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 .
In view of the amendment, previous 112(b) rejection on claims 6 and 7, previous 112(b) rejection on claim 10, previous 112(b) rejection on claims 8-9 and previous 112(b) rejection on claims 19-20 are hereby withdrawn.
In view of applicant’s argument, previous 103 rejection on claims 1, 3, 4, 6-20 and 23 over Wegner (EP’821) in view of Tamarkin’453 and Riemer’500 and previous 103 rejection on claims 21 and 22 over Wegner (EP’821) in view of Tamarkin’453, Riemer’500 and Asmus’430 are hereby withdrawn. Thus, applicant’s arguments with respect to these rejections are now moot.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 4, 6-10, 12-20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over WEGNER et al (EP 3 058 821 B1) in view of Mathur et al (WO 2014/201541 A1) and Dalela (“16 Incredible Benefits of Peppermint Oil for Skin, Hair & Health”, KAMA AYURVEDA, an internet article published on September 25, 2020 and obtained from the website: https://www.kamaayurveda.in/blog/peppermint-oil?srsltid=AfmBOoqC4g6-zy7oh9jTEUodcXF-GTNk7G_GKK892roRVA9jjCyRDGWI ).
In its claims 1 and 3 (see also [0001] and [0016]), Wegner teaches a non-aerosol foaming antimicrobial composition (useful for antimicrobial handcare or skincare products) comprising: (a) a forming agent comprising a PEG-8 to PEG-12 linear dimethicone surfactant of the following general formula
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wherein R = CH3, m = 4-20, y = 1-5 and n = 8-12; (b) 50-90 wt.% of a C2-C4 alcohol (instant short-chain alcohol); and c) water, wherein the composition further comprises 0.01-20 wt.% of at least one skin conditioner and wherein the composition is free of an additional surfactant. Since Wegner’s PEG-8 to PEG-12 linear dimethicone surfactant shown above has PEG groups on both ends of the dimethicone molecule, Wegner’s PEG-8 to PEG-12 linear dimethicone shown above represents bis-PEG-8 linear dimethicone to bis-PEG-12 linear dimethicone (instant dimethicone-based surfactant of claim 7). Wegner further teaches ([0014]) that as the C2-C4 alcohol, ethanol is preferred.
With respect to the newly added limitation “wherein the total amount of dimethicone-based surfactant in the composition is from about 1.0% to about 10.0% by weight of the total composition”, Wegner teaches ([0013]) that its dimethicone surfactant can be present in the amount of about 0.5 – 10 wt.%. Such range overlaps with instant range about 1.0 – 10.0 wt.% for the amount of the total amount of dimethicone-based surfactant, thus rendering instant range prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
With respect to instant component (iii) at least one sensation modifying agent, as discussed above (see also [0016]), Wegner’s non-aerosol foaming antimicrobial composition contains 0.01-20 wt.% of at least one skin conditioner, such as an emollient, humectant, occlusive agent or other moisturizer to provide moisturization, skin-softening, skin barrier maintenance, anti-irritation or other skin health benefits. It is well known in the art, as evidenced by Mathur ([006] and [046]) that peppermint oil can be used as an emollient (a skin conditioner) in a non-aerosol foaming composition. Furthermore, as taught by Dalela (see paragraphs under “Peppermint Oil Uses For Skin Care”), there are many advantages of using peppermint oil in skin care formulations, such as: (1) peppermint oil can prevent signs of ageing from appearing on the skin because it has unique astringent properties that help the skin appear youthful by tightening and firming the skin; (2) peppermint oil has cooling and warming effects that work in reducing pain on the skin by initiating numbness; (3) peppermint oil can reduce inflammation as well as skin redness; (4) peppermint oil provides sunburn relief and supports the healthy growth of skin by regeneration and renewal process; (5) the menthol content in peppermint oil soothes the skin and promotes healing; and (6) peppermint oil has antiseptic and antibacterial properties (see 1st paragraph under “Aids in Dental Care”). Based on the teachings of Mathur and Dalela, it would be obvious to one skilled in the art to use peppermint oil (instant at least one sensation modifying agent of claims 1 and 12 as well as instant cooling agent of claim 10) as a skin conditioner (an emollient) in Wegner’s non-aerosol foaming antimicrobial composition with a reasonable expectation of obtaining all the benefits of peppermint oil as taught by Dalela.
