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 .
The amendment filed May 26, 2026, has been entered. Claims 1-8 remain pending in the application.
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 1-8 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 has been amended to claim “wherein the matrix comprises arabic gum and is present in the composition in an amount from about 65% to about 80% by weight of the composition…” It is unclear what is to be present in the composition in an amount from about 65% to about 80% by weight. Is the matrix to be present in the composition in this amount, or is the gum Arabic to be present in the composition in that amount? For purposes of examination, it will be understood that the matrix is present at about 65 to 80% by weight of the composition, consistent with [0087] of the specification.
Claims 2-8 are included in the rejection as they depend from rejected claim 1.
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.
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 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ferrater Martorell et al. (WO 2009/150264; cited on IDS filed 1/7/22; Clarivate English translation provided with the previous and relied upon for citations) in view of Ohtaki (GB 919193).
Regarding claims 1 and 4, Ferrater Martorell et al. teach a composition comprising a plurality of particles comprising at least two essential oils, where the at least 2 essential oils comprise cinnamaldehyde and garlic oil dispersed in a matrix (p. 9 last paragraph-p. 10 3rd paragraph). Ferrater Martorell et al. teach the ratio of cinnamon oil or extract: garlic oil is preferably 20:1 to 5:1 by weight. They further state that the proportions are similar when the product is formulated using components. Components of cinnamon oil include cinnamaldehyde (p. 9 last paragraph-p. 10 1st paragraph). This range encompasses and thereby renders obvious the claimed range.
Further, Example 1 of Ferrater Martorell et al. teaches mixing 40 kg of garlic oil with 410 kg of cinnamon oil, where the cinnamon oil is 65% cinnamaldehyde. This provides a weight ratio of cinnamaldehyde: garlic oil of 6.66:1, falling within the claimed range. This ratio of cinnamaldehyde to garlic oil is said to improve energy yield in ruminants (Abstract; bottom of p. 10).
Ferrater Martorell et al. are silent as to the essential oils being dispersed in a matrix comprising gum arabic.
Ohtaki teaches a method of producing a powder containing oils including essential oils. The oils are combined with a matrix that can be a gum, including gum Arabic, and then spray dried to form the particles (p. 2 “in using an essential oil”; Example 1).
Therefore, where both Ferrater Martorell et al. and Ohtaki are directed to stable powder compositions comprising essential oils, it would have been obvious to have provided the combination of cinnamaldehyde and garlic oil as taught by Ferrater Martorell et al. along with the gum arabic as taught by Ohtaki in order to provide a stable essential oil composition. This would have required no more than routine experimentation, as spray drying essential oils to provide powder compositions was long known in the art.
Regarding the amount of the matrix (see 112(b) rejection above) and the amount of oil as recited in claim 4, Ohtaki teaches the ratio of essential oils to film forming materials is 20-50% oil to 80-50% film former (p. 2 “in using an essential oil”). This encompasses and thereby renders obvious the claimed ranges.
Neither reference speaks to 80% of the cinnamaldehyde being present after 6 weeks of storage in an animal feed premix. However, Ferrater Martorell et al. teaches the mixture of essential oils for inclusion in animal feed premixes (p. 4 “The inhibition…; Example 3).
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
In the instant case, where it was known in the art to spray dry essential oils with gum arabic, the particles provided by the combination Ferrater Martorell et al. and Ohtaki et al. would have been expected to have 80% of the cinnamaldehyde being present after 6 weeks of storage in an animal feed premix absent convincing arguments or evidence to the contrary.
Regarding claim 3, the matrix of Ohtaki further comprises e.g., casein (a milk protein) and gelatin, a protein (p. 1 lines 43-46).
Regarding claim 5, Ohtaki does not speak to the final moisture content of the particles. However, where the starting material comprises only the essential oils, film forming materials (i.e., matrix) and water, and is spray dried, the final moisture content is considered to be less than about 10% by weight as claimed, as spray drying is the same process as taught in the instant specification at [0126] and provides a moisture content of less than 10% to the final product.
Regarding claim 6, Example 3 of Ferrater Martorell et al. teaches the essential oils consist of garlic oil and cinnamaldehyde.
Regarding claim 7, Ohtaki teaches the ratio of essential oils to film forming materials (e.g., gum Arabic) is 20-50% oil to 80-50% film former (p. 2 “in using an essential oil”). Ferrater Martorell et al. teach the ratio of about 5:1 cinnamaldehyde to garlic. Therefore, it would have been obvious to have provided the composition comprising 70-75 % by weight gum Arabic, 17.5-21.5% by weight cinnamaldehyde and 2.5-3.1% by weight as these amounts fall within the ranges provide by utilizing the amounts reported in the prior art.
Regarding claim 8, Ferrater Martorell et al. teach particles having a size of 80 to 500 um (p. 10 “On the other hand…). This overlaps and thereby renders obvious the claimed range.
