DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Amendments
Applicants’ amendments to the claims filed 1/20/2026 have been entered. Any objection\rejections from the previous office action filed 10/21/2025 not addressed below has been withdrawn.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 and 3 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ito et al. (US 2006/0134095). This modified rejection was necessitated by amendment.
Ito teaches antioxidative compositions for external use that include C60 fullerene and an oil, preferably olive oil, the fullerene was used in amounts of 0.0001 to less than 5 wt%. See entire disclosure especially abstract, [0075],[0080],[0165] and claims. Applicants claimed amounts of fullerene in olive oil would be obvious since the weight range of fullerene in oil 0.0001 to less than 5 wt% incorporates the claimed amounts. A prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection. Therefor, based on the described overlap above, the instant claims would have been obvious to one of ordinary skill in the art. MPEP § 2144.05. Regarding the new limitation that the composition is homogeneous, it follows that since Ito teaches the same composition it will feature the same properties, including forming a homogeneous solution.
Claims 1 and 3 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Moussa et al. (WO 2005/105214). This modified rejection was necessitated by amendment.
Moussa teaches homogeneous solutions comprising C60 fullerene and a carrier including olive oil, the amount of fullerene was from 0.01 to 10%. See entire disclosure, especially abstract, example 1 and claims. Applicants claimed amounts of fullerene in olive oil would be obvious since the weight range of fullerene in oil of 0.01 to 10 wt%, incorporates the claimed amounts. Additionally, a smaller range of 0.1 to 2 wt%, includes a data point 0.1 that is so close to the claimed data point of 0.09, one of ordinary skill would consider the amounts to yield the same properties. See claim 3. A prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection. Therefor, based on the described overlap above, the instant claims would have been obvious to one of ordinary skill in the art. Also, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 1/20/2025 have been fully considered but they are not persuasive.
Applicants assert the examiner has provided no rationale for providing a homogeneous composition from Ito and Moussa.
The limitation of a homogeneous solution is a new limitation and therefore was not addressed in the previous action. As noted in the modified rejection above a homogeneous solution is met by Ito and Moussa.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES W ROGERS/Primary Examiner, Art Unit 1618