DETAILED ACTION
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 .
Response to Amendments
This office action is in response to the amendment filed on February 10, 2026. Claims 2-4 have been cancelled. Claims 1 and 5-10 are currently pending and are under examination. Any objections or rejections not reiterated below are hereby withdrawn.
Withdrawal of Rejections
The rejection of claims 1-10 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second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter is withdrawn based on the amendment to claim 1 which recites orally administering Rosa Canina extract and the skin complexion improvement and for amending claim 10 to depend from claim 1.
The rejection of claim(s) 1 - 9 under 35 U.S.C. 103 as being obviousness over Wu, Chou-zhen et al (CN 111135124 A) is withdrawn based on the oral administration as currently claimed.
The rejection of claim(s) 1 - 10 under 35 U.S.C. 103 as being obviousness over Wu, Chou-zhen et al (CN 111135124 A), as applied to claims 1-9 above, in view of Gao Z et al (KR 2020050247 A) is withdrawn based on the oral administration as currently claimed.
The rejection of claim(s) 1 -10 under 35 U.S.C. 103 as being obviousness over Wu, Chou-zhen et al (CN 111135124 A as applied to claims 1-9), or in the alternative over Wu, Chou-zhen et al (CN 111135124 A) in view of Gao Z et al (KR 2020050247 A) as applied to claims 1-10 above, and in (further) view of Virginie Pecher et al (US 20210369595 A1) is withdrawn based on the oral administration as currently claimed.
Pending Rejection
The following rejections constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 5-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for improving skin complexion comprising orally administering Rosa Canina extract from whole fruit, wherein the Rosa Canina extract is obtained by mixing a whole fruit with water at a weight ratio of 1:10 and letting the extraction solution to stay at 85ºC for 1h and removing the solid from the extraction solution and providing an effective dose of extract at 4 g/day, does not reasonably provide enablement for the intended results of improving skin complexion with any dosage of extract administered to a subject. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
The factors to be considered in determining whether a disclosure meets the enablement requirements of 35 U.S.C. 112, first paragraph, have been described in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir., 1988). The court in Wands states, “Enablement is not precluded by the necessity for some experimentation, such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue’, not ‘experimentation’” (Wands, 8 USPQ2sd 1404). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations” (Wands, 8 USPQ2d 1404). Among these factors are: (1) the nature of the invention; (2) the breadth of the claims; (3) the state of the prior art; (4) the predictability or unpredictability of the art; (5) the relative skill of those in the art; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary.
(1) The nature of the invention and (2) the breadth of the claims:
The claims are drawn to a method for improving skin complexion of a subject in need thereof, comprising processing an extract from the whole fruit of Rosa Canina using water and then orally administering the Rosa Canina extract to improve skin complexion.
Thus, the claim imply that a method of orally administering Rosa Canina extract to improve skin complexion of a subject, which, taken together with the specification, imply a breadth greater than supported by the disclosure, because the claims are not limited to a particular dose that will result in improvement of skin complexion as currently claimed.
(3) The state of the prior art and (4) the predictability or unpredictability of the art:
The state of the art (including as cited and made of record below) is such that oral administration of extract of Rosa Canina can provide improvement of skin complexion by promoting cellular iron absorption, hemoglobin concentration, or blood iron content was not known, although providing Rosa Canina extract was known to the extent as taught in the prior art, including as instantly discussed herewith as taught by Torok et al “Rose hip is the fruit of the rose plant, including the Dog Rose, or Rosa canina. Rose hips are known to be good sources of vitamin C and other antioxidants, vitamins, and minerals. Rose hips may also contain a substance that fights inflammation. There is evidence that suggests that rose hips can also help with skin integrity, for example, as rose hip contains anti-inflammatory and anti-swelling properties. Rose hip oil contains healthy fatty acids that may help keep the skin healthy and plump. Further, rose hip may also fight against free radical damage, and helps people with acne problems, including the reduction of the appearance of acne scars (Summary Col. 5 [lines 4-16]”;.and Pecher et al. “the inventors have shown that the water extract of rosaceae fruit according to the present invention comprises a micronutrient and a natural compound beneficial to the skin (Content of Invention – Plant material [para. 0026]).”
Since the Rosa Canina extract,including the solvents and plant part suitable for improving the claimed skin complexion remained largely unsolved, means for providing improvement of the skin complexion by the administration thereof is highly unpredictable.
(5) The relative skill of those in the art:
The relative skill of those in the art is high. With respect to successfully achieving results with the oral administration of extract of Rosa Canina for skin complexion improvement it is highly unpredictable, unless effective dosage is administered and remained beyond the purview of the skilled artisan. Accordingly, one would have turned to the instant disclosure for additional direction and guidance.
(6) The amount of direction or guidance presented and (7) the presence or absence of working examples:
The specification has provided limited guidance (see esp. at Examples, tables, and figures, including the Rosa Canina extracted thereby, the target skin fibroblast, and the effects measured resultant of the administering). The specification does not provide additional direction and guidance commensurate in scope with the claims.
