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 .
Applicant’s claim amendment and arguments filed on June 10, 2026 have been received and fully considered.
The previous claim rejection made under 35 U.S.C. 103 over Breton et al. (US 20080003311 A1) in view of Lavaud et al. (US 20180055904 A1) as indicated in the Office action dated February 11, 2026 has been modified to address the changed languages in claim 1, but otherwise the previous grounds of rejection have been substantially maintained.
Claim Rejections - 35 USC § 103
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.
Claims 1-4 and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Breton et al. (US 20080003311 A1, published January 3, 2008, cited) (“Breton” hereunder) in view of Lavaud et al. (US 20180055904 A1, published on March 1, 2018) (“Lavaud” hereunder).
The amended claim 1 is directed to a method for reducing muscle contraction of a facial muscle in a person's skin associated with a rhytide, the method comprising topically applying to skin over the facial muscle a composition comprising an effective amount of Rosmarinus officinalis leaf extract, wherein the Rosmarinus officinalis leaf extract is obtained with a fluid extraction solvent mixture comprising betaine, lactic acid, and water, wherein topical application of the Rosmarinus officialis leaf extract to the skin over the facial muscle reduces muscle contraction of the facial muscle by reducing calcium induced contraction in the facial muscle.
Breton teaches a method of treating aging skin, combatting facial wrinkles and lines, stimulating collagen synthesis in the skin and inhibiting the expression of extracellular matrix proteases in the skin, the method comprising topically applying a cosmetic composition comprising Rosmarinus officinalis leaf extract. See [0030]. Example 11 discloses an antiwrinkle care cream for the face comprising 5 wt % of rosemary extract; the reference teaches that a preferred amount of rosemary extracts for the disclosed method is in the range of 0.01 – 10 %. See [0058].
Brenton teaches that any known extraction method can be used to prepare the extract; alcohol extractions such as ethanolic or aqueous/alcoholic extraction methods are particularly mentioned. See [0044-0045]. The reference fails to mention the specific extraction method of present claim 1.
Lavaud teaches that using eutectic extraction solvents comprising betaines and lactic acid in water is well known; these solvents are said to be particularly suitable for extraction of heat sensitive biological ingredients such as phenolic compounds, antioxidants, etc. See [015-016]. The reference teaches that such solvent method is advantageous in cosmetic industry as betaine can be used as a cosmetic principal as well as extracting fluid. See [0016, 0027, 0077-0079]. Examples 5-7 teaches that a ternary betaine/lactic acid/water mixture solvent produced a higher yield of Rosmarinus acid and antioxidant from rosemary than other binary mixtures. The reference also teaches plant extracts which are extracted with the eutectic extraction solvents have a wide range of biological activities. See [0074].
It would have been obvious to one of ordinary skill in the art before the time of filing the present application to modify the teachings of Breton and use a rosemary extract obtained by more advantageous extraction methods, such as those disclosed by Lavaud. Lavaud would have obviously motivated the person of ordinary skill in the art to use a rosemary extract obtained by the ternary solvent mixture containing betaine, lactic acid and water, as the reference teaches that a higher yield of extract containing a higher amount of antioxidant is obtained. Since Breton also teaches that extracts obtained by any known extraction methods can be used, by combining the teachings of the references, the person of ordinary skill the art would have combined the teachings of the references with a reasonable expectation of successfully producing an enhanced antiaging cosmetic composition with enhanced antioxidant capacity and used the product for the expected benefit of reducing skin wrinkles.
The new limitation “wherein topical application of the Rosmarinus officialis leaf extract to the skin over the facial muscle reduces muscle contraction of the facial muscle by reducing calcium induced contraction in the facial muscle” is directed to the mechanism of the rosemary extract on the skin when applied.
MPEP 2112.02, II discusses the basis of inherency in process claims: The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957). However, when the claim recites using an old composition or structure and the "use" is directed to a result or property of that composition or structure, then the claim is anticipated. In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978) (Claims 1 and 6, directed to a method of effecting nonaddictive analgesia (pain reduction) in animals, were found to be anticipated by the applied prior art which disclosed the same compounds, as well as a method of using them for effecting analgesia but which was silent as to addiction. The court upheld the rejection and stated that the inventors had merely found a new property of the compound and such a discovery did not constitute a new use).
