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
Applicant’s election without traverse of claims 1-8 and 20 in the reply filed on 08/25/2025 is acknowledged. Claims 1-8 and 20 are currently under examination and the subject of the present Office Action. Claims 9-19 are withdrawn from consideration without traverse.
As such, the restriction is made final.
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).
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).
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).
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 and Mezine. 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). 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) 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) as applied to claims 1-4 and 7 above, and further in view of Atgie (2019).
The teachings of Tsubata and Mezine have been described supra.
The teachings of Tsubata and Mezine 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 and Mezine 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 and Mezine 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) as applied to claims 1-4 and 7 above, and further in view of US PGPUB 20190075832 A1 (Underwood, 2019).
The teachings of Tsubata and Mezine have been described supra.
The teachings of Tsubata and Mezine 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 and Mezine 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 and Mezine 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) as applied to claims 1-4 and 7 above, and further in view of Efting (2021).
The teachings of Tsubata and Mezine have been described supra.
The teachings of Tsubata and Mezine 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 and Mezine 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 and Mezine 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) 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 and Mezine have been described supra.
The teachings of Tsubata and Mezine 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 and Mezine 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 and Mezine 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.
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.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AYAAN A ALAM whose telephone number is (571)270-1213. The examiner can normally be reached M-F 8-5 EST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611
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