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 .
DETAILED ACTION
STATUS OF THE CLAIMS: Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are pending in this application.
Response to Arguments
Regarding Claim Rejections - 35 USC § 102
Applicant’s arguments, filed January 5, 2026, with respect to the rejections of claims under 35 USC § 102 over JP6603817 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made herein below.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under 35 U.S.C. 102 as being anticipated by JP2008-239497 (2019).
Applicant claims a composition according to the following:
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a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol.
This reference discloses Applicant’s composition comprising 1-menthol and one ingredient defined in the claim (i.e., sebacic acid diester), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol. (See Abstract , entire document, claims, and Examples). The composition and methods read on the instant claims. Since this reference teaches the exact composition and methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under 35 U.S.C. 102 as being anticipated by JP2008-013449.
Applicant claims a composition comprising 1-metnol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol.
This reference discloses Applicant’s composition comprising 1-menthol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol. (See Abstract , entire document including claims, and Examples). The composition and methods read on the instant claims. Since this reference teaches the exact composition and methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under 35 U.S.C. 102 as being anticipated by JP2001-517696.
Applicant claims a composition comprising 1-metnol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol.
This reference discloses Applicant’s composition comprising 1-menthol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol. (See Abstract , entire document including claims, and Examples). The composition and methods read on the instant claims. Since this reference teaches the exact composition and methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under 35 U.S.C. 102 as being anticipated by JP2007-996697.
Applicant claims a composition comprising 1-metnol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol.
This reference discloses Applicant’s composition comprising 1-menthol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol. (See Abstract , entire document, claims, and Examples 5, 8, 10, 19 and 23). The composition and methods read on the instant claims. Since this reference teaches the exact composition and methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under 35 U.S.C. 102 as being anticipated by JP2019-526548.
Applicant claims a composition comprising 1-metnol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol.
This reference discloses Applicant’s composition comprising 1-menthol and one ingredient defined in the claims (i.e., diethylsuccinate (dicarboxylic acid ester), benzyl benzoate and triatlkyl citrate), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol. (See Abstract , entire document, claims, and Examples). The composition and methods read on the instant claims. Since this reference teaches the exact composition and methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under 35 U.S.C. 102 as being anticipated by JP2020-02132.
Applicant claims a composition comprising 1-metnol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol.
This reference discloses Applicant’s composition comprising 1-metnol and one ingredient defined in the claims (i.e., alcohols having more than 6 carbons--cetanol, stearyl and mint oil), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol. (See Abstract , entire document, pages 3-6, 9 and claims, Tables and Examples). The composition and methods read on the instant claims. Since this reference teaches the exact composition and methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under 35 U.S.C. 102 as being anticipated by JP2005179292.
Applicant claims a composition comprising 1-metnol and one ingredient (defined in the claims), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol.
This reference discloses Applicant’s composition comprising 1-metnol and one ingredient defined in the claim (i.e., sucose fatty acid ester), a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1 menthol. (See Abstract , entire document, claims, and Examples). The composition and methods read on the instant claims. Since this reference teaches the exact composition and methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
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.
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.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over JP6603817.
Applicant claims a composition according to the following:
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a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol.
Additionally, Applicant claims the following dependent and independent claims:
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This reference discloses composition comprising 1-menthol and one ingredient such as monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal, as a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol. (See Abstract , entire document, claims, and Examples). Additionally, this reference teaches that two or more kinds of oily components may be mixed and used and various substance (e.g. monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal (six plus carbons) and poly-ol ether) may be used as oily components. Further, this reference teaches capsule compositions have been widely use in the field of medicine, health, food/drink industry and pharmaceuticals.