In this case, the Rosmarinus officinalis leaf extract obtained by the Lavaud method is well known in cosmetic art, and topical application of Rosmarinus officinalis leaf extract on to reduce facial wrinkles is well known and has been in practice. The recited effect of the present method is said to reduce “muscle contraction of the facial muscle by reducing calcium induced contraction in the facial muscle”; such must be the inherent property of the Rosmarinus officinalis leaf extract obtained in Lavaud. The recitation “by reducing calcium induced contraction in the facial muscle” is directed to the mechanism of the antiwrinkle effects of the extract that is known for use in topical application on skin wrinkles. Practicing the Brenton method of applying the facial cream, gel and emulsion comprising the Rosmarinus officinalis leaf extract, regardless of the extraction method used, inherently requires applying the composition to skin over the facial muscle. It follows that applying the resulting composition of the combined references to the skin over the facial muscle would inherently reduce or obviously result in reducing muscle contraction of the facial muscle according to the mechanism discovered by applicant, as the claimed method requires same method step of topically applying the same composition containing the same extract materials of the present claim.
Regarding claims 2-4 and 8, since the Brenton method is specifically directed to treating facial wrinkles, the method steps of applying the composition of the combined references to the rhytide over the facial muscles would have been prima facie obvious.
Regarding claims 6 and 7, since topical application of the Rosmarinus officinalis leaf extract of Brenton or Brenton/Lavaud as defined in claim 1 would have been an obvious practice, the mechanism of the extract as disclosed in claims 6 and 7 would inherently occur each and every time the extract is applied to the facial skin.
Regarding claims 9-14, Brenton teaches formulations comprising the extract in the form of an oil-in-water emulsion, a cream, a lotion, a gel and a serum which meets the limitation,” an aqueous solution”. See Examples 6-12; paragraph [0060].
Claim 15 requires “the rhytide is a dynamic rhytide that appears on a person’s skin with skin movement associated with contraction of the facial muscle.” Applicant explains that a dynamic rhytide appears on skin with skin movement associated with muscle contraction. See specification as filed, p. 1, [0046]. Although Brenton does not specifically describe the targeted wrinkled area of the skin as “dynamic rhytide”, it is obvious that the users of the Brenton/Lavaud method would apply the antiaging agent to all concerned area of the facial skin including the areas with a dynamic rhytide, rather than selectively avoiding such area.
Response to Arguments
Applicant's arguments filed June 10, 2026, have been fully considered but they are not persuasive.
Applicant continues to argue that the muscle contraction mechanism is not inherently disclosed by Brenton or Lavaud. The examiner reiterates that there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. See MPEP 2112, II. In this case, as indicated in the rejection above, practicing the Brenton method of applying a topical composition comprising either the Brenton extract or the Lavaud extract, inherently requires applying the composition to skin over the facial muscle. It follows that applying the resulting composition of the combined references to the skin over the facial muscle would inherently reduce or obviously result in reducing muscle contraction of the facial muscle, as the composition contains the same extract materials of the present claim. The fact Brenton or Lavaud is silent as to the effects of rosemary leaf extracts on reduction of facial muscle contraction does not render the present method novel, unobvious, or unexpected.
Applicant argues that the examiner’s inherency argument relies on a hypothetical composition, but the above rejection plainly relies on Lavaud which discloses a cosmetic use of the same rosemary extract of the present claim.
Regarding the effective amount of Rosmarinus officialis leaf extract used in the present method, the Examiner respectfully points out that Breton Example 11 discloses an antiwrinkle care cream for the face comprising 5 wt % of rosemary extract; the effective amount as defined by applicant is in the range of 0.01 – 10 %, thus there is no patentable distinction between applicant’s method and how one of ordinary skill in the art would have used the cosmetic composition of Lavaud teaching according to the Brenton method. This is not a hypothetical composition, but the composition used in the present method was plainly taught and suggested by prior art before the effective filing date of the present application.
Applicant also asserts that the observed reduction of muscle contraction is an unexpected result, but, again, the cosmetic use of the rosemary leaf extract obtained by a fluid extraction solvent mixture comprising betaine, lactic acid, and water has been old and well known. There is no other way to use such cosmetic composition comprising the same extract in the same effective amount than topically applying it over skin, where the reduction of muscle contraction must inherently happen each and every time the composition is applied to the skin.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617
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