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 .
DETAILED ACTION
Election/Restrictions
Claims 1-17 are pending.
Applicant’s election without traverse of Group I, claims 1-5 and 12-17 in the reply filed on 9/15/25 is acknowledged.
Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/15/25.
Claims 1-5 and 12-17 are examined on the merits.
Claim Rejections –35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 and 12-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
First, the claimed invention must be to one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter three categories define "things" or "products" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed). See 35 U.S.C. 100(b) ("The term ‘process’ means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material."). See MPEP § 2106.03 for detailed information on the four categories.
Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013). See MPEP § 2106.04 for detailed information on the judicial exceptions.
Claim(s) 1-5, and 12-17 is/are directed to a composition comprising: two or more selected from the group consisting of coconut oil, mango butter, white beeswax, menthol crystals, arnica oil, peppermint oil, eucalyptus oil, cinnamon oil, camphor, ginger oil, and frankincense.
Analysis of the flowchart:
Step 1, is the claim to a process, machine, manufacture or composition of matter?
Yes. The claim is drawn to a composition of matter.
Step 2A. Prong one: Is the claim directed to a law of nature, a natural phenomenon (product of nature), or an abstract idea?
Yes, the claims are drawn to nature based components, coconut oil, mango butter, white beeswax, menthol crystals, arnica oil, peppermint oil, eucalyptus oil, cinnamon oil, camphor, ginger oil, and frankincense, because there is no indication that extraction has caused the components of coconut oil, mango butter, white beeswax, menthol crystals, arnica oil, peppermint oil, eucalyptus oil, cinnamon oil, camphor, ginger oil, and frankincense that comprise the claimed compositions to have any characteristics that are different from the naturally occurring components in coconut, mango, arnica, peppermint, eucalyptus, cinnamon, and ginger.
Step 2A. Prong two: Does the claims recite additional elements that amount to significantly more than the judicial exception?
No. The claim(s) of 1-5, and 12-17 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Regarding claims 1-3, 5, ,and 12-16, since there is no absolute amounts of the active ingredients are claimed as compared to the whole composition, the claimed composition encompasses embodiments where the active ingredients are in such small amounts that none of them impart any characteristic or markedly different characteristic
Claims 4 and 17 require certain amounts of components being present in the composition. However, there is no indication that the amounts claimed in the compositions result in a markedly different characteristic for the composition as compared to the components that occur in the nature.
Regarding claims 5, and 12-17, a solid form does not result in a markedly different characteristic for the claimed composition because the claimed material white beeswax, and menthol crystals already in a sold form and thus have that same characteristic.
Step 2B. If additional elements of the claim provide an inventive concept (Step 2B) (also called "significantly more" than the recited judicial exception).
Whether or not the non-nature based components such as PEG-100 stearate or propyl glycol in the composition make the composition “significantly more” than the judicial exception(s). For compositions, “significantly more” is when the non-nature based components are not “well understood, routine, and conventional” as a part of the type of composition that it is in. As evidenced in the cited references in the 103 rejections, PEG-100 stearate and propyl glycol are routinely used in the topical compositions such as cream or lotion. So, the answer to Step 2B is no.
No, no non-nature based components were recited in the claims.
Claims 12-17 recite an additional element (a casing with a cap, at least partially enclosing the composition). Although this limitation indicates that the composition is held in the casing, it does not provide any information as to how the composition is contained, or what container is, but instead covers any possible container that a doctor or pharmacist decides to use. Because the composition must be placed in a casing in order to store and use it, merely reciting a generic “a casing” thus fails to meaningfully limit the claim because it is at best the equivalent of merely adding the words “apply it” to the judicial exception.
For the reasons described above, the claimed compositions are not markedly different from their closest naturally occurring counterparts and thus are product of nature judicial exceptions.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not recite any additional elements beyond the claimed compositions themselves. Also, this is a product claim and since there are no claimed method steps, there are no additional elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception themselves. Therefore, the claims do not recite something significantly more than a judicial exception and are thus deemed patent ineligible subject matter.
Claim Rejections –35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, and 5 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Pomilla (US 20210060113 A1).
Pomilla teaches the molten mixture of beeswax, coconut oil (thus the claimed component), and peppermint essential oil (thus the claimed peppermint oil, thus two or more of the claimed component, thus claims 1, 3, and 12 are met) and further components, if any, can then poured be into a container (thus a casing at least partially enclosing the composition, thus claim 12 is met, thus comprising a cap, thus claim 14 is met) and allowed to cool to form a waxy (thus in a solid form, thus claim 5 is met), pain-relieving composition (thus a kit for treating pain in a subject) according to the present invention [0023].
Therefore, the reference is deemed to anticipate the instant claim above.
