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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14 and 19-24 in the reply filed on 9/29/2025 is acknowledged.
Status of the Claims
Claims 1, 12-22, and 24 are pending. Claims 1, 12-14, 19-22, and 24 are under current examination. Claims 15-18 are withdrawn from consideration. Claims 2-11 and 23 are cancelled.
Withdrawn Objections and Rejections
All objections to the abstract are withdrawn in view of the amendments to the abstract filed 4/24/2026.
All objections and rejections pertaining to claims 2-11 and 23 are moot because the claims are cancelled in the amendments to the claims filed 4/24/2026.
All objections to claims 1, 12-14, 19-22, and 24 are withdrawn in view of the amendments to the claims filed 4/14/2026.
All rejections of claims 1, 12-14, 19-22, and 24 under 35 U.S.C. 112(b) are withdrawn in view of the arguments and amendments to the claims filed 4/24/2026.
All rejections under 35 U.S.C. 102 are withdrawn in view of the amendments to the claims filed 4/24/2026.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendments to the claims filed 4/24/2026 have necessitated the new grounds of rejection.
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, 12-14, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kwon (U.S. Patent Application Publication No. 2022/0287938, filing date: 8/21/2020, available as prior art under 35 U.S.C. 102(a)(2), of record) in view of Dai et. al. (Food Chemistry, pg. 14-19, publication year: 2015).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Kwon teaches a eutectic mixture comprising water, an alpha-hydroxy acid (AHA) and an amino acid [0008]. The AHA may be lactic acid or citric acid [0013] and the amino acid used in combination with the AHA may be glycine [0016]. Water may be included in an amount of 25 to 80 parts by weight with respect to the weight of the eutectic mixture [0022]. The AHA and amino acid may be included in the eutectic mixture at a weight ratio of 1:0.1 to 1:10 [0019]. Kwon also teaches that in the eutectic mixture, a ratio between materials required for the eutectic mixture may be determined according to the charge of the molecules of the components, the type and number of functional groups of the molecule, and the polarity of the molecule or functional group. The ratio between materials may also be determined according to the size or similarity of the molecules [0034]. Kwon also teaches that the eutectic phenomenon is a phenomenon in which the melting point drops while two or more materials are mixed, so even though each component contained in the mixture shows a solid state at room temperature the mixture may become an anhydrous solution rather than a solid crystal, which is due to Van der Waals interactions or hydrogen bonding between the components [0004]. When AHA is contained in the eutectic mixture, the eutectic mixture may be prepared by mixing the AHA with an amino acid, which is a component that can be bound by dipole-dipole interaction between polar molecules, a dipole-induced dipole interaction, a hydrogen bond or a Van der Waals interaction. In this case, the AHA may act as a hydrogen bond donor, and the amino acid may act as a hydrogen bond acceptor [0016]. The claims recite the limitation “for extraction of biocomponents”; the intended use of a claimed invention must result in a structural difference between the claimed invention and the prior art in or order to patentably distinguish the claimed invention form the prior art, therefore the eutectic mixture embraced by Kwon reads on the instant claims. See MPEP 2112.01 (II).
Regarding claim 12, Kwon teaches that the eutectic mixture is clear and homogenous and maintains its liquid state and transparency even after being subjected to a cooling process [0048]. With regards to the “clear and liquid at a temperature ranging from 15 to 30oC” and “melting point” limitations of instant claim 12, the prior art teaches the same eutectic mixture as claimed and therefore, the liquid state and melting point temperature ranges are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Regarding claim 13, Kwon teaches that the acidity of the eutectic mixture may be adjusted to have a value of pH 3.5 to pH 10 [0037]. Kwon do not disclose that the pH may be adjusted by changing the molar ratio between the two solvents or by the addition of sodium hydroxide properties as recited in claim 13. However, the invention as claimed is not structurally distinguishable from the disclosure of Kwon and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Regarding claim 14, Kwon do not disclose the density or viscosity properties as recited in claim 14. However, the invention as claimed is not structurally distinguishable from the disclosure of Kwon and therefore, the Examiner has a reasonable basis to believe that the properties claimed in the present invention are inherent in the composition taught by the prior art. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with that of the prior art, the burden of proof is shifted to the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art; i.e., to prove that the properties are not inherent. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.). As recited in MPEP §2112.01 (II): “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Regarding claim 19, Kwon teaches a cosmetic composition that may include the eutectic mixture [0051] and an oily component [0052]. The oily component may include vegetable oil, avocado oil, wheat germ oil, rosehip oil, shea butter, almond oil, olive oil, macadamia oil, argan oil, meadowfoam oil, sunflower oil, castor oil, camelia oil, corn oil, safflower oil, soybean oil, rapeseed oil, macadamia nut oil, jojoba oil, palm oil, palm kernel oil or coconut oil [0058]. Kwon also teaches that the content of the oily component is not particularly limited and may be included as the remaining content expect for the eutectic mixture [0060]. The Examiner has interpreted the claim to read on any extract of any kind, including the oils extracted from plants embraced by Kwon, because no clear definition has been provided for what the extract embraced by the instant claim 19 may be.
