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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-11 and 17-20, drawn to a cosmetic composition) in the reply filed on April 24th, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-11 and 17-20 are pending and were examined on the merits.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The foreign priority date is October 1st, 2021.
Information Disclosure Statement
The information disclosure statement (IDS) filed March 26th, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. The instant application does not contain a copy of Non-Patent Literature Document 8, listed as “Mintel GNPD, (mintel.com) Record ID 6402279, "Body cream", House of Rose, March 2019”. The publication date for Foreign Patent Document 1 (WO-2005107476-A2) is also incorrect; the correct publication date is November 17th, 2005 (2005-11-17) for the international publication WO-2005107476-A2; although the priority date for this document is May 3rd, 2004 (2004-05-03).
Drawings
The drawings were received on March 26th, 2024. These drawings are acceptable.
Specification
The use of the terms Sigma-Aldrich, Gibco, Quantikine, R&D Systems, TECAN, and SPARK, each of which is a trade name or a mark used in commerce, has been noted in this application. Each term should be accompanied by the generic terminology; furthermore, each term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 4 and 18 are objected to because of the following informalities: these claims recite "the cranberry extract further comprises an additive". However, the extract would be cranberry derived material, and the additive a distinct substance from the extract because it is an additive. Therefore, claims 4 and 18 should be amended to replace the phrase "the cranberry extract further comprises an additive" with the phrase "the cosmetic composition further comprises an additive". Appropriate correction is required.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The additive recited in claims 4 and 18 is interpreted as a distinct substance from the cranberry extract, where both are ingredients in the instantly claimed cosmetic composition.
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.
Claims 3, 6, 8, 11, 17 , and 20 are 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.
The term “about” in claims 3, 6, 8, 11, 17 and 20 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The weight percents of organic acids, magnesium hydroxide, tricalcium phosphate, cranberry seed extract, and cranberry seed oil; and the ratio of cranberry seed oil to cranberry seed extract are rendered indefinite by the use of the term "about".
Claim Rejections - 35 USC § 101
Claims 1-11 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more. The claim(s) recite(s) a cosmetic composition comprising cranberry extract in combination with cranberry seed oil further comprising an additive (magnesium hydroxide and/or tricalcium phosphate). This judicial exception is not integrated into a practical application because the claimed combination of substances is not recited as having characteristics that markedly differentiate it from the naturally occurring counterparts of these substances. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the instant claims do not recite how combining cranberry extract, cranberry seed oil, and an additive (magnesium hydroxide and/or tricalcium phosphate) produces a composition with (a) cosmetically-relevant property or properties beyond those of the naturally occurring source materials of the composition.
The first step of the eligibility analysis evaluates whether the claim falls within a statutory category (see MPEP 2106.03). Since claims 1-11 and 17-20 are directed to a cosmetic composition, the claims are directed to a composition.
Effective January 7, 2019, subject matter eligibility determinations under 35 U.S.C. § 101 follow
the procedure explained in the Federal Register notice titled 2019 Revised Patent Subject Matter
Eligibility Guidance (Federal Register, Vol. 84, No.4, 50-57), which is found at:
https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf. Applicants are kindly asked
to review this guidance as well as MPEP 2106.
The statutory categories of invention under 35 U.S.C. 101 are processes, machines,
manufactures, and compositions of matter. However, certain members of these categories constitute judicial exceptions, i.e., the courts have determined that these entities are not patentable subject
matter. These judicial exceptions include abstract ideas, laws of nature, and natural phenomena. The
Office released guidance on December 16, 2014 for the examination of claims reciting natural products
under 35 U.S.C. 101 in light of the recent Supreme Court decisions in Association for Molecular
Pathology v. Myriad Genetics, Inc. (569 U.S. ___, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013)) and
Mayo Collaborative Services v. Prometheus Laboratories (566 U.S. ___, 132 S. Ct. 1289, 101 USPQ2d
1961 (2012)), Diamond v. Chakrabarty, 447 U.S. 303 (1980)) and Funk Brothers Seed Co. v. Kalo Inoculant Co. - 333 U.S. 127 (1948)). (inter alia). See eg. MPEP 2106.04(b)
The Supreme Court has explained that the judicial exceptions reflect the Court’s view
that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and
technological work", and are thus excluded from patentability because "monopolization of those
tools through the grant of a patent might tend to impede innovation more than it would tend to
promote it." Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980 (quoting Myriad, 133 S. Ct. at
2116, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S.
