DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-3, 6-7, and 9-19 are pending and represent all claims currently under consideration.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/10/2026 has been entered.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claims 1-3, 6-7, and 9, and 11-19 are considered to have an effective filing date of 09/07/2020.
Claim 10 is considered to have an effective filing date of 08/26/2021.
Response to Arguments
Applicant's arguments filed 01/12/2026, regarding Baker, Engblom, Pereira, and Morgan (Remarks, pages 7-11) were addressed in the Advisory Action mailed 01/20/2026.
Applicant’s arguments, see Remarks (pages 7-11), filed 01/12/2026, with respect to the rejection(s) of claim(s) 1-3, 11-12, and 14-18 under 35 U.S.C. 103 over Baker and Engblom have been fully considered and are persuasive due to the amendment of the independent claim 1. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Baker, Engblom, and Pereira.
Applicant states that none of the cited references teach a viscosity adjusted within the range of the amended claim 1, and specifically that the viscosity cannot be adjusted by a simple concentration adjustment alone (Remarks, pages 7-11). This argument is not persuasive, because Baker, Engblom, and Pereira together teach all the elements of the amended claim 1 as discussed below. Further, Baker teaches the amount of alcohol present can be used to adjust the viscosity of the composition (Baker, page 21, paragraph 0207).
Applicant’s additional arguments filed 02/10/2026, regarding Baker, Engblom, Pereira, and Morgan (Remarks, pages 6-8) have been fully considered but they are not persuasive.
Applicant states that Baker merely lists ethanol as one of the possible solvents and does not disclose a specific combination of oil and surfactant that achieves emulsion stability, viscosity, and moisturizing properties simultaneously under high-ethanol conditions (Remarks, page 7, 3rd paragraph). This argument is not persuasive, because Baker teaches a composition comprising an emulsion comprising an oil, a surfactant, water, and a solvent wherein the solvent can be ethanol (Baker, claim 2), and specifically teaches an example of a formulation and use which is a moisturizing lotion (Baker, page 24, paragraph 0231). While Baker does not disclose the specific amount of ethanol claimed, the secondary reference Engblom also teaches an oil-in-water emulsion composition (Engblom, claim 1) and teaches ethanol in the claimed amount, as stated previously. Further, Baker teaches water and alcohols can be used to adjust the viscosity of the compositions (Baker, page 21, paragraph 0207), suggesting it is common to optimize the amount of ethanol and viscosity.
Applicant states that it is known that as the concentration of ethanol increases, demulsification may occur due to changes in the solubility and distribution of surfactants, making emulsion stabilization under high-ethanol conditions technically difficult, and states that Baker does not provide a reasonable expectation for success for implementing an emulsion with the claimed ethanol concentration (Remarks, page 7). This argument is not persuasive, because as stated previously, and in the rejection below, the secondary reference Engblom also teaches an oil-in-water emulsion composition (Engblom, claim 1) and teaches ethanol in the claimed amount, as stated previously. Therefore, it would be reasonable to expect the claimed concentration of ethanol to be stable, and demonstrating that it would be a reasonable amount to use in such a composition.
Applicant states that Baker and Engblom are based on different technical premises, because Engblom’s composition does not contain a surfactant (Remarks, pages 7-8). This argument is not persuasive, because it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Baker and Engblom are each in the same field of oil-in-water emulsions for skin application, as previously mentioned. Therefore, the rejection over Baker, Engblom, and Pereira is proper.
Applicant states that examples 1-5 of Morgan do not disclose an emulsion structure as claimed with an oil phase and an aqueous phase (Remarks, page 8, 3rd paragraph). This argument is not persuasive, because while the examples 1-5 of Morgan do not necessarily specify an oil-in-water emulsion, as previously stated Morgan teaches the composition can be an oil-in-water emulsion (Morgan, page 11, line 13), which has both an oil phase and an aqueous phase. As an oil-in-water emulsion is taught to be a suitable form and as the teachings are not limited to the working examples, it would be obvious to formulate the composition as claimed.
Maintained/Modified 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 1-3, 6-7, and 9-19 are rejected under 35 U.S.C. 103 as being unpatentable over Morgan (WO 2001028340 A2). The reference was cited previously by the Examiner.
Regarding claim 1, Morgan teaches a hand sanitizer (i.e., disinfectant composition) comprising ethanol in 62% by weight, which lies within the claimed range, and water (Morgan, page 51, example 1). Morgan further teaches the composition can be an oil-in-water emulsion (Morgan, page 11, line 13), and can comprise an emulsifying surfactant which is sorbitan monostearate (i.e., a sorbitan fatty acid ester surfactant; Morgan, page 10, lines 30-31) and a moisturizing agent which is olive oil (Morgan, page 9, lines 27-32). Morgan teaches suitable emulsions may have a wide range of viscosities depending on the desired product form and teaches a preferred viscosity for oil-in-water emulsions in centistokes (Morgan, page 11, lines 27-29), but does not measure viscosity in cps as claimed. 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.
