DETAILED ACTION
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 and 2 are currently pending.
Specification and Claim Objections
The disclosure is objected to because of the following informalities:
The specification contains the term(s) “Mucuna Pruriensåπ” which appears to be a typographical error in lieu of the genus and species “Mucuna pruriens” (Specification, paragraph [0015]). Moreover, the terms “Mucuna pruriens” in the specification and claim(s) should follow proper conventions relating to scientific nomenclature including italization and capitalization (i.e. Mucuna pruriens). For the purposes of the instant office action the term(s) “Mucuna Pruriensåπ” and “Mucuna pruriens” will be treated as equivalent terms. Appropriate correction is required.
The Abstract contains the term(s) “well spray” which appears to be typographical error in lieu of the terms “wellness spray”. Appropriate correction is required.
Please note the above are considered necessary grammatical corrections; however, it is not exhaustive of all possible informalities, as examination is not made for the purpose of securing grammatical perfection (See MPEP 601.01(g)).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1 and 2 are directed to a wellness spray comprising “dry components” and “oil components”. The meaning of “dry components” is unclear. Moreover, it is unclear how the liquid spray can comprise both dry and oil components. Appropriate amendment is required.
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 and 2 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. Applicant’s claims are directed to a product; thus, the answer to Step 1 is Yes.
The analysis then moves to Step 2A, Prong One, which asks if a claim recites to a product of nature. In this case, applicant’s claims recite wellness spray composition(s) comprising dry components: Canadian Pine Pollen, Tongkat Ali, Mucuna pruriens and oil extracts from Pine, Jasmine, Lavender, and Clary sage, which are all naturally occurring plants. Thus, the claims do recite products of nature. MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception…”. To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”.
In this case, the plant oils are concentrates and portions the naturally occurring compounds in the plants which are soluble or insoluble in the particular solvent via extraction. General extraction does not necessarily result in a markedly distinct change in the naturally occurring compounds from the plant. Thus, while the plant oils themselves may not be found in the nature, the compounds which are present in the plant and soluble in the selected solvent are found in nature. The creation of the plant oils only partitions and concentrates the molecules that are naturally in the plant. There is no evidence or reason to expect that any new compounds are formed. The composition(s) claimed are themselves mixtures of the naturally occurring compounds and naturally occurring compounds that are simply soluble in a particular solvent; i.e., the compound is not inventive or “man-made.” Thus, each of the composition(s) in turn is a mixture of the naturally occurring compounds found in the particular plants. Moreover, combining the individual plants leads to a combination of the naturally occurring compounds from each of the plants. Thus, the claims are drawn to mixtures of naturally occurring products.
There is no indication that mixing the specified plants and plant oils together as commensurate in scope with the stated claims changes the structure, function, or other properties of the extracts in any marked way in comparison with the closest naturally occurring counterpart. The closest naturally occurring counterpart for each plant oil component is a mixture of the naturally occurring compounds that are present in the oils. Because, as discussed above, each plant oil is only a mixture of the naturally occurring compounds found in the plant. Each composition comprising the plants and plant oil appears to maintain its naturally occurring structure and properties and is merely present in the combination. Thus, the claimed mixture as a whole does not display markedly different characteristics in comparison with the naturally occurring counterparts. Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. In this case, applicant’s claims are directed to a composition with an intended use of improving “wellness”. MPEP § 2106.04(d)(2) specifically states that a claim is only directed to “an intended use of a claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the ‘treatment or prophylaxis’ consideration.” Therefore, applicant’s intended use is not sufficient to integrate the judicial exception into a practical application. Thus, the answer to Step 2A, Prong Two, is No.
Thus, the analysis must move to Step 2B which asks if claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” In this case, the additional element in the claims is the combination of plants and plant oils. However, MPEP § 2106.05(d) states that well-understood, routine, and conventional activities are not sufficient to show that the claims amount to significantly more than the judicial exception. Mixing specific compounds does not amount to significantly more than a combination of judicial exception because mixing compounds is well-understood, routine, and conventional in the field. Thus, mixing the ingredients together does not amount to significantly more than a combination of judicial exception because mixing compounds is well-understood, routine, and conventional in the field.
