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 .
Status of Claims
A new claim set was filed on 5/18/26 with the following:
Amended claims
10, 12-13
Newly canceled claims
Newly added claims
15-19
Previously canceled claims
1
Previously withdrawn claims
2-9, 14
Claims under instant examination
10-13, 15-19
Withdrawn Claim /Rejections
The rejections of claims 12-13 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention are hereby withdrawn in view of the claim amendments filed on 5/18/26.
Maintained, Modified and New Claim Rejections - 35 USC § 103
Applicant' s claim amendments have necessitated the following modified and new grounds of rejection.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 10-13 remain rejected and claims 16-17 are newly rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2013/0164233; published: 6/27/13; of record), in view of Rocha-Mendoza et al. (J. Dairy Sci., 104(2), Feb. 2021; of record).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Lee teaches the Estee Lauder product, CyberWhite Brilliant Cells Full Spectrum Brightening Essence as Group F of their study [0042]. Lee teaches that the product comprises the following ingredients:
Water/Aqua
Solvent
EAU, Dimethicone
Providing smoothness in use
Polysorbate 40
Hydrophilic emulsifier,
surfactant, fragrance dispersing
agent
Pentylene glycol
Small-molecule humectant,
Emollient, bacteriostat
Acorbyl glucoside
Whitening agent, Anti-oxidant
Yeast extract/Faex/Extrait de
Containing enzymes, various
levure
vitamins, minerals and
saccharides, being helpful to
nurse and nourish skin
Polyacrylamide
High-molecular-weight polymer,
thickener, Antistatic agent, highly
absorbent
Myristyl alcohol
Skin emollient, emulsification
stabilizer, thickener, viscosity
controlling agent
Acetyl glucosamine
Moisturizing, replenishing
Sucrose
Small-molecule moisturizer
PEG-10 Dimethicone
Skin emollient
Phenoxyethanol
Preservative, perfume fixative
C 13-14 Isoparaffin
Thickener
Titanium dioxide (CI77891)
Titanium dioxide dispersing agent
Sorbitol
Small-molecule humectant,
thickener
Sodium hydroxide
Adjusting ph value
Butylene glycol
Solvent, moisturizing
MICA
Emollient, coloring agent
Propylene glycol dicaprate
Skin emollient
Caffeine
Anti-irritation, promoting
metabolism and blood circulation
Tocopheryl acetate
Moisturizing, nourishing,
protecting skin from UV
Algae extract
Promoting metabolism,
moisturizing, softening, reducing
inflammation and calming skin,
anti free radical
Laureth-7
Emulsifier, surfactant
Pantethine
Vitamin B5 derivative, softener,
moisturizing, softening
Chlorphenesin
Preservative, bactericide
Glycyrrhetinic acid (K2)
Anti-irritation, skin conditioning
agent
Bifidus ferment filtrate
Moisturizing, replenish
Sodium RNA
Skin conditioning agent
O-Cymen-5-ol
Bacteriostat
Glycine soja (soybean) seed
Softener, humectant
extract
Fragrance (Parfum)
Fragrance
Gentianalutea (Gentian) root
Calming, allaying
extract
Phytosphingosine
Moisturizing and improving skin
immunization
Sodium hyaluronate
Strong humectant
Helianthus annuus (Sunflower)
Strengthening skin defense
seedcake
Silica
Viscosity reguator
Citric acid
Peeling, toner
Whey protein/lactis protein/
Tightening and smoothening skin
proteine du petit-lait
Chamomilla recutita
Calming, allaying, antiseptic,
(matricaria) flower extract
astringent
Disodium EDTA-2Na
Metal chelating agent
Oryza sativa (Rice) bran
Moisturizing, anti-irritation,
extract
enhanced whitening effect
Hordeum vulgare (Barley)
Skin emollient
extract/extrait d'orge
Laminaria saccharina extract
Skin conditioning agent
Hydrolyzed rice bran extract
Calming and whitening skin
Plankton extract
Skin conditioning agent
Lecithine
Natural surfactant, moisturizer,
anti-oxidant
Cucumis sativus (Cucumber)
Moisturizing, reducing
fruitextract
inflammation and calming skin,
and whitening
Pyrus malus (Apple) fruit
Moisturizing, reducing
extract
free-radical incurred harm and
anti-aging
Pueraria lobata root extract
Moisturizing, anti-irritation
Scutellaria baicalensis root
Reducing inflammation and
exract
calming skin, whitening
(underlined ingredients are the instantly claimed ingredients) [Table 3].
