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 .
Status of the Claims
Following the final Office action mailed 12/10/2025, Applicant filed an RCE on 6/10/2026. It is noted that claims and remarks were submitted concurrent with the RCE and are filed under the document code “AMSB” in the file wrapper and dated 6/10/2026. Claims 1-10 and 12-17 remain pending in the application, and claim 11 remains withdrawn, as previously noted and in view of the claim language as amended.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/10/2026 has been entered.
Notation of Previous Election
Applicant's election with traverse of (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 as in claims 1-14 in the reply filed on 2/13/2025 is acknowledged.
Accordingly, claims 1-10 and 12-17 remain pending and under current examination.
Withdrawn Rejections and Response to Arguments
The following rejections are withdrawn in view of Applicant’s amendments to the claims: the rejection of claims 1-10 and 12-17 under 35 U.S.C. 103 as being unpatentable over Kindel et al.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). Applicant’s argument to this effect in the remarks filed 6/10/2026 is noted.
Support is found in the specification as filed for the amended claimed subject matter.
Regarding the previously issued rejections under 35 U.S.C. 103, Applicant argues that the previously cited reference do not teach the newly claimed additional presence of iso-menthone, neo-menthol, and pulegone. This argument is persuasive, and new grounds of rejection necessitated by amendment are presented below to address this newly claimed feature.
Applicant argues that the claims require the essential oil component to be extracted from a hybrid mint plant to be limited to a reading wherein the essential oil is extracted from a single source. In reply, this argument is not persuasive because product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In this case, the prior art shows rationale for combining the claimed elements as detailed below.
New Grounds of Rejection Necessitated by Amendments of 6/10/2026
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), Patron et al. (US 9,732,071), and Roberts (US 2014/0245509 P1, newly cited).
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.
Regarding claim 1 as amended in the last three lines of the claim to further comprise in the essential oil component between 0.5 and 3% iso-menthone, 1 and 4% neo-menthol, and 0.5 and 2% pulegone, the aforementioned references do not specify this feature.
Roberts cures this deficiency. Roberts teaches a particular mint plant which produces a distinct essential oil and is referred to as “Chelan Mint” (see abstract and [0002] in particular). The mint is also referred to as 08-6-10 (see [0003]). Roberts demonstrates the characterization of the essential oil composition from this plant (see column 3 of Table 1 at [0017]) wherein iso-menthone is present in an amount of 1.3%, neo-menthol 4.0%, and pulegone less than 1.0%. These components are present within the ranges recited in the last three lines of claim 1 as amended, and Roberts specifies that the cultivar’s genetic integrity desirably increases selection for commercial planting (see [0006]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention as filed to combine essential oil from Roberts with essential oils extracts of Kindel, Patron, and Simon since Roberts specifies desirable propagation and commercial planting benefits from this particular plant and its corresponding essential oil components. One would have been motivated to add Roberts’ elements to desirably improve resistance to mint rust which Roberts teaches a benefit of this particular peppermint plant oil (see Roberts claim 1) and wherein Roberts mint oils reasonably would have been expected to function in applications of generic mint oil formulations (see also Roberts [[0003] and [0017]).
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.
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617
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