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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 03/09/2026 is acknowledged. Claims 1-22 have been canceled and claims 25-27, 29, and 31 have been withdrawn. Claims 23, 24, and 30 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 03/09/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 112(b) rejections of claim 23, 24, 28, and 30 from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of Objection necessitated by Applicant’s amendment
The amendments necessitate the following new ground of objection.
Claim Objection
Claim 24 is objected to because of the following informalities: there is half parentheses after silica. Appropriate correction is required.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following. The rejections are modified based on the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 23, 24, 28, and 30 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 23, 24, 28, and 30 dated 08/30/2022 and 01/16/2025 and the amendments of claims 23, 24, 28, and 30 dated 09/08/2025 are repleted with new matters which are not supported in the originally filed claims dated 03/28/2022 and/or are not support in the originally filed specification dated 03/28/2022, including “in the presence of oxygen alone”, “exhibiting greater healing speed, biocidal, whitening and anti-malodor action”, etc., and the percentages of the components (except 0.001-20.000% self-activated functional iron and/or cobalt carboxy-metal-phthalocyanines (octa or tetra) in claims 23, 24, 28, and 30 which is supported in the originally filed specification dated 03/28/2022 in the last full paragraph on page 17 and in the last full paragraph on page 21 and is supported in the originally filed claims 18 and 19 dated 03/28/2022) including 20.000%-40.000% of wetting agent/humectant (moisturizer), etc. Please refer to MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Response to Applicants’ arguments:
Applicants argue that “in the presence of oxygen alone” is disclosed in paragraph 2 on page 1.
However, this argument is not deemed persuasive. The relevant disclosure in the instant specification in paragraph 2 on page 1 is “with no need of external activation by light, chemicals or electricity, except for air oxygen”. The scope of “with no need of external activation by light, chemicals or electricity, except for air oxygen” is: external activation by light, chemicals or electricity being unnecessary while air oxygen is necessary. The scope of “in the presence of oxygen alone” is: only oxygen being present. Thus, the scope of “with no need of external activation by light, chemicals or electricity, except for air oxygen” is different from the scope of “in the presence of oxygen alone”.
Applicants argue that “exhibiting greater healing speed, biocidal, whitening and anti-malodor action” is disclosed in paragraph 1 on page 2.
However, this argument is not deemed persuasive. The relevant disclosure in the instant specification in paragraph 1 on page 2 is “prevention and decrease of tooth and periodontal decay; tartar control, prevention and/or decrease of odors and halitosis; increase in tissue healing; control of oral ulcerations; increased cleanliness, brightness and decrease of tooth darkening and preservation of toothbrush cleaning”. The scope of “increase in tissue healing” is different from the scope of “greater healing speed”; and “exhibiting greater biocidal action” and “exhibiting greater whitening action” are not disclosed.
Applicants argue that the claimed ranges of percentages of components in the instant claim 24 are disclosed on page 20 and 21 and the claimed percentages of components in the instant claim 28 are disclosed in the table on page 23
However, this argument is not deemed persuasive. There are specific percentages of components in the table on page 21 and in the table on page 23. The scope of a specific percentage of a component is different from the scope of and does not support a range of percentage of a component.
Applicants argue that the claimed percentages of components in the instant claim 30 are disclosed in the table on page 25.
However, this argument is not deemed persuasive. The claimed “0.300% to 1.000% Active Ingredient-Anti-Tartar Agent (TSPP)” and “0.100% to 0.200% Pigment” are not disclosed in the table on page 25.
With the repleted new matters in claims 24, 28, and 30, claims 24, 28, and 30 are not rejected in the 103 rejections. Claim 23 is rejected in the 103 rejections by the examiner in light of the specification.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claim 23, 24, 28, and 30 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The base of the percentages in claims 23, 24, 28, and 30 are not specified as being based on weight or volume or molar, etc.
To expedite the prosecution the base of the percentage and the recitations within the parentheses in claim 23 are given their broadest reasonable interpretations by the examiner in light of the specification in the 103 rejections.
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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claim 23 is rejected under 35 U.S.C. 103(a) as being unpatentable over Njatawidjaja et al. (US 2013/0313335 A1) in view of Fickle et al. (US 2006/0034794 A1).
Njatawidjaja et al. teach a composition for treating air (paragraph 24) comprising
0.001-1% by weight of active air-cleaning component including Fe(III)-octacarboxyphthalocyanine, Fe(III)-tetracarboxyphthalocyanine, etc., (paragraph 55- 56)
solvents such as glycerine (the claimed “various ingredients including thickening, binding agents and moisteners”) (paragraph 31-35),
citric acid (the claimed acidifying agent and flavoring) (paragraph 38),
perfume including catmint oil (the claimed mint essence) (paragraph 42-47), and
a preservation agent (paragraph 61).
With respect to the art rejection above, it is noted that the reference does not teach that the composition can be used in the manner instantly claimed, [oral health]; however, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Further, it is noted that though Njatawidjaja et al. do not expressly teach the claimed conferring beneficial properties associated with continuous and localized formation of reactive oxygen in the presence of oxygen alone, without the need for external activation by light, chemicals or electricity, and exhibiting greater healing speed, biocidal, whitening and anti-malodor action; it is noted that the very teaching of the compounds (Fe(III)-octacarboxyphthalocyanine or Fe(III)-tetracarboxyphthalocyanine) identical to those presently claimed must necessarily possess the same claimed properties, even though such properties may not have been appreciated by Njatawidjaja et al. at the time of the invention.
