DETAILED ACTION
Status of Claims
Claims 1-4 and 6-22 are currently pending. Claims 1-4, 13 and 18-22 are currently under consideration and are the subject of this Office Action. This is the first Office Action on the merits of the claims. Non-elected claims 6-12 and 14-17 are withdrawn from consideration. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Non-Final.
Election/Restrictions
Applicant’s election of the claims of Group I (claims 1-4, 13, and new claims 18-22) in the response filed on December 19, 2025 (to the October 01, 2025 Requirement for Restriction) is acknowledged. In response to applicant’s election, the claims of Group II (claims 6-8, 14 and 15), Group III (claims 9-11 and 16), and Group IV (claims 12 and 17) are withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant has elected the claims of Group I with traverse. The traverse is based on applicant’s argument:
A “national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories: ... (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product." 37 C.F.R. § 1.475(b)(3). Here, the claims of Group 111 (Claims 9-11 and 16) are the product, the claims of Group 11 (Claims 6-8, 14, and 15) and Group IV (Claims 12 and 17) are the process to make the product, and the claims of Group I (Claims 1-4 and 13) are the use of the product. Accordingly, unity of invention exists. Id.
Applicants respectfully request that the Restriction Requirement be reconsidered and withdrawn, at least because the subject matter of Claims 1-4 and 6-17 forms a single general inventive concept due to the technical relationship among the subject matter. See PCT Rules 13.1 and 13.2. Moreover, examining Groups I through IV at once promotes efficiency for both the U.S. Patent and Trademark Office and Applicants while imposing no undue or serious burden to the Examiner. See M.P.E.P. § 803.
12/12/2025 Remarks, p. 8, par. 2-3, cont. on p. 9. In response: since the claims drawn to the instant composition are not patentable over CHEN (WO 2011/153937 A1), as discussed below, restriction is still deemed proper. The establishment of burden on the Office applies to US cases only. The instant application is a national stage entry of an international application under 35 U.S.C. § 371. As a result, lack of unity practice is observed for restriction purposes.
Accordingly, the October 01, 2025 Requirement for Restriction is made FINAL, and claims 1-4, 13 and 18-22 are examined as follows.
Claim Objections
The following claims are objected to because of the following informalities:
A. Claim 4 is objected to because the Markush language used is not technically correct. The examiner suggests language according to MPEP § 2173.05(h):
4. ([…]) The cosmetic composition according to claim 1 further comprising at least one cosmetic adjuvant chosen from the group consisting of antioxidants, emollients, moisturisers, anti-ageing agents, and perfumes
B. Claim 19 is objected to because the claim should read:
19. ([…]) The cosmetic composition according to claim 18 wherein the hydroalcoholic extract of Dendrobium fimbriatum is obtained by an extraction method comprising at least the steps of:
a) grinding a of Dendrobium fimbriatum;
b) at least one hydroalcoholic extraction step followed by a filtration step;
c) concentrating the extract obtained at the end of step b);
d) adding butylene glycol, pentylene glycol, potassium sorbate/sodium benzoate, glycerol or propanediol;
e) filtering, and
obtaining a hydroalcoholicDendrobium fimbriatum.
C. Claim 22 is objected to because the claim should read:
22. ([…]) The cosmetic composition according to claim 18, wherein the hydroalcoholic extract of Dendrobium fimbriatumDendrobium fimbriatum var. oculatum.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 13, 18 and 20-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-2, 13, 18 and 20-22 are drawn to:
1. ([…]) A no-rinse cosmetic composition for topical application on keratin materials, comprising an extract of Dendrobium fimbriatum.
2. ([…]) The cosmetic composition according to claim 1, wherein the extract of Dendrobium fimbriatum is present with a content ranging from 0.01% to 10% by weight of raw material, relative to the total weight of the composition.
[…]
13. ([…]) The cosmetic composition according to claim 1 wherein the extract of Dendrobium fimbriatum is an extract of Dendrobium fimbriatum var. oculatum.
[…]
18. ([…]) The cosmetic composition according to claim 1 wherein the extract of Dendrobium fimbriatum is a hydroalcoholic extract.
