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 . Claims 1-12 and 14-20 are pending; claims 1-12 and 14 are examined; and claims 15-20 are currently withdrawn in accordance with the election detailed in the Office action of 07/16/2025.
Applicant’s arguments, filed 12/12/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
NOTE: Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. In this instance, claims 15-20 are withdrawn but is lacking the corresponding text. See MPEP § 714(II)(C). Appropriate correction is required.
Claim Objections (New)
Claims is objected to because of the following informalities: immediately after “wax or” in line 2 there should be recited --- carnauba ---. Appropriate correction is required.
Claim Rejections - 35 USC § 103 (maintained)
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Webb et al. (US 2022/0054446, 02/24/2022, IDS reference) (hereinafter Webb) in view of Drennan (US 2022/0226241 A1, 07/21/2022).
Webb discloses topicals including lotions, creams and salves comprising essential oils and oils of cannabinoids and terpenes ([0021]), including more than one of the various components ([0022]), derived from Cannabis plants including Cannabis sativa (i.e. hemp) ([0004]), a base cream ([0003]) that prevents separation of the components ([0022]), and magnesium lotion. The magnesium lotion is prepared by mixing magnesium chloride flakes with water and mixing by hand or mechanically until the components are fully incorporated into each other ([0023]). The terpenes may include limonene, which is a terpene found in abundance in many Cannabis strains and possesses antifungal and antibacterial properties ([0008]). The essential oils may include lavender essential oil and black pepper essential oil ([0015]). The CBD may be 3-7% (claim 9) by volume of the total composition ([0024]-[0025]); the magnesium chloride lotion may be 10-20% (claim 6); the base cream may be 65-95% (claim 4); the black pepper oil may be 0.2-2.10%; and the lavender essential oil may be 0.2-2.10% (claim 13). The topical may further comprise additional antiseptic or antifungal compounds ([0025]).
Webb differs from the instant claim insofar as it does not explicitly disclose wherein the composition comprises turmeric oil.
However, Drennan discloses stable cannabinoid oil-containing topical formulations (Abs), including salves ([0021]), comprising essential oils including turmeric oil ([0129]). The essential oils may be about 0.3-2.0% by weight of the composition ([0131]).
Webb discloses wherein the salve comprises one or more essential oils. Accordingly, it would have been obvious to one of ordinary skill in the art to have formulated the topical salves of Webb with about 0.3-2.0% by weight of turmeric oil, since it is a known and effective essential oil having antioxidant properties as taught by Drennan.
Regarding the claim reciting a “broad-spectrum, concentrated” hemp oil, as noted by para. [0020] of the instant Specification, hemp oil contains cannabinoids with or without terpenes. The hemp oil may be concentrated by extraction with a heat source and solvent, resulting in a higher amount of CBD in the resulting hemp oil. The hemp oil may be broad spectrum, meaning there are multiple terpenes and multiple cannabinoids present in the hemp oil. Accordingly, the compositions of Webb, comprising one or more cannabinoids and terpenes obtained by extraction from Cannabis plant, reasonably appears to meet the limitations of a “broad-spectrum” (i.e. containing more than one cannabinoids and terpenes), “concentrated” (i.e. extracted) hemp oil (i.e. extracted from Cannabis plant) as instantly claimed.
Regarding the claimed magnesium oil, according to paragraph [0009] of the instant Specification, magnesium oil is made by processing magnesium chloride flakes with water. As discussed above, Webb discloses wherein the magnesium lotion is prepared by mixing magnesium chloride flakes with water. Accordingly, the magnesium chloride lotion of Webb meets the limitation of magnesium oil as claimed.
Regarding the claimed natural preservative, since Webb discloses wherein limonene is found in many strains of Cannabis (i.e. natural) and possesses antibacterial and antifungal properties, it would be capable of preserving the topical salve. Thus, limonene would meet the limitation as a natural preservative.
Regarding the claimed amounts of various components, the claimed ranges (i.e. about 5-20% vol. of hemp oil; about 5-40% vol. of magnesium oil; about 60-80% vol. of carrier oil; about 0.5-3% or 0.5-2% vol. of black pepper oil; about 2-10% vol. of one or more essential oil) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. 3-7% vol CBD, 10-20% magnesium chloride lotion; 65-95% of base cream; 0.2-2.10% of black pepper oil; and 0.2-2.10% of lavender essential oil). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claims 5 and 6, Webb differs from the instant claim insofar as not explicitly disclosing wherein the base cream comprises beeswax.