Morgan is considered to be analogous to the claimed invention, because both are in the same field of compositions comprising oil-in-water emulsions for disinfection. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention upon optimization of the composition based on the teachings of Morgan. See MPEP §2144.05(II).
Regarding claim 2, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a sanitizer comprising ethanol in 62% by weight (Morgan, page 51, example 1), which lies within the claimed ranges.
Regarding claim 3, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a sanitizer comprising ethanol in 62% by weight (Morgan, page 51, example 1), which lies within the claimed range.
Regarding claim 6, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches the composition can comprise an emulsifying surfactant which is sorbitan monostearate (i.e., sorbitan stearate; Morgan, page 10, lines 30-31).
Regarding claim 7, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches an emulsifying surfactant in most preferably from about 0.25% to about 2.5% (Morgan, page 11, lines 10-11), which lies within the claimed range.
Regarding claim 9, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches a moisturizing agent which can be olive oil (Morgan, page 9, lines 27-32) in most preferably from about 2% to about 10% by weight (Morgan, page 10, lines 10-12), which lies within the claimed range.
Regarding claim 10, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches an emulsifying surfactant in most preferably from about 0.25% to about 2.5% (Morgan, page 11, lines 10-11) and a moisturizing agent which can be olive oil (Morgan, page 9, lines 27-32) in most preferably from about 2% to about 10% by weight (Morgan, page 10, lines 10-12), which results in a possible ratio of surfactant and oil of 0.0125 to 6.25 : 5, which encompasses the claimed range. 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 claim 11, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches thickeners are preferably added to the solutions (Morgan, page 8, line 31).
Regarding claim 12, Morgan teaches all the elements of the current invention as applied to claim 11. Morgan teaches thickeners (i.e., additives) are preferably present in about 0.1% to about 3% (Morgan, page 9, lines 24-26), which encompasses the claimed range. 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 claim 13, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches suitable emulsions may have a wide range of viscosities depending on the desired product form and teaches a preferred viscosity for oil-in-water emulsions in centistokes (Morgan, page 11, lines 27-29), but does not measure viscosity in cps as claimed. 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.
Regarding claim 14, Morgan teaches all the elements of the current invention as applied to claim 1. Morgan teaches a preferable particle size of about 1-20 microns (Morgan, page 43, lines 24-26), which encompasses the claimed range. 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 claim 15, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches the composition can be an oil-in-water emulsion (Morgan, page 11, line 13).
Regarding claim 16, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a hand sanitizer (i.e., a skin disinfectant composition; Morgan, page 51, example 1).
Regarding claim 17, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a hand sanitizer (i.e., a hand disinfectant composition; Morgan, page 51, example 1).
Regarding claim 18, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches a hand sanitizer (Morgan, page 51, example 1). It would be obvious to one of ordinary skill in the art that hand sanitizer is intended for external use on skin.
Regarding claim 19, Morgan teaches all the elements of the current invention as applied to claim 1. As above, Morgan teaches an emulsifying surfactant in most preferably from about 0.25% to about 2.5% (Morgan, page 11, lines 10-11), which overlaps the claimed range, and a moisturizing agent which can be olive oil (Morgan, page 9, lines 27-32) in most preferably from about 2% to about 10% by weight (Morgan, page 10, lines 10-12), which lies within claimed range. 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).
New Claim Rejections - 35 USC § 103
Claims 1-3 and 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over Baker (US 20090143477 A1), further in view of Engblom (WO 2020104553 A1; IDS reference, 02/10/2023) and Pereira (US 4981845 A). The references were previously cited by the Examiner.
Regarding claim 1, Baker teaches a composition comprising an emulsion comprising an oil, a surfactant, water, and a solvent wherein the solvent can be ethanol (Baker, claim 2) and teaches ethanol in 5-15% (Baker, page 16, paragraph 0159), but does not specify the percent is calculated by weight as claimed. However, Baker does teach that the amounts listed as exemplary and that those of skill in the art would know to alter the amounts of the components to arrive at a composition suitable for the intended purpose (Baker, page 11, paragraph 0128). Baker further teaches the composition can be designed for disinfecting (Baker, page 19, paragraph 0192), and can comprise lecithin (i.e., a lecithin-based surfactant from the claimed list; Baker, page 3, paragraph 0025), TWEEN 20 (i.e., polysorbate 20, a sorbitan-based surfactant from the claimed list; Baker, claim 2), and coconut oil (Baker, page 3, paragraph 0024).
Baker does not teach ethanol within the claimed range. Engblom, however, teaches an oil-in-water emulsion composition (Engblom, claim 1) comprising an oil, an alcohol, and water (Engblom, page 17, lines 5-14) and which can be a skin disinfectant (Engblom, page 15, line 28), and further teaches the alcohol can be ethanol and is preferably 40-70% of the composition (Engblom, claim 5), which lies within the claimed range.
Baker teaches the amount of alcohol present can be used to adjust the viscosity of the composition (Baker, page 21, paragraph 0207) and teaches the composition can be in the form of a lotion (Baker, page 19, paragraph 0190), but does not specify a viscosity measurement as claimed. Pereira, however, teaches the viscosity of an emulsion determines whether the composition is a milk, a lotion, or a cream and further teaches a normal lotion has a viscosity of 5000-8000 mPas (i.e., 5000-8000 cps; Pereira, column 7, lines 7-18), which lies within the claimed range.
