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 .
Claim Status
Applicants’ amendments and arguments filed 02/09/2026 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Claims 5-8 are canceled.
Claim 1 is amended.
Claim 9 is newly added.
Claims 1-4 and 9 are examined on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/20/2026 is being considered by the examiner. The submission is in compliance with the provisions of 37 CFR 1.97. The foreign patents only have English translations of the abstracts, therefore, only the abstracts are being considered.
Claim Interpretation
Claim 1 recites “administering” which is broadly interpreted by examiner to mean any form of proving the mixture to a subject, to include ingesting, rubbing on skin, injecting, etc.
Claim 1 recites “subject in need thereof” which is broadly interpreted by examiner to mean any living organism in need of an extract mixture of ziziphus jujuba miller, citrus unshiu peel, and acorus calamus.
New Rejections Necessitated by Claim Amendments
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “providing an antioxidant effect” which Applicant’s instant claims and specification fails to define. For example, is this a property of the instant claimed method of administering the claimed components and/or what constitutes an antioxidant effect (i.e. reducing oxidation by at least 20%). Therefore, the claim is rendered indefinite.
For the purpose of moving prosecution forward, the claim is broadly interpreted to mean any method comprising the components of the instant claim 1: ziziphus jujuba miller, citrus unshiu peel, and acorus calamus extract.
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.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (JP2001072569, published 03/21/2001, English translation by Espacenet, hereafter Ogawa).
Ogawa claims a skin preparation for external use containing one or more selected plant extracts (title and claim 1; according to the claim limitations of the instant claim 1). Ogawa states their invention is related to pre-determined effects such as aging prevention, hair growth effect, and whitening effect ([0002]; according to the claim limitations of the instant claim 1). Ogawa teaches that the skin aging effects are skin wrinkles and texture ([0039]; according to the claim limitations of the instant claim 1). Ogawa teaches the one or more extracts to be derived from plants and selected from a list to include: jujuba plants - specifically Ziziphus jujuba Mill., unshu mikan (citrus unshu), and Acorus calamus ([0011]; according to the claim limitations on the instant claim 1).
Ogawa does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Ogawa with a reasonable expectation of success to obtain the method of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the method of the instant claims with predictable results.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (JP2001072569, published 03/21/2001, English translation by Espacenet, hereafter Ogawa) in view of Hetherington (WO2020232530A, published 04/29/2020, hereafter Hetherington
As outlined above, Ogawa teaches a method of inhibiting/preventing wrinkles and improving hair health using a composition comprising Ziziphus jujuba Miller, citrus unshiu peel, and acorus calamus extracts.
Furthermore, Ogawa teaches extracts from these plants are used as raw or dried at one or more places and the extraction solvent can be water ([0012]; according to the claim limitations of the instant claims 3-4). Ogawa teaches the extraction method at room temperature or more broadly at a temperature range of 0oC to boiling point of the solvent (0013-0014]; according to the claim limitations of the instant claims 3-4) Ogawa then teaches the ratio of plant to solvent to not be limited, however, the solvent is 0.1 to 1000 times the weight of the plant, more particularly 0.5 to 100 times the weight ([0014]; according to the claim limitations of the instant claims 3-4). Ogawa teaches the extraction time is preferably in a range of 2 hours to 2 weeks ([0014]; according to the claim limitations of the instant claims 3-4). Finally, Ogawa teaches the plant examples of the present invention were made at room temperature for 2 days then filtered ([0021]; according to the claim limitations of the instant claims 3-4).
Ogawa fails to teach the concentrations as claimed by instant claim 2.
Hetherington teaches a cannabinoid composition for pain management comprising anti-inflammatory botanical extracts (title and abstract). Furthermore, Hetherington teaches the composition may be used in skin protectants, skin-conditioning agents, skin soothing agents, skin healing agents, skin penetration enhancing agents, sunless tanning agents, and sunblocks ([0067]). Hetherington teaches the botanical extracts useful include calamus rhizome extract (aka Acorus calamus), citrus unshi peel extract, and jujube extract ([0059]). Hetherington teaches the concentration of extract to be present in an amount of between about 10wt% to about 95wt% (0060).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a method of inhibiting/preventing wrinkles and improving hair health using a composition comprising Ziziphus jujuba Miller, citrus unshiu peel, and acorus calamus as outlined by Ogawa with the ready for improvement with the known technique of adjusting the concentrations of the Ziziphus jujuba Miller, citrus unshiu peel, and acorus calamus extracts as outlined by Hetherington. Adjusting the forementioned components of a method of inhibiting/preventing wrinkles and improving hair health using a composition comprising Ziziphus jujuba Miller, citrus unshiu peel, and acorus calamus as claimed by instant claim 2 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Claim(s) 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (JP2001072569, published 03/21/2001, English translation by Espacenet, hereafter Ogawa) in view of Lin et al. (Lin, Y.-S.; Lin, W.-S.; Tung, J.-W.; Cheng, Y.-C.; Chang, M.-Y.; Chen, C.-Y.; Huang, S.-L. Antioxidant Capacities of Jujube Fruit Seeds and Peel Pulp. Appl. Sci. 2020, 10, 6007. https://doi.org/10.3390/app10176007, hereafter Lin).
