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 with traverse of invention group I, claims 1-8, in the reply filed on 01/21/2026 is acknowledged. The traversal is on the ground(s) that special technical feature of bio-sourced ingredients containing ocimene and container. This is not found persuasive because bio-sourced ingredients contain ocimene such as lavender oil is well-known and it must be in a container. Furthermore, Mintel in the 102 rejection teaches cosmetic composition comprising lavender oil in a container.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/21/2026.
Applicants further elect perfume as specific product, ocimene as specific bio-resourced ingredient, prenylthiol as specific thiol compound, and hydrogen peroxide as specific malodour-counteracting agent. For compact prosecution purpose, the election of spices requirement is withdrawn.
Claims 1-22 are pending, claims 1-8 are under examination.
Priority
Acknowledge is made that this application is national stage of internation patent application PCT/EP2021/084437, filed on 12/06/2021; which claims priority from European Patent application EP21155289.8, filed on 02/04/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/04/2023 is being considered by the examiner.
Claims Objection
Claims 2-8 are objected for starting from “A”. Dependent claims 2-8 should start from “The”. Proper correction is required.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Mintel (“Fresh Fix Hydrating Mist to Go”, 12/22/2008; cited in IDS).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Mintel teaches a container filled with hydrating mist (skin care cosmetic) comprising lavender oil (comprising ocimene as indicated by claim 3) and hydrogen peroxide.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Mintel is that Mintel is not specific enough for anticipating.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
The limitation of claims 1-6 and 8 are met by Mintel teaches a container filled with hydrating mist (skin care cosmetic) comprising lavender oil (comprising ocimene as indicating by claim 3) and hydrogen peroxide, obviously, there is a step that hydrogen peroxide is being mixed into the composition comprising lavender oil (including ocimene), and this step read on the limitation of treating the product (hydrating mist cosmetic product) with malodour-counteracting agent (hydrogen peroxide) in claim 1.
Mintel is silent about suppressing or eliminating a malodour from the product as well as “prevents contact of ocimene with material in the container capable of reacting with ocimene to generate a thiol compound (prenylthiol)” which are regarded as inherency of prior art process. In summary, although the reference is silent about all the functional properties instantly claimed, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same cosmetic product is being treated with the same hydrogen peroxide by the same process in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, prior art teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method is obvious.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mintel (“Fresh Fix Hydrating Mist to Go”, 12/22/2008; cited in IDS), as applied for the above 103 rejection for claims 1-6 and 8, in view of Py (US20100140290).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Mintel teaching has already been discussed in the above 103 rejection and is incorporated herein by reference.
Py teaches A device and method for aseptically storing and dispensing a liquid. The device has container forming a variable-volume storage chamber, and a one-way valve coupled in fluid communication with the storage chamber and having an elastic valve member forming a normally closed valve opening (abstract). The container is sterilized for cosmetic product in one embodiment ([0055, 0058]). In an alternate filling method, a sterile environment is not required even though the product needs to be maintained in a sterile environment. Filling may include injecting a sterilizing agent such as liquid hydrogen peroxide at a pressure above atmospheric into containers made of polyethylene terephthalate or other suitable material for sterilization thereof. To remove the sterilizing agent, a stream of hot sterile air can hasten evaporation thereof. Then, the sterile product can fill the container and displace the hot air until a portion of the sterile fluid can be suctioned away to insure the entire contents are sterile. At such time, the proper closure in the form of a sterilized nozzle can be applied. For further examples of acceptable filling methods and apparatus, the container may be filled in accordance with the teachings of U.S. Pat. No. 6,351,924, U.S. Pat. No. 6,372,276 and/or U.S. Pat. No. 6,355,216, each of which is incorporated herein by reference in its entirety ([0071]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Mintel is that Mintel do not expressly teach pretreating container with hydrogen peroxide. This deficiency in Mintel is cured by the teachings of Py.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Mintel, as suggested by Py, and produce the instant invention.
One of ordinary skill in the art would have been motivated to pre-treat container with hydrogen peroxide because this is known process for sterilizing container for cosmetic composition as suggested by Py. Since it is advantage to have sterilized container to avoid contamination before cosmetic composition being brought into container, it is obvious to pre-treat container with hydrogen peroxide and produce instant claimed invention with reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613