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 March 10, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims
Claim Rejections - 35 USC § 103 – Obviousness (Maintained Rejection)
Claims 37-42 and 44-50 are rejected under 35 U.S.C. 103 as being unpatentable over Sase et al. (JP 2000095656) in view of Scott et al. (CA 2875230).
Sase et al. disclose compositions having excellent detergency against oily dirt in the oral cavity and yet not irritating the oral mucosa by including a non-ionic surfactant, polyhydric alcohol and reduced starch hydrolysate. The composition is comprises (A) 0.2-5.0 wt.% of a non-ionic surfactant, and (B) 0.1-20 wt.% of a polyhydric alcohol. The liquid oral composition may be formulated into a mouthwash. The polyhydric alcohol used includes propylene glycol, polyethylene glycol, glycerin, sorbitol, xylitol and the like are suitably used. The polyhydric alcohol concentration in the composition ranges from 0.1 to 20% by weight. Actives include zinc chloride. Bactericides includes hinokitiol in an amount from 0.001 to 0.5% by weight. A fragrance may be added and includes an oil such as peppermint oil and spearmint oil. An example comprises 1% zinc chloride, 0.001% hinokitiol, 2% sorbitol and water. When a fragrance oil is used, an emulsion is made.
Sase et al. differ from the instant claims insofar as they do not disclose an oil-in-water emulsion.
Scott et al. disclose mouth rinse compositions formulated as stable oil-in-water emulsions (page 5, lines 18-31). Zinc ions may be added to the compositions and include zinc chloride and zinc citrate (page 16, lines 9-15). Antimicrobially effective essential oils are added and includes hinokitiol (page 16, lines 31-34). Mouthwashes include water, a surfactant, a humectant, a flavoring agent, a sweetening agent and ethanol. The oil comprises 0.05% to about 5% by weight.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. It would have been obvious to one of ordinary skill in the art prior to the filing of the instant application to have formulated the mouthwash of Sase et al. as an oil-in-water emulsion because is a suitable form for a mouthwash formulation comprising actives including hinokitiol and zinc chloride.
Response to Arguments
The Examiner submits that mouthwashes may be in the form of oil-in-water emulsions. In regards to the first point, a person of ordinary skill in the art would look to Scott because Scott discloses mouthwash compositions as in the case of Sase, which makes them analogous art. Further, Scott was used to support that mouthwashes may be formulated into oil-in-water emulsions. Therefore, it would have been obvious to formulate the mouthwashes of Sase as an oil in water emulsion because it is a formulation known in the art. Although Sase and Scott have different components, this is not a teaching away of formulating compositions of Sase into oil-in-water emulsions. Applicant has not pointed to anywhere in Sase that oil-in-water emulsions are not suitable formulations. Therefore, formulating the mouthwashes of Sase into oil-in-water emulsions would not hinder the compositions of Sase from being used for the desired objective disclosed by Sase. Further, Scott discloses actives such as hinokitiol and zinc chloride. This supports that oil-in-water emulsions are suitable vehicles for these actives. In regards to the second point, Scott was used for its disclosures of emulsions and not the formulation. It would have been obvious to make the formulations of Sase oil-in-water emulsions because they are suitable forms for mouthwashes. In regards to the third point, the reasoning to make the mouthwashes of Sase an oil-water emulsion is because they are suitable forms for mouthwashes. This is supported by MPEP 2144.07, generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. Therefore an articulated reason of why the claims are obvious has been set forth. Therefore the rejection is maintained.
Conclusion
Claims 37-42 and 44-50 are rejected.
Claims 51-56 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612