As outlined above, Ogawa outlines the use of a composition comprising Ziziphus jujuba Mill., unshu mikan (citrus unshu), and Acorus calamus in a skin preparation. However, Ogawa does not specifically teach the method as antioxidant and used to enhance 2,2-diphenyl-1-picrylhydrazyl (DPPH) radical scavenging activity in a subject as in instant claim 9.
Lin teaches jujube (Ziziphus jujuba Mill.) fruit has antioxidant properties and exhibited the best antioxidant capacity in terms of 2,2-diphenyl-1-picrylhydrazyl radical scavenging activity (0.3 ± 0 mg/mL) (abstract).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a skin preparation method comprising Ziziphus jujuba Mill., unshu mikan (citrus unshu), and Acorus calamus as outlined by Ogawa with the ready for improvement with the known technique of using the method as a method to provide an antioxidant to someone in need of enhancing their DPPH as outlined by Lin. Adding the forementioned steps to a skin preparation comprising Ziziphus jujuba Mill as claimed by instant claims 1 and 9 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Response to Applicant’s Arguments
Applicant’s arguments filed on 02/09/2026 are considered by the examiner.
In regards to the 35 U.S.C. 103 rejections over Ogawa, Applicant argues that claim 1 has been amended to recite “an antioxidant effect” and states that this method is designed to enhance antioxidant efficacy by targeting the DPPH radical scavenging activity as now claimed by newly added claim 9. Applicant argues that Ogawa does not teach or suggest the use of the specific combination of plant extracts for enhancing antioxidant activity through DPPH radical scavenging assay and argues it does not disclose the synergistic effects of the ingredients. Lastly, Applicant argues that the claimed method provides a novel approach to antioxidant therapy which is not anticipated by the prior art.
In regards to Applicant’s argument that the claims now recite “an antioxidant effect”, Applicant is encouraged to review the newly added 35 U.S.C. 112(b) rejection above, which outlines the instant claims and specification fails to define what constitutes an “an antioxidant effect”. For example, is this a property of the instant claimed method of administering the claimed components and/or what constitutes an antioxidant effect (i.e. reducing oxidation by at least 20%). Thus, the “antioxidant effect” renders the claim indefinite. As noted above, for the purpose of moving prosecution forward, the examiner has broadly interpreted a method comprising the components of the instant claim 1: ziziphus jujuba miller, citrus unshiu peel, and acorus calamus extract to meet the “providing an antioxidant effect” limitation. As outlined above and reiterated here, Ogawa teaches the one or more extracts to be derived from plants and selected from a list to include: jujuba plants - specifically Ziziphus jujuba Mill., unshu mikan (citrus unshu), and Acorus calamus ([0011]) are used in a skin care product (title and claim 1) for its pre-determined effects such as aging prevention, hair growth effect, and whitening effect ([0039]). Further, it is noted that a secondary U.S.C. 103 rejection rejection over Ogawa in view Lin has been newly added above to address to a subject in need of enhancing DPPH radical scavenging assay in the newly added instant claim 9. This rejection not only outlines Ziziphus jujuba Miller fruit exhibited the best antioxidant capacity in terms of 2,2-diphenyl-1-picrylhydrazyl radical scavenging activity, but also teaches Ziziphus jujuba Miller fruit has antioxidant properties (abstract), thus making it obvious to add to the teachings of Ogawa. In regards to the rejection over Ogawa in view of Hetherington, it is noted that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) and Applicant has failed to provide any reasoning or arguments against the combination of the references. Lastly, it regards to Applicant’s arguments that the prior art does not anticipate the claimed method, it is noted that the rejections of record are 35 U.S.C. 103 rejections which demonstrate obviousness over prior art, not anticipation, which Applicant has failed to address.
In summary, the rejections of record are maintained and updated to account for claim amendments.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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, Bethany Barham can be reached at (571) 272-6175. 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.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611
Prosecution Insights