(8) The quantity of experimentation necessary:
Considering the state of the art as discussed by Torok et. al. and Pecher et. al., and the high unpredictability and the lack of guidance provided in the specification, one of ordinary skill in the art would be burdened with undue experimentation to practice the invention for the scope claimed. Therefore, one skilled in the art could not practice the invention commensurate in the scope of the claims without undue experimentation.
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.
Claima 1 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Torok, Helen et. al (US 11877998 B2) in view of Pecher, V et. al. (CN 112312889 A).
In instant case, claims 1, and 5-10 recites A method for improving skin complexion, comprising orally administering an effective dose of a Rosa canina extract, wherein the Rosa canina extract is obtained by extracting, mixing a whole fruit of Rosa canina by water at a weight ratio of 1:10 to obtain an extraction solution, letting the extraction solution to stay at 85ºC for 1 h, and removing solid from the extraction solution; and wherein the improvement of skin complexion is achieved by promoting cellular iron absorption, hemoglobin concentration, or blood iron content in the subject in need thereof.
Torok et. al. ‘998 teaches, “composition of an orally administered agent may be devised to provide desirable nutrients and other supplements to the body, which may help mitigate degradation of the skin, and may help promote the health of the skin. The composition can comprise ingredients in a new arrangement of type, amount, and source, which, in this particular arrangement, may promote healthy skin and improve skin condition in a person (Summary [para. 0003]).” And the composition comprising rose hip extract, “a composition that promotes healthy skin can comprise the following ingredients: vitamin A; vitamin C; vitamin E; vitamin B6; zinc; rose hip extract; copper; and vitamin B3. The composition can be administered orally at a desired dosage to achieve a desired treatment result, such as to improve skin condition, and/or treat skin conditions (Summary [para. 0004]).” Furthermore, Torok et. al. ‘998 teaches the amount of rose hip extract in a supplement along with other compounds which can be taken, “rose hip extract may be able to provide natural anti-inflammatory benefits, similar to that of vitamin C. As an example, a dose from approximately five (5) mg to about fifteen (15) mg per day may be effective (Detailed Description [para. 0005]).”
Additionally, Torok et. al. ‘998 teaches, a method of treating Rosacea may utilize one or more of the supplement compositions described herein. A rosacea diagnosis can be indicated by the appearance of flushed redness with bumps and visible blood vessels on the face. In this implementation, treating rosacea can comprise orally administering 2 capsules of the supplement composition per day for substantially clear skin in within two months (Detailed Description [para. 0029]).”
The teachings of Torok et. al. Rosa Canina in form of rose hip extract in a supplement which can be taken orally, does improve skin complexion and improves and treats skin condition. The dosage of rose hip extract differs from instant case, however, one of skilled in the art can make proper adjustments to dosage according to needs for treatment.
Although Torok et. al. does not explicitly teach the extraction of Rosa Canina by water, however, Pecher et. al. ‘889 teaches ac cosmetic composition of Rosa Canina with water. “a cosmetic composition for topical application to the skin, wherein the physiologically acceptable medium comprises at least an effective amount of at least one water extract of rose fruit of at least one different from the fruit of the fruit of the canine rose Rosa canina (Abstract).” The teachings of Pecher et. al.,
The teachings of Torok et. al. and Pecher et. al. one skilled in the art would be motivated to come up with similar end results of instant invention. In instant claims 1 and 5-9 recites the properties for improvement of skin complexion, is inherited properties of Rosa Canina. It is taught by Pecher et. al. “The invention also relates to at least one kind of effective amount of water extract of rose fruit according to the invention as the purpose of promoting and/or improving the nutrient supply of the skin, promoting and/or improving the skin cohesion and/or differentiation, promoting and/or improving barrier function; densifying and/or reducing the degradation of the extracellular matrix; improving the elasticity and/or tightness of the skin, especially the skin around the eye; preventing and/or reducing the black eye and/or pouch around the eye; improving the light and/or uniformity of the skin, especially the skin around the eye; promoting and/or improving hydration; and/or non-therapeutic cosmetic use of agents that prevent and/or reduce the formation of wrinkles and/or fine lines (Background-Content of the invention [para. 0004]).” Although Torok et.al and Pecher et. al. does not explicitly recite the skin improvement properties, the Rosa canina has inherited properties recited in instant invention, therefore, it is obvious for one of ordinary skilled in the art to combine the teachings and come to the similar end results.
Therefore, it would have been obvious to use equivalents for the same purpose as currently claimed. It is obvious to the person having ordinary skill in the art to extract Rosa Canina and orally administered to achieve the results in similar manner as claimed, because the art has shown the extraction process by water, oral consumption and effectiveness of skin improvement.
Conclusion
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
No Claims are 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 Alpa Amin whose telephone number is (571)272-0562. The examiner can normally be reached 8:30 - 6:00.
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/ALPA NILESH AMIN/Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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