With respect to instant optional component (v) an additive and/or a second dimethicone-based surfactant, Wegner teaches that in tis non-aerosol foaming antimicrobial composition, mixtures of skin conditioners can be used. Among examples for the skin conditioners, Wegner teaches (claim 2) propylene glycol (instant additive of claims 14 and 15). It would be obvious to one skilled in the art to use both peppermint oil (as taught by Mathur and Dalela) and propylene glycol in Wegner’s non-aerosol foaming antimicrobial composition with a reasonable expectation of success.
As to instant range (of claim 1) 7.5 wt.% or more for the amount of at least one sensation modifying agent (peppermint oil) and instant range (of claim 15) equal to or less than 5.0 wt.% for the amount of propylene glycol, as already discussed above, Wegner teaches that skin conditioner(s) can be used in the amount of 0.01-20 wt.% in its composition. Assuming that one uses equal amounts for peppermint oil and propylene glycol, this would give 0.005-10 wt.% for each of peppermint oil and propylene glycol. Such range 0.005-10 wt.% for each of peppermint oil and propylene glycol overlaps with instant range 7.5 wt.% or more for instant sensation modifying agent and instant range equal to or less than 5.0 wt.% for the amount of propylene glycol, thus rendering instant ranges prima facie obvious. Alternatively, instant ranges for the amounts of the sensation modifying agent (peppermint oil) and propylene glycol would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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Thus, Wegner in view of Mathur and Dalela renders obvious instant claims 1, 3, 6, 7, 10 and 12-16.
With respect to instant claim 4, as discussed above, Wegner teaches that its C2-C4 alcohol is used in the amount of 50-90 wt.%, and such range overlaps with instant range 35.0-60.0 wt.% for the amount of short-chain alcohol, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Wegner in view of Mathur and Dalela renders obvious instant claim 4.
With respect to instant claims 17 and 19, as already discussed above, Wegner teaches that its foaming antimicrobial composition comprises bis-PEG-8 linear dimethicone to bis-PEG-12 linear dimethicone as its surfactant. Because both bis-PEG-8 linear dimethicone and bis-PEG-12 linear dimethicone are being individually taught in Wegner to be useful for the same purpose (i.e., useful as its surfactant), it would have been obvious to one skilled in the art to use a combination of bis-PEG-8 linear dimethicone (instant second surfactant of claims 17 and 19) and bis-PEG-12 linear dimethicone (instant first surfactant of claim 19) in Wegner’s foaming antimicrobial composition as its surfactant with a reasonable expectation of success. MPEP 2144.06 states that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose . . . [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Thus, Wegner in view of Mathur and Dalela renders obvious instant claims 17 and 19. With respect to instant claims 18 and 20, as discussed above, Wegner teaches that its dimethicone surfactant can be present in the amount of 0.5-10 wt.%. Assuming that one uses equal amounts for bis-PEG-8 linear dimethicone (instant second surfactant of claims 17 and 19) and bis-PEG-12 linear dimethicone (instant first surfactant of claim 19), this will give 0.25-5 wt.% for each of the surfactants in the combination. Such range overlaps with instant range (at least 0.1 wt.%) of claim 18 for the amount of the second surfactant (bis-PEG-8 linear dimethicone), thus rendering instant range prima facie obvious. In re Wertheim, supra. Also, instant weight ratio of claim 20 bis-PEG-12 Dimethicone to bis-PEG-8 Dimethicone would be 1.0. Alternatively, under the guideline given by Wegner, instant range of claim 18 for the amount of the second surfactant and instant range of claim 20 for the weight ratio of bis-PEG-12 dimethicone to bis-PEG-8 dimethicone would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, Wegner in view of Mathur and Dalela renders obvious instant claims 18 and 20.
