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 .
DETAILED ACTION
Status of Claims
The amendments and arguments filed on 03/16/2026 are acknowledged and have been fully considered. Claims 1-20 are now pending. Claims 1 is amended; claims 9-19 are withdrawn.
Claims 1-8 and 20 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 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 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 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2014101312 A (Tsubata, 2014; machine translation provided by PE2E via FIT) in view of WO 2006078699 A2 (Mezine, 2006) and KR 20200116226 A (Cho, 2020; machine translation provided by PE2E via FIT).
In regards to claims 1-2 and 4, Tsubata teaches a skin care composition made from a method of extraction from cherries, such as Prunus cerasus (i.e, tart cherry) (see Tsubata, page 5, paragraph 9), wherein the cherries are placed in a machine that squeezes the cherries, like a mixer (i.e., pulverizing the cherries), then extracting with a solvent (see Tsubata, page 5, paragraphs 11-13). It is taught that the solvent is a mix of an organic solvent and water (see Tsubata, page 6, paragraph 2). It is taught that the organic solvent is ethanol (i.e., ethyl alcohol) (Tsubata, page 3, final two paragraphs).
Further in regards to claim 2, it is taught that the composition made using the method of extraction further comprises thickeners, water, stabilizers, and an emulsifier (see Tsubata, page 8, paragraphs 7-8). It is taught that the composition is made by combining the components and using a homogenizer to prepare an oil-in-water emulsion (see Tsubata, page 11, paragraph 1).
In regards to claim 7, the emulsifier is taught to be lecithin (see Tsubata, page 8, paragraphs 3-4).
Tsubata is silent on the use of a rosmarinic acid extract and spray drying the product of instant step (c) and is silent on the composition being for oral administration. While the limitation of the extract composition being for oral administration is an intended use and the future intended use of a product is not considered to contribute to the overall patentability of the instant invention, particularly when the product itself is claimed and that same product is taught in the prior art, Cho is used to show that the invention is rendered obvious in the interest of compact prosecution.
In regards to claims 1-2, Mezine teaches a method of extracting rosmarinic acid from the Labiatae family, which includes rosemary (see Mezine, paragraphs 0002-0003). Mezine teaches that the method of hot water extraction of rosemary followed by filtration and acidification to extract rosmarinic acid is known in US Patent 5908650 (Lenoble; see column 7, lines 6-46), which is incorporated by reference (see Mezine, paragraph 0009). Further, the method of Mezine also teaches that the Labiatae extract is made by hot water extraction, filtration, and lowering the pH of the solution to form a precipitate, followed by spray drying (see Mezine, paragraph 0045).
Cho teaches a composition comprising the extract of tart cherry (see Cho abstract). It is taught that the composition can be administered through topical or oral routes (see Cho, page 9, paragraph 7). Specifically it is taught that the composition is provided in the form of a food composition (see Cho, pages 8-9).
In regards to claims, 1-4 and 7, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant method using the teachings of Tsubata with Mezine and Cho. One with ordinary skill in the art would be motivated to combine the extraction method of rosmarinic acid with the process of making a skin care composition using cherry extract as rosmarinic acid is a known antioxidant (see Mezine, paragraph 0008) and further that caffeic acid derivatives, such as rosmarinic acid (see Lenoble, column 3, lines 24-26), are known to have ultraviolet light absorbing activity and free radical erasing activity for skin cosmetic material (see Mezine, paragraph 0018). Tsubata teaches that its composition further comprises antioxidants and UV absorbers (see Tsubata, page 8, paragraph 7). Further, it would be obvious to one with ordinary skill in the art to use the teachings of Cho to formulate an oral composition using tart cherry extract as Cho teaches that the composition can be in either a topical or oral form. It would be obvious to one with ordinary skill in the art to combine the teachings of Tsubata with the method of extracting and using rosmarinic acid according to the known method taught by Mezine (see Mezine, paragraph 0045) and the known method of making an orally administered composition comprising tart cherry extract of Cho (see Cho e.g., page 11, paragraph 4) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2014101312 A (Tsubata, 2014; machine translation provided by PE2E via FIT) in view of WO 2006078699 A2 (Mezine, 2006) and KR 20200116226 A (Cho, 2020; machine translation provided by PE2E via FIT) as applied to claims 1-4 and 7 above, and further in view of Atgie (2019).