With regards to the newly added limitation to instant claim 10 “formulated as a plant spray composition”, the Examiner directs attention to MPEP 2111.02 which states: “statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art”. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention and the preamble merely states the intended use of the invention (i.e., plant spray). Claim 10 is a composition claim and is structurally limited by the ingredients included and the form (i.e., it is narrowed to a form that could be sprayed; e.g., aerosol or liquid form). Furthermore, MPEP 2111.02 states: “…however, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” In the instant case, the claim body describes a structurally complete invention.
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Although Lee teaches a composition comprising “whey protein/lactis protein/proteine du petit-lait”, Lee does not specify if this is or contains acid whey, as required by instant claim 10. However, this deficiency is cured by Rocha-Mendoza.
It is noted, the instant specification defines “acid whey” as the product resulting from the coagulation of milk by acidification (also called “sour whey”) [0016].
Rocha-Mendoza teaches that acid whey holds significant potential as a valuable source of health-promoting milk phospholipids (MPL) [Acid Whey Lipids Section]. More specifically, Rocha-Mendoza teaches that continuous topical application of MPL improves skin health through measures such as skin hydration, water-holding capacity and recovery of damaged skin [Health Benefits of the Lipid Fraction].
Lee does not teach the concentration of the claimed ingredients (i.e., acid whey, Laminaria saccharina extract and sucrose), as required by instant claims 13, 16-17 and 19. It is noted that claim 13 recites a wide range of 0.5-25% by dry weight of each of the abovementioned ingredients. It is also noted that with regards to instant claim 19, if the concentration of acid whey and brown seaweed extract are obvious, the effect that it produces is inherent (see MPEP 2112.01(II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”.)
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Lee and Rocha-Mendoza are both directed to whey-containing compositions. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the composition of Mintel either substituting “whey protein/lactis protein/proteine du petit-lait” with Greek yogurt acid whey or further incorporating the Greek yogurt acid whey taught by Rocha-Mendoza to achieve the predictable result of obtaining a composition suitable for topical application. One of ordinary skill in the art would have been motivated to do so because Rocha-Mendoza teach that it is advantageous for skin hydration, water-holding capacity and recovery of damaged skin [Health Benefits of the Lipid Fraction].
The concentration of acid whey, brown seaweed extract (e.g., Laminaria saccharina extract) and sucrose is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal concentration in order to best achieve the desired results as such would provide advantageous biological effect. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Rocha-Mendoza teaches that acid whey contains milk phospholipids (MPL) and that continuous topical application of MPL improves skin health through measures such as skin hydration, water-holding capacity and recovery of damaged skin [Health Benefits of the Lipid Fraction]. Lee teaches that Laminaria saccharina extract behaves as a skin conditioning agent and that sucrose behaves as a small-molecule moisturizer in the product of Estee Lauder CyberWhite Brilliant Cells Full Spectrum Brightening Essence [Table 3]. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the concentration of acid whey, brown seaweed extract (e.g., Laminaria saccharina extract) and sucrose would impact skin hydration, water-holding capacity, recovery of damaged skin, skin conditioning and moisturization and therefore be an optimizable variable.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claim 15 is newly rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2013/0164233; published: 6/27/13; of record) and Rocha-Mendoza et al. (J. Dairy Sci., 104(2), Feb. 2021; of record) as applied to claims 10-13 and 16-17 above, and further in view of Krock et al. (GB 2541165; published: 2/15/17).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Lee and Rocha-Mendoza et al. teach the limitations of instant claims 10-13 and 16-17 (see above rejection for details
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Although Lee teaches a composition comprising brown seaweed extract as a skin conditioning agent, Lee does not specify that the brown seaweed extract is from Ascophyllum nodosum, as required by instant claim 15. However, this deficiency is cured by Krock.