[…]
20. ([…]) The cosmetic composition according to claim 18 wherein the hydroalcoholic extract of Dendrobium fimbriatum is obtained from the entire plant.
21. ([…]) The cosmetic composition according to claim 18, wherein the hydroalcoholic extract of Dendrobium fimbriatum comprises at least one metabolite chosen from betaine, cis melilotoside, and trans melilotoside.
22. ([…]) The cosmetic composition according to claim 18, wherein the hydroalcoholic extract of Dendrobium fimbriatum extract is an extract of Dendrobium fimbriatum var. oculatum.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the compounds claimed are naturally occurring “extract of Dendrobium fimbriatum” (claim 1), amount thereof (claim 2), from “Dendrobium fimbriatum var. oculatum” (claims 13 and 22), a hydroalcoholic extract (claims 18 and 21-22), a whole plant extract (claim 20), or particular compounds therein (claim 21), and are not markedly different from natural compounds. Regarding the preamble for a “no-rinse cosmetic composition for topical application on keratin materials,” a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Therefore, the preamble neither alters the structure of the “extract of Dendrobium fimbriatum,” nor appears to provide synergistic results, and as such the claimed extract does not markedly diff from compounds found in nature. For instance, see CHEN (WO 2011/153937 A1, Publ. Dec. 15, 2011; as evidenced by English language translation of WO 2011/153937 A1; hereinafter, “Chen”) as evidence of “extract of Dendrobium fimbriatum” being a known moisturizer of “keratin materials.” In this respect, Chen describes “Tak[ing] Dendrobium fimbriatum var.oculatum 100g, extract 8 times of Ethyl®, percolate, extract ethanol by percolating solution, and dissolve[ing] the extract with water to prepare a solution containing 1000mg/ml of crude drug to obtain extract” (Chen, p. 3, par. 4), which has “effects of preventing moisture loss from keratinocyte and is useful for moisturizing skin.” See also KO (TW 201416091 A, Publ. May, 01, 2014; as evidenced by English language translation of TW 201416091 A; hereinafter, “Ko”) as evidence of a “whole plant methanol extract of Dendrobium” (Ko, p. 8, par. 7) for use as a skin-whitening agent (Ko, p. 1, par. 1). In this respect, examiner suggests amending claim 1 to incorporate the limitations of either one of claim 3, claim 4 or claim 19 in order to overcome this rejection.
Claim Rejections – 35 U.S.C. § 112 - Indefiniteness
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.
Claims 19-20 is 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 pre-AIA , that applicant regards as the invention.
A. Claim 19 is drawn to
19. ([…]) The cosmetic composition according to claim 18 wherein the hydroalcoholic extract of Dendrobium fimbriatum is obtained by an extraction method comprising at least the steps of:
a) grinding the plant material;
b) at least one extraction step followed by a filtration step;
c) concentrating the extract obtained at the end of step b);
d) adding butylene glycol, pentylene glycol, potassium sorbate/sodium benzoate, glycerol or propanediol;
e) filtering, and
obtaining an extract of Dendrobium fimbriatum.
which is indefinite in the recitation, “the plant material.” There is insufficient antecedent basis for this limitation in the claim as no “plant material” is recited in claims 1 and 18 from which claim 19 depends. See MPEP § 2173.05(e).
B. Claim 20 is drawn to
20. ([…]) The cosmetic composition according to claim 18 wherein the hydroalcoholic extract of Dendrobium fimbriatum is obtained from the entire plant.
Which is indefinite in the recitation, “the entire plant.” There is insufficient antecedent basis for this limitation in the claim as no “entire plant” is recited in claims 1 and 18 from which claim 20 depends. See MPEP § 2173.05(e). In this respect, examiner suggest amending claim 20 to read:
20. ([…]) The cosmetic composition according to claim 18, wherein the hydroalcoholic extract of Dendrobium fimbriatum is obtained from an entire plant of Dendrobium fimbriatum.
Further clarification is required.
Claim Rejections – 35 U.S.C. § 102
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.
Claims 1, 13, 18-19 and 22 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by CHEN (WO 2011/153937 A1, Publ. Dec. 15, 2011; as evidenced by English language translation of WO 2011/153937 A1; hereinafter, “Chen”).
