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 .
Applicants' arguments, filed May 18, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claims
Claim Rejections - 35 USC § 103 – Obviousness (Maintained Rejection)
1) Claims 1, 3-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Scholz et al. (WO 2007/115593) in view of Bridger et al. (US 2,662,052) in further view of Coleman et al. (J. of Chromatographic Sci., 1998).
Scholz et al. disclose compositions of menthyl lactate and mixtures of menthol as cooling agents (Abstract). The compositions may optionally comprise neoisomenthol, menthol and optionally neoisomenthol and/or isomenthol. The composition may comprise l-menthol, d-menthol or racemic menthol (page 11, lines 20-25). It is well known that menthol, most particularly l-menthol, exhibits the strongest and freshest sensory profile among menthol and its isomers. The menthol concentration can be in the range of 35% to 60%, preferably 40% to 55% (page 13, lines 17-20), which meets the peak area percent. A composition is disclosed comprising a mixture of racemic menthol and racemic menthone.
Scholz et al. differ from the instant claims insofar as they do not disclose the amount of menthone.
Bridger et al. disclose that mint oil comprises menthol and menthone. The oil from Mentha piperita usually contains 40% to 65% of menthol and 14 % to 40% of menthone (col. 1, lines 18-30). The amount of menthol meets the limitation of 40.0 by peak area percent of menthol. The amount 14% to 40% encompasses the amount of menthone, 21 to 26 of the instant claims.
It would have been obvious to one of ordinary skill in the art prior to the filing of the instant application to have used between 14% and 40% menthone in the composition of Scholz et al. because it is an amount found in natural mints such as Mentha piperita.
Further, the menthone is a result effective variable and contributes to the coolness and the flavor of the composition in which it is incorporated into. Therefore it would have taken no more than the relative skill of one of ordinary skill in the art to have adjusted the amount of menthone to obtain the desired coolness and flavor profile.
Scholz et al. in view of Bridger et al. differs from the instant claims insofar as it does not disclose the mints are synthetic.
Coleman et al. disclose that menthol occurs naturally in oils of the Mentha species in the (1R,3R,4S)-(-) form (l-menthol), whereas synthetic menthol is available either in the same form or as a racemic mixture (d- and l-menthol) (Abstract). Synthetic menthol generally does not contain impurities (page 319, col. 1, second paragraph).
It would have been obvious to one of ordinary skill in the art prior to filing the instant application to have used synthetic mint flavor components motivated by the desire to use a menthol with less impurities and to control the amount of each isomer present in the menthol.
The amount of each menthol, comprise l-menthol, d-menthol or racemic menthol, affects the taste and cooling function of the composition into which they are incorporated. This makes them result effective variables. It would have taken no more than the relative skill of one of ordinary skill in the art to have adjusted the amounts of different forms of menthol when used in mixtures to obtain an optimal cooling effect.
In regards to the Lei-Hoke Methods, the composition comprises and suggests the instant claimed percentages and therefore one would reasonably conclude that these would correspond to the peak percentages obtained by the Lei-Hoke Methods of the instant claims.
Response to Arguments
The Examiner submits that in regards to Scholz disclosing neomenthol, neomenthol is different from menthol. Scholz also discloses, the composition may comprise l-menthol, d-menthol or racemic menthol (page 11, lines 20-25). This indicates that d-menthol does not necessary have to be in a 1:1 ratio with l-menthol. In regard to Coleman, it also teaches that a mouthwash may have d-menthol (page 321, col. 1, bottom). Therefore, it would not appear to teach away from using d-menthol. In regards to the motivation to combine, the amounts of each component would affect the taste and cooling properties. The motivation to adjust each would be to get the desired property profile. In regards to Coleman, it does not appear that Coleman teaches away from racemic mixtures, it merely discloses the benefits of l-menthol. Therefore, it would appear that Coleman does not teach away from racemic mixtures because the primary reference Scholz teaches racemic mixtures and even using d-menthol alone. In regards to the word “only”, one of ordinary skill in the art would reasonably conclude that adding d-menthol would be able to adjust the properties of l-menthol, as well as using a compound that had additional beneficial properties. In regards to the ratio, l-menthol would control the amount of cooling. Scholz discloses using l-menthol, d-menthol or dl-menthol. Therefore one would be motivated to use mixtures of l-menthol and d-menthol. It would also have been obvious to adjust each menthol component to get the desired cooling profile, especially considering the l-menthol has a larger cooling effect than d-menthol. The menthols also have different melting point profiles. It would have been obvious to one of ordinary skill in the art to have adjusted each menthol to get the desired melting profile. In regard to the menthol not being a result effective variable, the menthol affects the cooling. Therefore it is a result effective variable. It appears the peaks indicate the amounts. By manipulating the amounts one would manipulate the properties to the composition. Therefore, the peaks represent the amounts and the amounts determine the properties. Therefore adjusting the amounts is obvious. In regards to not recognizing the properties, one of ordinary skill in the art would recognize that using less l-menthol would affect the cooling properties. Applicant even points out that l-menthol has the cooling properties. Therefore, diluting the l-menthol would affect the cooling properties as well as the melting properties, which would make it a result effective variable. In regards to menthone, menthone is a flavoring material. This means it also affects flavor making it a result effective variable. Further, it would appear Bridger discloses how to make pure menthol. This would not teach away from using menthone in different flavor composition. In regards to the results, the instant claims do not require a synthetic or non-naturally occurring enantiomers. The claims recite “and/or ratios of mint flavor components. The combination of references disclose ratios of mint flavor components. Therefore, the claims are not commensurate in scope with the alleged unexpected results. Therefore, the rejection is maintained.
Conclusion
Claims 1, 3-7 and 9-10 are rejected.
Claims 11-24 are withdrawn.
No claims 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 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 LEZAH ROBERTS whose telephone number is (571)272-1071. The examiner can normally be reached Monday-Friday 11:00-7:30.
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/LEZAH ROBERTS/ Primary Examiner, Art Unit 1612
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