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 Rejections - 35 USC § 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 1-11 and 18-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. CN 110613649 A.
Zhang teaches a stable whitening sunscreen base liquid through a one-step extraction and processing technology of supercritical fluid, which provides a high added value utilization mode for the comprehensive utilization of Tie Guanyin. See Abstract. The Tie Guanyin extract whitening sunscreen base liquid according comprises by weight: 50 to 60 parts of Tie Guanyin tea, 20 to 30 parts of mulberry leaf, 10 to 20 parts of ampelopsis grossedentata, 5 to 10 parts of honeysuckle and 5 to 10 parts of tea flower. See Claims 1-6.
While it is noted that Zhang does not expressly teach the claimed extracting method, however, it is noted that the rejected claims are a product-by-process claims, therefore, patentability is based on the product itself. "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"). Here, Zhang teaches an invention similar to that of the present invention, namely, a cosmetic composition comprising Ampelopsis grossedentata leaf extract for the same purpose, namely for enhancing skin resistance and skin whitening.
Claims 12-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. CN 102697680 A.
Chen teaches a plant hormone in preparing skin anti-wrinkle nursing product application and product, by adding plant hormone to the skin, skin wrinkle area of wrinkle, wrinkle the user number, the total wrinkle length, wrinkle depth and average depth are obviously improved so as to reach the anti-wrinkle effect, relieve skin aging, the skin is more youthful state. See Abstract. The plant hormone in preparing skin anti-wrinkle nursing product. Plant hormone comprises plant estrogen hormone, such as isoflavones and lignans. can be selected from the group consisting of beans, fruits, vegetables, cereals, hyacinth bean, soybean, wheat, rice, sunflower seed, kudzuvine root, fennel, onion and plant extract is one or two of more mixing. extract plant estrogen content in not less than O. 001, can be used for plant estrogen of this invention include but are not limited to commercially available apple seed extract (MSDS number: 53053D), The International Company in Ederline L is the product of the commodity name, ampelopsis grossedentata (AMPELOPSIS GROSSEDENTATA) leaf extract, matrimony vine (LYCIUM CHINENSE) fruit extract, waxberry flavone (MSDS number: 111003). Extraction process of the invention include, but are not limited to a specific solvent targeted chemical extraction, preparation can be extracted to the plant. See paragraph 0015-0016. The formulation according to Table 7, in one suitable container, the A phase components of heating to 85°C-95°C under stirring. See paragraph 0075. Ampelopsis grossedentata leaf extract instead of apple seed extract, other components same as Example I. Prepared as described in Example I. See paragraph 0119.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSAN T TRAN whose telephone number is (571)272-0606. The examiner can normally be reached Monday-Friday, 8:30 am-5:30 pm.
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/SUSAN T TRAN/Primary Examiner, Art Unit 1615
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