66, 71, 101 USPQ2d 1961, 1965 (2012)). The Supreme Court’s concern that drives this
"exclusionary principle" is pre-emption. Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980.
The Court has held that a claim may not preempt abstract ideas, laws of nature, or natural
phenomena; i.e., one may not patent every "substantial practical application" of an abstract
idea, law of nature, or natural phenomenon, even if the judicial exception is narrow.
While preemption is the concern underlying the judicial exceptions, it is not a standalone
test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119
USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent in and
resolved by the two-part framework from Alice Corp. and Mayo (the Alice/Mayo test referred to
by the Office as Steps 2A and 2B). It is necessary to evaluate eligibility using the Alice/Mayo
test, because while a preemptive claim may be ineligible, the absence of complete preemption
does not demonstrate that a claim is eligible.
Products of Nature: When a law of nature or natural phenomenon is claimed as a
physical product, the courts have often referred to the exception as a "product of nature".
Products of nature are considered to be an exception because they tie up the use of naturally
occurring things, but they have been labeled as both laws of nature and natural phenomena.
See Myriad 133 S. Ct. at 2116-17, 106 USPQ2d at 1979 (claims to isolated DNA held ineligible because they "claim naturally occurring phenomena" and are "squarely within the law of nature
exception"); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281
(1948) (claims to bacterial mixtures held ineligible as "manifestations of laws of nature" and
"phenomena of nature"). Step 2A of the Office’s eligibility analysis uses the terms "law of
nature" and "natural phenomenon" as inclusive of "products of nature".
It is important to keep in mind that product of nature exceptions include both naturally
occurring products and non-naturally occurring products that lack markedly different
characteristics from any naturally occurring counterpart. Instead, the key to the eligibility of all
non-naturally occurring products is whether they possess markedly different characteristics from
its closest naturally occurring counterpart.
When a claim recites a nature-based product limitation, examiners use the markedly
different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based
product limitation and determine the answer to Step 2A. Nature-based products, as used herein,
include both eligible and ineligible products and merely refer to the types of products subject to
the markedly different characteristics analysis used to identify product of nature exceptions.
The Markedly Different Characteristics Analysis
The markedly different characteristics analysis is part of Step 2A, because the courts use this
analysis to identify product of nature exceptions. If the claim includes a nature-based product
that has markedly different characteristics, then the claim does not recite a product of nature
exception and is eligible. If the claim includes a nature-based product that does not exhibit
markedly different characteristics from its closest naturally occurring counterpart in its natural
state, then the claim is directed to a "product of nature" exception (Step 2A: YES), and requires
further analysis in Step 2B to determine whether any additional elements in the claim add
significantly more to the exception.
Nature-based Product Claim Analysis
Where the claim is to a nature-based product by itself, the markedly different
characteristics analysis should be applied to the entire product. Where the claim is to a nature-
based product produced by combining multiple components, the markedly different
characteristics analysis should be applied to the resultant nature-based combination, rather than
its component parts. Where the claim is to a nature-based product in combination with non-
nature based elements, the markedly different characteristics analysis should be applied only to
the nature-based product limitation. For a product-by-process claims, the analysis turns on whether the nature-based product in the claim has markedly different characteristics from its
naturally occurring counterpart.