Page and paragraph numbers for Chen refer to English language translation of WO 2011/153937 A1.
Chen is directed to:
HERBE DENDROBII EXTRACT, ITS PREPARATION METHOD AND USE THEREOF
Abstract
A preparation method of Herba Dendrobii extract and a Herba Dendrobii extract prepared by the method said above are disclosed. The Herba Dendrobii extract said above has effects of preventing moisture loss from keratinocyte and is useful for moisturizing skin. The use of the Herba Dendrobii extract in making moisturizing cosmetics is disclosed. Last, a moisturizing cosmetic which contains the Herba Dendrobii extract is provided.
Chen, title & abstract. In this regard, Chen teaches claim embodiment drawn to a “method for preparing a Dendrobium extract” “for the preparation of a moisturizing cosmetic, preferably a cosmetic skin cream, an eye cream, a facial mask, a facial cleanser, a toner, a body lotion or a serum”:
Claims
A method for preparing a Dendrobium extract, comprising:
(1) solvent extraction, the solvent is selected from the group consisting of water, decyl alcohol, ethanol, isopropanol, n-butanol, ethylene glycol, 1,2-propanediol, 1,3-propanediol, 1,3-butanediol, Acetone, ethyl acetate or a combination thereof.
The preparation method according to claim 1, wherein the extraction of the step (1) is selected from the group consisting of soaking, boiling, refluxing, percolating, or a combination thereof.
3. The preparation method according to claim 1 or 2, further comprising:
(2) separating the extract and the residue to obtain an extract;
(3) Optional solvent recovery;
(4) Optional dissolution or dilution.
The preparation method according to claim 3, wherein the solvent used in the step (4) is selected from the group consisting of water, ethanol, isopropanol, n-butanol, ethylene glycol, 1,2-propanediol, and 1,3-propanediol. , 1,3-butanediol, acetone, ethyl acetate or a combination thereof.
5. A method for preparing an extract of Dendrobium, comprising:
(1) solvent extraction, the solvent is selected from the group consisting of decyl alcohol, ethanol, isopropanol, n-butanol, ethylene glycol, 1,2-propanediol, 1,3-propanediol, 1,3-butanediol, acetone, Ethyl acetate or a combination thereof;
(2) separating the extract and the residue to obtain a residue;
(3) The residue of step ( .sup.2 ) is extracted with water.
The preparation method according to claim 5, wherein the extraction of the steps (1) and (3) is independently selected from the group consisting of soaking, boiling, refluxing, percolating, or a combination thereof.
7. The preparation method according to claim 5 or 6, further comprising:
(4) separating the water extract and the residue to obtain a water extract;
(5) Concentration, ethanol alcohol precipitation, separation to obtain a precipitate;
(6) Alternatively, the precipitate of the step (5) is dissolved and dissolved into a solution.
The method according to claim 7, wherein the solvent used in the step (6) is selected from the group consisting of ethanol, isopropanol, n-butanol, ethylene glycol, 1,2-propanediol, 1,3-propanediol, 1 , 3-butanediol, acetone, ethyl acetate or a combination thereof.
9. Dendrobium extract, which is produced according to the preparation method according to any one of claims 1-8.
10. The Dendrobium extract according to claim 9, wherein the form of the Dendrobium extract is selected From solutions, powders, ointments, films or creams.
11. Use of an extract of Dendrobium candidum for the preparation of a moisturizing cosmetic, preferably a cosmetic skin cream, an eye cream, a facial mask, a facial cleanser, a toner, a body lotion or a serum.
The use according to claim 11, wherein the Dendrobium extract is the Dendrobium extract according to claim 9 or 10.
A moisturizing cosmetic comprising an extract of Dendrobium, preferably a cosmetic skin cream, an eye cream, a facial mask, a facial cleanser, a toner, a body lotion or a serum.
The cosmetic according to claim 13, wherein the extract of Dendrobium is the Dendrobium extract according to claim 9 or 10.