This reference does not teach dosage form and concentration, i.e., it does not teach a concentration of the menthol as 20% mass or more, the amount of (x) is 1 to 60 mass percentage of the combined amount of 1-mentol and ingredient (X), ingredient (X) water/alcohol partition efficient (logP) of 10 or less, and the ingredient (X) having a hydrophilic-lipophilic balance (HLG) value of 12 or less.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify and configure the teachings of the composition in JP6603817. One skilled in the art looking for an alternative composition to produce capsules and compositions are various uses in medicine, health and pharmaceuticals. Examining the amount of active ingredients to be blended and a solvent to be used for a purpose is an ordinary practice for a person skilled in the art because 1-menthol is lipophilic and easily soluble in alcohols and oils, and it is used for various purposes such as pharmaceuticals, cosmetics and capsules. Thus, a person skilled in the art would easily configure the invention described in JP6603817 for a capsule, cosmetics, tobacco, food or drink, and perfumery. Furthermore, selecting an intended use and dosage form would have been obvious to one having ordinary skill in the art at the time of the invention. A type of solvent that has desired properties while referring to known hydrophobic indicators such as the LogP value and the HLB value and blending the solvent in an appropriate blending amount is well known in the art and a person ordinary practice for a person skilled in the art. All the moieties are taught in the art. Therefore, one of ordinary skill in the art, confronted with providing an alternate and improved alternative composition by selecting an intended use and dosage form (LogP value and HLB) to produce capsules and compositions of various uses in medicine, health, food/drink, tobacco, and pharmaceuticals at the time of the invention, would modify and configure the teachings of the composition in JP6603817, which is the similar as the presently claimed invention, by routine experimentation in the art and non-inventing experimentation. See In re Payne, 203 USPQ 245(CCPA 1979).
Since Applicant’s claims are prima facie obvious in view of the teachings of JP6603817, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-6, 8, 11-12, 15, 17-20-21, 23-25, 29, 32,and 38-42 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over JP2008-239497 (2019).
This reference discloses composition comprising 1-menthol and one ingredient such as monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal, as a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol. (See Abstract , entire document, claims, and Examples). Additionally, this reference teaches that two or more kinds of oily components may be mixed and used and various substance (e.g. monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal (six plus carbons) and poly-ol ether) may be used as oily components. Further, this reference teaches capsule compositions have been widely use in the field of medicine, health, food/drink industry and pharmaceuticals.
This reference does not teach dosage form and concentration, i.e., it does not teach a concentration of the menthol as 20% mass or more, the amount of (x) is 1 to 60 mass percent of the combined amount of 1-mentol and ingredient (X), ingredient (X) water/alcohol partition efficient (LogP) of 10 or less, and the ingredient (X) having a hydrophilic-lipophilic balance (HLG) value of 12 or less.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify and configure the teachings of the composition in JP2008-239497 (2019). One skilled in the art looking for an alternative composition to produce capsules and compositions are various uses in medicine, health and pharmaceuticals. Examining the amount of active ingredients to be blended and a solvent to be used for a purpose is an ordinary practice for a person skilled in the art because 1-menthol is lipophilic and easily soluble in alcohols and oils, and it is used for various purposes such as pharmaceuticals, cosmetics and capsules. Thus, a person skilled in the art would easily configure the invention described in JP2008-239497 (2019) for a capsule, cosmetics, tobacco, food or drink, and perfumery. Furthermore, selecting an intended use and dosage form would have been obvious to one having ordinary skill in the art at the time of the invention. A type of solvent that has desired properties while referring to known hydrophobic indicators such as the LogP value and the HLB value and blending the solvent in an appropriate blending amount is well known in the art and a person ordinary practice for a person skilled in the art. All the moieties are taught in the art. Therefore, one of ordinary skill in the art, confronted with providing an alternate and improved alternative composition by selecting an intended use and dosage form (LogP value and HLB) to produce capsules and compositions of various uses in medicine, health, food/drink, tobacco, and pharmaceuticals at the time of the invention would modify and configure the teachings of the composition in JP2008-239497 (2019), which is the similar as the presently claimed invention, by routine experimentation in the art and non-inventing experimentation. See In re Payne, 203 USPQ 245(CCPA 1979).
Since Applicant’s claims are prima facie obvious in view of the teachings of JP2008-239497 (2019), Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over JP2008-013449.
This reference discloses composition comprising 1-menthol and one ingredient such as monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal, as a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol. (See Abstract , entire document, claims, and Examples). Additionally, this reference teaches that two or more kinds of oily components may be mixed and used and various substance (e.g. monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal (six plus carbons) and poly-ol ether) may be used as oily components. Further, this reference teaches capsule compositions have been widely use in the field of medicine, health, food/drink industry and pharmaceuticals.