The teachings of Tsubata, Mezine, and Cho have been described supra.
The teachings of Tsubata, Mezine, and Cho are silent on the use of gum arabic.
Atgie teaches that gum arabic is a known emulsion stabilizer (see Atgie, abstract).
In regards to claim 5, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant method using the teachings of Tsubata, Mezine, and Cho with Atgie as Tsubata teaches that the composition comprises a stabilizer (see Tsubata, page 8, paragraphs 7-8) and gum arabic is a known emulsion stabilizer. Further it is taught in Atgie that an emulsion formed using gum arabic may resist extensive mechanical stresses and displays long-term metastability (see Atgie, abstract; conclusion). It would be obvious to one with ordinary skill in the art to combine the teachings of Tsubata, Mezine, and Cho with the teachings of Atgie according to the known method of formulating a composition using a stabilizer (see Tsubata, page 11, paragraph 1) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2014101312 A (Tsubata, 2014; machine translation provided by PE2E via FIT) in view of WO 2006078699 A2 (Mezine, 2006) and KR 20200116226 A (Cho, 2020; machine translation provided by PE2E via FIT) as applied to claims 1-4 and 7 above, and further in view of US PGPUB 20190075832 A1 (Underwood, 2019).
The teachings of Tsubata, Mezine, and Cho have been described supra.
The teachings of Tsubata, Mezine, and Cho are silent on the use of maltodextrin.
Underwood teaches a topical composition (see Underwood, paragraph 0002) comprising tart cherry extract, lecithin, and maltodextrin (see Underwood, paragraphs 0004-0005, 0021, 0025). It is taught that maltodextrin is a composition agent, such as an emulsifier, thickener, a dispersant, a diluent, a preservative, or a flavoring (see Underwood, paragraph 0025).
In regards to claim 6, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant method using the teachings of Tsubata, Mezine, and Cho with Underwood as Tsubata teaches that the composition comprises a preservative, thickener, or emulsifier (i.e., composition agents) (see Tsubata, page 8, paragraphs 7-8) and maltodextrin is a known composition agent. It would be obvious to one with ordinary skill in the art to combine the teachings of Tsubata, Mezine, and Cho with the teachings of Underwood according to the known method of formulating a composition using a composition agent (see Tsubata, page 11, paragraph 1) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2014101312 A (Tsubata, 2014; machine translation provided by PE2E via FIT) in view of WO 2006078699 A2 (Mezine, 2006) and KR 20200116226 A (Cho, 2020; machine translation provided by PE2E via FIT) as applied to claims 1-4 and 7 above, and further in view of Efting (2021).
The teachings of Tsubata, Mezine, and Cho have been described supra.
The teachings of Tsubata, Mezine, and Cho are silent on the use of sunflower lecithin.
Efting teaches that sunflower lecithin is used in cosmetics (see Efting, page 2, final paragraph).
In regards to claim 8, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant method using the teachings of Tsubata, Mezine, and Cho with Efting. As Tsubata teaches that the composition comprises lecithin with no restriction on the type of lecithin, it would be within the purview of one with ordinary skill in the art to use a lecithin, such as sunflower lecithin, that is known to be used in cosmetics. It would be obvious to one with ordinary skill in the art to simply substitute the sunflower lecithin of Efting for the lecithin of Tsubata, Mezine, and Cho to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2014101312 A (Tsubata, 2014; machine translation provided by PE2E via FIT) in view of WO 2006078699 A2 (Mezine, 2006) and KR 20200116226 A (Cho, 2020; machine translation provided by PE2E via FIT) as applied to claims 1-4 and 7 above, and further in view of Atgie (2019) and US PGPUB 20190075832 A1 (Underwood, 2019).
The teachings of Tsubata, Mezine, and Cho have been described supra.
The teachings of Tsubata, Mezine, and Cho are silent on the use of gum arabic and maltodextrin.
The teachings of Atgie and Underwood have been described supra.
