DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The amendment filed November 6, 2025 has been received and entered.
3. Claims 47-76 are currently pending.
Election/Restrictions
4. Applicant's election with traverse of Group I, claims 47-59, in the reply filed on November 6, 2025 is acknowledged. The traversal is on the ground(s) that the lack of unity is improper because all of the claimed subject matter was examined at the PCT stage. This is not found persuasive because the USPTO is not bound to any decisions made by the International Searching Authority during the PCT stage. In addition, applicant argues that the groups of invention do not lack unity based on the statement in the specification that Ligustrum lucidum extract were known in the art because the claimed L. lucidum extracts must be made by a specific process. However, product-by-process claims are examined based on the claimed product rather than the process. The claimed L. lucidum extract appears to be structurally the same as known L. lucidum extracts. Thus, the groups of invention do lack unity.
The requirement is still deemed proper and is therefore made FINAL.
5. Claims 60-76 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
6. Claims 47-59 are examined on the merits.
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.
7. Claim(s) 47-59 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 10596165 (English translation) in view of Hong (J. Soc. Cosmet. Scientists Korea (2012), vol. 38, no. 2, pp. 181-187).
CN ‘165 teaches a method for making a subcritical water extract from Ligustrum lucidum leaves. The leaves are dried, pulverized to particles, extracted with subcritical water at a temperature between 120 -180°C, at a pressure between 0.5-3.0 MPa, for at least 5 minutes with a plant material to subcritical water ratio from 1:4 to 1:12. After the extraction, the solid and liquid are separated, and ethanol is added to the extract (see pages 1 and 2 of the translation).
The reference does not specifically teach using L. lucidum fruit as the plant material. However, the reference does teach that the target compound for extraction is ursolic acid (see page 1). Hong teaches that L. lucidum fruit has a higher concentration of ursolic acid than leaves (see abstract). Thus, an artisan of ordinary skill would reasonably expect that the method of extraction taught by CN ‘165 could be used with success to extract ursolic acid from L. lucidum fruit. This reasonable expectation of success would have motivated the artisan to modify CN ‘165 to include the use of L. lucidum fruit as the plant material in the extraction.
The references do not specifically teach that the subcritical water extraction is a dynamic (i.e. continuous) extraction. However, as discussed in MPEP section 2144.04(V-E), making a known batch process continuous is considered to be prima facie obvious. Thus, an artisan of ordinary skill would have been motivated to modify the extraction taught by CN ‘165 to make the process continuous and to determine the optimal flow water for the subcritical water in the continuous process.
The references do not specifically teach adding a polyol to the L. lucidum extract. However, Hong teaches that the ursolic acid containing extracts from L. lucidum are useful for cosmetic purposes (see abstract). Polyols such as glycerin are well known to be useful in cosmetic compositions. Thus, an artisan of ordinary skill would reasonably expect that the claimed polyols could be added to the L. lucidum fruit extract taught by the reference when formulating a cosmetic composition as suggested by Hong. Therefore, applicant’s claims are considered to be an obvious modification of what was known in the art at the time of the invention.
8. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at 571-272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