This reference does not teach dosage form and concentration, i.e., it does not teach a concentration of the menthol as 20% mass or more, the amount of (x) is 1 to 60 mass percent of the combined amount of 1-mentol and ingredient (X), ingredient (X) water/alcohol partition efficient (LogP) of 10 or less, and the ingredient (X) having a hydrophilic-lipophilic balance (HLG) value of 12 or less.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify and configure the teachings of the composition in JP2008-013449. One skilled in the art looking for an alternative composition to produce capsules and compositions are various uses in medicine, health and pharmaceuticals. Examining the amount of active ingredients to be blended and a solvent to be used for a purpose is an ordinary practice for a person skilled in the art because 1-menthol is lipophilic and easily soluble in alcohols and oils, and it is used for various purposes such as pharmaceuticals, cosmetics and capsules. Thus, a person skilled in the art would easily configure the invention described in JP2008-013449 for a capsule, cosmetics, tobacco, food or drink, and perfumery. Furthermore, selecting an intended use and dosage form would have been obvious to one having ordinary skill in the art at the time of the invention. A type of solvent that has desired properties while referring to known hydrophobic indicators such as the LogP value and the HLB value and blending the solvent in a appropriate blending amount is well known in the art and a person ordinary practice for a person skilled in the art. All the moieties are taught in the art. Therefore, one of ordinary skill in the art, confronted with providing an alternate and improved alternative composition by selecting an intended use and dosage form (LogP value and HLB) to produce capsules and compositions of various uses in medicine, health, food/drink, tobacco, and pharmaceuticals at the time of the invention would modify and configure the teachings of the composition in JP2008-013449, which is the similar as the presently claimed invention, by routine experimentation in the art and non-inventing experimentation. See In re Payne, 203 USPQ 245(CCPA 1979).
Since Applicant’s claims are prima facie obvious in view of the teachings of JP2008-013449, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over JP2001-517696.
This reference discloses composition comprising 1-menthol and one ingredient such as monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal, as a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol. (See Abstract , entire document, claims, and Examples). Additionally, this reference teaches that two or more kinds of oily components may be mixed and used and various substance (e.g. monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal (six plus carbons) and poly-ol ether) may be used as oily components. Further, this reference teaches capsule compositions have been widely use in the field of medicine, health, food/drink industry and pharmaceuticals.
This reference does not teach dosage form and concentration, i.e., it does not teach a concentration of the menthol as 20% mass or more, the amount of (x) is 1 to 60 mass percent of the combined amount of 1-mentol and ingredient (X), ingredient (X) water/alcohol partition efficient (LogP) of 10 or less, and the ingredient (X) having a hydrophilic-lipophilic balance (HLG) value of 12 or less.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify and configure the teachings of the composition in JP2001-517696. One skilled in the art looking for an alternative composition to produce capsules and compositions are various uses in medicine, health and pharmaceuticals. Examining the amount of active ingredients to be blended and a solvent to be used for a purpose is an ordinary practice for a person skilled in the art because 1-menthol is lipophilic and easily soluble in alcohols and oils, and it is used for various purposes such as pharmaceuticals, cosmetics and capsules. Thus, a person skilled in the art would easily configure the invention described in JP2001-517696 for a capsule, cosmetics, tobacco, food or drink, and perfumery. Furthermore, selecting an intended use and dosage form would have been obvious to one having ordinary skill in the art at the time of the invention. A type of solvent that has desired properties while referring to known hydrophobic indicators such as the LogP value and the HLB value and blending the solvent in an appropriate blending amount is well known in the art and a person ordinary practice for a person skilled in the art. All the moieties are taught in the art. Therefore, one of ordinary skill in the art, confronted with providing an alternate and improved alternative composition by selecting an intended use and dosage form (LogP value and HLB) to produce capsules and compositions of various uses in medicine, health, food/drink, tobacco, and pharmaceuticals at the time of the invention would modify and configure the teachings of the composition in JP2001-517696, which is the similar as the presently claimed invention, by routine experimentation in the art and non-inventing experimentation. See In re Payne, 203 USPQ 245(CCPA 1979).
Since Applicant’s claims are prima facie obvious in view of the teachings of JP2001-517696, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over JP2007-996697.
This reference discloses composition comprising 1-menthol and one ingredient such as monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal, as a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol. (See Abstract , entire document, claims, and Examples). Additionally, this reference teaches that two or more kinds of oily components may be mixed and used and various substance (e.g. monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal (six plus carbons) and poly-ol ether) may be used as oily components. Further, this reference teaches capsule compositions have been widely use in the field of medicine, health, food/drink industry and pharmaceuticals.