Regarding claim 20, Kwon teaches a cosmetic composition that may include the eutectic mixture [0051] and may further include all kinds of components usable in typical cosmetics, such as a moisturizing agent, sunscreen, pH adjusting agent, preservative, antioxidant, skin conditioning agent, surfactant, a fragrance, or colorant [0061]. Each component included in a cosmetic composition may be included in the composition, preferably within the range not exceeding the maximum amount stipulated in the "Cosmeceutical Safety and Technical Code" prescribed by the Chinese government [0062]. The instant specification defines a topical active compound as a compound that may be used in a topical treatment, namely on skin/hair ([0036] of the instant spec). The Examiner therefore considers the moisturizing agents, sunscreen, antioxidants, and skin conditioning agents of Kwon to read on the instant claim.
Regarding claim 21, Kwon teaches that the cosmetic composition may include the eutectic mixture in an amount of 0.01 to 50 parts by weight [0049]. The oily component may include vegetable oil, avocado oil, wheat germ oil, rosehip oil, shea butter, almond oil, olive oil, macadamia oil, argan oil, meadowfoam oil, sunflower oil, castor oil, camelia oil, corn oil, safflower oil, soybean oil, rapeseed oil, macadamia nut oil, jojoba oil, palm oil, palm kernel oil or coconut oil [0058]. Kwon also teaches that the content of the oily component is not particularly limited and may be included as the remaining content expect for the eutectic mixture [0060]. The Examiner has interpreted the claim to read on any extract of any kind, including the oils extracted from plants embraced by Kwon, because no clear definition has been provided for what the extract embraced by the instant claim 21 may be. Kwon also teaches a cosmetic composition that may include the eutectic mixture [0051] and may further include all kinds of components usable in typical cosmetics, such as a moisturizing agent, sunscreen, pH adjusting agent, preservative, antioxidant, skin conditioning agent, surfactant, a fragrance, or colorant [0061]. Each component included in a cosmetic composition may be included in the composition, preferably within the range not exceeding the maximum amount stipulated in the "Cosmeceutical Safety and Technical Code" prescribed by the Chinese government [0062]. The instant specification defines a topical active compound as a compound that may be used in a topical treatment, namely on skin/hair ([0036] of the instant spec). The Examiner therefore considers the moisturizing agents, sunscreen, antioxidants, and skin conditioning agents of Kwon to read on the instant claim.
Regarding claim 22, Kwon teaches that the composition may contain hyaluronic acid [0061].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claim 1, Kwon does not teach a molar ratio of the AHA for amino acid present in the eutectic mixture or a weight percentage of water present in the composition within the range embraced by the instant claims. However, this deficiency is cured by Dai.
Dai teaches that natural deep eutectic solvents (NADES) are supermolecules with hydrogen-bonding interactions between the components. The interactions will be weakened with water dilution and even disappear when the water content is above 50% (v/v/). They physicochemical properties can be tailored in a controllable way when diluted with water, as is the case of their viscosity that can be decreased almost to that of water with the addition of 25% water (v/v). The effect of water content on the structure and characteristics of NADES provide a basis to develop tailor-made NADES for various applications (pg. 19, 4. Conclusion). The physicochemical characteristics of NADES with different water contents are useful to predict the solubilization capacity of NADES (pg. 19, Discussion).
Regarding claims 20 and 21, Kwon does not teach a weight percentage of topical active compound present in the composition.
Regarding claim 21, Kwon does not teach a weight percentage of the extract present in the composition.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding the molar ratio of the first and second solvent as specified in claim 1, MPEP 2144.05 states:
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. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Kwon teaches that they hydrogen bonding between the AHA and amino acid is directly responsible for the eutectic phenomenon [0004 and 0016]. The Applicants' specification provides no evidence that the selected mol ratio in claim 9 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the direct relationship between the hydrogen bonding between the AHA and amino acid and the eutectic properties of the mixture, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the mol percentage of the first and second solvent present in the mixture. One of ordinary skill in the art would have been motivated to change the mol percentage as this could be expected to be advantageous for optimizing the eutectic properties of the composition.