Njatawidjaja et al. do not specify the same claimed preservation agent (methyl paraben and/or propyl paraben).
This deficiency is cured by Fickle et al. who teach preservative in an air treating composition including methyl paraben (claims 9 and 10).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Njatawidjaja et al. and Fickle et al. to specify preservative in the air treating composition taught by Njatawidjaja et al. including methyl paraben. Preservative in an air treating composition including methyl paraben was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Response to Applicants’ arguments:
Applicant’s argument with regard to compounds (Fe(III)-octacarboxyphthalocyanine or Fe(III)-tetracarboxyphthalocyanine) producing reactive oxygen species in the presence of oxygen alone, without the need for external activation by light, chemicals or electricity, and exhibiting greater healing speed, biocidal, whitening and anti-malodor action is basically the same as the previous argument, thus the response discussed previously (page 10-11) applies here as well and is not persuasive for reason discussed.
Applicants argue that Njatawidjaja et al. fail to teach the claimed iron and/or cobalt carboxymetalphthalocyanines (octa/tetra) together with thickeners, moisteners (sorbitol, glycerin, polyethylene glycol and/or mixtures thereof); binders (carboxymethylcellulose, hydroxyethylcellulose, xanthum gum, silica and/or mixtures thereof); preservations (methyl paraben, propyl paraben or mixtures); acidifying agents (phosphoric acid, citric acid, tartaric acid, and maleic acid); mint essence; flavorings.
However, this argument is not deemed persuasive. The instant claim 23 recites “various ingredients including thickening, binding agents and moisteners selected from a group consisting sorbitol, glycerin, polyethylene glycol, carboxymethylcellulose, hydroxyethylcellulose, xanthan gum, silica and/or mixtures thereof”, not the alleged “thickeners, moisteners (sorbitol, glycerin, polyethylene glycol and/or mixtures thereof); binders (carboxymethylcellulose, hydroxyethylcellulose, xanthum gum, silica and/or mixtures thereof); preservations (methyl paraben, propyl paraben or mixtures); acidifying agents (phosphoric acid, citric acid, tartaric acid, and maleic acid); mint essence; flavorings” while glycerine as a solvent taught by Njatawidjaja et al. read on the claimed “various ingredients including thickening, binding agents and moisteners selected from a group consisting sorbitol, glycerin, polyethylene glycol, carboxymethylcellulose, hydroxyethylcellulose, xanthan gum, silica and/or mixtures thereof”.
Applicants argue that the claimed composition is tailor for oral health application which is not obvious to the compositions taught by prior art.
However, this argument is not deemed persuasive. Applicants do not specify which components in the compositions taught by prior art are not suitable for oral health application, i.e., a structural difference between the claimed composition and the prior art composition.
Claim 23 is rejected under 35 U.S.C. 103(a) as being unpatentable over Shirai et al. (US 2013/0178508 A1) in view of Saeki et al. (US 2017/0312207 A1).
Shirai et al. teach a cosmetic composition comprising
0.005-0.1% by weight of iron phthalocyanine tetracarboxylic acid (abstract, paragraph 37, and claims 1, 5, and 6),
preservatives (paragraph 50), and
aromatic agents (paragraph 50) and fruit sugar (the claimed flavorings) (paragraph 67),
glycerin (the claimed “various ingredients including thickening, binding and wetting agent”) (paragraph 64 and 67), and
sequestering agents including citric acid (the claimed acidifying agent) (paragraph 84).
With respect to the art rejection above, it is noted that the reference does not teach that the composition can be used in the manner instantly claimed, [oral health]; however, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Further, it is noted that though Shirai et al. do not expressly teach the claimed conferring beneficial properties associated with continuous and localized formation of reactive oxygen in the presence of oxygen alone, without the need for external activation by light, chemicals or electricity, and exhibiting greater healing speed, biocidal, whitening and anti-malodor action; it is noted that the very teaching of the compounds (iron phthalocyanine tetracarboxylic acid) identical to those presently claimed must necessarily possess the same claimed properties, even though such properties may not have been appreciated by Shirai et al. at the time of the invention.
Shirai et al. do not specify the same claimed preservation agent (methyl paraben and/or propyl paraben) and the aromatic agents including mint essence.
This deficiency is cured by Saeki et al. who teach moisturizing cosmetic composition (claim 17) comprising preservative including methyl paraben (paragraph 127) and fragrance including Japanese mint oil (paragraph 136).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Shirai et al. and Saeki et al. to specify preservative and the aromatic agents in the moisturizing cosmetic composition taught by Shirai et al. including methyl paraben and including mint essence, respectively. Preservative and the aromatic agents in a moisturizing cosmetic composition including methyl paraben and including mint essence, respectively, was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying them flows from their having been used in the prior art, and from their being recognized in the prior art as useful for the same purpose.
Response to Applicants’ arguments:
Argument regarding the 103 rejection is basically the same as the above 103 rejection, thus the response discussed above applies here as well and is not persuasive for reason discussed above.
Conclusion
No claims are allowed.
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 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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