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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 06/26/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claims 1-6 and 8 are pending and under examination.
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) in view of Py (US20100140290).
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.
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 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.
Regarding claims 1-6 and 8, prior art teaches a container (pretreated with hydrogen peroxide) 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.
Response to Argument:
Applicants argue that Py is not analog art and there is no need to pre-treat with hydrogen peroxide since hydrogen is already in the cosmetic composition.
In response to this argument: this is not persuasive. In response to applicant's argument that Py is nonanalogous art, 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, Py is relied on for teaching to sterilize container with hydrogen peroxide to avoid contamination before cosmetic composition being brought into container, since it is important and advantage to have clean and sterile container, it is obvious to pre-treat container with hydrogen peroxide and produce instant claimed invention with reasonable expectation of success. Regarding the argument that hydrogen peroxide is in the cosmetic composition and pre-treat with hydrogen peroxide. It is argued that pre-treated with hydrogen peroxide and hydrogen peroxide in the composition are independent from each other, each process has its own function. The hydrogen peroxide for pre-treat container ensure the container is clean and sterile, the hydrogen peroxide in the composition is required ingredients in the cosmetic. Therefore, the hydrogen peroxide in the composition does not prevent one artisan from pretreat container with hydrogen peroxide. The combination of prior art teaches each limitation of applicant’s claimed invention expressly, or inherently, and the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (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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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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