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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-13 and 16-20 in the reply filed on 11/07/2025 is acknowledged.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I and II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/07/2025.
Priority
The instant application claims foreign priority to DE20 2020 104 968.2 filed 08/27/2020 and DE10 2020 122 469.9 filed 08/27/2020. The instant application is a 371 of PCT/EP2021/062442 filed 05/11/2021.
Information Disclosure Statement
The information disclosure statements (IDS) dated 07/03/2025 and 02/23/2023 both comply with provisions of 37 CFR 1.97, 1.98 and MPEP §609. Accordingly, they have been placed in the application file and the information therein has been considered as to the merits.
Claim Rejections - 35 USC § 112
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 and 16-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1-3 and 6 recite the broad recitation extract of mint, and the claim also recites (Mentha arvensis or Mentha x piperita) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1-3 and 7 recite the broad recitation extract of clove tree, and the claim also recites (Syzygium aromaticum) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1-3 and 8 recite the broad recitation extract of ginger, and the claim also recites (Zingiber officinale) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1-3 and 9 recites the broad recitation extract of thyme, and the claim also recites (Thymus vulgaris) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recite the broad recitation extract from grapes, and the claim also recites (Vitis vinifera) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For the purpose of compact prosecution, the Examiner is interpreting the claims to include extracts of mint, clove, ginger, and thyme.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
A) Claims 1-9, 12-13, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Weissman (WO2002043719A2 provided in IDS filed 02/23/2023).
Weissman recites a throat spray (Weissman at abstract). Weissman teaches the use of wintergreen, peppermint, thyme, thymol, mint, ginger, clove, clove bud, (Weissman at pages 9-10), Weissman further teaches the use of the oils in a range of 0.01 to 45 wt% (Weissman at page 7). Weissman teaches that the composition is a throat spray (Weissman at page 3). Weissman teaches the use of bet 1,3/1,6-glucan (Weissman at page 5-6). Weissman teaches the use of polysaccharides in a range of 0.01% to 50% by weight (Weissman at page 6). Weissman recites Tables 1, 2, and 3 reproduced below;
PNG
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375
552
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Greyscale
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694
553
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Greyscale
PNG
media_image3.png
847
553
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Greyscale
.
Weissman differs from the instant claims in this rejection insofar as it does not teach the combination of the instantly recited components with sufficient specificity for anticipation. Weissman teaches the components of the instant recited composition and uses each component of their established function in the art but does not explicitly combine the components together into a single embodiment or a preferred composition. However, given the disclosure of each component individually, it would have been prima facie obvious to a person having ordinary skill in the art at a time prior to the filing of the present patent application and following the teachings of Weissman to have selected and combined known components for their established functions with predictable results. MPEP §2143 and §2144.06(I).
Regarding instant claim 1, Weissman teaches a composition with 39.9 wt% water and 40 wt% glycerin and peppermint oil (Weissman at Table 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Weissman further teaches a composition with water, glycerin, peppermint oil, and lecithin 0.01 wt% to 2 wt% (Weissman at Table 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 2, Weissman teaches the use of wintergreen, peppermint, thyme, thymol, mint, ginger, clove, clove bud, (Weissman at pages 9-10).
Regarding instant claim 3, Weissman teaches the use of wintergreen, peppermint, thyme, thymol, mint, ginger, clove, clove bud, (Weissman at pages 9-10).
