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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 06/10/2026 is acknowledged. Claims 1-15 have been canceled, claim 29 has been withdrawn, and new claims 34 have been added. Claims 16-28 and 30-34 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 06/10/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 102(a)(1) rejections of claims 16-18, 21-25, 27, and 28 over Littau et al. (US 2006/0204467 A1) and of claims 16-18, 21-28, and 30-32 over Pesaro et al. (US 2016/0100574 A1) and 35 U.S.C. 103(a) rejection of claims 16-5, 27, and 28 over Littau et al. (US 2006/0204467 A1) and Brockman (US 2016/0317480 A1) as evidenced by Johnson et al. (US 6,319,958 B1) and of claims 16-28 and 30-32 over Pesaro et al. (US 2016/0100574 A1) and Brockman (US 2016/0317480 A1) from the previous Office Action. 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.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following. In addition, new claim is hereby included in the rejections.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 16-28 and 30-34 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,938,208 B2 in view of Park et al. (US 2010/0015071 A1) and Brockman (US 2016/0317480A1).
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter.
Claims 1-8 of U.S. Patent No. 11,938,208 B2 do not recite bisabolol being essential oil of Matricaria chamomilla in the instant claims 19 and 20.
This deficiency is cured by Park et al. who teach both bisabolol from natural source, chamomile or synthesized having anti-inflammatory effect, wound healing and anti-microbial effect and being used in a cosmetic formulation and skin care products (paragraph 25 and 26) and Brockman who teaches α-bisabolol being the primary constituent of Matricaria chamomilla (paragraph 16).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the recitation in claims 1-8 of U.S. Patent No. 11,938,208 B2 and teachings in Park et al. and Brockman to specify the bisabolol in the composition recitation in claims 1-8 of U.S. Patent No. 11,938,208 B2 being essential oil of Matricaria chamomilla. α-bisabolol being the primary constituent of Matricaria chamomilla was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same composition.
Claims 16-28 and 30-34 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2, and 17 of copending Application No. 18/009,288, claims 1, 2, and 15 of copending Application No. 18/009,312, claims 29-31 of copending Application No. 18/687,161, and claims 1 and 4 of copending Application No. 18/858,297 (corrected from 18/009,288) in view of Park et al. (US 2010/0015071 A1) and Brockman (US 2016/0317480A1). Although the patent and instant claims are not identical, they are not patentably distinct from each other
Claims 1, 2, and 17 of copending Application No. 18/009,288, claims 1, 2, and 15 of copending Application No. 18/009,312, claims 29-31 of copending Application No. 18/687,161, and claims 1 and 4 of copending Application No. 18/858297 (corrected from 18/009,288) do not recite bisabolol being essential oil of Matricaria chamomilla in the instant claims 19 and 20.
This deficiency is cured by Park et al. who teach both bisabolol from natural source, chamomile or synthesized having anti-inflammatory effect, wound healing and anti-microbial effect and being used in a cosmetic formulation and skin care products (paragraph 25 and 26) and Brockman who teaches α-bisabolol being the primary constituent of Matricaria chamomilla (paragraph 16).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the recitation in claims 1, 2, and 17 of copending Application No. 18/009,288, claims 1, 2, and 15 of copending Application No. 18/009,312, claims 29-31 of copending Application No. 18/687,161, and claims 1 and 4 of copending Application No. 18/009,288 and teachings in Park et al. and Brockman to specify the bisabolol in the composition recitation in claims 1, 2, and 17 of copending Application No. 18/009,288, claims 1, 2, and 15 of copending Application No. 18/009,312, claims 29-31 of copending Application No. 18/687,161, and claims 1 and 4 of copending Application No. 18/009,288 being essential oil of Matricaria chamomilla. α-bisabolol being the primary constituent of Matricaria chamomilla was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same composition.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Arguments:
Applicant states that the provisional obviousness-type double patenting rejections be held in abeyance until the claims have been allowed. Until that time the claims must remain rejected.
New ground of rejections
Upon reconsideration the following new ground of rejections are applied.
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.
Claims 16-18, 21-28, and 30-32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pesaro et al. (US 2016/0015031 A1).
Pesaro et al. meet all of the limitations of claims 16-18, 21, 22, 27, and 28. Pesaro et al. disclose in table XXXX a sun protection spray comprising
0.1% by weight of α-bisabolol (the claimed a in the instant claims 16-18, and 21),
0.5% by weight of 4-hydroxyacetophenone (the claimed b in the instant claims 16)
0.4% by weight of phenoxyethanol (the claimed c in the instant claims 16).
The weight ratio between α-bisabolol (a) and 4-hydroxyacetophenone (b) is calculated to be 16.7:83.3 (0.1/(0.1+0.5)=0.167) (the instant claim 22).
Claims 23-25 are further limitations of the optional component c.
