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 .
Priority
This application is a National Stage entry of PCT/EP2023/025069, filed 2/16/2023, claims foreign priority to EP22020060.4, filed 2/17/2022.
Note: No certified copies of the priority documents have been received. Applicant need to submit certified copies of the priority documents to receive the benefit of the priority dates.
Information Disclosure Statement
The IDS’s filed on 1/17/2025 and 12/16/2024 have been considered. See the attached PTO 1449 form.
Claim Status
Claims 1-12 are currently pending and under examination.
Claim Objections
Claim 12 is objected to because of the following informalities:
The recitation “comprising the step of” should recite “comprising a step of”.
Appropriate correction is required.
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 1-11 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.
Claim 1 recites “the antioxidant agents” in line 1. There is insufficient antecedent basis for this limitation in the claim. Specifically, “the” in the recitation suggests it’s referring back to antioxidant agents recited in the claims, however, there are no antioxidant agents recited in the claim previous to this recitation. Thus, it is unclear which component it is referring to as antioxidant agent. The examiner suggests amending the above recitation and delete “the” and just recite “antioxidant agents”.
Claims 2-11 are included in the rejection as they depend on a rejected base claim and do not clarify the issues discussed above.
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 1-11 are 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.
Claim 1 is drawn to a cosmetic composition comprising the antioxidant agents: Myrtus communis leaf extract, Quercus petraea fruit extract and Pinus pinaster bark extract.
The broadest reasonable interpretation of the claimed compositions would be the material that is named, that is, Myrtus communis leaf extract, Quercus petraea fruit extract and Pinus pinaster bark extract. A leaf extract of the plant Myrtus communis is a naturally occurring product, extract of Quercus petraea fruit is a naturally occurring product, and extract of Pinus pinaster bark is a naturally occurring product.
Thus, the composition claimed in claim 1 is not markedly different from how the individual components in nature. It is not integrated into a practical application because nothing in claim 1 relies on or uses the exception. There is nothing significantly more than the judicial exception because there are no additional elements in the claim. With regard to claims 2-11 the enumeration of the amounts or additional products of nature do not make the combination of the products of nature markedly different from how they occur in nature.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, because the formulation at the broadest interpretation of the claim language is a mixture of products of nature comprising Myrtus communis leaf extract, Quercus petraea fruit extract and Pinus pinaster bark extract, which does not appear to change the biological/pharmacological functions, chemical/physical properties, or the structure/form of said ingredients. Because the claimed formulation does not have markedly different characteristics, it is a product of nature.
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 1-2, 5-6 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Clean Fresh Beauty (https://www.cleanfreshbeauty.com/natural-skin-care-routines-best-of-natural-skin-care-products-organic-beauty/green-tidings-a-natural-brand-beyond-aluminum-free-non-toxic-deodorants; 12/18/2018) (herein after referred to as “Clean”) in view of Chollet (FR3008890A1; 2015-01-30).
Clean discloses face lotion comprising Myrtus communis (Myrtle) leaf extract and Pinus pinaster bark/bud extract. Clean teaches the lotion also comprises organic aloe vera leaf juice, carrot seed oil, organic calendula flower extract and rose flower oil. Clean teaches the organic aloe vera leaf juice, carrot seed oil, organic calendula flower extract and rose flower oil having antioxidant properties, which reads on the further comprising one or more additional antioxidant agents. Clean teaches Pinus pinaster bark/bud extract strengthens capillaries, repairs collagen, helps the body's defenses against the sun's rays and has 20 times the antioxidant power of vitamin C or E. Clean also teaches Myrtle leaf having soothing, softening and anti-aging properties. Clean teaches applying the lotion to cleansed face and neck, which reads on topical application and applying on skin of a subject. (see entire document).
The teachings of Clean have been set forth above.
Clean does not teach lotion composition comprises Quercus petraea fruit extract and the amounts thereof recited in the claims. However, this deficiency is cured by Chollet.
Chollet teaches cosmetic composition comprising extract of the fruit of oak. Chollet teaches the oak used is specifically Quercus Petraea. Chollet teaches the oak fruit extract with antioxidant properties is an important defense to the skin to reduce oxidative stress. Under the experimental conditions, the oak fruit extract demonstrates a dose-dependent anti-radical effect. These properties make it an ideal asset for combating oxidative stress. The oak fruit extract according to the invention can be used in combination with one or more additional active ingredients, advantageously allowing to offer a wider range of cosmetic properties. For the use according to the invention, the effective amount of oak fruit extract, that is to say its dosage, depends on various factors, such as the age, the condition of the skin of the patient, etc. An effective amount means a non-toxic amount sufficient to achieve the desired effect. For uses according to the invention and to be present in an effective amount, a person skilled in the art is able to adjust the amount of extract according to the desired effect. The various galenic forms that may contain the oak fruit extract according to the invention are in any form namely creams and lotions and for topical application. (see e.g. abstract; claims; 3rd and 4th paragraph of description; pages 1-4; entire document).