The markedly different characteristics analysis compares the nature-based product limitation to
its naturally occurring counterpart in its natural state. Markedly different characteristics can be
expressed as the product’s structure, function, and/or other properties, and are evaluated based
on what is recited in the claim on a case-by-case basis. If the analysis indicates that a nature-
based product limitation does not exhibit markedly different characteristics, then that limitation is
a product of nature exception. If the analysis indicates that a nature-based product limitation
does have markedly different characteristics, then that limitation is not a product of nature
exception. Because the markedly different characteristics analysis compares the nature-based
product limitation to its naturally occurring counterpart in its natural state, the first step in the
analysis is to select the appropriate counterpart(s) to the nature-based product. When there are
multiple counterparts to the nature-based product, the comparison should be made to the
closest naturally occurring counterpart. When the nature-based product is a combination
produced from multiple components, the closest counterpart may be the individual nature-based
components of the combination. Because there is no counterpart mixture in nature, the closest
counterparts to the claimed mixture are the individual components of the mixture, i.e., each
naturally occurring species by itself. See, e.g., Funk Bros., 333 U.S. at 130, 76 USPQ at 281
(comparing claimed mixture of bacterial species to each species as it occurs in nature).
Markedly changed characteristics can include structural, functional, chemical changes.
In order to show a marked difference, a characteristic must be changed as compared to nature,
and cannot be an inherent or innate characteristic of the naturally occurring counterpart or an
incidental change in a characteristic of the naturally occurring counterpart. Myriad, 133 S. Ct. at
2111, 106 USPQ2d at 1974-75. Thus, in order to be markedly different, applicant must have
caused the claimed product to possess at least one characteristic that is different from that of
the counterpart. If there is no change in any characteristic, the claimed product lacks markedly
different characteristics, and is a product of nature exception.
Step 1: Determine if the claims are directed to one of the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101: a process, machine, manufacture or composition of matter.
YES, the claims are directed to a composition of matter, which is a statutory category within at least one of the four categories of patent eligible subject matter.
Step 2A: PRONG ONE: Evaluate whether the claim recites a Judicial Exception (e.g., law of nature, natural phenomenon, or an abstract idea; see MPEP 2106.04). YES, the claims are product claims reciting something that appears to be a nature-based product (a composition comprising cranberry extract in combination with cranberry seed oil) which is not markedly different from the closest naturally-occurring counterpart (i.e., the individual nature-based products).
Because the claim states the nature-based products, which are plant extracts, the markedly different characteristics is performed by comparing the nature-based product limitation to its natural counterpart.
The claim recites the naturally occurring components found within a cranberry plant (instant claim 1). This equates to a plant extract. The process of creating a plant extract is by partitioning the starting plant material into separate compositions based upon some property. The closest naturally occurring counterparts of extracted components are those same components when found existing in the plant in an unseparated form, even when purified and/or concentrated because they are chemically identical to the extracted compounds/components. All of these are naturally occurring in nature and are not markedly different from its naturally occurring counterpart in its natural state. The properties of the
nature-based product as claimed are not markedly different than the properties of these naturally
occurring counterparts found in nature as these activities would inherently be found in the plant they
come from. The components which would give the activities claimed in the instant invention would
inherently do the same in nature as there has been nothing done in the instant invention that would
make them act in any different way.
Step 2A: prong two evaluates whether the claim as a whole integrates the recited judicial exception into a practical application (see MPEP 2106.04(d)). This evaluation is performed by (a)
identifying whether there are any additional recited elements in the claim beyond the judicial exception
and (b) evaluating those additional elements individually and in combination to determine whether the
claim as a whole integrates the exception into a practical application.
This judicial exception is not integrated into a practical application because the plant extract
composition is only comprising the nature-based components. The claims do not integrate the judicial
exceptions into a practical application because in this context, such integration for a claimed product
would be a physical form of the specific practical application instead of a more general composition that
is not so limited.
The claims do not include additional elements that are sufficient to amount to significantly more
than the judicial exception because these components and their activity are already found naturally
occurring in nature and the addition of an intended use does not impart any added benefit to the
compounds or integrate the composition into a practical application.
Step 2B evaluates whether the claim as a whole, amounts to significantly more than the recited
exception, i.e., whether any additional element, or combination of additional elements, adds an
inventive concept to the claim (see MPEP § 2106.05(b)).
The claims as a whole do not amount to more than the recited exceptions because there aren’t
any other additional elements to consider, which does not add an inventive concept to the claims. Thus,
the claims are not eligible subject matter under current 35 U.S.C. 101 standards.
