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 and Status of the Claims
The following previous elections are noted: (A) combination “ii” in claim 1; (B) 0.1 to 50% by weight as in claim 2; (C) 2-(4-methylphenoxy)-N-(1H-pyrazol-3-yl)-N-(2-thineylmethyl)acetamide as a cooling compound which is noted to be recited in claim 12; and (D) an oral care preparation. Accordingly, claims 1-10 and 12-17 are pending and under current examination.
Specification – Objection Withdrawn
The previously issued objection to the abstract is withdrawn in view of Applicant’s updated filing 9/12/2025.
Withdrawn Rejections
The rejections of claims 1-10 and 12-17 under 35 U.S.C. 112(b) are withdrawn in view of Applicant’s amendments to the claims filed 9/12/2025.
Response to Arguments
Applicant’s arguments filed 9/12/2025 (hereafter, “Remarks”) have been fully considered and are addressed as follows.
Regarding the previously issued rejections of claims 1-10 and 12-17 under 35 U.S.C. 112(b), the rejections are withdrawn as noted above, and Applicant’s argument to this effect is persuasive.
Regarding the previously issued rejection of claims 1-10 and 12-17 under 35 U.S.C. 103, Applicant asserts that Kindel does not teach “the use of an essential oil…” extracted from a hybrid mint plant in which the elected combination comprising menthofuran and 1-menthol combined in a ratio as claimed; Applicant further asserts that neither Simon nor Patron cure Kindel’s alleged deficiency. In reply, the relevance of these references is maintained as applicable in view of the claim language amendments. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Maintained Grounds of Rejection, Modified as Necessitated by Amendment filed 9/12/2025
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.
Claims 1-10 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kindel et al. (US 20070254826) in view of Simon et al. (US 2012/0135094A1) and Patron et al. (US 9,732,071).
The instant claims are drawn to a composition comprising an essential oil “extracted from a hybrid mint plant”, the essential oil comprising a combination elected to be a combination comprising menthofuran and 1-menthol, wherein the weight ratio of the menthofuran to 1-menthol is the combination from 0.87 to 1 to 1.31:1, and wherein the composition further comprises at least one cooling compound which has been elected as noted above.
Kindel et al. teach the use of 1-menthol as a refreshing flavor, a minty smell and a cooling effect on skin and the mucous membrane. It is used, for example, in oral care, in cosmetic and pharmaceutical preparations, in tobacco and in confectionary applications. Kindel teaches peppermint and/or spearmint oils to be desirably included (see [0024], [0026]). See Para [0039]. Kindle et al. teaches the use of 1- menthol being particularly preferred since it has sensory properties. See Para [0040]. See Para [0051]. Kindle in Para [0063] teaches the concentration of 5-70% for 1-menthol. The use of cooling agents is taught in Para [0112]. The use of the composition as odoriferous or aroma is taught in Para [0090]. The release of fragrance is taught in Para [0144].
Kindel does not teach menthofuran or the at least one cooling compound elected. Simon and Patron cure this deficiency.
Simon teaches the state of the art wherein the typical spearmint oil contains as other constituents menthol and menthofuran as constituents expected to be less than 2% (see [0005]). Where spearmint essential oils are desirably used, therefore, one reasonably would have expected to incorporate menthol and menthofuran in roughly a 1:1 ratio each in view of Simon’s teaching of each of these components to be present in an amount of less than 2% for the typical spearmint oil. Simon expressly teaches spearmint among preferred embodiments for providing anti-inflammatory compositions from its derivatives (see [0046]).
Accordingly, both Kindel and Simon pertain to benefit compositions comprising 1-menthol as well as additional essential oil components. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to combine 1menthol and menthofuran as taught by Simon in roughly a ratio suggested by Simon as available from spearmint essential oil in place of the 1-menthol essential oil component of Kendal, with a reasonable expectation of success. One would have been motivated to do so based on Simon’s teaching of these two to be present in similar amounts when the mint plant extracted is particularly spearmint and further where spearmint is taught among preferred embodiments for providing anti-inflammatory benefit compositions (see [0046]) in particular.
Neither Kindel nor Simon teaches the particular cooling agent instantly elected. Patron cures this deficiency. Patron et al. teaches the use of the cooling agent, being used in a personal care and food or beverage composition. See para [77], [200] and [305.]. The concentrations of the cooling agents is taught in para [55]; see also column 3, lines 28-29. See Simon Example 1.3, Compound 103 which is the instantly elected cooling compound See also Patron claims 7-11 in particular. Patron teaches that this compound is among those useful as cooling sensation compounds desirably included such as in personal care formulations.
Kindel, Patron, and Simon are all directed to flavoring formulations and components thereof. It would have been prima facie obvious to a person skilled in the art to use the cooling agent of claim 1, motivated by the teachings of Patron et al., which teaches the cooling agent of claim 1 being used in a personal care and food compositions. Moreover, it would have been obvious to a person of skill in the art to add menthofuran as taught by Simon to mint oil extract compositions comprising additional mint oil components including menthol as in Kindel; one would have been motivated to do so to achieve both cooling benefits and anti-inflammatory functional benefits in particular combination in analogous formulations. One reasonably would have expected each compound to retain its known functional benefits in combination in a product comprising particular mint oil components for topical and/or oral application.
As to the concentration of functional oil components recited in claims 2-8, Kindel recommends menthone and isomenthone in reconstituted oils to preferably be in the range of 5 to 40% by weight (see [0069]), a range overlapping and/or included by the instantly recited ranges. Accordingly, it would have been prima facie obvious to start with Kindel’s recommended menthone content as an optimization starting point from which to perform routine optimization procedures as is customary in the art.
Regarding the particular cooling compound addressed above in regard to claim 1 and also in regard to claim 12 which reads on the instantly elected species, and further regarding and the amount of cooling compound recited in claim 10, Patron teaches the cooling compound to be included in oral care products for instance (column 9, lines 50-55) and included in an amount of 0.0001 ppm to 100,000 ppm (column 10, line 11) as well as more specific ranges depending on the desired end cooling result (see column 10, lines 13-24), ranges overlapping with the instantly claimed range of 0.005 to 0.4% by weight.
As to the claim language that the mint component is an extract of a commercial mint plant as in claim 9, Simon teaches particular anti-inflammatory compositions and methods from oregano and mint plant components to be administered orally (see abstract, in particular). Simon specifies commercial mint plants may be used including those such as M. piperita commercial varieties (see [0110]). This disclosure of commercial mint plants appears consistent with Applicant’s definition of commercial mint plants such as at paragraph [0290] of the specification as filed. It would have been prima facie obvious to one of ordinary skill in the art to substitute a commercial mint flavonoid or extract source from the commercial mints that Simon teaches to be state of the art and commercially available for their desirable flavonoid content in place of the generically disclosed mint oil components of Kindel, and one would have been motivated to do so based on Simon’s suggestion.
Further regarding claims 13-17, Kindel teaches pharmaceutical, cosmetic, oral care, food, and fragrance applications (see [0146]) and Patron teaches these applications and their corresponding carriers as well (see column 25, lines 13-16; column 7, lines 22-26; column 7, lines 26-38; column 27, lines 33-43, in particular).
Conclusion
No claim is 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 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.
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617