This reference does not teach dosage form and concentration, i.e., it does not teach a concentration of the menthol as 20% mass or more, the amount of (x) is 1 to 60 mass percent of the combined amount of 1-mentol and ingredient (X), ingredient (X) water/alcohol partition efficient (LogP) of 10 or less, and the ingredient (X) having a hydrophilic-lipophilic balance (HLG) value of 12 or less.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify and configure the teachings of the composition in JP2007-996697. One skilled in the art looking for an alternative composition to produce capsules and compositions are various uses in medicine, health and pharmaceuticals. Examining the amount of active ingredients to be blended and a solvent to be used for a purpose is an ordinary practice for a person skilled in the art because 1-menthol is lipophilic and easily soluble in alcohols and oils, and it is used for various purposes such as pharmaceuticals, cosmetics and capsules. Thus, a person skilled in the art would easily configure the invention described in JP2007-996697 for a capsule, cosmetics, tobacco, food or drink, and perfumery. Furthermore, selecting an intended use and dosage form would have been obvious to one having ordinary skill in the art at the time of the invention. A type of solvent that has desired properties while referring to known hydrophobic indicators such as the LogP value and the HLB value and blending the solvent in an appropriate blending amount is well known in the art and a person ordinary practice for a person skilled in the art. All the moieties are taught in the art. Therefore, one of ordinary skill in the art, confronted with providing an alternate and improved alternative composition by selecting an intended use and dosage form (LogP value and HLB) to produce capsules and compositions of various uses in medicine, health, food/drink, tobacco, and pharmaceuticals at the time of the invention would modify and configure the teachings of the composition in JP2007-996697, which is the similar as the presently claimed invention, by routine experimentation in the art and non-inventing experimentation. See In re Payne, 203 USPQ 245(CCPA 1979).
Since Applicant’s claims are prima facie obvious in view of the teachings of JP2007-9966977, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over JP2019-526548.
This reference discloses composition comprising 1-menthol and one ingredient such as monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal, as a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol. (See Abstract , entire document, claims, and Examples). Additionally, this reference teaches that two or more kinds of oily components may be mixed and used and various substance (e.g. monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal (six plus carbons) and poly-ol ether) may be used as oily components. Further, this reference teaches capsule compositions have been widely use in the field of medicine, health, food/drink industry and pharmaceuticals.
This reference does not teach dosage form and concentration, i.e., it does not teach a concentration of the menthol as 20% mass or more, the amount of (x) is 1 to 60 mass of the combined amount of 1-mentol and ingredient (X), ingredient (X) water/alcohol partition efficient (LogP) of 10 or less, and the ingredient (X) having a hydrophilic-lipophilic balance (HLG) value of 12 or less.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify and configure the teachings of the composition in JP2019-526548. One skilled in the art looking for an alternative composition to produce capsules and compositions are various uses in medicine, health and pharmaceuticals. Examining the amount of active ingredients to be blended and a solvent to be used for a purpose is an ordinary practice for a person skilled in the art because 1-menthol is lipophilic and easily soluble in alcohols and oils, and it is used for various purposes such as pharmaceuticals, cosmetics and capsules. Thus, a person skilled in the art would easily configure the invention described in JP2019-526548 for a capsule, cosmetics, tobacco, food or drink, and perfumery. Furthermore, selecting an intended use and dosage form would have been obvious to one having ordinary skill in the art at the time of the invention. A type of solvent that has desired properties while referring to known hydrophobic indicators such as the LogP value and the HLB value and blending the solvent in an appropriate blending amount is well known in the art and a person ordinary practice for a person skilled in the art. All the moieties are taught in the art. Therefore, one of ordinary skill in the art, confronted with providing an alternate and improved alternative composition by selecting an intended use and dosage form (LogP value and HLB) to produce capsules and compositions of various uses in medicine, health, food/drink, tobacco, and pharmaceuticals at the time of the invention would modify and configure the teachings of the composition in JP2019-526548, which is the similar as the presently claimed invention, by routine experimentation in the art and non-inventing experimentation. See In re Payne, 203 USPQ 245(CCPA 1979).
Since Applicant’s claims are prima facie obvious in view of the teachings of JP2019-526548, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over JP2005179292.
This reference discloses composition comprising 1-menthol and one ingredient such as monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal, as a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol. (See Abstract , entire document, claims, and Examples). Additionally, this reference teaches that two or more kinds of oily components may be mixed and used and various substance (e.g. monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal (six plus carbons) and poly-ol ether) may be used as oily components. Further, this reference teaches capsule compositions have been widely use in the field of medicine, health, food/drink industry and pharmaceuticals.