In addition, applicant’s intended use of improving “wellness” not considered to amount to significantly more. As discussed in MPEP § 2106.05(I)(A), “Generally linking the use of the judicial exception to a particular technological environment or field of use” is not considered to be enough to qualify as significantly more. An intended use of a claimed composition only generally links the exception to the field of use. Therefore, the additional elements are not considered to amount to significantly more. Thus, the answer to Step 2B is No. Consequently, the claims are not directed to patent eligible subject matter.
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 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.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hormone Therapeutics, “99 Simple Natural Ways to Boost Testosterone-Part 2” (December 13, 2016) in view of Sacred Soul Holistics, “The Ultimate Essential Oil Reference Guide for Beginners: 75+ Oils, Carriers, Diluting, Notes, Properties & More” (June 21, 2019).
The instant claim(s) is/are of record, drawn to the following: wellness spray composition(s) comprising: dry components: Canadian Pine Pollen, Tongkat Ali, Mucuna pruriens and oil extracts from Pine, Jasmine, Lavender, and Clary sage for improving overall energy, vitality, wellness index, sleep quality, bioelectric flow in meridians and bioelectrical energy of organs (See Specification, paragraph [001]; claim(s) 1 and 2).
Hormone Therapeutics broadly teaches natural ways to boost testosterone including the use of natural supplements Tongkat Ali (Article List Item 3); Mucuna pruriens (Article List Item 15); and Pine Pollen (Article List Item 19), as required broadly as the “dry components” in claim(s) 1 and 2.
Hormone Therapeutics is silent regarding the “oil components” of the composition comprising oil extracts from Pine, Jasmine, Lavender, and Clary sage, as required in claim(s) 1 and 2.
Sacred Soul Holistics generally teaches the use of essential oils for healing, stimulating the senses, altering moods and emotions. Furthermore, Sacred Soup Holistic teaches blending of essential oil ingredients to achieve specific health benefits including a listing of possible combinations of well-known/common essential oils such as Pine oil (for stress relief, fatigue; boost mental alertness; blends with clary sage and lavender), Jasmine oil (improves mood, aphrodisiac; blends with clary sage), Lavender oil (for stress relief, relieves anxiety, insomnia; blends with clary sage and pine), and Clary sage oil (improves mood, relieves anxiety, improves the flow of Qi; blends with jasmine, lavender, and pine), as required in claim(s) 1 and 2.
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. In this case, one of ordinary skill in the art would reasonably expect that combining the well-known energy-boosting natural ingredients of Tongkat Ali. Mucuna pruriens, and Pine Pollen with the combination of mood enhancing/stress relieving/energizing essential oils comprising Clary sage, jasmine, lavender and pine as a “wellness spray” could be met with a reasonable likelihood of success. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Hormone Therapeutics and Sacred Soul Holistics are relied upon the reasons discussed above. If not expressly taught by the references, based upon the overall beneficial teaching provided by these references with respect to the ingredients of the composition(s) and the method(s) of making and/or using the same disclosed therein, the adjustments of particular conventional working conditions (e.g. the weight/ratio of each ingredient) is/are deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Moreover, as discussed in MPEP section 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” In this particular case, there is no evidence that the claimed weight/ratio of ingredients produces an unexpected result. Thus, absent some demonstration of unexpected results or criticality from the claimed parameters, this optimization would have been obvious before the effective filing date of applicant’s claimed invention.
Thus, from the teachings of the references, it is apparent 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 at the time the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing Applicants' method(s) with the method(s) of the prior art (including compositions within recited processes), the burden is on applicant to show a novel or unobvious difference between the claimed method and the method of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Conclusion
Currently, claim(s) 1 and 2 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vani G. Verkhovsky whose telephone number is (571)272-3777. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terry McKelvey can be reached at (571) 272-0775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.G.V./Examiner, Art Unit 1655
/TERRY A MCKELVEY/Supervisory Patent Examiner, Art Unit 1655