Regarding the weight percentage of water as specified in claim 1, MPEP 2144.05 states:
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. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Dai teaches that the water content of a NADES has a direct effect on the physicochemical properties, and therefore the solubilization properties, of the NADES. The Applicants' specification provides no evidence that the selected weight percentage of water in claim 1 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the direct correlation of water content and solubilization capacity of the NADES, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the weight percentage of water. One of ordinary skill in the art would have been motivated to change the weight percentage of water as this could be expected to be advantageous for optimizing the desired solubilization properties of the NADES.
Regarding claims 20 and 21, the weight percentage of the topical active compound is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage in order to best achieve the desired results as such would provide advantageous treatment effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Kwon teaches that the additional agent may be a moisturizing agent, sunscreen, pH adjusting agent, preservative, antioxidant, skin conditioning agent, surfactant, a fragrance, or colorant [0061]. The Examiner considers it prima facie obvious to optimize the weight percentage of the topical active compound present, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of additional agent present would have a direct effect on the moisturizing, sun protection, antioxidant, or skin conditioning properties of the composition and therefore be an optimizable variable.
Regarding claim 21, the weight percentage of the extract is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage of the extract in order to best achieve the desired results as such would provide advantageous stability effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Kwon teaches that the oily component is included in the composition to be present in the external phase of the eutectic mixture, thereby helping the eutectic mixture to be stable in the composition [0052]. The Examiner considers it prima facie obvious to optimize the weight percentage of the oily component, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the oily component would have a direct effect on the stability of the eutectic mixture in the composition and therefore be an optimizable variable.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Kwon (U.S. Patent Application Publication No. 2022/0287938, effective filing date: 8/21/2020, available as prior art under 35 U.S.C. 102(a)(2), of record) in view of Dai et. al. (Food Chemistry, pg. 14-19, publication year: 2015), as applied to claims 1, 12-14, and 19-22 above, and further in view of Tubby Todd Bath Co. (available 6/12/2018, of record), as evidenced by PubChem (Menthol, available 3/25/2005, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Kwon, in view of Dai, renders obvious the relevant limitations of claims 1 and 19 above. Kwon teaches a cosmetic composition that may include the eutectic mixture [0051] and may further include all kinds of components usable in typical cosmetics, such as a moisturizing agent, sunscreen, pH adjusting agent, preservative, antioxidant, skin conditioning agent, surfactant, a fragrance, or colorant, and the component is not limited [0061].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Kwon does not specifically teach the inclusion of any compound embraced by the instant claim 24. However, this deficiency is cured by Tubby Todd Bath Co.
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Tubby Todd Bath Co. teaches that menthol is used to condition skin and add fragrance to skincare products (pg. 1). PubChem teaches that the structure of menthol is:
(pg. 3, 1.1 2D Structure).
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional skin conditioning and fragrance compounds used in cosmetic compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Response to Arguments
Applicant’s arguments, see pg. 8, filed 4/24/2026, with respect to the rejection of claim 21 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claim 21 under 35 U.S.C. 112(b) has been withdrawn.
Applicant's arguments filed 4/24/2026 have been fully considered but they are not persuasive.
On page 13, Applicant argues that the technical purposes, design constraints, and required performance characteristics of the mixtures in Kwon and those of amended claim 1 are fundamentally different and therefore Kwon is not an appropriate starting point for an obviousness analysis. This is not found persuasive. In response to applicant's argument that Kwon fails to teach a natural deep eutectic mixture designed for the extraction of bioactive compounds, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As described in the obviousness rejection above, the claims recite the limitation “for extraction of biocomponents”; the intended use of a claimed invention must result in a structural difference between the claimed invention and the prior art in or order to patentably distinguish the claimed invention form the prior art, therefore the eutectic mixture embraced by Kwon, in view of Dai, reads on the instant claims. See MPEP 2112.01 (II).
On page 13, Applicant argues that the water content of Kwon lies outside of the claimed range recited by the instant claim 1. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2144.05 (II) (A), which states: “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”. As described in the obviousness rejection above, it would have merely been a matter of routine experimentation to optimize the concentration of water present in the composition. Therefore, the argument is not persuasive and the rejection is maintained.