The weight percentages of α-bisabolol (a), 4-hydroxyacetophenone (b), and phenoxyethanol (c) relative to the three of them are calculated to be 10%, 23.07%, and 46.15%, respectively (0.1 / (0.1 + 0.5 + 0.4) = 0.1 / 1.0 = 10%, 0.5 / 1.0 = 50%, and 0.4 / (0.1 + 0.5 + 0.4) = 40%) (the instant claims 26, 30, and 31).
The total weight of α-bisabolol (a) and 4-hydroxyacetophenone (b) is calculated to be 0.6% by weight (0.1 + 0.5 = 0.6%, the instant claims 27 and 32).
Although Pesaro et al. are silent about the claimed property in the instant claim 28; the claimed property of the claimed combination of α-bisabolol (a) and 4-hydroxyacetophenone (b) is an inherent property of the claimed combination of. Pesaro et al. disclose a sun protection spray comprising the claimed combination of α-bisabolol (a) and 4-hydroxyacetophenone (b), thus the sun protection spray comprising the claimed combination disclosed by Pesaro et al. would necessarily possess the claimed property. Please refer to MPEP 2112.I, MPEP 2112 II, and MPEP 2112.01 II:
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) (“[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention”).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Claims 16-18, 21, 23-25, 28, 33, and 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pesaro et al. (US 2016/0015031 A1).
Pesaro et al. meet all of the limitations of claims 16-18, 21, 23-25, 28, 33, and 34. Pesaro et al. disclose in table XXII a sun protection spray comprising
SymRelief (containing α-bisabolol from plant, the claimed a in the instant claims 16-18, 21, 33, and 34),
4-hydroxyacetophenone (the claimed b in the instant claims 16, 33, and 34), and
SymDiol 68 (1,2-hexanediol) (the claimed c in the instant claims 16, 23-25, 33, and 34).
Although Pesaro et al. are silent about the claimed property in the instant claim 28; the claimed property of the claimed combination of α-bisabolol (a) and 4-hydroxyacetophenone (b) is an inherent property of the claimed combination of. Pesaro et al. disclose a sun protection spray comprising the claimed combination of α-bisabolol (a) and 4-hydroxyacetophenone (b), thus the sun protection spray comprising the claimed combination disclosed by Pesaro et al. would necessarily possess the claimed property. Please refer to MPEP 2112.I, MPEP 2112 II, and MPEP 2112.01 II discussed above.
Claims 16-18, 23-25-28, and 30-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pesaro et al. (US 2016/0015031 A1).
Pesaro et al. meet all of the limitations of claims 16-18, 23-25-28, and 30-34. Pesaro et al. disclose in table LVII a solution for wet wipe comprising
0.1% by weight of Dragosantol 100 (α-bisabolol, the claimed a in the instant claims 16-18, 33, 34),
0.5% by weight of 4-hydroxyacetophenone (the claimed b in the instant claims 16, 33, 34)
5% by weight of pentylene glycol (1,2-pentanediol, the claimed c in the instant claims 16, 23-25, 33, and 34).
The weight ratio between α-bisabolol (a) and 4-hydroxyacetophenone (b) is calculated to be 16.7:83.3 (0.1/(0.1+0.5)=0.167) (the instant claim 22).
The weight percentages of α-bisabolol (a), 4-hydroxyacetophenone (b), and pentylene glycol (c) relative to the three of them are calculated to be 1.79%, 8.9%, and 89.3%, respectively (0.1 / (0.1 + 0.5 + 5) = 0.1 / 5.6 = 1.79%, 0.5 / 5.6 = 8.9%, and 5 / 5.6 = 89.3%) (the instant claims 26, 30, and 31).
The total weight of α-bisabolol (a) and 4-hydroxyacetophenone (b) is calculated to be 0.6% by weight (0.1 + 0.5 = 0.6%, the instant claims 27 and 32).
Although Pesaro et al. are silent about the claimed property in the instant claim 28; the claimed property of the claimed combination of α-bisabolol (a) and 4-hydroxyacetophenone (b) is an inherent property of the claimed combination of. Pesaro et al. disclose a sun protection spray comprising the claimed combination of α-bisabolol (a) and 4-hydroxyacetophenone (b), thus the sun protection spray comprising the claimed combination disclosed by Pesaro et al. would necessarily possess the claimed property. Please refer to MPEP 2112.I, MPEP 2112 II, and MPEP 2112.01 II discussed above.
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, 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 16-28 and 30-32 are rejected under 35 U.S.C. 103(a) as being unpatentable over Pesaro et al. (US 2016/0015031 A1) in view of Brockman (US 2016/0317480 A1).
The teachings of Pesaro et al. are discussed above and applied in the same manner.
Pesaro et al. do not specify α-bisabolol being essential oil of Matricaria chamomilla in the instant claims 19 and 20.
This deficiency is cured by Brockman who teaches α-bisabolol being the primary constituent of Matricaria chamomilla (paragraph 16).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Pesaro et al. and Brockman to specify α-bisabolol in the composition taught by Pesaro et al. being essential oil of Matricaria chamomilla. α-bisabolol being the primary constituent of Matricaria chamomilla was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 06/10/2026, have been fully considered but they are moot in view of new ground of rejections.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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