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 .
This office action is in response to the reply filed 8/11/2025
Election/Restriction
During a telephone conversation with Hyun Woo Shin on 3/25/2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-7 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Newly added claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the telephonic conversation on 3/25/2025.
In the reply filed 8/11/2025 Applicant did not affirm the above election. Applicant is please requested to do so in the next filed response.
Response to Amendments/Arguments
Applicant’s amendments to the drawing and specification are accepted and the objections over these are withdrawn.
Applicants arguments regarding the 112(b) rejection are persuasive in view of the amendments to the claims addressing the issues identified by the Examiner.
Applicant’s arguments against the 103 rejections have been fully considered.
Applicant argues that Liles fails to disclose the claimed copper nanoparticles in the claimed amounts.
This is not persuasive as the rejection is based on a combination of references and not solely on Liles.
Applicant remarks that the concentration of copper nanoparticles is crucial as demonstrated by page 5 of the filed specification.
This is not persuasive it is unsupported by factual evidence.
All of Applicant’s remarks/arguments about the prior art failing to disclose pyrethrin in the claim amounts is not persuasive in view of the new rejections presented below which introduce a new reference to address this new limitation.
Applicant argues that tables 1 and 2 of the disclosure indicated the a composition comprising pyrethrin shows superior deodorization and lower bacterial counts.
This is not persuasive as the data provided in tables 1 and 2 is not commensurate in scope with the data presented with respect to the concentrations of ingredients used, only ethanol was tested as an auxiliary solvent for use along with pyrethrin or silver nanoparticles were added. It also appears that no statistical analysis was performed, the deodorization rates only show a difference of a few percentages points and there is no evidence that the amounts of Ex. 2 or 3 are statistically significant. It also only appears that a single test was performed thus it’s unclear if the results are reproducible. Furthermore, Applicant are required to explain what would have been expected by a skilled artisan and as evidenced by KR’756 (discussed below) and US2003/0211952 [0076], pyrethrin is known to be a deodorizer and can be used as an active ingredient to provide insecticidal and antibacterial action, as such the addition of pyrethrin to a composition is expected to increase its deodorization and lower the bacterial count. Thus it’s unclear what about Applicant’s results is unexpected.
Applicant remarks that the original disclosure specifies that the combined use of pyrethrin and auxiliary solvents provide synergistic effects to improve antibacterial and deodorization properties. However, Lilies teaches propylene glycol as a viscosity control agent.
This is not persuasive as it is unsupported by factual evidence and while Liles may teach propylene glycol to be a viscosity control agent, a compound and its properties are inseparable therefore propylene glycol inherently functions as an auxiliary solvent.
New 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.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lilies (2011/0171471), EP2361606, Furudate (US 2016/0250621), KR2016-0103756 and Strobel (US 4,132,774).
Regarding claim 1: Lilies discloses compositions for personal care applications for hair, skin, teeth or mucous membranes [0063] for antimicrobial applications such as deodorants, wound dressing and dentrifices [0006]. These compositions comprise colloid dispersions (reading on colloidal solution) having particles of less than 100nm in size dispersed in a continuous phase [0013]. The dispersion includes a liquid and the particles are dispersed in the liquid, the liquid is a polar liquid such as water [0012], this reads on aqueous colloidal solution.
Lilies teaches the particles to have a metal disposed there, which can be an elemental metals (M0), metal alloys, metal ions, metal atoms, etc., , such as copper, palladium, silver, gold, etc. [0045 and 0047], as such it would have been prima facie obvious to use elemental copper (reading on nonionic copper) and silver with a reasonable expectation of success. The metal is agglomerated into metal nanoparticles having a size ranging from 2-100, preferably 5-10nm [0046]. While Lilies fails to teach this to be an average particle diameter D50, it would have been prima facie obvious to keep all the particles within the preferred size range of 5-10nm. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Lilies teaches the dispersion to further comprise a thickener, the thickener is combined with a liquid and then is mixed into the formed dispersion. Suitable liquids include propylene glycol and the thickener is present in amounts of 0.001-25 part by weight based on 100 parts of the dispersion [0055-0056]. As evidenced by the filed specification, propylene glycol is a suitable auxiliary solvent (pg. 6).
However, Lilies does not teach the concentration of copper and silver particles used as recited by instant claims 1-2, the ratio of instant claim 3, and the inclusion of zinc oxide as required by instant claim 5.
EP’606 discloses oral and dental care and cleaning compositions [0001]. These composition comprises 0.00001-2.5wt% of at least one antibacterial agent selected from parabens and/or silver salts and/or copper salts and/or zinc salts [0010].
Regarding claim 1: EP’606 teaches that copper can be used in amounts ranging from 0.05-5000ppm [0022].
Regarding claim 2: EP’606 teaches that silver is a disinfectant in wound treatment and can be used in amounts ranging from 0.05-5000ppm, preferably 5-100ppm [0018-0019].
Regarding claim 5: EP’606 teaches that zinc salts can be used to enhance the antibacterial effect [0024]. Zinc oxide is taught to be a suitable zinc for use [0026], this can be used in amounts of 0.02-2.5% based on the weight of the composition [0025].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Lilies with those of EP’606. A skilled artisan would have been motivated to use the copper and silver nanoparticles of Lilies in the amounts taught by EP’606 as EP’606 teaches these are amounts suitable for use as antibacterial agents and Liles teaches that the particles comprising metal (i.e. copper and silver) can be used in antibacterial applications, so it would be obvious to use these metals in amounts known to have an antibacterial effect. One of skill in the art would have a reasonable expectation of success as Lilies and EP’606 teaches antibacterial compositions for dental applications and Furudate teaches that elemental copper is known to have antibacterial properties.
Regarding claim 5: A skilled artisan would have also been motivated to add 0.02-2.5% of zinc oxide to the dispersion of Lilies as zinc oxide is taught to enhance the antibacterial effect in oral care compositions. One of skill in the art would have a reasonable expectation of success as Lilies EP’606 teaches that zinc oxide can be suitable used along with copper and silver in antibacterial applications.
Regarding claim 3: The prior art makes obvious to use of 0.05-5000ppm copper and 5-100ppm of silver. This results in a concentration ratio of .0005-1000:1 which overlaps with the claimed range and overlapping amounts are prima facie obvious absent evidence of criticality.
However, the above references do not teach the composition to further comprise 0.1-5parts of pyrethrin.
KR’756 teaches cosmetic compositions comprising extract of chrysanthemum, these compositions provide deodorization and exhibit antimicrobial effects and effects in eliminating insects such as mosquitos (Abs). KR’756 teaches that the chrysanthemum is preferably a bud, these contain the insecticidal component pyrethrin (pg. 6).
Strobel teaches personal care compositions and teaches that insect repellant additives can be added in amounts ranging from 0.5-5% (Abs and col. 3 lines 30-40).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the above references with those of KR’756 and Strobel. One of skill in the art would have been motivated to add 0.5-5% of an insect repellant, such as pyrethrin (i.e. a chrysanthemum extract) into the composition of Liles to provide the composition with insecticidal, microbial and deodorization effects. One of skill in the art would have a reasonable expectation of success as all composition are directed to personal care composition suitable for application to the skin and Lilies teaches that plant extracts can be added [0063].
Conclusion
No claims are allowable.
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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613