Claims 1, 3, 5, 12, and 16 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Ding et al (CN 2207842 Y).
Ding et al teach a medicated bag, TAIJIYANGSHENGDAI, has functions of invigorating spleen, regulating stomach function, strengthening body resistance, eliminating pathogenic factors, promoting blood circulation, removing blood stasis, regulating viscera and meridian, balancing yin and yang, regulating physiol. function, and improving immunity. The medicated bag can be used to treat dysmenorrhea, leukorrhagia, menoxenia, cold pain (thus a kit for treating pain) of lower abdomen, infertility due to cold womb, and puerperal diseases. The medicated bag can also be used to relieve gastralgia, rugitus, poor appetite, singultus, dyspepsia, diarrhea, food stagnation, abdominal pain, belch, acid regurgitation, diarrhea before dawn, and senile constipation. It also has prophylactic and therapeutic effects on hypertension, hypotension and common cold. The medicated bag is obtained by putting Radix Astragali, Radix Aucklandiae, Herba Pogostemonis, Flos Caryophylli, Cortex Magnoliae Officinalis, Rhizoma Zingiberis (thus containing the claimed ginger oil), Cortex Cinnamomi (thus containing the claimed cinnamon oil), Radix Angelicae Dahuricae, Radix Saposhnikoviae, Olibanum (thus the claimed frankincense, thus two or more claimed components, thus claims 1, 3, and 16 are met), Myrrha, Flos Carthami, Eupolyphaga Seu Steleophaga, and Folium Artemisiae Argyi preparata (thus solid form, thus claim 5 and 12 are met) between two layers of cotton cloth, sewing to form a pad, sewing a layer of thermal insulation material to either surface of the pad, and packing into a casing bag (thus a casing at least partially enclosing the composition, thus claim 12 is met). The medicated bag is applied to acupoints such as the Shenjue Acupoint, Tianshu Acupoint, Qihai Acupoint, Xiawan Acupoint, Shuifen Acupoint, Shimen Acupoint, and Yinjiao Acupoint (see Abstract).
Therefore, the reference is deemed to anticipate the instant claim above.
Claim Rejections –35 USC § 103
The following is a quotation of 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 through the invention is not identically disclosed or described as set forth in section 102 of this title, 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 negatived by the manner in which the invention was made.
Claims 1, 3, 5, 12-14, and 16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Pomilla as applied to claims 1, 3, and 5 above, in view of Liu (CN 110305738 A).
The teachings of Pomilla are set forth above and applied as before.
The teachings of Pomilla do not specifically teach a composition has an elongated shape or a casing in claim 12.
Liu teaches the invention discloses an aromatherapy massage candle (thus claim 13 is met, thus a solid form) and a preparation method thereof. The composition of the candle comprises 10-40 parts of Korean soft wax, 20-60 parts of coconut oil, 10-40 parts of soybean wax, 10-20 parts of sweet almond, 10-50 parts of aromatherapy massage essential oil and 10-40 parts of wheat germ oil. The candle has the obvious effects that the realization is simple, the composition comprises the Korean soft wax, the coconut oil, the soybean wax, the sweet almond, the aromatherapy massage essential oil and the wheat germ oil, is safe and effective without any side effect, the composition in a specific proportion is fused during preparation, the burnt smell eliminates fatigue and carbonic acid accumulation, has the effects of easing pain and reducing stimulation, contains rich vitamins, does not generate black smoke during combustion, has a low melting point of about 35 degrees, is easy to absorb, and can instantly fill a room with fragrance after burning for 2-5 minutes (see Abstract). Liu teaches taking 10 parts of Korean soft wax, 20 parts of coconut oil, 10 parts of soybean wax, 10 parts of aromatherapy massage essential oil, and 10 parts of wheat germ oil, heat and melt them, add the powder, stir evenly, pour into a candle mold, let it stand and cool, and then unmold to obtain an aromatherapy massage candle [0023].
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to using a casing since Liu teaches to do so.
It would also have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to form a composition has an elongated shape such as a candle since the composition of the candle comprises 10-40 parts of Korean soft wax, 20-60 parts of coconut oil, 10-40 parts of soybean wax and has an effect of easing pain. Since both of the references teach treating pain with a composition comprising coconut oil and wax in a waxy form, one of ordinary skill in the art would have been motivated to combine the teachings of the references together.
From the teachings of the references, it is apparent that one of the ordinary skills in the art would have had a reasonable expectation of success in producing the claimed invention.
Thus, the invention as a whole is prima facie obvious over 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 QIUWEN MI whose telephone number is (571)272-5984. The examiner can normally be reached on Monday-Friday 9:00 am to 5:00 pm.
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/Qiuwen Mi/
Primary Examiner, Art Unit 1655