In regards to claim 20, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant method using the teachings of Tsubata, Mezine, and Cho with Atgie and Underwood as Tsubata teaches that the composition comprises a stabilizer (see Tsubata, page 8, paragraphs 7-8) and gum arabic is a known emulsion stabilizer. Further it is taught in Atgie that an emulsion formed using gum arabic may resist extensive mechanical stresses and displays long-term metastability (see Atgie, abstract; conclusion). It is also noted that Tsubata teaches that the composition comprises a preservative, thickener, or emulsifier (i.e., composition agents) (see Tsubata, page 8, paragraphs 7-8) and maltodextrin is a known composition agent. It would be obvious to one with ordinary skill in the art to combine the teachings of Tsubata, Mezine, and Cho with the teachings of Atgie and Underwood according to the known method of formulating a composition using a stabilizer or other composition agent (see Tsubata, page 11, paragraph 1) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regards to applicant’s argument that Tsubata is drawn to a topical composition and that one with ordinary skill in the art would not be motivated to use its teachings to form an oral composition, it is pointed out that the rejection is modified as necessitated by amendment to be over Tsubata in view of Mezine and Cho. As stated in the rejection it is also noted that the limitation of the extract composition being for oral administration is an intended use and the future intended use of a product is not considered to contribute to the overall patentability of the instant invention, particularly when the product itself is claimed and that same product is taught in the prior art, Cho is used to show that the invention is rendered obvious in the interest of compact prosecution.
Cho teaches that a composition comprising tart cherry extract that is in either topical or oral form and as such bridges the gap that applicant is presenting. As such, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant method using the teachings of Tsubata with Mezine and Cho. One with ordinary skill in the art would be motivated to combine the extraction method of rosmarinic acid with the process of making a skin care composition using cherry extract as rosmarinic acid is a known antioxidant (see Mezine, paragraph 0008) and further that caffeic acid derivatives, such as rosmarinic acid (see Lenoble, column 3, lines 24-26), are known to have ultraviolet light absorbing activity and free radical erasing activity for skin cosmetic material (see Mezine, paragraph 0018). Tsubata teaches that its composition further comprises antioxidants and UV absorbers (see Tsubata, page 8, paragraph 7). Further, it would be obvious to one with ordinary skill in the art to use the teachings of Cho to formulate an oral composition using tart cherry extract as Cho teaches that the composition can be in either a topical or oral form. It would be obvious to one with ordinary skill in the art to combine the teachings of Tsubata with the method of extracting and using rosmarinic acid according to the known method taught by Mezine (see Mezine, paragraph 0045) and the known method of making an orally administered composition comprising tart cherry extract of Cho (see Cho e.g., page 11, paragraph 4) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
As the arguments presented have been rebutted, the rejections over the dependent claims are also rejected as discussed above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-8 of copending Application No. 18047098 (the reference application) in view of US PGPUB 20190075832 A1 (Underwood, 2019).
The reference application teaches a method of extraction comprising step (a) pulverizing elderberries; (b) extracting the product of step (a) with an aqueous alcohol solution followed by concentration of the extract solution to obtain a concentrated elderberry anthocyanin extract; (c) adding a stabiliser and a thickening agent to the product of step (b) to obtain a powder anthocyanin extract; (d) subjecting rosemary to water extraction performed at a temperature between 65 and 70°C, followed by concentration of the extract solution to obtain a concentrated rosemarinic acid extract; and (e) combining the product of step (c) with the product of step (d), a stabiliser, an emulsifier and water, followed by subjecting the mixture to homogenization in claim 2.
Claim 3 teaches wherein the process further comprises spray drying the product of step (e).
Claim 4-8 teach that the aqueous alcohol solution is an ethyl alcohol: water mixture, the stabilizer is gum arabic, the thickening agent is maltodextrin, the emulsifier is lecithin and more specifically sunflower lecithin. The limitations of claims 4-8 are very similar to claims 3-8 of the instant application.
The reference application is silent on the composition comprising tart cherry extract.
Underwood teaches that both elderberries and cherries are high in antioxidants and can be used as equivalents in compositions (see Underwood, paragraph 0004; claim 2).
In regards to claims 1-8 and 20, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant method using the teachings of the reference application with Underwood. As Underwood teaches that elderberries and tart cherries can be used in similar ways, it would be within the purview of one with ordinary skill in the art to use the same or similar method of extracting a tart cherry extract as the reference application. It would be obvious to one with ordinary skill in the art to simply substitute the tart cherries of Underwood for the elderberries of the reference application to obtain predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to simply substitute one known element for another to obtain predictable results.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
No arguments have been presented by applicant.
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.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611
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