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.
Claims 1, 4-6, 8-11, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over First Aid Beauty (Mintel Record ID: 7651193, published June 2020; disclosed in the IDS submitted on March 26th, 2024), abbreviated "FAB"; and further in view of Constantin et al. (MAEDICA ̶ a Journal of Clinical Medicine 2014, 9 (1), 33-38), abbreviated “Constantin”.
Claim 1 recites “A cosmetic composition for topical use, comprising cranberry extract in combination with cranberry seed oil”. Claim 4 recites “The cosmetic composition according to claim 1, wherein the cranberry extract further comprises an additive”. Claim 5 recites “The cosmetic composition according to claim 4, wherein the additive comprises magnesium hydroxide and/or tricalcium phosphate”. Claim 6 recites “The cosmetic composition according to claim 5, comprising about 5% to about 10% w/w magnesium hydroxide and/or less than about 1% w/w of tricalcium phosphate”. Claim 8 recites “The cosmetic composition according to claim 1, any one of the preceding claims, wherein the cranberry extract and the cranberry seed oil are in a ratio of between about 15:1 to about 1:0.5”. Claim 9 recites “A cosmetic product comprising the cosmetic composition according to claim 1, and a cosmetically acceptable base”. Claim 10 recites “The cosmetic product according to claim 9, wherein the product is provided as a cream, a lotion, a spray, a gel, a foam, a stick, a shampoo, a conditioner or a mousse”. Claim 11 recites “The cosmetic product according to claim 9, wherein the cosmetic product comprises about 0.5% to about 30% w/w, of cranberry extract and about 0.05% to about 10% w/w, cranberry seed oil. Claim 18 recites “The cosmetic composition according to claim 17, wherein the cranberry extract further comprises an additive”. Claim 19 recites “The cosmetic composition according to claim 18, wherein the additive comprises magnesium hydroxide and/or tricalcium phosphate”. Claim 20 recites “The cosmetic composition according to claim 19, comprising about 5% to about 10% w/w magnesium hydroxide and/or less than about 1% w/w of tricalcium phosphate”.
FAB recites a product “Intense Hydration Cranberry Pomegranate Cream” as a moisturizer that provides instant relief and long-term hydration of dry, distressed skin and eczema, and that has been clinically proven to deliver more than double hydration immediately upon application, implying that the referenced composition is a cosmetic composition for topical use in the form of a cream (FAB page 1 of 7, Product Description, lines 9-11; instant claim 1). FAB recites their product comprising Vaccinium macrocarpon (cranberry) seed oil, Vaccinium macrocarpon (cranberry) fruit extract (FAB page 4 of 7, under the heading Ingredients; instant claim 1). FAB recites their product comprising the additive sodium hydroxide (FAB page 4 of 7, under the heading Ingredients; instant claims 4 and 18). Although FAB recites sodium hydroxide, instead of magnesium hydroxide as instantly claimed, it is within the knowledge of one of skill in the art that both sodium hydroxide and magnesium hydroxide would both increase the pH of an aqueous environment they are dissolved in. Therefore, one of skill in the art could have substituted sodium hydroxide with magnesium hydroxide with the predictable result of increasing the pH of the composition (instant claims 5 and 19). FAB recites water as the first ingredient in their Intense Hydration Cranberry Pomegranate Cream, and water is a cosmetically acceptable base (FAB page 4 of 7; instant claims 9 and 10, instant specification page 7 lines 1-10 from the top).
The instant claims are further distinguished from FAB in that FAB does not explicitly recite the cosmetic composition comprising about 5% to about 10% w/w magnesium hydroxide (instant claims 6 and 20), the cranberry extract and the cranberry seed oil ratio of between about 15:1 to about 1:0.5 (instant claim 8), and the cosmetic product comprising about 0.5% to about 30% w/w cranberry extract and about 0.05% to about 10% w/w cranberry seed oil (instant claim 11). However, these quantities are obvious to one of skill in the art over routine optimization. One of skill in the art could use a scale instrument to measure weights and adjust weight percents of different ingredients in the cosmetic product. Multiple products differing according to the ratios and weight percents described above could be tested on subjects. The effects of different compositions on the skin hydration of subject organisms could be measured using a corneometer (Constantin, Abstract; instant claims 6, 8, 11, and 20).
