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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 29, 2025 has been entered.
The previous claim rejection made under 35 U.S.C. 103 with Breton et al. (US 20080003311 A1) in view of Lavaud et al. (US 20180055904 A1), which was indicated in the Office action dated October 7, 2025, has been modified to address new limitations of claim 1 and a new claim, claim 15; the grounds of the previous rejection have been 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 1-15 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 to reduce muscle contraction of the facial muscle by reducing contraction of myotubes via reducing an influx of calcium levels in the myotubes, wherein the Rosmarinus officinalis leaf extract is a Rosmarinus officinalis leaf extract obtained with a fluid extraction solvent mixture comprising betaine, lactic acid, and water, and wherein muscle contraction of the facial muscle is reduced.
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 compositions 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 the 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 present claim 1 requires topical application is used “to reduce muscle contraction of the facia muscle by reducing contraction of myotubes via reducing an influx of calcium levels in the myotubes” and as the result of the use “muscle contraction of the facial muscle is reduced.”
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 Rosemarinus 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. Here, it must be noted that the reduction of an influx of calcium levels in the myotubes and the subsequent reduction of contraction of myotubes is the result or the property of the Rosmanrinus officinalis leaf extract. The recitation “to reduce muscle contraction of the facial muscle by reducing contraction of myotubes via reducing an influx of calcium levels in the myotubes” is directed to the mechanism of the antiwrinkle effects of the extract that is known for use in topical application on skin wrinkles. The wherein phrase “muscle contraction of the facial muscle is reduced” denotes the result of the claimed use. 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 claim 5, Breton 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].
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 claim 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 muscle contraction.” 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 December 19, 2025 have been fully considered but they are not persuasive.
Applicant’s arguments that claims 1-14 are not obvious over Brenton and Lavaud are moot in view of the new grounds of rejection as indicated above.
Applicant argues claim 1 is not inherently obvious over the cited art. As indicated above, 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. See In re May. As indicated above, the presently claimed use is directed to topically applying the rosemary leaf extract of the Lavaud reference on wrinkled skin according to the Brenton method. The extract is known for cosmetic use, and rosemary extract is known to improve and combatting wrinkles and aging skin. Applicant’s invention is based on the result or property of the old composition disclosed in Lavaud, and the claim is properly rejection.
Applicant argues that the muscle contraction mechanism is not inherently disclosed by Brenton or Lavaud. However, 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’s arguments regarding claim 15 is moot in view of the new grounds of rejection indicated above.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 20140329736 A1, teaching that rosemary and lavender oils are known for muscle relaxation and analgesia effects. [0028].
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/GINA C JUSTICE/Primary Examiner, Art Unit 1617