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
Applicant’s amendment in the reply filed on 8/28/26 is acknowledged. Claims 21-40 are pending. Claims 21-40 are examined on the merits. Any rejection that is not reiterated is hereby withdrawn.
Claim Objections
Claims 33 and 34 are 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 21-32, and 35-40 remain 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.
This rejection is maintained for reasons of record set forth in the Office Action mailed out on 8/12/26, repeated below, slightly altered to take into consideration Applicant’s amendment filed on 8/28/26. Applicants’ arguments filed have been fully considered but they are not deemed to be persuasive.
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) 21-32, and 35-40 is/are directed to a topical composition comprising an effective amount of Caulerpa lentillifera extract and Porphyridium cruentum extract to treat skin and/or hair, and a dermatologically acceptable carrier.
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, Caulerpa lentillifera extract and Porphyridium cruentum extract because there is no indication that extraction has caused the components of an extract of Caulerpa lentillifera and Porphyridium cruentum that comprise the claimed compositions to have any characteristics that are different from the naturally occurring components in Caulerpa lentillifera and Porphyridium cruentum. In addition, pulluan, vitamin E (an emollient), and xanthan gum exist in nature as well,
Step 2A. Prong two: Does the claims recite additional elements that amount to significantly more than the judicial exception?
No. The claim(s) of 21-32, and 35-40 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Regarding claims 21, 23, 26-31, 35, and 37-40, 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.
Claims 22, 24, 25, 32, and 36 require certain amounts of components being present in the composition. However, there is no indication that the amounts claimed in the compositions result in a markedly different characteristic for the composition as compared to the components that occur in the nature.
Regarding claim 25, the presence of water (a dermatologically carrier) in the claimed composition does not result in a markedly different characteristic for the claimed composition because plant materials already comprise water and thus have that same characteristic.
Regarding claim 1, a composition for topical administration does not result in a markedly different characteristic because the plant harvest and plant extraction process already involves human skin contact. Regarding claim 39, a form of a gel does not result in a markedly different characteristic for the claimed composition because Caulerpa lentillifera contains gel type of material and thus have that same characteristic.
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.
Applicant’s arguments on pages 5-6 have been considered, but they are not found persuasive. When there is no combination of Caulerpa lentillifera extract and Porphyridium cruentum extract found in nature, the closet counterpart is either Caulerpa lentillifera extract or Porphyridium cruentum extract used alone. If Applicant could have a side-by-side comparison, if the combination of Caulerpa lentillifera extract and Porphyridium cruentum extract has superior result than either Caulerpa lentillifera extract or Porphyridium cruentum extract used alone, that is markedly different characteristic. Right now, Caulerpa lentillifera extract or Porphyridium cruentum extract doesn’t even have a particular concentration range in the base claim. Alternatively, Applicant could recite “A topical composition in the form of a lotion or cream comprising…” in order to overcome the 101 rejection.
Claim Rejections –35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 21, 22, 24-32, and 35-39 remain rejected under 35 U.S.C. 103(a) as being unpatentable over Dudler et al (WO 2019149509 A1), in view of Avila et al (US 20090069213 A1).
This rejection is maintained for reasons of record set forth in the Office Action mailed out on 8/12/26, repeated below, slightly altered to take into consideration Applicant’s amendment filed on 8/28/26. Applicants’ arguments filed have been fully considered but they are not deemed to be persuasive.