With respect to instant claim 8, as already discussed above, assuming that one uses equal amounts for bis-PEG-8 linear dimethicone (instant second surfactant) and bis-PEG-12 linear dimethicone (instant first surfactant), this will give 0.25-5 wt.% for each of the surfactants in the combination. The range 0.25-5 wt.% for the bis-PEG-8 linear dimethicone (instant second surfactant of claim 8) overlaps with instant range (at least 0.1 wt.%) of claim 8 for the amount of the second dimethicone-based surfactant, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Wegner in view of Mathur and Dalela renders obvious instant claim 8.
With respect to instant claim 9, as already discussed above, Wegner teaches that its dimethicone surfactant(s) can be present in the amount of 0.5-10 wt.%. Such range overlaps with instant range about 2.0-10.0 wt.% for the (total) amount of the first dimethicone-based surfactant and the second dimethicone-based surfactant, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Wegner in view of Mathur and Dalela renders obvious instant claim 9.
With respect to instant claim 23, the Examiner already established above that it would be obvious to one skilled in the art to include 0.01-20 wt.% of at least one skin conditioner, such as peppermint oil (instant sensation modifying agent) and propylene glycol (instant additive), in Wegner’s non-aerosol foaming antimicrobial composition, which also contains a bis-PEG-8 linear dimethicone to bis-PEG-12 linear dimethicone surfactants, C2-C4 alcohol and water. Thus, it is the Examiner’s position that working out instant steps (i)-(iv) would be within the realm of one of ordinary skill in the art. Thus, Wegner in view of Mathur and Dalela renders obvious instant claim 23.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over WEGNER et al (EP 3 058 821 B1) in view of Mathur et al (WO 2014/201541 A1) and Dalela (“16 Incredible Benefits of Peppermint Oil for Skin, Hair & Health”, KAMA AYURVEDA, an internet article published on September 25, 2020 and obtained from the website: https://www.kamaayurveda.in/blog/peppermint-oil?srsltid=AfmBOoqC4g6-zy7oh9jTEUodcXF-GTNk7G_GKK892roRVA9jjCyRDGWI ) as applied to claim 1 above, and further in view of “All About Wintergreen Oil”, Essential Oils / October 18, 2018, an internet article obtained from the website: https://www.newdirectionsaromatics.com/blog/all-about-wintergreen-oil/#:~:text=For%20hundreds%20of%20years%20since,a%20popular%20ingredient%20in%20cosmetics. ).
Wegner in view of Mathur and Dalela does no teach instant limitation of claim 11. However, as taught by “All About Wintergreen Oil” (“Wintergreen” hereinafter) (see the second bullet under “In Essence”), wintergreen oil (which is another name for instant methyl salicylate) has benefits when used topically on the skin, such as helping to tighten and lift the skin for a firmer and more youthful appearance (see the 2nd paragraph under “Wintergreen Oil Benefits”). It would be obvious to one skilled in the art to include wintergreen oil in Wegner’s composition with a reasonable expectation of helping to tighten and lift the skin for a firmer and more youthful appearance as taught by Wintergreen. Thus, Wegner in view of Mathur and Dalela, and further in view of Wintergreen renders obvious instant claim 11.
Claim(s) 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over WEGNER et al (EP 3 058 821 B1) in view of Mathur et al (WO 2014/201541 A1), Dalela (“16 Incredible Benefits of Peppermint Oil for Skin, Hair & Health”, KAMA AYURVEDA, an internet article published on September 25, 2020 and obtained from the website: https://www.kamaayurveda.in/blog/peppermint-oil?srsltid=AfmBOoqC4g6-zy7oh9jTEUodcXF-GTNk7G_GKK892roRVA9jjCyRDGWI ) and Asmus et al (US 2007/0138439 A1) (with Wikipedia article on Peppermint, obtained from the website: https://en.wikipedia.org/wiki/Peppermint , which is being cited here merely to support the Examiner’s assertion that peppermint oil has 7-48% menthol).