This reference does not teach dosage form and concentration, i.e., it does not teach a concentration of the menthol as 20% mass or more, the amount of (x) is 1 to 60 mass percent of the combined amount of 1-mentol and ingredient (X), ingredient (X) water/alcohol partition efficient (LogP) of 10 or less, and the ingredient (X) having a hydrophilic-lipophilic balance (HLG) value of 12 or less.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify and configure the teachings of the composition in JP2005179292. One skilled in the art looking for an alternative composition to produce capsules and compositions are various uses in medicine, health and pharmaceuticals. Examining the amount of active ingredients to be blended and a solvent to be used for a purpose is an ordinary practice for a person skilled in the art because 1-menthol is lipophilic and easily soluble in alcohols and oils, and it is used for various purposes such as pharmaceuticals, cosmetics and capsules. Thus, a person skilled in the art would easily configure the invention described in JP2005179292 for a capsule, cosmetics, tobacco, food or drink, and perfumery. Furthermore, selecting an intended use and dosage form would have been obvious to one having ordinary skill in the art at the time of the invention. A type of solvent that has desired properties while referring to known hydrophobic indicators such as the LogP value and the HLB value and blending the solvent in a appropriate blending amount is well known in the art and a person ordinary practice for a person skilled in the art. All the moieties are taught in the art. Therefore, one of ordinary skill in the art, confronted with providing an alternate and improved alternative composition by selecting an intended use and dosage form (LogP value and HLB) to produce capsules and compositions of various uses in medicine, health, food/drink, tobacco, and pharmaceuticals at the time of the invention would modify and configure the teachings of the composition in JP2005179292, which is the similar as the presently claimed invention, by routine experimentation in the art and non-inventing experimentation. See In re Payne, 203 USPQ 245(CCPA 1979).
Since Applicant’s claims are prima facie obvious in view of the teachings of JP2005179292, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-6, 8, 11-12, 15, 17-20-21, 23-25, 29, 32,and 38-42 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over JP2020-02132.
This reference discloses composition comprising 1-menthol and one ingredient such as monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal, as a capsule, tobacco product, perfumery, cosmetic, food/drink product and filter comprising said composition, and a method for enhancing dissolution of 1-menthol. (See Abstract , entire document, claims, and Examples). Additionally, this reference teaches that two or more kinds of oily components may be mixed and used and various substance (e.g. monocarboxylic acid ester, ester of polycarboxylic acid having three or more carbonyl groups, dodecanal (six plus carbons) and poly-ol ether) may be used as oily components. Further, this reference teaches capsule compositions have been widely use in the field of medicine, health, food/drink industry and pharmaceuticals.
This reference does not teach dosage form and concentration, i.e., it does not teach a concentration of the menthol as 20% mass or more, the amount of (x) is 1 to 60 mass percent of the combined amount of 1-mentol and ingredient (X), ingredient (X) water/alcohol partition efficient (LogP) of 10 or less, and the ingredient (X) having a hydrophilic-lipophilic balance (HLG) value of 12 or less.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify and configure the teachings of the composition in JP2020-02132. One skilled in the art looking for an alternative composition to produce capsules and compositions are various uses in medicine, health and pharmaceuticals. Examining the amount of active ingredients to be blended and a solvent to be used for a purpose is an ordinary practice for a person skilled in the art because 1-menthol is lipophilic and easily soluble in alcohols and oils, and it is used for various purposes such as pharmaceuticals, cosmetics and capsules. Thus, a person skilled in the art would easily configure the invention described in JP2020-02132 for a capsule, cosmetics, tobacco, food or drink, and perfumery. Furthermore, selecting an intended use and dosage form would have been obvious to one having ordinary skill in the art at the time of the invention. A type of solvent that has desired properties while referring to known hydrophobic indicators such as the LogP value and the HLB value and blending the solvent in a appropriate blending amount is well known in the art and a person ordinary practice for a person skilled in the art. All the moieties are taught in the art. Therefore, one of ordinary skill in the art, confronted with providing an alternate and improved alternative composition by selecting an intended use and dosage form (LogP value and HLB) to produce capsules and compositions of various uses in medicine, health, food/drink, tobacco, and pharmaceuticals at the time of the invention would modify and configure the teachings of the composition in JP2020-02132, which is the similar as the presently claimed invention, by routine experimentation in the art and non-inventing experimentation. See In re Payne, 203 USPQ 245(CCPA 1979).
Since Applicant’s claims are prima facie obvious in view of the teachings of JP2020-02132, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Conclusion
Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are pending in this application. Claims 1-6, 8, 11-12, 15, 17-18, 20-21, 23-25, 29, 32,and 38-42 are rejected. No claims are allowed.
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/PAUL V WARD/ Primary Examiner, Art Unit 1622
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