Ohtaki does not report the average diameter particle size of the powder. However, where the starting material of Ohtaki comprises only the essential oils, film forming materials (i.e., matrix) and water, and is spray dried (p. 2 “in using an essential oil”), the final particle size is considered to be in the range claimed, as spray drying is the same process as taught in the instant specification at [0126] and provides a particle size of 150 µm. Therefore, one of ordinary skill would have been able to arrive at the claimed particle size through no more than routine experimentation, as the claimed particle size is consistent with the particle size for known feed additives, as taught by Ferrater Martorell et al., and consistent with the particle size that would have been expected to have been provided by the spray drying process as taught by Ohtaki.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ferrater Martorell et al. (WO 2009/150264; cited on IDS filed 1/7/22; Clarivate English translation provided with this action and relied upon for citations) in view of as applied to claim 1 above, and as evidenced by Behbahani et al. (Behbahani, B.A., Falah, F., Arab, F.L., Vasiee, M., Yazdi, F.T. 2020. “Chemical Composition and Antioxidant, Antimicrobial, and Antiproliferative Activities of Cinnamomum zeylanicum Bark Essential Oil.” Evidence-Based Complementary and Alternative Medicine. https://doi.org/10.1155/2020/5190603.
Modified Ferrater Martorell et al. teach a composition as detailed above with regard to claim 1.
In example 1 of Ferrater Martorell et al., garlic oil is combined with cinnamon oil.
Behbahani et al. provides evidence that cinnamon oil includes not only cinnamaldehyde, but also at least eugenol, eucalyptol, cymene, limonene and pinene (Table 1). Therefore, by utilizing cinnamon oil, Ferrater Martorell et al. teach essential oils comprising the compounds as recited by claim 2.
Response to Arguments
Applicant's arguments filed May 26, 2026, have been fully considered but they are not persuasive.
Applicant argues that “the matrix comprises gum Arabic and is present in the composition in an amount from about 65% to about 80% by weight of the composition” is not aught or suggested by Ferrater Martorell or Ohtaki alone or in combination (Remarks, p. 5).
This argument is not persuasive. Initially, it is noted, and described in the 112(b) rejection above, that it is not clear what (the matrix or the gum Arabic) is to be present at 65% to 80% by weight of the claimed composition. Further, as stated in the office action dated February 25, 2026, and repeated above, Ohtaki teaches the ratio of essential oils to film forming materials is 20-50% oil to 80-50% film former. The amount of film former is considered to meet the claimed “matrix” and therefore, the combination of Ferrater Martorell and Ohtaki continues to be considered to render the claims obvious as set forth in the 103 rejection above.
Applicant argues that the composition of Ferrater Martorell differs from the present invention as the composition of Ferrater Martorell requires essential oils to be adsorbed onto an inorganic support, while the instant composition includes garlic oil and cinnamaldehyde dispersed in a matrix comprising gum Arabic (Remarks, p. 5).
This argument is not persuasive. It is Ohtaki that is relied upon for the teaching of the gum Arabic matrix. Ferrater Martorell is relied upon to teach that garlic oil and cinnamaldehyde are known to be provided as particles and in a ratio as claimed.
Applicant argues that one would have no motivation to modify Ferrater Martorell with any reasonable expectation of success (Remarks, p. 6).
This argument is not persuasive. Both Ferrater Martorell and Ohtaki are directed to powder/particles comprising essential oils. Therefore, to have utilized the matrix materials of Ohtaki to encapsulate the essential oils of Ferrater Martorell would have reasonably been expected to provide stable encapsulated essential oils.
Further, applicant has not shown any criticality attributed to the inclusion of the gum Arabic in the matrix. Indeed, looking to the instant specification, the stability data provides are shown with the particles that are mixed with commercial inorganic or organic premixes. If the stability of the particles themselves was due to the matrix material, or the amount of the matrix material, there does not appear to be any comparative data provided to support this assertion.
Applicant argues that in the claimed composition, as described in the specification, the essential oils exist as droplets embedded in the matrix of agglomerating agents. Applicant goes on to state that if the composition of Ferrater Martorell were spray dried according to Ohtaki, then the garlic oil and cinnamaldehyde would not exist as droplets (Remarks, p. 7).
The examiner is unclear as to the point applicant is trying to make. The preparation of the inventive particles is done by spray-drying, according to the instant specification at [0126]. Thus, it is not clear how the spray drying of Ohtaki, which involves a gum Arabic matrix as claimed, would not allow the essential oils to exist as droplets while the in composition prepared as detailed in the instant specification the essential oils do exist as droplets.
Applicant argues that the examiner relies on hindsight in stating that the product provided by the combination set forth in the rejection above would be stable for 6 weeks as claimed (Remarks, p. 8).
This argument is not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case, both the ratio of cinnamaldehyde: garlic oil as claimed, and a matrix as claimed, were known in the art well before the instant invention. Further, the examiner finds no comparative data in the spec showing any formulation that was not stable after 6 weeks of storage. The only showings are that the claimed invention is stable for this time period. There is no evidence that other formulations would not be stable for this time period. Therefore, it cannot be said that this stability is an “improved” or “unexpected” property where there are no showings by which to judge the alleged improvement or surprise findings.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIKKI H. DEES whose telephone number is (571)270-3435. The examiner can normally be reached 10:00 am-5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tricia Mallari can be reached at 571-272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Nikki H. Dees
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
