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
Claims 1-10 are pending. Claims 1-10 are examined on the merits.
Claim Objections
Claim 4 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.
Claim Rejections –35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3, and 5-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
First, the claimed invention must be to one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter three categories define "things" or "products" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed). See 35 U.S.C. 100(b) ("The term ‘process’ means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material."). See MPEP § 2106.03 for detailed information on the four categories.
Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013). See MPEP § 2106.04 for detailed information on the judicial exceptions.
Claim(s) 1, 3, and 5-10 is/are directed to a cosmetic composition for topical application to the skin or hair, comprising a cactus flower extract complex.
Analysis of the flowchart:
Step 1, is the claim directed to a process, machine, manufacture or composition of matter?
Yes. The claim is directed to a composition of matter.
Step 2A. Prong one: Is the claim directed to a law of nature, a natural phenomenon (product of nature), or an abstract idea?
Yes, the claims are directed to nature based components, an extract of a cactus flower, because there is no indication that extraction has caused the components of an extract of cactus flower that comprise the claimed compositions to have any characteristics that are different from the naturally occurring components in cactus flower.
Step 2A. Prong two: Does the claims recite additional elements that amount to significantly more than the judicial exception?
No. The claim(s) of 1, 3, and 5-10 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception, as there is no indication that extraction has caused the components of lichen, wheatgrass, amla, and ginseng that comprise the claimed compositions to have any characteristics that are different from the naturally occurring components in cactus flower, lichen, wheatgrass, amla, and ginseng. Regarding claims 1, and 3-10, since there is no absolute amounts of the active ingredients are claimed as compared to the whole composition, the claimed composition encompasses embodiments where the active ingredients are in such small amounts that none of them impart any characteristic or markedly different characteristic. Also, this is a product claim and since there are no claimed method steps, there are no additional elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception themselves. Therefore, the claims do not recite something significantly more than a judicial exception and are thus deemed patent ineligible subject matter.
Regarding claims 1, 3, and 5-10, a cosmetic that is applied topically does not result in a markedly different characteristic because plant harvest and extraction already encompass contact of the plant materials with human skin.
Step 2B. If additional elements of the claim provide an inventive concept (Step 2B) (also called "significantly more" than the recited judicial exception).
No, no non-nature based components were recited in the claims.
For the reasons described above, the claimed compositions are not markedly different from their closest naturally occurring counterparts and thus are product of nature judicial exceptions.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not recite any additional elements beyond the claimed compositions themselves. Also, this is a product claim and since there are no claimed method steps, there are no additional elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception themselves. Therefore, the claims do not recite something significantly more than a judicial exception and are thus deemed patent ineligible subject matter.
Claim Rejections –35 USC § 112, 2nd
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.
Claims 2, 5, and 7-10 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 2 recites “kefir PHA” at line 2, and it is not clear what “kefir PHA” stands for, Applicant is required to spell out the full name of “PHA” the first time it appears in the claim.
Claim 5 recites parenthetical expression "(Lichen)" at line 2; Claim 7 recites “(Pascopyron smithii)” at line 2; claim 8 recites “(Phyllanthus emblica)” at line 2; claim 9 recites “(Panax ginseng)” at line 2; claim 10 recites “(Withania somnifera)” at line 2. The metes and bounds of Claims 5, and 7-10 are rendered vague and indefinite by the parenthetical recitation of because it is unclear as to whether the limitation is part of the instantly claimed subject matter.
Claim 7 recites “(Pascopyron smithii)” at line 2, and it is not clear what “Pascopyron smithii” stands for, does Applicant mean “Pascopyrum smithii”?
Therefore, the metes and bounds of claims are rendered vague and indefinite. The lack of clarity renders the claims very confusing and ambiguous since the resulting claims do not clearly set forth the metes and bounds of the patent protection desired.
All other cited claims depend directly or indirectly from rejected claims and are, therefore, also, rejected under U.S.C. 112, second paragraph for the reasons set forth above.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Da Costa Silva R M et al (BR 102013028228 A2).
Da Costa Silva R M et al teach the cosmetic composition comprises 0.01-10 wt.% Opuntia ficus-indica extract, where the extract is extracted from flowers (thus the claimed flower extract, thus claims 1 and 3 are met), fruits or cladodes of the plant. The extract is aqueous and alcoholic (ethanol, methanol, n-propanol, isopropanol, glycol, glycerol or their mixtures) in full form or in apolar fractions (chloroform, dichloromethane, ethyl acetate, hexane, ether or their mixtures) (see Abstract).
Therefore, the reference is deemed to anticipate the instant claim above.
Claims 1, 3, 6, and 8 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Zhu (CN 112386541 A).
Zhu teaches the traditional Chinese medicine silk hydrolyzed protein mask cosmetic (thus the claimed cosmetic composition for topical application) liq. and its prepn. method comprises the following raw materials in parts by wt.: 3-7 of silk hydrolyzed protein, 1-2 of almond protein peptide, 1-2 of fish-scale collagen peptide, 3-5 of salicylic acid-modified hyperbranched polyglycidyl ether, 0.3-0.6 of adenosine-modified hyaluronic acid, 1-2 of Phyllanthus emblica (thus the claimed adaptogen complex, thus claims 6 and 8 are met), 2-3 of hydrolyzed Opuntia ficus-indica flower ext.(thus the claimed cactus flower extract, thus claims 1 and 3 are met), 0.1-0.3 of cannabidiol, 0.3-0.6 of pea fermn. broth, 2-3 of traditional Chinese medicine (Centaurea cyanus, red cherry, chrysanthemum, eucalyptus leaves, mung bean, juniper, coriander, plantain, and thyme), 5-8 of glycerin, and 70-85 of deionized water. The present invention discloses the traditional Chinese medicine silk hydrolyzed protein mask cosmetic liq. and its prepn. method having improved performance stability, capable of effectively whitening, moisturizing, and nourishing the facial skin, resisting wrinkles and aging, removing freckles (see Abstract).
Therefore, the reference is deemed to anticipate the instant claim above.
Conclusion
No claim is allowed.
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/Qiuwen Mi/
Primary Examiner, Art Unit 1655