FAB and Constantin are relied upon for the reasons discussed above. If not expressly taught thereby, based upon the overall beneficial teachings provided by the references with respect to providing the cosmetic composition, the adjustments of particular conventional working conditions (e.g., the selection from among known components and determining one or more suitable ranges (amounts, proportions, ratios thereof) in which to provide the cosmetic composition), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the
skilled artisan.
From the teachings of FAB in view of Constantin, the invention as a whole, drawn to a composition as described in Claims 1, 4-6, 8-11, and 18-20, would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing
Applicants’ composition with the composition of the prior art, the burden is on applicant to show
a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67,
205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then obtain prior art products
and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972).
Claims 1-6, 8-11, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over FAB (Mintel Record ID: 7651193; disclosed in the IDS submitted on March 26th, 2024) further in view of Constantin (MAEDICA ̶ a Journal of Clinical Medicine 2014, 9 (1), 33-38) as applied to claims 1, 4-6, 8-11, and 18-20 above, and further in view of Yang et al. (CN 110711161 A), abbreviated “Yang”.
Claims 1, 4-6, 8-11, and 18-20 and the teachings of FAB and Constantin are of record above.
Claim 2 recites “The cosmetic composition according to claim 1, wherein the cranberry extract is a hydrophilic extract”. Claim 3 recites “The cosmetic composition according to claim 1, wherein the cranberry extract contains more than about 30% w/w organic acids”. Claim 17 recites “The cosmetic composition according to claim 2, wherein the cranberry extract contains more than about 30% w/w organic acids”.
Yang recites “The invention relates to the field of cosmetics, specifically to a wash-free facial mask for soothing and repairing essence” (Technical field).
Yang recites an extract of Vaccinium macrocarpon (cranberry) fruit, extracted using water, comprising the organic acid vitamin C (ascorbic acid), having the function of increasing skin smoothness and elasticity:
“The main nutrient components of the Vaccinium macrocarpa (VACCINIUM MACROCARPON) fruit extract of the invention comprise anthocyanin, catechin, vitamin C, carotenoid, vitamin C, E and so on, which has the functions of anti-oxidation, removing free radical, enhancing blood vessel elasticity and strength, improving microcirculation, promoting collagen synthesis, increasing skin smoothness and elasticity, inhibiting inflammation and allergy. … The Vaccinium macrocarpa (VACCINIUM MACROCARPON) fruit extract of the invention is extracted from the fruit of the VACCINIUM MACROCARPON; For example: using water as solvent, extracting for 1-3 times, combining the extracting solution, filtering to obtain the product” (Specific implementation examples, paragraph 4; instant claims 2, 3, and 17).
From Yang, one of skill in the art would have known that a hydrophilic extract of cranberry fruit is functional for increasing skin smoothness and elasticity. Therefore, it would be obvious to one of skill in the art to improve on the cosmetic utility of the cosmetic product recited by FAB above, by ensuring that the cranberry fruit extract is a hydrophilic extract. This improvement would have the predictable result of producing a cosmetic composition that both hydrates the skin and increases skin smoothness and elasticity (instant claim 3). Moreover, Yang recites a hydrophilic extract of Vaccinium macrocarpon (cranberry) fruit comprising vitamin C (ascorbic acid), an organic acid, and the organic compound catechin (instant claims 3 and 17). The phenolic hydroxyl groups on catechin would also be acidic, as would be known to one of skill in the chemical arts (instant claims 3 and 17).
Although Yang does not explicitly recite the cranberry extract containing more than about 30% w/w organic acids, this weight percent limitation is obvious to one of skill in the art over routine optimization. One of skill in the art could use HPLC measure the concentrations of specific organic acid compounds in a cranberry extract, and to separate and elute these compounds. The precise concentration, and therefore weight percent, of organic acids could be adjusted by evaporating solvent to increase their weight percent or adding more solvent to decrease their weight percent. Multiple products differing according to the ratios and weight percent of organic acids could be applied to the skin of subject organisms. The effects of different compositions on the skin smoothness could be documented by photographing the skin area to which the composition is applied at fixed time points after application, and comparing the photographed skin area between different subjects treated with different compositions.