With respect to the component (i) of claims 21 and 22, as discussed above, Wegner’s foaming antimicrobial composition contains 50-90 wt.% of C2-C4 alcohol, which is preferably, ethanol. Wegner does not expressly state that its ethanol is SD-alcohol (specially denatured alcohol). As evidenced by Asmus ([0002]), ethanol is often used in formulations of sanitizing composition for its antimicrobial properties, and because such products are not intended to be ingested, the ethanol used in such products is typically denatured so that it is rendered undrinkable. It would have been obvious to one skilled in the art to use in Wegner’s foaming antimicrobial composition 50-90 wt.% of denatured ethanol (SD-ethanol) to make it undrinkable according to a typical practice in the art. Wegner’s range 50-90 wt.% for the amount of its alcohol overlaps with instant ranges of claim 21 (35.0-65.0 wt.%) and claim 22 (45.0-65.0 wt.%) for the amount of SD-alcohol, thus rendering instant ranges prima facie obvious. In re Wertheim, supra.
With respect to the components (ii) and (iv) of claim 21 and the components (ii) and (iii) of claim 22, the Examiner already established above that it would have been obvious to one skilled in the art to use a combination of bis-PEG-8 linear dimethicone and bis-PEG-12 linear dimethicone in Wegner’s foaming antimicrobial composition as its surfactant with a reasonable expectation of success. As to the amounts of those two dimethicone surfactants, Wegner teaches that its dimethicone surfactant can be present in the amount of 0.5-10 wt.%. Assuming that one uses equal amounts for bis-PEG-8 linear dimethicone and bis-PEG-12 linear dimethicone, it will give 0.25-5 wt.% for each surfactant in the combination. Such range overlaps with instant ranges claimed for the components (ii) and (iv) of claim 21 as well as with instant ranges claimed for the component (ii) and (iii) of claim 22, thus rendering instant ranges prima facie obvious. In re Wertheim, supra. Alternatively, under the guideline given by Wegner (i.e., its dimethicone surfactants are to be used in the amount of 0.5-10 wt.%), instant ranges for the components (ii) and (iv) of claim 21 and instant ranges for the components (ii) and (iii) of claim 22 would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
With respect to instant component (iii) of claim 21 and instant component (iv) of claim 22, as evidenced by the Wikipedia article on Peppermint (see under “Chemical constituents”), peppermint oil contains 7-48% menthol. Since Wegner teaches that its composition can contain a skin conditioner (peppermint oil according to the teachings of Mathur and Dalela) in the amount of 0.1 to 20 wt.%, this means that there is 0.007 – 9.2 wt.% of menthol in the peppermint oil. The range 0.007-9.2 wt.% overlaps with instant range 7.5-16.0 wt.% of claims 21 and 22 for the amount of menthol, thus rendering instant range prima facie obvious.
With respect to instant component (v) of claims 21 and 22, as discussed above, Wegner’s foamable composition contains water.
With respect to instant component (vi) of claims 21 and 22, the Examiner already established above that it would be obvious to one skilled in the art to use propylene glycol as Wegner’s additional skin conditioner (instant additive). As to instant range (0.5-5.0 wt.%) for instant additive, as already discussed above, Wegner teaches that skin conditioner(s) can be used in the amount of 0.01-20 wt.% in its composition. Assuming that one uses equal amounts for peppermint oil and propylene glycol, this would give 0.005-10 wt.% for each of peppermint oil and propylene glycol, and the range 0.005-10 wt.% for propylene glycol overlaps with instant range 0.5-5.0 wt.% for the amount of propylene glycol, thus rendering instant ranges prima facie obvious.
With respect to instant limitation “wherein the foam composition only contains a dimethicone surfactant” of claims 21 and 22, as discussed above, Wegner teaches that its foaming composition is free of an additional surfactant.
Thus, Wegner in view of Mathur, Dalela and Asmus renders obvious instant claims 21 and 22.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
January 24, 2026