Chen, claims. Further in this regard, Chen teaches: “Tak[ing] Dendrobium fimbriatum var.oculatum 100g, extract 8 times of Ethyl®, percolate, extract ethanol by percolating solution, and dissolve the extract with water to prepare a solution containing 1000mg/ml of crude drug to obtain extract.” Chen, p. 3, par. 4.
Regarding independent claim 1 and the requirements:
1. ([…]) A no-rinse cosmetic composition for topical application on keratin materials, comprising an extract of Dendrobium fimbriatum.
Chen clearly teaches a “method for preparing a Dendrobium extract” “for the preparation of a moisturizing cosmetic, preferably a cosmetic skin cream, an eye cream, a facial mask, a facial cleanser, a toner, a body lotion or a serum” (Chen, claims), wherein the extract is “a solution containing 1000mg/ml of crude drug” from “Dendrobium fimbriatum var.oculatum” (Chen, p. 3, par. 4), WHEREBY it is noted:
an extract is “a solution containing 1000mg/ml of crude drug” from “Dendrobium fimbriatum var.oculatum” (Chen, p. 3, par. 4) reads on “an extract of Dendrobium fimbriatum” of claim 1, as well as the requirements of claim 13 for:
13. ([…]) The cosmetic composition according to claim 1 wherein the extract of Dendrobium fimbriatum is an extract of Dendrobium fimbriatum var. oculatum.
a “moisturizing cosmetic, preferably a cosmetic skin cream, an eye cream, a facial mask, a facial cleanser, a toner, a body lotion or a serum” (Chen, claims) reads on a “no-rinse cosmetic composition” of claim 1 (as well as par. [0006] of the instant published application, US 2024/0099960 A1, which defines “a ‘no-rinse cosmetic composition’ according to the invention means a care composition intended to remain in contact with keratin materials after application, in order to confirm its beneficial effect (moisturising, anti-ageing, etc.), such as milks, creams, pomades, salves, sticks, gels, lotions, serums, etc., as opposed to ‘rinsed cosmetic compositions’ for cleaning keratin materials ( e.g. shower gels, shampoos), intended to be rinsed after application”).
It is further noted that the requirement of claim 1, “for topical application on keratin materials,” is a recitation of intended use. In this regard, it is noted that recitations of intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claim. See MPEP § 2103 (I)(C)). Since Chen teaches the structure for the instant composition, as discussed above, then it reasonably follows that Chen’s “moisturizing cosmetic” (Chen, claims) would be capable of performing the intended use.
Thus, Chen anticipates claims 1 and 13.
Regarding claims 18-19 and 22, it is noted that the requirements:
18. ([…]) The cosmetic composition according to claim 1 wherein the extract of Dendrobium fimbriatum is a hydroalcoholic extract.
19. ([…]) The cosmetic composition according to claim 18 wherein the hydroalcoholic extract of Dendrobium fimbriatum is obtained by an extraction method comprising at least the steps of:
a) grinding the plant material;
b) at least one extraction step followed by a filtration step;
c) concentrating the extract obtained at the end of step b);
d) adding butylene glycol, pentylene glycol, potassium sorbate/sodium benzoate, glycerol or propanediol;
e) filtering, and
obtaining an extract of Dendrobium fimbriatum.
[…]
22. ([…]) The cosmetic composition according to claim 18, wherein the hydroalcoholic extract of Dendrobium fimbriatum extract is an extract of Dendrobium fimbriatum var. oculatum.
are product-by-process limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP § 2113. Since Chen teaches a “method for preparing a Dendrobium extract” with “(1) solvent extraction, the solvent is selected from the group consisting of decyl alcohol, ethanol, isopropanol, n-butanol, ethylene glycol, 1,2-propanediol, 1,3-propanediol, 1,3-butanediol, acetone, Ethyl acetate or a combination thereof” (Chen, claims) of Dendrobium fimbriatum var.oculatum” (Chen, p. 3, par. 4) for a “hydroalcoholic extract” of claims 18-19 and 22, the substance and structure of the claimed composition does not appear to be affected by this limitation, which merely reflects one version of a process that could be used to make the product. Thus, the product-by-process limitations of claims 18-19 and 22 do not add patentable weight to the claim. If the product in this claim is the same as or obvious from a product of the prior art, the claim is unpatentable.