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 have combined the teachings of Clean and Chollet and further include Quercus petraea fruit extract in the lotion composition taught by Clean. As discussed supra, Clean teaches that many of the ingredient, including Pinus pinaster bark/bud extract, used in the lotion for skin provide antioxidant properties. Chollet teaches Quercus petraea fruit extract with antioxidant properties is an important defense to the skin to reduce oxidative stress. Chollet also teaches the composition can be in lotion form and for topical application. Chollet teaches the oak fruit extract according to the invention can be used in combination with one or more additional active ingredients, advantageously allowing to offer a wider range of cosmetic properties. Therefore, it would have been obvious to one skilled in the art to incorporate Quercus petraea fruit extract taught by Chollet into lotion formulation taught by Clean. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
Regarding the concentrations of Quercus petraea fruit extract recited in claims 5-6, Chollet teaches the effective amount of oak fruit extract, that is to say its dosage, depends on various factors, such as the age, the condition of the skin of the patient, etc. An effective amount means a non-toxic amount sufficient to achieve the desired effect. For uses according to the invention and to be present in an effective amount, a person skilled in the art is able to adjust the amount of extract according to the desired effect. Thus, absence any evidence of unexpected effect, it would have been obvious to optimize the amount/concentration of Quercus petraea fruit extract based on the parameters disclosed by Chollet. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 456, 105 USPQ 233, 235 (CCPA 1955).
From the combined teaching of the cited reference, 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.
Claims 3-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Clean Fresh Beauty (https://www.cleanfreshbeauty.com/natural-skin-care-routines-best-of-natural-skin-care-products-organic-beauty/green-tidings-a-natural-brand-beyond-aluminum-free-non-toxic-deodorants; 12/18/2018) (herein after referred to as “Clean”) in view of Chollet (FR3008890A1; 2015-01-30) as applied to claims 1-2, 5-6 and 11-12 above and further in view of Burke-Colvin et al. (US2011/0064832A1; hereinafter Burke) and James (WO2018171943A1).
The teachings of Clean and Chollet have been set forth above and incorporated herein.
Clean and Chollet do not expressly teach the concentrations of Myrtus communis leaf extract and Pinus pinaster bark extract. However, Burke and James cure these deficiencies.
Burke also teaches topical skin care formulations comprising Myrtus communis leaf extract. Burke teaches the amount of Myrtus communis leaf extract in the composition can range from 0.0000001% to 99.9%. (e.g. abstract; para 0012, 0017-0018; entire document).
James also teaches cosmetic skincare compositions comprising a polyphenolic antioxidant agent which includes Pinus pinaster bark extract. The polyphenolic antioxidant agent can be present in an amount of from about 0.001% to about 2% by weight of the composition. (see e.g. abstract; page 5, line 13-20; page 8, line 10-15; page 9, line 23-25; entire document).
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 have combined the teachings of Clean, Chollet, Burke and James and include Myrtus communis leaf extract and Pinus pinaster bark extract taught by Clean in the amounts disclosed by Burke and James. One would have been motivated to do so because Clean is silent on the amounts of these antioxidants and Burke and James, which also teach cosmetic skincare compositions, teach the specific amounts of Myrtus communis leaf extract and Pinus pinaster bark extract used in their skincare compositions. Thus, it would have been obvious to look towards the teachings of Burke and James for the amounts known in the art and specifically in skincare compositions. Further, as discussed supra, Clean teaches Pinus pinaster bark/bud extract strengthens capillaries, repairs collagen, helps the body's defenses against the sun's rays and has 20 times the antioxidant power of vitamin C or E. Clean also teaches Myrtle leaf having soothing, softening and anti-aging properties. Thus, absence any evidence of unexpected effect, it would have been obvious to one skilled in the art to determine the optimal amounts that provide these effects for skincare during routine optimization. Similarly, regarding claims 9 and 10, absence any evidence of unexpected effect, it would have also been obvious to one skilled in the art to determine the optimal amounts and ratios of the extracts that provide optimal skin care effects during routine optimization. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 456, 105 USPQ 233, 235 (CCPA 1955).
From the combined teaching of the cited reference, 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/839,065 (US20250161196A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘065 also claims a cosmetic composition comprising a first antioxidant agent which is Camellia japonica extract (claimed additional antioxidant agent). ‘065 teaches a second antioxidant agent which can include Myrtus communis leaf extract, Quercus petraea fruit extract and Pinus pinaster bark extract. Further comprises third antioxidant agent which can include Myrtus communis leaf extract, Quercus petraea fruit extract and Pinus pinaster bark extract. The first, second and third antioxidant agent are present in amounts ranging from 0.01% to 3% by weight. ‘065 also claims a method of cosmetic treatment of a skin/hair comprising the step of applying a cosmetic composition onto the skin/hair of a subject (i.e. topical application).
While ‘065 teaches the second and third antioxidant agent can include Myrtus communis leaf extract, Quercus petraea fruit extract or Pinus pinaster bark extract, ‘065 does not teach the composition includes all three antioxidants. However, all of these three extracts are taught as antioxidants and it would have been obvious to include all three in the composition because all three provide antioxidant properties. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
Regarding the amounts and ratios recited in the instant claims, ‘065 teaches overlapping amounts of the antioxidants. As discussed supra, absence any evidence of unexpected effect, it would have also been obvious to one skilled in the art to determine the optimal amounts and ratios of the extracts that provide optimal skin care effects during routine optimization. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 456, 105 USPQ 233, 235 (CCPA 1955).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/ALI S SAEED/ Examiner, Art Unit 1616
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