Krock is directed to a seaweed bath product comprising dried seaweed soaked with essential oils, wherein the seaweed is preferably of the species Ascophyllum nodosum [Abstract]. Krock teaches that seaweed extracts are used in cosmetic products [p. 2, line 14]. Krock teaches that Ascophyllum nodosum has a high content in minerals compared to other seaweed species and specifically those from the west coast of Ireland have a particular content of minerals and vitamins, drawn from the ocean beneficial for health and cosmetic use [p. 4, lines, 20-35].
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (brown seaweed extract of Lee + brown seaweed extract (from Ascophyllum nodosum) taught by Krock for the purpose of providing skin conditioning), in order to form a third composition to be used for the very same purpose (See MPEP 2144.06-I). Alternatively, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (brown seaweed extract of Lee with the brown seaweed extract (from Ascophyllum nodosum) taught by Krock for the purpose of providing skin conditioning) (See MPEP 2144.06-II).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claims 10, 12, 15 and 18 are newly rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi et al. (JPH 01290581; published: 11/22/89), in view of Jabs et al. (CN 105072915; published: 3/24/20).
The English language machine translations of JPH 01290581 and CN 105072915 are attached herein. The passages cited below which indicate the teachings of the ‘581 and ‘915 publications are based on its English translation (i.e., google patents machine translation).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Taniguchi is directed to a novel organic fertilizer [Title].
With regards to instant claims 10 and 18, Taniguchi teaches a fertilizer product whose active ingredient is a fertilizing ingredient contained in whey and wherein the whey is acid whey consisting of a residue obtained by separating casein from skim milk [see claims 1 and 3]. Furthermore, Taniguchi teaches a fertilizer whose active ingredient is permeate obtained by ultra-filtrating whey or a fertilizing ingredient contained in the mother liquor from which lactose precipitated from the permeate and wherein the whey is acid whey [see claims 4-5].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Taniguchi does not teach wherein the fertilizer product further comprises a brown seaweed extract (e.g., from Ascophyllum nodosum), as required by instant claims 10, 12 and 15. However, this deficiency is cured by Jabs.
Jabs is directed to synergistic compositions comprising a bacillus subtilis strain and a biopesticide [Title]. Jabs teaches that brown seaweed extracts from Ascophyllum nodosum and Ecklonia maxima are biochemical pesticides with reduced plant stress, plant growth regulators and/or plant yield-enhancing activity [p. 6, paragraph starting with “F’)”].
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Taniguchi and Jabs are both directed to fertilizer products. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the fertilizer of Taniguchi by further incorporating brown seaweed extract (from Ascophyllum nodosum) taught by Jabs to achieve the predictable result of obtaining a composition suitable for fertilization. One of ordinary skill in the art would have been motivated to do so because Jabs teaches that such is advantageous for reduced plant stress, plant growth and enhancing plant yield.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Response to Arguments
Applicants’ arguments have been fully considered, but are not found persuasive.
Applicants indicate that the new limitations of instant claim 10 “formulated as a plant spray composition” relates to the field of agriculture and the cited art [Lee and Rocha-Mendoza] is directed to a cosmetic composition. Applicants argue that a skilled person would only have had a reasonable expectation that the resultant composition would be suitable as a cosmetic composition for topical application [Remarks: p. 6-7]. There is no reason or suggestion to motivate the skilled person to modify such a cosmetic composition by formulating it into a plant spray composition [Remarks: p. 7].
This is not found persuasive. The Examiner first notes that claim 18 that requires the composition to further comprise a fertilizing product is not rejected over Lee in view of Rocha-Mendoza. With regards to instant claim 10, which now recites “A composition formulated as a plant spray composition comprising…”, is rejected over Lee in view of Rocha-Mendoza. In response to the argument, the Examiner reiterates the statements made in the above modified rejection:
“With regards to the newly added limitation to instant claim 10 “formulated as a plant spray composition”, the Examiner directs attention to MPEP 2111.02 which states: “statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art”. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention and the preamble merely states the intended use of the invention (i.e., plant spray). Claim 10 is a composition claim and is structurally limited by the ingredients included and the form (i.e., it is narrowed to a form that could be sprayed; e.g., aerosol or liquid form). Furthermore, MPEP 2111.02 states: “…however, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” In the instant case, the claim body describes a structurally complete invention.”
Conclusion
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 GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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, David Blanchard can be reached at 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617
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