Baker, Engblom, and Pereira are considered to be analogous to the claimed invention, because all are in the same field of oil-in-water emulsions for skin application. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition taught by Baker to have included the amount of ethanol taught by Engblom, because Baker teaches the amount of alcohol can adjust the viscosity of the composition (Baker, page 21, paragraph 0207). Further, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the viscosity of the composition taught by Baker, depending on the desired final composition (i.e., a lotion). See MPEP §2144.05(II). It would be reasonable to expect one of ordinary skill in the art could arrive at the viscosity taught by Pereira to correspond with a normal lotion.
Regarding claim 2, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. Baker teaches a composition comprising an emulsion comprising an oil, a surfactant, water, and a solvent wherein the solvent can be ethanol (Baker, claim 2). Engblom teaches an oil-in-water emulsion composition (Engblom, claim 1) comprising an oil, an alcohol, and water (Engblom, page 17, lines 5-14) and which can be a skin disinfectant (Engblom, page 15, line 28), and further teaches the alcohol can be ethanol and is preferably 40-70% of the composition (Engblom, claim 5), which lies within the claimed range. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition taught by Baker to have included the amount of ethanol taught by Engblom, because Baker teaches the amount of alcohol can adjust the viscosity of the composition (Baker, page 21, paragraph 0207).
Regarding claim 3, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. Baker teaches a composition comprising an emulsion comprising an oil, a surfactant, water, and a solvent wherein the solvent can be ethanol (Baker, claim 2). Engblom teaches an oil-in-water emulsion composition (Engblom, claim 1) comprising an oil, an alcohol, and water (Engblom, page 17, lines 5-14) and which can be a skin disinfectant (Engblom, page 15, line 28), and further teaches the alcohol can be ethanol and is preferably 40-70% of the composition (Engblom, claim 5), which lies within the claimed range. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition taught by Baker to have included the amount of ethanol taught by Engblom, because Baker teaches the amount of alcohol can adjust the viscosity of the composition (Baker, page 21, paragraph 0207).
Regarding claim 11, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. Baker teaches the composition can comprise additives such as bulking agents (i.e., thickeners; Baker, page 8, paragraph 0098).
Regarding claim 12, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 11. As above, Baker teaches the composition can comprise additives such as bulking agents (i.e., thickeners; Baker, page 8, paragraph 0098), but does not specify an amount. Engblom teaches the composition comprises a thickener (i.e., additive) in 0.2-1% by weight (Engblom, page 18, line 10), which overlaps the claimed range of 0.5-2%. 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). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimize the amount of thickener in the composition taught by Baker, because an amount is not specified. See MPEP §2144.05(II). It would be reasonable to expect one of ordinary skill in the art could arrive at the preferred amount taught by Engblom.
Regarding claim 13, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. Baker teaches the amount of alcohol present can be used to adjust the viscosity of the composition (Baker, page 21, paragraph 0207) and teaches the composition can be in the form of a lotion (Baker, page 19, paragraph 0190), but does not specify a viscosity measurement as claimed. Pereira, however, teaches the viscosity of an emulsion determines whether the composition is a milk, a lotion, or a cream and further teaches a normal lotion has a viscosity of 5000-8000 mPas (i.e., 5000-8000 cps; Pereira, column 7, lines 7-18), which lies within the claimed range. As above, it would be reasonable to expect one of ordinary skill in the art could arrive at the viscosity taught by Pereira to correspond with a normal lotion.
Regarding claim 14, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. Baker teaches the emulsion has a preferred droplet (i.e., particle) size of 0.1-5 microns (Baker, page 6, paragraph 0075), which overlaps the claimed range of 1-10 microns. 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 claim 15, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. Baker teaches the composition is an oil-in-water emulsion (Baker, page 3, paragraph 0024).
Regarding claim 16, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. As above, Baker teaches the composition can be designed for disinfecting (Baker, page 19, paragraph 0192) and can be used as a soap (i.e., a skin disinfectant; Baker, page 20, paragraph 0195).
Regarding claim 17, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. Baker teaches the composition can be designed for disinfecting (Baker, page 19, paragraph 0192) and can be used as a soap (i.e., a skin disinfectant; Baker, page 20, paragraph 0195), and can be used to treat the outermost parts of an organism including the skin (Baker, page 7, paragraph 0094). Baker does not specify the disinfectant is a hand disinfectant, but the composition being a hand disinfectant is considered to be a recitation of intended use. It would be prima facie obvious to one of ordinary skill in the art that a soap which can be used on the skin is capable of being used on the hands.
Regarding claim 18, Baker, Engblom, and Pereira together teach all the elements of the current invention as applied to claim 1. Baker teaches the surfaces which can be treated to include the outermost parts of an organism including the skin (i.e., for external use on skin; Baker, page 7, paragraph 0094).
Conclusion
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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