Thus, Chen anticipates claims 18-19 and 22.
Claim Rejections – 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. § 103(a) 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 C.F.R. § 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 1-2, 13, 18-19 and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over CHEN (WO 2011/153937 A1, Publ. Dec. 15, 2011; as evidenced by English language translation of WO 2011/153937 A1; hereinafter, “Chen”).
The teachings of Chen, as set forth in the above rejection of claims 1, 13 18-19 and 22 under 35 U.S.C. § 102 (a)(1) are hereby incorporated. However, to the extent that CHEN DOES NOT EXPRESSLY TEACH the requirements of claim 2 for:
2. ([…]) The cosmetic composition according to claim 1, wherein the extract of Dendrobium fimbriatum is present with a content ranging from 0.01% to 10% by weight of raw material, relative to the total weight of the composition.
the incorporation of a suitable amount would be obvious since dosage/amount of active ingredient is a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In this regard, Chen teaches “a solution containing 1000mg/ml of crude drug” from “Dendrobium fimbriatum var.oculatum” (Chen, p. 3, par. 4) for incorporation into a “moisturizing cosmetic, preferably a cosmetic skin cream, an eye cream, a facial mask, a facial cleanser, a toner, a body lotion or a serum” (Chen, claims). Therefore, an ordinary skilled artisan would also be motivated to manipulate and optimize the dosage of Dendrobium extract for an amount effective “for moisturizing skin” (Chen, abstract), thereby meeting the requirements of claim 2.
Thus, Chen renders claim 2 obvious.
Claims 3-4 are rejected under 35 U.S.C. § 103 as being unpatentable over CHEN (WO 2011/153937 A1, Publ. Dec. 15, 2011; as evidenced by English language translation of WO 2011/153937 A1; hereinafter, “Chen”), as applied to claims 1-2, 13, 18-19 and 22, above, and in view of LEE (Lee, J.Y., et al., Anti-inflammatory Action of Phenolic Compounds from Gastrodia elata Root, Arch. Pharm. Res., 29 (2006) pp. 849-858; hereinafter, “Lee”) and SHIBUYA (US 2019/0008747 A1, Publ. Jan. 10, 2019; hereinafter, “Shibuya”).
The teachings of Chen as set forth above are hereby incorporated. However, Chen DOES NOT TEACH the requirements of claims 3-4 for:
3. ([…]) The cosmetic composition according to claim 1 further comprising an extract from orchid root of the species Gastrodia elata.
4. ([…]) The cosmetic composition according to claim 1 further comprising at least one cosmetic adjuvant chosen from the group consisting of antioxidants, emollients, moisturisers, anti-ageing agents, perfumes, and the mixtures thereof.
Based on the state of the art, an artisan of ordinary skill would have found each of these features obvious.
Lee, for instance, is directed to:
Anti-inflammatory action of phenolic compounds from Gastrodia elata root
Abstract
Previous screening of the pharmacological action of Gastrodia elata (GE) root (Orchidaceae) showed that methanol (MeOH) extracts have significant anti-inflammatory properties. The anti-inflammatory agents of GE, however, remain unclear. In this experiment, MeOH extracts of GE were fractionated with organic solvents for the anti-inflammatory activity-guided separation of GE. Eight phenolic compounds from the ether (EtOEt) and ethyl acetate (EtOAc) fractions were isolated by column chromatography: 4-hydroxybenzaldehyde (I), 4-hydroxybenzyl alcohol (II), benzyl alcohol (III), bis-(4-hydroxyphenyl) methane (IV), 4(4'-hydroxybenzyloxy)benzyl methylether (V), 4-hydroxy-3-methoxybenzyl alcohol (VI), 4-hydroxy-3-methoxybenzaldehyde (VII), and 4-hydroxy-3-methoxybenzoic acid (VIII). To investigate the anti-inflammatory and anti-oxidant activity of these compounds, their effects on carrageenan-induced paw edema, arachidonic acid (AA)-induced ear edema and analgesic activity in acetic acid (HAc)-induced writhing response were carried out in vivo; cyclooxygenase (COX) activity, reactive oxygen species (ROS) generation in rat basophilic leukemia (RBL 2H3) cells and 1,1-diphenyl-2-picryl-hydroazyl (DPPH) scavenging activity were determined in vitro. These phenolic compounds not only had anti-inflammatory and analgesic properties in vivo, but also inhibited COX activity and silica-induced ROS generation in a dose-dependent manner. Among these phenolic compounds, compound VII was the most potent anti-inflammatory and analgesic. Compound VII significantly inhibited silica-induced ROS generation and compound VI significantly increased DPPH radical scavenging activity. Compounds I, II and III significantly inhibited the activity of COX-I and II. These results indicate that phenolic compounds of GE are anti-inflammatory, which may be related to inhibition of COX activity and to anti-oxidant activity. Consideration of the structure-activity relationship of the phenolic derivatives from GE on the anti-inflammatory action revealed that both C-4 hydroxy and C-3 methoxy radicals of benzyl aldehyde play an important role in anti-inflammatory activities.