FAB, Constantin, and Yang are relied upon for the reasons discussed above. If not expressly taught thereby, based upon the overall beneficial teachings provided by the references with respect to providing the cosmetic composition, the adjustments of particular conventional working conditions (e.g., the selection from among known components and determining one or more suitable ranges (amounts, proportions, ratios thereof) in which to provide the cosmetic composition), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the
skilled artisan.
From the teachings of FAB in view of Constantin and Yang, the invention as a whole, drawn to a composition as described in Claims 1-6, 8-11, and 17-20, would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing
Applicants’ composition with the composition of the prior art, the burden is on applicant to show
a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67,
205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then obtain prior art products
and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972).
Claims 1, 4-11, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over FAB (Mintel Record ID: 7651193; disclosed in the IDS submitted on March 26th, 2024) further in view of Constantin (MAEDICA ̶ a Journal of Clinical Medicine 2014, 9 (1), 33-38) as applied to claims 1, 4-6, 8-11, and 18-20 above, and further in view of Petkoska and Broach (WO 2016176485 A1), abbreviated “Petkoska”.
Claims 1, 4-6, 8-11, and 18-20 and the teachings of FAB and Constantin are of record above.
Claim 7 recites “The cosmetic composition according to claim 1, wherein the cranberry seed oil is a virgin cranberry seed oil”.
The applicant defines the term virgin as referring to “an oil produced by only physical or mechanical means”, including oils resulting from cold pressing (instant specification, page 5 lines 27 and 28, and page 6 line 1).
Petkoska recites the technological field of their invention “This application is related to compositions and methods of using them to protect a user's skin, nails, and hair from exposure to high energy violet or blue visible light” (paragraph [0004]).
Petkoska recites certain cosmetic utilities of cold pressed cranberry seed oil:
“In other embodiments, the compositions described herein comprise cranberry seed oil (Vaccinium macrocarpon). Cranberry seed oil is cold pressed oil from the seeds of cranberry contains a very high essential fatty acid profile with approx. 1 : 1 ratio of omega 3 to omega 6 EFA, along with a good mixture of tocopherols and tocotrienols, Vitamins A, C and K, high phytosterols level and other phytonutrients. Cranberry seed oil has one of the highest anti-oxidant phytosterols content of all oils and a high absorbance in the HEV spectral range, making it a good natural protection product that prevents photo- damage. Cranberry seed oil easily penetrates the skin and is highly moisturizing. It can aid in the relief of itchy, scaly, irritated skin conditions such as eczema and psoriasis. Its strong antioxidant properties and stable shelf life can help to extend the life of more fragile ingredients included within the same formulation” (paragraph [00178]; instant claim 7) .
Petkoska first defines cranberry seed oil as cold pressed oil, at least within the context of the quoted text. Petkoska then recites this cold pressed cranberry seed oil containing tocopherols, Vitamin A, and Vitamin C, all broadly known in the art as antioxidant compounds. Petkoska also recites cranberry seed oil having anti-oxidant phytosterol(s). It would have been within the knowledge of one of skill in the art that such compounds would decrease oxidative damage to the skin and therefore, have cosmetic utility in a composition applied to the skin. It is also within the knowledge of one of skill in the art that cold-pressing the cranberry seeds to obtain a virgin oil would be advantageous over methods using heat to obtain the oil, because heat could result in oxidative damage to the chemical components of the cranberry seed oil, decreasing its antioxidant property. Therefore, it would have been obvious to one of skill in the art to improve on the cosmetic composition recited by FAB, above, by ensuring that the cranberry seed oil is cold pressed, and therefore virgin, with the predictable result of producing a cosmetic composition providing greater protection to the skin, from oxidative damage.
Conclusion
No claims are allowed
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/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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