Dudler et al teach NOVELTY - Cosmetic composition (thus topical) comprises (a) tetrapeptides, (b) sodium DNA, (c) pullulan (thus claim 31 is met), (d) Caulerpa lentillifera extract (thus the claimed extract, thus an effective amount of) (e) ceramides (thus an emollient, thus claim 28 are met), and (f) additionally mono- and/or polymers of the nucleotides of the ribonucleic acid. USE - The cosmetic composition is useful for tightening the human skin and/or for reducing the wrinkle depth of the human skin (thus treats skin, thus claim 26 is met; thus claim 27 is met, thus a topical skin composition, thus claim 29 is met, thus claim 30 is met) (claimed). ADVANTAGE - The composition reduces the depth of wrinkles, further tightens the skin when applied to the skin and provides a younger-looking appearance to the user (see Abstract). Dudler et al teach the proportion of Caulerpa Lentillifera Extract in the cosmetic preparation, based on the total weight of the preparation, is advantageously from 0.05% by weight to 2% by weight, with a proportion of 0.1% by weight to 0.8 % by weight is preferred (page 5, 3rd paragraph) (thus part of claims 22 and 24 are met). Dudler et al teach the cosmetic preparations according to the invention can be in the usual cosmetic galenical preparation forms, preferably as a gel, O/W emulsion, W/O emulsion, W/O/W emulsion, O/W/O emulsion (page 9, 2nd paragraph) (thus claim 39 is met). Dudler et al teach compositions comprising 0.4% phenoxyethanol (thus 0.001-3%, part of claims 33 and 34 is met), xanthan gum (thus claim 37 is met), 0.05 or 0.1% carbomer (thus claims 35 and 36 are met), 6.0-10% glycerin (thus 0.1-20%, thus part of claim 34 is met), and water (thus 1-95%, thus part of claim 34 is met, thus a dermatologically acceptable carrier, thus the amended claim 21 is met), etc. (page 21, example recipes). Dudler et al teach synergistic effect in terms of improved skin tightening, reduced wrinkle depth and increasing skin elasticity (page 7, middle of the page) (thus claim 38 is met).
Dudler et al do not teach the incorporation of Porphyridium crentum extract; neither do Dudler et al teach the composition comprises 40-85% water.
Avila et al teach provided herein are microalgal skin care compositions and methods of improving the health and appearance of skin. Also provided are methods of using polysaccharides for applications such as topical personal care products, cosmetics, and wrinkle reduction compositions. The invention also provides novel decolorized microalgal compositions useful for improving the health and appearance of skin. The invention also includes insoluble polysaccharide particles for application to human skin (see Abstract). Avila et al teach the composition of claim 11, wherein the polysaccharide is produced by Porphyridium cruentum (thus an extract of the claimed Porphyridium cruentum) UTEX 161 or a strain derived from Porphyridium cruentum UTEX 161 (see claim 12).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the extract of Porphyridium cruentum from Avila et al since Avila et al teach wrinkle reduction composition using polysaccharides produced from Porphyridium cruentum. Since both of the references teach composition for treating wrinkles, one of the ordinary skill in the art would have been motivated to combine the teachings of the references together.
Regarding the claimed amount of water in claim 25, determining an appropriate amount of water within the composition is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. For example, a lotion contains more water than a cream; and a O/W cream contains more water than a W/O cream.
From the teachings of the references, it is apparent that one of the ordinary skills in the art would have had a reasonable expectation of success in producing the claimed invention.
Thus, the invention as a whole is prima facie obvious over the references, especially in the absence of evidence to the contrary.
Regarding the unexpected result argument on page 7, Table 3 has 29 components, whereas claim 21 only recites 3 components without any amount, the unexpected result doesn’t commensurate the scope of the current claims.
Regarding the missing elements argument on page 7, the current claims do not recite crude extract Porphyridium cruentum, nor the extraction solvent or method, “the polysaccharide is produced by Porphyridium cruentum” in Avila could be construed as an extract of the claimed Porphyridium cruentum. The comparison of hydrogen peroxide is not pertinent to the current case.
Applicant's arguments have been fully considered but they are not persuasive, and therefore the rejections in the record are maintained.
Conclusion
No claim is 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 extension fee 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 QIUWEN MI whose telephone number is (571)272-5984. The examiner can normally be reached on Monday-Friday 8:30 am to 5:00 pm.
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/Qiuwen Mi/
Primary Examiner, Art Unit 1655
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