that both overlap and lie within the ratios of claims 1 and 4.
Response to Applicant’s Arguments
Applicants’ arguments filed 12/22/2025 have been fully considered.
In regards to Applicant’s “Discussion of the Amendments to the Claims”, Applicant states no new matter is added and references the instant specification, page 11, lines 26-28 for the newly added amendments. As noted in the 35 U.S.C. 112(a) rejection above, referencing a patent for a process of extract does not properly provide the ingredients to convey Applicant’s invention. Therefore, a 35 U.S.C. 112(a) rejection has been added above as the disclosure has failed to sufficiently enable a person skilled in the art to make and use the invention without undue experimentation.
In regards to the 35 USC § 103 rejection, Applicant argues the instant amended claims further define the lotus extract is obtained from lotus flower and that Xiaohui uses lotus seed.
In regards to Applicant’s argument over “lotus flower”, it is again noted that Applicant has introduced new matter, therefore, Applicant’s claim to “lotus flower” is not enabled. Therefore, the claim has been broadly interpreted as “lotus extract” and other than arguing that the prior art does not teach “flower”, Applicant has provided no additional reasoning as to why the rejections should be withdrawn.
In summary, the examiner is not persuaded by Applicant’s arguments and the 35 USC § 103 rejection is maintained.
Conclusion
No claims 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 ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611
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