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 .
Election/Restrictions
Applicant’s election of Group I(claims 126-138, 152 and 153) in the reply filed on 6/22/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Species Elect
Applicant elects a toothpaste as oral composition.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 3/28/24; 6/22/26. The Examiner has considered the references cited therein to the extent that each is a proper citation. Please see the attached USPTO Form 1449.
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)(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.
Claim(s) 126, 129, 132, 136 is/are rejected under 35 U.S.C. 102(a2) as being anticipated by Cardona et al. (WO 2017/210543).
Cardona teaches with regards to instant claim 126 a composition for oral administration comprising geranylgeraniol (see pg. 6, lines 31+) wherein the carrier is magnesium stearate (see pg. 11, lines 20+, as required by instant claim 129 and 136) and an antioxidant (see pg. 8, lines 15+, as required by instant claim 132).
Claim(s) 126, 128 129, 138 is/are rejected under 35 U.S.C. 102(a2) as being anticipated by Bockmuhl et al. (US 2008/0118580)
Bockmuhl teaches with regards to toothpaste as the oral composition comprising geranylgeraniol (see abstract, 0018, 0131 as required by instant claims 126 and 138) wherein the composition is a mouth rinse (see 0131 as required by instant claim 128), magnesium stearate as the carrier (see 0157, as required by instant claim 126 and 129).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 126, 128-129, 132, 133-136, 138 and 152-153 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardona et al. (WO 2017/210543) in view of Bockmuhl et al. (US 2008/0118580) and Matsuda (JP H09249575) and Tan (US 2021/0113491) and as evidenced by Da Silva (BR 102018075756).
Cardona teaches with regards to instant claim 126 a composition for oral administration comprising geranylgeraniol (see pg. 6, lines 31+) wherein the carrier is magnesium stearate (see pg. 11, lines 20+) and an antioxidant (see pg. 8, lines 15+).
However fails to teach the oral composition is a toothpaste.
Bockmuhl teaches with regards to toothpaste as the oral composition comprising geranylgeraniol (see abstract, 0018, 0131 as required by instant claims 126 and 138) and mouth rinse (see 0131 as required by instant claim 128), magnesium stearate as the carrier (see 0157, as required by instant claim 126 and 129).
Matsuda teaches a composition for treating periodontosis comprising a diterpene alcohol in a toothpaste form comprising hydrated silica (as required by instant claims 135, 153. As evidenced by Da Silva, diterpene alcohol is a geranylgeraniol has been used to describe a naturally occurring straight chain diterpene alcohol, whose structural formula can be described as: all trans-3,7,11,15-tetramethylhexadecatetra-2,6,10, 14-in-1 -ol. Therefore one of ordinary skill in the art would have reasonable expectation of using the diterpene of Da Silva to result in the instant claimed invention.
Tan teaches diterpene alcohol (see 0080), a carrier starch paste, colloidal silica (see 0064 as required by instant claims 129, 133, 134, 152-153).
It would have been obvious to one of ordinary skill in the art to combine and modify the recited prior art to result in the instant claimed invention with a reasonable expectation of success because they are drawn to the same technical field.
Claim(s) 126-127, 130-131 and 137 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cardona et al. (WO 2017/210543) in view of Bockmuhl et al. (US 2008/0118580) and Matsuda (JP H09249575) and Tan (US 2021/0113491) and as evidenced by Da Silva (BR 102018075756) as applied to claims 126, 128-129, 132, 133-136, 138 and 152-153 above
Cardona teaches with regards to instant claim 126 a composition for oral administration comprising geranylgeraniol (see pg. 6, lines 31+) wherein the carrier is magnesium stearate (see pg. 11, lines 20+) and an antioxidant (see pg. 8, lines 15+).
However fails to teach the oral composition is a toothpaste.
Bockmuhl teaches with regards to toothpaste as the oral composition comprising geranylgeraniol (see abstract, 0018, 0131 as required by instant claims 126 and 138) and mouth rinse (see 0131 as required by instant claim 128), magnesium stearate as the carrier (see 0157, as required by instant claim 126 and 129).
Matsuda teaches a composition for treating periodontosis comprising a diterpene alcohol in a toothpaste form comprising hydrated silica (as required by instant claims 135, 153. As evidenced by Da Silva, diterpene alcohol is a geranylgeraniol has been used to describe a naturally occurring straight chain diterpene alcohol, whose structural formula can be described as: all trans-3,7,11,15-tetramethylhexadecatetra-2,6,10, 14-in-1 -ol. Therefore one of ordinary skill in the art would have reasonable expectation of using the diterpene of Da Silva to result in the instant claimed invention.
Tan teaches diterpene alcohol (see 0080), a carrier starch paste, colloidal silica (see 0064 as required by instant claims 129, 133, 134, 152-153).
It would have been obvious to one of ordinary skill in the art to combine the recited art to result in the instant claimed invention with a reasonable expectation of success because they are drawn to the same technical field. Although none of the cited reference teach the oral composition with the recited concentration. Nonetheless the composition having concentration is based on that the determination of a dosage having the optimum therapeutic index is well within the level of the ordinary skill in the art, and the artisan would be motivated to determine the optimum amounts to get the maximum effect of the drug, hence the reference makes obvious the instant invention.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY V GEMBEH whose telephone number is (571)272-8504. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIRLEY V GEMBEH/Primary Examiner, Art Unit 1615 7/7/26
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