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 .
Response to Patent Trial and Appeals Board Decision
In view of the Patent Board Decision dated October 17, 2025, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, applicant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37.
A TC Director or appropriate representative has approved of reopening prosecution by signing below:
/PATRICIA MALLARI/
Patricia Mallari Director, Technology Center 1700
The previous prior art rejections of claims 1-8 are hereby withdrawn. The claims are rejected herein over prior art that teaches a ratio of cinnamaldehyde: garlic oil, and teaches spray drying essential oils with gum Arabic, and has not previously been applied to the claims.
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 this action and relied upon for citations) in view of Ohtaki (GB 919193).
Regarding claim 1, 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.
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 4, 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”). This encompasses and thereby renders obvious the claimed range.
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.
Conclusion
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Nikki H. Dees
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791