On page 13, Applicant argues that several claimed systems are wholly absent from Kwon. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 803.02(III)(A), which states: “where a claim reads on multiple species, only one species needs to be taught or suggested by the prior art in order for the claim to be anticipated or rendered obvious. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009)(the entire element is disclosed by the prior art if one alternative in the Markush group is in the prior art).” The amended claim 1 recites the claimed NADES as alternative in a Markush grouping, therefore the prior art (Kwon) that reads on one species recited by the claim renders obvious the limitations of the claim.
On page 13, Applicant argues that the mixtures of the amended claim 1 achieve a technical effect that is neither taught nor suggested by Kwon. This is not found persuasive. In response to applicant's argument that the eutectic mixtures of Kwon fail to demonstrate effective extraction of a broad spectrum of bioactive chemical compounds ready for inclusion in a cosmetic composition, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Kwon, in view of Dai, renders obvious the limitations of the instant claim 1 and the NADES taught by Kwon, in view of Dai, must also posses the extraction characteristics of the NADES embraced by the instant claim.
On page 14, Applicant argues that there is no teaching, hint, or motivation that would lead one of ordinary skill in the art to abandon Kwon’s exfoliation-focused eutectic systems, select the specific solvent pairs, adjust the water content to the instantly claimed ranges, and predict with any degree of confidence that the resulting system would be suitable for high-yield extraction of biocomponents while remaining cosmetically compatible. This is not found persuasive. 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, Kwon teaches a eutectic mixture comprising water, an alpha-hydroxy acid (AHA) and an amino acid [0008]. The AHA may be lactic acid or citric acid [0013] and the amino acid used in combination with the AHA may be glycine [0016]. Water may be included in an amount of 25 to 80 parts by weight with respect to the weight of the eutectic mixture [0022]. As described in the obviousness rejection above, it would have merely been a matter of routine optimization, based on the teachings of Kwon in view of Dai, to optimize the molar ratio of lactic acid and glycine and the weight percentage of water to arrive at the instantly claimed invention. In response to applicant's argument that one of ordinary skill in the art would not predict with any degree of confidence that the resulting system would be suitable for high-yield extraction of biocomponents while remaining cosmetically compatible, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
On page 15, Applicant argues that the experimental results presented in the instant specification demonstrate that the claimed mixtures achieve effective extraction performance under controlled conditions. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results relates to the increased concentration of extract using the NADES of the claimed invention. However, the evidence of unexpected result presented in Table 4 of the published application only compares the concentration of the extract obtained by NADES 2 to water. One of ordinary skill in the art that the use of a eutectic solvent would yield higher extraction efficiency than water alone. Furthermore, the evidence of unexpected results does not clearly isolate the criticality of the claimed NADES to extraction efficiency because a NADES outside of the scope of the instant claim 1, NADES 4, appears to yield higher extraction yields than NADES 2 regardless of the extraction method used (See Table 3 on the published application). Therefore, the differences are not unexpected or unobvious.
Differences are of both practical and statistical significance: The evidence of unexpected results relates to the increased concentration of extract using the NADES of the claimed invention; therefore, the evidence of unexpected results are of practical significance. However, the evidence of unexpected results only compares a NADES comprising glycerol and lactic acid in a 1:1 ratio to extraction with water and does not compare the NADES to the extract concentration rendered by any other NADES. Furthermore, the extraction yield for the instantly claimed NADES 2 is lower than that of NADES 4, which is outside of the scope of the instant claims (see Table 3 of the published application). Therefore, the differences are not of statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The instant claim 1 embraces 7 different NADES listed as alternatives in a Markush listing. In order to be within the scope of the instant claims, the evidence of unexpected results must demonstrate effective extraction for each and every NADES claimed. However, the evidence of unexpected results relates only to a eutectic system comprising lactic acid and glycerol in a 1:1 ratio (NADES 2 in Table 3) or a eutectic system of glycerol and sodium lactate in a 1:1 ratio (NADES 5 in Table 3). The evidence of unexpected results also contains data from a NADES comprising ethylene glycol and sodium lactate in a 1:1 ratio (NADES 4 in Table 3), which is outside of the scope of the instant claims. Therefore, the evidence of unexpected results are not in commensurate scope with the claims.
Additionally, no side-by-side comparison to the closest prior art is provided to establish unexpectedly superior performance. There is no nexus between the purportedly unexpected property and the differences between the instant invention, as claimed, and the closest prior art. Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
Applicant’s arguments with respect to the rejections over Skiff and Siriwardana have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are 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 ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
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