However, Drennan further discloses wherein the topical formulation may be made utilizing the base ingredients of natural butters and herbal and/or vegetable/nut/seed oils including beeswax, shea butter, cocoa butter, and jojoba oil ([0090]-[0091]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included base ingredients such as shea nut butter and beeswax in the topical compositions of Webb, since each is a known and effective base suitable for topical formulations as taught by Drennan.
Response to Arguments
Applicant mainly asserts there is no disclosure or suggestion in Webb for a composition comprising turmeric oil.
The examiner does not find the assertion persuasive. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. As discussed in the rejection, Drennan provides motivation to incorporate turmeric oil into the composition of Webb. See MPEP 2141(III).
Applicant mainly asserts there is no teaching in Webb for making a composition comprising a broad-spectrum, concentrated hemp oil containing multiple cannabinoids and multiple terpenes.
The examiner does not find the assertion persuasive. As noted by para. [0020] of the instant Specification, hemp oil contains cannabinoids with or without terpenes. The hemp oil may be concentrated by extraction with a heat source and solvent, resulting in a higher amount of CBD in the resulting hemp oil. The hemp oil may be broad spectrum, meaning there are multiple terpenes and multiple cannabinoids present in the hemp oil. Accordingly, the compositions of Webb, comprising one or more cannabinoids and terpenes obtained by extraction from Cannabis plant, reasonably appears to meet the limitations of a “broad-spectrum” (i.e. containing more than one cannabinoids and terpenes), “concentrated” (i.e. extracted) hemp oil (i.e. extracted from Cannabis plant) as instantly claimed.
Applicant mainly asserts Webb fails to disclose or suggest a magnesium oil comprising particles having a mean particle size of about 500 µm to about 800 µm, wherein the particles are uniformly suspended within a carrier oil.
The examiner does not find the assertion persuasive. As noted by para. [0014] of the instant Specification, magnesium oil is made from a mixture of magnesium chloride flakes and water. “When these two substances are combined, the resulting liquid has an oily feel, but isn’t technically an oil.” Moreover, para. [0017] further notes that to create the desired texture and suspension, the magnesium oil, which is water-based, may be made from magnesium chloride flakes, by mixing in about a 2:1 to about a 1:2 ratio, or in about a 1:1 ratio, to dissolve the magnesium chloride flakes. The mixture may be agitated by any means until the flakes are dissolved to provide the magnesium oil.
Webb utilizes substantially the same process to prepare said magnesium chloride lotion, specifically mixing magnesium chloride flakes and warm filtered water at a 1:1 ratio until fully incorporated (Webb: [0023]). Thus, one of ordinary skill in the art would reasonably conclude that the magnesium lotion of Webb would possess substantially the same properties as the claimed magnesium oil, such as a mean particle size of about 500 µm to about 800 µm, and be uniformly suspended within the carrier oil like the claimed invention.
Applicant mainly asserts there is no disclosure or suggestion in Drennan for a composition comprising a broad-spectrum, concentrated hemp oil, magnesium oil, and turmeric oil as instantly claimed.
The examiner does not find the assertion persuasive. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. As discussed in the rejection, Webb discloses a composition comprising a broad-spectrum concentrated hemp oil and magnesium oil. See MPEP 2141(III).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Webb et al. (US 2022/0054446, 02/24/2022, IDS reference) (hereinafter Webb) in view of Drennan (US 2022/0226241 A1, 07/21/2022, priority 06/10/2021), further in view of Motahari (US 2023/0190620 A1, priority 12/16/2021).
Webb and Drennan have been discussed in detail above, and do not explicitly disclose a claimed natural preservative.
However, Motahari discloses natural preservatives useful in topical compositions, including Populus tremuloides bark extract ([0015]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included Populus tremuloides bark extract in the topicals of Webb, since it is a known and effective natural preservative suitable for topical compositions comprising cannabinoids as taught by Motahari.
Response to Arguments
Applicant mainly asserts Motahari does not disclose using Phytocide elderberry extracts as preservatives, or that a natural preservative system is necessary or beneficial for a cannabinoid salve. Furthermore, there is no disclosure of suggestion in Motahari for a broad-spectrum, concentrated hemp oil; magnesium oil; and turmeric oil as claimed.
The examiner does not find the assertion persuasive. As discussed above, as this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. Therefore it is not necessary for Motahari to disclose all of the components as instantly claimed. Moreover, claim 14 is not limited to Phytocide elderberry extract as preservatives. Therefore, it is not necessary for Motahari to disclose using Phytocide elderberry extracts as preservatives. As discussed above, Webb discloses a topical composition comprising cannabinoids, and Motahari discloses Populus tremuloides bark extract as a suitable natural preservative useful in topical compositions comprising cannabinoids. As such, Applicant’s argument is unpersuasive.
Conclusion
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 LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612