Regarding instant claim 4, Weissman teaches a composition with 39.9 wt% water and 40 wt% glycerin and 1 wt% peppermint oil (Weissman at Table 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 5, Weissman teaches the use of polysaccharides in a range of 0.01% to 50% by weight (Weissman at page 6), which overlaps with the instantly claimed range of 0.01g to 2g per 100g. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 6, Weissman teaches the use of wintergreen, peppermint, thyme, thymol, mint, ginger, clove, clove bud, (Weissman at pages 9-10), Weissman further teaches the use of the oils in a range of 0.01 to 45 wt% (Weissman at page 7). Weissman teaches a composition with 39.9 wt% water and 40 wt% glycerin and 1 wt% peppermint oil (Weissman at Table 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 7, Weissman teaches the use of wintergreen, peppermint, thyme, thymol, mint, ginger, clove, clove bud, (Weissman at pages 9-10), Weissman further teaches the use of the oils in a range of 0.01 to 45 wt% (Weissman at page 7). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 8, Weissman teaches the use of wintergreen, peppermint, thyme, thymol, mint, ginger, clove, clove bud, (Weissman at pages 9-10), Weissman further teaches the use of the oils in a range of 0.01 to 45 wt% (Weissman at page 7). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 9, Weissman teaches the use of wintergreen, peppermint, thyme, thymol, mint, ginger, clove, clove bud, (Weissman at pages 9-10), Weissman further teaches the use of the oils in a range of 0.01 to 45 wt% (Weissman at page 7). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 12, Weissman teaches the use of vitamin A, vitamin C, vitamin E, and vitamin F (Weissman at pages 7-8).
Regarding instant claim 13, Weissman teaches that the composition is a throat spray (Weissman at page 3).
Regarding instant claim 16, Weissman teaches a composition with 39.9 wt% water and 40 wt% glycerin and peppermint oil (Weissman at Table 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 17, Weissman teaches the use of wintergreen, peppermint, thyme, thymol, mint, ginger, clove, clove bud, (Weissman at pages 9-10), Weissman further teaches the use of the oils in a range of 0.01 to 45 wt% (Weissman at page 7). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 18, Weissman teaches the use of bet 1,3/1,6-glucan (Weissman at page 5-6).
B) Claims 10-11 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Weissman (WO2002043719A2 provided in IDS filed 02/23/2023) as applied to claims 1-9, 12-13, and 16-18 above, and further in view of Luo (US Patent Application Publication 20170303574A1).
The teachings of Weissman are discussed above.
The teachings of Weissman differ from instant claim 10 insofar as they do not specifically teach the use of extracts from grapes. The teachings of Luo cure these deficits.
Luo teaches the use of throat spray (Luo at [0388]). Luo teaches the use of grape seed extract, ginger, vitamin A, vitamin C, vitamin E, thyme, (Luo at [0257]). Luo teaches the use of mentha, spearmint, thymus, extracts (Luo at [0350]). Luo teaches the use of triacylglycerols (Luo at [0334]). Luo teaches the use of glycerol (Luo at [0211]). Luo teaches the use of lecithin (Luo at [0372], [0396]). Luo teaches the use of HPLC chromatography which uses CO2 to extract oils from natural sources (Luo at [0451]).
Luo differs from the instant claims insofar as it does not specifically teach the amounts of many of its components. The teachings of Weissman cure this deficit.
It would have been prima facie obvious to one of ordinary skill in the art to have combined the plant extracts of Luo with the plant extracts of Weissman for the predictable result of a plant extract in a throat spray. See MPEP 2144.06(I).
Regarding instant claim 10, Luo teaches the use of throat spray (Luo at [0388]). Luo teaches the use of grape seed extract, ginger, vitamin A, vitamin C, vitamin E, thyme, (Luo at [0257]). It would have been prima facie obvious to one of ordinary skill in the art to have combined the plant extracts of Luo with the plant extracts of Weissman for the predictable result of a plant extract in a throat spray. See MPEP 2144.06(I).
Regarding instant claim 11, Luo teaches the use of triacylglycerols (Luo at [0334]). Weissman teaches the use of actives in a range of 0.01 to 5 wt%, and teaches that glycerin is an active (Weissman at page 5-10). It would have been prima facie obvious to one of ordinary skill in the art to have combined the triacylglycerol of Luo with the glycerin of Weissman for the predictable result of a glycerin in a throat spray. See MPEP 2144.06(I).
Regarding instant claim 19, Luo teaches the use of HPLC chromatography which uses CO2 to extract oils from natural sources (Luo at [0451]).
Regarding instant claim 20, Luo teaches the use of grape seed extract, ginger, vitamin A, vitamin C, vitamin E, thyme, (Luo at [0257]).
Conclusion
No claims are presently allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA MICHELLE PETRITSCH whose telephone number is (571)272-6812. The examiner can normally be reached M-F 08:30-17:00 EST ALT Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. 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.
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/AMANDA MICHELLE PETRITSCH/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612