(Lee, title & abstract), wherein “methanol (MeOH) extracts” of “Gastrodia elata (GE) root” is “an extract from orchid root of the species Gastrodia elata,” as well as encompassed by “antioxidants” and “at least one cosmetic adjuvant” of claim 4. In this regard, Lee discloses “phenolic compounds of GE that have scavenging activities toward these radicals [i.e., reactive oxygen species ‘such as superoxide anions, hydroxyl radicals and peroxynitrite’] and/or suppressive activities on lipid peroxidation may thus be expected to have therapeutic potential for several skin inflammatory diseases.” Lee, p. 854, par. 4, cont. on p. 855. To the extent Gastrodia elata extract is a known component for skin-treating compositions, see Shibuya, for instance, directed to:
External dermal composition for anti-ageing and method for producing the same
ABSTRACT
The present invention has an object to provide an external dermal composition for anti-ageing, which prevents or improves apparent skin problems such as wrinkles, fine wrinkles, blemishes, and saggings caused by increasing age or ageing; and maintains or improves the barrier function and the hyaluronic acid production in the skin. The object is solved by providing an external dermal composition for anti-ageing, which contains an aqueous medium as a base material and one or more ingredients selected from L-ascorbic acid, derivatives thereof, and their salts as an effective ingredient(s).
Shibuya, title & abstract. In this regard, Shibuya teaches “Skin-Whitening Agents,” inter alia, “Gastrodia elata extract.” Shibuya, par. [0096]. Further in this regard, Shibuya teaches
[0025] Although the external dermal composition of the present invention can be used alone as an external dermal composition for anti-ageing, it can be preferably used as basic skin cares after the addition of commonly used appropriate cosmetic ingredients. For example, the external dermal composition for anti-ageing of the present invention can be made into a cosmetic lotion after the addition of ethanol and a humectant, and the resulting cosmetic lotion can be incorporated with one or more astringents, cuticles softener, emollients, and surfactants. Such cosmetic lotion can be arbitrarily incorporated with one or more flavors, pigments, antiseptics, ultraviolet-ray-absorbing agents, sequestering agents, and buffers.
(Shibuya, par. [0025]), wherein a “cosmetic lotion” with “emollients” relates to “at least one cosmetic adjuvant” and “emollients,” of claim 4.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate Chen’s “moisturizing cosmetic” with “Dendrobium extract” (Chen, claims) by further incorporating “Gastrodia elata (GE) root” per Lee and Shibuya (Lee, abstract; Shibuya, par. [0096]). One would have been motivated to do so with a reasonable expectation of success since both Chen and Shibuya are concerned with similar problems in the art, namely the formulation of skin-treating compositions (Chen, abstract; Shibuya, abstract), while Lee teaches teaches an exract with radical-scavenging activities for skin inflammatory diseases (Lee, p. 854, par. 4, cont. on p. 855). Further, it is well within the skill of the ordinary artisan to select suitable components for the formulation of “a moisturizing cosmetic” such as “a cosmetic skin cream, an eye cream, a facial mask, a facial cleanser, a toner, a body lotion or a serum” (Chen, claims) including a skin-whitening agent (Shibuya, par. [0096]) and an “emollient” for a “cosmetic lotion” (Shibuya, par. [0025]). Doing so amounts to no more than combining prior art elements according to known methods to yield predictable results, namely the formulation of Chen’s “moisturizing cosmetic” (Chen, claims) with “Gastrodia elata (GE) root” (Lee, abstract) in order to obtain the advantage of “phenolic compounds of GE that have scavenging activities toward these radicals [i.e., reactive oxygen species ‘such as superoxide anions, hydroxyl radicals and peroxynitrite’] and/or suppressive activities on lipid peroxidation” with “therapeutic potential for several skin inflammatory diseases” (Lee, p. 854, par. 4, cont. on p. 855).
Thus, the prior art renders claims 3-4 obvious.
Claims 20-21 are rejected under 35 U.S.C. § 103 as being unpatentable over CHEN (WO 2011/153937 A1, Publ. Dec. 15, 2011; as evidenced by English language translation of WO 2011/153937 A1; hereinafter, “Chen”), as applied to claims 1-2, 13, 18-19 and 22, above, and in view of KO (TW 201416091 A, Publ. May, 01, 2014; as evidenced by English language translation of TW 201416091 A; hereinafter, “Ko”).
Page and paragraph numbers for Ko refer to English language translation of TW 201416091 A.
The teachings of Chen as set forth above are hereby incorporated. However, Chen DOES NOT TEACH the requirements of claims 20-21 for:
20. ([…]) The cosmetic composition according to claim 18 wherein the hydroalcoholic extract of Dendrobium fimbriatum is obtained from the entire plant.
21. ([…]) The cosmetic composition according to claim 18, wherein the hydroalcoholic extract of Dendrobium fimbriatum comprises at least one metabolite chosen from betaine, cis melilotoside, and trans melilotoside.
Based on the state of the art, an artisan of ordinary skill would have found each of these features obvious.
Ko, for instance, is directed to:
Phyla Nordiflora Extract For Skin Whitening
Abstract
This invention is announcing a composition of Phyla nodiflora extract, which can improve the skin whitening effect.
Ko, title & abstract. In this regard, Ko teaches
TECHNICAL-FIELD
The technology relates to a composition formed by the extract of Dendrobium can be added to cosmetics, skin care products or external medicines to exhibit skin whitening function, and can be applied to the pharmaceutical industry and chemical raw materials, and has industrial use.
(Ko, p. 1, par. 1), and details a “whole plant methanol extract of Dendrobium” (Ko, p. 8, par. 7), which is a “hydroalcoholic extract of Dendrobium fimbriatum [that] is obtained from the entire plant” of claim 20.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate Chen’s “moisturizing cosmetic” with “Dendrobium extract” (Chen, claims) as a “whole plant methanol extract of Dendrobium” (Ko, p. 8, par. 7). One would have been motivated to do so in order to obtain the advantage of a suitable extract form for “skin whitening effect” (Ko, title & abstract) suitable for “skin care products” (Ko, p. 1, par. 1).
Thus, the prior art renders claim 20 obvious.
Regarding claim 21 and the requirements:
21. ([…]) The cosmetic composition according to claim 18, wherein the hydroalcoholic extract of Dendrobium fimbriatum comprises at least one metabolite chosen from betaine, cis melilotoside, and trans melilotoside.
Since it would be obvious to formulate Chen’s “moisturizing cosmetic” with “Dendrobium extract” (Chen, claims) as a “whole plant methanol extract of Dendrobium” (Ko, p. 8, par. 7), the resulting extract would reasonably be expected to contain “at least one metabolite chosen from betaine, cis melilotoside, and trans melilotoside” since the claims extract appears to be obtained by an identical or substantially identical process as discussed above for claim 18. In this regard, it is noted that MPEP § 2112.01 states: “where the claimed and prior art products are identical or substantially identical in structure of composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” MPEP § 2112.01
Thus, the prior art renders claim 21 obvious.
Conclusion
Claims 1-4, 13 and 18-22 are rejected. No claims are allowed.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611